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
`____________
`
`
`
`
`
`
`REPLY IN SUPPORT OF
`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
`
`____________
`
`
`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
`____________
`
`
`
`
`
`
`REPLY IN SUPPORT OF
`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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`TABLE OF CONTENTS
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`
`
`Case IRP2019-00514
`Patent 5,904,172
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`INTRODUCTION ................................................................................................. 1
`ARGUMENT......................................................................................................... 1
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`Certain Giachetti Testimony Should Be Excluded. ............................ 1
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`PO’s Objections to the Miller Declaration Have Not Been Cured. ..... 2
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`PO’s Objections to the Lynde Declaration Have Not Been Cured. ..... 3
` Certain Motion for Additional Discovery Exhibits Should Be
`Excluded. ........................................................................................... 4
`
`Portions of Certain Deposition Transcripts Should Be Excluded........ 5
`CONCLUSION ..................................................................................................... 5
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`Case IRP2019-00514
`Patent 5,904,172
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`
`Cases
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`TABLE OF AUTHORITIES
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` Page(s)
`
`Actifio, Inc. v. Delphix Corp.,
`IPR2015-00108, Paper 56 (PTAB Apr. 29, 2016) .............................................. 2
`
`Marvel Characters, Inc. v. Kirby,
`726 F.3d 119 (2d Cir. 2013) ............................................................................... 4
`
`Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc.,
`IPR2013-00132, Paper 42 (PTAB July 24, 2014)........................................... 1, 3
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`Other Authorities
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`37 C.F.R. § 42.64 .................................................................................................... 1
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`37 C.F.R. § 42.104 .............................................................................................. 1, 5
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`Fed. R. Evid. 401 ................................................................................................ 2, 5
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`Fed. R. Evid. 402 ................................................................................................ 2, 5
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`Fed. R. Evid. 403 ................................................................................................ 2, 5
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`Fed. R. Evid. 702 .................................................................................................... 2
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`Fed. R. Evid. 801 ................................................................................................ 3, 4
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`Fed. R. Evid. 802 .................................................................................................... 4
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`Fed. R. Evid. 803 .................................................................................................... 5
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`Fed. R. Evid. 901 .................................................................................................... 5
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`ii
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`Case IRP2019-00514
`Patent 5,904,172
`
`
`INTRODUCTION
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`Patent Owner (“PO”) files this Reply in support of its Motion to Exclude
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`Petitioner’s Evidence Pursuant to 37 C.F.R. § 42.64(c) (Paper 82) (“MTE”) and in
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`response to Petitioner’s (“ANM”) Opposition (Paper 88) (“Opp.”).1
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`Certain Giachetti Testimony Should Be Excluded.
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`ARGUMENT
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`
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`PO’s motion as to portions of Giachetti’s testimony that were not cited in the
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`Petition, (see Paper 2), and for which ANM has made no attempt to remedy or rely
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`on the evidence, is proper. Such portions are irrelevant and inadmissible under the
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`rules of evidence. Indeed, ANM admits it does not cite to the paragraphs in
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`Giachetti’s declaration at issue, conceding they were only provided for “helpful
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`background and context” but without even explaining how so. (Opp. at 1.) This
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`violates the rules and, thus, the Board must exclude. 37 C.F.R. § 42.104(b)(5)
`
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`1 ANM previously served supplemental declarations of Giachetti and Lynde, which
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`failed to cure PO’s objections, but did not file them with its opposition. Accordingly,
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`those declarations are not in evidence and cannot be considered by the Board. Shaw
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`Indus. Grp., Inc. v. Automated Creel Sys., Inc., IPR2013-00132, Paper 42 at 46 n.10
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`(PTAB July 24, 2014) (“The revised declaration is not in the record . . . because ACS
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`did not file a copy with its opposition.”).
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`1
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`Case IRP2019-00514
`Patent 5,904,172
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`(exclusion of evidence not specifically identified); Actifio, Inc. v. Delphix Corp.,
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`IPR2015-00108, Paper 56 at 57 (PTAB Apr. 29, 2016) (excluding exhibits not relied
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`upon). Additionally, ANM’s lack of a single citation to these portions of Giachetti’s
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`testimony demonstrates that this evidence lacks relevance to this proceeding and is
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`unfairly prejudicial. See FRE 401-403. Thus, such testimony should be excluded.
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`PO’s Objections to the Miller Declaration Have Not Been Cured.
`
`
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`Miller lacks personal knowledge to support his opinions. The fact that “PO
`
`knows Mr. Miller personally” does not imbue Miller with personal knowledge of
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`PO’s alleged intentions. Nor does his position as President of ANM imbue him with
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`personal knowledge of highly specific information regarding sourcing, mechanical
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`components, source code, sales, advertising, or the like, particularly considering he
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`was unable to provide details on such topics during his deposition. (MTE at 9-10.)
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`Miller’s attempt to offer unqualified expert opinion under the guise of lay witness
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`testimony does not save his testimony either. (Ex. 1080 ¶¶3-18.)2 ANM cannot avoid
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`the requirements of FRE 702 by characterizing Miller’s lay opinions as
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`“observations.” (Opp. at 6.)
`
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`2 In its Opposition, ANM cites the Supplemental Miller Declaration as Ex. 1079.
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`The correct citation as filed, however, is Ex. 1080. Accordingly, PO cites the
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`Supplemental Miller Declaration herein as Ex. 1080.
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`2
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`Case IRP2019-00514
`Patent 5,904,172
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`For Ex. 1074, ANM fails to demonstrate that it does not contain hearsay or is
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`relevant here. The statements in the exhibit’s last column are Dires’ own
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`characterizations of PO’s actions—not admissions by PO under FRE 801(d)(2).
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`ANM contends it is not offering the exhibit for its truth, yet simultaneously argues
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`relevance because the exhibit “pertains to ... PO’s false claim of trademark
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`violations,” (Opp. at 7), the very issue for which it is allegedly not offered. No
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`hearsay exception applies. For Ex. 1075, ANM admits the document is a summary
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`of “original records” created by Dires and therefore not subject to any exception.
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`(Opp. at 10-11.) Even if the purported original records could cure PO’s objections,
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`they were never filed.
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`Rather than curing PO’s objections, Miller’s supplemental declaration
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`exacerbates them by relying upon redacted information, (see Ex. 1080 ¶¶5, 12, 15,
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`17-18), and unfiled supplemental exhibits, (id. ¶¶14, 18), inaccessible to the Board.
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`As these statements and exhibits are not before the Board, they cannot be considered
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`in this proceeding. See Shaw Indus. Grp., IPR 2013-00132, Paper 42 at 46 n.10.
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` PO’s Objections to the Lynde Declaration Have Not Been Cured.
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`Therefore, PO’s objections stand and they should be excluded.
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`ANM fails to overcome PO’s objections to the Lynde declaration. Lynde’s
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`critiques of Degen’s analysis are not proper rebuttal because they rely upon
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`“corrected” ANM data that was never provided to PO or to Degen, nor filed in
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`3
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`Case IRP2019-00514
`Patent 5,904,172
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`opposition to the present motion. Indeed, ANM declined to file anything that would
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`demonstrate any basis for Lynde’s rebuttal opinion beyond his own ipse dixit.
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`ANM’s reliance on the allegedly “corrected” data for the first time on Reply
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`broadened the scope of ANM’s arguments without affording PO a response, akin to
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`a petitioner changing its petition on reply, which is disallowed.
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`ANM also mischaracterizes PO’s objections to Lynde’s reliance upon Miller
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`and, thus, fails to cure them. PO’s argument is not that Lynde may not rely upon
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`hearsay; it is that he may not simply adopt and act as a conduit for Miller’s hearsay
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`statements, which are the only materials Lynde cites to support his opinions. See
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`Marvel Characters, Inc. v. Kirby, 726 F.3d 119, 136 (2d Cir. 2013) (finding party
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`cannot use an expert “as a conduit for introducing hearsay under the guise that the
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`testifying expert used the hearsay as the basis of his testimony”). (See also Ex. 2098
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`at 162:1-163:8 (Lynde admitting he did not confirm accuracy of sales information),
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`27:5-18 (admitting he was “relying principally on Mr. Miller’s representation”).)
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` Certain Motion for Additional Discovery Exhibits Should Be Excluded.
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`Lynde should be excluded.
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`ANM fails to overcome PO’s objections to Exs. 1041-1047, 1049, and 1052,
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`providing no support for why any of them are admissible under the FRE:
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`• Exs. 1041-1042 are out of court statements and undoubtedly hearsay. See
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`FRE 801-802. ANM’s only retort, without any evidence, is that the exhibits
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`4
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`Case IRP2019-00514
`Patent 5,904,172
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`are “squarely within the ambit of FRE 803(17).” (Opp. at 2.) Exs. 1046-
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`1047 also contain hearsay whether “relevant,” “relat[ing] to PO,” or
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`“providing factual information” as ANM contends. (Id.)
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`• ANM has still failed to authenticate Ex. 1049. See FRE 901.
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`• Exs. 1047 and 1052 were not cited by ANM in any Paper. See 37 C.F.R. §
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`42.104(b)(5).
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`• Exs. 1043-1046 and 1052 are not from this proceeding, and ANM fails to
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`explain why district court disputes are probative here. See FRE 401-403.
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`Each exhibit should also be excluded because they were relied upon for moot
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`discovery motions, (see Papers 24, 45), and ANM blocked inquiry for that reason,
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`(see MTE at 4). See FRE 401-403. Also, ANM fails to rebut its mischaracterizations
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`Portions of Certain Deposition Transcripts Should Be Excluded.
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`of these exhibits, merely calling PO’s arguments a “dissatisfaction.” (Opp. at 3.)
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`ANM’s arguments as to deposition testimony are irrelevant and unsupported.
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`With respect to Mahoney, ANM’s assertion that Mahoney was hired because of “his
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`experience with medical devices involving pneumatics,” (Opp. at 9), is stated
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`without citation; Mahoney provided no such testimony, (Ex. 1068 at 21:13-25:9).
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`CONCLUSION
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`PO respectfully requests that the Board exclude the Exhibits at issue in PO’s
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`MTE. PO does not acquiesce to any ANM argument not addressed herein.
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`5
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`Case IRP2019-00514
`Patent 5,904,172
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`Dated: May 13, 2020
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`Respectfully submitted,
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`
`
`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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`6
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`Case IRP2019-00514
`Patent 5,904,172
`
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e), the undersigned hereby certifies that on May
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`13, 2020, the foregoing Reply in Support of Patent Owner’s Motion to Exclude
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`Petitioner’s Evidence Pursuant to 37 C.F.R. § 42.64(c) was served via e-mail, as
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`authorized by the Petitioner, at the following email correspondence address of
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`record:
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`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
`5700 Granite Parkway, Suite 650
`Plano, TX 75024
`
`
`Dated: May 13, 2020
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`
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`
`
`/s/Luke Toft
`Luke Toft (Reg. No. 75, 311)
`Counsel for Patent Owner
`
`
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`7
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