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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`
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`Patent Number: 8,036,788
`Title: VEHICLE DIAGNOSTIC OR PROGNOSTIC MESSAGE
`TRANSMISSION SYSTEMS AND METHODS
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`
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`Case IPR2013-00417
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`_________________________________________________________________
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`PATENT OWNER’S MOTION TO EXCLUDE PURSUANT TO 37 C.F.R. §
`42.64(c)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`TOYOTA MOTOR CORPORATION
`Petitioner
`
`
`v.
`
`
`AMERICAN VEHICULAR SCIENCES LLC
`Patent Owner
`
`
`
`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 MOTION TO EXCLUDE PURSUANT TO 37 C.F.R. §
`42.64(c)
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`Patent Owner’s Motion to Exclude
`IPR2013-00417
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`TABLE OF CONTENTS
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`TABLE OF CONTENTS ........................................................................................... i
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`TABLE OF AUTHORITIES ................................................................................... ii
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`I.
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`II.
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`INTRODUCTION .......................................................................................... 1
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`LEGAL STANDARDS .................................................................................. 2
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`III. BACKGROUND ............................................................................................ 3
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`IV. EXHIBITS 1005 AND 1011-14 SHOULD BE EXCLUDED ....................... 7
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`A. Exhibit 1005 (Fry Article) ..................................................................... 7
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`B. Exhibit 1011 (Award To Kevin Fry) ................................................... 10
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`C. Exhibit 1012 (Sage Publications Website Listing).............................. 11
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`D. Exhibit 1013 (Declaration Of Kevin Fry) ........................................... 12
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`E. Exhibit 1014 (Affidavit Of Sarah Broadhurst) .................................... 13
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`V.
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`CONCLUSION ............................................................................................. 15
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`i
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`Patent Owner’s Motion to Exclude
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`TABLE OF AUTHORITIES
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`
`
`Cases
`Ajinomoto Co. v. Archer-Daniels-Midland Co.,
`No. 95-218, 1998 WL 151411 (D. Del. Mar. 13, 1998) ......................................13
`
`Allied Sales & Serv. Co. v. Global Indus. Techs., Inc.,
`No. 97-0017, 2000 WL 726216 (S.D. Ala. May 1, 2000) ...................................15
`
`Amini Innovation Corp. v. Anthony Cal., Inc.,
`No. 03-8749, 2006 U.S. Dist. LEXIS 100800 (C.D. Cal. Sept. 21, 2006) ............ 8
`
`In re Cronyn,
`890 F.2d 1158 (Fed. Cir. 1989) .............................................................................. 2
`
`Manlapaz v. Unifund CCR Partners,
`No. 08-6524, 2009 WL 3015166 (N.D. Ill. Sept. 15, 2009) ................................15
`
`Martek Biosciences Corp. v. Nutrinova, Inc.,
`579 F.3d 136 (Fed. Cir. 2009) ..............................................................................12
`
`Nordock Inc. v. Sys. Inc.,
`No. 11-C-118, 2013 U.S. Dist. LEXIS 34661 (E.D. Wis. Mar. 13, 2013) ............ 8
`
`Quantum Mgmt. Group v. Univ. of Chicago Hosps.,
`No. 99-C-2248, 2000 WL 1221632 (N.D. Ill. Aug. 18, 2000) ............................15
`
`SRI Int’l, Inc. v. Internet Sec. Sys., Inc.,
`511 F.3d 1186 (Fed. Cir. 2008) .............................................................................. 2
`
`St. Clair v. Johnny’s Oyster & Shrimp, Inc.,
`76 F. Supp. 2d 773 (S.D. Tex. 1999)............................................................. 10, 11
`
`United States v. Jackson,
`208 F.3d 633 (7th Cir. 2000) ......................................................................... 10, 11
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`Other Authorities
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`MPEP § 2128 ............................................................................................................. 9
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`MPEP § 2128.02 ....................................................................................................2, 8
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`ii
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`Patent Owner’s Motion to Exclude
`IPR2013-00417
`Rules
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`37 C.F.R. § 42.64 ....................................................................................................... 1
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`Fed. R. Evid. 1002 ...................................................................................................15
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`Fed. R. Evid. 401 .................................................................................. 10, 12, 13, 15
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`Fed. R. Evid. 402 ............................................................................................. passim
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`Fed. R. Evid. 403 ............................................................................................. passim
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`Fed. R. Evid. 602 .......................................................................................... 1, 12, 13
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`Fed. R. Evid. 801 .....................................................................................................13
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`Fed. R. Evid. 802 ............................................................................................. passim
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`Fed. R. Evid. 803(6) .......................................................................................... 10, 11
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`iii
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`Patent Owner’s Motion to Exclude
`IPR2013-00417
`INTRODUCTION
`I.
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`Pursuant to 37 C.F.R. § 42.64 and the Scheduling Order in this IPR, Patent
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`Owner American Vehicular Sciences LLC (“AVS”) submits the following motion
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`to exclude Exs. 1005 and 1011 through 1014. This filing is timely under the
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`Board’s Scheduling Order (Paper 15).
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`The Board instituted a trial with respect to claim 9 of U.S. Patent 8,036,788
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`(“788 patent”) based on an article (“Fry”) by Kevin Fry, that purportedly appeared
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`in the Proceedings for the Institution of Mechanical Engineers (“IME”) sometime
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`in 1995. The only issue remaining with respect to Toyota’s Petition is whether Fry
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`is prior art, i.e., was Fry publicly accessible prior to the June 7, 1995 priority date.
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`Toyota has failed to present admissible evidence showing that Fry is prior
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`art—and wrongfully withheld evidence to the contrary. As discussed below,
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`Toyota’s asserted evidence is inadmissible under Fed. R. Evid. 402, 403, 602, 802
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`and 1003. Further, the only admissible evidence shows that Fry was not publicly
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`accessible as of June 7, 1995. Toyota located but withheld twelve recipient date-
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`stamped copies of Fry (or cover pages thereof). All of these copies of Fry were
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`stamped with dates of receipt in September and October 1995. (See Exs. 2014-
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`2023, 2025-26.) This includes the copy kept by the IME, the organization
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`responsible for having Fry published. (See Ex. 2025; Ex. 1014 ¶ 3.) No date-
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`stamped copies prior to June 7, 1995 have been shown to exist. While Toyota
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`1
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`Patent Owner’s Motion to Exclude
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`withheld these date-stamped copies—it presented arguments flatly inconsistent
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`with the withheld evidence (see Paper No. 37)—notwithstanding its affirmative
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`obligation to produce that evidence under 37 C.F.R. § 42.51(b)(1). AVS therefore
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`respectfully requests that Exhibits 1005 and 1011-1014, relating to the alleged
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`public accessibility of Fry, be excluded.
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`II. LEGAL STANDARDS
`“The statutory phrase ‘printed publication’ has been interpreted to mean that
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`before the critical date the reference must have been sufficiently accessible to the
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`public interested in the art . . . .” In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir.
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`1989). “‘[P]ublic accessibility’ has been called the touchstone in determining
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`whether a reference constitutes a ‘printed publication’ bar . . . .” SRI Int’l, Inc. v.
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`Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008). “A given reference
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`is ‘publicly accessible’ upon a satisfactory showing that such document has been
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`disseminated or otherwise made available to the extent that persons interested and
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`ordinarily skilled in the subject matter or art exercising reasonable diligence, can
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`locate it.” SRI, 511 F.3d at 1194. Importantly, “[a] publication disseminated by
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`mail is not prior art until it is received by at least one member of the public.
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`Thus, a magazine or technical journal is effective as of its date of publication (date
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`when first person receives it) not the date it was mailed or sent to the publisher.”
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`MPEP § 2128.02 (emphasis added).
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`2
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`IPR2013-00417
`III. BACKGROUND
`Fry is an article that was purportedly published as part of the Proceedings of
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`
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`the IME. (See Ex. 1005.) There are no date-stamped copies of Fry that pre-date
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`June 7, 1995 in the record. And, as Toyota concedes, while Fry was copyrighted in
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`“1995,” Fry itself provides no specific date in 1995 regarding when it was actually
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`published, or more importantly, when it was accessible to the public. (Id. at 2-12;
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`Paper No. 37 at 2.)
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`Conceding that its original evidence was insufficient, Toyota submitted
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`supplemental evidence. (See Exs. 1011-1014.) But, Toyota still did not submit any
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`date-stamped copies of Fry. Nor did Toyota produce to AVS 12 date-stamped
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`copies of Fry that—inconsistent with its position—are dated after June 7, 1995.
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`Rather than submit direct evidence of when Fry was publicly accessible, Toyota
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`submitted other purported “evidence” which Toyota admits fails to “confirm” that
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`Fry was published and publicly accessible before June 7, 1995. (See id.; see also
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`Paper No. 37 at 3 n.2.) Toyota’s evidence is inadmissible (and deficient):
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`•
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`Exhibit 1011: Exhibit 1011 purports to be a copy of an award to Mr.
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`Fry. It merely indicates that Fry appeared in a journal in 1995. It provides no
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`information regarding when in 1995 the journal was published/publicly accessible.
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`•
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`Exhibit 1012: Exhibit 1012 consists of (hearsay) Internet printouts
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`from Sage Publications dated February 3, 2014. While Sage Publications
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`publishes Fry today, it did not publish Fry in 1995. (See, e.g., Ex. 1014 ¶ 3.)
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`
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`•
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`Exhibit 1013: Exhibit 1013 is a declaration that Toyota obtained from
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`Mr. Fry. Mr. Fry apparently had no recollection of when his article was published.
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`Instead, he relied upon Toyota’s inadmissible 2014 Internet printouts and
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`his undated award and article. (Ex. 1013 ¶ 5.) Apparently lacking his own copy,
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`he only referred to the Sage Publications version (Exhibit 1005). (Id. ¶ 2.) While
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`Toyota apparently provided Mr. Fry with 2014 Internet printouts to refresh his
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`recollection of nearly twenty years ago, Mr. Fry was not provided with the 12 post-
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`June 1995 date-stamped copies located by Toyota. (See id. ¶ 5.)
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`•
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`Exhibit 1014: Exhibit 1014 is an affidavit Toyota obtained from an
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`individual (Ms. Broadhurst) that currently works at the IME, the organization that
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`purportedly has “arranged for” the publication of Fry. (See Ex. 1014 ¶ 3.) The
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`affidavit does not state that she worked for the IME in 1995, such that she could
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`have personal knowledge of IME’s publication or other practices. Through careful
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`drafting, Ms. Broadhurst’s affidavit implies that the IME’s records “confirm” that
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`Fry “was made available to the public as of January 1995.” (Ex. 1014 ¶ 6.) But, it
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`appears that the only “records” regarding Fry that Ms. Broadhurst is referring to
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`are not records in the IME’s possession, but rather third-party Sage’s website from
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`2013 and/or 2014. (Id. ¶¶ 2, 5 (“I have reviewed, on Sage Publications’ website,
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`the Institution of Mechanical Engineers’ records relating to the Fry article.”)
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`Patent Owner’s Motion to Exclude
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`(emphasis added).) Ms. Broadhurst did not attach to her affidavit (or even
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`mention) Fry as it appears in IME’s own records. The IME’s date-stamped
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`business record of Fry (produced by Toyota months
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`later under threat of a motion to compel) is date-
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`stamped September 7, 1995. (See Ex. 2025.)
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`Toyota is thus caught in a web. Its own later-disclosed evidence of actual
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`IMS date-stamped business records (under threat of a motion to compel) refutes
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`the very evidence it seeks to extract from (inadmissible) records of a third party
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`website. The affidavit is also self-defeating, as it states that the IME’s so called
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`records are those of a third-party website. As discussed below, the affidavit is also
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`inadmissible hearsay because it fails to present any other asserted business records.
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`AVS timely objected to this supplemental evidence. (See Paper No. 25.)
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`Toyota’s Wrongful Withholding of Date-Stamped Copies of Fry. After
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`AVS’ Patent Owner’s Response, Toyota made an ambiguous statement, leading
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`AVS to inquire if Toyota had withheld date-stamped copies of Fry that post-date
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`June 7, 1995. (See Paper No. 37 at 3 n.2.) Concerned that Toyota had withheld
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`such routine discovery, AVS requested that Toyota produce any date-stamped
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`copies of Fry. Toyota initially refused to turn over the documents, claiming that
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`the discovery AVS sought was “largely protected from discovery by work
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`product.” After AVS explained that such factual information was not “work
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`5
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`product” and threatened to move to compel, Toyota produced the 12 date-stamped
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`copies of Fry (or cover pages thereof) on June 17, 2014—providing evidence that
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`is flatly inconsistent Toyota’s arguments that Fry is prior art.
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`By stipulation
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`(Paper 45),
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`the date-stamped copies come
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`from
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`libraries/organizations, including the IME, in the United States and abroad. The
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`date-stamped copies are consistently dated from September and October, 1995:
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`DATE
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`ORGANIZATION
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`EXHIBIT NO.
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`September 7, 1995
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`IME
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`September 7, 1995 Cambridge University
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`September 8, 1995
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`Southampton University
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`2025
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`2026
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`2023
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`September 19, 1995 VPI & SU Library in Blacksburg, Virginia 2016
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`September 26, 1995 New York Public Library
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`September 27, 1995
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`Iowa State University
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`September 27, 1995 Unknown Library
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`September 27, 1995 Unknown Library
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`September 28, 1995 University of Illinois at Chicago
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`September 29, 1995 University of Wisconsin
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`October 6, 1995
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`University of Minnesota
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`October 10, 1995
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`Purdue University
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`2015
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`2020
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`2017
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`2021
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`2019
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`2014
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`2022
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`2018
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`6
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`IPR2013-00417
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`This evidence illustrates that the journal in which Fry appeared (published in
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`England) was sent out in late-August or early-September 1995. It arrived first on
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`September 7 and 8 at organizations in England. (See Exs. 2023, 2025-26.) It then
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`arrived at libraries in the United States between September 19, 1995 and October
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`10, 1995. (See Exs. 2014-22.) There is no evidence in the record that Fry was
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`received by anyone in the public prior to September 7, 1995.
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`Even though it reluctantly and belatedly produced date-stamped copies of
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`Fry that are inconsistent with its asserted position, Toyota continued to pursue its
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`theory that Fry was publicly accessible in January 1995—and continued to try to
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`prevent AVS from informing the Board about Toyota’s inconsistent evidence. For
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`example, Toyota refused to consent to the filing of the date-stamped copies as
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`supplemental information. (See 6/20/14 McBride email to Board.) Toyota’s
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`counsel also stopped a deposition for nearly an hour when AVS tried to mark the
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`date-stamped copies as exhibits. (See Ex. 2028 at 134-35.) And, even after the
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`Board authorized AVS to file supplemental information with a one-page
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`explanatory joint statement, Toyota refused to agree to any language that
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`affirmatively stated the dates with which the copies of Fry were stamped.
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`IV. EXHIBITS 1005 AND 1011-14 SHOULD BE EXCLUDED
`A. Exhibit 1005 (Fry Article)
`Exhibit 1005 purports to be a copy of Fry downloaded from the website
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`7
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`Patent Owner’s Motion to Exclude
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`Sage Publications in June 2013. AVS timely objected to this exhibit. (Paper No.
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`16 at 5-8; Paper No. 21 at 4-7.) It should be excluded for the following reasons.
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`First, Exhibit 1005 should be excluded under Fed. R. Evid. 402 and 403.
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`Toyota concedes that the effective filing date is June 7, 1995. (Paper No. 37 at 1.)
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`To be prior art, Fry must have been publicly accessible prior to that date. Fry itself
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`only indicates that it was copyrighted in 1995 and that the journal in which it
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`appeared was published in 1995. (Ex. 1005 at 2-12.) Toyota concedes that, on its
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`face, Fry does not provide a more specific date than “1995.” (Paper No. 37 at 2.)
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`Public accessibility is measured by when a person in the public receives an
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`article. See, e.g., MPEP § 2128.02. The 12 date-stamped copies of Fry (or cover
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`pages thereof) are each consistently dated in September and October 1995, thus
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`illustrating that Fry was not publicly-accessible until well-after June 7, 1995. (See
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`Exs. 2014-2023, 2025-26.) There are no other date-stamped copies of Fry in the
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`record. Thus, because Fry was not shown to be publicly accessible prior to June 7,
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`1995, Fry is not prior art and should be excluded under Fed. R. Evid. 402, 403, and
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`802. See Nordock Inc. v. Sys. Inc., No. 11-C-118, 2013 U.S. Dist. LEXIS 34661,
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`at *7 (E.D. Wis. Mar. 13, 2013) (Ex. 2033) (excluding “prior art” references where
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`“insufficient evidence has been presented regarding the dates of the two
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`publications”); Amini Innovation Corp. v. Anthony Cal., Inc., No. 03-8749, 2006
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`U.S. Dist. LEXIS 100800, at *19 (C.D. Cal. Sept. 21, 2006) (Ex. 2031) (“Without
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`Patent Owner’s Motion to Exclude
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`knowing the publication dates, the documents are not admissible as prior art.”).
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`Second, the 2013-dated Internet cover page and abstract from Sage
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`Publications that Toyota submitted as part of Exhibit 1005 should be excluded.
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`Notably, Toyota and its declarant/affiant rely on the 2013-dated Internet cover
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`page and abstract in contending that Fry was published in January 1995.
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`Because Sage Publications did not publish Fry and did not post it on the Internet in
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`1995 (see Ex. 1014 ¶ 3), the January 1, 1995 date now appearing on its website is
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`not evidence of public accessibility in 1995. It should therefore be excluded under
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`Fed. R. Evid. 402, 403, and 802. See MPEP § 2128 (“Prior art disclosure on the
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`Internet or on an online database are considered to be publicly available as of the
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`date the item was publicly posted. Absent evidence of the date that the disclosure
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`was publicly posted, if the publication itself does not include a publication date or
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`a retrieval date, it cannot be relied upon as prior art . . . .”). Even Toyota and its
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`witnesses impliedly concede that the exact date of January 1, 1995 on the Sage
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`Publications website is incorrect. (Ex. 1013 ¶ 5; Ex. 1014 ¶ 6; Paper No. 37 at 3.)
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`Moreover, Toyota’s reliance on the Internet cover page and abstract from
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`Sage Publications for the truth of the alleged publication date rests on inadmissible
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`hearsay that does not fall within an exception; e.g., Toyota has not established that
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`Internet cover page and abstract were made “at or near the time” of the act
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`purported to be true, namely Fry’s alleged publication date. See Fed. R. Evid. 802;
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`9
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`Patent Owner’s Motion to Exclude
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`Fed. R. Evid. 803(6); see also United States v. Jackson, 208 F.3d 633, 637 (7th Cir.
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`2000) (web postings from the Internet were inadmissible hearsay); St. Clair v.
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`Johnny’s Oyster & Shrimp, Inc., 76 F. Supp. 2d 773, 775 (S.D. Tex. 1999)
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`(“Internet [evidence] is adequate for almost nothing, even under the most liberal
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`interpretation of the hearsay exception rules . . . .”).
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`Exhibit 1011 (Award To Kevin Fry)
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`B.
`Exhibit 1011 purports to be a copy of an award given to Mr. Fry. AVS
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`timely objected to Exhibit 1011, and it should be excluded. (Paper No. 25 at 1-2.)
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`Exhibit 1011 appears to indicate that Fry was “Published in the Proceedings
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`Part F1 1995.” (Ex. 1011.) The award does not provide any more specific
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`information about when in 1995 Fry was published and accessible to the public. It
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`is therefore irrelevant to any issue in this proceeding and should be excluded. See
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`F.R.E. 401-402. And, because Exhibit 1011 does not provide any specific
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`information about when in 1995 Fry was published, to the extent that Toyota and
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`Mr. Fry use Exhibit 1011 to bolster Mr. Fry’s statements in his declaration that Fry
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`was published in January 1995, it should be excluded under F.R.E. 402 and 403.
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`(See Paper No. 37 at 5; Ex. 1013 ¶¶ 3, 5.)
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`Finally, to the extent that Toyota is relying on Exhibit 1011 for the truth of
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`the matter asserted, e.g., that Fry was published “in the Proceedings Part F1 1995,”
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`Exhibit 1011 is inadmissible hearsay. See Fed. R. Evid. 802.
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`10
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`IPR2013-00417
`C. Exhibit 1012 (Sage Publications Website Listing)
`Exhibit 1012 is an Internet printout from the current publisher of Fry, dated
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`February 3, 2014. Toyota relies on this printout as evidence “that Fry was
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`published and available to the public prior to June 7, 1995.” (Paper No. 37 at 6.)
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`But Sage Publications was not the organization that published Fry in 1995. (See
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`Ex. 1005 at 2; Ex. 1014 ¶ 3.) AVS timely objected to Exhibit 1012, and it should
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`be excluded. (Paper No. 25 at 2-5.)
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`Exhibit 1012 should be excluded as irrelevant. The 2014 Internet printout at
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`best only establishes how Sage Publications, in 2014, records the date of Fry.
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`Because it is not the date which Fry was accessible to the public it, is irrelevant.
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`Exhibit 1012 should also be excluded as inadmissible hearsay. See Fed. R.
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`Evid. 802; see also Jackson, 208 F.3d at 637; St. Clair, 76 F. Supp. 2d at 775.
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`Toyota relies on the information in Exhibit 1012 for the truth of the matter
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`asserted, e.g., that Fry was allegedly published and publicly available in January
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`1995. (See Paper No. 37 at 6.) But, Toyota has not provided any foundational
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`evidence or testimony to establish that Exhibit 1012 meets a hearsay exception.
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`For example, Toyota has not established that Exhibit 1012 was made “at or near
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`the time” of the act purported to be true, i.e., the alleged publication date of Fry.
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`See Fed. R. Evid. 803(6). This is not surprising given that it appears that Sage
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`Publications did not publish Fry in 1995. (Ex. 1014 ¶ 3.) (Because Fry was
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`11
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`Patent Owner’s Motion to Exclude
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`published later by Sage Publications, it is more likely that Sage Publications
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`assigned a date of January 1995 to Fry out recordation convenience since Fry itself
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`does not have a date of publication beyond “1995.”)
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`D. Exhibit 1013 (Declaration Of Kevin Fry)
`Exhibit 1013 is a declaration from Fry’s author. AVS timely objected to this
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`exhibit. (Paper No. 25 at 5-6.) It should be excluded for at least the below reasons.
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`First, Mr. Fry’s declaration is inadmissible because he does not purport to
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`have any personal knowledge regarding when the Fry reference was available and
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`indexed in any library or available for download from the Internet. See Fed. R.
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`Evid. 602. Mr. Fry had no immediate recollection of when his article was
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`published and apparently did not even have a copy of his article. Instead, his
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`recollection was refreshed by hearsay information appearing in 2013 and 2014 on
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`the Sage Publications’ website. (See Ex. 1013 ¶¶ 2, 4-5.) Mr. Fry’s testimony is
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`based on the date Sage Publications currently assigned as Fry’s “published” date,
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`which, as explained above, is not the relevant date. See Fed. R. Evid. 401-403.
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`Second, while not necessary for exclusion here, under Federal Circuit law,
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`any individual claiming prior invention must provide corroborating evidence—oral
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`testimony alone about such an individual’s “recollection” is inadmissible. See
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`Martek Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363, 1374-76 (Fed. Cir.
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`2009) (requiring evidence to corroborate testimony of an individual regarding
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`12
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`earlier invention for purposes of invalidating a patent); Ajinomoto Co. v. Archer-
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`Daniels-Midland Co., No. 95-218, 1998 WL 151411, at *38 (D. Del. Mar. 13,
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`1998) (Ex. 2029) (finding testimony by reference’s author insufficient to establish
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`public accessibility). Here, Mr. Fry fails to point to any admissible, non-hearsay
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`corroborating evidence. He only points to the irrelevant award he received for
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`authoring his article (which has no date more specific than 1995) and the irrelevant
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`hearsay from Sage Publications website in 2013/2014. As such, Mr. Fry’s
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`testimony is inadmissible. See Fed. R. Evid. 801-803, 401-403.
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`Exhibit 1014 (Affidavit Of Sarah Broadhurst)
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`E.
`Exhibit 1014 is an affidavit from an individual, Ms. Broadhurst, who
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`currently works for the IME, the organization that purportedly has “arranged for”
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`the publication of Fry. (See Ex. 1014 ¶ 3.) Toyota argues that this affidavit
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`establishes that Fry was publicly accessible prior to June 7, 1995. (Paper No. 37 at
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`4.) Toyota makes this argument even though the IME’s actual records (not Sage
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`Publications’ website) prove that it did not receive a copy of the journal in which
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`Fry appeared until September 7, 1995. (Ex. 2025.) AVS timely objected to
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`Exhibit 1014. (Paper No. 25 at 6-9.)
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`As a threshold matter, Ms. Broadhurst should be excluded because she does
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`not purport to have personal knowledge regarding Fry’s publication. See Fed. R.
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`Evid. 602. Ms. Broadhurst does not purport to have been employed by the IME in
`
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`13
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`Patent Owner’s Motion to Exclude
`IPR2013-00417
`1995, or to have personal knowledge of when Fry was published.
`
`
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`To the extent Ms. Broadhurst’s affidavit is based on her review of records, it
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`fares no better. For example, while Ms. Broadhurst states that the IME’s records
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`“confirm” that Fry “was made available to the public as of January 1995,” the only
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`evidence of “records” that were in the actual possession of the IME directly
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`contradict her statement. (Compare Ex. 1014 ¶ 6 with Ex. 2025.) Specifically, the
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`business records from the IME demonstrate that it did not receive a copy of the
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`journal in which Fry appeared until nine months later, in September 1995. (Id.)
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`And while Ms. Broadhurst states generally the “F1” issue of the journal published
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`in January each year (Ex. 1014 ¶ 7), she has no personal knowledge relating to
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`1995 issue or 1995 publication practices. Indeed, the contemporaneous documents
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`indicate that the 1995 F1 issue did not publish until much later. (Ex. 2025.)
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`Ms. Broadhurst’s reliance on other documents does not render her affidavit
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`admissible. Regarding the Internet printouts from Sage Publications, as discussed
`
`above, Sage Publications was not the publisher of Fry in 1995, and information
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`currently found on in its website is irrelevant and inadmissible hearsay. Moreover,
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`to the extent that Ms. Broadhurst is argued to be relying on other records that are
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`not in evidence, the law is clear—hearsay testimony about supposed “records” that
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`are not in evidence is inadmissible. See, e.g., Quantum Mgmt. Group v. Univ. of
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`Chicago Hosps., No. 99-C-2248, 2000 WL 1221632, at *5 (N.D. Ill. Aug. 18,
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`14
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`Patent Owner’s Motion to Exclude
`IPR2013-00417
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`2000) (Ex. 2034) (explaining that testimony to prove the content of records not in
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`evidence “is hearsay, lacks foundation, and is not based on personal knowledge”
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`and that a party cannot use “testimony to prove the contents of any of these records
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`without producing the records themselves.”); Manlapaz v. Unifund CCR Partners,
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`No. 08-6524, 2009 WL 3015166, at *4 (N.D. Ill. Sept. 15, 2009) (Ex. 2032)
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`(explaining that “the testimony of a witness making reference to the [unproduced
`
`business] record” is not admissible); Allied Sales & Serv. Co. v. Global Indus.
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`Techs., No. 97-0017, 2000 WL 726216 at *24 n.1 (S.D. Ala. May 1, 2000) (Ex.
`
`2030) (testimony “inadmissible hearsay” based on “review, analysis and
`
`interpretation of [] documents that are not in evidence”); Fed. R. Evid. 1002, 1003.
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`Finally, the affidavit is inadmissible because it relates to an irrelevant date.
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`The relevant date is not the date Sage Publications may have assigned to Fry, or
`
`the date that Sage’s 2014 records give as the publication date. The relevant date is
`
`the date Fry was available and indexed in a library or available for download from
`
`the Internet. The only admissible evidence shows that Fry was not received for
`
`public distribution until September 1995. (See Exs. 2014-23, 2025-26.) Exhibit
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`1014 should be excluded for this additional reason. Fed. R. Evid. 401-403.
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`V. CONCLUSION
`For all the foregoing reasons, AVS respectfully requests that the Board
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`exclude Exhibits 1005 and 1011 through 1014.
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`15
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`Patent Owner’s Motion to Exclude
`IPR2013-00417
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`Dated: July 10, 2014
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`McANDREWS, HELD & MALLOY, LTD.
`500 West Madison St., 34th Floor
`Chicago, IL 60661
`Telephone: (312) 775-8000
`
`
`
`
`
`Respectfully submitted,
`
`
`
`By:/Thomas J. Wimbiscus/
`Thomas J. Wimbiscus
`Reg. No. 36,059
`Attorney for Patent Owner,
`American Vehicular Sciences LLC
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`16
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`Patent Owner’s Motion to Exclude
`IPR2013-00417
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`CERTIFICATE OF SERVICE
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`I hereby certify that Patent Owner’s Motion To Exclude Pursuant to 35
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`
`
`U.S.C. § 42.64(c) in connection with Inter Partes Review Case IPR2013-00417
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`was served on this 10th day of July by electronic mail to the following:
`
`
`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
`
`
`MCANDREWS HELD & MALLOY, LTD.
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`
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`Telephone: 312-775-8000
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`
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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: July 10, 2014
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