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
`____________
`
`
`
`
`
`
`PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION TO EXCLUDE
`
`
`
`
`
`
`
`
`
`
`____________
`
`
`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
`____________
`
`
`
`
`
`
`PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION TO EXCLUDE
`
`
`
`
`
`
`
`
`
`
`Case IRP2019-00514
`Patent 5,904,172
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`
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION ................................................................................................. 1
`STANDARD ......................................................................................................... 1
`ARGUMENT......................................................................................................... 2
`
`Exhibit 2041 – Declaration of Dr. John Abraham. ............................. 2
`
`Exhibits 2043–2053 –Third-Party Air Controller Claim Charts. ........ 4
` Exhibit 2054 – Declaration of Dr. George Edwards. .......................... 5
` Exhibit 2055 – Declaration of Carl Degen. ........................................ 6
`Exhibit 2058 – Declaration of Elizabeth A. Patton. ............................ 7
`
` Exhibit 2059 – Trial Transcript from Dires Case...............................11
` Exhibits 2060 – Dires Business Records. ..........................................12
` Exhibit 2061 – Dires Emails. ............................................................14
` Exhibits 2070–2075 – Infringement Contentions. .............................14
`
`Exhibit 2084 – Optimus Emails. .......................................................15
`CONCLUSION ....................................................................................................15
`
`
`
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`i
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`
`Cases
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Acrux DDS PTY Ltd. v. Kaken Pharm. Co. Ltd.,
`IPR2017-00190, Paper 81 (PTAB June 6, 2018) ................................................ 8
`
`Aver Info. Inc. v. Pathway Innovations & Techs., Inc.,
`IPR2017-02108, Paper 31 (PTAB Mar. 6, 2019) ............................................... 4
`
`The Braun Corp. v. Maxon Lift Corp.,
`282 F. Supp. 2d 931 (N.D. Ind. 2003), aff’d sub nom. Braun Corp.
`v. Maxon Lift Corp., 97 F. App’x 335 (Fed. Cir. 2004) ...................................... 3
`
`Carta v. Lumbermens Mut. Cas. Ins. Co.,
`419 F. Supp. 2d 23 (D. Mass. 2006) ................................................................. 10
`
`Cisco Sys., Inc., v. Centripetal Networks, Inc.,
`IPR2018-01512, Paper 32 (PTAB Mar. 19, 2020).............................................. 9
`
`CIT Bank N.A. v. Elliott,
`No. 15-CV-4395(JS)(ARL), 2018 WL 1701947 (E.D.N.Y. Mar. 31, 2018) ....... 8
`
`Comcast Cable Comm’n, LLC v. Promptu Sys. Corp.,
`IPR2018-00343, Paper 56 (PTAB July 18, 2019)............................................. 14
`
`Comput. Sys. Eng’g, Inc. v. Qantel Corp.,
`740 F.2d 59 (1st Cir. 1984) ........................................................................ 11, 15
`
`Conoco Inc. v. Dept. of Energy,
`99 F.3d 387 (Fed. Cir. 1996) ............................................................................ 13
`
`Demaco Corp. v. F. Von Langsdorff Licensing Ltd.,
`851 F.2d 1387 (Fed. Cir. 1988) .......................................................................... 6
`
`Ericsson v. Intellectual Ventures I LLC,
`IPR2014-00527, Paper 41 (PTAB May 18, 2015) ............................................ 13
`
`FedEx Corp. v. Intellectual Ventures, LLC,
`IPR2017-00859, Paper 45 (PTAB Aug. 9, 2018) ............................................... 8
`
`ii
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`Flir Sys., Inc. v. Leak Surveys, Inc.,
`IPR2014-00411, Paper 113 (PTAB Sept. 3, 2015) ............................................. 1
`
`HTC Corp. v. Advanced Auto Devices, LLC,
`IPR2014-01155, Paper 36 (PTAB Dec. 29, 2015) .................................. 1, 10, 13
`
`Hutchinson Tech. Inc. v. Nitto Denko Corp.,
`IPR2017-01421, Paper 52 (PTAB Oct. 10, 2018) .............................................. 9
`
`Incyte Corp. v. Concert Pharm., Inc.,
`IPR2017-01256, Paper 119 (PTAB Apr. 8, 2019) .................................. 2, 5, 7, 9
`
`Juniper Networks, Inc. v. Chrimar Sys., Inc.,
`IPR2016-01397, Paper 66 (PTAB Dec. 29, 2017) ............................................ 13
`
`Lizanetz v. St. Paul Guardian Ins. Co.,
`No. 3-07-CV-0123-BD, 2008 WL 4865581 (N.D. Tex. Nov. 10, 2008) ............. 7
`
`Masterimage 3d, Inc. v. RealD Inc.,
`IPR2015-00040, Paper 85 (PTAB Apr. 14, 2016) .................................... 2, 8, 10
`
`Nippon Suisan Kaisha Ltd. v. Pronova Biopharma Norge As,
`PGR2017-00033, Paper 37 (PTAB Jan. 16, 2019) ............................................. 4
`
`Palo Alto Networks, Inc. v. Finjan, Inc.,
`IPR2015-01979, Paper 27 (PTAB Aug. 11, 2016) ............................................. 1
`
`Polygroup Ltd. v. Willis Elec. Co.,
`IPR2016-01610, Paper 187 (PTAB Feb. 26, 2018) .......................................... 14
`
`Provepharm Inc. v. Wista Labs. Ltd.,
`IPR2018-00323, Paper 49 (PTAB July 2, 2019) .............................................. 12
`
`Renesas Elecs. Corp. v. Lone Star Silicon Innovations, LLC,
`IPR2017-01869, Paper 33 (PTAB Mar. 25, 2019).............................................. 3
`
`Schiedmayer Celesta Gmbh v. Piano Factory Grp.,
`No. CANCELLATION 9206121, 2016 WL 8222575 (TTAB Dec. 21, 2016) . 10
`
`Sleep Number Corp. v. John Baxter, et al.,
`12-cv-2899-DF-SER (D. Minn. 2012) ............................................................. 11
`
`iii
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`Sleep Number Corp. v. John Baxter, et al.,
`19-1077 (8th Cir. 2019) ....................................................................... 11, 13, 14
`
`Toyota Motor Corp. v. Blitzsafe Tx., LLC,
`IPR2016-00418, Paper 16 (PTAB Aug. 2, 2016) ............................................... 1
`
`Universal Safety Response, Inc. v. Secure USA, Inc.,
`No. 08CIV4851LTSDCF, 2010 WL 11595035 (S.D.N.Y. Apr. 27, 2010) ....... 11
`
`Other Authorities
`
`37 C.F.R. § 11.307 ................................................................................................ 10
`
`37 C.F.R. § 42.20(c) ............................................................................................... 1
`
`37 C.F.R. § 42.64 .................................................................................... 1, 4, 10, 13
`
`37 C.F.R. § 42.65(a) ......................................................................................... 4, 15
`
`77 Fed. Reg. 48,756 (Aug. 14, 2012) ...................................................................... 7
`
`Fed. R. Evid. 602 ................................................................................................ 8, 9
`
`Fed. R. Evid. 701 .................................................................................................... 9
`
`Fed. R. Evid. 702 .................................................................................................... 6
`
`Fed. R. Evid. 703 .......................................................................................... 4, 5, 15
`
`Fed. R. Evid. 801 ...................................................................................... 11, 12, 15
`
`Fed. R. Evid. 802 .................................................................................................... 4
`
`Fed. R. Evid. 803 ............................................................................................ 11, 13
`
`Fed. R. Evid. 901 ............................................................................................ 11, 13
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`
`INTRODUCTION
`
`Petitioner American National Manufacturing, Inc. (“ANM”) has failed to
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`satisfy its burden in establishing that any of the evidence subject to its Motion to
`
`Exclude is inadmissible under the Federal Rules of Evidence (“FRE”). Patent Owner
`
`Sleep Number Corporation (“PO”) respectfully requests that the Board deny
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`exclusion of Exs. 2041, 2043–2055, 2058–2061, 2070–2075, and 2084. (See
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`Petitioner’s Motion to Exclude Evidence, Paper 83 (“Pet.’s MTE”).)
`
`STANDARD
`
`The party bringing a motion to exclude “has the burden of proof to establish
`
`that it is entitled to the requested relief.” Flir Sys., Inc. v. Leak Surveys, Inc.,
`
`IPR2014-00411, Paper 113 at 3 (PTAB Sept. 3, 2015) (citing 37 C.F.R. § 42.20(c)).
`
`A party cannot base a motion to exclude on evidentiary grounds it did not previously
`
`assert in its objections. See 37 C.F.R. § 42.64; HTC Corp. v. Advanced Auto Devices,
`
`LLC, IPR2014-01155, Paper 36 at 26 (PTAB Dec. 29, 2015).
`
`In opposing a motion to exclude, a party who previously served supplemental
`
`evidence “may file the supplemental evidence with [its] Opposition to the Motion,”
`
`Palo Alto Networks, Inc. v. Finjan, Inc., IPR2015-01979, Paper 27 at 2 (PTAB Aug.
`
`11, 2016), in order to “support admissibility of the originally filed evidence and to
`
`defeat a Motion to Exclude that evidence,” Toyota Motor Corp. v. Blitzsafe Tx., LLC,
`
`IPR2016-00418, Paper 16 at 7 (PTAB Aug. 2, 2016). If the supplemental evidence
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`cures the objection at issue, the motion to exclude should be denied. Masterimage
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`3d, Inc. v. RealD Inc., IPR2015-00040, Paper 85 at 68 (PTAB Apr. 14, 2016) (“On
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`this record, the deficiency alleged by Petitioner has been obviated by [PO’s]
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`Supplemental Evidence. Accordingly, [the] Motion to Exclude is denied.”).1
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`Exhibit 2041 – Declaration of Dr. John Abraham.
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`ARGUMENT
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`
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`Abraham submitted a detailed, well-supported declaration in which he opined
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`that ANM’s, Sizewise’s, and third-parties’ products practice the ‘172 Patent by
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`copying PO’s products. To the extent it is relevant, ANM’s critique that Abraham
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`did not operate or test a pump or air mattress “in this proceeding” simply goes to the
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`weight to be given his opinions, not the admissibility. See Incyte Corp. v. Concert
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`Pharm., Inc., IPR2017-01256, Paper 119 at 44 (PTAB Apr. 8, 2019) (denying
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`motion to exclude because objections “implicate the weight and sufficiency of the
`
`testimony, rather than its admissibility”). Abraham, who has extensive training and
`
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`1 Here, PO timely served ANM with Supplemental Declarations of John Abraham,
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`George Edwards, Carl Degen, and Elizabeth Patton, which cured any purported
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`objections by ANM and which are being filed herewith. (See Supp. Exs. 2041, 2054,
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`2055, 2058.) Accordingly, ANM’s motion is moot. See Masterimage 3d, Inc.,
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`IPR2015-00040, Paper 85 at 68.
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`2
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`experience in mechanical engineering, need not physically operate, assemble, and/or
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`test a pump or air mattress in order to understand how it works. (Ex. 1065 at 168:22–
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`169:3.) Further, he has many years of experience analyzing the very products at issue
`
`here. (Supp. Ex. 2041, ¶¶7–12.) See The Braun Corp. v. Maxon Lift Corp., 282 F.
`
`Supp. 2d 931, 933–34 (N.D. Ind. 2003), aff'd sub nom. Braun Corp. v. Maxon Lift
`
`Corp., 97 F. App'x 335 (Fed. Cir. 2004) (admitting expert opinion due to expert’s
`
`multiple years of experience in field at issue). Indeed, Abraham has served as an
`
`expert in multiple litigations involving the ‘172 Patent, conducted numerous
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`physical inspections (including physically operating the products), and taken images
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`of competitor products, including several of ANM’s products. (Ex. 1065 at 164:2–
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`168:20; Supp. Ex. 2041 ¶¶8–10.) See Renesas Elecs. Corp. v. Lone Star Silicon
`
`Innovations, LLC, IPR2017-01869, Paper 33 at 12–13 (PTAB Mar. 25, 2019)
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`(finding opinion admissible due to expert’s experience with relevant technology).
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`ANM’s contention that Abraham’s opinions merely adopt attorney argument
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`is also unsupported and contradicted by the record. Abraham testified he took the
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`photographs used in PO’s district court infringement contentions and personally
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`agreed with those contentions when developing his opinions. (Ex. 1065 at 106:20–
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`107:19, 170:16–172:4; Supp. Ex. 2041 ¶¶42–46.) Further, Abraham testified that he
`
`personally analyzed the third-party products and prepared the claim charts
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`comprising Exs. 2043–2053. (Ex. 1065 at 150:16–152:13; Supp. Ex. 2041 ¶48.)
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`Even so, such argument goes to weight, not admissibility. See Aver Info. Inc. v.
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`Pathway Innovations & Techs., Inc., IPR2017-02108, Paper 31 at 60 (PTAB Mar.
`
`6, 2019) (denying motion to exclude because objections to purported attorney
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` Exhibits 2043–2053 –Third-Party Air Controller Claim Charts.
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`argument go to weight, not admissibility, of evidence).
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`ANM’s arguments related to Exs. 2043–2053 are unsupported and untimely.
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`Again, and contrary to ANM’s claims, Abraham prepared Exs. 2043–2053. (Ex.
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`1065 at 150:16–152:13; Supp. Ex. 2041 ¶ 48.) Also, ANM’s hearsay argument has
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`been waived as ANM did not timely object under FRE 802. (See Paper 52 at 10–31.)
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`See 37 C.F.R. § 42.64(b)(1), (c); Nippon Suisan Kaisha Ltd. v. Pronova Biopharma
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`Norge As, PGR2017-00033, Paper 37 at 56 (PTAB Jan. 16, 2019) (holding
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`objections made for the first time in a motion to exclude are waived). Regardless,
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`the charts are not being offered to show the truth of their contents—i.e.
`
`infringement—but rather to demonstrate the factual basis for Abraham’s opinion that
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`the ‘172 Patent has value and that PO’s technology was copied by the industry. (See
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`Ex. 2041 ¶¶47–48.) See also FRE 703 (underlying facts need not be admissible for
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`expert’s opinion based upon facts to be admitted). Lastly, the exhibits do not
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`circumvent page limits or incorporate by reference—they simply disclose the
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`underlying facts on which Abraham’s opinion is based. See 37 C.F.R. § 42.65(a).
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`4
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`
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` Exhibit 2054 – Declaration of Dr. George Edwards.
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`Edwards submitted a detailed, well-supported declaration in which he opined
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`that ANM’s source code practices the ‘172 Patent and copies PO’s source code.
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`ANM’s critiques that Edwards relies upon source code not filed in this proceeding
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`and that his opinions are conclusory go only to the weight to be given his opinions,
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`not their admissibility, as there is no requirement that the underlying source code be
`
`admitted or even admissible. See FRE 703 (underlying facts need not be admissible
`
`for expert’s opinion based upon facts to be admitted); see also Incyte Corp.,
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`IPR2017-01256, Paper 119 at 44 (objections go to weight, not admissibility).
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`Regardless, Edwards provided detailed analysis of the operation of both parties’
`
`source code. With respect to PO’s source code, Edwards explained its operation and
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`described his methodology at length in both his original declaration and now-
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`operative supplemental declaration. (See Ex. 2054 ¶¶20–28, 33–34; Supp. Ex. 2054
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`¶¶20–28, 33–34.) Edwards did the same with respect to ANM’s source code. (See
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`Ex. 2054 ¶¶35–40; Supp. Ex. 2054 ¶¶35–40.) Further, Edwards provided charts
`
`explaining which elements of the ‘172 Patent are satisfied by ANM’s source code
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`and explained that he drafted and agreed with PO’s district court infringement
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`contentions, the unredacted versions of which ANM used during Edwards’
`
`deposition. (See Supp. Ex. 2054 ¶¶33–41, Table 3; see also Pet.’s MTE at 6
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`(acknowledging that Edwards provided unredacted versions).) PO’s unredacted
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`5
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`contentions provide specific, i.e., by line number and variable, detail regarding how
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`elements of the ‘172 Patent are satisfied by ANM’s source code and are anything
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`but conclusory as ANM contends. (See Supp. Ex. 2054 ¶20.)
`
`To the extent ANM still questioned Edwards’ “thought process” after
`
`reviewing his original and supplemental declaration, ANM took his deposition,
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`where he explained how he reached his conclusions concerning the source code’s
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`operation with to-the-line-number precision. (E.g., Ex. 1055 at 259:10–264:15;
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`283:18–285:15.) Dr. Edwards’ opinions are based on specialized knowledge helpful
`
`to the issues, sufficient facts, and a reasonable application of reliable principles and
`
` Exhibit 2055 – Declaration of Carl Degen.
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`methods to the facts of the case, making them admissible. See FRE 702.
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`Degen submitted a detailed, well-supported declaration in which he opined
`
`that ANM’s unit data supports a finding of commercial success. ANM’s objections
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`to his testimony are based on unsupported assertions: (1) ANM President Craig
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`Miller’s late assertion that various sales were over/under counted and (2) Degen not
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`controlling for every potential factor. Notably, Miller was the one who compiled the
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`data (and timeline) that Degen analyzed, which Miller admitted Degen properly
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`analyzed and counted. (See Ex. 2097 at 27:8–21, 30:16–35:15, 38:11–40:15, 53:8–
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`19, 59:6–12, 95:8–97:10; see generally Ex. 1072.) Further, Degen was not required
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`to control for every factor in preparing his expert opinion. See Demaco Corp. v. F.
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`6
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`Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1394 (Fed. Cir. 1988) (noting
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`requirement for proof of “all imaginable contributing factors would be unfairly
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`burdensome, and contrary to the ordinary rules of evidence”).2
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`Ultimately, ANM’s objections to Degen’s testimony go to the weight, not the
`
`admissibility, of the evidence. See Incyte Corp., IPR2017-01256, Paper 119 at 44
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`(denying motion to exclude because objections go to weight, not admissibility).
`
`ANM’s attempt to exclude Degen’s testimony in favor of its own expert’s testimony
`
`is simply an effort to engage in a “battle of experts,” which is inappropriate for a
`
`motion to exclude. See Lizanetz v. St. Paul Guardian Ins. Co., No. 3-07-CV-0123-
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`BD, 2008 WL 4865581, at *1 (N.D. Tex. Nov. 10, 2008) (where qualified experts
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`disagree, “battle of experts” should not be resolved by court on motion to exclude).
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`Indeed, this attempt to argue the merits of the parties’ expert opinions is improper
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`and premature. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767
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`(Aug. 14, 2012) (noting a motion to exclude “may not be used to challenge the
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` Exhibit 2058 – Declaration of Elizabeth A. Patton.
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`sufficiency of the evidence to prove a particular fact”).
`
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`2 Notably, none of ANM’s cited cases proscribes the standard articulated by ANM.
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`(See Pet.’s MTE at 8.)
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`Ex. 2058 is a counsel declaration authenticating various exhibits.3 ANM has
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`not satisfied its burden to demonstrate that Ex. 2058 is inadmissible under FRE 602
`
`or 701. First, under FRE 602, a witness, including counsel, is competent to testify if
`
`she has personal knowledge of the matter. The entirety of Ex. 2058 is presented from
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`PO’s counsel’s first-hand knowledge. (See Ex. 2058 ¶¶2 (attesting to first-hand
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`knowledge), 4–9 (detailing involvement with prior ANM related trial), 11–15
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`(noting capture of ANM and real party-in-interest Dires LLC’s (“Dires”) websites);
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`see also Supp. Ex. 2058 ¶¶2, 4–9, 11–15 (same).) See FedEx Corp. v. Intellectual
`
`Ventures, LLC, IPR2017-00859, Paper 45 at 11–12 (PTAB Aug. 9, 2018) (denying
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`FRE 602 motion to exclude because arguments did “not persuade us that [witness]
`
`lacks personal knowledge . . . based on a failure to directly witness specific events”);
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`CIT Bank N.A. v. Elliott, No. 15-CV-4395(JS)(ARL), 2018 WL 1701947, at *5
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`(E.D.N.Y. Mar. 31, 2018) (finding attorney affidavits admissible where based on
`
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`3 The Supplemental Declaration of Elizabeth Patton is filed as Supp. Ex. 2058. ANM
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`fails to mention that, in light of ANM’s concerns with Ex. 2058, the parties
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`previously met and conferred, during which PO offered to expunge Ex. 2058 in favor
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`of Supp. Ex. 2058. ANM never responded to that proposal, which is now mooted
`
`given ANM’s motion to exclude, which allows the filing and consideration of Supp.
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`Ex. 2058. See Masterimage 3d, IPR2015-00040, Paper 85 at 68.
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`8
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`personal observations and review of documents); Acrux DDS PTY Ltd. v. Kaken
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`Pharm. Co. Ltd., IPR2017-00190, Paper 81 at 8 (PTAB June 6, 2018) (finding
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`proffered declaration that websites are true and correct copies as sufficient
`
`authentication). Even so, a witness’ competency to testify is not grounds for
`
`exclusion. See, e.g., Incyte Corp., IPR2017-01256, Paper 119 at 44 (admitting
`
`evidence because FRE 602 objections “implicate the weight and sufficiency of the
`
`testimony, rather than its admissibility”).
`
`Pursuant to FRE 701, ANM failed to show that Ex. 2058’s testimony is not
`
`based on a witness’s perception, not helpful to determining a fact at issue, and based
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`on scientific or technical knowledge. Rather, the exhibit simply sets forth undisputed
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`facts and background information for purposes of authenticating various exhibits
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`known to or located by the declarant or the declarant’s law office. Such testimony
`
`does not constitute improper lay opinion. See Cisco Sys., Inc., v. Centripetal
`
`Networks, Inc., IPR2018-01512, Paper 32 at 79 (PTAB Mar. 19, 2020) (finding
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`testimony was not improper lay testimony because it concerned indisputable facts);
`
`Hutchinson Tech. Inc. v. Nitto Denko Corp., IPR2017-01421, Paper 52 at 40 (PTAB
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`Oct. 10, 2018) (denying motion to exclude based on improper lay testimony, finding
`
`such arguments “go more to the weight of [witness’] testimony than its
`
`admissibility”). Regardless, ANM’s objections regarding the purported “estimates,”
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`“understandings,” and “beliefs” in Ex. 2058 have been mollified by the
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`Supplemental Declaration of Elizabeth Patton, (Supp. Ex. 2058), which does not
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`contain such testimony. See Masterimage 3d, IPR2015-00040, Paper 85 at 68.
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`ANM’s arguments regarding 37 C.F.R. § 11.307 must also be rejected because
`
`ANM did not timely object to Ex. 2058 on that basis. (Compare Paper 52 at 41–45
`
`with Pet.’s MTE at 10–12.) A party may move to exclude evidence only if it
`
`previously objected on those grounds. See 37 C.F.R. § 42.64(b)(1) (“The objection
`
`must identify the grounds for the objection with sufficient particularity to allow
`
`correction in the form of supplemental evidence.”). Because ANM failed to do so,
`
`its motion to exclude under 37 C.F.R. § 11.307 is procedurally improper. See HTC
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`Corp., IPR2014-01155, Paper 36 at 26 (denying motion to exclude when party did
`
`not previously identify grounds for objection).
`
`Further, 37 C.F.R. § 11.307 provides only that an attorney may not act as an
`
`advocate at a proceeding in which they are a “necessary witness,” i.e., only “where
`
`the proposed testimony . . . is unobtainable elsewhere.” Carta v. Lumbermens Mut.
`
`Cas. Ins. Co., 419 F. Supp. 2d 23, 29 (D. Mass. 2006); see Schiedmayer Celesta
`
`Gmbh v. Piano Factory Grp., No. CANCELLATION 9206121, 2016 WL 8222575,
`
`at *6 (TTAB Dec. 21, 2016) (“A necessary witness is one who offers evidence that
`
`is not available from another source.”). Patton is not a necessary witness as her
`
`testimony is available from other sources. Indeed, the entirety of Patton’s testimony
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`provides information authenticating various documents, such as prior Miller
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`testimony, underlying trial exhibits, and ANM’s websites. All of that information is
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`available through multiple other avenues, including previous public trial testimony,
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`(see, e.g., Ex. 2059 at 1285:12–24, et seq.), cross-examination testimony conducted
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`in this IPR proceeding, (see Ex. 2097), and examination of public websites, see
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`Universal Safety Response, Inc. v. Secure USA, Inc., No. 08CIV4851LTSDCF, 2010
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`WL 11595035, at *2 (S.D.N.Y. Apr. 27, 2010) (finding attorney was not necessary
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`witness because court could take judicial notice of websites and any witness could
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`perform same internet searches). Thus, ANM’s motion to exclude should be denied.
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` Exhibit 2059 – Trial Transcript from Dires Case.
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`ANM fails to prove that Ex. 2059 is inadmissible hearsay. Statements made
`
`by Miller constitute party opponent admissions and, thus, are not hearsay. See
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`Comput. Sys. Eng'g, Inc. v. Qantel Corp., 740 F.2d 59, 66 (1st Cir. 1984) (admitting
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`statements of company’s president as statements of a party opponent); FRE
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`801(d)(2). Further, Ex. 2059 was created and recorded at the time it was presented,
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`by a court reporter, in publicly filed lawsuit Sleep Number Corp. v. John Baxter, et
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`al., 12-cv-2899-DF-SER (D. Minn. 2012), on appeal, Sleep Number Corp. v. John
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`Baxter, et al., 19-1077 (8th Cir. 2019) (“Dires Case”), and thus constitutes a record
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`of a regularly conducted activity, an exception to hearsay. See FRE 803(6), 901(b).
`
`ANM similarly fails to show that Ex. 2059 is irrelevant. The exhibit provides
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`record of Miller’s testimony regarding his/ANM’s consulting for PO, ANM’s
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`relationship with Dires, and statements made by (and training of) Dires’ salespersons
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`about the products manufactured by ANM that embody the asserted claims. (See Ex.
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`2059; see also Exs. 2060-2061 (e.g., Ex. 2061 at 1 instructing to refer to ANM/Dires
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`collectively).) This testimony is relevant to secondary considerations such as
`
`commercial success and copying, issues central to this proceeding. Lastly, the
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`exhibit is properly authenticated. PO’s counsel attested to being present during the
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`testimony provided in Ex. 2059 (and there is no requirement to attest to “have
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`personal knowledge of the underlying substance” as ANM incredulously submits),
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`and the testimony therein was transcribed by a court reporter and publicly filed.
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`(Supp. Ex. 2058 ¶5.) Further, Miller testified in this proceeding that he provided the
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`testimony and has no reason to question the accuracy of the transcription. (Ex. 2097
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` Exhibits 2060 – Dires Business Records.
`
`at 102:15–103:5.) ANM’s arguments simply fall flat.
`
`ANM fails to prove Ex. 2060, various training emails created by Dires,
`
`discussing ANM, is inadmissible hearsay. Because Dires is a real party-in-interest
`
`in these proceedings, its statements are attributable to ANM. See Provepharm Inc.
`
`v. Wista Labs. Ltd., IPR2018-00323, Paper 49 at 28–29 (PTAB July 2, 2019)
`
`(attributing real party-in-interest’s statements to petitioner); see also FRE
`
`801(d)(2)(D) (party opponent statement includes statement “made by the party’s
`
`agent or employee on a matter within the scope of that relationship”). Additionally,
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`Ex. 2060 is admissible under FRE 803(6). The documents in the exhibit are training
`
`documents created or authorized by Miller and other Dires employees in the regular
`
`course of business, and as detailed below, ANM cannot credibly question their
`
`authenticity.4 See Conoco Inc. v. Dept. of Energy, 99 F.3d 387, 391 (Fed. Cir. 1996)
`
`(noting “business records exception has been construed generously in favor of
`
`admissibility” due to records’ general trustworthiness and need for such evidence).
`
`To establish Ex. 2060’s authenticity, PO need only “produce evidence
`
`sufficient to support a finding that the item is what the proponent claims it is,” see
`
`FRE 901, and notably “the standard for admissibility under [FRE] 901(a) is slight.”
`
`Ericsson v. Intellectual Ventures I LLC, IPR2014-00527, Paper 41 at 12 (PTAB May
`
`18, 2015). PO’s counsel provided the necessary detail in authenticating Ex. 2060 by
`
`explaining that the documents were produced by Dires in the Dires Case. (See Supp.
`
`Ex. 2058 ¶7; see also Ex. 2059 at 1332:3–1340:25 (Miller’s testimony).) ANM
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`provides no credible reason for questioning the authenticity of Dires’ own training
`
`materials. See Juniper Networks, Inc. v. Chrimar Sys., Inc., IPR2016-01397, Paper
`
`66 at 62–63 (PTAB Dec. 29, 2017) (denying motion to exclude because petitioner
`
`
`4 ANM’s hearsay within hearsay argument fails as it never timely objected on that
`
`ground, (compare Paper 52 at 46 with Pet.’s MTE at 13), and thus exclusion is
`
`improper. See 37 C.F.R. § 42.64(b)(1); HTC Corp., IPR2014-01155, Paper 36 at 26.
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`did not provide adequate reason to question exhibit’s authenticity).
`
` Exhibit 2061 – Dires Emails.
`
`For the reasons articulated above with respect to Ex. 2060, Ex. 2061 is also
`
`authenticated and admissible—as party opponent admissions and as business
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`records—because Dires employees created the emails, they contain information
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`about ANM, and Dires produced them in the Dires Case. (Supra Section VII; see
`
`also Exhibit 2059 at 1790:15–1792:6, 1356:7–1359:2, 1349:16–1352:2, 1788:2–
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`1790:7, 1352:3–1353:2, 1353:3–1354:6 (Miller’s testimony).) Further, the emails
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`contain training directives and sales updates by Dires sales managers based upon
`
`information provided or authorized by Miller, again constituting admissible business
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`records. See Comcast Cable Comm’n, LLC v. Promptu Sys. Corp., IPR2018-00343,
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`Paper 56 at 77 (PTAB July 18, 2019) (email updating employees on conduct of
`
` Exhibits 2070–2075 – Infringement Contentions.
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`business admissible under business records exception).
`
`Ex. 2070–2075 are PO’s district court infringement contention disclosures
`
`and claim charts. Although submitted by PO’s attorneys, they reflect the opinions of
`
`PO’s experts, not a regurgitation of attorney argument. (See Ex. 1055 at 207:5–
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`210:2; Ex. 1065 at 101:11–22.) It is perfectly valid for an expert to adopt contentions
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`from district court for purposes of opinions in an IPR proceeding and for the
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`contentions to be filed with the Board in support of those opinions. See Polygroup
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`Ltd. v. Willis Elec. Co., IPR2016-01610, Paper 187 at 10–11 (PTAB Feb. 26, 2018)
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`(declining to exclude infringement contentions as hearsay where expert had relied
`
`upon them in forming opinions about secondary considerations). Further, the
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`contentions are not being offered for the truth of the matter asserted—i.e.
`
`infringement by ANM—but rather to show nexus and copying. See Paper 47 at 64–
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`66.) And the underlying facts in the contentions support PO’s experts’ opinions. See
`
`FRE 703 (underlying facts need not be admissible for expert’s opinion based upon
`
`facts to be admitted). Accordingly, the contentions also do not circumvent the page
`
` Exhibit 2084 – Optimus Emails.
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`limit or rule on incorporation by reference. See 37 C.F.R. § 42.65(a).
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`The portions of Ex. 2084 upon which PO relies are admissible as statements
`
`by a party opponent. FRE 801(d)(2). Indeed, the portion of the exhibit that PO cites
`
`is an email from Miller. See Qantel Corp., 740 at 66 (admitting statements of
`
`company’s president as statements of party opponent). (See also Paper 47 at 63;
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`Paper 78 at 23.) Further, PO’s expert, Messner, cites to the exhibit in his declaration.
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`(Ex. 2040 ¶33.) See FRE 703 (fact and data providing basis of expert opinion need
`
`not be independently admissible).
`
`CONCLUSION
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`For the foregoing reasons, PO respectfully requests the Board deny ANM’s
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`Motion to Exclude Exhibits 2041, 2043–2055, 2058–2061, 2070–2075, and 2084.
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`Dated: May 6, 2020
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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
`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
`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
`kecia.reynolds@pillsburylaw.com
`
`Attorneys for Patent Owner
`Sleep Number Corporation
`
`
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`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR § 42.6(e), the undersigned hereby certifies that on May 6,
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`2020, the foregoing Patent Owner’s Opposition to Petitio
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