`
`From:
`Sent:
`To:
`Cc:
`Subject:
`
`Stephanie Samz <ssamz@mcandrews-ip.com>
`Thursday, June 12, 2014 5:46 PM
`Pfeffer, Antony; Makin, Thomas
`Berkowitz, Matt; Herman, Patrick; Scott McBride; Tom Wimbiscus; AVS-IPR
`RE: AVS/Toyota - IPR2013-00417
`
`Antony:
`
`
`Toyota has taken the position in IPR 417 that “Fry was published and available to the public prior to June 7,
`1995.” (Reply at 8.) In taking this position, Toyota has relied on (at best) circumstantial evidence (which AVS does not
`concede is admissible) and has admitted that it cannot confirm the public availability of the Fry article prior to June 7,
`1995 through recipient‐stamped copies. (Id. at 3.) Any copies of the Fry article stamped after June 7, 1995 that Toyota
`or its counsel or agents possess, and any information that Toyota or its counsel or agents are otherwise aware of with
`respect to the existence of copies of the Fry article stamped after June 7, 1995 would be inconsistent with Toyota’s
`position that “Fry was published and available to the public prior to June 7, 1995.” (Reply at 8.) Toyota was required to
`provide AVS with this information as part of the routine discovery in this matter. 37 C.F.R. § 42.51(b)(1)(iii).
`
`
`To the extent that Toyota claims that the work product doctrine applies, the work product doctrine does not protect
`underlying facts, e.g., it does not protect copies of the Fry article or factual information regarding the existence of
`recipient‐stamped copies of the Fry article. This is so even if counsel is the one in possession of the documents or
`knowledge of such facts. If Toyota and its counsel refuse to produce any recipient‐stamped copies of the Fry article that
`are in its possession or to state its factual knowledge about the existence of such copies, AVS will have no choice but to
`move to compel Toyota to produce this information.
`
`
`Further, even assuming that the discovery that AVS seeks is not routine discovery, this targeted discovery is in the
`interests of justice. For example, as the MPEP makes clear, “a magazine or technical journal is effective as of its date of
`publication (date when first person receives it), not the date it was mailed or sent to the publisher.” MPEP § 2128.02;
`see also Patent Owner Response at 6‐7. Recipient‐stamped copies of the Fry article bear directly on this
`inquiry. Moreover, since AVS does not know which libraries Toyota or its counsel may have contacted, AVS cannot
`“reasonably assemble or figure out” where Toyota or its counsel may have located recipient‐stamped copies of the Fry
`article. Thus, if Toyota and its counsel will not agree to provide AVS with any recipient‐stamped copies of the Fry article
`that are in its possession or to state its factual knowledge about the existence of such copies, AVS will in the alternative
`move the Board for additional discovery.
`
`If a phone call between the parties might help to clarify the issue or help the parties resolve the issue without burdening
`the Board, please let me know your availability for such a call tomorrow. For example, if Toyota represents in writing
`that Toyota, its counsel and agents (1) possess no recipient‐stamped copies of the Fry article and (2) have no knowledge
`pertaining to recipient‐stamped copies of the Fry article, perhaps discovery on this issue can be avoided. Otherwise,
`please let me know your availability for a phone call to the Board either Monday or Tuesday of next week.
`
`
`Best regards,
`Stephanie
`
`
`
`From: APfeffer@kenyon.com [mailto:APfeffer@kenyon.com]
`Sent: Tuesday, June 10, 2014 10:09 AM
`To: Stephanie Samz; TMakin@kenyon.com
`
`1
`
`IPR2013-00417 - Ex. 1031
`Toyota Motor Corp., Petitioner
`1
`
`
`
`Cc: MBerkowitz@kenyon.com; PHerman@kenyon.com; Scott McBride; Tom Wimbiscus; AVS-IPR
`Subject: RE: AVS/Toyota - IPR2013-00417
`
`
`Stephanie:
`
`
`Thank you for your email.
`
`
`Given the substance of our briefs (and, in particular, the footnote you reference), there appears no necessity for the
`discovery you seek. As is clear, we are not relying on date‐stamped copies of Fry for any purpose. Further, as set forth
`in Garmin v. Cuozzo, IPR 2012‐0001, Paper No. 26, the discovery you seek is inappropriate as it is for information that
`you could “reasonably assemble or figure out”. The dates stamped on copies of the Fry reference at libraries are
`publicly available and equally as accessible to you as to Toyota.
`
`In addition, the information you appear to seek is largely protected from discovery by work product.
`
`If you would like to explain your position to us further, please let us know.
`
`
`Best regards,
`
`
`Antony
`
`
`From: Stephanie Samz [mailto:ssamz@mcandrews-ip.com]
`Sent: Monday, June 09, 2014 1:52 PM
`To: Pfeffer, Antony; Makin, Thomas
`Cc: Berkowitz, Matt; Herman, Patrick; Scott McBride; Tom Wimbiscus; AVS-IPR
`Subject: AVS/Toyota - IPR2013-00417
`
`
`Dear Antony and Tom:
`
`I am writing regarding additional discovery that AVS would like to seek pursuant to § 42.51(b)(2) with respect to
`IPR2013‐00417. The discovery AVS seeks is of a limited and narrow nature. Specifically, AVS seeks to serve a document
`request and an interrogatory regarding recipient‐stamped copies of the Fry article that may be in Toyota’s possession or
`that Toyota may be aware of. (See Toyota Reply at 3 n.2). AVS believes that this discovery relates directly to arguments
`made by Toyota relating to the availability (or lack thereof) of the Fry article before June 7, 1995 and is fairly raised by
`footnote 2 in Toyota’s reply submission.
`
`
`Please let us know by noon tomorrow (June 10) if Toyota will agree to this discovery. If Toyota will not agree, we will
`have to move the Board to obtain this limited discovery. If a motion by AVS is necessary, please let us know your
`availability this week to call the Board on this matter.
`
`
`Best regards,
`Stephanie
`
`
`
`
`Stephanie F. Samz
`McAndrews, Held & Malloy, Ltd.
`500 West Madison, 34th Floor
`Chicago, Illinois 60661
`
`(T) 312-775-8089
`(F) 312-775-8100
`ssamz@mcandrews-ip.com
`
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