UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TOYOTA MOTOR CORPORATION
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`Petitioner
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`v.
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`AMERICAN VEHICULAR SCIENCES LLC
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`Patent Owner
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`Patent Number: 8,036,788
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`Title: VEHICLE DIAGNOSTIC OR PROGNOSTIC MESSAGE
`TRANSMISSION SYSTEMS AND METHODS
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`PATENT OWNER’S RESPONSE TO PETITIONER’S OBSERVATION ON
`CROSS-EXAMINATION
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`Case No. IPR2013-00417
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TOYOTA MOTOR CORPORATION
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`Petitioner
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`v.
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`AMERICAN VEHICULAR SCIENCES LLC
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`Patent Owner
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`
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`Patent Number: 8,036,788
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`Title: VEHICLE DIAGNOSTIC OR PROGNOSTIC MESSAGE
`TRANSMISSION SYSTEMS AND METHODS
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`PATENT OWNER’S RESPONSE TO PETITIONER’S OBSERVATION ON
`CROSS-EXAMINATION
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`
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`Case No. IPR2013-00417
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`0
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`PATENT OWNER’S RESPONSE TO PETITIONER’S OBSERVATION ON CROSS-EXAMINATION
`IPR2013-00417
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`Patent Owner AVS hereby respectfully responds to the Observations filed by
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`Petitioner Toyota.
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`As an initial matter, AVS objects to the Observations filed by Petitioner
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`because they violate the Board’s prohibition that an observation “is not an
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`opportunity to raise new issues, re-argue issues, or pursue objections,” and that any
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`observation should be concise and follow the specific form outlined by the Board.
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`(See Trial Practice Guide, Fed. Reg. Vol. 77, No. 157 (2012) at 48758.) Toyota’s
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`Observations are lengthy, and comprise argument rather than a succinct statement
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`of the relevance of the testimony to a previously-raised issue.
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`Further, Toyota’s Observations inaccurately paraphrase the witness’s
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`testimony, cite to only incomplete snippets of testimony out of context, and
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`mischaracterize the relevance of the testimony to issues in the IPR.
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`RESPONSE TO OBSERVATIONS
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`1.
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` Toyota mischaracterizes and mis-paraphrases Mr. Kennedy’s
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`testimony. He did not testify that he failed to compare the claims to the prior art,
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`limitation by limitation, or that he failed to differentiate the claim limitations that
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`were added in the proposed substitute claims versus the issued claims. Mr.
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`Kennedy stated that he did in fact compare the proposed amended claims to the
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`prior art. (See, e.g., Ex. 1030, Kennedy Dep. Tr. at 27:25-28:3 (“I have reviewed
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`all the materials described in this declaration in considering whether or not the
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`1
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`PATENT OWNER’S RESPONSE TO PETITIONER’S OBSERVATION ON CROSS-EXAMINATION
`IPR2013-00417
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`amended claims are patentable.”), 28:13-17 (“Q. Did you endeavor to compare
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`[the prior art references] to the claims of the ‘788 and the ‘210 patents? A. I
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`reviewed the prior art to make sure the amended claims were in fact patentable.”)
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`He also said that he considered the text that was specifically added by AVS (the
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`underlined text in the proposed amended claims) versus the originally issued
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`claims, to overcome the prior art. (See id. at 7:11-14.)
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`2. Mr. Kennedy’s testimony that Bryant does not disclose using sensor
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`data to predict service requirements, and instead more likely related only to a
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`simple mileage counter, does not show that Mr. Kennedy improperly based his
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`opinion on the state of the art when Bryant was published, rather than the time of
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`the invention of the ‘210 patent. Mr. Kennedy was answering regarding the
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`capabilities in-fact of Bryant’s system (and phrased his answer as such). What
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`Bryant was discussing at the time must of course be read in the context of the
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`timeframe in which it was published and not years later. Moreover, this line of
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`questioning is not relevant in any event, because, as Mr. Kennedy testified, Bryant
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`only provides vague disclosure of possible desirable future capabilities without
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`any enabling disclosure. (See id. at 117:10-13 (“In this particular reference Bryant
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`does not expressly disclose how the vehicle makes the determination of when tire
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`rotation or replacement are needed.”).)
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`2
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`PATENT OWNER’S RESPONSE TO PETITIONER’S OBSERVATION ON CROSS-EXAMINATION
`IPR2013-00417
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`3. Mr. Kennedy’s testimony is not inconsistent, and Toyota does not
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`explain how it believes the testimony is inconsistent. Mr. Kennedy testified that
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`the ‘210 patent discloses in the context of tires, for example, that the need for
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`replacement can be specifically called out. (See Ex. 1030 at 35:2-25.) He stated
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`that he relied on the ‘210 patent’s disclosure that, for example, the vehicle can
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`provide an indication of “whether the tire is functioning properly or whether it
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`requires . . . perhaps replacement.” (Id. (emphasis added).) He later testified,
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`entirely consistent with that first opinion, that “low tire pressure” is not necessarily
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`caused by a component that has failed or expected to fail, and that “tire rotation” is
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`not necessarily identifying a particular component that is forecast to fail—those
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`are different issues. (See id. 101:12-102:5, 118:3-120:25.)
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`4.
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`The response to Observation 3 applies to Observation 4 and is fully
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`incorporated by reference herein. In addition, AVS notes that Mr. Kennedy’s
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`responses are not inconsistent. The first line of questioning relating to whether tire
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`rotation in general, without reference to the ‘210 patent, could be considered to be
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`a repair, is distinct from the line of questioning relating to whether a general
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`indication that the “tires” plural need to be rotated would fall within the scope of
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`the proposed substitute claims.
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`5. Mr. Kennedy’s testimony that a starter may be considered a
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`component is consistent with his testimony that Crane does not disclose a system
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`PATENT OWNER’S RESPONSE TO PETITIONER’S OBSERVATION ON CROSS-EXAMINATION
`IPR2013-00417
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`that outputs via a transmitter an indication of whether any particular component
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`needs to be repaired as opposed to replaced. Indeed, as Toyota itself admits, Mr.
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`Kennedy testified that his opinion regarding Crane does not depend on whether a
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`starter system is a “component”—it depends on the fact that Crane does not
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`disclose “directing the output indicative or representative of the failure or expected
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`failure of any of the components to a remote location using a transmission device.”
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`(Id. at 171:4-9; see also id. at 17-20 (“Q. You state that Crane does not expressly
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`disclose what information is being transmitted to the remote location. Is that
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`correct? A. That’s correct.”) He further explains that while Crane discloses a
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`display that provides information regarding a starter, Crane does not disclose the
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`nature of the output that is being transmitted to a remote location. (Id. at 184:21-
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`22 (“Crane does not expressly disclose what information is being directed to the
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`remote location.”).) Mr. Kennedy also explains that Crane does not render the
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`substitute claims unpatentable because Crane uses the terms repair and replace
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`interchangeably. (Id. at 218:24-221:4 (“Because Crane does not make a
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`distinction between repair and replace, in my opinion replace starter switch is only
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`an indication that a component of the vehicle may be in need of service.”).) None
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`of Mr. Kennedy’s testimony in this regard is contradictory.
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`4
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`PATENT OWNER’S RESPONSE TO PETITIONER’S OBSERVATION ON CROSS-EXAMINATION
`IPR2013-00417
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`DATE: July 24, 2014
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`Respectfully submitted,
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` /Thomas J. Wimbiscus/
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`Thomas J. Wimbiscus
`Registration No. 36,059
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`MCANDREWS HELD & MALLOY
`500 West Madison, 34th Floor
`Chicago, IL 60661
`Telephone: (312) 775-8000
`Facsimile: (312) 775-8100
`CUSTOMER NUMBER: 23446
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`5
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`PATENT OWNER’S RESPONSE TO PETITIONER’S OBSERVATION ON CROSS-EXAMINATION
`IPR2013-00417
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`CERTIFICATE OF SERVICE
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`I hereby certify that PATENT OWNER’S RESPONSE TO PETITIONER’S
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`OBSERVATION ON CROSS-EXAMINATION in Case IPR2013-00417 was
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`served on this 24th day of July by electronic mail to the following:
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`A. Antony Pfeffer
`apfeffer@kenyon.com
`Thomas R. Makin
`tmakin@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
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`Telephone: 312-775-8000
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`Facsimile: 312-775-8100
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`CUSTOMER NUMBER: 23446
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`Date: July 24, 2014
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`/Thomas J. Wimbiscus/
`Thomas J. Wimbiscus
`Registration No. 36,059
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`6
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