UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________________________________________________________
`
`TOYOTA MOTOR CORPORATION
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`Petitioner,
`
`v.
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`AMERICAN VEHICULAR SCIENCES LLC
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`Patent Owner.
`
`Patent 8,036,788
`Issue Date: October 11, 2011
`Title: VEHICLE DIAGNOSTIC OR PROGNOSTIC MESSAGE
`TRANSMISSION SYSTEMS AND METHODS
`__________________________________________________________________
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`Case No. IPR2013-00417
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`__________________________________________________________________
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________________________________________________________
`
`TOYOTA MOTOR CORPORATION
`
`Petitioner,
`
`v.
`
`AMERICAN VEHICULAR SCIENCES LLC
`
`Patent Owner.
`
`Patent 8,036,788
`Issue Date: October 11, 2011
`Title: VEHICLE DIAGNOSTIC OR PROGNOSTIC MESSAGE
`TRANSMISSION SYSTEMS AND METHODS
`__________________________________________________________________
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`Case No. IPR2013-00417
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`__________________________________________________________________
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`I.
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`II.
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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION ...................................................................................................... 1
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`THE BOARD SHOULD MAINTAIN ITS OPINION
`THAT CLAIM 9 IS UNPATENTABLE OVER FRY ........................................ 2
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`III. CONCLUSION............................................................................................................ 8
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`-i-
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`TABLE OF AUTHORITIES
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`Page
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`Cases
`Ajinomoto Co. v. Archer-Daniels-Midland Co.,
`No. 95-218, 1998 WL 151411 (D. Del. Mar. 13, 1998) .................................................. 8
`
`
`Carella v. Starlight Archery & Pro Line Co.,
`804 F.2d 135 (Fed. Cir. 1986) ............................................................................................. 7
`
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`DH Tech., Inc. v. Synergystex Int’l, Inc.,
`No. 92-3307, 1994 U.S. Dist. LEXIS 5301 (N.D. Cal. Apr. 11, 1994)......................... 8
`
`
`Hilgraeve, Inc. v. Symantec Corp.,
`271 F. Supp. 2d 964 (E.D. Mich. 2003). ............................................................................ 6
`
`
`In re Hall,
` 781 F.2d 897 (Fed. Cir. 1986) ............................................................................................. 4
`
`In re Omeprazole Patent Litig.,
`490 F. Supp. 2d 381 (S.D.N.Y. 2007) ................................................................................ 7
`
`
`Norian Corp. v. Stryker Corp.,
`363 F.3d 1321 (Fed. Cir. 2004) ........................................................................................... 7
`
`
`Santec Indus. v. Micro-Waste Corp.
`No. 04-3066, 2006 WL 3455000 (S.D. Tex. Nov. 28, 2006) .......................................... 6
`
`
`Statutes
`35 U.S.C. § 102 ........................................................................................................................... 2
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`35 U.S.C. §316 ............................................................................................................................ 6
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`37 C.F.R. § 42.23 ....................................................................................................................... 1
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`37 C.F.R. § 42.24 ....................................................................................................................... 1
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`IPR2013-00417
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`INTRODUCTION
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`I.
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`Pursuant to 37 C.F.R. §§ 42.23-24, Petitioner Toyota Motor Corporation
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`(“TMC”) submits the following Reply in support of its petition for inter partes review
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`(“IPR”), designated number IPR2013-00417, of certain of the claims of U.S. Patent
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`No. 8,036,788 (“the ’788 patent”). This filing is in reply to the Response submitted by
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`the Patent Owner (Paper 30, hereinafter “Response”) and is timely pursuant to the
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`Board’s Scheduling Order (Paper 15) and the parties’ stipulation extending Due Date
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`2 to June 2, 2014. (See Paper 26, Joint Notice of Stipulation to Adjust Schedule.)
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`TMC’s petition identified claims 1, 3, 4, 6-9, 11, 15, 16, and 18 of the ’788
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`patent as the claims at issue. The Board instituted IPR in connection with all of these
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`claims. Patent Owner AVS (“AVS”) presents no arguments rebutting, or purporting
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`to rebut, the case for the unpatentability of claims 1, 3, 4, 6-8, 11, 15, 16, and 18.
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`Instead, it filed a non-contingent motion to amend, requesting cancellation of those
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`claims, and proposing substitute claims.
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`With respect to the remaining claim addressed in TMC’s petition—claim 9—
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`AVS provides no substantive argument that attempts to explain how this claim is
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`patentable over “Diesel Locomotive Reliability Improvement by Systems Monitoring”
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`by Fry (Exhibit 1005, Fry). AVS’s sole argument for patentability is that Fry does not
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`qualify as prior art under 35 U.S.C. § 102(a). (See generally Response at 6-13.)
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`AVS states that claim 9 is entitled to the priority date of a June 7, 1995,
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`application. For purposes of its petition, TMC does not challenge this assertion.
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`AVS asserts no earlier date of invention. Accordingly, the only issue is whether TMC
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`IPR2013-00417
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`has proven by a preponderance of evidence that Fry was published prior to June 7,
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`1995, and therefore is prior art under 35 U.S.C. § 102(a).1
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`II. THE BOARD SHOULD MAINTAIN ITS OPINION THAT CLAIM 9
`IS UNPATENTABLE OVER FRY
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`The totality of the evidence establishes that it is more likely than not that Fry
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`was published prior to June 7, 1995, and is thus prior art to the ’788 patent under 35
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`U.S.C. § 102(a).
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`AVS does not dispute that Fry was actually published in the Proceedings of the
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`Institution of Mechanical Engineers, Part F: Journal of Rail and Rapid Transit, Vol. 209,
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`No. F1, or that it was available sometime in 1995. Instead, AVS only takes issue with
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`TMC’s evidence regarding the specific date within 1995 when this article was first
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`made available to the public. The face of the Fry article includes a copyright date of
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`“1995.” (Ex. 1005, Fry, at 1-3.) It does not, however, specify the exact day on which
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`the Fry article was published and available to the public in 1995. Therefore, for the
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`1
`AVS has indicated that it will file a motion contesting the admissibility of
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`TMC’s evidence regarding the Fry publication date, and that it will argue admissibility
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`only at that time. See Response at 8-9. Therefore, TMC will respond to those
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`arguments, if made, at that time.
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`2
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`purposes of establishing a publication date, TMC relies on various evidence2
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`IPR2013-00417
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`establishing—by a preponderance of the evidence—publication of the Fry article in
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`January 1995, or at least prior to June 7, 1995.
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`First, TMC relies on records maintained on the website of Sage Publications,
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`the current publisher of the Fry paper, that indicate publication in January 1995. (Ex.
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`1012, Sage Publications Inc.’s Website Listing, at 1-2, 4, 6.) AVS argues that Sage
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`Publications “was not the original publisher of Fry in 1995,” and that TMC’s
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`witnesses have not “corroborated the January 1, 1995 date.” But these objections are
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`insufficient in view of TMC’s additional evidence.
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`TMC also relies on an affidavit by Sara Broadhurst, a Library and Archive
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`Assistant for the original publisher of the Fry article, the Institution of Mechanical
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`Engineers (“iMechE”). (See Ex. 1014, Broadhurst Aff., at ¶¶ 1-3; Ex. 1005, Fry, at 2 .)
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`AVS’s assertion that Ms. Broadhurst “does not work for the organization that actually
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`published Fry in 1995 or the organization that currently publishes Fry,” (Response at
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`13), misses the point. According to Ms. Broadhurst’s affidavit, the iMechE is the
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`entity ultimately responsible for the Fry article: the iMechE accepted the article for
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`publication, arranged for the article’s publication in 1995, and continues to arrange for
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`While TMC contends that the preponderance of the evidence shows that the
`2
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`Fry article was published before June 7, 1995, it has not been able to confirm that fact
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`by locating physical copies with a recipient-stamped date prior to that date.
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`3
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`its publication today. (Ex. 1014, Broadhurst Aff., at ¶¶ 2-4.)3 Further, the declaration
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`IPR2013-00417
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`states that the records maintained on the Sage Publications website—relating to the
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`date on which, for example, the Fry article was received, accepted for publication, and
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`published—are business records generated and maintained in the ordinary course of
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`business by the iMechE, and they show that the Fry article was made available to the
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`public by January 1995. (Id. at ¶¶ 4-6.) And, consistent with the Fry article itself and
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`Mr. Fry’s declaration (discussed below), Ms. Broadhurst explains that “Part F: Journal
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`of Rail and Rapid Transit … was published semi-annually, in two separate issues
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`identified as ‘F1’ and ‘F2’,” with the “F1 issue published in January of each year.” (Id.
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`at ¶ 7.) The Federal Circuit has held that a librarian’s affidavit regarding general
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`library practices, such as the affidavit provided by Ms. Broadhurst, is sufficient to
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`establish when a publication became publicly available. In re Hall, 781 F.2d 897, 898-
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`899 (Fed. Cir. 1986) (finding that a reference was publicly available where the
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`probative evidence was a librarian’s affidavit regarding the library’s business practices
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`and the approximate date of publication based on these practices).
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`And, TMC further relies on a declaration by the author of the Fry article to
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`corroborate publication in January 1995. (Ex. 1013, Fry Decl.) In his declaration, Mr.
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`Fry states that he authored the Fry article. (Id. at ¶ 2.) He also states that it is his
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`Consistently, the Fry article indicates on its face that it was “Published for the
`3
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`Institution of Mechanical Engineers.” (Ex. 1005, Fry, at 2.)
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`4
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`recollection that the article was published in January 1995. (Id. at ¶ 5.) According to
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`IPR2013-00417
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`Mr. Fry, his recollection regarding the month of publication was refreshed by his
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`review of (i) the paper itself, (ii) an award he received based on the paper, and (iii)
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`printouts from the website of Sage Publications. (Id.) Mr. Fry’s award, consistent
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`with both Ms. Broadhurst’s affidavit and the Fry article itself, expressly indicates that
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`the article was part of the “F1” issue of “Part F” of the “Proceedings of the
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`Institution of Mechanical Engineers.” (Ex. 1011, Fry award, at 1.) Thus, the award
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`does more than “merely indicate[ ] that Fry was published in ‘1995’” as AVS alleges,
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`(Response at 12 n.3.); instead, the award corroborates that the Fry article was part of
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`the first of two issues of “Part F” of the “Proceedings of the Institution of
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`Mechanical Engineers” that were published in 1995.
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`Last, the Fry article itself includes various pertinent pieces of information,
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`ignored by AVS, all of which support TMC’s contention that the article was published
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`and available to the public prior to the ’788 patent’s alleged June 7, 1995, priority date.
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`For instance, the article’s table of contents explains that “Part F” of the “Proceedings
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`of the Institution of Mechanical Engineers,” the journal that contains the Fry article,
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`is “published twice a year. The two issues are numbered separately within the volume,
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`i.e. F1, F2.” (Ex. 1005, Fry, at 2.) As specified by the table of contents, the Fry article
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`is part of the F1 issue, the first issue published in 1995. (Id.) Further, the first page of
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`the Fry article explains that the article was “received 25 November 1993 and was
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`accepted for publication on 22 December 1994.” (Id. at 3.) AVS argues that Fry
`5
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`could not have been published in January 1995 because it was “accepted for
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`IPR2013-00417
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`publication” only a few days earlier in December 1994. (Response at 11.) This
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`ignores, however, the evidence that the article had been in the possession of the
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`Institution of Mechanical Engineers since November 1993.
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`The declaration and the affidavit each prove—and certainly together with the
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`Fry article and the materials from the Sage website, prove—by a preponderance of the
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`evidence, that Fry was published and available to the public prior to June 7, 1995.
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`Indeed, AVS presents no evidence of its own regarding the date on which the
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`Fry article was published. Instead, it simply argues that TMC’s evidence of public
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`availability prior to June 7, 1995, is insufficient. In making this argument, however,
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`AVS cites to no case law applying the “preponderance of the evidence” standard of
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`proof applicable in an IPR under 35 U.S.C. § 316 (e), and to no case law in which the
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`patent challenger offered the level of corroborating testimonial evidence presented
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`here in support of invalidity.
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`For example, AVS cites to Hilgraeve, Inc. v. Symantec Corp. In that case, a single
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`declaration by the prior art software publisher was insufficient to meet the clear and
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`convincing proof standard. 271 F. Supp. 2d 964, 976 (E.D. Mich. 2003). Again, the
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`clear and convincing evidentiary standard is inapplicable here. Instead, TMC only
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`needs to establish the Fry article’s date of availability by a preponderance of the
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`evidence. AVS’s citation to Santec Indus. v. Micro-Waste Corp. is also unavailing. In that
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`case, the article itself had no date, and the court found that an undated publication—
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`without any additional evidence—is insufficient proof of prior art under the clear and
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`IPR2013-00417
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`convincing standard. No. 04-3066, 2006 WL 3455000, at *9 (S.D. Tex. Nov. 28,
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`2006). Here, not only does the lower, preponderance of the evidence standard apply,
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`but the Fry article includes both a 1995 date and other dating information on its face.
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`Further, TMC has submitted additional evidence regarding the month in which the
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`article was available to the public.
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`AVS further cites to the Carella and In re Omeprazole cases, where there was no
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`evidence at all, let alone clear and convincing evidence, of public availability. Carella v.
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`Starlight Archery & Pro Line Co., 804 F.2d 135, 139 (Fed. Cir. 1986); In re Omeprazole
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`Patent Litig., 490 F. Supp. 2d 381, 520 (S.D.N.Y. 2007). For example, in Carella, it
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`appears that the publication was dated just before the critical date, but there was no
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`evidence that the transit time of the article through the mail was short enough such
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`that it was received by the public in time. Carella, 804 F.2d at 139. Here, both the Fry
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`declaration and Broadhurst affidavit explain that the Fry article was published in
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`January 1995, six months before AVS’s alleged June 7, 1995, priority date.
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`The Norian case is also not on point. There, the Federal Circuit did not address
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`the question of publishing by mail, through libraries, or over the Internet. Rather, the
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`Court called into question the sufficiency of the physical dissemination of a
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`conference article. Norian Corp. v. Stryker Corp., 363 F.3d 1321, 1330 (Fed. Cir. 2004).
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`The Fry article is not a conference article. Instead, it is part of a periodically
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`published journal.
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`7
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`IPR2013-00417
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`The other cases cited by AVS are also distinguishable. In the Ajinomoto case,
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`the court found that the uncorroborated testimony from the author of the prior art
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`article was insufficient under the clear and convincing standard. Ajinomoto Co. v.
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`Archer-Daniels-Midland Co., No. 95-218, 1998 WL 151411, at *38 (D. Del. Mar. 13,
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`1998). Here, Mr. Fry’s declaration is corroborated by an award he received, along
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`with the Fry article itself. Further, Mr. Fry’s declaration is bolstered by and consistent
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`with Ms. Broadhurst’s affidavit. Last, in the DH Tech. case, the publication month and
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`year printed on the reference itself was found insufficient, under the clear and
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`convincing standard, to prove the publication day (within the month indicated on the
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`reference). DH Tech., Inc. v. Synergystex Int’l, Inc., No. 92-3307, 1994 U.S. Dist. LEXIS
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`5301, at *4 (N.D. Cal. Apr. 11, 1994). In this case, since AVS only alleges a June 7,
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`1995, priority date, the actual day in January 1995 on which the Fry article was
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`published is unimportant.
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`In the absence of any argument on the merits, and in light of TMC’s proof that
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`Fry was published and available to the public prior to June 7, 1995, the Board’s initial
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`determination that claim 9 is unpatentable should be maintained.
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`III. CONCLUSION
`For the reasons in TMC’s Petition for Inter Partes Review of U.S. Patent No.
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`8,036,788 (Paper 2, Petition for IPR of 8,036,788), for the reasons in the Board’s
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`decision to institute an inter partes review (Paper 14, Institution Decision) , and for the
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`8
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`additional reasons set forth above, the Board should maintain its decision of
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`IPR2013-00417
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`unpatentability of claim 9.
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`Dated: June 2, 2014
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`A. Antony Pfeffer
`Lead Counsel for Petitioner
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004
`Tel: 212-425-7200
`Fax. 212-425-5288
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`_/A. Antony Pfeffer/___________
`A. Antony Pfeffer (Reg. No. 43,857)
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`Thomas R. Makin
`Back-Up Counsel for Petitioner
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004
`Tel: 212-425-7200
`Fax. 212-425-5288
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`CERTIFICATE OF SERVICE
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`The undersigned hereby confirms that Petitioner’s Reply to Patent Owner’s
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`Response and Exhibits 1019-1029 were served on June 2, 2014 via e-mail upon the
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`following counsel of record for Patent Owner:
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`Thomas J. Wimbiscus
`Scott P. McBride
`Stephanie F. Samz
`twimbiscus@mcandrews-ip.com
`smcbride@mcandrews-ip.com
`ssamz@mcandrews-ip.com
`AVS-IPR@mcandrews-ip.com
`MCANDREWS HELD & MALLOY, LTD.
`500 W. Madison St., 34th Floor
`Chicago, IL 60661
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`_/A. Antony Pfeffer/___________
`A. Antony Pfeffer (Reg. No. 43,857)
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004
`Tel: 212-425-7200
`Fax: 212-425-5288
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