UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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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 No. 8,036,788
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`Issue Date: October 11, 2011
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`Title: VEHICLE DIAGNOSTIC OR PROGNOSTIC MESSAGE
`TRANSMISSION SYSTEMS AND METHODS
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`____________
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`
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`PETITIONER’S MOTION TO STRIKE AND EXPUNGE EX2035-EX2041
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`Case No. IPR2013-00417
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`
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
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`TOYOTA MOTOR CORPORATION,
`
`Petitioner
`
`
`
`v.
`
`
`
`AMERICAN VEHICULAR SCIENCES LLC,
`
`Patent Owner
`
`
`
`Patent No. 8,036,788
`
`Issue Date: October 11, 2011
`
`Title: VEHICLE DIAGNOSTIC OR PROGNOSTIC MESSAGE
`TRANSMISSION SYSTEMS AND METHODS
`
`____________
`
`
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`PETITIONER’S MOTION TO STRIKE AND EXPUNGE EX2035-EX2041
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`Case No. IPR2013-00417
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`
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`AVS filed, on July 31st, its Reply (Paper 58) in support of its motion to exclude
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`the only prior art in this IPR (“Fry”), and all of Toyota’s evidence dating the
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`publication of Fry. The Reply included, for the first time, seven new exhibits (Ex.
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`2035-2041). In accordance with Paper 63, Toyota now moves the Board to strike and
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`expunge this late-submitted evidence, as well as the portions of AVS’s Reply citing to
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`it, on the basis that it is late and the improper subject of a reply brief.
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`Paper 15 set forth July 10, 2014, as the last date to file motions to exclude, i.e.,
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`the end of fact discovery. By that date, AVS had multiple opportunities to submit its
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`new evidence. AVS’s evidence should have been submitted with AVS’s Response to
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`Toyota’s Petition, which Response was devoted entirely to the adequacy of Toyota’s
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`evidence regarding Fry’s publication date. See generally Paper 30. At the latest, this
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`evidence should have been submitted with AVS’s motion to exclude on July 10.
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`Instead, AVS waited until the last moment to bring the evidence to the Board’s
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`attention, leaving Toyota prejudiced, with no real opportunity to respond.
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`Rule 37 C.F.R. § 42.23(b) states that “A reply may only respond to arguments
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`raised in the corresponding opposition . . . .” The accompanying comments clarify
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`that, while “replies may rely upon appropriate evidence to support the positions
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`asserted,” “[r]reply evidence … must be responsive and not merely new evidence that
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`could have been presented earlier to support the movant’s motion.” 77 Fed. Reg.
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`48612, 48620. AVS’s evidence is not appropriate for a reply, as it is not responsive to
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`new argument or evidence in Toyota’s Opposition brief. Indeed, the facts regarding
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`-1-
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`
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`the Fry publication records that AVS alleges to be newly asserted were all set forth in
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`the Broadhurst affidavit which AVS has had since February.
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`In addition, AVS’ new evidence is unaccompanied by testimony demonstrating
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`it to be other than unauthenticated, hearsay material from the Internet.
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`I.
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`AVS’ New Evidence Was Submitted Outside the Discovery Period
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`Paper 15 set forth July 10 as the last date for motions to exclude, thus ending
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`discovery. AVS’ new evidence was submitted on July 31. It is proper to strike and
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`expunge untimely evidence. Cf. EMC Corp. v. Personal Web Techs., LLC, IPR2013-
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`00082, No. 76, at 3 (P.T.A.B. Dec. 13, 2013) (“Introducing new evidence at this late
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`juncture—when the trial issues had been briefed fully by both parties—would
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`prejudice PersonalWeb, who would not have the opportunity to respond . . . .”).
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`II. AVS’ New Evidence is Not Proper in Reply because it is not Responsive
`to any New Argument or Evidence Raised in Toyota’s Opposition Brief
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`In its Reply brief, AVS argued that it was submitting the new evidence because
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`
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`it was relevant to whether the Broadhurst Affidavit (Ex. 1014) sufficiently established
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`the publication date of Fry as part of the business records of the Institution of
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`Mechanical Engineers (“iMECHe”) under FRE 803(6). Specifically, AVS argued that
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`its exhibits tended to show “untrustworthiness” under paragraph E of the Rule.1
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`1
`In fact, FRE 803(6)(E) relates only to the trustworthiness of the original
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`information upon which the record was based or of the manner in which the record
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`-2-
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`Then, during an August 7, 2014 call with the Board regarding this issue, AVS
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`added an additional, post hoc reason why it should be allowed to submit its evidence on
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`reply. Specifically, AVS argued that it submitted Exs. 2035-2041 in response to three
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`allegedly new arguments raised by Toyota in its Opposition, namely, Toyota’s
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`assertions that: (1) the iMECHe, who arranged for publication of Fry, is the
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`organization that assigned the publication date to Fry; (2) the iMECHe’s business
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`records that include this publication date are stored by the current publisher, Sage
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`Publications, on its webserver; and (3) the publication date for Fry appearing in Ex.
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`1012 is part of the same business record as the publication date appearing in Ex. 1005.
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`AVS is incorrect. None of these arguments were new in Toyota’s opposition.
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`They were stated in the Broadhurst affidavit served on AVS on February 18, 2014.
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`The Broadhurst Affidavit specifically states that the iMECHe arranged for publication
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`of Fry, that the iMECHe maintains (i.e., creates and updates) its business records
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`(including receipt, acceptance and publication dates), and that its business records are
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`stored by the current publisher, Sage Publications, on its webserver:
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`3. The Institution of Mechanical Engineers has arranged for the
`publication of the Fry article. As indicated on the face of the
`article, the Fry article was originally published on behalf of the
`Institution of Mechanical Engineers by Mechanical Engineering
`
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`was recorded. AVS’ evidence does not address this issue; it is substantive evidence
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`allegedly tending to show inaccuracies in the business record itself.
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`-3-
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`
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`Publications Limited. The article is currently available to the
`public from Sage Publications.
`4. The Institution of Mechanical Engineers maintains records of
`the dates on which the articles it published were received,
`accepted for publication, and eventually published. These
`records are maintained as part of the ordinary course of business
`of the Institution of Mechanical Engineers, and I have personal
`knowledge of the records.
`5. I have reviewed, on Sage Publications’ website, the Institution
`of Mechanical Engineers’ records relating to the Fry article.
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`(Ex. 1014, at ¶¶ 3-5.) Ms. Broadhurst did not distinguish Ex. 1012 from Ex. 1005,
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`which are printouts from the same website, bearing the same dates.
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`In its Response last March, AVS explicitly acknowledged all these facts:
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`Ms. Broadhurst’s vague and conclusory statements that Fry “was
`made available to the public as of January 1995” appears to be
`supported only by her review of the information currently on
`Sage Publications’ website. (Id. at ¶¶ 5-6 (indicating that “the
`Institution of Mechanical Engineers’ records” she reviewed were
`“on Sage Publications’ website”).)
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`(Response, Paper 30, at p. 13.)
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`III. AVS’s Late Disclosure of Exhibits 2035-2041 is Highly Prejudicial
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`The proper route for AVS to take, if it wanted to challenge the testimony of
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`the publisher’s record keeper (Broadhurst) or the author (Fry), would have been to
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`depose them last Spring with these new exhibits. This would have allowed Toyota to
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`-4-
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`gather responsive evidence, if necessary, including further evidence regarding the
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`publisher’s records, further evidence regarding the distribution of the author’s offprint
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`copies of the article even before printing of the F1 bound volume (see Ex. 2017 at p.
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`11), and further evidence showing that AVS’s theory that Fry was first published in a
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`bound journal sent to libraries in September 1995 cannot possibly be correct.2
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`Instead, by submitting Exs. 2035-2041 now, AVS has afforded Toyota no substantive
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`opportunity to address them with additional testimony or supplemental exhibits.
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`It is proper to expunge from the record this type of untimely evidence. See
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`Corning Inc. v. DSM IP Assets B.V., IPR2013-00052, No. 88, at 14 (P.T.A.B. May 1,
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`2014) (“[i]t would be manifestly unfair to allow Corning to substitute new %RAU data
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`in the Reply when DSM had no briefing opportunity to address [it]”).
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`IV. The New Exhibits Are Unauthenticated and Unexplained Hearsay
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`AVS’s new exhibits appear to be printed from links to Sage Publications’
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`website. Unlike Toyota, AVS attaches no testimonial evidence regarding them.
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`
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`2
`E.g., “Railhead Corrugation Growth. . .,” A. Igeland, Proc. Instn. of Mech.
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`Engrs., Vol. 210, 1996, shows that AVS’ new theory—that Fry was published only in
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`a bound journal with other articles and sent to libraries in September 1995—can’t be
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`correct. Igeland was received by its publisher on June 19, 1995, yet cites new Exhibit
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`2040, which AVS asserts wasn’t published until September.
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`-5-
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`
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`Dated: August 8, 2014
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`
`
`A. Antony Pfeffer
`Lead Counsel for Petitioner
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004
`Tel: 212-425-7200
`Fax. 212-425-5288
`
` /A. Antony Pfeffer/
`A. Antony Pfeffer (Reg. No. 43,857)
`
`Thomas R. Makin
`Matthew Berkowitz (Reg. No. 57,215)
`K. Patrick Herman
`Back-Up Counsel for Petitioner
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004
`Tel: 212-425-7200
`Fax. 212-425-5288
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`-6-
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`CERTIFICATE OF SERVICE
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`The undersigned hereby confirms that Petitioner’s Motion to Strike and Expunge
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`EX2035-EX2041 was served on August 8, 2014 via e-mail upon the following
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`counsel of record for Patent Owner:
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`Thomas J. Wimbiscus
`Scott P. McBride
`Stephanie F. Samz
`twimbiscus@mcandrews-ip.com
`smcbride@mcandrews-ip.com
`ssamz@mcandrews-ip.com
`AVS-IPR@mcandrews-ip.com
`MCANDREWS HELD & MALLOY, LTD.
`500 W. Madison St., 34th Floor
`Chicago, IL 60661
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`/A. Antony Pfeffer/
`A. Antony Pfeffer (Reg. No. 43,857)
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004
`Tel: 212-425-7200
`Fax: 212-425-5288
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