Trials@uspto.gov
`571-272-7822
`
`Paper 39
`Date: May 9, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`TOYOTA MOTOR CORPORATION,
`Petitioner
`
`v.
`
`AMERICAN VEHICULAR SCIENCES LLC,
`Patent Owner
`____________
`
`Case IPR2013-00419
`Patent 6,772,057
`____________
`
`
`Before JAMESON LEE, MICHAEL W. KIM, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`Order
`Conduct of Proceedings
`37 C.F.R. § 42.05
`
`
`
`
`
`
`571-272-7822
`
`Paper 39
`Date: May 9, 2014
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`TOYOTA MOTOR CORPORATION,
`Petitioner
`
`v.
`
`AMERICAN VEHICULAR SCIENCES LLC,
`Patent Owner
`____________
`
`Case IPR2013-00419
`Patent 6,772,057
`____________
`
`
`Before JAMESON LEE, MICHAEL W. KIM, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`Order
`Conduct of Proceedings
`37 C.F.R. § 42.05
`
`
`
`
`
`
`
`IPR2013-00419
`Patent 6,772,057
`
`
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`Introduction
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`
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`On May 7, 2014, a conference call was held between Judges Lee, Kim, and
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`Pettigrew, and respective counsel for the parties. Counsel for Patent Owner
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`initiated the conference call to ask the Board to grant two types of relief: (1) limit
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`the cross-examination of its expert witness Chris Koutsougeras, Ph.D., by
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`prohibiting questions directed to whether the feature of trained pattern recognition
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`would have been obvious to one with ordinary skill in the art based on U.S. Patent
`
`6,553,130 (“Lemelson”); and (2) authorize Patent Owner to correct certain
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`typographical mistakes in the expert’s declaration and certain other allegedly non-
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`substantive omissions in the expert declaration and in the patent owner response.
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`
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`The dispute relating to the scope of cross-examination arose, on May 5,
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`2014, during cross-examination of the expert. Counsel for Patent Owner instructed
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`the witness not to answer and sought to reach the Board to request an order to limit
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`the cross-examination. It was approximately 6:00 PM on May 5, 2014, and the
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`parties were unable to reach an administrative patent judge at that time. Cross-
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`examination continued on unrelated matters and then was completed but for the
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`line of questions in dispute. On May 6, 2014, the parties requested a telephone
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`conference with the Board, to be held on May 7, 2014. If the Board denies Patent
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`Owner’s request to limit the cross-examination testimony of Dr. Koutsougeras,
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`further cross-examination of the witness would follow.
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`
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`We grant the request of Patent Owner to limit the questioning of
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`Dr. Koutsougeras, on cross-examination, by barring questions inquiring about the
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`witness’s opinion on the obviousness to one with ordinary skill in the art of the
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`trained pattern recognition claim feature in light of Lemelson. We also authorize
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`Patent Owner to file a Revised Declaration and Revised Patent Owner Response to
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`make certain non-substantive, but helpful, corrections.
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`2
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`IPR2013-00419
`Patent 6,772,057
`
`
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`Discussion
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`
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`The parties do not dispute that in all of the alleged grounds of
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`unpatentability instituted for trial, that involve Lemelson, Petitioner in its petition
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`relies on Lemelson as disclosing the claim feature of trained pattern recognition,
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`not as rendering obvious that feature. According to counsel for Petitioner,
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`however, obviousness, inherent disclosure, and the understanding of one with
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`ordinary skill in the art as to the disclosure of Lemelson, are inter-mingled as one
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`integral discoverable topic. We disagree. Counsel for Petitioner knows the
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`difference between the separate concepts of inherent disclosure, understanding of
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`the teachings of a reference, and obviousness in view of a reference. Indeed,
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`counsel for Petitioner acknowledged that he asked the question in three “different
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`ways” to get an assortment of “different perspectives” on the subject. Counsel for
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`Patent Owner raised an objection only for questions directed to the witness’s
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`opinion on obviousness of the feature in light of Lemelson’s disclosure.
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`
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`We are unpersuaded that inherent disclosure, understanding of what a
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`references discloses, and obviousness are all one and the same topic. Based on the
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`specific grounds instituted for trial and the arguments made in the petition, as well
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`as the absence of specific testimony in the declaration of Dr. Koutsougeras (Ex.
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`2001) pertaining to nonobviousness of the trained pattern recognition feature to
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`one with ordinary skill in the art, counsel for Petitioner had no sufficient reason to
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`inquire, on cross-examination, the opinion of Dr. Koutsougeras as to whether the
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`trained pattern recognition feature would have been obvious to one with ordinary
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`skill.
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`
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`Counsel for Patent Owner asked for permission to make certain corrections
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`of typographical errors in the claim listing of within headings. We replied that
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`minor typographical errors, which counsel for Patent Owner represents the
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`3
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`IPR2013-00419
`Patent 6,772,057
`
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`mistakes to be, need no correction because they should not hinder our
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`
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`understanding. In response, counsel for Patent Owner withdrew the request to
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`make corrections of minor typographical mistakes.
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`
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`Finally, counsel for Patent Owner requested either to submit an errata for the
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`declaration of Dr. Koutsougeras and for the patent owner response, or to submit a
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`revised declaration of Dr. Koutsougeras and a revised patent owner response, to
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`correct certain non-substantive but potentially problematic omissions in the
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`declaration and in the patent owner response. Specifically, the issue has to do with
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`Patent Owner’s and the declarant’s discussing the disclosure of U.S. Patent No.
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`5,245,422 (“Borcherts”) in the context of the alleged ground of obviousness based
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`on Lemelson and Borcherts, but not identifying the same as also for Borcherts in
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`the context of the alleged ground of obviousness based on Borcherts and Japanese
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`Unexamined Patent Publication No. H06-124340 (“Yamamura”).
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`
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`Counsel for Petitioner initially disagreed that the proposed changes are non-
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`substantive, but later reached agreement with counsel for Petitioner with regard to
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`allowing Petitioner to make the following corrections:
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`Declaration (Exhibit 2001):
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`
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`In paragraph 81, change “Lemelson and Borcherts” to “Lemelson and
`Borcherts (claims 30-34, 37-39, 62) or Yamamura and Borcherts
`(claims 30, 32-34, 37-39)”
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`In paragraph 85, change “Lemelson nor Borcherts” to “Lemelson,
`Yamamura, nor Borcherts”
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`Patent Owner Response (Paper 33):
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`On page 29, change “claims 30-34, 37-39, and 62 on only one
`ground—obviousness by Lemelson and Borcherts” to “claims 30-34,
`37-39, and 62 for obviousness by Lemelson and Borcherts and claims
`30, 32-34, and 37-39 for obviousness by Yamamura and Borcherts.”
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`4
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`IPR2013-00419
`Patent 6,772,057
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`On page 31, change “neither Lemelson nor Borcherts” to “neither
`Lemelson, Borcherts, nor Yamamura.”
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`We approve of the above-noted corrections, because based on the record
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`
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`before us the proposed changes are non-substantive, but helpful to a smooth
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`reading and fair understanding of the patent owner response and the declaration.
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`It is
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`Order
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`ORDERED that Patent Owner’s request that we limit the cross-examination
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`of Dr. Koutsougeras by precluding questions directed to whether the claimed
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`feature of trained pattern recognition would have been obvious to one with
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`ordinary skill is granted;
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`
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`FURTHER ORDERED that cross examination of Dr. Koutsougeras by
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`counsel for Petitioner shall not include questions asking for the opinion of
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`Dr. Koutsougeras on whether the claimed feature of trained pattern recognition
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`would have been obvious to one with ordinary skill in the art;
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`
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`FURTHER ORDERED that the corrections agreed to by the parties and
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`identified above are approved and that Patent Owner shall make the corrections not
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`by any “errata,” but by filing a Revised Declaration (re-executed) having the same
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`exhibit number and by filing a Revised Patent Owner Response within three
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`business days of the date of this Order; and
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`
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`FURTHER ORDERED that it will be understood that references in the
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`revised patent owner response to the declaration of Dr. Koutsougeras refers to
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`Dr. Koutsougeras’s revised declaration and not his initial declaration.
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`5
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`IPR2013-00419
`Patent 6,772,057
`
`For Petitioner:
`
`Matthew Berkowitz
`Anthony Pfeffer
`Thomas Makin
`mberkowitz@kenyon.com
`apfeffer@kenyon.com
`tmakin@kenyon.com
`
`For Patent Owner:
`
`Thomas Wimbiscus
`Scott McBride
`twimbiscus@mcandrews-ip.com
`smcbride@mcandrews-ip.com
`
`6
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