`
`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. IPR2019-00514
`
`Patent No. 5,904,172
`____________
`
`
`
`
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`
`
`
`14706342v.2
`
`
`
`Case No. IPR2019-00514
`Patent No. 5,904,172
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION AND STATEMENT OF RELIEF ..................................... 1
`
`II. Exhibit 2041 – Declaration of John Abraham ............................................... 1
`
`A. Legal Standard for Admissibility of Expert Opinions ................................ 1
`
`B. Dr. Abraham’s Declaration Falls Short of the Reliability and Disclosure
`Required for Admission ..................................................................................... 2
`
`III. Exhibits 2043, 2044, 2045, 2046, 2047, 2048, 2049, 2050, 2051, 2052, and
`2053 – Infringement Contentions Related to Third Party Air Controllers ............... 3
`
`IV. Exhibit 2054 – Declaration of George Edwards ............................................ 4
`
`V. Exhibit 2055 – Declaration of Carl Degen .................................................... 7
`
`A. Expert Evidence Regarding Commercial Success Requires Controlling for
`other Factors that May Explain Sales ................................................................. 8
`
`B. Mr. Degen Did Not Control for Factors Related to Commercial Success ... 8
`
`VI. Exhibit 2058 – Declaration of Elizabeth Patton ...........................................10
`
`VII. Exhibit 2059 – Trial Transcript from Select Comfort Corporation v. John
`Baxter, et al., Case No. 12-CV-02899-DWF-SER (“the Baxter Case”). ................12
`
`VIII. Ex. 2060 – Dires LLC Emails ...................................................................13
`
`IX. Ex. 2061 – Dires LLC Emails ......................................................................13
`
`X. Exhibits 2070, 2071, 2072, 2073, 2074, and 2075 – PO’s District Court
`Infringement Contentions .....................................................................................14
`
`XI. Exhibit 2084 – Optimus Emails ...................................................................15
`
`
`
`
`
`
`i
`
`14706342v.2
`
`
`
`Case No. IPR2019-00514
`Patent No. 5,904,172
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Federal Cases
`
`Anderson v. United States,
`417 U.S. 211 (1974) ......................................................................................... 12
`
`Apple Inc. v. INVT SPE LLC,
`IPR2018-01476, 2020 WL 1808193 (Apr. 8, 2020) ........................................... 5
`
`Apple, Inc. v. Samsung Elec. Co. Ltd.,
`839 F.3d 1034 (Fed. Cir. 2016) .......................................................................... 9
`
`Bancorporation v. Kemper Securities Group, Inc.,
`58 F.3d 1306 (8th Cir. 1995) ........................................................................ 4, 14
`
`Cable Elec. Products, Inc. v. Genmark, Inc.,
`770 F.2d 1015 (Fed. Cir. 1985) .......................................................................... 8
`
`Elder v. Tanner,
`205 F.R.D. 190 (E.D. Tex. 2001) ................................................................... 3, 6
`
`Geo. M. Martin Co. v. Alliance Machine Systems Intern. LLC,
`618 F.3d 1294 (Fed. Cir. 2010) .......................................................................... 8
`
`Invitrogen Corp. v. Clontech Labs., Inc.,
`429 F.3d 1052 (Fed. Cir. 2005) .......................................................................... 3
`
`McManaway v. KBR, Inc.,
`852 F.3d 444 (5th Cir. 2017) .............................................................................. 8
`
`Rembrandt Vision Tech., L.P. v. Johnson & Johnson Vision Care,
`Inc.,
`725 F.3d 1377 (Fed. Cir. 2013) .......................................................................... 7
`
`Ritchie v. Vast Resources, Inc.,
`563 F.3d 1334 (Fed. Cir. 2009) .......................................................................... 9
`
`Sheehan v. Daily Racing Form, Inc.,
`104 F.3d 940 (7th Cir. 1997) .............................................................................. 3
`
`ii
`
`14706342v.2
`
`
`
`Case No. IPR2019-00514
`Patent No. 5,904,172
`
`Teamsters, Chauffeurs, Warehousemen & Helpers, Local Union No.
`182 v. New York State Teamsters Council Health & Hosp. Fund.,
`909 F. Supp. 102 (N.D.N.Y. 1995) .................................................................. 12
`
`TNS Media Research, LLC v. Tivo Research and Analytics, Inc.,
`629 F. App’x 916 (Fed. Cir. 2015) ..................................................................... 9
`
`United States v. Velarde–Gomez,
`224 F.3d 1062 (9th Cir.2000) ........................................................................... 14
`
`Other Authorities
`
`3D-Matrix, Ltd. v. Menicon Co., Ltd.,
`No. IPR2014-00398, 2014 WL 3851279 (PTAB Aug. 1, 2014) ......................... 2
`
`
`
`iii
`
`14706342v.2
`
`
`
`Case No. IPR2019-00514
`Patent No. 5,904,172
`
`I.
`
`INTRODUCTION AND STATEMENT OF RELIEF
`
`Pursuant to the Board’s rules, Petitioner American National Manufacturing
`
`Inc. (“ANM”) moves to exclude the following exhibits submitted by Patent Owner
`
`(“PO”) in support of its Patent Owner Response (Papers 46-47; “POR”) and Patent
`
`Owner Surreply (Paper 78; “POS”): Ex. 2041, 2043, 2044, 2045, 2046, 2047, 2048,
`
`2049, 2050, 2051, 2052, 2053, 2054, 2055, 2058, 2059, 2060, 2061, 2070, 2071,
`
`2072, 2073, 2074, 2075, and 2084 under the Federal Rules of Evidence (“FRE”).
`
`More detailed reasons are set forth below.
`
`II. Exhibit 2041 – Declaration of John Abraham
`
`PO relies on the declaration of John Abraham to assert nexus for secondary
`
`indicia of nonobviousness, namely, commercial success and copying. POR at 59-60,
`
`63-67; POS at 12, 22-24. ANM duly objected to the admission of his declaration
`
`under FRE 702 and 37 C.F.R. § 42.65(a), as Abraham failed to adequately disclose
`
`the basis for his opinions and due to the unreliability of his methods. Petitioner’s
`
`Objections to Patent Owner’s Evidence, Paper 51 (“OBE”) at 5-9. Thus, the
`
`evidence should be excluded.
`
`A. Legal Standard for Admissibility of Expert Opinions
`
`FRE 702 permits expert witness testimony if: “(a) the expert’s scientific,
`
`technical, or other specialized knowledge will help the trier of fact to understand the
`
`evidence or determine a fact in issue; (b) the testimony is based on sufficient facts
`
`1
`
`14706342v.2
`
`
`
`Case No. IPR2019-00514
`Patent No. 5,904,172
`
`or data; (c) the testimony is the product of reliable principles and methods; and (d)
`
`the expert has reliably applied the principles and methods to the facts of the case.”
`
`Expert opinion testimony in inter partes review proceedings is further governed by
`
`37 C.F.R. § 42.65(a), which requires that a tendered expert must “disclose the
`
`underlying facts or data on which the opinion is based”; otherwise, the opinion “is
`
`entitled to little or no weight.” See also, e.g., 3D-Matrix, Ltd. v. Menicon Co., Ltd.,
`
`No. IPR2014-00398, 2014 WL 3851279, *5–*6 (PTAB Aug. 1, 2014). An expert
`
`report must disclose the expert’s opinions and reasons for them. FED. PROC.,
`
`LAWYERS ED., § 26:48 (West 2020) (citation omitted). The report cannot be
`
`“sketchy, vague, or preliminary in nature.” Id. If it is, it must be excluded.
`
`B. Dr. Abraham’s Declaration Falls Short of the Reliability and
`Disclosure Required for Admission
`
`Dr. Abraham (PO’s expert for mechanical aspects) generally opines that
`
`certain ANM and Sizewise products practice claims of the patent-at-issue. Ex. 2041,
`
`¶¶ 28–31. He also generally opines certain products of PO practice claims of the
`
`patent-at-issue. Id. at ¶ 32. However, Dr. Abraham admittedly never in anyway
`
`operated, used, tested or even fully assembled a single pump and air mattress in
`
`relation to his work in this proceeding. Ex. 1054 at 29:7–31:5 (“I did not [perform
`
`any testing as part of my work for these IPRs]. . . . I didn’t turn any pumps on and
`
`I didn't operate them. For example, I didn’t inflate any beds with any of the pumps.
`
`2
`
`14706342v.2
`
`
`
`Case No. IPR2019-00514
`Patent No. 5,904,172
`
`. . . I did not fully assemble a bed.”). Simply put, that is insufficient and grounds for
`
`exclusion. See, e.g., Sheehan v. Daily Racing Form, Inc., 104 F.3d 940, 942 (7th Cir.
`
`1997) (failure to employ the same level of intellectual rigor as in professional work
`
`outside paid litigation is grounds for exclusion).
`
`Moreover, “attempt[ing] to substitute attorney argument for expert testimony”
`
`is improper. Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052, 1068–69 (Fed.
`
`Cir. 2005). Dr. Abraham’s opinions are predicated on PO’s infringement
`
`contentions from the District Court proceedings—which were prepared by counsel
`
`and merely adopted by Dr. Abraham and claim charts related to certain third party
`
`pumps. Ex. 1054 at 107:21–108:17 (stating contentions drafted by counsel). An
`
`expert reviewing and adopting counsel’s arguments is not a “reliable method” under
`
`FRE 702 and certainly does not show the expert’s “thought processes” as required
`
`under the Board’s rules. See, e.g., Elder v. Tanner, 205 F.R.D. 190, 194 (E.D. Tex.
`
`2001).
`
`III. Exhibits 2043, 2044, 2045, 2046, 2047, 2048, 2049, 2050, 2051, 2052, and
`2053 – Infringement Contentions Related to Third Party Air Controllers
`
`PO relies indirectly on several attorney drafted claim charts which purport to
`
`map the claims of the ‘172 Patent to 11 third-party air controllers in an effort to
`
`assert commercial success. POR at 67 (citing to Ex. 2041, ¶¶47-49 which in turn
`
`exclusively cites these exhibits). ANM duly objected to each and every one of these
`
`3
`
`14706342v.2
`
`
`
`Case No. IPR2019-00514
`Patent No. 5,904,172
`
`exhibits as irrelevant and improper evidence under FRE 401 and 403, hearsay under
`
`FRE 802, and a violation of the Board’s prohibition on incorporation by reference
`
`under 37 CFR § 42.6(a)(3). OBE at 10-31.
`
`Attorney arguments, like these claim charts, are not competent evidence under
`
`FRE 401. Bancorporation v. Kemper Securities Group, Inc., 58 F.3d 1306, 1312 n.
`
`5 (8th Cir. 1995) (Statements of counsel are not evidence and do not create issues of
`
`fact).
`
`The infringement contentions are further hearsay under FRE 802 as they are
`
`the self-serving statements of PO itself. No exception to the hearsay rule applies.
`
`Finally, the Board should view the use of these drafted infringement
`
`contentions as a circumvention on the Board’s page and word limitation on attorney
`
`argument and prohibition on incorporation by reference. 37 CFR § 42.6(a)(3). The
`
`POR makes the oblique statement that there are 11 controllers that practice the 172
`
`Patent, and then indirectly reference these claims charts. In effect, dropping
`
`hundreds of pages of attorney argument into this proceeding while only taking up a
`
`scant few lines in PO’s substantive filings.
`
`IV. Exhibit 2054 – Declaration of George Edwards
`
`PO relies on the declaration of George Edwards. POR at 63-64, 66; POS at 22
`
`and 24. ANM duly objected to the admission of Edwards’ Declaration under FRE
`
`4
`
`14706342v.2
`
`
`
`Case No. IPR2019-00514
`Patent No. 5,904,172
`
`702 and 73 C.F.R. § 42.65(a) as he did not disclose the underlying basis for his
`
`opinions and did not use reliable methods. OBE at 32-36. Thus, this evidence should
`
`be excluded.
`
`Dr. Edwards, PO’s software expert, generally opines that certain ANM and
`
`Sizewise products practice claims of the patent-at-issue and that software of such
`
`ANM products is substantially similar to certain software of PO. See Ex. 2054 at
`
`12–13. PO relies on these opinions to assert nexus for secondary indicia of
`
`nonobviousness, namely, commercial success and copying. POR at 63–66.
`
` Dr. Edwards relies on his inspection of PO’s own source code to opine
`
`similarity with ANM’s source code. Ex. 2054, ¶ 46; see also Ex. 1056 at 351:20–
`
`354:2. However, PO chose not produce its own source code in this proceeding,
`
`although it was free to do so. Without that source code, one cannot conduct a proper
`
`analysis. See Ex. 1056 at 356:6–14 (analogously, Dr. Edwards admitting without
`
`ANM code he could not have provided claim charts). This alone is grounds for
`
`exclusion. See, e.g., Apple Inc. v. INVT SPE LLC, IPR2018-01476, 2020 WL
`
`1808193, *16 (Apr. 8, 2020) (citing 37 C.F.R. § 42.65) (giving little to no weight,
`
`“even if ‘unrebutted’,” to evidence of secondary indicia because testimony was
`
`“only conclusory statement that was not supported by any record evidence”).
`
`5
`
`14706342v.2
`
`
`
`Case No. IPR2019-00514
`Patent No. 5,904,172
`
`Even if PO had produced its code in this proceeding, Dr. Edwards provides
`
`no analysis to support his conclusory opinion related to PO’s own source code. See
`
`Ex. 1056 at 354:16–356:5 (Dr. Edwards stating that, for PO’s products or code, he
`
`did not provide claim charts, identify source code files, or identify relevant function
`
`or variable names). The entirety of Dr. Edwards “analysis” of PO’s products and
`
`code appears to be in ¶¶ 33 and 34 of his Declaration. See Ex. 1056 at 354:3–355:1.
`
`Those two paragraphs are entirely conclusory and fail to adequately disclose the
`
`basis for his opinions. See, e.g., Elder v. Tanner, 205 F.R.D. 190, 194 (E.D. Tex.
`
`2001) (excluding expert who merely “state[d] an ultimate opinion without some
`
`discussion of their thought process.”).
`
`Similarly, the record of this proceeding does not contain source code related
`
`to ANM and Sizewise products. Instead of relying on direct evidence, Dr. Edwards’s
`
`opinions are based on infringement contentions (prepared by counsel (see § II.B.
`
`supra)), which contain only conclusory identification of certain function names and
`
`variable names and without explanation of how lengthy functions or specific
`
`variable in the code meet various claim elements. See, e.g., Ex. 1055 at 283:18–
`
`284:6 (Dr. Edwards stating he “wouldn’t typically provide an analysis of my thought
`
`process”). The
`
`information Dr. Edwards provides
`
`(including unredacted
`
`infringement contentions) is insufficient to permit meaningful cross-examination.
`
`6
`
`14706342v.2
`
`
`
`Case No. IPR2019-00514
`Patent No. 5,904,172
`
`See, e.g., Ex. 1055 at 263:10–269:6 (Dr. Edwards unable to definitely state whether
`
`identified “deflate factor” variable was modified as required by claim or was a static
`
`variable and waffling when asked if his declaration with unredacted contentions
`
`provided sufficient information to answer). This is grounds for exclusion.
`
`Rembrandt Vision Tech., L.P. v. Johnson & Johnson Vision Care, Inc., 725 F.3d
`
`1377, 1381–82 (Fed. Cir. 2013). Dr. Edwards cannot hide behind the District Court
`
`protective order as an excuse for failing to explain the basis for his opinions. While
`
`that Order prohibited quoting the code verbatim, nothing prevented him from
`
`describing the code’s operation or his underlying thought process.
`
`V. Exhibit 2055 – Declaration of Carl Degen
`
`PO relies on the declaration of Carl Degen, its economics expert, in support
`
`of the purported commercial success of the patent. POR at 66; POS 24. ANM duly
`
`objected to the admission of Deegan’s testimony under FRE 702 and 37 C.F.R. §
`
`42.65(a) for his failure to consider other causes (e.g. marketing) for increase or
`
`decreases of sales of ANM’s products. OBE at 36-8.
`
`Mr. Degen is an economist. He opines that ANM recognized commercial
`
`success, measured by sales of certain component parts to its mattress systems. A
`
`finding of commercial success based on sales requires proof that the patents were
`
`the cause of the sales. However, Mr. Degen avoided the recognized methods of
`
`7
`
`14706342v.2
`
`
`
`Case No. IPR2019-00514
`Patent No. 5,904,172
`
`causation analysis. He admits this deficiency in his work. Mr. Degen’s deficient
`
`analysis resulted in opinions that are unreliable.
`
`A. Expert Evidence Regarding Commercial Success Requires
`Controlling for other Factors that May Explain Sales
`
`Commercial success, as an indication of non-obviousness, requires proof that
`
`“success of the product is due to the claimed invention”. Geo. M. Martin Co. v.
`
`Alliance Machine Systems Intern. LLC, 618 F.3d 1294, 1304 (Fed. Cir. 2010).
`
`“Other economic and commercial factors unrelated to…the patented subject matter”
`
`must be identified and measured so that the effect of the invention can be understood.
`
`Cable Elec. Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 1027 (Fed. Cir. 1985).
`
`See, McManaway v. KBR, Inc., 852 F.3d 444, 454 (5th Cir. 2017) (“Other plausible
`
`causes of the injury or condition must be excluded with reasonable certainty”). The
`
`failure to do so renders an opinion inadmissible under FRE 702.
`
`B. Mr. Degen Did Not Control for Factors Related to Commercial
`Success
`
`Mr. Degen opined that Petitioner’s sales of component parts showed
`
`commercial success but no part of his analysis demonstrated that use of PO’s patents
`
`were a cause of the sales. Mr. Degen’s methodology merely was to compare
`
`Petitioner’s average unit sales of selected component parts in four time-periods that
`
`he constructed. Ex. 2055 ¶ 19-20, 26. Mr. Degen concluded that the average unit
`
`sales of the parts increased, at a statistically significant rate, in those time-periods
`
`8
`
`14706342v.2
`
`
`
`Case No. IPR2019-00514
`Patent No. 5,904,172
`
`when the parts allegedly incorporated the features of the three patents at issue in
`
`these proceedings (comparison of time-period 1 (base period) with time-period 2 and
`
`comparison of time-period 3 with time-period 4) and increased at a rate that was not
`
`statistically significant in a time-period when the component parts allegedly
`
`incorporated the features of one of the patents (comparison of time-period 2 with
`
`time-period 3). (Ex. 2055 ¶ 21-25). Mr. Degen also compared “adoption rates”. This
`
`is a simple ratio of the average sales of some of the component parts divided by
`
`average sales of air mattresses. This ratio showed that sales of mattresses are nearly
`
`equivalent to sales of the accused component parts. Ex. 2055 ¶ 26, 29.
`
`Mr. Degen’s unit sales and adoption rate analyses are mere time-period
`
`comparisons and, as a matter of law, do not demonstrate causation. TNS Media
`
`Research, LLC v. Tivo Research and Analytics, Inc., 629 F. App'x 916, 935 (Fed.
`
`Cir. 2015). “The commercial success of a product can have many causes unrelated
`
`to patentable inventiveness.” Ritchie v. Vast Resources, Inc., 563 F.3d 1334, 1336
`
`(Fed. Cir. 2009). For example, advertising and marketing may be the cause of
`
`commercial success. 2 Donald S. Chisum, Chisum on Patents, Section 5.05
`
`[2][f][v][B] (Mathew Bender). Similarly, consumer preferences and experiences
`
`may be the cause of commercial success. Apple, Inc. v. Samsung Elec. Co. Ltd., 839
`
`F.3d 1034, 1055 (Fed. Cir. 2016). Mr. Degen acknowledged the potential that these,
`
`9
`
`14706342v.2
`
`
`
`Case No. IPR2019-00514
`Patent No. 5,904,172
`
`and other factors, could be the cause of ANM’s unit sales. Ex. 1067, 105:21-109:1.
`
`He acknowledged that such data could explain some or all of the difference in the
`
`sales he examined. Id., 108:16-109:1. Mr. Degen said a regression analysis might
`
`“sort out which factors were showing a causal relationship”. Id., 106:19-107:1. But
`
`Mr. Degen made no regression or other analysis to determine whether the patents
`
`caused all or any part of Petitioner’s sales. Id., 90:7-16. These admissions
`
`demonstrate that his opinions are not reliable.1
`
`VI. Exhibit 2058 – Declaration of Elizabeth Patton
`
`PO relies on a declaration from its counsel of record in this matter, Elizabeth
`
`Patton. POR at 59-60, and 63. ANM duly objected under FRE 601 and 902 as an
`
`inadmissible lay opinion and under the prohibition of on acting as both a lawyer and
`
`trial advocate under 31 C.F.R. 11.307. OBE at 41-45.
`
`Ms. Patton’s statements and opinions about Petitioner’s unit sales are
`
`inadmissible lay opinions under FRE 601 and 701. Ms. Patton provides “estimates”,
`
`
`1 Mr. Degen’s opinions also fail the test of common sense. Petitioner and its affiliates
`
`did not advertise the patents in any way and the patents are not design features a
`
`consumer could notice (Ex. 1055, ¶56-58). There is no evidence the patents caused
`
`the sales.
`
`10
`
`14706342v.2
`
`
`
`Case No. IPR2019-00514
`Patent No. 5,904,172
`
`“understandings” and “beliefs” about the unit sales. Ms. Patton’s analysis
`
`commenced with her “awareness” of a non-compete document which is missing the
`
`essential pages regarding permitted activities (Ex. 2058. ¶ 8 referencing Ex. 2037),
`
`continued through her “understandings” of websites of ANM and an affiliate, Dires,
`
`LLC (Id., ¶ 11-14), leading to her “estimates of how many retailers currently sell
`
`ANM’s Instant Comfort Products” (Id., ¶ 16). From these steps, Ms. Patton states
`
`her conclusion as “I believe [Petitioner experienced] a drastic increase from the
`
`limited of number of customers” in 2011 and “this demonstrates the success” of
`
`Petitioner. Ex. 2058, ¶ 16. Rule 602 requires facts to be presented by persons with
`
`first-hand knowledge, whereas Ms. Patton seeks to testify about statements and
`
`things made by others. Rule 701 requires that lay opinions be based on the witnesses
`
`own professional experiences, whereas Ms. Patton seeks to give her opinion on a
`
`matter that is not in her experience as a lawyer.
`
`Ms. Patton willfully disregards 37 C.F.R. 11.307 by submitting her
`
`declaration as a fact witness regarding commercial success, a contested issue. The
`
`PTAB rule regarding lawyers as witnesses is the same as Model Rule of Professional
`
`Conduct 3.7. Commentary by the American Bar Association explains that Rule 3.7
`
`protects the tribunal from being misled. The tribunal should not be forced to pick
`
`through testimony, attempting to separate highly crafted advocacy from actual fact,
`
`11
`
`14706342v.2
`
`
`
`Case No. IPR2019-00514
`Patent No. 5,904,172
`
`MRPC 3.7 Comment ¶ [2-3]. The Rule also protects the lawyer herself from the
`
`inherent conflict between the roles of lawyer and witness. Id. at ¶ [6]. When
`
`appearing as a witness, the lawyer faces the temptation to advocate because that is
`
`her training and it is the reason she was hired by the client. Rule 11.307 reflects
`
`well-reasoned policy of PTAB. It should be followed here.
`
`VII. Exhibit 2059 – Trial Transcript from Select Comfort Corporation v. John
`Baxter, et al., Case No. 12-CV-02899-DWF-SER (“the Baxter Case”).
`
`PO extensively relies on Exhibit 2059, a trial transcript from the Baxter case
`
`with testimony from Craig Miller. POR at 59-62; POS at 21. ANM duly objected
`
`to this exhibit as hearsay under FRE 802, a lack of foundation, and relevance under
`
`FRE 401 and 403. OBE at 45-6.
`
`Trial transcripts are generally hearsay. Anderson v. United States, 417 U.S.
`
`211, 219–20 (1974). ANM was not a party to the Baxter case, rather, PO sued Dires,
`
`LLC and its members including Mr. Miller in their personal capacities. As Mr.
`
`Miller was not appearing or testifying on behalf of ANM in that proceeding, the
`
`testimony is hearsay and inadmissible against ANM. See Teamsters, Chauffeurs,
`
`Warehousemen & Helpers, Local Union No. 182 v. New York State Teamsters
`
`Council Health & Hosp. Fund., 909 F. Supp. 102, 110 (N.D.N.Y. 1995).
`
`The trial transcript is also irrelevant under FRE 401 as that trademark case did
`
`not involve the patent-at-issue here and the transcript has no substantive information
`
`12
`
`14706342v.2
`
`
`
`Case No. IPR2019-00514
`Patent No. 5,904,172
`
`related to the patented technology. Finally PO further fails to properly lay a
`
`foundation and authenticate as this exhibit is only authenticated through PO’s
`
`counsel who does not have personal knowledge of the underlying substance of Mr.
`
`Miller’s testimony.
`
`VIII. Ex. 2060 – Dires LLC Emails
`
`PO relies on Exhibit 2060, a document from Dires, LLC. POR at 62. ANM
`
`objected to this document (statement by non-party Dires) as hearsay under FRE 801
`
`and as containing hearsay within hearsay. OBE at 23-4. Dires is not a party to this
`
`proceeding, and beyond that fact, several portions of this document also contain
`
`hearsay within hearsay statements, including a print off that purports to be from
`
`Federal Express. See Ex. 2060 at 3. No hearsay exception applies. Additionally,
`
`ANM duly objected to this exhibit as lacking a proper foundation as authenticated
`
`through PO’s counsel who does not have personal knowledge of the underlying
`
`substance of this exhibit. OBE at 46-7. Thus, the evidence should be excluded in
`
`total.
`
`IX. Ex. 2061 – Dires LLC Emails
`
`PO relies on Exhibit 2061 in support of its contentions of secondary indicia
`
`of nonobviousness. POR at 62. ANM objected to this entire exhibit as hearsay under
`
`FRE 801 as it is comprised statements from “Mike Stewart” and “Sarah Davis” who
`
`are not parties to this proceeding or are employees of ANM. There is no hearsay
`
`13
`
`14706342v.2
`
`
`
`Case No. IPR2019-00514
`Patent No. 5,904,172
`
`exception that applies to this exhibit. OBE at 47-8. Additionally, ANM objected to
`
`this exhibit as lacking a proper foundation as authenticated through PO’s counsel
`
`who does not have personal knowledge of the underlying substance of this exhibit.
`
`Id. Thus, the evidence should be excluded in total.
`
`X. Exhibits 2070, 2071, 2072, 2073, 2074, and 2075 – PO’s District Court
`Infringement Contentions
`
`PO relies on their District Court infringement contentions against ANM’s and
`
`non-party Sizewise’s products. POR at 64-66. ANM duly objected these exhibits as
`
`irrelevant and improper evidence under FRE 401 and 403, hearsay under FRE 802,
`
`and a violation of the Board’s prohibition on incorporation by reference under 37
`
`CFR § 42.6(a)(3). OBE at 52-63. Thus, the evidence should be excluded in total.
`
`Each of these exhibits are infringement claim chart prepared and drafted by
`
`PO’s attorneys in the stayed district court action. See Ex. 2070 at 12 and 2071 at 12
`
`(contentions signed by counsel for PO); see also Ex. 1054 at 107:11–108:17.
`
`Attorney argument as a matter of law cannot be evidence. United States v. Velarde–
`
`Gomez, 224 F.3d 1062, 1073 (9th Cir.2000); Exeter Bancorporation v. Kemper
`
`Securities Group, Inc., 58 F.3d 1306, 1312 n. 5 (8th Cir. 1995) (Statements of
`
`counsel are not evidence and do not create issues of fact).
`
`The infringement contentions are further hearsay under FRE 802 as they are
`
`the self-serving statements of PO itself. No exception to the hearsay rule applies.
`
`14
`
`14706342v.2
`
`
`
`Case No. IPR2019-00514
`Patent No. 5,904,172
`
`Finally, the Board should view the use of these infringement contentions as a
`
`circumvention on the Board’s page and word limitation on attorney argument and
`
`prohibition on incorporation by reference. 37 CFR § 42.6(a)(3). The POR and POS
`
`make oblique statements that “PO’s Infringement Contentions [] further provide
`
`such evidence” of copying and then cite to the above exhibits—in effect dropping
`
`over a thousand pages of attorney argument into this proceeding while only taking
`
`up a scant few lines in PO’s substantive filings.
`
`XI. Exhibit 2084 – Optimus Emails
`
`PO relies on Exhibit 2084, which contains communications from Charles
`
`Dietiker of Optimus Worldwide Solutions and Johnny Sanchez of Costco. POS at
`
`63; POR at 23. ANM duly objected to this exhibit under FRE 801 as the email
`
`contains statements that are not from ANM nor an employee of ANM. OBE at 68-
`
`9. No exception to the hearsay rule applies. Thus, the evidence should be excluded
`
`in total.
`
`15
`
`14706342v.2
`
`
`
`Case No. IPR2019-00514
`Patent No. 5,904,172
`
`Date: April 29, 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
`
`16
`
`14706342v.2
`
`
`
`Case No. IPR2019-00514
`Patent No. 5,904,172
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies that a copy
`
`of the foregoing MOTION TO EXCLUDE EVIDENCE is served in its entirety on
`
`April 29, 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
`
`
`
`17
`
`14706342v.2
`
`
`
`Case No. IPR2019-00514
`Patent No. 5,904,172
`
`Date: April 29, 2020
`
`
`
`
`
`
`
`
` /s/Kyle L. Elliott .
`Kyle L. Elliott (Reg. No. 39,485)
`.
`Attorney for Petitioner
`American National Manufacturing, Inc.
`
`18
`
`14706342v.2
`
`
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
