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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`_________________________________________________________________
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`PATENT OWNER’S REPLY IN SUPPORT OF ITS
`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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`TOYOTA MOTOR CORPORATION
`Petitioner
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`v.
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`AMERICAN VEHICULAR SCIENCES LLC
`Patent Owner
`
`
`
`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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`_________________________________________________________________
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`PATENT OWNER’S REPLY IN SUPPORT OF ITS
`MOTION TO EXCLUDE PURSUANT TO 37 C.F.R. § 42.64(c)
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`Patent Owner’s Reply in Support of its 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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`Exhibit 1005 (Fry Article, with Sage Publications’ webpages), Exhibit
`1014 (Broadhurst Affidavit), Exhibit 1012 (webpages) ................................. 1
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`II.
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`Exhibit 1013 (Fry Declaration) and Exhibit 1011 (Fry Award) ..................... 5
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`III. Conclusion ...................................................................................................... 5
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`Patent Owner’s Reply in Support of its Motion to Exclude
`IPR2013-00417
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`TABLE OF AUTHORITIES
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`Cases
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`Constant v. Advanced Micro-Devices, Inc.
`848 F.2d 1560 (Fed. Cir. 1988) .............................................................................. 2
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`Martek Biosciences Corp. v. Nutrinova, Inc.,
`579 F.3d 1363 (Fed. Cir. 2009) .............................................................................. 5
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`United States v. Moore,
`923 F.2d 910 (1st Cir. 1991) ..............................................................................2, 3
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`Rules
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`Fed. R. Evid. 602 ....................................................................................................... 5
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`Fed. R. Evid. 803(6) ...............................................................................................2, 4
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`Fed. R. Evid. 803(6)(E) .............................................................................................. 4
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`ii
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`Patent Owner’s Reply in Support of its Motion to Exclude
`IPR2013-00417
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`All of the exhibits surrounding the Fry Article should be excluded. Exhibits
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`1005 and 1012 are hearsay/not business records. The declarations, Exs. 1013 and
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`1014, are deficient and uncorroborated. Ex. 1011 is irrelevant.
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`I.
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`Exhibit 1005 (Fry Article, with Sage Publications’ webpages), Exhibit
`1014 (Broadhurst Affidavit), Exhibit 1012 (webpages)
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`Ms. Broadhurst is the wrong affiant. She is an employee of the Institution of
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`Mechanical Engineers (“IME”), not the publishers. (Ex. 1014 ¶ 3.) She is therefore
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`not competent to attest to whether Ex. 1005 (an article published by a third-party,
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`with third-party website pages downloaded in 2013 “appended” to it) is a business
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`record of either the publisher in 1995—Mechanical Engineering Publications
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`Limited (“MEPL”)—or the publisher today—Sage Publications (“Sage”).
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`That aside, Toyota argues that Internet webpages downloaded from the Sage
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`website in 2013 (and “appended to the Fry reference within Ex. 1005” (Paper 55 at
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`10)) are business records of IME. (See Ex. 1005 at 1.) Toyota further argues that
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`the Broadhurst Affidavit establishes that IME assigned the “Jan 1, 1995” date of
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`publication stated on Sage’s website (in or before 2013) to the 1995 Fry
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`Publication. (Paper 55 at 4.) But the carefully-worded Broadhurst Affidavit makes
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`no such statements. Broadhurst does not even mention the date January 1, 1995.
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`Nor does Broadhurst purport to have personal knowledge of how dates are
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`assigned to the documents / webpages, which entity does so, or even the business
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`1
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`Patent Owner’s Reply in Support of its Motion to Exclude
`IPR2013-00417
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`practice of IME (if any) as to dating documents / webpages of Sage.
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`Even if Ms. Broadhurst was competent to attest to the alleged records of the
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`IME related to Fry (and she is not, in light of these fatal defects), the Broadhurst
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`Affidavit fails the stringent requirements of Fed. R. Evid. 803(6). Her affidavit
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`failed to establish that the “Jan 1, 1995” was added to Sage Publications’ webpage
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`“at or near the time” of the publication of Fry “by – or from information
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`transmitted by – someone with knowledge.” See Fed. R. Evid. 803(6).1 Nowhere
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`does Broadhurst assert
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`that
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`the dates on Sage’s website are assigned
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`contemporaneously; nor by someone with knowledge. The only date of record that
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`was assigned by the IME is in Ex. 2025, showing a recipient-date stamp of the Fry
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`Article of September 7, 1995, three months after the critical date.
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`Citing United States v. Moore, 923 F.2d 910, 914 (1st Cir. 1991), Toyota
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`asserts that because IME’s records are allegedly stored with Sage, the Sage web-
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`1 Toyota argues that the dating of documents by Sage is “a regular practice” of
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`IME. (Paper 55 at 10-11.) But Broadhurst does not support this argument, stating
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`only that IME maintains (unidentified) records of dates in the ordinary course of
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`IME’s business. (Ex. 1014 ¶ 4.) And Broadhurst does not set out the “extensive
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`uncontroverted evidence of business practice” to establish a regular practice. See
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`Constant v. Adv. Micro-Devices, Inc., 848 F.2d 1560, 1568-69 (Fed. Cir. 1988).
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`2
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`Patent Owner’s Reply in Support of its Motion to Exclude
`IPR2013-00417
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`site documents are IME business records. But Moore does not support that broad
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`proposition. In Moore, the custodian identified 14 specific loan documents and
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`established that “the records in question were made in the ‘regular course’ of the
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`bank’s business, that they were compiled by a ‘service bureau’ connected by phone
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`lines to the bank, and that she and others at the bank could retrieve, and did
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`retrieve, that information from time to time by requesting the information from the
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`bureau.” Id. Here, however, Ms. Broadhurst has not identified which records she is
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`claiming are IME’s records, how the date of “Jan 1, 1995” was assigned to the
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`webpage appended to the article in Ex. 1005, that the date of “Jan 1, 1995” is even
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`in IME’s records (Ex. 1014 ¶ 6), or that IME regularly retrieved or relied on the
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`records stored with Sage. Without a proper identification and explanation, the
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`Broadhurst Affidavit cannot establish that the dated pages appended to the Fry
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`Article within Ex. 1005 are IME business records.
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`Further, Ms. Broadhurst’s affidavit is conclusory. She asserts that the Sage
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`website article “was made available to the public as of January 1995” (Ex. 1014 ¶
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`6), but fails to establish personal knowledge of how the public had access or which
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`entity assigned that date to the document—or even the meaning of the assigned
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`date. Indeed, Broadhurst’s assertion is an impossibility. Sage was admittedly not
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`the original publisher; MEPL was the publisher. (Ex. 1014 ¶ 3.) Even more, the
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`cited Sage webpage itself refutes this assertion. The “What’s This?” hyperlink in
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`3
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`Patent Owner’s Reply in Support of its Motion to Exclude
`IPR2013-00417
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`Exhibit 1005 (from page 1) states that the date is “the date an article was published
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`to the SAGE Journals platform”—not that the article was made available to the
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`public on that date. (See Ex. 1005 at 1 (hyperlink to http://online.sagepub.com/
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`site/sphelp/vorhelp.xhtml#six, at FAQ 6) (last accessed July 30, 2014) (Ex. 2035).)
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`Finally, contrary to Toyota’s assertion that “[t]here are no hallmarks of
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`untrustworthiness” (Paper 55 at 11), the assigned date on the Sage website that was
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`appended to the Fry Article (Ex. 1005) is demonstrably incorrect and facially
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`untrustworthy. Fed. R. Evid. 803(6)(E). Ms. Broadhurst attests that “the F1 issue
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`published in January of each year.” (Ex. 1014 ¶ 7.) As listed in Exhibit 1012
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`(uncited by Broadhurst), there were seven articles published in the “F1 issue.”
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`But, the abstracts for the other six articles show that they were not even accepted
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`for publication until February, March, or April of 1995—one to three months
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`after Toyota contends that these same “F1” articles were “published.” (See
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`Ex. 1012 at 1-5; Ex. 1012 hyperlinked Abstracts attached as Exhibits 2036-2041.)
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`As additional indicia of untrustworthiness, the alleged business record of
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`IME indicates a publication date of “Jan 1, 1995,” a date that was not only a
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`holiday in the country of publication (England), but also a Sunday.
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`Exhibit 1012 should be excluded for the same reasons set forth above for
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`Exhibit 1005 – i.e., Ms. Broadhurst is not a competent witness, she has failed to
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`establish the business record exception to hearsay, her statements are conclusory,
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`4
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`Patent Owner’s Reply in Support of its Motion to Exclude
`IPR2013-00417
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`and the Sage Publications papers themselves demonstrate their untrustworthiness.
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`II. Exhibit 1013 (Fry Declaration) and Exhibit 1011 (Fry Award)
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`The Fry declaration (Ex. 1013) is inadmissible under Fed. R. Evid. 602; Mr.
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`Fry has no personal knowledge of the publication date. Further, his date testimony
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`is uncorroborated. As explained above, the Sage papers (Exs. 1005, 1012) are not
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`admissible. These are the only records that could arguably corroborate Mr. Fry’s
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`compensated, litigation-induced “recollection” of the publication date of his paper,
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`almost twenty years ago. Courts routinely exclude such litigation-induced
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`“recollections.” See Martek Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363,
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`1376 (Fed. Cir. 2009) (excluding Lonza’s evidence of prior inventorship).2
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`The remainder of the Fry Declaration should be stricken because it is
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`irrelevant, directed to a reference that cannot be shown to be prior art. Similarly,
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`the Award to Kevin Fry (Ex. 1011) is irrelevant and should also be excluded.
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`III. Conclusion
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`All of the exhibits surrounding the Fry Article should be excluded.
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`2 The rationale for corroborating testimony of prior invention (102(g)) or prior use
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`(102(a) and (b)) applies equally establishing a printed publication under 102(b).
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`See Martek 579 F.3d at 1375 n.4. Also, although the standard in Martek was clear
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`and convincing, the same rationale applies to a preponderance standard.
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`5
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`Patent Owner’s Reply in Support of its Motion to Exclude
`IPR2013-00417
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`Respectfully submitted,
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`By:/Thomas J. Wimbiscus/
`Thomas J. Wimbiscus
`Reg. No. 36,059
`Attorney for Patent Owner,
`American Vehicular Sciences LLC
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`Dated: July 31, 2014
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`McANDREWS, HELD & MALLOY, LTD.
`500 West Madison St., 34th Floor
`Chicago, IL 60661
`Telephone: (312) 775-8000
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`6
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`Patent Owner’s Reply in Support of its Motion to Exclude
`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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`Exclude Pursuant To 37 C.F.R. § 42.64(c) in connection with Inter Partes Review
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`Case IPR2013-00417 was served on this 31st day of July by electronic mail to the
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`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: July 31, 2014
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