UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMERICAN NATIONAL MANUFACTURING INC.,
`Petitioner,
`
`v.
`
`SLEEP NUMBER CORPORATION
`f/k/a SELECT COMFORT CORPORATION,
`Patent Owner.
`____________
`Case No. IPR2019-00500
`Patent No. 9,737,154 B2
`____________
`
`PATENT OWNER’S OBJECTIONS TO PETITIONER’S EVIDENCE
`PURSUANT TO 37 C.F.R. § 42.64(b)(1)
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMERICAN NATIONAL MANUFACTURING INC.,
`Petitioner,
`
`v.
`
`SLEEP NUMBER CORPORATION
`f/k/a SELECT COMFORT CORPORATION,
`Patent Owner.
`____________
`Case No. IPR2019-00500
`Patent No. 9,737,154 B2
`____________
`
`PATENT OWNER’S OBJECTIONS TO PETITIONER’S EVIDENCE
`PURSUANT TO 37 C.F.R. § 42.64(b)(1)
`
`
`
`Case No. IPR2019-00500
`Patent No. 9,737,154 B2
`
`Pursuant to 37 C.F.R. § 42.64 and the Federal Rules of Evidence, as applied
`
`by the Board, Patent Owner Sleep Number Corporation (“Sleep Number”) provides
`
`the following objections to evidence submitted by Petitioner American National
`
`Manufacturing Inc. (“ANM”). These objections are timely served within five (5)
`
`business days.
`
`Sleep Number serves ANM with these objections to provide notice that Sleep
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`Number may move to exclude the challenged evidence under 37 C.F.R. § 42.64(c)
`
`unless ANM cures the defects associated with the challenged evidence identified
`
`below. In addition, Sleep Number reserves the right to present further objections to
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`this or additional evidence submitted by ANM, as allowed by the applicable rules or
`
`other authority.
`
`Exhibit 1046 – (Declaration of Dr. Joshua Phinney, Ph.D., P.E., in
`
`Support of Petitioner’s Opposition to Patent Owner’s Motion to Amend)
`
`Sleep Number objects to Exhibit 1046 under Fed. R. Evid. 701-702 because
`
`Dr. Phinney does not have the requisite experience to opine on these issues.
`
`Specifically, ANM’s expert, Dr. Joshua Phinney, does not satisfy either parties’
`
`definition of a POSITA because he does not have at least a year of relevant
`
`experience in pneumatics or the equivalent. (Ex. 2026 at ¶¶ 11-16, 91-92; see also
`
`Ex. 2041 at 6:10-14:4, 23:2-13, 74:9-75:6.)
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`Case No. IPR2019-00500
`Patent No. 9,737,154 B2
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`Sleep Number objects to Exhibit 1046 to the extent the testimony provided by
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`Dr. Phinney is not cited to or relied upon by the Opposition to Patent Owner’s
`
`Motion to Amend (“Opposition”) (Paper 68). For example, paragraphs 1-68, 259-
`
`284, and 441-442 of Dr. Phinney’s declaration (Ex. 1046) are not cited to or relied
`
`upon in the Opposition. Accordingly, this testimony is also irrelevant, misleading,
`
`and confusing under Fed. R. Evid. 401-403. In addition, to the extent the Opposition
`
`does include citations to Exhibit 1046, it does not provide paragraph citations.
`
`Rather, the Opposition only cites broadly to entire sections comprised of dozens to
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`hundreds of paragraphs. (See Paper 68 at pp. 8, 11, 15-19, and 21-22.) Accordingly,
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`this testimony is irrelevant, misleading, confusing, and unduly prejudicial under Fed.
`
`R. Evid. 401-403. Moreover, several paragraphs of Dr. Phinney’s declaration
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`contain uncited references to other opinions purportedly made by Dr. Phinney, (see,
`
`e.g., Ex. 1046 at ¶ 112), thereby further demonstrating that such testimony is
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`misleading, confusing, and unduly prejudicial under Fed. R. Evid. 401-403.
`
`Sleep Number further objects to Exhibit 1046 as irrelevant, misleading, and
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`prejudicial under Fed. R. Evid. 401-403 because it includes discussion and analysis
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`of issues not related to this proceeding. For example, at least paragraphs 44-258
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`relate to the ‘747 Patent and proposed substitute claims at issue in IPR2019-00497,
`
`but which are not at issue in this proceeding. Indeed, the overarching titles to the
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`Case No. IPR2019-00500
`Patent No. 9,737,154 B2
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`sections containing these paragraphs are entitled “The Proposed Substitute Claims
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`of the ‘747 Patent” and “The Proposed Substitute Claims of the ‘747 Patent Are
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`Unpatentable Over the Prior Art.” (See Ex. 1046 at pp. 17 and 26.)
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`Sleep Number further objects to Exhibit 1046 as lacking authentication as
`
`required under Fed. R. Evid. 901-902. Rule 901 requires that the “proponent must
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`produce evidence sufficient to support a finding that the item is what the proponent
`
`claims it is.” ANM has failed to provide any evidentiary foundation for portions of
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`this document. For example, neither ANM nor its declarant, Dr. Phinney, identifies
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`the source of certain images contained in Exhibit 1046 or attempts to authenticate
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`them. (See, e.g., Ex. 1046 at pp. 44, 65, 175, 195.) Likewise, neither ANM nor Dr.
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`Phinney identifies or provides the source of annotated images in Exhibit 1046. (See
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`id. at pp. 29-31, 40, 42-44, 49-50, 57, 59-61, 68, 70, 102, 112, 114-115, 135, 137-
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`139, 144, 146, 155, 157-158, and 161.) Accordingly, this testimony is misleading
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`and confusing under Fed. R. Evid. 401-403.
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`Sleep Number further objects to Exhibit 1046 as including “[e]xpert testimony
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`that does not disclose the underlying facts or data on which the opinion is based” in
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`violation of 37 C.F.R. § 42.55(a) and Fed. R. Evid. 702-703 and 705. For example,
`
`in paragraph 76, Dr. Phinney testifies that (1) “differing pressures on either end of
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`an air hose is typical of many pneumatic control systems,” (2) “a conduit or hose is
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`Case No. IPR2019-00500
`Patent No. 9,737,154 B2
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`typically interposed between a pressure sensor and air chamber in other fluid control
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`applications” and (3) “these applications present a particular challenge to the control
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`engineer since the point of pressure sensing is separated from the pressurized volume
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`by a pneumatic impedance” but fails to provide any underlying facts or data to
`
`support how the identified references disclose or support these opinions or why a
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`POSITA would be aware of these challenges. (See Ex. 1046 at ¶¶ 76.) In another
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`example, Dr. Phinney testifies that a POSITA “would recognize that most steps in a
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`pressure-adjustment sequence… require very little time, or can be performed within
`
`a known amount of time” but that the step of adjusting pressure in an air bladder
`
`depends on pressurization characteristics that may be unknown at the start of
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`adjustment” but fails to provide any underlying facts or data to support such an
`
`opinion. (See Ex. 1046 at ¶ 176.)
`
`In other cases, Dr. Phinney’s cited support does not support the argument or
`
`opinion expressed. For example, Dr. Phinney states a POSITA would “understand
`
`that the target pressure would be calculated using a positive offset when inflation is
`
`commanded” and cites to Gifft, which does not disclose the use of offsets or the
`
`calculation of a target pressure. (See id. at ¶ 124.) In another example, Dr. Phinney
`
`states a POSITA referring to Pillsbury “would have found it obvious to establish an
`
`initial, non-zero estimate of offset values… [and] recognized that such a choice of
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`Case No. IPR2019-00500
`Patent No. 9,737,154 B2
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`‘default’ values would improve the system performance when an air bed is first
`
`deployed” but fails to provide any citation to Pillsbury to support this. (See Ex. 1046
`
`at ¶ 318.)
`
`Because Dr. Phinney’s declaration is replete with examples similar to those
`
`outlined above, Sleep Number further objects to other portions of Exhibit 1046 to
`
`the extent it does not disclose sufficient underlying facts or data on which part or all
`
`of the statements or opinions are based. (See Ex. 1046 at ¶¶ 74-75, 77-79, 82-83, 85-
`
`91, 95-96, 99-100, 102-109, 115-122, 124-125, 127-134, 140, 142-144, 146-148,
`
`153-155, 157-159, 162, 165-166, 169-170, 172-173, 175, 177-178, 181-182, 186,
`
`189, 191, 207-208, 218, 221-222, 224-226, 230, 232-233, 242-245, 248, 252-253,
`
`255, 290-292, 297-301, 303, 306-309, 312, 315, 323, 326-327, 329-330, 332-337,
`
`341, 343, 345-348, 350, 352, 354, 356, 366-367, 369-370, 372, 374-379, 382, 385,
`
`388-389, 391, 393, 397-399, 413, 423, 425, 427-430, 436-440.) Because many of
`
`the statements and opinions in Exhibit 1046 are unsupported and conclusory, Sleep
`
`Number further objects to this testimony as irrelevant, misleading, unduly
`
`prejudicial, and confusing under Fed. R. Evid. 401-403.
`
`Sleep Number objects to Exhibit 1046 to the extent it references
`
`unspecified/uncited other arguments or opinions to support a position, e.g., by
`
`referring to arguments “above,” “below,” or made in another document but without
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`Case No. IPR2019-00500
`Patent No. 9,737,154 B2
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`providing additional reference thereto. (See Exhibit 1046 at ¶¶ 63, 79, 112, 115-116,
`
`121, 126, 135, 140, 143 (including footnote 6), 146, 153, 155, 183, 242, 246, 247,
`
`285, 287, 290, 301, 304, 309, 312 (including footnote 8), 322. 342, 344, 360, 366,
`
`371, 382, 385, 387, 408, 432.) Accordingly, this testimony is misleading and
`
`confusing under Fed. R. Evid. 401- 403.
`
`Exhibit 1050 – (U.S. Application No. 60/773286)
`
`Sleep Number objects to Exhibit 1050 as lacking authentication as required
`
`under Fed. R. Evid. 901-902. Rule 901 requires that the “proponent must produce
`
`evidence sufficient to support a finding that the item is what the proponent claims it
`
`is.” ANM provides no evidentiary foundation for this document or attempt to
`
`authenticate it. For example, there is no explanation as to where this document was
`
`obtained from, where and when it was published, or whether it is a true and correct
`
`copy of the original. Accordingly, this evidence is irrelevant, misleading, unduly
`
`prejudicial, and confusing under Fed. R. Evid. 401-403.
`
`Paper 68 – (Petitioner’s Opposition to Patent Owner’s Original Motion
`
`to Amend)
`
`As discussed above with reference to Exhibit 1046, Sleep Number objects to
`
`the Opposition (“Paper 68”) as impermissibly incorporating arguments by referring
`
`to another document in violation of 37 C.F.R. § 42.6(a)(3). Specifically, Petitioner
`
`6
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`Case No. IPR2019-00500
`Patent No. 9,737,154 B2
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`makes conclusory statements followed by a statement that a more detailed discussion
`
`or analysis is provided by Dr. Phinney before citing to dozens or even hundreds of
`
`paragraphs of testimony that sometimes span upwards of 100 pages. (See, e.g., Paper
`
`68 at p. 8 (citing 38 paragraphs spanning approx. 15 pages from Exhibit 1007 and
`
`159 paragraphs spanning approx. 84 paragraphs from Exhibit 1046); at p. 15 (citing
`
`91 paragraphs from Exhibit 1046 spanning approx. 40 pages); at 16 (citing 29
`
`paragraphs from one section of Exhibit 1046 spanning approx. 14 pages and citing
`
`another section in Exhibit 1046 that does not exist); at p. 17 (same); at p. 18 (citing
`
`75 paragraphs from Exhibit 1046 spanning approx. 34 pages); at p. 19 (citing 211
`
`paragraphs from Exhibit 1046 spanning 86 pages); at p. 21 (citing 123 paragraphs
`
`from Exhibit 1046 spanning approx. 51 pages); at p. 22 (citing 146 paragraphs from
`
`Exhibit 1046 spanning approx. 58 pages).) These unreasonably long citations
`
`improperly incorporate arguments not made or sufficiently explained in the
`
`Opposition. For example, the Opposition does not identify any prior art
`
`combinations as obviousness grounds nor explain the basis for the obviousness
`
`combination(s), e.g., by identifying specific motivations to combine. Moreover,
`
`Petitioner does not even attempt to point to its arguments with any particularity, e.g.,
`
`by citing to specific paragraph ranges that support a specific statement or argument
`
`made by Petitioner. Instead, Petitioner relies on attorney arguments with a broad and
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`Case No. IPR2019-00500
`Patent No. 9,737,154 B2
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`conclusory reference to one or more sections of Dr. Phinney’s declaration, most of
`
`which are dozens or hundreds of paragraphs long. Accordingly, the cited testimony
`
`in Exhibits 1007 and 1046 is misleading, confusing, and unduly prejudicial under
`
`Fed. R. Evid. 401- 403.
`
`Sleep Number further objects to the Opposition to the extent it cites Sections
`
`VI and VII of Exhibit 1046. (See Paper 68 at pp. 8, 15-17, and 19.) Both Section VI
`
`and Section VII of Exhibit 1046 relate to the ‘747 Patent and proposed substitute
`
`claims in a different proceeding, IPR2019-00497, as denoted by the titles to those
`
`sections. Accordingly, the cited testimony in Exhibit 1046 is irrelevant, misleading,
`
`confusing, and prejudicial under Fed. R. Evid. 401- 403.
`
`Dated: January 22, 2020
`
`Respectfully submitted,
`By: /s/ Luke Toft
`Luke Toft (Reg. No. 75,311)
`Andrew S. Hansen (pro hac vice)
`Archana Nath (pro hac vice)
`Elizabeth A. Patton (pro hac vice)
`FOX ROTHSCHILD LLP
`222 South Ninth Street, Suite 2000
`Minneapolis, MN 55402-3338
`Telephone: (612) 607-7000
`Facsimile: (612) 607-71000
`ltoft@foxrothschild.com
`ahansen@foxrothschild.com
`anath@foxrothschild.com
`epatton@foxrothschild.com
`
`8
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`Case No. IPR2019-00500
`Patent No. 9,737,154 B2
`
`Steven A. Moore (Reg. No. 55,462)
`PILLSBURY WINTHROP SHAW PITTMAN LLP
`501 West Broadway, Suite 1100
`San Diego, CA 92101
`Telephone: (619) 234-5000
`Facsimile: (619) 236-1995
`steve.moore@pillsburylaw.com
`
`Kecia J. Reynolds (Reg. No. 47,021)
`PILLSBURY WINTHROP SHAW PITTMAN LLP
`1200 Seventeenth Street, NW
`Washington, DC 20036
`Telephone: (202) 663-8000
`Facsimile: (202) 663-8007
`kecia.reynolds@pillsburylaw.com
`
`Attorneys for Patent Owner
`Sleep Number Corporation
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`9
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`Case No. IPR2019-00500
`Patent No. 9,737,154 B2
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`CERTIFICATE OF SERVICE
`Pursuant to 37 CFR § 42.6(e), the undersigned hereby certifies that on January
`
`22, 2020, the foregoing Patent Owner’s Objections to Petitioner’s Evidence Pursuant
`
`to 37 C.F.R. § 42.64(b)(1) was served via e-mail, as authorized by the Petitioner, at
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`the following email correspondence address of record:
`
`Kyle L. Elliott
`kelliott@spencerfane.com
`Kevin S. Tuttle
`ktuttle@spencerfane.com
`Brian T. Bear
`bbear@spencerfane.com
`Lori J. Allee
`jallee@spencerfane.com
`SPENCER FANE LLP
`1000 Walnut Street, Suite 1400
`Kansas City, MO 64106
`
`Jaspal S. Hare
`jhare@spencerfane.com
`SPENCER FANE LLP
`2200 Ross Avenue
`Suite 4800 West
`Dallas, TX 75201
`
`Dated: January 22, 2020
`
`/s/ Luke Toft
`Luke Toft (Reg. No. 75, 311)
`Counsel for Patent Owner
`
`10
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`
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