UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Paper No. 48
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TARGET CORPORATION
`
`Petitioner
`
`V.
`
`DESTINATION MATERNITY CORPORATION
`
`Patent Owner
`
`Case No. IPR2013-00533
`
`Patent RE43,531
`
`Dated: September 2, 2014
`
`PATENT OWNER'S MOTION FOR OBSERVATION REGARDING
`
`CROSS-EXAMINATION OF REPLY WITNESS
`
`EAST\82298180.1
`
`
`
`Paper No. 48
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TARGET CORPORATION
`
`Petitioner
`
`V.
`
`DESTINATION MATERNITY CORPORATION
`
`Patent Owner
`
`Case No. IPR2013-00533
`
`Patent RE43,531
`
`Dated: September 2, 2014
`
`PATENT OWNER'S MOTION FOR OBSERVATION REGARDING
`
`CROSS-EXAMINATION OF REPLY WITNESS
`
`EAST\82298180.1
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`INTRODUCTION .......................................................................................... 1
`
`II.
`
`OBSERVATIONS .......................................................................................... l
`
`A.
`
`Mr. Thomas's Legal Opinions Should Be Given No Weight ............... l
`
`B.
`
`Mr. Thomas Did Not Consider Limitations Recited In The
`
`Independent Claims Portion Of The Dependent Claims ...................... l
`
`C.
`
`Mr. Thomas Did Not Opine that Patent Owner's Patented
`Products Are Not Commercially Successful ........................................ 4
`
`D.
`
`Mr. Thomas Provided No Evidence To Rebut Patent Owner's
`
`Prima Facie Showing of Commercial Success .................................. 12
`
`E.
`
`Mr. Thomas Did Not Know What Factors to Consider ..................... 13
`
`F.
`
`Mr. Thomas Misquotes Deposition Testimony To Support His
`Positions ............................................................................................. l 5
`
`EAST\82298180.1
`
`
`
`LIST OF EXHIBITS
`
`EXHIBIT 1 l 10
`
`Declaration of Vincent Thomas (Sealed)
`
`EXHIBIT 1 1 l6
`
`Public Version of Declaration of Vincent Thomas
`
`EXHIBIT 2022
`
`UNDER SEAL Declaration of Philip Green
`
`EXHIBIT 2029
`
`REDACTED Declaration of Philip Green
`
`EXHIBIT 2099
`
`UNDER SEAL Deposition Transcript of Vincent Thomas
`
`EXHIBIT 2100
`
`REDACTED Deposition Transcript of Vincent Thomas
`
`EAST\82298180.1
`
`-11-
`
`
`
`TABLE OF AUTHORITIES
`
`CASES
`
`PAGE(S)
`
`Applied Materials v. Advaa’ncea’ Semi. Materials,
`98 F. 3d 1563, 1570 (Fed. Cir. 1996) ................................................................... 4
`
`Demaco Corp. v. F. Von Langsa’orflLicensing Ltd,
`851 F.2d 1387, 1392, 1393 (Fed. Cir. 1988) .................................................. 3,12
`
`Honeywell Int'l Inc. v. Hamilton Sundstrana’,
`370 F. 3d 1131 (Fed. Cir. 2004) ........................................................................... 4
`
`In re Mettke,
`570 F. 3d 1356, 1361 (Fed. Cir. 2009) ......................................................... 11,12
`
`Jones v. Hardy,
`727 F.2d 1524, 1528 (Fed. Cir. 1984) .................................................................. 4
`
`EAST\82298180.1
`
`- iii -
`
`
`
`I.
`
`Introduction
`
`Pursuant to the Board's July 30, 2014 e-mail, Patent Owner hereby provides
`
`observations on the August 22, 2014 deposition of Vincent A. Thomas.
`
`II. Observations
`
`A. Mr. Thomas's Legal Opinions Should Be Given No Weight
`
`In Exhibit 2099, on page 12, lines 8-9, Mr. Thomas testified:
`
`
`
`This testimony is relevant to the Declaration of Vincent Thomas Regarding
`
`Commercial Success (the ”Thomas Declaration”) filed as Exhibits 1110 and 1116
`
`on at least paragraphs 10-12. The testimony is relevant because it shows that the
`
`legal opinions from the Thomas Declaration should be given no weight
`
`if
`
`admissible.
`
`B. Mr. Thomas Did Not Consider Limitations Recited In The
`
`Independent Claims Portion Of The Dependent Claims
`
`Mr. Thomas testified:
`
`
`
`EAST\82298180.1
`
`1
`
`
`
`Id. 56:6-13.
`
`Thomas Deposition, Exhibit 2099, 41 :6-16.
`
`EAST\82298180.1
`
`
`
`Id. 18818-1893.
`
`
`
`
`Id. 191:17-192:4.
`
`This testimony is relevant to the Thomas Declaration. The testimony is
`
`relevant because it shows that Mr. Thomas did not understand the legal framework
`
`for analyzing dependent claims, including that: (a) the entirety of Patent Owner's
`
`products practice various dependent claims; (b) those claims describe a product (”a
`
`garment”) rather than some component of a product, which creates a presumption of
`
`nexus, Demaco Corp. v. F. Von LangsdorflLicensing Ltd, 851 F.2d 1387, 1392
`
`(Fed. Cir. 1988) ("A prima facie case of nexus is generally made out when the
`
`patentee shows both that there is commercial success, and that the thing (product or
`
`method) that is commercially successful is the invention disclosed and claimed in
`
`EAST\82298180.1
`
`3
`
`
`
`the patent”); (c) ”dependent claims are an examination convenience,” Honeywell
`
`Int'l Inc. v. Hamilton Sundstrand, 370 F. 3d 1131, (Fed. Cir. 2004); (d) that
`
`incorporate the
`
`limitations of
`
`independent
`
`claims, but
`
`are
`
`analyzed for
`
`nonobviousness no differently from independent claims, since ”each claim must be
`
`considered as defining a separate invention,” Jones v. Hardy, 727 F.2d 1524, 1528
`
`(Fed. Cir. 1984); and (e) the garments made according to the dependent claims were
`
`all commercially successful, showing that the "invention as a whole” was not
`
`obvious, AppliedMaterl'als v. Advanced Semi. Materials, 98 F. 3d 1563, 1570 (Fed.
`
`Cir. 1996) ("The objective evidence of unobviousness is not' evaluated for its
`
`'separate knockdown ability' against the 'stonewall' of the prima facie case, ... but is
`
`considered together with all other evidence, in determining whether the invention as
`
`a whole would have been obvious to a person of ordinary skill in the field of the
`
`invention”) (emphasis added).
`
`C. Mr. Thomas Did Not Opine that Patent Owner's Patented
`Products Are Not Commercially Successful
`
`Mr. Thomas testified:
`
`
`
`EAS“82298180.1
`
`4
`
`
`
`Id. 25:21-26:10.
`
`EAST\82298180.1
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`Id. 37:3-38:8.
`
`
`
`Id. 72:18-73:1.
`
`EAST\82298180.1
`
`Id. 73:15-74:4.
`
`
`
`Id. 81:25-82:13.
`
`EAST\82298180.1
`
`Id. 87:23-88:13.
`
`
`
`Id. 12016-10.
`
`Id. 11618-20.
`
`8
`
`Id. 12212-18.
`
`EAST\82298180.1
`
`
`
`Id. 12319-17.
`
`Id. 156:22-157:7.
`
`EAST\82298180.1
`
`
`
`Id. 182:11-183:18.
`
`EAST\82298180.1
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`Id. 19416-21.
`
`
`
`
`
`Id. 226:21-227:6.
`
`
`
`Id. 23419-21.
`
`This testimony is relevant to the Declaration of Philip Green Regarding
`
`Commercial Success (the ”Green Declaration”) filed as Exhibit Nos. 2022 and 2029
`
`and the Thomas Declaration. The testimony is relevant because it shows that Mr.
`
`Thomas did not opine that Patent Owner's products are not commercially successful;
`
`rather, Mr. Thomas opined that Mr. Green did not show that commercial success is
`
`not due to factors other than the patented invention, which is not required, especially
`
`where, as here, there is a presumption of nexus. In re Mettke, 570 F. 3d 1356, 1361
`
`(Fed. Cir. 2009) ("We note that when the commercially successful device is the
`
`claimed invention itself, there is a presumption of nexus”).
`
`EAST\82298180.1
`
`1 l
`
`
`
`D. Mr. Thomas Provided No Evidence To Rebut Patent Owner's
`
`Prima Facie Showing of Commercial Success
`
`Mr. Thomas testified:
`
`
`
`Id. 209:20-210:6.
`
`This testimony is relevant to the Green and Thomas Declarations, because it
`
`shows that Mr. Thomas did no independent commercial success analysis to rebut
`
`Mr. Green;
`
`rather, Mr. Thomas’s opinion is
`
`limited to identifying alleged
`
`deficiencies in Mr. Green's analysis, and all Mr. Thomas contends is that Mr. Green
`
`did not prove a negative (the absence of other factors) by some unspecified burden
`
`of proof, without any evidence at all that there would be any reason to believe that
`
`any other factors were present. Thus, Petitioner did not provide any evidence to
`
`meet its burden to show that commercial success was not due to the patented
`
`invention. Mettke, 570 F. 3d at 1361; Demaco, 851 F.2d at 1393.
`
`EAST\82298180.1
`
`12
`
`
`
`Mr. Thomas testified:
`
`E. Mr. Thomas Did Not Know What Factors to Consider
`
`EAST\82298180.1
`
`
`
`EAST\82298180.1
`
`
`
`
`
`Id. 46:15-49: 13.
`
`This testimony is relevant to the Thomas Declaration, because it shows that
`
`Mr. Thomas does not understand the commercial success analysis, and cannot
`
`articulate which factors need to be considered.
`
`F. Mr. Thomas Misquotes Deposition Testimony To Support His
`Positions
`
`At
`
`15829—1608,
`
`162:6—163:8,
`
`172:4-173:13,
`
`174:8-20,
`
`l75:22-l76:4,
`
`'l77:'13-'178:'15, 238:'l3-239:7, and 264:2-273:'10, Mr. Thomas testified regarding
`
`discrepancies between his quotes made in the Thomas Declaration and the actual
`
`statements made in the documents he cited. This testimony is relevant to paragraph
`
`43 of the Thomas Declaration, and discredits the Thomas Declaration.
`
`Dated: September 2, 2014
`
`DLA PIPER LLP (US)
`
`Respectfully submitted,
`
`.9 Paul Y'aufer
`Paul A. Taufer (USP'I'O Reg. No. 35. 703)
`'1650 Market Street, Suite 4900
`Philadelphia, PA 19103
`Phone: (215) 656—3385
`Facsimile: (215) 606-3385
`paul .taufertflldlapipercom
`Attorneys
`for Patent Owner Destination
`Matcm it}; ( Torporatirm
`
`l'I.-\S'I‘-8229818(J.1
`
`15
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR §§ 42.6 and 42.120, the undersigned certifies that on
`
`September 2, 2014, a complete and entire copy of PATENT OWNER'S MOTION
`
`FOR OBSERVATION REGARDING CROSS-EXAMINATION OF REPLY
`
`WITNESS was provided via email
`
`to the Petitioner by serving the email
`
`correspondence address of record as follows:
`
`Norman J. Hedges
`R. Trevor Carter
`
`Daniel M. Lechleiter
`
`Faegre Baker Daniels LLP
`300 N. Meridian Street, Suite 2700
`Indianapolis, Indiana 46204—1750
`Phone: (317) 237-0300
`Fax: (317) 237-1000
`Norman .Hedgesgcfi.FaegreBDcom
`trevorcartergrQFaegreBD.com
`daniel .lechleiter((12.FaegreBD.c01n
`
`Es." Paul Tau Ear
`
`
`Paul A. Taufer
`
`EAST-82298180. 1
`
`1 6
`
`
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