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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`TOYOTA MOTOR CORPORATION
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`Petitioner
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`v.
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`Patent of AMERICAN VEHICULAR SCIENCES
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`Patent Owner
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`
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`Patent No. 6,772,057
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`Issue Date: August 3, 2004
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`Title: VEHICLE MONITORING SYSTEMS USING IMAGE PROCESSING
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`
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`PATENT OWNER’S AMENDED OBJECTIONS TO EVIDENCE
`SUBMITTED BY TOYOTA MOTOR CORPORATION
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`Case No. IPR2013-00419
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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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`
`
`Patent of AMERICAN VEHICULAR SCIENCES
`
`Patent Owner
`
`
`
`Patent No. 6,772,057
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`Issue Date: August 3, 2004
`
`Title: VEHICLE MONITORING SYSTEMS USING IMAGE PROCESSING
`
`
`
`PATENT OWNER’S AMENDED OBJECTIONS TO EVIDENCE
`SUBMITTED BY TOYOTA MOTOR CORPORATION
`
`Case No. IPR2013-00419
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`TABLE OF CONTENTS
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`EXHIBITS 1012-1013 (YAMAMURA TRANSLATION AND
`TRANSLATION AFFIDAVIT) ...................................................................... 1
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`EXHIBIT 1014 (FILE HISTORY OF APP. 08/247,760) ............................... 4
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`EXHIBIT 1015 (AVS’S LITIGATION INFRINGEMENT
`CONTENTIONS) ............................................................................................ 5
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`INADMISSIBLE ATTORNEY ARGUMENT IN PETITION ...................... 7
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`i
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`1.
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`2.
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`3.
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`4.
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`Pursuant to 37 C.F.R. § 42.64 and the Board’s comments at the February 3,
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`2014 Initial Conference Call, Patent Owner American Vehicular Sciences (“AVS”)
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`serves and submits the following objections to evidence served with the Petition of
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`Toyota Motor Corporation (“Toyota”) for inter partes review of U.S. Pat. No.
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`6,772,057 (“the ‘057 patent”). These amended objections supersede AVS’s prior
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`objections to evidence served and submitted on January 27, 2014. (Paper No. 22.)
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`1.
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`EXHIBITS 1012-1013 (YAMAMURA TRANSLATION AND
`TRANSLATION AFFIDAVIT)
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`Toyota argues that claims of the ‘057 patent are obvious over Japanese
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`Unpublished Patent Application H06-124340 to Yamamura (“Yamamura”). The
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`Board instituted inter partes review on this ground with respect to claims 30, 32,
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`and 37-39. (See Paper 19, 1/13/14 Board Decision.) Yamamura, however, is an
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`unexamined patent application that was published in Japanese. (See Ex.
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`1012.) AVS objects to the admission of Exhibits 1012-1013 because (1) they have
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`not been sufficiently authenticated under Fed. R. Evid. 901(a) and (2) the
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`translation certification does not conform to the requirements of a proper affidavit
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`under 37 C.F.R. §42.63(b).
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`Federal Rule of Evidence 901(a) requires that as a condition precedent to
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`admission, that a piece of evidence be authenticated through “evidence sufficient
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`to support a finding that the matter in question is what its proponent claims.”
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`Ordinarily, documents are authenticated by attaching them to an affidavit of an
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`individual with personal knowledge of their authenticity, who swears that the
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`documents are true and correct copies of the originals. See Fed. R. Evid.
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`901(b)(1). Documents from a foreign office are typically authenticated by
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`providing a certified copy. See Fed. R. Evid. 902(b)(3). The Rules governing inter
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`partes review provide that only United States Patent Office documents are self-
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`authenticating without requiring a certified copy. See 37 C.F.R. §42.61. Toyota
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`has not provided a certified copy of Yamamura or any affidavit from someone with
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`personal knowledge. As such, Yamamura is not admissible. See, e.g., Frazier v.
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`Layne Christensen Co., 2006 WL 6041120 at *3 (W.D. Wis. Feb. 21, 2006).
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`Second, in order to rely on Yamamura as prior art, Toyota was required to
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`provide a translation and “an affidavit attesting to the accuracy of the
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`translation.” 37 C.F.R. §42.63(b). A translation of a foreign language document
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`into English, however, must be accompanied by “an affidavit attesting to the
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`accuracy of the translation.” Id. In lieu of an affidavit, a party may submit a
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`declaration “only if, the declarant is, on the same document, warned that willful
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`false statements and the like are punishable by fine or imprisonment, or both (18
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`U.S.C. 1001) . . . .” 37 C.F.R. § 1.68 (emphasis added); see also 37 C.F.R. § 42.2.
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`The certification provided by Toyota with its Petition is not an affidavit or
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`compliant declaration. (See Ex. 1013.)
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`Further, Toyota’s translation certification is deficient because it also lacks
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`2
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`authentication. Under the Federal Rules of Evidence (which apply to inter partes
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`review) “[w]itness testimony translated from a foreign language must be properly
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`authenticated and any interpretation must be shown to be an accurate translation
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`done by a competent translator.” Jack v. Trans World Airlines, Inc., 854 F. Supp.
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`654, 659 (N.D. Cal. 1994); see also Townsend Eng’g Co. v. HiTec Co., 1
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`U.S.P.Q.2d 1987, 1988 (N.D. Ill. 1986); 37 C.F.R. § 42.62. The certification
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`offered by Toyota does not properly authenticate
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`the
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`translation of
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`Yamamura. The certification merely states: “This is to certify that the attached
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`translation is, to the best of my knowledge and belief, a true and accurate
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`translation from Japanese into English of the patent that is entitled: Unexamined
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`Patent Application Publication H01-124340.” (Ex. 1013.) The certification,
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`signed by a “Project Manager,” does not describe this individual’s qualifications to
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`make the translation. (Id.) In fact, the certification does not even state that this
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`individual is fluent in Japanese or that this individual actually translated the
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`document in question. (Id.) The certification therefore fails to properly
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`authenticate the translation. See Jack, 854 F. Supp. at 659 (striking translations
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`from the record where the party only provided “a statement by an individual at a
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`local translation center stating that the translations were true and correct”);
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`Townsend, 1 U.S.P.Q.2d at 1988.
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`Toyota has since attempted to submit a supplemental translation affidavit for
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`3
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`Ishihara. (See Paper No. 18, Order Denying Petitioner’s Request to Submit
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`Supplemental Evidence.) The Board indicated that any such a supplement must
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`follow the process for objections under 37 § C.F.R. 42.64. (See id.) AVS
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`therefore submits its present objections to Yamamura and the deficient translation
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`certification provided by Toyota with its Petition.
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`2.
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`EXHIBIT 1014 (FILE HISTORY OF APP. 08/247,760)
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`Exhibit 1014 is the prosecution history not for the ‘057 patent, but rather for
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`App. No. 08/247,760 (“the ‘760 application”). The ‘760 application was another
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`application by the inventor of the ‘057 patent, David Breed; but the ‘760
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`application is not in the chain of priority to the ‘057 patent. Toyota’s expert, Dr.
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`Papanikolopoulos, never cites to or relies on the ‘760 application. (See Exhibit
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`1016, Papanikolopoulos Decl.) Toyota only cites to the ‘760 application in support
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`of its arguments for construction of the term “pattern recognition algorithm.” (See
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`Petition at p. 7.) The Board, however, rejected Toyota’s proposed claim
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`construction and did not cite to or rely on the ‘760 application. (See Paper 19,
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`1/13/14 Board Decision at pp. 8-9.)
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`Accordingly, Exhibit 1014 is not relevant to any issue in the inter partes
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`review. See Fed. R. Evid. 401. Further, any minimal probative value is
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`substantially outweighed by a danger of unfair prejudice, confusing the issues,
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`4
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`waste, or needless presentation of cumulative evidence. See Fed. R. Evid. 403.
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`Exhibit 1014 is therefore inadmissible.
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`3.
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`EXHIBIT 1015
`CONTENTIONS)
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`AVS objects to the admissibility of Exhibit 1015, AVS’s infringement
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`(AVS’S LITIGATION
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`INFRINGEMENT
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`contentions in the district court litigation between AVS and Toyota in the Eastern
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`District of Texas, pursuant to Fed. R. Evid. 402 and 403. The infringement
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`contentions have no bearing on the present inter partes review proceedings.
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`Toyota only attempted to rely on AVS’s non-final, pre-discovery litigation
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`positions as alleged admissions dispositive of the construction of the terms “trained
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`pattern recognition means” or “trained pattern recognition algorithm.” (See, e.g.,
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`Petition at p. 8.) The Board, however, rejected Toyota’s proposed claim
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`construction of these terms as encompassing merely a “processor,” and the Board
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`did not cite to or rely on the infringement contentions. (See Paper 19, 1/13/14
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`Board Decision at pp. 8-9.) Accordingly, Exhibit 1006 is not relevant to any issue
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`in the inter partes review. See Fed. R. Evid. 401.
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`Further, even assuming any minimal probative value, it would be
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`substantially outweighed by a danger of unfair prejudice, confusing the issues,
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`waste, or needless presentation of cumulative evidence. See Fed. R. Evid. 403. It
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`is well established that litigation positions and even district court rulings are not
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`binding before the USPTO because of the different standards for invalidity and
`5
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`claim construction. See, e.g., Infinera Corp. v. Cheetah Omni, LLC, Appeal 2011-
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`007232 (BPAI March 30, 2012) (“In addition, we are not bound by positions taken
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`by Respondent in infringement litigation, as our standard for claim interpretation is
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`broadest reasonable interpretation commensurate with the Specification. . .”); Ex
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`Parte Schneider, Appeal 2011-004007 (BPAI Aug. 12, 2011) (“[T]he agency is not
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`bound by the District Court’s determination.”); Ethicon, Inc. v. Quigg, 849 F.2d
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`1422, 1428 (Fed. Cir. 1988) (“The two forums [the Board and the courts] take
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`different approaches in determining [patentability or] invalidity and on the same
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`evidence could quite correctly come to different conclusions.”). For that reason,
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`the Board has previously rejected attempts such as Toyota’s to use litigation
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`infringement contentions as evidence for claim construction in an inter partes
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`review proceeding. See, e.g., Garmin Intern., Inc. v. Patent of Cuozzo Speed
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`Tech., LLC, Case IPR2012-00001 (PTAB Jan. 9, 2013) (“The meaning of claim
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`terms is not governed by what the Patent Owner says they mean in filing an
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`infringement suit based on the ‘074 Patent.”) (emphasis added).
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`Second, even if litigation positions were admissible, AVS’s infringement
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`contentions are still not relevant to the issues here. It is black-letter law that the
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`claims are to be construed without reference to the accused devices or methods.
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`See, e.g., Young Dental Mfg. Co. v. Q3 Special Prods., 112 F.3d 1137, 1141 (Fed.
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`Cir. 1997) (“the claim scope is determined without regard for the accused device”).
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`6
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`Further, the infringement contentions would only constitute extrinsic evidence that
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`is improper given the unambiguous language of the ‘697 patent claims. See, e.g.,
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`Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005) (“We have viewed
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`extrinsic evidence in general as less reliable than the patent and its prosecution
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`history in determining how to read claim terms.”).
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`Third, AVS’s infringement contentions are not AVS’s final litigation
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`positions in any event, and are subject to revision. AVS can still supplement or
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`amend its positions in the District Court, particularly after the District Court issues
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`its claim construction ruling. See, e.g., SSL Servs., LLC v. Citrix Sys., 2012 U.S.
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`Dist. LEXIS 35788 (E.D. Tex. Mar. 16, 2012) (explaining that pursuant to Eastern
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`District of Texas Local Patent Rule 3-6(a)(1), a party may amend its infringement
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`contentions without leave of court after the court issues its claim construction
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`ruling). AVS may therefore revise its final infringement positions in the litigation,
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`if necessary, based on the claim constructions determined by the Board and the
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`District Court—not the other way around.
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`Accordingly, AVS objects to the admissibility of Exhibit 1015.
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`4.
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`INADMISSIBLE ATTORNEY ARGUMENT IN PETITION
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`Finally, AVS also objects pursuant to Fed. R. Evid. 402, 702, and 802 to any
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`arguments, statements, or references in the Petition or subsequent papers filed by
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`Petitioner, to any of the above-discussed inadmissible evidence. For example,
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`7
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`should the Board exclude AVS’s litigation infringement contentions, AVS also
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`objects to any attorney argument offering similar statements.
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`Respectfully submitted,
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` /Thomas J. Wimbiscus/
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`Thomas J. Wimbiscus
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`Registration No. 36,059
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`DATE: February 5, 2014
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`MCANDREWS HELD & MALLOY
`500 West Madison, 34th Floor
`Chicago, IL 60661
`Telephone: (312) 775-8000
`Facsimile: (312) 775-8100
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`CUSTOMER NUMBER: 23446
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`8
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`CERTIFICATE OF SERVICE
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`I hereby certify that the Patent Owner’s Amended Objections to Evidence
`Submitted by Toyota Motor Corporation in connection with Inter Partes Review
`Case IPR2013-00419 was served on this 5th day of February by electronic mail to
`the following:
`
`
`Matt Berkowitz
`mberkowitz@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: February 5, 2014
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`/Thomas J. Wimbiscus/
`Thomas J. Wimbiscus
`Registration No. 36,059
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`9
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