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. 5,845,000
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`Issue Date: December 1, 1998
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`Title: OPTICAL IDENTIFICATION AND MONITORING SYSTEM USING
`PATTERN RECOGNITION FOR USE WITH VEHICLES
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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. IPR2013-00424
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`______________________________
`
`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 AMENDED OBJECTIONS TO EVIDENCE
`SUBMITTED BY TOYOTA MOTOR CORPORATION
`
`Case No. IPR2013-00424
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`TABLE OF CONTENTS
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`EXHIBITS 1008 AND 1009 (YANAGAWA)................................................ 1
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`EXHIBIT 1012 (AVS’S LITIGATION INFRINGEMENT
`CONTENTIONS) ............................................................................................ 4
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`INADMISSIBLE ATTORNEY ARGUMENT IN PETITION ...................... 5
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`i
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`1.
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`2.
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`3.
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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 Toyota Motor
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`Corporation’s (“Toyota’s”) Petition for Inter Partes Review of U.S. 5,845,000
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`(“the ‘000 patent”). These amended objections supersede AVS’s prior objections
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`to evidence served and submitted on January 27, 2014. (Paper No. 18.)
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`1.
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`EXHIBITS 1008 AND 1009 (YANAGAWA)
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`Toyota argues that claims of the ‘000 patent are anticipated or rendered
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`obvious by Yanagawa.
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`AVS objects to the admissibility of Exhibits 1008 and 1009 relating to
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`Yanagawa and its purported English Translation. Yanagawa purports to be an
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`unexamined Japanese Patent Application that was apparently published in
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`Japanese. (See Ex. 1008.) AVS objects to the admission of Exhibit 1008 (a
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`purported copy of the Japanese Yanagawa reference) and Exhibit 1009 (the
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`proffered translation of Yanagawa) because: (1) they have not been sufficiently
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`authenticated under Fed. R. Evid. 901(a); and (2) the proffered translation does not
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`conform to the requirements of a proper affidavit 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 a piece of evidence must be authenticated through “evidence sufficient
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`to support a finding that the item is what the proponent claims it is.” Fed. R. Evid.
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`1
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`901(a). Ordinarily, documents are authenticated by attaching them to an affidavit
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`of an 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(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 Yanagawa or any other affidavit from a person
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`with personal knowledge of its authenticity. (See Exs. 1008 & 1009.) As such,
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`Yanagawa is not admissible.
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`Second, in order to rely on Yanagawa 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). 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. 1009 at 7.) Further, Toyota’s certification is
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`deficient because it lacks authentication. Under the Federal Rules of Evidence
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`(which apply to inter partes review) “[w]itness testimony translated from a foreign
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`2
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`language must be properly authenticated and any interpretation must be shown to
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`be an accurate translation done by a competent translator.” Jack v. Trans World
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`Airlines, Inc., 854 F. Supp. 654, 659 (N.D. Cal. 1994); see also Townsend Eng’g
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`Co. v. HiTec Co., 1 U.S.P.Q.2d 1987, 1988 (N.D. Ill. 1986); 37 C.F.R. §
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`42.62. The certification offered by Toyota does not properly authenticate the
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`translation of Yanagawa. The certification merely states: “This is to certify that
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`the attached translation is, to the best of my knowledge and belief, a true and
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`accurate translation from Japanese into English of: Japanese patent S62-
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`131837.” (Ex. 1009 at 7.) The certification, signed by a “Project Manager,” does
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`not describe this individual’s qualifications to make the translation. (Id.) In fact,
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`the certification does not even state that this individual is fluent in Japanese or that
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`this individual actually translated the document in question. (Id.) The certification
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`therefore fails to properly authenticate the translation. See Jack, 854 F. Supp. at
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`659 (striking translations from the record where the party only provided “a
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`statement by an individual at a local translation center stating that the translations
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`were true and correct”); 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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`Yanagawa.
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` (See 12/5/13 Order Denying Petitioner’s Request to Submit
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`Supplemental Evidence (Paper No. 15).) The Board indicated that any such a
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`supplement must follow the process for objections under 37 § C.F.R. 42.64. (See
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`3
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`id.) AVS therefore submits its present objections to the deficient translation
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`certification provided by Toyota with its Petition.
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`2.
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`EXHIBIT 1012
`CONTENTIONS)
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`AVS objects to the admissibility of Exhibit 1012, 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. Toyota attempted to rely
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`on AVS’s non-final, pre-discovery litigation positions as alleged admissions
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`dispositive of the construction of particular terms (See, e.g., Petition at 10-12.)
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`The Board, however, only mentioned AVS’s non-final, pre-discovery litigation
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`positions only once in its Decision, and the Board did not rely on and rejected
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`“Toyota’s reliance on extrinsic evidence from AVS’s infringement contentions”
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`with respect to claim construction. (See Paper 14, 1/14/14 Board Decision at 23.)
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`Accordingly, Exhibit 1012 is not relevant (and was never relevant) to any issue in
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`the inter partes review. See Fed. R. Evid. 401.
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`Further, any minimal probative value is substantially outweighed by a
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`danger of unfair prejudice, confusing the issues, waste, or needless presentation of
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`cumulative evidence. See Fed. R. Evid. 403. Among other things, even if
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`litigation positions were admissible, AVS’s infringement contentions are still not
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`relevant to the issues here. It is well settled that the claims are to be construed
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`without reference to the accused devices or methods. See, e.g., Young Dental Mfg.
`4
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`Co. v. Q3 Special Prods., 112 F.3d 1137, 1141 (Fed. Cir. 1997) (“the claim scope
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`is determined without regard for the accused device”). Further, the infringement
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`contentions are extrinsic evidence. See, e.g., Phillips v. AWH Corp., 415 F.3d
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`1303, 1318 (Fed. Cir. 2005) (“We have viewed extrinsic evidence in general as
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`less reliable than the patent and its prosecution history in determining how to read
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`claim terms.”).
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`Moreover, AVS’s infringement contentions are not AVS’s final litigation
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`positions and are subject to revision. AVS can still supplement or amend its
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`positions in the District Court, particularly after the District Court issues its claim
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`construction ruling. See, e.g., SSL Servs., LLC v. Citrix Sys., 2012 U.S. Dist.
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`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. Accordingly, AVS objects to the
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`admissibility of Exhibit 1012.
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`3.
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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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`5
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`Petitioner, to any of the above-discussed inadmissible evidence. For example,
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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, LTD.
`500 West Madison, 34th Floor
`Chicago, IL 60661
`Telephone: (312) 775-8000
`Facsimile: (312) 775-8100
`CUSTOMER NUMBER: 23446
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`6
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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 IPR2013-00424 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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`
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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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`7
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