UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`TOYOTA MOTOR CORPORATION
`
`Petitioner
`
`
`
`v.
`
`
`
`Patent of AMERICAN VEHICULAR SCIENCES
`
`Patent Owner
`
`
`
`Patent No. 5,845,000
`
`Issue Date: December 1, 1998
`
`Title: OPTICAL IDENTIFICATION AND MONITORING SYSTEM USING
`PATTERN RECOGNITION FOR USE WITH VEHICLES
`
`
`
`PATENT OWNER’S OBJECTIONS TO EVIDENCE SUBMITTED BY
`TOYOTA MOTOR CORPORATION
`
`Case No. IPR2013-00424
`
`
`
`
`
`
`
`
`
`
`
`
`
`______________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`TOYOTA MOTOR CORPORATION
`
`Petitioner
`
`
`
`v.
`
`
`
`Patent of AMERICAN VEHICULAR SCIENCES
`
`Patent Owner
`
`
`
`Patent No. 5,845,000
`
`Issue Date: December 1, 1998
`
`Title: OPTICAL IDENTIFICATION AND MONITORING SYSTEM USING
`PATTERN RECOGNITION FOR USE WITH VEHICLES
`
`
`
`PATENT OWNER’S OBJECTIONS TO EVIDENCE SUBMITTED BY
`TOYOTA MOTOR CORPORATION
`
`Case No. IPR2013-00424
`
`
`
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`
`1.
`
`2.
`
`3.
`
`EXHIBITS RELATING TO PETITION GROUNDS REJECTED BY
`THE BOARD ................................................................................................... 1
`
`EXHIBITS 1008 AND 1009 (YANAGAWA)................................................ 3
`
`EXHIBIT 1012 (AVS’S LITIGATION INFRINGEMENT
`CONTENTIONS) ............................................................................................ 6
`
`4.
`
`EXHIBIT 1013 (PAPANIKOLOPOULOS DECLARATION) ...................... 8
`
`A. Testimony Regarding Patent Law ........................................................... 8
`
`B. Citations to Documents not in Evidence ............................................... 10
`
`C.
`
`Irrelevant Opinions or Ones Based on Incorrect Legal Standards ....... 11
`
`D. Speculative and Unsupported Opinions ................................................ 19
`
`5.
`
`INADMISSIBLE ATTORNEY ARGUMENT IN PETITION .................... 22
`
`
`
`
`
`
`
`i
`
`
`
`Pursuant to 37 C.F.R. § 42.64, Patent Owner American Vehicular Sciences
`
`(“AVS”) serves and submits the following objections to evidence served with
`
`Toyota Motor Corporation’s (“Toyota’s”) Petition for Inter Partes Review of U.S.
`
`5,845,000 (“the ‘000 patent”).1
`
`1.
`
`EXHIBITS RELATING TO PETITION GROUNDS REJECTED
`BY THE BOARD
`
`On January 14, 2014, the Board granted inter partes review on the following
`
`grounds raised by Toyota in its Petition:
`
` Ground 1 (alleged anticipation by Lemelson as to claims 10, 11, 19,
`
`and 23),
`
`
`1 Due to uncertainty in the rules, in addition to serving its objections to Toyota’s
`
`evidence, AVS is also filing its objections to evidence with the Board to make
`
`ensure that they are a part of the record for this trial. See, e.g., 37 C.F.R. §
`
`42.64(c) (providing that a motion to exclude “must identify the objections in the
`
`record”). Additionally, Toyota filed a number of petitions for inter partes review
`
`against AVS. In some of those inter partes review proceedings, the Board
`
`indicated that AVS was to file its objections to evidence. (See, e.g., IPR 2013-
`
`00422, 1/13/14 Board Order (Paper No. 14) at 31 (“Within ten business days of
`
`institution of trial, Patent Owner must file an objection to evidence under 37 C.F.R.
`
`§ 42.64(b)(1) . . . .”).)
`
`
`
`1
`
`
`
` Ground 2 (alleged obviousness by Lemelson in view of Asayama as to
`
`claims 10, 11, 19, and 23), and
`
` Ground 8 (alleged obviousness by Lemelson in view of Yanagawa as
`
`to claims 16, 17, and 20).
`
`Inter partes review was not instituted on the remaining grounds. (See Paper 16,
`
`1/14/14 Decision to Grant Inter Partes Review (“1/14/14 Board Decision”).)
`
`Exhibits, expert testimony, and arguments relating to rejected grounds are
`
`therefore no longer relevant. See Fed. Evid. 402 (“[i]rrelevant evidence is not
`
`admissible”); Fed. R. Evid. 401. See also 37 C.F.R. §42.120 (“A patent owner
`
`may file a response to the petition addressing any ground for unpatentability not
`
`already denied.”) (emphasis added). Further, such evidence is inadmissible under
`
`Fed. R. Evid. 403, as any remaining probative value is substantially outweighed by
`
`a danger of unfair prejudice, confusing the issues, waste, or needless presentation
`
`of cumulative evidence. Fed. R. Evid. 403.
`
`For Example, Exhibit 1005 relates to an asserted prior art reference,
`
`Pomerleau. The rejection ground based on Pomerleau was not granted by the
`
`Board. (See Paper 16, 1/14/14 Board Decision at 41-42.) Portions of the
`
`Declaration of Dr. Nikolaos Papanikolopoulos similarly relate to the Pomerleau
`
`reference. (See Ex. 1013 at ¶¶ 22-23 and 32-36.)
`
`AVS therefore objects to the admissibility of Exhibit 1005, as well as those
`
`
`
`2
`
`
`
`portions of the Declaration of Dr. Papanikolopoulos that discuss that exhibit (see
`
`Ex. 1013 at ¶¶ 22-23 and 32-36), on the basis of relevance. AVS reserves its right
`
`to move to supplement its objections should Toyota later attempt to rely on
`
`rejected grounds or references, or should it move for reconsideration of any
`
`rejected grounds.
`
`Exhibits 1006 and 1007 relate to an asserted prior art reference, Mizukoshi,
`
`and its alleged English translation. The rejection grounds based, at least in part, on
`
`Mizukoshi and its alleged English translation were not granted by the Board. (See
`
`Paper 16, 1/14/14 Board Decision at 43) Portions of the Declaration of Dr.
`
`Papanikolopoulos similarly relate to the Mizukoshi reference and its alleged
`
`English translation. (See Ex. 1013 at ¶¶ 23, 36-40, 44-47.)
`
`AVS therefore objects to the admissibility of Exhibits 1006 and 1007, as
`
`well as those portions of the Declaration of Dr. Papanikolopoulos that discuss
`
`those exhibits (see id.), on the basis of relevance. AVS reserves its right to move
`
`to supplement its objections should Toyota later attempt to rely on rejected
`
`grounds or references, or should it move for reconsideration of any rejected
`
`grounds.
`
`2.
`
`EXHIBITS 1008 AND 1009 (YANAGAWA)
`
`Toyota argues that claims of the ‘000 patent are anticipated or rendered
`
`obvious by Yanagawa.
`
`
`
`3
`
`
`
`AVS objects to the admissibility of Exhibits 1008 and 1009 relating to
`
`Yanagawa and its purported English Translation. Yanagawa purports to be an
`
`unexamined Japanese Patent Application that was apparently published in
`
`Japanese. (See Ex. 1008.) AVS objects to the admission of Exhibit 1008 (a
`
`purported copy of the Japanese Yanagawa reference) and Exhibit 1009 (the
`
`proffered translation of Yanagawa) because: (1) they have not been sufficiently
`
`authenticated under Fed. R. Evid. 901(a); and (2) the proffered translation does not
`
`conform to the requirements of a proper affidavit under 37 C.F.R. § 42.63(b).
`
`Federal Rule of Evidence 901(a) requires that as a condition precedent to
`
`admission a piece of evidence must be authenticated through “evidence sufficient
`
`to support a finding that the item is what the proponent claims it is.” Fed. R. Evid.
`
`901(a). Ordinarily, documents are authenticated by attaching them to an affidavit
`
`of an individual with personal knowledge of their authenticity who swears that the
`
`documents are true and correct copies of the originals. See Fed. R. Evid.
`
`901(b)(1). Documents from a foreign office are typically authenticated by
`
`providing a certified copy. See Fed. R. Evid. 902(3). The Rules governing inter
`
`partes review provide that only United States Patent Office documents are self-
`
`authenticating without requiring a certified copy. See 37 C.F.R. § 42.61. Toyota
`
`has not provided a certified copy of Yanagawa or any other affidavit from a person
`
`
`
`4
`
`
`
`with personal knowledge of its authenticity. (See Exs. 1008 & 1009.) As such,
`
`Yanagawa is not admissible.
`
`Second, in order to rely on Yanagawa as prior art, Toyota was required to
`
`provide a translation and “an affidavit attesting to the accuracy of the
`
`translation.” 37 C.F.R. § 42.63(b). In lieu of an affidavit, a party may submit a
`
`declaration “only if, the declarant is, on the same document, warned that willful
`
`false statements and the like are punishable by fine or imprisonment, or both (18
`
`U.S.C. 1001) . . . .” 37 C.F.R. § 1.68 (emphasis added); see also 37 C.F.R. § 42.2.
`
`The certification provided by Toyota with its Petition is not an affidavit or
`
`compliant declaration. (See Ex. 1009 at 7.) Further, Toyota’s certification is
`
`deficient because it lacks authentication. Under the Federal Rules of Evidence
`
`(which apply to inter partes review) “[w]itness testimony translated from a foreign
`
`language must be properly authenticated and any interpretation must be shown to
`
`be an accurate translation done by a competent translator.” Jack v. Trans World
`
`Airlines, Inc., 854 F. Supp. 654, 659 (N.D. Cal. 1994); see also Townsend Eng’g
`
`Co. v. HiTec Co., 1 U.S.P.Q.2d 1987, 1988 (N.D. Ill. 1986); 37 C.F.R. §
`
`42.62. The certification offered by Toyota does not properly authenticate the
`
`translation of Yanagawa. The certification merely states: “This is to certify that
`
`the attached translation is, to the best of my knowledge and belief, a true and
`
`accurate translation from Japanese into English of: Japanese patent S62-
`
`
`
`5
`
`
`
`131837.” (Ex. 1009 at 7.) The certification, signed by a “Project Manager,” does
`
`not describe this individual’s qualifications to make the translation. (Id.) In fact,
`
`the certification does not even state that this individual is fluent in Japanese or that
`
`this individual actually translated the document in question. (Id.) The certification
`
`therefore fails to properly authenticate the translation. See Jack, 854 F. Supp. at
`
`659 (striking translations from the record where the party only provided “a
`
`statement by an individual at a local translation center stating that the translations
`
`were true and correct”); Townsend, 1 U.S.P.Q.2d at 1988.
`
`Toyota has since attempted to submit a supplemental translation affidavit for
`
`Yanagawa.
`
` (See 12/5/13 Order Denying Petitioner’s Request to Submit
`
`Supplemental Evidence (Paper No. 15).) The Board indicated that any such a
`
`supplement must follow the process for objections under 37 § C.F.R. 42.64. (See
`
`id.) AVS therefore submits its present objections to the deficient translation
`
`certification provided by Toyota with its Petition.
`
`3.
`
`EXHIBIT 1012
`CONTENTIONS)
`
`AVS objects to the admissibility of Exhibit 1012, AVS’s infringement
`
`(AVS’S LITIGATION
`
`INFRINGEMENT
`
`contentions in the district court litigation between AVS and Toyota in the Eastern
`
`District of Texas, pursuant to Fed. R. Evid. 402 and 403. Toyota attempted to rely
`
`on AVS’s non-final, pre-discovery litigation positions as alleged admissions
`
`dispositive of the construction of particular terms (See, e.g., Petition at 10-12.)
`
`
`
`6
`
`
`
`The Board, however, only mentioned AVS’s non-final, pre-discovery litigation
`
`positions only once in its Decision, and the Board did not rely on and rejected
`
`“Toyota’s reliance on extrinsic evidence from AVS’s infringement contentions”
`
`with respect to claim construction. (See Paper 14, 1/14/14 Board Decision at 23.)
`
`Accordingly, Exhibit 1012 is not relevant (and was never relevant) to any issue in
`
`the inter partes review. See Fed. R. Evid. 401.
`
`Further, any minimal probative value is substantially outweighed by a
`
`danger of unfair prejudice, confusing the issues, waste, or needless presentation of
`
`cumulative evidence. See Fed. R. Evid. 403. Among other things, even if
`
`litigation positions were admissible, AVS’s infringement contentions are still not
`
`relevant to the issues here. It is well settled that the claims are to be construed
`
`without reference to the accused devices or methods. See, e.g., Young Dental Mfg.
`
`Co. v. Q3 Special Prods., 112 F.3d 1137, 1141 (Fed. Cir. 1997) (“the claim scope
`
`is determined without regard for the accused device”). Further, the infringement
`
`contentions are extrinsic evidence. See, e.g., Phillips v. AWH Corp., 415 F.3d
`
`1303, 1318 (Fed. Cir. 2005) (“We have viewed extrinsic evidence in general as
`
`less reliable than the patent and its prosecution history in determining how to read
`
`claim terms.”).
`
`Moreover, AVS’s infringement contentions are not AVS’s final litigation
`
`positions and are subject to revision. AVS can still supplement or amend its
`
`
`
`7
`
`
`
`positions in the District Court, particularly after the District Court issues its claim
`
`construction ruling. See, e.g., SSL Servs., LLC v. Citrix Sys., 2012 U.S. Dist.
`
`LEXIS 35788 (E.D. Tex. Mar. 16, 2012) (explaining that pursuant to Eastern
`
`District of Texas Local Patent Rule 3-6(a)(1), a party may amend its infringement
`
`contentions without leave of court after the court issues its claim construction
`
`ruling). AVS may therefore revise its final infringement positions in the litigation,
`
`if necessary, based on the claim constructions determined by the Board and the
`
`District Court—not the other way around. Accordingly, AVS objects to the
`
`admissibility of Exhibit 1012.
`
`4.
`
`EXHIBIT 1013 (PAPANIKOLOPOULOS DECLARATION)
`
`AVS objects to the admissibility of the declaration of Dr. Nikolaos
`
`Papanikolopoulos.
`
` For
`
`the
`
`reasons discussed below, many of Dr.
`
`Papanikolopoulos’s specific opinions are inadmissible to the extent they are
`
`speculative and lack support, relate to irrelevant matters, or are based on legally
`
`improper standards or claim interpretations. As such, those specific opinions
`
`discussed below are separately inadmissible under Fed. R. Evid. 702 and/or 402.
`
`A. Testimony Regarding Patent Law
`
`The rules for inter partes review provide that “testimony on United States
`
`patent law or patent examination practice will not be admitted.” 37 C.F.R. 42.65.
`
`At several points in his declaration, Dr. Papanikolopoulos recites the legal
`
`
`
`8
`
`
`
`standards for anticipation, obviousness, claim construction, etc. (See, e.g., Ex.
`
`1013 at ¶¶ 15-20, 39, 41.) To the extent that Dr. Papanikolopoulos is merely
`
`reciting the legal standards provided to him as background for his opinions, AVS
`
`does not object to its inclusion in his declaration. AVS does, however, object to
`
`the substantive admissibility of any expert testimony on patent law.
`
`Further, AVS objects to instances where Dr. Papanikolopoulos provides
`
`opinions on the ultimate legal issues of “patentability” or “validity.” (See, e.g., id.
`
`at ¶¶ 12, 13, 22, 23, 46, 65, 98, 100, 114, 124.) Expert witness testimony may be
`
`relevant and helpful for technical factual issues, but Dr. Papanikolopoulos is not an
`
`expert on whether claims are or are not patentable or valid under the Patent Laws.
`
`See, e.g., SRI Int'l v. Advanced Technology Lab., 1994 U.S. App. LEXIS 36220
`
`(Fed. Cir. Dec. 21, 1994) (“An expert’s opinion on the ultimate legal conclusion of
`
`obviousness is not ‘factual’ evidence.”). See also, e.g., Berry v. City of Detroit, 25
`
`F.3d 1342, 1353 (6th Cir. 1994) (“Although an expert's opinion may ‘embrace[] an
`
`ultimate issue to be decided by the trier of fact[,]’ Fed. R. Evid. 704(a), the issue
`
`embraced must be a factual one.”); Connell v. KLN Steel Prods. Ltd., 2009 U.S.
`
`Dist. LEXIS 20576 (N.D. Ill. Mar. 16, 2009) (“Expert testimony as to legal
`
`conclusions that will determine the outcome of the case is inadmissible.”).
`
`AVS also objects to the admissibility of Dr. Papanikolopoulos’s legal
`
`opinions on the prior art status of references (e.g., Ex. 1013 at ¶ 44), ultimate
`
`
`
`9
`
`
`
`conclusions as to anticipation (e.g., id. at ¶ 65), ultimate conclusions as to
`
`obviousness (e.g., id. at ¶¶ 98, 114), or the effect of secondary considerations (e.g.,
`
`id. at ¶¶ 100, 124), to the extent they are offered as “factual” evidence. For
`
`example, at paragraph 100 of his declaration, Dr. Papanikolopoulos states that:
`
`Even if evidence of secondary considerations existed, in my opinion it
`would be insufficient to overcome the clear obviousness of the claims of the
`’000 patent as outlined above.
`
`(Id. at ¶¶ 100, 124.) Such legal conclusions are not properly the basis of expert
`
`testimony. See, e.g. Soverain Software LLC v. Newegg Inc., 705 F.3d 1333, 1341
`
`(Fed. Cir. 2013), quoting Avia Group Int'l v. L.A. Gear Cal., Inc., 853 F.2d 1557,
`
`1564 (Fed. Cir. 1988) (“an expert’s opinion on the legal conclusion of obviousness
`
`is neither necessary nor controlling”); see also Connell v. KLN Steel Prods. Ltd.,
`
`2009 U.S. Dist. LEXIS 20576 (N.D. Ill. Mar. 16, 2009) (“legal arguments about
`
`the meaning of contracts belong in briefs, not expert reports”).
`
`B. Citations to Documents not in Evidence
`
`At paragraphs 32-37 of his declaration, Dr. Papanikolopoulos lists a number
`
`of published articles and patents that purportedly relate to “neural networks to
`
`detect objects and control.” (See, e.g., Ex. 1013 at ¶¶ 32-37.) Neither he nor
`
`Toyota, however, provided AVS or the Board with copies of these articles or
`
`patents. These articles are not listed as exhibits to Toyota’s Petition, nor are they
`
`are asserted as prior art in any grounds raised in Toyota’s Petition. Further, Dr.
`
`
`
`10
`
`
`
`Papanikolopoulos does not explain the relevance of these articles. For example, he
`
`does not identify how they disclose any elements of the claims of the ‘000 patent.
`
`Mere citation to documents, however, does not constitute evidence. See 37
`
`C.F.R. §42.63 (a) (“Exhibits Required. Evidence consists of affidavits, transcripts
`
`of depositions, documents, and things. All evidence must be filed in the form of an
`
`exhibit.”) In addition, Mr. Papanikolopoulos has not explained how the citations to
`
`these documents make the resolution of any issue in this proceeding more or less
`
`likely. As such, they are inadmissible because they are not relevant. See Fed. R.
`
`Evid. 401-402. Indeed, if these articles were relevant, Toyota should have
`
`explained a prior art basis for a ground of rejection. And if they do disclose
`
`features of the ‘000 patent claims, then they are at best redundant and cumulative,
`
`and any minimal relevance is substantially outweighed by a danger of unfair
`
`prejudice, confusing the issues, waste, or needless presentation of cumulative
`
`evidence. See Fed. R. Evid. 403. AVS therefore objects to paragraphs 32-37 and
`
`the documents cited therein.
`
`C. Irrelevant Opinions or Ones Based on Incorrect Legal Standards
`
`Pursuant to Fed. R. Evid. 402, evidence is also inadmissible if it is
`
`irrelevant, with no exception made for expert witness testimony. See Fed. R. Evid.
`
`402. Expert testimony, in particular, can be irrelevant not only if it facially has no
`
`bearing on the dispute, but also if it is based on incorrect assumptions or standards,
`
`
`
`11
`
`
`
`e.g., incorrect legal standards or claim construction. See, e.g., Noskowiak v. Bobst
`
`Sa, Case No. 04-C-0642, 2005 U.S. Dist. LEXIS 19536, **14-15 (E.D. Wis. 2005)
`
`(“[t]estimony based on an incorrect legal standard may confuse the jury, and may
`
`be proscribed by the Court.”); Icon Health & Fitness, Inc. v. Octane Fitness, LLC,
`
`2011 U.S. Dist. LEXIS 64770 (D. Minn. 2011) (“Because it is based on an
`
`erroneous claim construction, Dr. Rasty’s opinion on this point is not admissible.”)
`
`In several instances, Dr. Papanikolopoulos provides opinions in his
`
`declaration that are irrelevant to any remaining issues and/or are irrelevant because
`
`they are based on an incorrect legal standard or claim construction. These include
`
`the following:
`
`
`
`At paragraphs 53-59, 61, 63-97, 101-113, Dr. Papanikolopoulos
`
`provides opinions regarding asserted grounds for unpatentability that have now
`
`been rejected by the Board. (See 1/14/14 Board Decision.) See also 37 C.F.R. §
`
`42.108(b) (“[a]t any time prior to institution of inter partes review, the Board may
`
`deny some or all grounds for unpatentability for some or all of the challenged
`
`claims.”). Dr. Papanikolopoulos’s declaration testimony relating to rejected
`
`grounds is therefore irrelevant (and unfairly prejudicial, as it will not be otherwise
`
`evaluated by AVS’s experts).
`
`
`
`In view of paragraph 23 which contains the claim term constructions
`
`asserted by Toyota, Dr. Papanikolopoulos applies claim constructions for the terms
`
`
`
`12
`
`
`
`“transmitter means” at paragraph 52. The Board, however, rejected the claim
`
`constructions applied by Dr. Papanikolopoulos in the Decision Instituting Inter
`
`Partes Review. (See 1/14/14 Board Decision at 16-19.) The Board found that
`
`Toyota was incorrectly trying to construe the term as a means-plus-function
`
`element within the scope of 35 U.S.C. § 112, ¶ 6. (Id. at 17.) As such, Dr.
`
`Papanikolopoulos’s opinions applying this incorrect claim construction are thus
`
`irrelevant.
`
`
`
`In view of paragraph 23 which contains the claim term constructions
`
`asserted by Toyota, Dr. Papanikolopoulos applies claim constructions for the terms
`
`“processor means” at paragraph 55. The Board, however, rejected the claim
`
`constructions applied by Dr. Papanikolopoulos in the Decision Instituting Inter
`
`Partes Review. (See 1/14/14 Board Decision at 20-21.) The Board found that
`
`Toyota was incorrectly trying to construe the term as a means-plus-function
`
`element within the scope of 35 U.S.C. § 112, ¶ 6. (Id. at 21.) As such, Dr.
`
`Papanikolopoulos’s opinions applying this incorrect claim construction are thus
`
`irrelevant.
`
`
`
`In view of paragraph 23 which contains the claim term constructions
`
`asserted by Toyota, Dr. Papanikolopoulos applies claim constructions for the terms
`
`“measurement means” at paragraph 62. The Board, however, rejected the claim
`
`constructions applied by Dr. Papanikolopoulos in the Decision Instituting Inter
`
`
`
`13
`
`
`
`Partes Review. (See 1/14/14 Board Decision at 24.) The Board found that Toyota
`
`was incorrectly trying to construe the term as a means-plus-function element
`
`within the scope of 35 U.S.C. § 112, ¶ 6. (Id.) As such, Dr. Papanikolopoulos’s
`
`opinions applying this incorrect claim construction are thus irrelevant.
`
`
`
`In view of paragraph 23 which contains the claim term constructions
`
`asserted by Toyota, Dr. Papanikolopoulos applies claim constructions for the terms
`
`“dimming the headlights” at paragraph 61. The Board, however, rejected the claim
`
`constructions applied by Dr. Papanikolopoulos in the Decision Instituting Inter
`
`Partes Review. (See id.at 25.) The Board found that Toyota was incorrectly trying
`
`to construe the term as covering any reduction of headlight output, including
`
`complete elimination of headlight output. (Id.) As such, Dr. Papanikolopoulos’s
`
`opinions applying this incorrect claim construction are thus irrelevant.
`
`
`
`At paragraphs 56-59, Dr. Papanikolopoulos incorrectly applies the
`
`doctrine of inherency. Dr. Papanikolopoulos incorrectly applies the doctrine of
`
`inherency.
`
` For example, at paragraphs 56-59 of his declaration, Dr.
`
`Papanikolopoulos argues
`
`that Lemelson discloses a “pattern recognition
`
`algorithm.” Dr. Papanikolopoulos assumes that Lemelson’s vague disclosure of
`
`“training” a neural network with “known inputs” satisfies the claim requirements
`
`of the ‘000 patent. However, claim 10 recites “a pattern recognition algorithm
`
`generated from . . . patterns of received electromagnetic illumination from the
`
`
`
`14
`
`
`
`possible exterior objects;” claim 16 recites “a pattern recognition algorithm
`
`generated from . . . patterns of received radiation from the possible sources”; and
`
`claim 23 recites “generating a pattern recognition algorithm from . . . patterns of
`
`received electromagnetic illumination from
`
`the possible exterior objects.”
`
`Nevertheless, Dr. Papanikolopoulos does not identify any disclosure in Lemelson
`
`of specifically generating the pattern recognition algorithm with patterns of
`
`received electromagnetic illumination or received radiation from possible exterior
`
`objects or sources. Dr. Papanikolopoulos assumes that such a disclosure was
`
`present in Lemelson, without opining or showing that the disclosure is
`
`“necessarily” and “inevitably” present. See Atofina v. Great Lakes Chemical
`
`Corp., 441 F.3d 991, 1000 (Fed. Cir. 2006) (“anticipation by inherent disclosure is
`
`appropriate only when the reference discloses prior art that must necessarily
`
`include the unstated limitation”); Agilent Techs. v. Affymetrix, Inc., 567 F.3d 1366,
`
`1383 (Fed. Cir. 2009) (“The very essence of inherency is that one of ordinary skill
`
`in the art would recognize that a reference unavoidably teaches the property in
`
`question.”) (emphasis added). Because Dr. Papanikolopoulos has not provided the
`
`required support for why Lemelson “necessarily” discloses a “pattern recognition
`
`algorithm,” Dr. Papanikolopoulos’s opinions in this regard are not relevant.
`
`
`
`At paragraph 98, Dr. Papanikolopoulos argues that “[o]ne of ordinary
`
`skill would have used the infrared transmitter system of Asayama with the vehicle
`
`
`
`15
`
`
`
`system of Lemelson to improve detection capabilities in certain conditions (e.g.,
`
`fog, snow, night light). This would have been a straight forward adaption because
`
`the system of Asayama is built right into the vehicle headlight, (Asayama, Ex.
`
`1004, 7:6-10) such that it would be an easy adaption in the vehicle of Lemelson.”
`
`(Ex. 1013 at ¶ 98.) Dr. Papanikolopoulos’s opinions in this regard, however, are
`
`not relevant because they do not apply the correct legal standard or methodology.
`
`For example, Dr. Papanikolopoulos failed to address whether there would have
`
`been a reasonable expectation of success in locating the system of Asayama into
`
`the vehicle headlight. The operation of the light generator 30 in Asayama is
`
`dependent on an infrared light filter 31 for removing visible light which would
`
`negatively impact any visible light headlight.2 Dr. Papanikolopoulos fails to
`
`
`2 AVS is not arguing that Asayama must be physically combinable with Lemelson.
`
`Rather, AVS points to the requirement that any obviousness combination must
`
`have a “reasonable expectation of success.” See Amgen Inc. v. F. Hoffmann-La
`
`Roche, Ltd.., 580 F.3d 1340, 1362 (Fed. Cir. 2009) (“An obviousness
`
`determination requires that a skilled artisan would have perceived a reasonable
`
`expectation of success in making the invention in light of the prior art.”). Under
`
`the law, there is no reasonable expectation of success if a person of ordinary skill
`
`in the art would still have to extensively experiment to figure out how to
`
`incorporate a concept from one reference into a second reference. See, e.g.,
`
`
`
`16
`
`
`
`consider whether the infrared light filter 31 that removes visible light would have
`
`rendered the vehicle headlight of Lemelson unsuitable for its intended purpose.
`
`
`
`At paragraph 98-100, Dr. Papanikolopoulos misapplies the legal
`
`standards for obviousness.
`
` Under Dr. Papanikolopoulos’s rationale, any
`
`combination of references is obvious if there is merely any abstract or hind-sight
`
`advantage to combining them. (See Ex. 1013 at ¶¶ 98-100.) But that is not a
`
`recognized basis for obviousness under KSR. Even under KSR, a combination of
`
`references to improve one reference in the same way as another requires a showing
`
`that the combination would have resulted in a predictable result with a reasonable
`
`expectation of success. KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1739-40
`
`(2007). Dr. Papanikolopoulos does not provide any opinion as to the predictability
`
`of adding the light generator 30 and the infrared light filter 31 of Asayama to the
`
`visible light headlight of Lemelson. For instance, the infrared light filter 31 of
`
`
`Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“prior art
`
`fails to provide the requisite ‘reasonable expectation’ of success where it teaches
`
`merely to pursue a general approach that seemed to be a promising field of
`
`experimentation, where the prior art gave only general guidance as to the particular
`
`form of the claimed invention or how to achieve it.”) Here, there is no indication
`
`that a person of ordinary skill in the art would have thought to place an infrared
`
`light filter 31 for removing visible light in an existing visible light headlight.
`
`
`
`17
`
`
`
`Asayama filters out visible light, which would make the visible light headlight of
`
`Lemelson inoperable for its intended purpose. Obviousness is not shown merely
`
`by dropping a feature from one reference into another reference, especially when
`
`the intended purposes are different (e.g., outputting visible light in contrast with
`
`filtering visible light). See, e.g., Fluor Tec, Corp. v. Kappos, 499 Fed. Appx. 35,
`
`42 (Fed. Cir. 2012), citing In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992) (“different
`
`structure to achieve different purpose was not an obvious design choice”). As
`
`such, Dr. Papanikolopoulos’s legally unsupported opinions are not relevant.
`
`Accordingly, AVS objects to such irrelevant testimony or testimony based on
`
`incorrect legal standards or claim constructions, as such testimony is unreliable and
`
`unhelpful.
`
`
`
`At paragraph 114-124, Dr. Papanikolopoulos again misapplies the
`
`legal standards for obviousness. Under Dr. Papanikolopoulos’s rationale, any
`
`combination of references is obvious if there is merely any abstract or hind-sight
`
`advantage to combining them. (See Ex. 1013 at ¶¶ 114-124.) But that is not a
`
`recognized basis for obviousness under KSR. Even under KSR, a combination of
`
`references to improve one reference in the same way as another requires a showing
`
`that the combination would have resulted in a predictable result with a reasonable
`
`expectation of success. KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1739-40
`
`(2007). Dr. Papanikolopoulos does not provide any opinion as to the predictability
`
`
`
`18
`
`
`
`of adding neural network of Lemelson to the system of Asayama. Obviousness is
`
`not shown merely by dropping a feature from one reference into another reference.
`
`See, e.g., Fluor Tec, Corp. v. Kappos, 499 Fed. Appx. 35, 42 (Fed. Cir. 2012),
`
`citing In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992) (“different structure to achieve
`
`different purpose was not an obvious design choice”).
`
` As such, Dr.
`
`Papanikolopoulos’s legally unsupported opinions are not relevant. Accordingly,
`
`AVS objects to such irrelevant testimony or testimony based on incorrect legal
`
`standards or claim constructions, as such testimony is unreliable and unhelpful.
`
`Accordingly, AVS objects to such testimony or testimony because it is based
`
`on incorrect legal standards or claim constructions, and because it is unreliable and
`
`unhelpful, irrelevant, and unfairly prejudicial.
`
`D. Speculative and Unsupported Opinions
`
`Pursuant to Federal Rule of Evidence 702, expert testimony is admissible
`
`only if “(1) the testimony is based upon sufficient facts or data, (2) the testimony is
`
`the product of reliable principles and methods, and (3) the witness has applied the
`
`principles and methods reliably to the case.” Fed. R. Evid. 702. “Talking off the
`
`cuff—deploying neither data nor analysis—is not acceptable methodology.” Lang
`
`v. Kohl’s Food Stores, Inc., 217 F.3d 919, 924 (7th Cir. 2000); Upjohn Co. v.
`
`MOVA Pharm. Corp., 225 F.3d 1306, 1311-12 (Fed. Cir. 2000) (expert testimony
`
`regarding what is “widely known” requires documentary evidence). See also
`
`
`
`19
`
`
`
`Comm. Note to Fed. R. Evid. 702 (2000) (an expert opinion is inadmissible as
`
`conclusory if it “cannot reasonably be assessed for reliability”). Further, 37 C.F.R.
`
`§ 42.65 provides that expert testimony “that does not disclose the underlying facts
`
`or data on which the opinion is based is entitled to little or no weight.”
`
`Dr. Papanikolopoulos’s declaration contains numerous instances where he
`
`simply talks “off the cuff” or provides a conclusory opinion without any support.
`
`Each of these opinions by Dr. Papanikolopoulos is inadmissible as expert
`
`testimony:
`
`
`
`At paragraphs 25-37 of his declaration, Dr. Papanikolopoulos
`
`provides a description of what was, in his opinion, the “state of the art prior to June
`
`1995.” (See Ex. 1013 at ¶¶ 25-37.) Most of these paragraphs, however, consist of
`
`vague allegations of what was known, or research that was being performed,
`
`without any support. For example, at paragraph 29, Dr. Papanikolopoulos states
`
`that “[o]ther groups in Europe (e.g., Germany) focused throughout the late 1980’s
`
`and early 1990’s on the use of computer vision to drive a vehicle autonomously at
`
`high speeds.” At paragraph 30, he states that “[v]ehicle manufacturers in Japan
`
`and Europe also built sensory systems to fit a wide range of vehicles from c
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