UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`AMERICAN NATIONAL MANUFACTURING INC.,
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`Petitioner,
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`v.
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`SLEEP NUMBER CORPORATION
`f/k/a SELECT COMFORT CORPORATION,
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`Patent Owner.
`____________
`
`Case No. IPR2019-00514
`Patent No. 5,904,172
`____________
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`
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`PATENT OWNER’S MOTION TO EXCLUDE PETITIONER’S EVIDENCE
`PURSUANT TO 37 C.F.R. § 42.64(c)
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`____________
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`
`AMERICAN NATIONAL MANUFACTURING INC.,
`
`Petitioner,
`
`v.
`
`SLEEP NUMBER CORPORATION
`f/k/a SELECT COMFORT CORPORATION,
`
`Patent Owner.
`____________
`
`Case No. IPR2019-00514
`Patent No. 5,904,172
`____________
`
`
`
`
`
`PATENT OWNER’S MOTION TO EXCLUDE PETITIONER’S EVIDENCE
`PURSUANT TO 37 C.F.R. § 42.64(c)
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`Case IPR2019-00514
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`TABLE OF CONTENTS
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`PORTIONS OF DR. ROBERT GIACHETTI’s Declaration AND
`
`INTRODUCTION ................................................................................................. 1
`ARGUMENT......................................................................................................... 1
`I.
`ASSOCIATED EXHIBITS SHOULD BE EXCLUDED ............................. 1
`A. Giachetti’s Testimony Related to Claims or Arguments Not
`Asserted in the Petition Should Be Excluded ..................................... 2
`B.
`Upon in the Petition Should Be Excluded .......................................... 3
`FOR ADDITIONAL DISCOVERY SHOULD BE EXCLUDED ................ 3
`A.
`Certain Exhibits Contain Inadmissible Hearsay ................................. 4
`B.
`Confusing, or Unauthenticated ........................................................... 5
`III. CERTAIN EXHIBITS AND/OR PORTIONS SUPPORTING ANM’s
`REPLY TO PO’S RESPONSE SHOULD BE EXCLUDED ........................ 6
`A.
`Should Be Excluded ........................................................................... 6
`B.
`Should Be Excluded ........................................................................... 8
`C.
`Portions of Matthew R. Lynde’s Declaration Should Be Excluded .. 12
`D. An International Trade Commission Order Should Be Excluded ..... 14
`E.
`Portions of Certain Deposition Transcripts Should Be Excluded...... 14
`CONCLUSION ................................................................................................... 15
`
`II.
`
`Additional Giachetti Testimony and Exhibits Not Cited or Relied
`
`EXHIBITS SUPPORTING ANM’S OPPOSITION TO PO’S MOTION
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`Certain Exhibits Are Irrelevant, Prejudicial, Misleading,
`
`Portions of Giachetti’s Declaration and Associated Exhibits
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`Portions of Craig Miller Jr.’s Declaration and Associated Exhibits
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`
`Cases
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Actifio, Inc., v. Delphix Corp.,
`IPR2015-00108, Paper 56 (PTAB Apr. 29, 2016) .............................................. 2
`
`Apple Inc. v. DSS Tech. Management, Inc.,
`IPR2015-00369, Paper 14 (PTAB Aug. 12, 2015) ............................................. 4
`
`Bailey v. U.S.,
`No. 122-77, 1997 WL 759654 (Fed. Cl. Sept. 30, 1997) .............................. 8, 15
`
`Charron v. U.S.,
`200 F.3d 785 (Fed. Cir. 1999) ............................................................................ 8
`
`Innovation Co., Ltd. v. Celgard, LLC,
`IPR2014-00679, Paper 58 (PTAB Sept. 25, 2015) ............................................. 2
`
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) .................................................................... 7, 12
`
`Legend3D, Inc. v. Prime Focus Creative Servs. Can. Inc.,
`IPR2016-00806, Paper 73 (PTAB Sept. 18, 2017) ............................................. 1
`
`TRW Automotive U.S. LLC v. Magna Elecs. Inc.,
`IPR2014-01348, Paper 25 (PTAB Jan. 15, 2016) ............................................... 5
`
`Other Authorities
`
`37 C.F.R. § 42.62 .................................................................................................... 1
`
`37 C.F.R. § 42.64 .................................................................................................... 1
`
`37 C.F.R. § 42.104 .......................................................................................... 1, 5, 7
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`77 Fed. Reg. 48,756 (Aug. 14, 2012) ...................................................................... 1
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`Fed. R. Evid. 401 ........................................................................................... passim
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`Fed. R. Evid. 402 ........................................................................................... passim
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`Fed. R. Evid. 403 ........................................................................................... passim
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`Fed. R. Evid. 602 ................................................................................................ 8, 9
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`Fed. R. Evid. 611 .................................................................................................. 15
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`Fed. R. Evid. 702 .................................................................................. 9, 10, 12, 14
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`Fed. R. Evid. 703 ...................................................................................... 10, 12, 14
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`Fed. R. Evid. 705 ...................................................................................... 10, 12, 14
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`Fed. R. Evid. 801 ........................................................................................... passim
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`Fed. R. Evid. 802 ........................................................................................... passim
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`Fed. R. Evid. 804 .................................................................................................... 8
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`Fed. R. Evid. 805 ........................................................................................ 7, 11, 14
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`Fed. R. Evid. 901 .................................................................................................... 5
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`Fed. R. Evid. 902 .................................................................................................... 5
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`INTRODUCTION
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`Pursuant to 37 C.F.R. § 42.64(c), and the Scheduling Orders (Papers 11, 77),
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`Patent Owner Sleep Number Corporation (“PO”) moves to exclude Petitioner
`
`American National Manufacturing Inc.’s (“Petitioner” or “ANM”) Exhibits 1005,
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`1013, 1027-1028, 1041-1047, 1049, 1052, 1063-1064, 1068-1069, 1071-1072,
`
`1074-1075, 1077-1079 and 2068, or portions thereof (“the Exhibits”), which are
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`inadmissible under the Federal Rules of Evidence (“FRE”) as set forth in PO’s
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`timely-served objections (“Objections”). (See Papers 12, 28, 51, 70.)
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`ARGUMENT
`
`A motion to exclude must explain why evidence is admissible under the FRE
`
`(e.g., relevance or hearsay). Legend3D, Inc. v. Prime Focus Creative Servs. Can.
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`Inc., IPR2016-00806, Paper 73 at 8-9 (PTAB Sept. 18, 2017); see 37 C.F.R. §§
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`42.62, 42.64; Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,758,
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`48,767 (Aug. 14, 2012) (noting parties may submit motions to exclude regarding
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`evidence “believed to be inadmissible”).
`
`I.
`
`PORTIONS OF DR. ROBERT GIACHETTI’S DECLARATION AND
`ASSOCIATED EXHIBITS SHOULD BE EXCLUDED.
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`Exhibits 1005 (portions thereof), 1013, and 1027-1028 should be excluded
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`because they are not cited in the Petition, (see Paper 2), and thus lack relevance to
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`this proceeding and/or are misleading, confusing, and unfairly prejudicial. See FRE
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`401-403; 37 C.F.R. § 42.104(b)(5) (exclusion of evidence not specifically
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`identified); Actifio, Inc., v. Delphix Corp., IPR2015-00108, Paper 56 at 57 (PTAB
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`Apr. 29, 2016) (excluding exhibits that were not relied upon); Innovation Co. v.
`
`Celgard, LLC, IPR2014-00679, Paper 58 at 49 (PTAB Sept. 25, 2015) (same).
`
`A. Giachetti’s Testimony Related to Claims or Arguments Not
`Asserted in the Petition Should Be Excluded.
`
`Portions of Exhibit 1005, Giachetti’s declaration in support of the Petition,
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`should be excluded for ANM’s failure to cite to or rely upon them in the Petition.
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`ANM requested, and the Board instituted, IPR on only claims 2, 4, 6, 12, 16, 20, 22,
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`and 24. (See Paper 2 at 4-5; Paper 10 at 59-60.) Giachetti, however, opined on several
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`claims not asserted, cited to, or relied upon in the Petition—specifically claims 3, 5,
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`7-9, 11, 13-15, 17-18, and 23. (Compare Paper 2 with Ex. 1005 ¶¶63-79, 295-04
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`(claim 9), ¶¶91-92 (claim 23), ¶¶98-102 (claim 3), ¶¶103-04 (claim 13), ¶¶118-44
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`(claims 11, 14, 19), ¶¶162-78 (claims 5, 11, 14, 15), ¶¶194-98 (claims 7-8), ¶¶203-
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`04 (claims 17-18), ¶¶211-13 (claim 21), ¶215 (claims 25), ¶¶310-20 (claim 19),
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`¶¶341-50 (claims 11, 14).) Likewise, Giachetti provided additional analysis in other
`
`paragraphs of his declaration that were not cited or relied upon in the Petition.
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`(Compare Paper 2 with Ex. 1005 ¶¶70-79, 93, 157, 222-24, 238, 260-69, 271, 278-
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`79, 329, 355-56.) Because such paragraphs relate to claims or arguments not
`
`presented in the Petition, this testimony is irrelevant, can only serve to mislead or
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`confuse the issues, and is prejudicial at least because PO did not have any motivation
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`to conduct a cross-examination of uncited testimony. See FRE 403. Accordingly,
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`and because ANM failed to cure PO’s Objections, (Paper 12 at 2-4), the above-
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`referenced paragraphs of Ex. 1005 should be excluded.
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`B. Additional Giachetti Testimony and Exhibits Not Cited or Relied
`Upon in the Petition Should Be Excluded.
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`Other testimony and exhibits not cited or relied upon in the Petition should be
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`excluded for the same reason. This includes Exhibit 1013 (U.S. Patent No.
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`3,155,991) and Exhibits 1027-1028 (Power Transmission Handbook chapters), as
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`the Petition cites neither these exhibits nor the paragraphs in Giachetti’s declaration
`
`that reference them. (Compare Paper 2 with Ex. 1005 §§ IX, XV, XVIII (citing Ex.
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`1013), ¶22 (citing Exs. 1027-28).) This additionally includes the invalidity grounds
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`in §§ IX, XV, XVIII of Exhibit 1005, as the Petition does not rely on any of them.
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`(See Paper 2.) ANM’s lack of even a single citation to these exhibits and grounds
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`clearly demonstrates the irrelevance of this testimony to this proceeding.
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`Accordingly, and because ANM failed to cure PO’s Objections, (Paper 12 at 2-4, 8-
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`10), Exhibits 1013 and 1027-1028 and Sections IX, XV, and XVIII of Exhibit 1005
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`should be excluded.
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`II. EXHIBITS SUPPORTING ANM’S OPPOSITION TO PO’S MOTION
`FOR ADDITIONAL DISCOVERY SHOULD BE EXCLUDED.
`
`ANM cited Exhibits 1041-1047, 1049, and 1052 in its Oppositions to PO’s
`
`Motions for Additional Discovery. (See Papers 24, 45.) ANM never sought
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`expungement of those exhibits, yet during depositions, took the position that PO was
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`not permitted to seek discovery on such evidence because the motions had been
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`decided. (See Ex. 2097 at 12:21-13:16, 107:5-22; Papers 35, 67.) Under ANM’s
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`theory, these exhibits are no longer relevant here and any probative value they did
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`possess has been rendered moot. Therefore, such evidence should be excluded from
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`any further consideration by the Board. Additionally, as set forth below and in PO’s
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`Objections, (Papers 28, 51), these exhibits are also inadmissible under the FRE.
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`A. Certain Exhibits Contain Inadmissible Hearsay.
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`Exhibits 1041-1042 and 1046-1047 cited by ANM, (Papers 24, 45), are
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`inadmissible as they contain out-of-court statements offered to prove the truth of the
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`matter asserted. See FRE 801-802; Apple Inc. v. DSS Tech. Mgmt., Inc., IPR2015-
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`00369, Paper 14 at 6 (PTAB Aug. 12, 2015) (noting PTAB will not rely on
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`inadmissible hearsay). Specifically, Exhibits 1041-1042 are statements of third-
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`party Dun & Bradstreet offered to show 2018 revenue, (Paper 24 at 1, 7), Exhibit
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`1046 is a third-party brief filed in a different proceeding offered to show the issues
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`and status of that proceeding, (id. at 6), and testimony in Exhibit 1047 relies on third-
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`party articles and purported conversations/statements by others to prove their truth,
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`(Ex. 1047 ¶¶3-4, 8-9). Because Exhibits 1041-1042 and 1046-1047 constitute
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`hearsay under FRE 801, and ANM could not and did not cure PO’s Objections,
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`(Paper 28 at 1-2, 6-7; Paper 51 at 2-6), they are inadmissible under FRE 802.
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`B. Certain Exhibits Are
`Irrelevant, Prejudicial, Misleading,
`Confusing, or Unauthenticated.
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`Exhibits 1041-1047, 1049, and 1052 are inadmissible under FRE 401-403 and
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`901-902. First, ANM has failed to authenticate Exhibits 1041-1042 and 1049, which
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`are third-party documents for which ANM has no personal knowledge and thus
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`cannot establish that the items are what they purport to be. See FRE 901; TRW Auto.
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`U.S. LLC v. Magna Elecs. Inc., IPR2014-01348, Paper 25 at 5-12 (PTAB Jan. 15,
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`2016). Second, Exhibits 1047 and 1052 were not cited in any Paper and should thus
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`be excluded as irrelevant and/or prejudicial. See FRE 402-403; 37 C.F.R. §
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`42.104(b)(5). Third, Exhibits 1043-1046, 1052—documents from different
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`proceedings and only relied upon for the now moot discovery motions, (see Papers
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`24, 45)—should be excluded as irrelevant and/or prejudicial. See FRE 401-403.
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`Lastly, Exhibits 1043 and 1045-1047 are mischaracterized in ANM’s brief or contain
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`mischaracterizations:
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`• Exhibit 1043 (a PO discovery response): Contrary to ANM’s arguments,
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`(Paper 24 at 4), this exhibit does not show a lack of secondary consideration
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`evidence; it was prepared prior to substantial discovery in the underlying
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`proceeding and to the later-developed secondary consideration evidence
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`developed in this proceeding and is thus irrelevant and misleading. (See Paper
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`47 at 58-67; Paper 78 at 21-27.)
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`• Exhibit 1045 (an October 2018 letter to PO): Contrary to ANM’s arguments,
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`(Paper 24 at 6), this exhibit does not suggest any deficiencies in PO’s later-
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`served infringement contentions, (see Exs. 2070-75), and is thus irrelevant.
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`• Exhibit 1046 (third-party Sizewise brief): ANM improperly relies on this
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`brief, (Paper 24 at 6), which contains irrelevant, prejudicial attorney argument
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`about the purported effect of the ‘172 Patent’s expiration, which had no
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`impact on the merits of the ITC’s findings of validity and infringement.
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`• Exhibit 1047 (Miller declaration): This uncited declaration, (see Paper 24),
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`makes unsubstantiated, self-serving, conclusory, and misleading assertions to
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`which ANM blocked inquiry, (see Ex. 2097 at 12:21-13:16, 107:5-22).
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`Accordingly, and as ANM failed to cure PO’s Objections, (Paper 28 at 3-7; Paper
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`51 at 2-7, 10-11), Exhibits 1041-1047, 1049, and 1052 should be excluded.
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`III. CERTAIN EXHIBITS AND/OR PORTIONS SUPPORTING ANM’S
`REPLY TO PO’S RESPONSE SHOULD BE EXCLUDED.
`
`A.
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`Portions of Giachetti’s Declaration and Associated Exhibits Should
`Be Excluded.
`
`Portions of Exhibit 1069, Giachetti’s declaration cited in ANM’s Reply,
`
`(Paper 69), should be excluded because they lack relevance and/or are more
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`prejudicial than probative under FRE 401-403. First, paragraphs 3-7, 14-20, 28-29,
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`and 31-33 of Exhibit 1069 should be excluded as irrelevant because ANM does not
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`cite to or rely upon them in its Reply, (Paper 69). See FRE 402; 37 C.F.R. §
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`42.104(b)(5). Second, ANM’s Reply disclosed new arguments for the first time—
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`related to (1) pneumatic devices working faster and staying inflated longer when
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`seals are used, (2) noise reduction by recirculation in relation to Grant, (3) flow
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`control valve elimination in relation to Dye, and (4) advantages of a snap fit on a
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`valve enclosure assembly in relation to Goodwin and Ramacier, (compare Ex. 1069
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`¶¶15, 32, 36, 38 with Paper 2 & Ex. 1005)—which must be excluded under FRE
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`401-403 as unduly prejudicial. See Intelligent Bio-Sys., Inc. v. Illumina Cambridge
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`Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (finding Board correct to exclude
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`arguments not properly made in Petition and made for first time in Reply).
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`Accordingly, and because ANM failed to cure PO’s Objections, (Paper 70 at 3-4),
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`the above referenced portions of Exhibit 1069 should be excluded.
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`Exhibits 1077 and 1078, and any reference thereto, should also be excluded
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`because they are irrelevant, unduly prejudicial, and contain hearsay under FRE 401-
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`403, 801-802. These exhibits consist of a deposition transcript and a deposition
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`exhibit of a third-party, Eugene Duval, conducted in a different proceeding, which
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`ANM offers for the truth of the matter asserted—i.e., for the purported disclosures
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`in a prior art reference. (See Ex. 1069 ¶¶5, 13, 24-25 (citing Exs. 1077-78).) Further,
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`these exhibits contain highlighting performed by an unknown person, (see Ex. 1077
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`at 19-20, 61-94, 109-14), and handwritten notations, (see Ex. 1078), both of which
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`constitute out-of-court statements and hearsay-within-hearsay. See FRE 805. Thus,
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`these exhibits are improper and inadmissible hearsay, as Duval has not been shown
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`to be unavailable and did not submit a declaration or sit for a deposition in this
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`proceeding (nor did ANM even ask for one). See Bailey v. United States, No. 122-
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`77, 1997 WL 759654, at *10 (Fed. Cl. Sept. 30, 1997), aff’d sub nom. Charron v.
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`United States, 200 F.3d 785 (Fed. Cir. 1999); see also FRE 403, 801-802, 804.
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`Accordingly, and because ANM failed to cure PO’s Objections, (Paper 70 at 3-7,
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`21-23), Exhibits 1077-1078 and paragraphs 5, 13, and 24-25 of Exhibit 1069 that
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`reference them should be excluded.
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`B.
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`Portions of Craig Miller Jr.’s Declaration and Associated Exhibits
`Should Be Excluded.
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`Exhibit 1072, a Miller Declaration relied upon in ANM’s Reply, (Paper 69),
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`should be excluded for multiple, independently-sufficient reasons.
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`First, paragraphs 3-16 of Exhibit 1072 should be excluded because Miller
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`lacks the personal knowledge of the matters set forth therein as required under FRE
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`602. Miller is a lay witness and thus can only testify on matters for which evidence
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`supports a finding of his personal knowledge. Miller oversteps as follows:
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`• Although Miller purports to have personal knowledge regarding an entity
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`named Comfortaire and its retailers, he fails to provide any basis for such
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`personal knowledge or factual support for his statements. (See Ex. 1072 ¶15.)
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`• Miller testifies regarding PO’s alleged intentions and statements; however, he
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`provides no evidence to support that PO’s intentions and statements are within
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`his personal knowledge. (See id. ¶¶9, 13, 15.)
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`• Miller offers unsupported opinions outside his personal knowledge regarding
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`whether certain ANM controllers include accused source code. (See id. ¶¶3,
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`7.) Indeed, he admits he has “no information” regarding which versions of
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`source code were used in different ANM controllers and does not contend (let
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`alone provide evidence sufficient to show personal knowledge) that there are
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`any material differences between Version 1.8 and any of version of code in
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`Versions 1.5-1.8. (See id.; see also Ex. 2097 at 36:2-4, 38:5-14, 38:21-39:7.)
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`• Miller fails to articulate the requisite personal knowledge to support his
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`conclusory statements on ANM’s sales, customers, advertising, product
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`features and operations, and supply issues. (See Ex. 1072 ¶¶3, 5-8, 10-16; Ex.
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`2097 at 76:24-80:4, 88:10-89:9 (Miller testifying others, and not himself, have
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`personal knowledge about exhibits and events).)
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`Accordingly, Miller lacks personal knowledge regarding the matters expressed in
`
`paragraphs 3-16 of Exhibit 1072, and they should be excluded. See FRE 602.
`
`Certain of Miller’s opinions should also be excluded because they constitute
`
`improper and unsupported expert opinions by a lay witness. Miller is not qualified
`
`as an expert, nor does he purport to be one. See FRE 702. But even if he were, he
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`fails to identify the underlying facts, data, documents, or information supporting his
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`opinions and discloses no proper basis for them. For example, Miller provides
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`unsupported and self-serving opinions regarding the effects of various factors on
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`ANM’s sales, including a purported correlation between ANM’s sales and
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`advertising, (Ex. 1072 ¶¶12, 18), impact on sales from ANM’s supposed building
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`awareness and preparation for controlled growth, (id. ¶6), Degen’s calculations and
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`alleged failure to consider important factors, (id. ¶¶5-7, 10-11, 14-16), PO’s
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`purported intentions, (id. ¶¶9, 13), reliability differences between Providence and
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`Arco products, (id. ¶8), and speed and performance of pressure adjustments in
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`ANM’s products between different source code versions, (id. ¶16). Miller does not
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`disclose any underlying basis or evidence to support these conclusory opinions (let
`
`alone provide evidence of personal knowledge). Because there is no basis for Miller
`
`to offer these expert opinions, this testimony should be excluded as improper and as
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`irrelevant, misleading, confusing, and unfairly prejudicial. See FRE 401-403, 702-
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`703, 705.
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`Portions of Exhibit 1072 should also be excluded because Miller relies on
`
`several out-of-court statements to prove the truth of those statements. (See Ex. 1072
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`¶¶9, 12 (relying on purported third-party statements of Dires, LLC, Google, and
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`others), 10, 13 (selective statements from orders in different proceedings), 12-13
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`(third-party statements regarding sales), 13, 16-17 (statements made by consumers,
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`YouTube, and Dires).) Each of these statements, for which no hearsay exemption
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`applies (or has been offered by ANM), should be excluded. See FRE 801-802, 805.
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`Accordingly, and as ANM failed to cure PO’s Objections, (Paper 70 at 12-20), at
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`least paragraphs 3-18 of Exhibit 1072 should be excluded for all the reasons above.
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`Additionally, two exhibits referenced in Miller’s declaration, Exhibits 1074
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`and 1075, should be excluded. First, Exhibit 1074 contains out-of-court statements
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`prepared by third-party Dires, not Miller, and includes Dires’ misleading and
`
`prejudicial recitation of purported statements of a third party search engine. (See Ex.
`
`1074; Ex. 2097 at 76:24-77:8.) ANM offers these statements for the truth of the
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`matter asserted—i.e.,
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`that Google or others disapproved or suspended
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`advertisements on certain dates in time because of alleged PO actions. (See, e.g., id.;
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`Ex. 1072 ¶9.) Therefore, Exhibit 1074 contains multiple levels of impermissible
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`hearsay to which no exception applies. See FRE 801-802, 805. Second, Exhibit 1075
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`contains other out-of-court statements of third-party Dires, which ANM again offers
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`for the truth—i.e., to prove Dires’ purported monthly advertising expenses. Despite
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`PO seeking information related to costs of sales, (see Ex. 1040 at 16), ANM resisted
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`such discovery until it self-servingly produced only one third-party’s information,
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`making this information misleading and prejudicial to PO. Accordingly, and because
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`ANM failed to cure PO’s Objections, (Paper 70 at 18-20), Exhibits 1074-1075
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`should be excluded pursuant to FRE 401-403, 801-802, and 805.
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`C.
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`Portions of Matthew R. Lynde’s Declaration Should Be Excluded.
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`Exhibit 1071, the Lynde declaration cited in ANM’s Reply, (Paper 69), should
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`be excluded under FRE 401-403, 801-802, 702-703 and 705. First, portions of
`
`Lynde’s declaration that disclose new arguments and information for the first time
`
`on Reply should be excluded under FRE 401-403 as unduly prejudicial. See
`
`Intelligent Bio-Sys., 821 F.3d at 1369. Lynde claims that Degen both under and over
`
`counted sales and did not consider supply or advertising issues, e.g., by claiming
`
`period 1 sales should be increased based on an accounting change and sales in period
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`4 should be decreased because, contrary to ANM’s sales data, the products
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`purportedly do not practice the invention. (Ex. 1071 ¶¶36, 39, 44-46 (including Fig.
`
`3), 48, 51 63.) This information was not previously provided to PO, is
`
`uncorroborated, and unable to be accounted for based on the data presented. (See,
`
`e.g., Ex. 2097 at 34:15-23, 39:23-40:15, 59:6-12, 97:7-10; Ex. 2098 at 57:16-24
`
`(admitting only Miller, not data, suggests sales modification in period 1), 175:4-
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`176:14 (admitting only Miller, not data, suggests sales modification in period 4).)
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`Further, Miller admitted Degen properly analyzed and counted the data as provided.
`
`(See Ex. 2097 at 24:4-28:13, 30:16-36:4, 38:5-40:15, 53:8-19, 59:6-12, 95:8-97:10.)
`
`Second, Lynde does not cite to or disclose the underlying facts or data to
`
`support his opinions. (See Ex. 1071 ¶¶19-63.) Rather, he admits his opinions rely
`
`almost entirely on Exhibit 1072 and discussions with Miller and that he did not verify
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`Case IPR2019-00514
`Patent 5,904,172
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`nor possess personal knowledge about them. (See, e.g., Ex. 2098 at 22:11-27:18,
`
`32:23-33:13, 34:5-35:6, 98:3-99:19, 144:2-17.) Thus, rather than form his own
`
`opinion based on the facts, Lynde consistently relies on out-of-court conversations
`
`with Miller and simply adopts or parrots Miller’s inadmissible opinions. (See, e.g.,
`
`Ex. 1071 ¶¶19, 36, 39-40, 44-46, 48, 50-52, 63; Ex. 2098 at 26:4-17, 52:9-59:2
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`(relying only on self-serving and uncorroborated statements from Miller), 97:16-
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`99:19 (using unauthenticated documents prepared by a third-party to corroborate
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`Miller’s statements), 99:21-108:14 (ignoring data showing increased sales despite
`
`less advertising, admitting no analysis was performed, but accepting Miller’s
`
`understanding regarding relationship between sales and advertising), 119:2-120:25
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`(admitting no evidence that reliability or suppliers affected sales but accepting
`
`Miller’s statements to the contrary), 141:14-142:20 (admitting opinion that
`
`advertising may be just as or more important than product design was based on
`
`Miller’s representations), 175:4-176:14 (admitting specific sales cannot be gleaned
`
`from data and that Lynde is relying on Miller’s statements).)
`
`Third, Lynde’s deposition testimony contradicts his conclusory opinions that
`
`supply and advertising affected sales. (See Ex. 2098 at 118:11-120:25 (no evidence
`
`supply or suppliers had impact on sales), 107:21-108:14 (no analysis of advertising
`
`effects on sales), 142:12-23 (no idea whether ad spend meant more ads were placed),
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`Patent 5,904,172
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`104:2-15 (no seasonality analysis performed and increases and decreases in sales are
`
`“fluctuation[s] without meaning”).)
`
`Because Lynde’s testimony introduces new arguments, relies on deficient
`
`evidence, (see supra Section III(B)), does not otherwise disclose or verify the
`
`sources of information upon which he relied, and contradicts itself, Lynde’s analysis
`
`is left without any basis in fact or supporting data, rendering his opinions misleading
`
`and unduly prejudicial and thus excludable. See FRE 401-403, 702-703, 705, 801-
`
`802, and 805. Accordingly, and because ANM failed to cure PO’s Objections, (Paper
`
`70 at 7-12), paragraphs 19, 25-28, 36, 39-40, 44-48, 50-52, 56, 60, and 63 of Exhibit
`
`1071 should be excluded.
`
`D. An International Trade Commission Order Should Be Excluded.
`
`Exhibit 1079 is an Order issued only because the ‘172 Patent expired. It did
`
`not change the ITC’s findings of validity and infringement by ANM, address the
`
`merits of such findings, or suggest they should be overturned. ANM’s reliance on
`
`Exhibit 1079, (see Paper 69 at 25), to which PO objected, (Paper 51 at 23), should
`
`be excluded as irrelevant, misleading, unduly prejudicial, and confusing. See FRE
`
`401-403.
`
`E.
`
`Portions of Certain Deposition Transcripts Should Be Excluded.
`
`During part of Giachetti’s deposition upon which ANM relies, (Paper 69 at 8,
`
`12, 14), ANM’s counsel engaged, over objection, in an extensive line of leading
`
`14
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`Case IPR2019-00514
`Patent 5,904,172
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`questioning regarding the Shafer and Gifft patents, (Ex. 2068 at 308:25-324:24),
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`which also included eliciting new contradictory opinions not set forth in Giachetti’s
`
`opening report, (id. at 308:19-309:5, 312:5-314:15), and testimony outside the scope
`
`of the cross-examination, (id. at 323:12-324:24). This was improper and the entirety
`
`of this line of leading questioning should be excluded. See FRE 611(b)-(c).
`
`During part of Mahoney’s cited deposition, (Paper 69 at 27), ANM’s counsel
`
`engaged, over objection, in questioning related to Mahoney’s experience in
`
`designing neonatal intensive care ventilators, (Ex. 1068 at 16:19-18:8). Because
`
`there has been no showing of similar requisite skill or design incentives to adjustable
`
`air beds in 1997, this testimony is irrelevant, misleading, confusing, and more
`
`prejudicial than probative and should be excluded. See FRE 401-403.
`
`PO objected to ANM’s filing and use of Messner depositions, Exhibits 1063-
`
`1064 taken in different proceedings, IPR2019-00497, -00500. (Paper 70 at 1-2;
`
`Paper 69 at 5 (citing Ex. 1063).) Because Messner was available and could have
`
`answered ANM’s questions during his deposition in this proceeding (which occurred
`
`later in time), this testimony should be excluded. See Bailey, 1997 WL 759654, at
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`*10. Further, because Exhibit 1064 was never relied upon, it should be excluded.
`
`CONCLUSION
`
`For the reasons set forth above and articulated in PO’s Objections, PO
`
`respectfully requests that the Board exclude the Exhibits listed herein.
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`Case IPR2019-00514
`Patent 5,904,172
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`Dated: April 29, 2020
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`
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`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
`
`Steven A. Moore (Reg. No. 55,462)
`ZHONG LUN
`1717 Kettner Boulevard, Suite 200
`San Diego, CA 92101
`Telephone: (323) 930-5690
`Facsimile: (323) 930-5693
`stevemoore@zhonglun.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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`Case IPR2019-00514
`Patent 5,904,172
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`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR § 42.6(e), the undersigned hereby certifies that on April
`
`29, 2020, the foregoing Patent Owner’s Motion to Exclude Petitioner’s Evidence
`
`Pursuant to 37 C.F.R. § 42.64(c) was served via e-mail, as authorized by the
`
`Petitioner, at 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: April 29, 2020
`
`
`
`
`
`/s/Luke Toft
`Luke Toft (Reg. No. 75, 311)
`Counsel for Patent Owner
`
`
`
`
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`17
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