`Date: May 9, 2014
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`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 IPR2013-00424
`Patent 5,845,000
`____________
`
`Before JAMESON LEE, TREVOR M. JEFFERSON,
`and BARBARA A. PARVIS, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`
`Order
`Conduct of Proceedings
`37 C.F.R. § 42.05
`
`
`
`
`
`IPR2013-00424
`Patent 5,845,000
`
`
`
`
`
`Introduction
`On May 7, 2014, a conference call was held between Judges Lee, Kim, and
`
`Pettigrew, and respective counsel for the parties. Counsel for Patent Owner
`initiated the conference call to ask the Board to limit the cross-examination of its
`expert witness Chris Koutsougeras, Ph.D., by prohibiting questions directed to
`whether the feature of trained pattern recognition would have been obvious to one
`with ordinary skill in the art based on U.S. Patent 6,553,130 (“Lemelson”).
`
`The dispute relating to the scope of cross-examination arose, on May 5,
`2014, during cross-examination of the expert. Counsel for Patent Owner instructed
`the witness not to answer and sought to reach the Board to request an order to limit
`the cross-examination. It was approximately 6:00 PM on May 5, 2014, and the
`parties were unable to reach an administrative patent judge at that time. Cross-
`examination continued on unrelated matters and then was completed but for the
`line of questions in dispute. On May 6, 2014, the parties requested a telephone
`conference with the Board, to be held on May 7, 2014. If the Board denies Patent
`Owner’s request to limit the cross-examination testimony of Dr. Koutsougeras,
`further cross-examination of the witness would follow.
`
`We grant the request of Patent Owner to limit the questioning of
`Dr. Koutsougeras, on cross-examination, by barring questions inquiring about the
`witness’s opinion on the obviousness to one with ordinary skill in the art of the
`trained pattern recognition claim feature in light of Lemelson.
`Discussion
`The parties do not dispute that in all of the alleged grounds of
`
`unpatentability instituted for trial, that involve Lemelson, Petitioner in its petition
`relies on Lemelson as disclosing the claim feature of trained pattern recognition,
`not as rendering obvious that feature. According to counsel for Petitioner,
`
`2
`
`
`
`
`
`
`IPR2013-00424
`Patent 5,845,000
`
`
`however, obviousness, inherent disclosure, and the understanding of one with
`ordinary skill in the art as to the disclosure of Lemelson, are inter-mingled as one
`integral discoverable topic. We disagree. Counsel for Petitioner knows the
`difference between the separate concepts of inherent disclosure, understanding of
`the teachings of a reference, and obviousness in view of a reference. Indeed,
`counsel for Petitioner acknowledged that he asked the question in three “different
`ways” to get an assortment of “different perspectives” on the subject. Counsel for
`Patent Owner raised an objection only for questions directed to the witness’s
`opinion on obviousness of the feature in light of Lemelson’s disclosure.
`
`We are unpersuaded that inherent disclosure, understanding of what a
`references discloses, and obviousness are all one and the same topic. Based on the
`specific grounds instituted for trial and the arguments made in the petition, as well
`as the absence of specific testimony in the declaration of Dr. Koutsougeras (Ex.
`2002) pertaining to non-obviousness of the trained pattern recognition feature to
`one with ordinary skill in the art, counsel for Petitioner had no sufficient reason to
`inquire, on cross-examination, the opinion of Dr. Koutsougeras as to whether the
`trained pattern recognition feature would have been obvious to one with ordinary
`skill.
`
`Order
`
`It is
`
`ORDERED that Patent Owner’s request that we limit the cross-examination
`
`of Dr. Koutsougeras by precluding questions directed to whether the claimed
`feature of trained pattern recognition would have been obvious to one with
`ordinary skill is granted; and
`
`
`
`
`
`3
`
`
`
`
`IPR2013-00424
`Patent 5,845,000
`
`
`FURTHER ORDERED that cross-examination of Dr. Koutsougeras by
`
`counsel for Petitioner shall not include questions asking for the opinion of
`Dr. Koutsougeras on whether the claimed feature of trained pattern recognition
`would have been obvious to one with ordinary skill in the art.
`
`
`
`
`
`4
`
`
`
`
`
`
`
`
`For Petitioner:
`Matthew Berkowitz
`mberkowitz@kenyon.com
`
`For Patent Owner:
`Thomas Wimbiscus
`Scott McBride
`twimbiscus@mcandrews-ip.com
`smcbride@mcandrews-ip.com
`
`
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