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 SUR-REPLY
`
`
`
`

`

`Case IPR2019-00500
`Patent 9,737,154 B2
`
`
`
`
`TABLE OF CONTENTS
`
`PO’s Claim Constructions for “Desired Pressure Setpoint” and
`
`RELATED TO THE FIELD OF ENDEAVOUR, AND DOES NOT
`SOLVE THE PROBLEM IDENTIFIED AND CLAIMED BY THE
`
`INTRODUCTION. ...................................................................................... 1
`I.
`CLAIM CONSTRUCTION. ........................................................................ 1
`II.
`A.
`Petitioner Fails to Construe “Pressure Sensing Means” (PSM). ......... 1
`B.
`“Pressure Target” Are Proper. ............................................................ 2
`III. THE ASSERTED PRIOR ART IS NOT ANALOGOUS, IS NOT
`‘154 PATENT.............................................................................................. 4
`IV. THERE IS NO MOTIVATION TO COMBINE THE ASSERTED
`PRIOR ART REFERENCES. ...................................................................... 6
`A. A POSITA Would Not Be Motivated to Combine Gifft with
`Mittal. ................................................................................................ 9
`B.
`with Pillsbury. .................................................................................. 10
`C.
`Pillsbury with Ebel........................................................................... 11
`ART. .......................................................................................................... 14
`A.
`Substantially Equal vs. Acceptable Pressure Target Error Range. .... 14
`Control Device. ................................................................................ 15
`B.
`C. Multiplicative Pressure Adjustment Factor. ..................................... 15
`VI. PETITIONER HAS FAILED TO MEET ITS BURDEN IN
`CONSIDERATIONS. ................................................................................ 16
`A.
`PO Has Established a Nexus. ........................................................... 16
`
`A POSITA Would Not Be Motivated to Combine Gifft or Mittal
`
`A POSITA Would Not Be Motivated to Combine Gifft-Mittal-
`
`PETITIONER HAS NOT MAPPED THE CLAIMS TO THE PRIOR
`
`V.
`
`OPPOSING PO’S EVIDENCE OF SECONDARY
`
`ii
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`

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`Case IPR2019-00500
`Patent 9,737,154 B2
`
`
`PO Has Shown Industry Praise. ....................................................... 18
`B.
`PO Has Shown Copying. ................................................................. 18
`C.
`PO Has Shown Commercial Success. .............................................. 21
`D.
`PO Has Shown Unexpected Results. ................................................ 25
`E.
`VII. THE PETITION IS PROCEDURALLY DEFICIENT. .............................. 26
`VIII. CONCLUSION.......................................................................................... 26
`
`
`
`
`
`
`iii
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`

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`Case IPR2019-00500
`Patent 9,737,154 B2
`
`
`Cases
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) .......................................................................... 7
`
`Airbus S.A.S. v. Firepass Corp.,
`941 F.3d 1374 (Fed. Cir. 2019) .................................................................... 4, 6
`
`Apple Inc. v. Samsung Elecs. Co.,
`839 F.3d 1034 (Fed. Cir. 2016) ........................................................................ 11
`
`Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
`776 F.2d 281 (Fed. Cir. 1985) .......................................................................... 12
`
`C.R. Bard, Inc. v. M3 Systems, Inc.,
`157 F.3d 1340 (Fed. Cir. 1998) .................................................................... 7, 11
`
`Chemors Co. FC, LLC v. Daikin Indus., Ltd.,
`No. IPR2018-01558, 2020 WL 402064 (PTAB Jan. 23, 2020) .................. 14, 16
`
`Circuit Check Inc. v. QXQ Inc.,
`795 F.3d 1331 (Fed. Cir. 2015) .......................................................................... 6
`
`Cisco Sys. Inc. v. C-Cation Tech. LLC,
`IPR2014-00454, Paper 12 (PTAB Aug. 29, 2014) ..................................... 14, 16
`
`Demaco Corp. v. F. Von Langsdorff Licensing Ltd.,
`851 F.2d 1387 (Fed. Cir. 1988) ........................................................................ 25
`
`Gyromat Corp. v. Champion Spark Plug Co.,
`735 F.2d 549 (Fed. Cir. 1984) .......................................................................... 24
`
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) .......................................................... 2, 8, 10, 14
`
`In re Mills,
`916 F.2d 680 (Fed. Cir. 1990) ........................................................................ 8, 9
`
`iv
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`

`

`Case IPR2019-00500
`Patent 9,737,154 B2
`
`Nichia Corp. v. Everlight Elecs. Co.,
`No. 02:13-CV-702-JRG, 2016 WL 310142 (E.D. Tex. Jan. 25,
`2016), aff’d sub nom., 855 F.3d 1328 (Fed. Cir. 2017) ....................................... 7
`
`Northern Telecom, Inc. v. Datapoint Corp.,
`908 F.2d 931 (Fed. Cir. 1990) ............................................................................ 7
`
`Orexo AB v. Actavis Elizabeth, LLC,
`903 F.3d 1265 (Fed. Cir. 2018) .......................................................................... 9
`
`OrthoPediatrics Corp. v. K2M, Inc.,
`IPR2018-01546, Paper 10 (PTAB Feb. 14, 2019) .............................................. 1
`
`Pentec, Inc. v. Graphic Controls Corp.,
`776 F.2d 309 (Fed. Cir. 1985) .......................................................................... 20
`
`Securus Techs., Inc. v. Glob. Tel*Link Corp.,
`701 F. App’x 971 (Fed. Cir. 2017) ..................................................................... 7
`
`Other Authorities
`
`37 C.F.R. §1.97(h) .................................................................................................. 4
`
`37 C.F.R. § 42.6(a)(3) ..................................................................................... 14, 16
`
`37 C.F.R. § 42.104(b)(3) ......................................................................................... 1
`
`
`
`
`
`v
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`

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`Case IPR2019-00500
`Patent 9,737,154 B2
`
`
`I.
`
`INTRODUCTION.
`
`Patent Owner Sleep Number Corporation (“PO”) provides this sur-reply to
`
`Petitioner American National Manufacturing’s (“Petitioner”) Reply (Paper 71,
`
`herein “Reply”). Petitioner fails to explain why or how a POSITA would combine
`
`the references, instead relying on a combination of nebulous principles, hindsight
`
`bias, and/or merely finding (or creating) disclosures purportedly reading on the
`
`claimed limitations (which they do not). PO’s secondary consideration evidence
`
`further shows non-obviousness. Because Petitioner has not met its burden, the Board
`
`should find each challenged claim patentable.
`
`II. CLAIM CONSTRUCTION.
`
`A.
`
`Petitioner Fails to Construe “Pressure Sensing Means” (PSM).
`
`Petitioner concedes PSM is governed by §112, (Ex. 2013 at 19), but
`
`purposefully avoided asserting a construction in its Petition, which violates 37
`
`C.F.R. § 42.104(b)(3). See OrthoPediatrics Corp. v. K2M, Inc., IPR2018-01546,
`
`Paper 10 at 10-11 (PTAB Feb. 14, 2019) (violation of Rule 104 and failure to satisfy
`
`burden where petitioner conceded §112’s application but did not provide “explicit
`
`claim construction as required” in petition). For the first time on Reply, Petitioner
`
`provides a proposed construction for PSM, but neither the construction nor the
`
`quoted function and structure are found in the Petition. (Compare Reply at 1-2 with
`
`Paper 2 (“Pet.”).) The Board should not permit this late disclosure and
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`1
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`Patent 9,737,154 B2
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`gamesmanship, or risk a precedent allowing petitioners to withhold or obfuscate
`
`arguments required to be disclosed with particularity in the Petition. See Intelligent
`
`Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016)
`
`(Board was correct to exclude arguments not properly made in Petition and for first
`
`time in Reply).
`
`B.
`
`PO’s Claim Constructions for “Desired Pressure Setpoint” and
`“Pressure Target” Are Proper.1
`
`Contrary to Petitioner’s view, a POSITA would understand (and no ambiguity
`
`is introduced by finding) that the “desired pressure setpoint” and “pressure target”
`
`are values representing a selected or desired pressure. (Ex. 2026 ¶¶29-31, 95-97,
`
`100.) For example, a POSITA would have understood that in adjustable air bed
`
`systems, the pressure transducer provides an electrical reading representing or
`
`corresponding to pressure and the microprocessor interprets and compares that value
`
`to other variables. (Ex. 1053 at 342:7-343:18; Ex. 2031 ¶9; Ex. 2050 at 2-4.) This
`
`understanding is supported by the ‘154 Patent. (Ex. 1001 at 8:37-42 (explaining
`
`pressure target “corresponds to” a pressure), 8:65-67 (same), 16:1-3 (pressure target
`
`“corresponds to and is different than the desired pressure setpoint”).)
`
`
`1 Petitioner tacitly admits PO’s other constructions are correct.
`
`2
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`Petitioner’s arguments are consistent with Messner’s opinion in this respect.
`
`Petitioner’ expert, Phinney, agrees the microprocessor is what compares the “desired
`
`pressure setpoint” and “pressure target” to each other (or to other pressure values)
`
`and these values just have to be “commensurate with” or “correspond to” a pressure.
`
`(Ex. 1061 ¶¶7, 10; Ex. 2080 at 27:16-28:25 (Phinney testifying that in an adjustable
`
`air bed system the microprocessor receives and uses “numerical value[s]
`
`representing [] pressure”), 22:18-23:21 (testifying that as long as values representing
`
`pressure can be converted and then compared, “it doesn’t really pose an obstacle”
`
`for a POSITA); Reply at 2-3 (Petitioner agreeing limitations “correspond to”
`
`pressure).)
`
`Petitioner’s proposed constructions are conclusory, unsupported, and
`
`improperly narrowing. In purported support, Petitioner and Phinney cite to limited
`
`passages in the ‘154 Patent (none of which suggest the claim limitations must be a
`
`pressure but just “correspond to” a pressure). (See Ex. 1001 at 4:36-47, 8:13-20,
`
`8:36-42, 8:62-67.) Petitioner’s arguments related to a purported ambiguity in PO’s
`
`constructions, (see Reply at 2-3), lack both explanation and evidence and should
`
`therefore be swiftly rejected.
`
`3
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`III. THE ASSERTED PRIOR ART IS NOT ANALOGOUS, IS NOT
`RELATED TO THE FIELD OF ENDEAVOUR, AND DOES NOT
`SOLVE THE PROBLEM IDENTIFIED AND CLAIMED BY THE ‘154
`PATENT.
`
`Petitioner improperly conflates the two-pronged analogousness inquiry by
`
`defining the field so broadly—pneumatics—such that no reference addressing the
`
`purported problem—adjusting or sensing pressure—could be from a different field.
`
`Petitioner misstates the law and mischaracterizes the facts in its erroneous effort to
`
`argue analogousness for nonanalogous references: Pillsbury, Mittal, and Ebel.
`
`First, Petitioner incorrectly contends the field of endeavor is determined by
`
`(1) an invention’s functions or structures and (2) art considered during prosecution.
`
`However, in Petitioner’s cited case Airbus S.A.S. v. Firepass Corp., the Federal
`
`Circuit affirmed the Board’s finding that (1) the appropriate field of endeavor (“fire
`
`prevention/suppression”) was based on the “common sense” reading of the
`
`specification and claimed preamble, and (2) an asserted reference directed to human
`
`therapy/training was not in the same field. 941 F.3d 1374, 1380-81 (Fed. Cir. 2019)
`
`(rejecting argument asserted reference was in same field because it had “same
`
`function [and] structure” where reference never recited the word “fire”); see also 37
`
`C.F.R. §1.97(h) (disclosure not an admission). Petitioner’s suggestion that a
`
`reference having been before the examiner means it must be analogousness is
`
`unfounded and legally unsupported. (See Reply at 7-8 (citing no support for idea that
`
`4
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`Case IPR2019-00500
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`references considered or submitted to examiner satisfy either, must less which, prong
`
`of analogousness). During prosecution,
`
`the examiner never addressed
`
`analogousness; the references were traversed without needing to. (See Ex. 2003 at
`
`45-54 (allowing claims without addressing analogousness).)
`
`A common sense read of the ‘154 Patent, and claimed preambles,
`
`demonstrates the appropriate field is adjustable air bed systems. (See Ex. 1001 at
`
`Abstract (“method for adjusting pressure within an air bed”), 1:17-20 (“present
`
`invention relates to a system and method for adjusting the pressure in an air bed”),
`
`1:21-2:22 (background discusses development and challenges of adjustable air
`
`beds), 2:26-60 (invention is a “method [or system] for adjusting pressure within an
`
`air bed.”), 13:11-15:19 (claims 1-19 all directed to a “method for adjusting pressure
`
`within an air bed”), 15:16-16:26 (claims 20-22 directed to a “pressure adjustment
`
`system for an air bed”); Ex. 2026 ¶¶11-12, 91.) Notably, Petitioner and Phinney
`
`admit the asserted art is from different fields. (See Reply at 10 (Mittal, Ebel, and
`
`Pillsbury from automobile and medical fields), 16 (Mittal’s field is truck tires); Ex.
`
`2041 at 136:11-15, 160:11-15, 176:15-20; Ex. 2042 at 271:24-272:20.)
`
`Second, Petitioner ignores the problem identified by the ‘154 Patent—
`
`minimizing the time/iterations necessary to achieve a desired pressure while
`
`increasing accuracy. (Ex. 1001 at 2:17-22). Rather, Petitioner improperly contends
`
`that any reference with a pressure sensor remote from the pressure source is
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`5
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`Case IPR2019-00500
`Patent 9,737,154 B2
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`analogous. But the proper question is whether an inventor would have looked to the
`
`particular reference to solve the problem at issue, not whether a concept is simple or
`
`known. See Circuit Check Inc. v. QXQ Inc., 795 F.3d 1331, 1335 (Fed. Cir. 2015)
`
`(common knowledge cannot be transformed into analogous art simply by stating
`
`anyone would have known of such system or method). Moreover, the pertinence of
`
`a reference must be recognizable with foresight, “not with the hindsight of the
`
`inventor’s successful achievement.” Airbus, 941 F.3d at 1382 (“[If the problems
`
`addressed are substantially different, then the references are not analogous.”).
`
`Petitioner fails to address PO’s arguments that the asserted references are directed
`
`to different purposes and therefore a POSITA would not have considered them. (See
`
`Reply.) Specifically, a POSITA would have recognized Pillsbury is directed to use
`
`of a filter to prevent the buildup of dust and neither Mittal nor Ebel would accurately
`
`achieve the desired pressure setpoint in an adjustable air bed. (Ex. 2026 ¶¶124-129.)
`
`Accordingly, Petitioner fails to meet its burden on analogousness.
`
`IV. THERE IS NO MOTIVATION TO COMBINE THE ASSERTED
`PRIOR ART REFERENCES.
`
`Petitioner fails to satisfy the motivation to combine standard, relying solely
`
`on conclusory and unsupported arguments as to where the limitations can
`
`purportedly be found in the art without explaining how or why a POSITA would
`
`combine the art (other than alleging within general skill). This is insufficient.
`
`6
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`Case IPR2019-00500
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`First, simply identifying similarities in structures/field between the ‘154
`
`Patent and asserted references, and claiming such structures were known, is
`
`insufficient. (See, e.g., Reply at 14-15); see C.R. Bard, Inc. v. M3 Systems, Inc., 157
`
`F.3d 1340, 1351 (Fed. Cir. 1998) (showing prior art has “similar components” is by
`
`itself “insufficient”) (citation omitted); Northern Telecom, Inc. v. Datapoint Corp.,
`
`908 F.2d 931, 934-35 (Fed. Cir. 1990) (affirming finding of non-obviousness where
`
`technology for invention existed but, beyond the art disclosing the components,
`
`combination was based in impermissible hindsight reconstruction); Securus Techs.,
`
`Inc. v. Glob. Tel*Link Corp., 701 F. App'x 971, 977 (Fed. Cir. 2017) (this “short-cut
`
`logic” would render all combinations of elements known in the “broad field”
`
`obvious). By relying on structural similarities between the ‘154 Patent and the prior
`
`art, without otherwise articulating a sufficient motivation to combine the prior art,
`
`Petitioner’s arguments can only be based in hindsight.
`
`Second, Petitioner does not sufficiently explain how a POSITA would
`
`combine the references to arrive at the claimed invention, as required. Nichia Corp.
`
`v. Everlight Elecs. Co., No. 02:13-CV-702-JRG, 2016 WL 310142, at *62 (E.D.
`
`Tex. Jan. 25, 2016), aff'd sub nom., 855 F.3d 1328 (Fed. Cir. 2017) (“It is often
`
`necessary to further explain how [a POSITA] would actually make an alleged
`
`combination or modification of prior art references.”); ActiveVideo Networks, Inc. v.
`
`Verizon Commc'ns, Inc., 694 F.3d 1312, 1327 (Fed. Cir. 2012) (party must show
`
`7
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`Case IPR2019-00500
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`“how any specific combination would operate”). Indeed, neither Petitioner nor
`
`Phinney explain which physical or logical structures from each reference would be
`
`combined, whether the entire logic structure or some portion(s) thereof would be
`
`incorporated, or how any such structure would be modified, if at all. (See, e.g., Ex.
`
`2080 at 44:24-46:2 (Phinney agreeing he did not state how a POSITA would modify
`
`references with any level of detail).) Rather, Petitioner asserts nebulous “principles”
`
`from the secondary references would be implemented into Gifft. (Reply at 10-12,
`
`15-18.) Further, by failing to address PO’s arguments on hindsight, (see Paper 46
`
`(“POR) at 18-26, 28, 30, 34, 49-50, 55), Petitioner tacitly admits its reliance on the
`
`same.
`
`Third, Petitioner’s argument that a POSITA could implement control logic
`
`with only minimal programming, (Reply at 5, 15-17), is improperly new and
`
`insufficient. In re Mills, 916 F.2d 680, 682 (Fed. Cir. 1990) (fact device is “capable
`
`of being modified” to run as claimed is insufficient to find obviousness); see also
`
`Intelligent, 821 F.3d at 1369 (rejecting arguments presented for first time in Reply).
`
`For these reasons, those articulated in the POR, (pp. 31-55), and those further
`
`addressed below, a POSITA would not be motivated to combine Gifft with Mittal,
`
`Pillsbury, and/or Ebel.
`
`8
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`

`

`Case IPR2019-00500
`Patent 9,737,154 B2
`
`
`A. A POSITA Would Not Be Motivated to Combine Gifft with Mittal.
`
`Petitioner has not demonstrated why a POSITA would combine Gifft and
`
`Mittal. Petitioner correctly recognizes the prior art cannot be read in isolation but
`
`then unfoundedly claims “there is no support that the teachings … would discourage
`
`a POSITA” from combining the references. (Reply at 16-17.) First, a lack of
`
`discouragement does not create a motivation to combine. See Orexo AB v. Actavis
`
`Elizabeth, LLC, 903 F.3d 1265, 1273-74 (Fed. Cir. 2018). Second, this ignores the
`
`cornucopia of evidence PO presents showing why a POSITA would not be motivated
`
`to combine Gifft and Mittal. (See POR at 34-47.) Third, Petitioner does not dispute
`
`PO’s contentions as to what Mittal discloses or suggests to a POSITA, nor
`
`meaningfully address PO’s arguments that Mittal would not increase speed or
`
`accuracy in Gifft. (See id. at 7-10, 34-46.)
`
`Rather than address any of PO’s arguments, Petitioner argues that Mittal
`
`discloses a method of using offsets that could purportedly be programmed into Gifft.
`
`(Reply at 15-16.) “Capable of” or “could” is not the standard and has been rejected.
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`Mills, 916 F.2d at 682. Petitioner cites to PO’s expert acknowledging that
`
`implementing the ‘154 and ‘747 Patents into Gifft would be a modest effort within
`
`the skill of a POSITA for its position that “only minimal programming” would be
`
`necessary to include the offset method disclosed by Mittal. (See Reply at 16 (citing
`
`Ex. 1053 at 328:22-331:9).) This enablement evidence fails to show a motivation to
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`9
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`combine Mittal’s teachings with Gifft. Additionally, Petitioner provides no support
`
`for its argument that PO’s expert recognizes alleged benefits of Mittal. (See id.)
`
`Indeed, the opposite is true. (Ex. 2026 ¶¶135-174 (explaining problems with
`
`incorporating Mittal, including speed, accuracy, need to modify, etc.).)
`
`B. A POSITA Would Not Be Motivated to Combine Gifft or Mittal2
`with Pillsbury.
`
`Petitioner fails to meaningfully address any of PO’s arguments as to
`
`combining Gifft-Mittal with Pillsbury. Petitioner fails to even cite to Pillsbury3 or
`
`identify either a problem in Gifft-Mittal or benefit conferred by Pillsbury that would
`
`motivate a POSITA to combine. (See POR at 47-50.) Petitioner merely relies on
`
`Phinney’s testimony 4 that a POSITA would have been motivated to combine
`
`because of “Pillsbury’s benefit,” but fails to acknowledge or address Phinney’s
`
`
`2 If Petitioner is arguing “either/or,” this is a new argument on Reply, which should
`
`be rejected. Intelligent, 821 F.3d at 1369.
`
`3 Petitioner’s claim it has provided citations to Pillsbury is dubious. (See Reply at 17
`
`(citing Pet. 25-28) (not citing Pillsbury).)
`
`4 Petitioner erroneously identifies acknowledgments made by Phinney in Ex. 2041
`
`as those of PO’s expert. (Reply at 17.)
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`10
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`testimony that Pillsbury provides no benefit to Gifft-Mittal. (Ex. 2042 at 234:24-
`
`235:22.)
`
`C. A POSITA Would Not Be Motivated to Combine Gifft-Mittal-
`Pillsbury with Ebel.
`
`As with the above references, Petitioner tacitly acknowledges a lack of
`
`motivation to combine Gifft-Mittal-Pillsbury with Ebel by failing to address a single
`
`argument presented by PO that demonstrate no such motivation. (POR at 50-55.)
`
`Instead, Petitioner appears to argue a POSITA would be motivated to combine based
`
`on Ebel’s supposed analogousness and disclosure of a pressure graph similar to one
`
`in the ‘154 Patent. (See Reply at 18 (arguing Ebel directed to remote monitoring and
`
`inflatable objects and discloses pressure graph)5). This is insufficient. See Apple Inc.
`
`v. Samsung Elecs. Co., 839 F.3d 1034, 1050 n.14 (Fed. Cir. 2016) (analogousness
`
`and motivation to combine are distinct inquiries); C.R. Bard, 157 F.3d at 1351
`
`(similar disclosures in prior art is, without more, insufficient to show motivation to
`
`combine).
`
`In addition to the reasons set forth in the POR, Phinney’s testimony
`
`underscores why a POSITA would not be motivated to combine Ebel with Gifft-
`
`
`5 Petitioner again erroneously identifies acknowledgments made by Phinney in Ex.
`
`2042 as those of PO’s expert. (Reply at 18.)
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`11
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`Case IPR2019-00500
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`Mittal-Pillsbury. First, Phinney’s opinions lack factual support and are of little
`
`probative value. See Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d
`
`281, 294 (Fed. Cir. 1985). As discussed in the POR, Petitioner and Phinney altered
`
`Ebel’s disclosure to create diagrams not found in the art in order to claim it would
`
`have been obvious to create a multiplicative adjustment factor, also not found in the
`
`prior art. (See POR at 50-55; see also Ex. 2041 at 76:10-11, 80:6-15, 81:24-82:6,
`
`92:24-25, 91:19-92:9 (admitting multiplicative offsets are not otherwise disclosed in
`
`the art); Ex. 2026 ¶¶183-188 (describing changes and omissions made by Phinney);
`
`Ex. 2080 at 104:15-105:2, 123:4-8 (Phinney testifying Ebel equations do not include
`
`multiplicative offsets).) Also, Ebel does not disclose the claimed adjustment factor
`
`variables because Ebel teaches only modifying a sensed pressure during an
`
`adjustment to estimate an actual pressure, not modifying a pressure setpoint before
`
`an adjustment to calculate a pressure target. (Ex. 2080 at 81:23-86:7, 115:13-23,
`
`129:13-18.) Because these disclosures are not found within the prior art and/or
`
`suggest modifications other than those claimed, a POSITA would not be motivated
`
`to combine the disclosures to create the claimed invention.
`
`Second, Phinney testified that a POSITA would know Ebel’s method of
`
`estimating the actual pressure would be least accurate at the pressures where
`
`adjustable air beds operate. (See Ex. 2080 at 88:15-19 (purpose of Ebel is to derive
`
`estimate of actual pressure from sensed pressure using filling and emptying
`
`12
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`Case IPR2019-00500
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`equations), 88:21-89:8 (Ebel Fig. 6 shows how well estimate works), 91:16-18,
`
`100:4 (largest deviations occur below 100 hPa, where adjustable air beds operate).)
`
`Because these discrepancies of at least a few hPa would be equivalent to more than
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`one pressure adjustment increment, thereby rendering an adjustable air bed system
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`deficient, a POSITA would not be motivated to combine. (Ex. 2079 ¶¶28-32.)
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`Indeed, because the error would be larger than the requested adjustments, this would
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`decrease accuracy and speed, rendering such a combination inoperable or unfit for
`
`its intended purpose or would at the very least not motivate a POSITA to make such
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`a combination. (Ex. 2031 ¶¶9-11 (explaining adjustment of one setting is 0.03 PSI).)
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`Third, Phinney testified that a POSITA would be motivated to use Pillsbury’s
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`explicit teachings (relating only to deflation and using additive offsets) during
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`Gifft’s inflation cycle but, then, for Gifft’s deflation cycle, would reject Pillsbury’s
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`teachings to instead use a multiplicative factor. (Ex. 2080 at 138:5-140:15.) Pillsbury
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`teaches away from this: “in order to reach the [deflate] target, a compensated target
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`pressure must be calculated by subtracting an offset value from the target pressure.”
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`(Ex. 1006 at 6:4-7 (emphasis added).) Accordingly, a POSITA would not be
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`motivated to use Ebel’s disclosures in Gifft.
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`Lastly, Petitioner cites to several paragraphs from Phinney’s declaration not
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`cited in the Petition, are not sufficiently explained in the Reply, and include
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`arguments not made in either the Petition or Reply. (Compare Reply at 18 (citing
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`Ex. 1009 ¶¶49-50, 53-55, 58-69, 246) with Pet. at 56-64 (not citing same).) This is
`
`improper incorporation by reference. 37 C.F.R. § 42.6(a)(3); see Cisco Sys. Inc. v.
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`C-Cation Tech. LLC, IPR2014-00454, Paper 12 at 7-10 (PTAB Aug. 29, 2014)
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`(refusing to consider arguments not made in petition and only made through
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`incorporation by reference to lengthy expert declaration) (informative); Chemors
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`Co. FC, LLC v. Daikin Indus., Ltd., No. IPR2018-01558, 2020 WL 402064, at *5
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`(PTAB Jan. 23, 2020) (rejecting evidence submitted with, but not cited to, in
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`Petition).
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`V.
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`PETITIONER HAS NOT MAPPED THE CLAIMS TO THE PRIOR
`ART.
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`A.
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`Substantially Equal vs. Acceptable Pressure Target Error Range.
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`Contrary to Petitioner’s Reply argument, Gifft was not relied upon in the
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`Petition to disclose how the limitation of “acceptable pressure target error range” is
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`met. (Compare Reply at 18-19 with Pet. at 48-49 (relying exclusively on Mittal for
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`limitation 12f, which includes “acceptable pressure target error range” limitation).)
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`This new and unsupported argument should be rejected. Intelligent, 821 F.3d at
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`1369. Moreover, Petitioner has not established why a POSITA would understand
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`Gifft’s disclosure of adjusting pressure until a pressure was “substantially equal” to
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`a desired pressure renders obvious both of the claimed limitations: (1) “substantially
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`equal to a pressure target” and (2) “within an acceptable pressure target error range
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`of a pressure target.” (POR at 56-58.) A POSITA would understand these as
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`different concepts, neither of which was met by the asserted art. (Ex. 2026 ¶¶194-
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`197; Ex. 2031 ¶¶13-16; Ex. 2041 at 105:11-110:9.)
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`B. Control Device.
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`In response to PO’s argument that Petitioner has not identified the claimed
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`“control device,” (POR at 58-59), Petitioner claims it “separately identified the
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`claimed [] ‘input device’ and ‘control device’” but then only identifies what a
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`POSITA would purportedly understand as the “input device.” (Reply at 19.)
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`Petitioner has thus conceded this argument as to Claim 20 and its dependents.
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`C. Multiplicative Pressure Adjustment Factor.
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`Petitioner does not attempt to explain how a POSITA would understand Ebel
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`to disclose fluid-circuit diagrams and multiplicative factors not disclosed in Ebel.
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`(See POR at 59; supra Section IV(C).) Petitioner also fails to address PO’s argument
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`that there is no suggestion or showing of how such a multiplicative factor would be
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`modified. (POR at 59.)
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`Petitioner again cites to several paragraphs from Phinney’s declaration not
`
`cited in the Petition, are not sufficiently explained in the Reply, and which include
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`arguments not made in either the Petition or Reply. (Reply at 19 (citing Ex. 1009
`
`paragraphs 237-238, 246-248, 250, and 252-254 not previously cited).) This is
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`improper incorporation by reference. 37 C.F.R. § 42.6(a)(3); see Cisco Sys.,
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`IPR2014-00454; Chemors, 2020 WL 402064, at *5.
`
`VI. PETITIONER HAS FAILED TO MEET ITS BURDEN IN OPPOSING
`PO’S EVIDENCE OF SECONDARY CONSIDERATIONS.
`
`A.
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`PO Has Established a Nexus.
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`Contrary to Petitioner’s assertions, PO has established a nexus as to industry
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`praise, unexpected results, copying, and commercial success. First, PO has identified
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`contemporaneous emails from others praising the technology that specifically
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`reference the ‘747 Patent, to which the ‘154 Patent is a continuation. (See Exs. 2053-
`
`2054.)
`
`Second, PO has identified the specific claim limitations, i.e., multiplicative
`
`pressure adjustment factors, which resulted in unexpected results. (See POR at 68.)
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`Third, as to copying and commercial success, PO has provided unrebutted
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`evidence that Petitioner’s products practice each claim of the ‘154 Patent. PO’s
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`experts inspected and analyzed Petitioner’s and PO’s products and explained where
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`each structural and source code limitation was similarly met. (See Ex. 2029 ¶¶17-
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`25, 29-34, 41-54; Ex. 2027 ¶¶7-32, 38-41, 50.) PO’s Contentions provide evidence
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`of the same, showing the variable name and its function(s). (Exs. 2046-49; Edwards
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`Dep. Ex. 7 to Exs. 1038-39 (“Exhibit 7”).)6 PO need not submit any actual code for
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`the conclusion to be found.
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`Assuming arguendo the code was necessary, PO’s expert, Edwards, explained
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`how the Contentions further demonstrate nexus. (See, e.g., Ex. 1038 at 219:22-
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`223:14 (explaining that unredacted Contentions include file names, function names,
`
`variable names, and line numbers, which further explain how code reads on claimed
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`limitations), 257:21-262:11 (explaining specifically, by variable names and line
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`numbers, which aspects of Petitioner’s source code read on claimed limitations),
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`270:3-15 (same), 273:16-276:11 (same), 277:21-280:16 (same), 281:19-282:8
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`(same), 284:22-288:7 (same).) Furthermore, Petitioner did not provide evidence,
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`expert or otherwise, to rebut the conclusion that its products practice the claimed
`
`limitations—presumably because it cannot. (See, e.g., Reply at 19-21; Ex. 2080 at
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`13:16-14:4.) Accordingly, PO has made a prima facie and unrebutted showing that
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`Petitioner’s products have nexus to the claimed invention.
`
`
`6 Petitioner objects to the filing of the un-redacted Contentions despite Petitioner
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`using them as a deposition exhibit, which waived its right to exclude this evidence.
`
`(See, e.g., Ex. 1038 at 217:7-229:19 (introducing and discussing Exhibit 7).)
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`
`B.
`
`PO Has Shown Industry Praise.
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`Petitioner does not dispute PO’s expert’s analysis comparing the ‘886 Patent
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`to the ‘154 Patent or that “John” is in the industry. (See Reply at 21-22.)
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`Additionally, both Ex. 2053 and 20547 specifically reference the ‘747 Patent and
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`show there was a recognized benefit to the technology disclosed in that patent and,
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`by extension, the ‘154 Patent. (See Exs. 2053-2054; Ex. 2026 ¶206.) Petitioner’s
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`failure to dispute these facts or addre