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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`Patent Number: 8,036,788
`Title: VEHICLE DIAGNOSTIC OR PROGNOSTIC MESSAGE
`TRANSMISSION SYSTEMS AND METHODS
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`Case IPR2013-00417
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`PATENT OWNER’S REPLY IN SUPPORT OF
` ITS MOTION TO AMEND PURSUANT TO 37 C.F.R. § 42.121
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`McAndrews, Held, & Malloy, Ltd.
`500 West Madison St, 34th Floor
`Chicago, IL 60661
`(312) 775-8000
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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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`Patent Number: 8,036,788
`Title: VEHICLE DIAGNOSTIC OR PROGNOSTIC MESSAGE
`TRANSMISSION SYSTEMS AND METHODS
`
`
`Case IPR2013-00417
`_________________________________________________________________
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`PATENT OWNER’S REPLY IN SUPPORT OF
` ITS MOTION TO AMEND PURSUANT TO 37 C.F.R. § 42.121
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`McAndrews, Held, & Malloy, Ltd.
`500 West Madison St, 34th Floor
`Chicago, IL 60661
`(312) 775-8000
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`Patent Owner’s Reply In Support Of Its Motion To Amend
`IPR2013-00417
`I. THE PROPOSED CLAIMS ARE DEFINITE AND ENABLED
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`With respect to indefiniteness, Toyota incorrectly argues that the claims are
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`indefinite because it can concoct an alternative claim construction. Contrary to
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`Toyota’s argument, the claims are clear. The claims state that the diagnostic
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`module generates a diagnostic/prognostic message that identifies a component and
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`identifies whether the component “should be either repaired or replaced,” i.e.,
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`indicate that a determination has been made as to whether the component should be
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`repaired on the one hand as opposed to be replaced on the other hand. This reading
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`is consistent with the claim language (gives effect to the word “either”), the
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`specification (Ex. 1001 at e.g., 11:25-32, 13:30-40) and the understanding of a
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`skilled artisan (Ex. 1025 at 486-87). In any event, as its own lexicographer, AVS
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`declares that the subject claim language means “an identification representative of
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`a determination of whether the identified component or subsystem should be
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`repaired on the one hand as opposed to replaced on the other hand.” See, e.g.,
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`Intergraph Corp. v. Intel Corp., 89 Fed. Appx. 218 (Fed. Cir. 2004).
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`The claims are also enabled. The specification provides detailed disclosure,
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`including citation to books, articles, etc., regarding the use of algorithms to
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`determine whether a component, such as a tire, needs to be either repaired or
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`replaced. (Ex. 1001 at e.g. 13:28-23:52.) Indeed, the 788 patent’s disclosure is far
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`greater than the disclosure in any of the cited prior art—which Toyota impliedly
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`1
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`Patent Owner’s Reply In Support Of Its Motion To Amend
`IPR2013-00417
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`asserts is enabled. Moreover, AVS’s expert testimony from a different IPR is
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`inapposite. Mr. Loudon never opined that a specification like the one here was
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`insufficient. (IPR2013-00416, Ex. 2020 at ¶¶ 6-20.)
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`II. AVS SATISFIED ITS BURDEN OF PROOF
`Toyota’s arguments that AVS fails to satisfy its burden should be rejected.
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`Toyota objects to AVS’s evidence of written description support and
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`priority. But Toyota should have raised its objection to evidence within 5 business
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`days, to give AVS an opportunity to supplement its evidence. 37 CFR §42.64. In
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`any event, AVS did comply with the IPR rules’ express language. The rules only
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`required AVS to set forth “(1) [t]he support in the original disclosure of the patent .
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`. .” and “(2) [t]he support in an earlier filed disclosure for each claim for which
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`benefit of the filing date of the earlier filed disclosure is sought.” 37 CFR
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`§42.121(b)(2). An application has one effective filing date, and the rules do not
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`refer to any intervening applications. Accordingly, AVS’s motion was in strict
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`compliance with the rules, identifying support in the 788 patent’s application-as-
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`filed and the application to which AVS claims an earlier effective filing
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`date. Toyota now makes a technical argument that AVS was required to identify
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`support in all applications in the chain. Toyota did not cite any IPR rule support,
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`identify any gaps, or attack the substance of the support. And Toyota would not
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`have been prejudiced by AVS simply confirming that support is found in each
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`2
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`Patent Owner’s Reply In Support Of Its Motion To Amend
`IPR2013-00417
`priority application—nothing substantive would have changed in AVS’s motion.
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`To the extent necessary, AVS therefore asks the Board to take official notice
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`that the five intervening applications in a continuous chain of priority (identified
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`by the Board in Paper 41) contain the identical or substantially identical support,
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`something
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`that
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`is
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`readily apparent
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`from a cursory
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`reading of
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`those
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`applications. See Fed. R. Evid. 201(b)(2) (allowing a request for judicial notice “at
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`any stage of the proceeding”); 37 CFR § 42.62 (“Judicial notice means official
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`notice.”). Those applications are publicly available at the USPTO. To the extent it
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`would be helpful or necessary for official notice, upon the Board’s request, AVS
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`can file a supplemental official notice submission with citations in the intervening
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`applications. Toyota’s attempt to elevate technicalities over substance should not
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`be condoned.
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`Second, as Mr. Kennedy explains, Toyota mischaracterizes the prior art:
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` Baumann: An off-board system plugs into a vehicle at, e.g., a service shop.
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`(Ex. 2027 at ¶¶ 23-28.) To the extent the system, and not a human, makes a
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`diagnosis, it is not: (1) on a vehicle; and (2) determining whether a component
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`needs to be either repaired or replaced. (Id.) Another patent, Peters, confirms
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`that Baumann is off-board and relies on human analysis. (Ex. 1021 at 1:43-63.)
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` Peters: A technician enters data into an off-board system. Based on this human
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`input, the off-board system tries to diagnose faults. (Ex. 2027 at ¶¶ 32-33.)
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`3
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`Patent Owner’s Reply In Support Of Its Motion To Amend
`IPR2013-00417
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` Riviera: Riviera merely provides a display that states that e.g. a “service check”
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`is “required”/“recommended.” (Id. at ¶¶ 36-41.) No determination is made
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`regarding whether a component is in need of either repair or replacement. (Id.)
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` Ortega: Ortega is largely duplicative of Riviera. (Id. at ¶ 43; Ex. 2028 at 88.)
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`To the extent it states “Check Bulbs And Replace If Necessary,” a human
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`determines if replacement is needed. (Ex. 2027 at ¶ 44; Ex. 2028 at 193-97.)
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` Bryant: Even assuming, the cursory paragraph cited by Toyota is enabling, it
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`discloses predicting certain “service requirements.” (Ex. 1023 at 100-01.)
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`There is no disclosure about how this prediction is done. (Id.; Ex. 2027 at ¶
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`46.) Prediction of “service requirements,” such as tire replacement/rotation, can
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`be based on predetermined distance traveled, not diagnostics. (Id. at ¶¶ 46-47.)
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` Crane: While Crane may identify a faulty component, as explained below, it
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`does not distinguish between repair or replacement. (Id. at ¶¶ 61-67.)
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`III. THE PROPOSED CLAIMS ARE PATENTABLE
`In arguing that the claims are unpatentable, Toyota misreads the prior art.
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`Crane is not anticipatory for two reasons. First, Crane does not distinguish
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`between component repair and replacement. (Id.) Rather, Crane uses “repair” and
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`“replace” interchangeably. (See Ex. 1022 at 12:15-30 (“The display 124 can also
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`provide the indication to “Replace Belt.” If the belt is properly repaired, the
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`processor 122...will display …that the repairs are correct....”); 11:8-14.) Moreover,
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`4
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`Patent Owner’s Reply In Support Of Its Motion To Amend
`IPR2013-00417
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`Crane’s display of a “Replace Belt” or “Repair Starter Motor” message only
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`indicates that a certain component may be in need of service. (Ex. 2027 at ¶ 65.)
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`And, even if Crane indicates that a belt needs replacement or the starter motor
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`needs repair, there is no disclosure that distinguishes between repair or replace for
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`each component. (See Ex. 1022 at 5:41-44 (mention only repairs); 11:64-66
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`(same); 12:7-9 (same); 5:45-47 (mention only replace battery); 14:32-35 (same);
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`18:22-28 (same); Ex. 2027 at ¶¶ 63-65.) Second, Crane does not disclose all the
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`original claim limitations (nor did Toyota argue so in its Petition). Crane discloses
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`a transmitter, but does not disclose what is transmitted. (Ex. 1022 at 8:29-48.)
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`Because the transmission could be of raw data (not diagnostic messages), this
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`limitation is also not inherent. (Ex. 2027 at ¶¶ 57-58.)
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`Toyota’s obviousness arguments are also flawed. Combining Baumann with
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`Scholl/Ishihara fails because Baumann is an off-board system. (Ex. 2027 at ¶¶ 23-
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`28.) It is not an on-board system that determines whether a component needs to be
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`either repaired or replaced. And, neither Scholl nor Ishihara disclose this
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`limitation. (Opp’n at 11-15; Ex. 1026 at ¶ 96; Ex. 2002 at ¶¶ 72, 74.) Combining
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`Scholl/Ishihara with the Crane, Baumann, Bryant, Riviera or Ortega also fails.
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`Scholl/Ishihara admittedly does not disclose the recited on-board system (id.),
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`which as explained above, is also lacking in the remaining references.
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`Dated: June 26, 2014 By: /Thomas J. Wimbiscus/ Reg. No. 36,059
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`5
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`Patent Owner’s Reply In Support Of Its Motion To Amend
`IPR2013-00417
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`CERTIFICATE OF SERVICE
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`I hereby certify that Patent Owner’s Reply In Support Of Its Motion to
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`Amend Pursuant to 37 C.F.R. § 42.121 in connection with Inter Partes Review
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`Case IPR2013-00417 and Exhibits 2027 through 2028 was served on this 26th day
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`of June by electronic mail to the following:
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`A. Antony Pfeffer
`apfeffer@kenyon.com
`Thomas R. Makin
`tmakin@kenyon.com
`Matt Berkowitz
`mberkowitz@kenyon.com
`ptab@kenyon.com
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004
`Tel: 212-425-7200
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`MCANDREWS HELD & MALLOY, LTD.
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`Telephone: 312-775-8000
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`Facsimile: 312-775-8100
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`/Thomas J. Wimbiscus/
`Thomas J. Wimbiscus
`Registration No. 36,059
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`CUSTOMER NUMBER: 23446
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`Date: June 26, 2014
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