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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
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`TARGET CORPORATION
`Petitioner
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`v.
`
`DESTINATION MATERNITY CORPORATION
`Patent Owner
`_____________
`
`Case No. IPR2013-00533
`Patent RE43,531
`_____________
`
`Dated: September 23, 2014
`
`Before JENNIFER S. BISK, MICHAEL J. FITZPATRICK, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`PATENT OWNER'S REPLY TO PETITIONER'S OPPOSITION TO
`PATENT OWNER'S MOTION TO EXCLUDE EVIDENCE
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`EAST\82971498.1
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`
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`TABLE OF CONTENTS
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`Page
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`I.
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`II.
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`INTRODUCTION ......................................................................................... 1
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`ARGUMENT................................................................................................. 1
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`A.
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`B.
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`C.
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`D.
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`THE THOMAS DECLARATION SHOULD BE
`EXCLUDED AS LEGAL OPINION.................................................. 1
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`PETITIONER DOES NOT CONTEST THE EXCLUSION OF
`SMILOVIC.......................................................................................... 3
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`PETITIONER CANNOT END-RUN THE BOARD'S
`INSTITUTION DECISION BY ARGUING THAT THE
`ASADA REFERENCE IS MERE BACKGROUND ......................... 3
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`PATENT OWNER'S COMMUNICATIONS WITH
`COMPETITORS SHOULD BE EXCLUDED BECAUSE
`THEY ARE COMPROMISE NEGOTIATIONS AND ARE
`IRRELEVANT TO CLAIM CONSTRUCTION ............................... 4
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`III. CONCLUSION.............................................................................................. 5
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`EAST\82971498.1
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`-i-
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`LIST OF EXHIBITS
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`EXHIBIT 1071
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`DL1961 Website Milano Bootcut Jeans Review
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`EXHIBIT 1072
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`Annotated Being Pregnant US blog Re Salsa Hope
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`EXHIBIT 1075
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`5/19/2011 Letter from Taufer to N. Lehrer (DMC0116526)
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`EXHIBIT 1076
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`Annotated 5/19/2011 Letter from Taufer to N. Lehrer
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`EXHIBIT 1077
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`Annotated 6/20/2012 Letter to J. Kyle from Taufer re: Suits Your
`Belly
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`EXHIBIT 1080
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`3/16/2011 Letter from Taufer to Hinrichs (TAR060_00000058)
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`EXHIBIT 1081
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`Claim Chart: DMC-Target Liz Lange Pants (DMC0116321)
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`EXHIBIT 1082
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`3/10/2011 Email from Taufer to Budow re Salsa Jeans
`(DMC0116289)
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`EXHIBIT 1083
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`Claim Chart: DMC-Salsa Jeans (DMC0116307)
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`EXHIBIT 1086
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`5/19/2011 Letter from Taufer to N. Lehrer - higher quality copy
`(DMC0116526)
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`EXHIBIT 1087
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`6/2/2011 Letter from Taufer to N. Lehrer (DMC0116548)
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`EXHIBIT 1088
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`DMC Draft Complaint against M'Chic (DMC0116549)
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`EXHIBIT 1089
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`EXHIBIT 1090
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`4/6/2009 Email from K. Scarduzio to L. Hendrickson
`(DMC0055277)
`Copy of product label for M'Chic pant that is Exhibit 1074
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`EXHIBIT 1091
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`USPN 6817034 Smilovic
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`EXHIBIT 1092
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`1/16/2007 Email from L. Hendrickson re Belly Panel Notes
`(DMC0110373; Hendrickson Exhibit 49)
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`EXHIBIT 1110
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`Declaration of Vince Thomas
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`EAST\82971498.1
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`- ii -
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`EXHIBIT 1116
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`Public Version of V. Thomas Declaration
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`EXHIBIT 2037
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`Japanese Utility Model Patent No. 3,086,624 (Asada)
`Translated Version
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`EXHIBIT 2099
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`Deposition Transcript of Vince Thomas
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`EAST\82971498.1
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`- iii -
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`
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`TABLE OF AUTHORITIES
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`CASES
`Daubert v. Merrell Dow Pharm., Inc.,
`509 U.S. 579 (1993)..............................................................................................2
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`Page(s)
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`Goodyear Tire & Rubber Co. v. Chiles Power Supply, Inc.,
`332 F.3d 976 (6th Cir. 2003) ................................................................................4
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`Pro-Mold and Tool Co. v. Great Lakes Plastics, Inc.,
`75 F.3d 1568 (Fed Cir. 1996) ...............................................................................1
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`OTHER AUTHORITIES
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`37 C.F.R. § 42.24(c)(1)..............................................................................................3
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`37 CFR §§ 42.6 and 42.120 .......................................................................................6
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`Fed. R. Evid. 408 .......................................................................................................4
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`Fed. R. Evid. 702 .......................................................................................................2
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`EAST\82971498.1
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`- iv -
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`
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`I.
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`Introduction
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`The Declaration of Vincent Thomas Regarding Commercial Success (the
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`"Thomas Declaration") should be excluded because it offers merely an additional
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`legal brief, making arguments outside the scope of Thomas's expertise, and adding
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`nothing but conclusory opinions about the sufficiency of Mr. Green's evidence. The
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`remaining disputed exhibits--the Asada reference Target relies upon as grounds for
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`invalidity even though the Board did not institute on Asada, and documents that try
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`to settle nascent patent-infringement disputes, should likewise be excluded as barely
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`relevant and unfairly prejudicial.
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`II. Argument
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`A. The Thomas Declaration Should Be Excluded As Legal Opinion
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`As Petitioner states, Mr. Thomas opined that "Green fails to show facts, or
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`analysis or opinion from which such facts could be inferred, sufficient to support a
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`nexus." Petitioner's Opp., Paper No. 58, at 7. Mr. Thomas's conclusory and
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`argumentative opinions should be excluded because Mr. Thomas offers mere
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`argument, without any underlying factual analysis. His conclusory statements do
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`not help a fact-finder resolve whether a nexus exists. See Pro-Mold and Tool Co. v.
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`Great Lakes Plastics, Inc., 75 F.3d 1568, 1574 (Fed Cir. 1996) ("It is within the
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`province of the fact-finder to resolve these factual disputes regarding whether a
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`nexus exists between the commercial success of the product and its patented
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`features, and to determine the probative value of [patent holder's] evidence of
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`secondary considerations for rebutting the prima facie case of obviousness").
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`While not offering his own factual analysis, Mr. Thomas attacks Mr. Green's
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`methodology as allegedly not relevant or reliable. See, e.g., Thomas Declaration
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`(Ex. 1110) ¶¶10-12, 23-27. But whether Mr. Green's methodology is relevant or
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`reliableunder Rule 702 is a legal question for the Board, and not a judgment for Mr.
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`Thomas to make. Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579, 589-595
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`(1993). To be sure, Mr. Thomas could opine that Mr. Green's accounting was
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`incorrect, or that he measured the price premiums incorrectly, but Mr. Thomas in
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`fact confirms Mr. Green's numbers. See generally Thomas Declaration (Ex. 1110);
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`Thomas Dep. (Ex. 2099) 81:25-82:6 ("Q….And do you have any reason to disagree
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`with the numbers Mr. Green is showing? A. I – I don't have any reason to disagree
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`that with regard to the information he was provided that he's – as I sit here, I don't
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`recall having any issues with the way he's reflected the numbers based on what he
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`was provided."). Nor did Mr. Thomas opine that Patent Owner's products were not
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`commercially successful. (Ex. 1110); Thomas Dep (Ex. 2099) 82:7-13. He does not
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`even opine that he can attribute this commercial success to other factors, but merely
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`complains that Mr. Green cannot rule them out. (Ex. 1110) ¶ 37.
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`Mr. Thomas complains that Mr. Green and Dr. Brookstein relied on four
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`representative products. But Mr. Thomas never contends that these products were
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`unrepresentative. Nor does he contend that
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`these four products were not
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`commercially successful in their own right. Yet even if the four representative
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`products alone were considered, they provide at least a prima facie case of
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`commercial success, which Mr. Thomas never rebuts.
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`A petitioner's reply to a patent owner response is limited to 15 pages. 37
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`C.F.R. § 42.24(c)(1). The Thomas Declaration is being used merely to extend that
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`page limit with pages of legal argument. For all of these reasons, the Thomas
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`Declaration should be excluded.
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`B. Petitioner Does Not Contest The Exclusion of Smilovic
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`Petitioner's Opposition does not mention U.S. Patent No. 6,817,034 to
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`Smilovic ("Smilovic") filed as Exhibit 1091. Accordingly, Patent Owner's
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`unopposed Motion to Exclude Smilovic should be granted.
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`C. Petitioner Cannot End-Run the Board's Institution Decision by
`Arguing that the Asada Reference is Mere Background
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`The Board did not institute this IPR based on the Asada reference. Yet
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`Petitioner uses Asada to argue that it disclosed a claim feature.
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`According to Petitioner, Asada shows that the claimed "panel height was
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`known in prior art." Reply, Paper No. 37, at 4 Petitioner even includes a partial
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`claim chart to emphasize Asada's importance to Petitioner's invalidity arguments.
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`Id. Accordingly, Petitioner ignores the Board's Instituted Decision and uses Asada
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`improperly and unfairly. Petitioner admits that Asada is "not part of the instituted
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`3
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`grounds," but contends it can use it anyway to rebut Patent Owner's arguments
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`showing the claims are valid. Pet. Opp. at 10-11.
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`Institution Decisions, and the
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`litigation estoppel they create for instituted prior art, would be meaningless if
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`petitioners could end-run Institution Decisions by making prior-art arguments
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`relying on references not included in the Instituted Decisions. Petitioner should not
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`be permitted to argue that prior art not included in the Instituted Decision is
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`invalidating on grounds that it merely rebuts Patent Owner's validity arguments.
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`D. Patent Owner's Communications with Competitors Should Be
`Excluded Because They Are Compromise Negotiations And Are
`Irrelevant To Claim Construction
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`While contending that Exs. 1071, 1072, 1075-1077, 1080-1083, and
`
`1086-10901 are Patent Owner's allegations of infringement, Petitioner also contends
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`that these exhibits are statements made outside of litigation, which means they
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`cannot be allegations of infringement. Pet. Opp. at 12-15. Either these exhibits are
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`mere communications with competitors, which are thus irrelevant, or they are
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`communications intended to resolve disputes and, thus, are inadmissible under Fed.
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`R. Evid. 408. Goodyear Tire & Rubber Co. v. Chiles Power Supply, Inc., 332 F.3d
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`976, 980 (6th Cir. 2003) ("There exists a strong public interest in favor of secrecy of
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`matters discussed by parties during settlement negotiations. This is true whether
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`1 Ex. 1092 is a cover e-mail attaching product development documents, which is
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`irrelevant to this proceeding.
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`settlement negotiations are done under the auspices of the court or informally
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`between the parties").
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`III. Conclusion
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`For
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`the reasons discussed above, Exhibits 1110, 1116, 1071, 1072,
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`1075-1077, 1080-1083, 1086-1092, and 2037 should be excluded from
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`consideration in these proceedings.
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`Dated: September 23, 2014
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`Respectfully submitted,
`
`DLA PIPER LLP (US)
`/s/ Paul Taufer
`Paul A. Taufer (USPTO Reg. No. 35,703)
`1650 Market Street, Suite 4900
`Philadelphia, PA 19103
`Phone: (215) 656-3385
`Facsimile: (215) 606-3385
`paul.taufer@dlapiper.com
`Attorneys
`for Patent Owner Destination
`Maternity Corporation
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`EAST\82971498.1
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6 and 42.120, the undersigned certifies that on
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`September 23, 2014, a complete and entire copy PATENT OWNER'S REPLY TO
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`PETITIONER'S OPPOSITION TO PATENT OWNER'S MOTION TO EXCLUDE
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`EVIDENCE was provided via email to the Petitioner by serving the email
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`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.Hedges@FaegreBD.com
`trevor.carter@FaegreBD.com
`daniel.lechleiter@FaegreBD.com
`
`/s/ Paul Taufer
`Paul A. Taufer
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`EAST\82971498.1
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