UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TOYOTA MOTOR CORPORATION
`Petitioner
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`v.
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`AMERICAN VEHICULAR SCIENCES LLC
`Patent Owner
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`Case IPR2013-00417
`Patent No. 8,036,788
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`PATENT OWNER NOTICE OF APPEAL
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TOYOTA MOTOR CORPORATION
`Petitioner
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`v.
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`AMERICAN VEHICULAR SCIENCES LLC
`Patent Owner
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`Case IPR2013-00417
`Patent No. 8,036,788
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`PATENT OWNER NOTICE OF APPEAL
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`PATENT OWNER NOTICE OF APPEAL
`IPR2013-00417
`Patent 8,036,788
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` Pursuant to 35 U.S.C. § 142 and 37 C.F.R. § 90.2(a), notice is hereby given
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`that Patent Owner American Vehicular Sciences LLC (“AVS”) hereby appeals to
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`the United States Court of Appeals for the Federal Circuit from the Final Written
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`Decision entered January 7, 2015 (Paper No. 78) in Case IPR2013-00417 and from
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`all underlying orders, decisions, rulings and opinions, including without limitation
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`the Decision on Institution of Inter Partes Review entered January 13, 2014 (Paper
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`No. 14).
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`For the limited purpose of providing the Director with the information
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`requested in 37 C.F.R. § 90.2(a)(3)(ii), AVS anticipates that the issues for review
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`on appeal may include, but are not limited to the following:
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`1. Whether the Board erred in determining that Petitioner Toyota Motor
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`Corporation proved by a preponderance of the evidence that the Fry Reference
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`(K.N. Fry, Diesel Locomotive Reliability Improvement by System Monitoring, 209
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`PROC. INSTITUTION MECH. ENGINEERS, PART F: J. RAIL & RAPID TRANSIT 1995)
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`was prior art/publicly accessible prior to the June 7, 1995 priority date;
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`2. Whether the Board erred in accepting the Declaration of Kevin N. Fry
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`(Exhibit 1013) (and any of the exhibits thereto) and the Affidavit of Sarah
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`Broadhurst (Exhibit 1014) (and any of the exhibits thereto), in whole or in part,
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`including but not limited to whether Exhibits 1013 and 1014 satisfied Federal
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`1
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`PATENT OWNER NOTICE OF APPEAL
`IPR2013-00417
`Patent 8,036,788
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`Rules of Evidence 401, 402, 403, 602, 801, 802 and 803, whether Exhibit 1013
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`satisfied Federal Circuit law providing that any individual claiming prior invention
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`must provide corroborating evidence, and whether Exhibit 1014 satisfied Federal
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`Rules of Evidence 1002 and 1003.
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`3.
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`In determining that the Fry Reference was publicly accessible prior to
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`June 7, 1995, whether the Board erred in determining that “[t]he date stamped
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`copies of Fry,” all of which were dated in September and October 1995, “do not
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`relate directly to the publication date for Fry” and/or in deeming that this evidence
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`was not probative of the issue presented. (Paper No. 78 at 18);
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`4. Whether the Board erred in denying AVS’s motion to exclude the
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`Affidavit of Sarah Broadhurst (Exhibit 1014), including but not limited to the
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`Board’s determination that testimony about alleged “records” that are not in
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`evidence is admissible under the Federal Rules of Evidence and the Board’s
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`determination that paragraphs 6 and 7 of the Affidavit of Sarah Broadhurst were
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`based on her personal knowledge;
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`5. Whether the Board erred in denying AVS’s motion to exclude the
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`Declaration of Kevin N. Fry (Exhibit 1013), a declaration that the Board admits
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`was based on excluded evidence and “does not provide any explanation of why
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`[Mr. Fry] would have any personal knowledge of the publication date.” (Paper 78
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`PATENT OWNER NOTICE OF APPEAL
`IPR2013-00417
`Patent 8,036,788
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`at 15);
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`6.
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`In determining that the Fry Reference appeared in a journal volume
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`that published in January 1995, whether the Board erred in reasoning that Exhibits
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`2036-2041, which showed that other articles in the journal volume were not
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`accepted for publication until after January 1995, “are irrelevant”; and
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`7.
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`Any finding or determination supporting or related to those issues
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`and/or the evidence submitted by the Petitioner and/or Patent Owner, as well as
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`other issues decided adversely to AVS in any orders, decisions, rulings and/or
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`opinions.
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`Simultaneous with this submission: (1) a copy of this Notice of Appeal is
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`being filed with the Patent Trial and Appeal Board; (2) three copies of this Notice
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`of Appeal, along with the required fees, are being filed with the Clerk’s Office for
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`the United States Court of Appeals for the Federal Circuit; and (3) a copy of this
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`Notice of Appeal is being served on Petitioner Toyota Motor Corporation.
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`No fees are believed to be due to the United States Patent and Trademark
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`Office in connection with this filing, but authorization is hereby given for any
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`required fees to be charged to Deposit Account No. 13-0017.
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`3
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`DATE: March 9,2015
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`PATENT OWNER NOTICE OF APPEAL
`IPR2013-00417
`Patent 8,036,788
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`Respectfully submitted,
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`ride
`Registration No. 42,853
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`MCANDREWS HELD & MALLOY
`500 West Madison, 34th Floor
`Chicago, IL 60661
`Telephone: (312) 775-8000
`Facsimile: (312) 775-8100
`E-mail: smcbride@mcandrews-ip.com
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`Attorney for Patent Owner
`American Vehicular Sciences LLC
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`CUSTOMER NUMBER: 23446
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`4
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`PATENT OWNER NOTICE OF APPEAL
`IPR20 13-00417
`Patent 8,036,788
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`CERTIFICATE OF FILING AND SERVICE
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`I hereby certify that the original of the foregoing, PATENT OWNER
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`NOTICE OF APPEAL, was caused to be filed by hand on this 9th day of March,
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`2015, with the Director of the United States Patent and Trademark Office, at the
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`following address:
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`Office of the General Counsel
`United States Patent and Trademark Office
`10B20, Madison Building East
`600 Dulany Street
`Alexandria, VA 22314
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`I also hereby certify that on this 9th day of March, 2015, three true and
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`correct copies of the foregoing, PATENT OWNER NOTICE OF APPEAL and the
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`required filing fee, were caused to be filed by hand with the Clerk's Office of the
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`United States Court of Appeals for the Federal Circuit at the following address:
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`United States Court of Appeals for the Federal Circuit
`717 Madison Place, N.W., Suite 401
`Washington, DC 20439
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`I also hereby certify that on this 9th day of March, 2015, a true and correct
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`copy of the foregoing, PATENT OWNER NOTICE OF APPEAL, was caused to
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`be filed electronically with the Board through the Board's Patent Review
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`Processing System.
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`PATENT OWNER NOTICE OF APPEAL
`IPR2013-00417
`Patent
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`I also hereby certify that on this 9th day of March, 2015, a true and correct
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`copy of the foregoing, PATENT OWNER NOTICE OF APPEAL, was caused to
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`be served, by electronic mail on the following parties:
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`A.Antony Pfeffer
`apfeffer@kenyon.com
`Thomas R. Makin
`tmakin@kenyon.com
`K. Patrick Herman
`pherman@kenyon.com
`ptab@kenyon.com
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004
`Tel: 212-425-7200
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`DATE: March 9,2015
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`MCANDREWS HELD & MALLOY
`500 West Madison, 34th Floor
`Chicago,IL 60661
`Telephone: (312) 775-8000
`Facsimile: (312) 775-8100
`E-mail: smcribe@mcandrews-ip.com
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`Attorney for Patent Owner
`American Vehicular Sciences LLC
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`CUSTOMER NUMBER: 23446
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`11
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`Trials@uspto.gov
`571-272-7822
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`Paper 78
`Entered: January 7, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`TOYOTA MOTOR CORPORATION,
`Petitioner,
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`v.
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`AMERICAN VEHICULAR SCIENCES LLC,
`Patent Owner.
`____________
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`Case IPR2013-00417
`Patent 8,036,788 B2
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`____________
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`
`
`Before JAMESON LEE, BARBARA A. PARVIS, and
`GREGG I. ANDERSON, Administrative Patent Judges.
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`ANDERSON, Administrative Patent Judge.
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`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`IPR2013-00417
`Patent 8,036,788 B2
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`I. BACKGROUND
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`A. Introduction
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`On July 8, 2013, Toyota Motor Corporation (“Toyota”) filed a
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`Petition requesting an inter partes review of claims 1, 3, 4, 6, 7, 8, 9, 11, 15,
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`16, and 18 of U.S. Patent No. 8,036,788 B2 (Ex. 1001, “the ’788 patent”).
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`Paper 1 (“Pet.”). On January 13, 2014, we instituted trial for claims 1, 3, 4,
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`6, 7, 8, 9, 11, 15, 16, and 18 of the ’788 patent on certain grounds of
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`unpatentability alleged in the Petition. Paper 14 (“Decision” or “Dec.”).
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`After institution of trial, American Vehicular Sciences LLC (“AVS)
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`filed a Patent Owner Response. Paper 30 (“PO Resp.”). Toyota filed a
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`Reply. Paper 37 (“Reply”).
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`A consolidated oral hearing for IPR2013-00414, IPR2013-00415,
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`IPR2013-00416, and IPR2013-00417, each involving Toyota and AVS, was
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`held on August 14, 2014. The transcript of the consolidated hearing has
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`been entered into the record. Paper 77 (“Tr.”).
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`AVS also filed a First Motion to Amend Claims. Paper 29 (First
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`Motion to Amend”). That motion was subsequently withdrawn. Paper 64
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`(“Withdrawal”). With authorization from the Board, AVS filed a Second
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`Motion to Amend Claims which seeks to cancel challenged claims 1, 3, 4, 6,
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`7, 8, 11, 15, 16, and 18 of the ’788 patent, but not claim 9. Toyota has
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`represented that it does not oppose the Second Motion to Amend. See Paper
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`76 (“Order-Conduct of Proceedings”); Tr. 103:11–104:10. AVS’s Second
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`Motion to Amend Claims is granted.
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`We have jurisdiction under 35 U.S.C. § 6(c). This final written
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`decision is issued pursuant to 35 U.S.C. § 318(a).
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`2
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`IPR2013-00417
`Patent 8,036,788 B2
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`B. Related Proceedings
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`Toyota indicates the ’788 patent has been asserted in the following co-
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`pending district court case: American Vehicular Sciences LLC v. Toyota
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`Motor Corp., No. 6:12-CV-405 (E.D. Tex. filed July 20, 2012). Pet. 1.
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`C. The ’788 Patent
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`The ’788 patent discloses a system and a method for monitoring the
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`condition of a vehicle. Ex. 1001, 3:35–38; 4:1–14. Sensors monitor
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`components of the vehicle and are connected to a diagnostic module. Id. at
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`3:39–41, 46–47. The diagnostic module determines an actual or potential
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`failure of the component or subsystem. Id. at 3:49–50. The diagnostic
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`module controls a communications unit that communicates through a
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`wireless communications network with a remote site. Id. at 3:38–39, 48.
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`The remote site is any site or location interested in receiving information
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`about the diagnostic or prognostic status of the components of the vehicle.
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`Id. at 3:53–56. The ’788 patent describes diagnostics as generally
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`determining the present condition of the component. Id. at 7:41–42. The
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`’788 patent describes prognostics as determining when a component will
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`fail. Id. at 7:45–46.
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`The method described collects status data for vehicle maintenance and
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`monitors a triggering event on a vehicle. Ex. 1001, 4:42–49. The triggering
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`event relates to a diagnostic or prognostic analysis of at least one component
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`or subsystem of the vehicle. Id. The triggering event initiates a transmission
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`between the communications unit and a remote site. Id. The transmission
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`includes a diagnostic or prognostic message about the component or
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`subsystem, e.g., a message about a failure, predicted failure, or fault code
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`generation of the component or subsystem. Id.
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`3
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`IPR2013-00417
`Patent 8,036,788 B2
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`Figure 3 of the ’788 patent is reproduced below:
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`Figure 3 is a schematic of a vehicle illustrating a total diagnostic
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`system utilizing the diagnostic module. Ex. 1001, 20:32–36. The sensors
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`shown in Figure 3 are mounted on components within the engine of the
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`vehicle including, among other sensors, the following: microphone 2,
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`coolant thermometer 3, oil pressure sensor 4, oil level sensor 5, air flow
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`meter 6, voltmeter 7, ammeter 8, engine knock sensor 10, oil turbidity sensor
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`11, throttle position sensor 12, oxygen sensor 17, transmission fluid level
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`sensor 25, coolant level sensor 27, transmission fluid turbidity sensor 28,
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`brake pressure sensor 29, and coolant pressure sensor 30. Id. at Figs. 3, 4,
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`20:59–21:10.
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`Figure 20C of the ’788 patent is reproduced below:
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`4
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`IPR2013-00417
`Patent 8,036,788 B2
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`Figure 20C is a block diagram showing a general system for obtaining
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`information about a vehicle or vehicle component. Ex. 1001, 54:26–27.
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`Control system 628 is coupled to and controls antenna array 622, enabling
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`reception of return signals from sensors 627. Id. at 54:40–43. The
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`information is directed to display/telematics/adjustment unit 629 where the
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`information can be displayed on display 629 to the driver and sent to a
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`remote location for analysis via telematics unit 629. Id. at 54:61–66.
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`D. Status of Claims
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`Because we have granted AVS’s Second Motion to Amend Claims,
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`only claim 9 remains for further consideration.
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`Claim 9 depends from claim 7, which depends from independent
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`claim 1. Claims 1, 7, and 9 are reproduced below:
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`1. A method for providing status data for vehicle
`maintenance, comprising:
`monitoring for a triggering event on a vehicle having a
`wireless communications unit, the triggering event relating to a
`diagnostic or prognostic analysis of at least one of a plurality of
`different components or subsystems of the vehicle; and
`initiating a wireless transmission between the
`communications unit and a remote site separate and apart from
`the vehicle in response to the triggering event, the transmission
`including a diagnostic or prognostic message about the at least
`one component or subsystem.
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`7. The method of claim 1, wherein the step of monitoring
`for the triggering event comprises providing at least one sensor
`that monitors the at least one component or subsystem.
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`9. The method of claim 7, wherein the at least one sensor
`is part of a diagnostic module on the vehicle, further comprising
`configuring the diagnostic module to analyze data obtained by
`the at least one sensor in order to predict failure of the at least
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`5
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`IPR2013-00417
`Patent 8,036,788 B2
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`one component of subsystem and generate the triggering event
`based on prognostic criteria.
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`E. Prior Art Reference Supporting Alleged Unpatentability
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`The only claim remaining for review is claim 9. The Decision
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`instituted review of claim 9 based only on anticipation under 35 U.S.C.
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`§ 102(a) based on the prior art reference Fry. Dec. 31–34. Fry is identified
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`as follows: K. N. Fry, Diesel Locomotive Reliability Improvements by
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`System Monitoring, 209 PROC. INSTITUTION MECHANICAL ENGINEERS, PART
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`F: J. RAIL & RAPID TRANSIT 1 (1995) (Ex. 1005).
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`II. ANALYSIS
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`A. Introduction
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`The parties agree that the only issue before us is whether the Fry
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`reference was accessible publicly prior to June 7, 1995. Joint Statement
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`Introducing Supplemental Evidence, 1 (“Joint Statement,” Paper 45). At the
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`hearing, AVS stated that the only remaining issue is evidentiary, i.e.,
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`whether or not Fry is prior art.1 Tr. 103:1–16. Toyota stated that the only
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`remaining issue is “whether Toyota has shown or can show by a
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`preponderance of the evidence that the Fry reference was published prior to
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`the asserted priority date of June 7, 1995 and, therefore, is prior art under
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`102(a).” Tr. 56:11–15. If Fry is found to be prior art, AVS concedes that
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`claim 9 is anticipated by Fry. In any event, we have reviewed all of the non-
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`excluded evidence in this case and determine that Toyota has shown by a
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`preponderance of the evidence that claim 9 is anticipated by Fry.
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`1 We note that although there are evidentiary issues relating to Fry, the
`question of whether Fry constitutes prior art is not itself an evidentiary issue.
`Rather, it is a part of the substantive case that Toyota must prove.
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`6
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`IPR2013-00417
`Patent 8,036,788 B2
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`Fry is a technical article that indicates on its face that it was
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`copyrighted in 1995. Ex. 1005, 2–12. However, the copy of Fry of record
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`and submitted by Toyota was downloaded from Sage Publications and
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`includes two additional pages added from the Sage Publications website. Id.
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`at 1, 13. Page 1, states “Version of Record – Jan 1, 1995.” 2 Page 13 of
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`Exhibit 1005 shows a URL of
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`http://pif.sagepub.com/content/209/1/1.abstract[5/22/2013 3:46:13 PM].
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`Hereinafter pages 1 and 13 of Exhibit 1005 are referenced as the “Sage
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`Publications Webpages.”
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`Exhibit 1011 (the “Fry Award”) is an award Mr. Fry received in
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`connection with the publication of Fry from The Institution of Mechanical
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`Engineers. As relevant here, the Fry Award indicates Fry was “Published in
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`the Proceedings Part F1 1995.”
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`Exhibit 1012 (“Sage Publications Website Printout”) is Sage
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`Publications Website Listing, captioned “Index by Author — January 1995,
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`209 (1).” Toyota relies on the Sage Publications Website Printout to show
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`that Fry was published in January 1995. Opposition to Motion to Exclude 2,
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`12 (“Opp. Mot. Exclude,” Paper 55). A number of authors and their articles
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`are listed in the Sage Publications Website Printout, including Fry. The
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`listing for the Fry article, in a format like all the other article listings in the
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`Sage Publications Website Printout, states: “Part F: Journal of Rail and
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`Rapid Transit January 1995.”
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`There is nothing in Fry, the article itself, which purports to indicate
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`when in 1995 the article was published. Both parties presented evidence
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`2 The cover page of Exhibit 1005 was “Downloaded from pif.sagepub.com
`by guest on June 3, 2013.” Ex. 1005, 1.
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`IPR2013-00417
`Patent 8,036,788 B2
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`during trial concerning whether or not Fry was prior art and, thus, publicly
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`available before June 7, 1995.
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`B. AVS’s Motion to Exclude
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`As noted above, the copy of Fry in the record (Exhibit 1005) includes
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`the Sage Publications Webpages. In addition, Toyota offers supplemental
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`evidence including: Exhibit 1011 (Fry Award); Exhibit 1012 (Sage
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`Publications Website Printout); Exhibit 1013 (Declaration of Kevin N. Fry,
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`Fry Declaration); and Exhibit 1014 (Affidavit of Sarah Broadhurst,
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`Broadhurst Affidavit). AVS filed a Motion to Exclude Toyota’s evidence.
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`(“Mot. Exclude,” Paper 51). The Motion to Exclude seeks to exclude
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`portions of Exhibit 1005 and Exhibits 1011–1014. Mot. Exclude 7–15.
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`1. Sage Publications Webpages (Ex. 1005, pages 1, 13),
`Sage Publications Website Printout (Ex. 1012),
`and Broadhurst Affidavit (Ex. 1014)
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`AVS moves to exclude the Sage Publications Webpages and the Sage
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`Publications Website Printout on the grounds that they are irrelevant and
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`constitute inadmissible hearsay. Mot. Exclude 7–9, 11–12. We discuss the
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`irrelevance contention first, and then the hearsay contention.
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`“Evidence is relevant if: (a) it has any tendency to make a fact more or
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`less probable than it would be without the evidence; and (b) the fact is of
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`consequence in determining the action.” Fed. R. Evid. 401. The Sage
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`Publications Website Printout and Sage Publications Webpages are offered
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`by Toyota to prove that Fry was published in January 1995. Opp. Mot.
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`Exclude 10–11. The copy of Fry in the record indicates that Sage
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`Publications published Fry “on behalf” of the Institution of Mechanical
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`Engineers (“iMechE”). Ex. 1005, 1. We cannot conclude that the Sage
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`Publications Website Printout or the Sage Publications Webpages have “no”
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`IPR2013-00417
`Patent 8,036,788 B2
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`tendency to make Petitioner’s alleged publication date of Fry more or less
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`probable. The Sage Publications Website Printout and Sage Publications
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`Webpages are, therefore, relevant.
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`AVS seeks to exclude the Sage Publications Website Printout and the
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`Sage Publications Webpages as hearsay. AVS contends there is no hearsay
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`exception that would result in admission of the Sage Publications Webpages
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`or Website Printout. Mot. Exclude 9, 11. Toyota argues Exhibit 1012 and
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`the Sage Publications Webpages of Exhibit 1005 are admissible as an
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`exception to the hearsay rule, citing to Federal Rule of Evidence 803(6),
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`records of a regularly conducted activity. Opp. Mot. Exclude, 1, 10–12.
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`Based on the Broadhurst Affidavit (Exhibit 1014), we find that
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`iMechE is said to have previously published the journal of its proceedings
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`twice a year. Ex. 1014 ¶ 7. At some unspecified time, and from that time
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`forward, iMechE arranged for Sage Publications to administer the archiving
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`of past journals and to make them available to the public “on behalf of
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`iMechE.” Ex. 1005, 1, 13; Ex. 1014 ¶ 3.
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`Toyota relies on the Broadhurst Affidavit (Exhibit 1014) to lay the
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`foundation necessary to establish the Sage Publications Website Printout
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`(Exhibit 1012) as a record of a regularly conducted activity, i.e., a business
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`record, under Federal Rule of Evidence 803(6). Opp. Mot. Exclude 2, 12.
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`The same testimony is used to support the admissibility of the Sage
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`Publications Webpages. Id. at 10.
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`Ms. Broadhurst’s testimony fails to lay the necessary foundation
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`under Federal Rule of Evidence 803(6) to admit the Sage Publications
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`Website Printout or the Sage Publications Webpages. To be admissible, “the
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`record was made at or near the time by — or from information transmitted
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`9
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`IPR2013-00417
`Patent 8,036,788 B2
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`by — someone with knowledge.” Fed. R. Evid. 803(6)(A). Exhibit 1012,
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`the Sage Publications Website Printout, includes a 2012 date. The Sage
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`Publications Webpages have 2013 dates. Ex. 1005, 1, 13. Ms. Broadhurst
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`has no stated knowledge of Sage Publications or their record keeping
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`practices and her testimony does not meet the requirements of Federal Rule
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`of Evidence 803(6)(A).
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`Ms. Broadhurst’s testimony also does not establish that Exhibit 1012
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`or Exhibit 1005, pages 1 and 13, are records “kept in the course of a
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`regularly conducted activity of a business, organization, occupation, or
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`calling, whether or not for profit.” Fed. R. Evid. 803(6)(B). Ms. Broadhurst
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`testifies that iMechE keeps dates “received, accepted for publication, and
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`eventually published.” Ex. 1014 ¶ 4. Ms. Broadhurst further states that “I
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`have reviewed, on the Sage Publications’ website, the Institution of
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`Mechanical Engineers’ records relating to the Fry article.” Ex. 1014 ¶ 5.
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`There is no evidence that Sage Publications’ records are iMechE records or
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`of any relationship between the two regarding records.3 Ms. Broadhurst
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`does not identify nor mention the only records at issue, the Sage Publications
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`Website Printout and the Sage Publications Webpages. Ms. Broadhurst
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`offers no testimony about any business activity of Sage Publications upon
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`which the exception under Federal Rule of Evidence 803(6)(B) is based.
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`Similarly, because Ms. Broadhurst has no stated association with Sage
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`Publications, her testimony cannot establish the “making the record was a
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`3 Toyota’s argument that Sage Publications stores or otherwise has some
`responsibility for the business records of iMechE is unsupported by the
`evidence. See Opp. Mot. Exclude 10 (citing United States v. Moore, 923
`F.2d 910, 914 (1st Cir. 1991)).
`
`
`
`
`10
`
`
`
`IPR2013-00417
`Patent 8,036,788 B2
`
`regular practice of that activity” of Sage Publications. Fed. R. Evid.
`
`803(6)(C).
`
`Toyota has not shown by a preponderance of the evidence that Ms.
`
`Broadhurst is a “custodian or another qualified witness” of records that
`
`would include Exhibit 1012 or the Sage Publications Webpages of Exhibit
`
`1005. See Fed. R. Evid. 803(6)(D). Exhibits 1012 and pages 1 and 13 of
`
`Exhibit 1005 indicate they are records of Sage Publications, and, as
`
`discussed above, Ms. Broadhurst does not testify that she has any
`
`responsibility or role in generating or maintaining records at Sage
`
`Publications. The lack of any testified involvement of Ms. Broadhurst with
`
`Sage Publications also raises an issue as to “the source of information or the
`
`method or circumstances of preparation indicate a lack of trustworthiness.”
`
`Fed. R. Evid. 803(6)(E).
`
`AVS requests all of Ms. Broadhurst’s testimony be excluded,
`
`including both the business records testimony as well as testimony relating
`
`to publication of Fry, as lacking personal knowledge and, to the extent it is
`
`based on Sage Publications documents, as hearsay. Mot. Exclude 13–15.
`
`Ms. Broadhurst’s testimony relative to the Sage Publications Website
`
`Printout (Exhibit 1012) and Sage Publications Webpages (Exhibit 1005, 1,
`
`13) is not excluded as it relates to an attempt to lay a business records
`
`foundation. See Ex. 1014 ¶¶ 1–5. As discussed above, the testimony is,
`
`nonetheless, insufficient to lay a proper foundation for admission of Exhibits
`
`1012 and 1005, pages 1 and 13.
`
`Paragraphs 6 and 7 of Exhibit 1014 are part of Ms. Broadhurst’s
`
`testimony in these proceedings and are not an out of court statement,
`
`because they are made in these proceedings, i.e., in court. See Fed. R. Evid.
`
`
`
`
`11
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`
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`IPR2013-00417
`Patent 8,036,788 B2
`
`801(c). As such the testimony is not hearsay. Nor do we agree that the
`
`testimony is not based on her personal knowledge. See Mot. Exclude 13.
`
`The Broadhurst Affidavit includes a copy of Fry as Exhibit 1002,4 which she
`
`testifies is a true and correct copy. Ex. 1014 ¶ 2. Ms. Broadhurst states her
`
`position with iMechE and testifies on behalf of iMechE providing her
`
`personal knowledge of the publishing records and practices of iMechE. Id.
`
`¶¶ 3–4. Based on Ms. Broadhurst’s position as “Library and Archive
`
`Assistant” for iMechE, she testifies on behalf of iMechE and verifies the
`
`date of publication of Fry, i.e., when it was “made available” as of January
`
`1995. Id. ¶ 6.
`
`AVS’s argument is misplaced, that “to the extent that Ms. Broadhurst
`
`is argued to be relying on other records that are not in evidence, the law is
`
`clear—hearsay testimony about supposed ‘records’ that are not in evidence
`
`is inadmissible.” Mot. Exclude 14. The records which Ms. Broadhurst
`
`might have considered in making her statement need not be admissible
`
`evidence or even in the record of this proceeding. What matters is the
`
`statement of Ms. Broadhurst, in her official capacity relating to archived
`
`information of iMechE, that Fry was made available the public in January
`
`1995.
`
`Our rules provide for testimony by way of affidavit. 37 C.F.R.
`
`§ 42.53(a). Ms. Broadhurst’s testimony was produced following the cited
`
`procedure. Cross examination of that testimony is routine discovery and
`
`may be taken by deposition. 37 C.F.R. § 42.51(b)(1)(ii); 37 C.F.R.
`
`§ 42.53(b)(2). Cross examination of supplemental evidence, like the
`
`
`4 The copy of Fry includes the Sage Publication Webpages, pages 1 and 13
`of Exhibit 1005.
`
`
`
`
`12
`
`
`
`IPR2013-00417
`Patent 8,036,788 B2
`
`Broadhurst Affidavit, is governed by 37 C.F.R. § 42.53(d)(2). AVS elected
`
`not to cross examine Ms. Broadhurst, as it could have. Had it done so, AVS
`
`might have developed specific deficiencies in the testimony. On this record,
`
`and under our procedures, we find the testimony admissible.
`
`2. Summary of AVS’s Motion to Exclude Sage Publications Webpages
`(Ex. 1005, pages 1, 13), Sage Publications Website Printout (Ex. 1012), and
`Broadhurst Affidavit (Ex. 1014)
`
`We grant AVS’s Motion to Exclude as to Exhibit 1012 (the Sage
`
`Publications Website Printout) and Exhibit 1005, pages 1, 13 (the Sage
`
`Publications Webpages) on the grounds that they contain hearsay.
`
`For reasons stated above, we deny AVS’s Motion to Exclude Exhibit
`
`1014 (Broadhurst Affidavit).
`
`3. Fry Award (Ex. 1011)
`and Fry Declaration (Ex. 1013)
`
`AVS moves to exclude both the Fry Declaration (Exhibit 1013) and
`
`the Fry Award (Exhibit 1011). Mot. Exclude 3–4. AVS argues the Fry
`
`Award is irrelevant because it shows the same date as the Fry article, 1995,
`
`and no more. Id. at 10. Further, AVS argues the F1 designation in the Fry
`
`award, if offered for the truth of the designation, is hearsay. Id. AVS argues
`
`that Mr. Fry’s testimony that the Fry article was published in January 1995
`
`is inadmissible as the Fry Declaration fails to establish he has personal
`
`knowledge of the publication date. Id. at 12.
`
`Toyota argues the Fry Award is used only to refresh Mr. Fry’s
`
`recollection. Opp. Mot. Exclude 14. That is incorrect. To the contrary,
`
`Toyota does offer the Fry award to prove that the Fry article has a F1
`
`designation. Id. With regard to the Fry Declaration, Toyota argues that
`
`AVS has not provided a specific objection to the Fry Declaration and is
`
`
`
`
`13
`
`
`
`IPR2013-00417
`Patent 8,036,788 B2
`
`arguing only evidentiary weight. Id. at 13. Toyota likewise is incorrect.
`
`AVS argues the Fry Declaration is inadmissible based on either lack of
`
`personal knowledge or inadmissible hearsay. Mot. to Exclude 12–13.
`
`The Fry Award states only that Fry was “Published in the Proceedings
`
`Part F1 1995.” Ex. 1011. Toyota’s purpose in offering the Fry Award is to
`
`prove that Fry was published in January 1995, by way of the F1 designation
`
`in the award. Opp. Mot. Exclude 14. The F1 designation is explained by the
`
`Broadhurst Affidavit as indicating a January publication date (Ex. 1014 ¶ 7).
`
`Thus, the Fry Award is an out of court statement on the F1 designation to
`
`prove that the F1 designation is true. We determine that, for that purpose,
`
`the Fry Award is inadmissible.
`
`The Fry Declaration alleges that Mr. Fry authored the Fry article,
`
`which appeared in the “Proceeding of the Institution of Mech. Engineers,
`
`Part F,” a copy of which accompanies the Fry Declaration. Ex. 1013 ¶ 2
`
`(emphasis added). The Fry Declaration then identifies the Fry Award, which
`
`accompanies the declaration. Id. at ¶ 3. In addition to the Fry article and
`
`Fry Award, Mr. Fry was “aware” of the Sage Publications Website Printout
`
`(Exhibit 1012), which also accompanies his declaration and, with his
`
`memory refreshed, testified that the “Fry paper was published in January
`
`1995.” Id. at ¶¶ 4–5.
`
`Mr. Fry’s testimony related to the publication date of Fry as January
`
`1995 (Exhibit 1013 ¶ 5) is based on a review of three documents: Fry; the
`
`Fry Award; and the Sage Publications Website Printout (Exhibit 1012). Ex.
`
`1013 ¶ 5. With a refreshed recollection based on that review, Mr. Fry
`
`testifies the publication date of Fry was January 1995. Id. Mr. Fry has
`
`personal knowledge of Fry and the Fry Award, neither of which say
`
`
`
`
`14
`
`
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`IPR2013-00417
`Patent 8,036,788 B2
`
`anything about publication of Fry in January. The only document which
`
`states January 1995 is the Sage Publications Website Printout, a document
`
`about which Mr. Fry has no personal knowledge.
`
`The Fry Declaration is given minimal weight concerning the
`
`publication date of Fry. There are almost twenty years between 1995 and
`
`February 7, 2014, when Mr. Fry signed the Fry Declaration. Mr. Fry does
`
`not provide any explanation of why he would have any personal knowledge
`
`of the publication date or that he had any involvement with publication of
`
`the article by iMechE. The only document he reviewed to refresh his
`
`memory that had a January 1995 date was Exhibit 1012, which we have
`
`excluded from evidence. Further, Mr. Fry does not testify to having any
`
`knowledge, information, or understanding about the creation of Exhibit 1012
`
`or the entity that did create it, Sage Publications.
`
`4. Summary of AVS’s Motion to Exclude
`Exhibit 1011 (Fry Award) and Exhibit 1013 (Fry Declaration)
`
`For the reasons stated above we grant AVS’s Motion to Exclude
`
`Exhibit 1011 (the Fry Award).
`
`The Fry Declaration is not excluded but its evidentiary value is
`
`minimal.
`
`B. Whether or Not Fry is Prior Art
`
`As was discussed above in connection with AVS’s Motion to
`
`Exclude, we have not excluded Ms. Broadhurst’s testimony, on behalf of
`
`iMechE, that Fry was made available to the public in January 1995. See
`
`Ex. 1014 ¶ 6. We have also considered AVS’s evidence which it argues
`
`show it is unlikely that Fry was available publicly in January 1995. As
`
`discussed below, based on the Broadhurst Affidavit, Toyota has shown by a
`
`
`
`
`15
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`
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`IPR2013-00417
`Patent 8,036,788 B2
`
`preponderance of the evidence that Fry was available publicly prior to June
`
`7, 1995.
`
`1. Effective Filing Date of ’788 Patent
`
`On the face of the ’788 patent a series of prior continuation-in-part
`
`applications are identified as related U.S. applications, the earliest of which
`
`has a filing date of June 7, 1995. Ex. 1001, at [60]. Both Toyota and AVS
`
`have conducted this proceeding based on the June 7, 1995 date being the
`
`earliest effective filing date of th
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