Case No. IPR2019-00500
`Patent No. 9,737,154
`
`
`
`
`
`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
`____________
`
`
`
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE (PAPER 93)
`
`
`
`
`WA 14737375.1
`
`
`Patent No. 9,737,154
`
`
`
`
`
`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
`____________
`
`
`
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE (PAPER 93)
`
`
`
`
`WA 14737375.1
`
`
`
`Case No. IPR2019-00500
`Patent No. 9,737,154
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ......................................................................................... 1
`
`II. LEGAL STANDARD .................................................................................... 1
`
`III. ARGUMENT ............................................................................................. 1
`
`A. Dr. Phinney’s Testimony should not be excluded ....................................... 1
`
`1. Dr. Phinney is a duly qualified expert and POSA ................................... 1
`
`2. Dr. Phinney’s testimony is duly supported ............................................. 3
`
`3. Dr. Phinney’s fluid-circuit diagram is admissible ................................... 4
`
`B. Supporting exhibits re ANM’s opposition to PO motion for additional
`discovery should not be excluded ....................................................................... 5
`
`1. Exs. 1028–29 and 1033 are not inadmissible hearsay ............................. 5
`
`2. Exs. 1028–34 and 1036 are also admissible ............................................ 6
`
`C. Miscellaneous arguments should be disregarded ........................................ 7
`
`1. The Declaration of Mr. Craig Miller should not be excluded .................. 7
`
`2. The Declaration of Dr. Lynde should not be excluded ...........................11
`
`3. Deposition Transcripts ..........................................................................13
`
`IV.
`
`CONCLUSION .........................................................................................14
`
`
`
`
`
`
`- i -
`
`
`WA 14737375.1
`
`
`
`Case No. IPR2019-00500
`Patent No. 9,737,154
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Federal Cases
`
`Donlin v. Phillips Lighting N. Am. Corp.,
`581 F.3d 73 (3rd Cir. 2009) ............................................................................... 9
`
`Intelligent Bio-Systems, Inc. v. Illumia Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) ........................................................................ 11
`
`LifeWise Master Funding v. Telebank,
`374 F.3d 917 (10th Cir. 2004) ............................................................................ 9
`
`Plexxikon Inc. v. Novartis Pharm. Corp,
`No. 17-cv-04405-HSG, 2020 WL 1455830 (N.D. Cal. Mar. 25,
`2020) ................................................................................................................. 2
`
`Sanofi-Aventis U.S. LLC v. Immunex Corp.,
`No. IPR2017-01884, Paper 96 (PTAB Feb. 14, 2019) ....................................... 1
`
`Ward v. Dixie Nat. Life Ins. Co.,
`595 F.3d 164 (4th Cir. 2010) ............................................................................ 11
`
`
`
`- ii -
`
`
`WA 14737375.1
`
`
`
`Case No. IPR2019-00500
`Patent No. 9,737,154
`
`
`
`I.
`
`INTRODUCTION
`
`Petitioner American National Manufacturing, Inc. (“ANM” or “Petitioner”)
`
`files this Opposition in response Patent Owner Sleep Number Corp.’s (f/k/a Select
`
`Comfort Corp.) (“PO” or “Sleep Number”) Motion to Exclude (Paper 93) (the
`
`“MTE”).
`
`PO’s motion should be denied.
`
`II. LEGAL STANDARD
`
`“The party moving to exclude evidence bears the burden of proving that it is
`
`entitled to the relief requested—namely, that the material sought to be excluded is
`
`inadmissible under the Federal Rules of Evidence (“FRE”).” Sanofi-Aventis U.S.
`
`LLC v. Immunex Corp., No. IPR2017-01884, Paper 96 (PTAB Feb. 14, 2019) (citing
`
`37 C.F.R. §§ 42.20(c) and 42.62(a)).
`
`
`
`III. ARGUMENT
`
`A. Dr. Phinney’s Testimony should not be excluded
`
`1.
`
`Dr. Phinney is a duly qualified expert and POSA
`
`In 2005, Dr. Phinney earned a Ph.D. in Electrical Engineering from the
`
`Massachusetts Institute of Technology (“MIT”), among other degrees. Ex. 1009, ¶
`
`5. While at MIT, he worked for the Laser Interferometric Gravitation Wave
`
`- 1 -
`
`
`
`
`
`Case No. IPR2019-00500
`Patent No. 9,737,154
`
`Observatory (LIGO) experiment, where he designed and tested hydraulic systems
`
`for an experimental apparatus for out-stage seismic isolation. Id. Since 2005, he
`
`has worked for Exponent, where he continued to perform engineering duties,
`
`including related to control systems. Id., ¶ 6–14; see also Ex. 1010. He has the
`
`educational qualifications and “equivalent” work experience that qualifies him as an
`
`expert under FRE 702 as well as a person of ordinary skill in the art (“POSA”). See,
`
`generally, Plexxikon Inc. v. Novartis Pharm. Corp, No. 17-cv-04405-HSG, 2020
`
`WL 1455830 (N.D. Cal. Mar. 25, 2020) (discussing cases and concluding expert is
`
`qualified).
`
`It is unclear how PO can credibly challenge Dr. Phinney’s credentials when
`
`PO’s lead expert, Dr. Messner, also lacks per se air mattress experience. See Ex.
`
`1062 at 10:17–11:13 (Dr. Messner testifying he has no air-mattress work experience
`
`but that he believes he is qualified to testify here based on his engineering work in
`
`analogous fields of “controls, extensive background in mechanical engineering, in
`
`design, in automatic control systems, all of which are relevant to this case.”); see
`
`also Ex. 1052 at 189:9–190:5 (similar). Moreover, Dr. Phinney has testified
`
`cogently throughout this proceeding and demonstrated his competence. See, e.g.,
`
`Ex. 2041 at 2:2–25 (for example, Dr. Phinney accurately conducted conversions of
`
`pressure units without calculator or aid of scratch paper). In contrast, PO’s experts
`
`have waffled throughout and demonstrate competence. See, e.g., Ex. 1054 at 32:10-
`
`- 2 -
`
`
`WA 14737375.1
`
`
`
`Case No. IPR2019-00500
`Patent No. 9,737,154
`
`38:15 and 176:10-180:6 (PO’s expert for mechanical arts, Dr. Abraham, destroyed
`
`physical evidence by unscrewing solenoid valve in prior art pumps in possession of
`
`third-party Tempur Sealy and he could not put the solenoid back where it was; which
`
`was memorialized by both parties counsel in contemporaneous emails (Ex. 9 to that
`
`deposition); then at his deposition, had no recollection of those events).
`
`2.
`
`Dr. Phinney’s testimony is duly supported
`
`As an initial matter, PO has failed to preserve its objections here. The MTE
`
`(at 4) provides citation to PO’s objections, but the arguments in the MTE (see § I.B,
`
`¶ 1) do not appear in the cited objections. PO’s style of using “for example”
`
`throughout its objections is insufficient to preserve objections not explicitly
`
`described. See 37 C.F.R. § 42.64(b)(1) (objection must be “with sufficient
`
`particularity to allow correction”).
`
`Further, the MTE (see § I.B, ¶ 2) attempts to raise objections to numerous
`
`paragraphs without explanation. This is an improper form of objecting and briefing
`
`as ANM cannot reasonably respond and correct; PO cannot carry its burden without
`
`briefing. See 37 C.F.R. § 42.64(c) (a motion to exclude “must explain the
`
`objections”).
`
`Setting those issues aside, PO asserts that Dr. Phinney’s testimony is
`
`unsupported by facts or data. However, Dr. Phinney’s testimony is based on
`
`evidence—prior art references Gifft, Mittal, Ebel, Pillsbury, etc.—coupled with
`
`- 3 -
`
`
`WA 14737375.1
`
`
`
`Case No. IPR2019-00500
`Patent No. 9,737,154
`
`detailed explanation contained in his declarations. See, e.g., generally, Ex. 1009.
`
`This Board has already found Dr. Phinney’s testimony cogent. See, generally,
`
`Papers 11 and 77 (Institution Decision and Preliminary Guidance vetting Dr.
`
`Phinney’s testimony and finding it persuasive at least for the purposes of those
`
`preliminary decisions).
`
`PO’s arguments are specious. Dr. Phinney properly cites and supports his
`
`discussion of pneumatic impedance. See, e.g., Ex. 1009, ¶ 100 and n. 7 (Dr. Phinney
`
`citing Bhai, Ex. 2013). PO misrepresents deposition testimony and other evidence.
`
`See MTE at 3 (asserting Dr. Phinney was unable to point to a reference that disclosed
`
`pneumatic impedance when he in fact did identify, inter alia, Ebel, Ex. 1006, which
`
`discloses the concept of pneumatic impedance in FIG. 2). PO’s arguments are also
`
`based on over narrowly limiting the relevant field to air mattresses per se; an
`
`argument this Board has rejected. See Paper 11 at 27–28 (reasoning the relevant
`
`field is “pneumatic control systems”) .
`
`In sum, PO fails to make credible arguments for excluding any of Dr.
`
`Phinney’s testimony and cannot carry its burden on this motion.
`
`3.
`
`Dr. Phinney’s fluid-circuit diagram is admissible
`
`Dr. Phinney’s fluid-circuit diagram (also called an electrical equivalent
`
`diagram) is a derived diagram and helpful to explain a pneumatic system. Dr.
`
`Phinney’s testimony properly explained the diagram and how it was derived in part
`
`- 4 -
`
`
`WA 14737375.1
`
`
`
`Case No. IPR2019-00500
`Patent No. 9,737,154
`
`based on Ebel, FIG. 2, among other references. See, e.g., Ex. 1009, ¶¶ 52–56
`
`(explaining the diagram with citation to Ebel). An electrical equivalent diagram is
`
`commonly used in the field. See, e.g., Ex. 1001, FIG. 3; Ex. 1006, FIG. 2; Ex. 1052
`
`at 108:22–109:3 (PO’s lead expert, Dr. Messner, agreeing “it [is] normal to use
`
`electrical diagrams to model fluidic systems”); Ex. 1062 at 42:7–13 (Dr. Messner
`
`stating by the time he completed his masters in 1989 he was capable of drawing
`
`electrical equivalent diagrams for pneumatic systems). It is admissible. See FRE
`
`703 (experts are permitted to rely on information if experts in the particular field
`
`would reasonably rely on the same).
`
`PO’s argument here is truly rich. On one hand, the MTE (§ I.B) criticizes Dr.
`
`Phinney for failing to support his opinions. On the other hand, the MTE (§ I.C)
`
`criticizes Dr. Phinney’s support.
`
`With respect to PO’s remaining arguments (MTE, § I.C, ¶ 2), PO failed to
`
`properly raise these objections as PO put forth its arguments as “and/or” and “for
`
`instance.” This is an improper form of briefing, and PO cannot carry its burden. See
`
`37 C.F.R. § 42.64(c) (a motion to exclude “must explain the objections”).
`
`B.
`
`Supporting exhibits re ANM’s opposition to PO motion for
`additional discovery should not be excluded
`
`1.
`
`Exs. 1028–29 and 1033 are not inadmissible hearsay
`
`- 5 -
`
`
`WA 14737375.1
`
`
`
`Case No. IPR2019-00500
`Patent No. 9,737,154
`
`Exs. 1028–29 are screenshots from Dun & Bradstreet related to corporate
`
`financial information. These exhibits fall squarely within the ambit of FRE 803(17)
`
`hearsay exception for market reports and commercial publications.
`
`With respect to Ex. 1033, PO objects to ¶¶ 3–4 and 8–9 of Mr. Miller’s
`
`declaration without elaborating why these statements are believed to be inadmissible
`
`hearsay. A review those paragraphs reveal the testimony generally relates to PO
`
`itself. This testimony is not inadmissible hearsay because any underlying
`
`statements are used against a party opponent (see FRE 801(d)(2)) or an exception
`
`applies (see FRE 804(b)(3) or 807). Other testimony (Ex. 1033, ¶ 9) is not hearsay
`
`because Mr. Miller is providing factual information (e.g., how much he was paid) of
`
`which he had personal knowledge.
`
`2.
`
`Exs. 1028–34 and 1036 are also admissible
`
`First, Exs. 1028–29 (publicly available reports) were authenticated by a
`
`supplemental declaration of Mr. Elliott. See Ex. 1064, ¶¶ 3-4. Ex. 1034 was duly
`
`authenticated by Mr. Miller as a business record. See 1033, ¶ 4.
`
`Second, PO does not explain how Ex. 1036 is “irrelevant and/or prejudicial.”
`
`See Practice Guide, § II.K(d) (a motion to exclude evidence must “[e]xplain each
`
`objection”).
`
`Third, Ex. 1030 (PO’s discovery response) shows PO lacked any evidence to
`
`support its secondary indicia arguments, which it should have investigated as part of
`
`- 6 -
`
`
`WA 14737375.1
`
`
`
`Case No. IPR2019-00500
`Patent No. 9,737,154
`
`its pre-suit Rule 11 diligence and disclosed; alternatively, it shows PO intentionally
`
`withheld information in discovery. Either way, it bears on PO’s credibility (or lack
`
`thereof) here. Ex. 1032 (letter regarding deficiencies in PO’s infringement
`
`contentions) demonstrates that PO’s contentions were highly contested and is
`
`consistent with ANM’s position that later versions of PO’s contentions are also
`
`highly contested. Regarding Ex. 1033 (Mr. Miller’s declaration), PO does not
`
`appear to make any legal argument why the entirety of the exhibit should be
`
`excluded; to the extent PO had issue as to Mr. Miller’s deposition, PO should have
`
`dealt with that at that time.
`
`PO simply has not carried its burden to exclude any of these exhibits.
`
`C. Miscellaneous arguments should be disregarded
`
`1.
`
`The Declaration of Mr. Craig Miller should not be excluded
`
`PO tried to establish commercial success based on ANM’s sales. PO relied
`
`on an expert, Carl Degen, whose opinion was unreliable because he did not properly
`
`examine causation. Mr. Degen admitted the deficiency in his analysis (ANM MTE
`
`at 8-9). ANM duly moved to exclude Mr. Degen’s declaration. See Paper [ANM
`
`MTE] at 6. ANM’s motion was supported by declarations from ANM’s President,
`
`Mr. Craig Miller, and an independent expert, Dr. Matthew Lynde. PO’s attempt to
`
`exclude portions of these declarations here is flawed.
`
`- 7 -
`
`
`WA 14737375.1
`
`
`
`Case No. IPR2019-00500
`Patent No. 9,737,154
`
`PO challenges portions of Mr. Miller’s declaration on the basis of personal
`
`knowledge. See MTE at 9-10. Mr. Miller stated his personal knowledge of the facts
`
`in his declaration. (Ex. 1057, ¶ 1). Mr. Miller’s personal knowledge hardly seems
`
`controversial, since he is the President of ANM and also a manager of Dires, LLC.
`
`Further, PO knows Mr. Miller personally as PO previously hired Mr. Miller as a
`
`consultant to give research and development advice and to work with PO’s top
`
`executives. (See Ex. 1048). Notwithstanding these circumstances, Mr. Miller
`
`provided more details of his personal knowledge through a supplemental
`
`declaration. (Ex. 1063). Below are PO’s challenges and Mr. Miller’s basis for his
`
`personal knowledge:
`
`PO withdrew from the market a brand which it owned and
`which competed with Petitioner’s air beds. This resulted
`in an increase in ANM sales. PO challenges Mr. Miller’s
`personal knowledge of these facts. MTE at 9. PO publicly
`announced its withdrawal from the market. Mr. Miller
`confirmed the coincident increase in ANM sales by
`studying official company records and by setting up the
`new customer accounts. (Ex. 1063, ¶ 16).
`
`PO told Google that it held a trademark rights in “number
`bed” and, based on PO’s complaints, Google suspended
`hundreds of ads that used the term “number bed” and were
`placed by ANM’s sales affiliate, Dires, Inc. In fact, PO
`held no trademark rights in “number bed.”. PO challenges
`Mr. Miller’s knowledge of these facts. Mr. Miller stated
`that most of facts were admitted by PO’s high-level
`employees testifying at a trademark trial that he attended.
`(Ex. 1063, ¶ 9). Mr. Miller has personal knowledge of the
`facts regarding suspension by his study of Dires, LLC
`business records (Id.).
`
`ANM purchased source code (a component embedded
`within an air controller) from a supplier. For a time, the
`- 8 -
`
`
`WA 14737375.1
`
`
`
`Case No. IPR2019-00500
`Patent No. 9,737,154
`
`supplier identified the source code only by a numeric
`range, “1.5-1.8”. PO says Mr. Miller claims to, but does
`not have, knowledge of when a particular version was
`used. In fact, Miller said exactly the opposite. (Ex. 1064,
`¶ 7). Mr. Miller, who does not read source code, does not
`know when any particular version was used by the
`supplier. (Id.).
`
`Issues with Mr. Degen’s analysis include an under-count
`and a separate over-count of controllers; failing to
`consider that ANM was just starting its business in 2012
`and had a plan for growth; that ANM had supply problems
`in connection with controllers; that the suspension by
`Google ads affected Dires, LLC on-line sales; and that
`ANM sales increased when it published a YouTube video
`comparing its product with PO’s. PO challenges Mr.
`Miller’s personal knowledge on each of these facts. MTE
`at 10. Mr. Miller knows these facts because he examined
`each of them and he explains the basis for his knowledge,
`in detail, in his supplemental declaration. (Ex. 1063, ¶¶ 5,
`6, 8, 12, 15).
`
`PO argues that Mr. Miller may not give opinion evidence regarding his own
`
`business. MTE at 10–11. That is not the law. FRE 701 allows lay opinion testimony
`
`that is “rationally based on the witness’s perception.” The Advisory Committee
`
`notes say that the Rule allows opinion testimony by business owners due to the
`
`particular knowledge they develop. Federal cases are in accord. See, e.g., Donlin v.
`
`Phillips Lighting N. Am. Corp., 581 F.3d 73, 81-82 (3rd Cir. 2009); LifeWise Master
`
`Funding v. Telebank, 374 F.3d 917, 929-30 (10th Cir. 2004).
`
`Mr. Miller is the business owner and has 22 years of experience in the
`
`industry. Ex. 1072, ¶ 1; 1063 ¶¶ 1 and 18. Mr. Miller attests that he is fully involved
`
`in “virtually all activities, including the activities of sales, marketing, finance,
`
`- 9 -
`
`
`WA 14737375.1
`
`
`
`Case No. IPR2019-00500
`Patent No. 9,737,154
`
`production, purchasing and recordkeeping. Ex. 1063 ¶ 1. Mr. Miller’s experience
`
`in these business functions are the basis for his opinions which are rationally based
`
`on his perceptions and are admissible.
`
`In particular, PO argues that Mr. Miller may not state his opinion that
`
`advertising contributes to Petitioner’s sales; that Petitioner had a plan for business
`
`growth; and that a certain supplier to Petitioner was more reliable than its
`
`predecessor. (MTE, p. 10). These all are the topics in which a business owner has
`
`knowledge. PO’s argument disregards Rule 701 and normal practice in courts where
`
`corporate representatives testify as corporate matters.
`
`Finally, PO incorrectly characterizes as “opinion” what is merely Mr. Miller’s
`
`observation that Mr. Degen omitted certain facts from his declaration. See MTE at
`
`10. For each observation of Mr. Degen’s omissions, Mr. Miller provided facts
`
`within his personal knowledge. Ex. 1063, ¶¶ 1–8 and 15–16.
`
`PO makes hearsay objections to parts of Mr. Miller’s testimony and two
`
`exhibits he sponsors (see MTE at 10), but those objections are misplaced as
`
`explained:
`
`Mr. Miller recounts PO’s admissions at the trademark trial
`regarding its false accusation of trademark violations by
`Dires. (Ex. 1063 ¶ 9, 12). None of these statements are
`hearsay. F.R.E. 801(d)(2). Mr. Miller refers to a decision
`by the International Trade Commission. (Ex. 1072, ¶ 10).
`Public documents are not hearsay, F.R.E. 803(8), and PO
`makes no allegation that the record is not genuine. Mr.
`Miller also recounts PO’s public statement that it was
`
`- 10 -
`
`
`WA 14737375.1
`
`
`
`Case No. IPR2019-00500
`Patent No. 9,737,154
`
`removing its competing product from the market. (Ex.
`1063, ¶ 16). PO does not deny the accuracy of its public
`statement.
`
`PO objects to a summary of notices from Google ads. (Ex.
`1060/1075). This pertains to the issue of PO’s false claim
`of trademark violations. The summary is offered only to
`show notice to Petitioner that the ads were disallowed. It
`is not offered for the truth because there was no trademark
`violation. Finally, PO objects to a summary of Dires
`advertising expenses. (Ex. 1059/1074). Petitioner
`supplied the original records from which the summary was
`made. (Ex. 1063, ¶ 18). PO’s complaint is moot.
`
`2.
`
`The Declaration of Dr. Lynde should not be excluded
`
`PO argues the bizarre proposition that a rebuttal witness cannot present
`
`evidence of errors and omissions in an opponent’s statement of alleged facts. PO
`
`cites Intelligent Bio-Systems, Inc. v. Illumia Cambridge Ltd., 821 F.3d 1359, 1369-
`
`70 (Fed. Cir. 2016). That case does not support PO’s legal proposition. Rather, it
`
`pertained to a petitioner who attempted to change its petition after a patent owner’s
`
`response. By contrast, Dr. Lynde’s declaration is submitted as rebuttal to the
`
`commercial success argument first raised by PO in its response.
`
`PO further contends that Dr. Lynde may not rely on hearsay information.
`
`F.R.E. 703 and authorities approve an expert’s reliance on hearsay statement by
`
`those who are in a position to know the facts. See, e.g., Ward v. Dixie Nat. Life Ins.
`
`Co., 595 F.3d 164, 181-82 (4th Cir. 2010); United States v. Lundy, 809 F.2d 392,
`
`395-96 (7th Cir. 1987).
`
`- 11 -
`
`
`WA 14737375.1
`
`
`
`Case No. IPR2019-00500
`Patent No. 9,737,154
`
`Dr. Lynde relied on information he received from Mr. Miller regarding ANM
`
`invoices, sales, advertising and product supply. Mr. Miller certainly is in the
`
`position to know these things because he personally reviewed the invoices, the sales
`
`records, and the advertising records and because he is fully engaged in ANM’s
`
`purchasing operations. See Ex. 1063, ¶¶ 1, 5, 15, and 18. Mr. Miller is a person in
`
`the position to know the facts. Of particular note is that PO deposed Mr. Miller at
`
`length about all these topics. See, generally, Ex. 2083 at 31:10-34:8, 39:14-40:8,
`
`52:12-19, and 66:23-68:5. PO does not challenge Mr. Miller’s veracity.
`
`Finally, PO mischaracterizes parts of Dr. Lynde’s deposition testimony. MTE
`
`at 14. Contrary to PO’s statement, Dr. Lynde testified that he received information
`
`regarding supply problems from Mr. Miller. See Ex. 2084 at 29:10-17. Mr. Miller
`
`also testified about the supply problems. Ex. 2083 at 52:12-16. Also contrary to
`
`PO’s statement, Dr. Lynde’s analysis demonstrated the correlation between
`
`advertising spending and ANM’s unit sales. Ex. 1056, FIG. 3 and ¶ 46. Finally,
`
`contrary to PO’s statement, Dr. Lynde explained that in economics, variations above
`
`or below a growth trend line are not meaningful; it is the growth trend line that is
`
`important for measurement of statistical significance. See Ex. 1056, ¶ 40-42; Ex.
`
`2084 at 103:1-7, 104:19-105:1, and 104:2-11).
`
`- 12 -
`
`
`WA 14737375.1
`
`
`
`Case No. IPR2019-00500
`Patent No. 9,737,154
`3.
`
`Deposition Transcripts
`
`Turning to PO’s first argument, Dr. Messner’s testimony that “offsets” were
`
`well known in 2006 is relevant, in particular, because the term offset is functionally
`
`the same as claim term adjustment “factor” as Dr. Messner explained:
`
`So is there a particular term of art for the
`Q
`multiplicative factor, multiplicative factors? Excuse me.
`
`You know, offhand, I can’t think of one. I
`A
`mean, an offset is a widely used way of doing calibration,
`which is partly why it's so widely known for -- or widely
`used for, say, like in Mittal, where one of the first things
`that’s done is, there’s an offset to correct for the
`atmospheric pressure.
`
`Q Were offsets widely used in 2006?
`
` MR. TOFT: Object to form.
`
`I would say that offsets were widely used in
`A
`a variety of different fields.
`
`BY MR. ELLIOTT:
`
`Q
`
`A
`
`In 2006?
`
`In 2006.
`
`Ex. 1052 at 297:3–297:19. In addition to Mittal (being in the relevant filed of
`
`pneumatics), Dr. Messner also testified “offsets” also applied to Gifft, which is from
`
`the air-mattress field. Id. at 297:20–298:18 (stating that offsets could be used to
`
`continuously monitor as discussed in Gifft). Such testimony is admissible.
`
`Turning to PO’s next argument, PO again attempts to define the relevant field
`
`narrowly to only include the air-mattress field. However, PO’s own actions are
`
`- 13 -
`
`
`WA 14737375.1
`
`
`
`Case No. IPR2019-00500
`Patent No. 9,737,154
`
`inconsistent. See, e.g., Ex. 1051 at 14:14–25:6 (PO hired Mr. Mahoney—first
`
`named inventor—particularly because his experience with medical devices
`
`involving pneumatics (i.e., ventilators) that involved analogous problems to those in
`
`the air-mattress field). This Board should consider inconsistencies in PO’s
`
`arguments and PO’s credibility here.
`
`IV. CONCLUSION
`
`For the foregoing reasons, the MTE should be denied.
`
`- 14 -
`
`
`WA 14737375.1
`
`
`
`Case No. IPR2019-00500
`Patent No. 9,737,154
`
`Date: May 6, 2020
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`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)
`Mark A. Thornhill (pending 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
`
`Counsel for Petitioner American National
`Manufacturing, Inc.
`
`
`
`
`- 15 -
`
`
`WA 14737375.1
`
`
`
`Case No. IPR2019-00500
`Patent No. 9,737,154
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies that a copy
`
`of the foregoing PETITIONER’S OPPOSITION TO PATENT OWNER’S
`
`MOTION TO EXCLUDE (PAPER 93) is served in its entirety on May 6, 2020, by
`
`electronic mail, as authorized by Patent Owner’s Updated Mandatory Notices,
`
`directed to the attorneys of record for Patent Owner at the following correspondence
`
`address of record:
`
`Steven A. Moore
`stevemoore@zhonglun.com
`ZHONG LUN
`4322 Wilshire Boulevard, Suite 200
`Los Angeles, CA 90010
`
` Kecia J. Reynolds
`kecia.reynolds@pillsburylaw.com
`PILLSBURY WINTHORP SHAW
`PITTMAN LLP
`1200 Seventeenth Street, NW
`Washington, DC 20036
`
`Luke Toft
`ltoft@foxrothschild.com
`
`
`
`
`
`Andrew 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
`
`Date: May 6, 2020
`
`
`
`
`
`
` /s/Kyle L. Elliott .
`Kyle L. Elliott (Reg. No. 39,485)
`.
`Attorney for Petitioner
`American National Manufacturing, Inc.
`
`- 16 -
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
