`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
`____________
`
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`PETITIONER’S OBJECTIONS TO PATENT OWNER’S EVIDENCE
`PURSUANT TO 37 C.F.R. § 42.64(b)(1)
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`WA 13772770.1
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`Case No. IPR2019-00500
`Patent No. 9,737,154
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`1.
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`Pursuant to 37 C.F.R. § 42.64 and the Federal Rules of Evidence, as
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`applied by the Board, Petitioner American National Manufacturing Inc. (“ANM” or
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`“Petitioner”) provides the following objections to evidence submitted by Patent
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`Owner Sleep Number Corporation (“Sleep Number” or “PO”). These objections are
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`timely served within five (5) business days.
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`2.
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`ANM serves Sleep Number with these objections to provide notice that
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`ANM may move to exclude the challenged evidence under 37 C.F.R. § 42.64(c)
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`unless Sleep Number cures the defects associated with the challenged evidence
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`identified below. In addition, ANM reserves the right to present further objections
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`to this or additional evidence submitted by Sleep Number, as allowed by the
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`applicable rules or other authority.
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`1.
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`OBJECTIONS TO EXHIBIT 2079 — “DECLARATION OF DR. WILLIAM
`MESSNER IN SUPPORT OF PATENT OWNER’S MOTIONS TO AMEND”
`3. With respect to the “Companion Declarations” (Exs. 2001 and 2026),1
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`Petitioner hereby reasserts and incorporates by reference its prior objections to
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`evidence to these declarations filed and served on or around October 30, 2019 (Paper
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`51). In addition, the below objections also apply to the Companion Declarations.
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`4.
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`Petitioner objects to this Exhibit on grounds of scope and timeliness as
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`1 Note, this Declaration (¶ 2) cites to Ex. 2025 for Mr. Messner’s prior declaration; however, that
`exhibit is not a declaration but instead it appears that Ex. 2026, which is Mr. Messner’s prior
`declaration, was intended to be cited.
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`2
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`WA 13772770.1
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`Case No. IPR2019-00500
`Patent No. 9,737,154
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`Patent Owner could have presented this Exhibit as part of its Motion to Amend.
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`5.
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`Petitioner objects to this Exhibit to the extent the testimony provided
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`does not cite relevant underlying evidence upon which the testimony purports to rely
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`on for support. For example, ¶¶ 4 (describing an admission by Dr. Phinney) is not
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`cited. Accordingly, this testimony is inadmissible as it is not based on sufficient
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`facts or data under FED. R. EVID. 702.
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`6.
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`Petitioner objects to this Exhibit to the extent the testimony provided is
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`not relied upon by the papers it purports to support. For example, Table 2A relates
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`exclusively to the ’747 Patent, which is not the subject of this proceeding.
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`Accordingly, this testimony is also irrelevant, misleading, and confusing under FED.
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`R. EVID. 401–03.
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`7.
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`Petitioner objects to this Exhibit to the extent the testimony relies on
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`the ’172 Patent (“Gifft”) to provide written description support to any amended
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`claims or otherwise relies on Gifft. See Ex. 2079, Tables 2A and 2B. Gifft is only
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`incorporated by reference into the background section of the ’747 Patent (and parent
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`’409 PCT App). Ex. 1001, 1:18–19; Ex. 1002 at 3, [0003]. Gifft cannot be relied
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`on for support. 37 C.F.R. § 42.121(b)(1) and § 1.83(a) (“The drawing in a
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`nonprovisional application must show every feature of the invention specified in the
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`claims.”); see also Nichia Corp. v. Emcore Corp., IPR2012-00005, Paper 27 at 3
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`3
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`WA 13772770.1
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`Case No. IPR2019-00500
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`(PTAB June 3, 2013) (“Nichia-CP”) (“In particular, 37 C.F.R. § 42.121(b)(1)
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`requires the patent owner to set forth the support in the original disclosure of the
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`patent for each proposed substitute claim.” (emphasis in original)). Accordingly,
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`this testimony is inadmissible as it is not based on sufficient facts or data under FED.
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`R. EVID. 702.
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`8.
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`Petitioner objects to this Exhibit to the extent the testimony provided
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`does not cite any specific reference numeral of any figure in the original ’409
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`Application disclosure to support opinions of written description support of amended
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`claims. See Ex. 2079, Tables 2A and 2B; 37 C.F.R. § 42.121(b)(1) and § 1.83(a)
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`(“The drawing in a nonprovisional application must show every feature of the
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`invention specified in the claims.”); see also Nichia-CP at 3 (“In particular, 37
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`C.F.R. § 42.121(b)(1) requires the patent owner to set forth the support in the
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`original disclosure of the patent for each proposed substitute claim.” (emphasis in
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`original)). Accordingly, this testimony is inadmissible as it is not based on sufficient
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`facts or data under FED. R. EVID. 702(b). Accordingly, this testimony is inadmissible
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`as it is not based on sufficient facts or data under FED. R. EVID. 702.
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`9.
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`Petitioner objects to this Exhibit to the extent the testimony mixes
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`multiple discrete and separate claim limitations in its analysis related to opinions of
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`written description support of amended claims. See Ex. 2079, Tables 2A and 2B.
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`4
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`WA 13772770.1
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`Case No. IPR2019-00500
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`For example, the analysis for claim limitations 23.1, 25.1, and 26.6–26.7 provide no
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`explanation how support for “essentially” is found in the cited portions of the ’409
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`Application. See, e.g., Ex. 2079 at 21–23. Accordingly, this testimony is
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`inadmissible as misleading and confusing under FED. R. EVID. 401–03 and also for
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`failing to demonstrate that the testimony is the product of reliable principles and
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`methods that have been reliably applied as required by FED. R. EVID. 702.
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`10.
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`Petitioner objects to the testimony provided in this Exhibit, Tables 2A
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`and 2B under the headings “My analysis” and “Support,” as this testimony is
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`conclusory and fails to provide Dr. Messner’s reasoning or thought process
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`supporting his conclusions. For example, the analysis for claim limitations 20.10–
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`20.11, 26.9–26.10, and 32.10–32.11 (related to determining an adjustment factor
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`error) merely cite to the “Summary” portion of the ’409 Application, which merely
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`verbatim recites claim language and provides bare citations to the “Detailed
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`Description” portion without any explanation. See, e.g., Ex. 2079 at 16–17.
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`Accordingly, this testimony is inadmissible under FED. R. EVID. 702 as it cannot be
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`tested or cross-examined. See, e.g., FED. R. EVID. 702, Advisory Committee’s Note
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`to 2000 Amendment (subjective and conclusory opinions are inadmissible, instead
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`an expert must explain how a conclusion is supported).
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`11.
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`Petitioner objects to this Exhibit to the extent the testimony relies on
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`5
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`WA 13772770.1
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`inherent claim constructions that are not explicitly set forth in the Exhibit. For
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`example, the analysis for claim limitations 23.1, 25.1, and 26.6–26.7 provide no
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`explanation of the construction for a newly added claim term, “essentially,” or how
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`that term is interpreted with respect to the amended claims. See, e.g., Ex. 2079 at
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`21–23. In another example, the discussion for a “pressure adjustment factor error”
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`and related limitations provide no explanation of the construction for that phrase and
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`related limitations and how they are interpreted with respect to the amended claims.
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`See, e.g., Ex. 2079 at 51–54. Accordingly, such testimony is inadmissible as
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`misleading and confusing under FED. R. EVID. 401–03 and also for failing to
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`demonstrate that the testimony is the product of reliable principles and methods that
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`have been reliably applied as required by FED. R. EVID. 702.
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`12.
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`Petitioner objects to this Exhibit’s opinions related to support for a
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`“pressure adjustment factor error” and related limitations because those opinion rely
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`on misrepresenting the specification. Specifically, at ¶ 20, Dr. Messner asserts that
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`“sensed manifold pressure” refers to the pressure of step 176 (i.e., actual pressure),
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`which is a misrepresentation because the equations in the specification of the ’409
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`Application, ¶¶ [0065] and [0067], explicitly describe that the sensed manifold
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`pressure is from step 168 (i.e., while inflating/deflating). Accordingly, such
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`testimony is inadmissible as misleading and confusing under FED. R. EVID. 401–03
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`6
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`Patent No. 9,737,154
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`and also for failing to demonstrate that the testimony is reliably based on the facts
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`and evidence as required by FED. R. EVID. 702.
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`13.
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`Petitioner objects to this Exhibit’s opinions related to motivation to
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`combine (§ VI, ¶¶ 21–44) on the grounds that the analysis is not grounded in
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`language of the amended claims. Said another way, the analysis presented is
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`premised on a level of detail not required by the amended claims. For example, at ¶
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`31, Dr. Messner relies on a discussion of specific pressure ranges of the embodiment
`
`of Ebel versus those of an air bed; however, no amended claim requires any specific
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`pressure range. Accordingly, such testimony is inadmissible for failing to
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`demonstrate that the testimony is reliably based on the facts and evidence as required
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`by FED. R. EVID. 702. Such opinions further pointlessly complexify and are thus
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`inadmissible as irrelevant, misleading, prejudicial, confusing, and a waste of time
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`under FED. R. EVID. 401–03.
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`14.
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`Petitioner objects
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`to
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`this Exhibit’s opinions as
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`it relies on
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`misrepresenting or misinterpreting the testimony of Dr. Phinney or otherwise relies
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`on testimony of Dr. Phinney that was objectionable. For example, at ¶ 28, Dr.
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`Messner’s representation attributed to Dr. Phinney relies on objected to testimony
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`and also misrepresents or misinterprets Dr. Phinney’s testimony. See also Ex. 2079,
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`¶¶ 29–44 (relying on objectionable testimony and misrepresenting or misinterpreting
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`7
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`WA 13772770.1
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`Case No. IPR2019-00500
`Patent No. 9,737,154
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`Dr. Phinney’s testimony to make strawman arguments). Accordingly, Dr. Messner’s
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`opinions relying on such testimony of Dr. Phinney are inadmissible as irrelevant,
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`misleading, and confusing under FED. R. EVID. 401–03 and also for failing to
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`demonstrate that such Dr. Messner’s opinions are reliably based on the facts and
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`evidence as required by FED. R. EVID. 702.
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`2.
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`OBJECTIONS TO EXHIBIT 2080 — TRANSCRIPT OF THE DEPOSITION OF
`DR. PHINNEY (FEB. 20, 2020)
`Petitioner objects to Patent Owner’s reliance on this Exhibit to the
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`15.
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`extent that Patent Owner relies on testimony elicited in response to improper
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`questions that were objected to. For example, counsel for Patent Owner throughout
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`the deposition asked questions in the form of yes or no questions, and counsel for
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`Patent Owner specifically instructed Dr. Phinney only to answer with a yes or no
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`and specifically instructed Dr. Phinney that he was not allowed to explain (and also
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`repeatedly cut Dr. Phinney off from finishing his answers). See, e.g., Ex. 2080 at
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`29:5–30:5 and 93:25–95:14. However, numerous questions by counsel for Patent
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`Owner could not be fairly answered with only yes or no (or if truthfully answered
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`with only a yes or no, it resulted in ambiguity). See, e.g., Ex. 2080 at 29:5–13.
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`Hence, objected to questions were proper on grounds of improper form, among other
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`things, by counsel for Petitioner.
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`16.
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`Petitioner objects to Patent Owner’s reliance on this Exhibit to the
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`WA 13772770.1
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`Case No. IPR2019-00500
`Patent No. 9,737,154
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`extent that Patent Owner’s positions rely on misrepresenting or misinterpreting
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`underlying testimony. See also Ex. 2079, ¶¶ 29–44 (relying on objectionable
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`testimony and misrepresenting or misinterpreting Dr. Phinney’s testimony to make
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`strawman arguments).
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`9
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`WA 13772770.1
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`Case No. IPR2019-00500
`Patent No. 9,737,154
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`Date: March 3, 2020
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`Respectfully Submitted,
`SPENCER FANE LLP
`
`By /s/Kyle L. Elliott .
`Kyle L. Elliott, Reg. No. 39,485
`Kevin S. Tuttle, Reg. No. 52,307
`Brian T. Bear (pro hac vice)
`Spencer Fane LLP
`1000 Walnut Street, Suite 1400
`Kansas City, Missouri 64106-2140
`Telephone: (816) 474-8100
`
`Jaspal S. Hare, Reg. No. 66,988
`jhare@spencerfane.com
`Spencer Fane LLP
`5700 Granite Pkwy, Suite 650
`Plano, TX 75024
`Telephone: (214) 750-3623
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`WA 13772770.1
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`Case No. IPR2019-00500
`Patent No. 9,737,154
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies that a copy
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`of the foregoing PETITIONER’S OBJECTIONS TO PATENT OWNER’S
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`EVIDENCE PURSUANT TO 37 C.F.R. § 42.64(b)(1) is served in its entirety on
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`March 3, 2020, by electronic mail, as authorized by Patent Owner’s Updated
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`Mandatory Notices, directed to the attorneys of record for Patent Owner at the
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`following correspondence address of record:
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`Steven A. Moore
`stevemoore@zhonglun.com
`Zhong Lun
`4322 Wilshire Boulevard, Suite 200
`Los Angeles, CA 90010
`
`Luke Toft
`ltoft@foxrothschild.com
`Andew Hansen (pro hac vice)
`ahansen@foxrothschild.com
`Archana Nath (pro hac vice)
`anath@foxrothschild.com
`Elizabeth A. Patton (pro hac vice)
`epatton@foxrothschild.com
`FOX ROTHSCHILD LLP
`222 South Ninth Street, Suite 2000
`Minneapolis, MN 55402
`Kecia J. Reynolds
`kecia.reynolds@pillsburylaw.com
`PILLSBURY WINTHORP SHAW PITTMAN LLP
`1200 Seventeenth Street, NW
`Washington, DC 20036
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`11
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`WA 13772770.1
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`Case No. IPR2019-00500
`Patent No. 9,737,154
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`Date: March 3, 2020
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`
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`/s/Kyle L. Elliott .
`Kyle L. Elliott (Reg. No. 39,485)
`.
`Attorney for Petitioner
`American National Manufacturing, Inc.
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`WA 13772770.1
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