Paper No. 67
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`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 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
`
`EAST\82971498.1
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`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 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
`
`EAST\82971498.1
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`INTRODUCTION ......................................................................................... 1
`
`ARGUMENT................................................................................................. 1
`
`A.
`
`B.
`
`C.
`
`D.
`
`THE THOMAS DECLARATION SHOULD BE
`EXCLUDED AS LEGAL OPINION.................................................. 1
`
`PETITIONER DOES NOT CONTEST THE EXCLUSION OF
`SMILOVIC.......................................................................................... 3
`
`PETITIONER CANNOT END-RUN THE BOARD'S
`INSTITUTION DECISION BY ARGUING THAT THE
`ASADA REFERENCE IS MERE BACKGROUND ......................... 3
`
`PATENT OWNER'S COMMUNICATIONS WITH
`COMPETITORS SHOULD BE EXCLUDED BECAUSE
`THEY ARE COMPROMISE NEGOTIATIONS AND ARE
`IRRELEVANT TO CLAIM CONSTRUCTION ............................... 4
`
`III. CONCLUSION.............................................................................................. 5
`
`EAST\82971498.1
`
`-i-
`
`
`
`LIST OF EXHIBITS
`
`EXHIBIT 1071
`
`DL1961 Website Milano Bootcut Jeans Review
`
`EXHIBIT 1072
`
`Annotated Being Pregnant US blog Re Salsa Hope
`
`EXHIBIT 1075
`
`5/19/2011 Letter from Taufer to N. Lehrer (DMC0116526)
`
`EXHIBIT 1076
`
`Annotated 5/19/2011 Letter from Taufer to N. Lehrer
`
`EXHIBIT 1077
`
`Annotated 6/20/2012 Letter to J. Kyle from Taufer re: Suits Your
`Belly
`
`EXHIBIT 1080
`
`3/16/2011 Letter from Taufer to Hinrichs (TAR060_00000058)
`
`EXHIBIT 1081
`
`Claim Chart: DMC-Target Liz Lange Pants (DMC0116321)
`
`EXHIBIT 1082
`
`3/10/2011 Email from Taufer to Budow re Salsa Jeans
`(DMC0116289)
`
`EXHIBIT 1083
`
`Claim Chart: DMC-Salsa Jeans (DMC0116307)
`
`EXHIBIT 1086
`
`5/19/2011 Letter from Taufer to N. Lehrer - higher quality copy
`(DMC0116526)
`
`EXHIBIT 1087
`
`6/2/2011 Letter from Taufer to N. Lehrer (DMC0116548)
`
`EXHIBIT 1088
`
`DMC Draft Complaint against M'Chic (DMC0116549)
`
`EXHIBIT 1089
`
`EXHIBIT 1090
`
`4/6/2009 Email from K. Scarduzio to L. Hendrickson
`(DMC0055277)
`Copy of product label for M'Chic pant that is Exhibit 1074
`
`EXHIBIT 1091
`
`USPN 6817034 Smilovic
`
`EXHIBIT 1092
`
`1/16/2007 Email from L. Hendrickson re Belly Panel Notes
`(DMC0110373; Hendrickson Exhibit 49)
`
`EXHIBIT 1110
`
`Declaration of Vince Thomas
`
`EAST\82971498.1
`
`- ii -
`
`
`
`EXHIBIT 1116
`
`Public Version of V. Thomas Declaration
`
`EXHIBIT 2037
`
`Japanese Utility Model Patent No. 3,086,624 (Asada)
`Translated Version
`
`EXHIBIT 2099
`
`Deposition Transcript of Vince Thomas
`
`EAST\82971498.1
`
`- iii -
`
`
`
`TABLE OF AUTHORITIES
`
`CASES
`Daubert v. Merrell Dow Pharm., Inc.,
`509 U.S. 579 (1993)..............................................................................................2
`
`Page(s)
`
`Goodyear Tire & Rubber Co. v. Chiles Power Supply, Inc.,
`332 F.3d 976 (6th Cir. 2003) ................................................................................4
`
`Pro-Mold and Tool Co. v. Great Lakes Plastics, Inc.,
`75 F.3d 1568 (Fed Cir. 1996) ...............................................................................1
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.24(c)(1)..............................................................................................3
`
`37 CFR §§ 42.6 and 42.120 .......................................................................................6
`
`Fed. R. Evid. 408 .......................................................................................................4
`
`Fed. R. Evid. 702 .......................................................................................................2
`
`EAST\82971498.1
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`- iv -
`
`
`
`I.
`
`Introduction
`
`The Declaration of Vincent Thomas Regarding Commercial Success (the
`
`"Thomas Declaration") should be excluded because it offers merely an additional
`
`legal brief, making arguments outside the scope of Thomas's expertise, and adding
`
`nothing but conclusory opinions about the sufficiency of Mr. Green's evidence. The
`
`remaining disputed exhibits--the Asada reference Target relies upon as grounds for
`
`invalidity even though the Board did not institute on Asada, and documents that try
`
`to settle nascent patent-infringement disputes, should likewise be excluded as barely
`
`relevant and unfairly prejudicial.
`
`II. Argument
`
`A. The Thomas Declaration Should Be Excluded As Legal Opinion
`
`As Petitioner states, Mr. Thomas opined that "Green fails to show facts, or
`
`analysis or opinion from which such facts could be inferred, sufficient to support a
`
`nexus." Petitioner's Opp., Paper No. 58, at 7. Mr. Thomas's conclusory and
`
`argumentative opinions should be excluded because Mr. Thomas offers mere
`
`argument, without any underlying factual analysis. His conclusory statements do
`
`not help a fact-finder resolve whether a nexus exists. See Pro-Mold and Tool Co. v.
`
`Great Lakes Plastics, Inc., 75 F.3d 1568, 1574 (Fed Cir. 1996) ("It is within the
`
`province of the fact-finder to resolve these factual disputes regarding whether a
`
`nexus exists between the commercial success of the product and its patented
`
`EAST\82971498.1
`
`1
`
`
`
`features, and to determine the probative value of [patent holder's] evidence of
`
`secondary considerations for rebutting the prima facie case of obviousness").
`
`While not offering his own factual analysis, Mr. Thomas attacks Mr. Green's
`
`methodology as allegedly not relevant or reliable. See, e.g., Thomas Declaration
`
`(Ex. 1110) ¶¶10-12, 23-27. But whether Mr. Green's methodology is relevant or
`
`reliableunder Rule 702 is a legal question for the Board, and not a judgment for Mr.
`
`Thomas to make. Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579, 589-595
`
`(1993). To be sure, Mr. Thomas could opine that Mr. Green's accounting was
`
`incorrect, or that he measured the price premiums incorrectly, but Mr. Thomas in
`
`fact confirms Mr. Green's numbers. See generally Thomas Declaration (Ex. 1110);
`
`Thomas Dep. (Ex. 2099) 81:25-82:6 ("Q….And do you have any reason to disagree
`
`with the numbers Mr. Green is showing? A. I – I don't have any reason to disagree
`
`that with regard to the information he was provided that he's – as I sit here, I don't
`
`recall having any issues with the way he's reflected the numbers based on what he
`
`was provided."). Nor did Mr. Thomas opine that Patent Owner's products were not
`
`commercially successful. (Ex. 1110); Thomas Dep (Ex. 2099) 82:7-13. He does not
`
`even opine that he can attribute this commercial success to other factors, but merely
`
`complains that Mr. Green cannot rule them out. (Ex. 1110) ¶ 37.
`
`Mr. Thomas complains that Mr. Green and Dr. Brookstein relied on four
`
`representative products. But Mr. Thomas never contends that these products were
`
`EAST\82971498.1
`
`2
`
`
`
`unrepresentative. Nor does he contend that
`
`these four products were not
`
`commercially successful in their own right. Yet even if the four representative
`
`products alone were considered, they provide at least a prima facie case of
`
`commercial success, which Mr. Thomas never rebuts.
`
`A petitioner's reply to a patent owner response is limited to 15 pages. 37
`
`C.F.R. § 42.24(c)(1). The Thomas Declaration is being used merely to extend that
`
`page limit with pages of legal argument. For all of these reasons, the Thomas
`
`Declaration should be excluded.
`
`B. Petitioner Does Not Contest The Exclusion of Smilovic
`
`Petitioner's Opposition does not mention U.S. Patent No. 6,817,034 to
`
`Smilovic ("Smilovic") filed as Exhibit 1091. Accordingly, Patent Owner's
`
`unopposed Motion to Exclude Smilovic should be granted.
`
`C. Petitioner Cannot End-Run the Board's Institution Decision by
`Arguing that the Asada Reference is Mere Background
`
`The Board did not institute this IPR based on the Asada reference. Yet
`
`Petitioner uses Asada to argue that it disclosed a claim feature.
`
`According to Petitioner, Asada shows that the claimed "panel height was
`
`known in prior art." Reply, Paper No. 37, at 4 Petitioner even includes a partial
`
`claim chart to emphasize Asada's importance to Petitioner's invalidity arguments.
`
`Id. Accordingly, Petitioner ignores the Board's Instituted Decision and uses Asada
`
`improperly and unfairly. Petitioner admits that Asada is "not part of the instituted
`
`EAST\82971498.1
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`3
`
`
`
`grounds," but contends it can use it anyway to rebut Patent Owner's arguments
`
`showing the claims are valid. Pet. Opp. at 10-11.
`
`Institution Decisions, and the
`
`litigation estoppel they create for instituted prior art, would be meaningless if
`
`petitioners could end-run Institution Decisions by making prior-art arguments
`
`relying on references not included in the Instituted Decisions. Petitioner should not
`
`be permitted to argue that prior art not included in the Instituted Decision is
`
`invalidating on grounds that it merely rebuts Patent Owner's validity arguments.
`
`D. Patent Owner's Communications with Competitors Should Be
`Excluded Because They Are Compromise Negotiations And Are
`Irrelevant To Claim Construction
`
`While contending that Exs. 1071, 1072, 1075-1077, 1080-1083, and
`
`1086-10901 are Patent Owner's allegations of infringement, Petitioner also contends
`
`that these exhibits are statements made outside of litigation, which means they
`
`cannot be allegations of infringement. Pet. Opp. at 12-15. Either these exhibits are
`
`mere communications with competitors, which are thus irrelevant, or they are
`
`communications intended to resolve disputes and, thus, are inadmissible under Fed.
`
`R. Evid. 408. Goodyear Tire & Rubber Co. v. Chiles Power Supply, Inc., 332 F.3d
`
`976, 980 (6th Cir. 2003) ("There exists a strong public interest in favor of secrecy of
`
`matters discussed by parties during settlement negotiations. This is true whether
`
`1 Ex. 1092 is a cover e-mail attaching product development documents, which is
`
`irrelevant to this proceeding.
`
`EAST\82971498.1
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`4
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`
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`settlement negotiations are done under the auspices of the court or informally
`
`between the parties").
`
`III. Conclusion
`
`For
`
`the reasons discussed above, Exhibits 1110, 1116, 1071, 1072,
`
`1075-1077, 1080-1083, 1086-1092, and 2037 should be excluded from
`
`consideration in these proceedings.
`
`Dated: September 23, 2014
`
`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
`
`EAST\82971498.1
`
`5
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR §§ 42.6 and 42.120, the undersigned certifies that on
`
`September 23, 2014, a complete and entire copy PATENT OWNER'S REPLY TO
`
`PETITIONER'S OPPOSITION TO PATENT OWNER'S MOTION TO EXCLUDE
`
`EVIDENCE 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.Hedges@FaegreBD.com
`trevor.carter@FaegreBD.com
`daniel.lechleiter@FaegreBD.com
`
`/s/ Paul Taufer
`Paul A. Taufer
`
`EAST\82971498.1
`
`6
`
`
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