Case No. IPR2019-00514
`Patent No. 5,904,172
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`AMERICAN NATIONAL MANUFACTURING INC.,
`Petitioner,
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`v.
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`SLEEP NUMBER CORPORATION
`f/k/a SELECT COMFORT CORPORATION,
`Patent Owner.
`____________
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`Case No. IPR2019-00514
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`Patent No. 5,904,172
`____________
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`
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`PETITIONER’S REPLY IN SUPPORT OF
`ITS MOTION TO EXCLUDE EVIDENCE
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`1
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`WA 14765405.1
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`Patent No. 5,904,172
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`AMERICAN NATIONAL MANUFACTURING INC.,
`Petitioner,
`
`v.
`
`SLEEP NUMBER CORPORATION
`f/k/a SELECT COMFORT CORPORATION,
`Patent Owner.
`____________
`
`Case No. IPR2019-00514
`
`Patent No. 5,904,172
`____________
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`
`
`PETITIONER’S REPLY IN SUPPORT OF
`ITS MOTION TO EXCLUDE EVIDENCE
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`1
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`WA 14765405.1
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`Case No. IPR2019-00514
`Patent No. 5,904,172
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`TABLE OF CONTENTS
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`Exhibit 2041 – Declaration Dr. John Abraham.............................................. 1
`I.
`Exhibit 2054 – Declaration of George Edwards. ........................................... 1
`II.
`III. Exhibit 2055 – Declaration of Carl Degen. ................................................... 2
`IV. Exhibit 2058 – Declaration of Elizabeth Patton. ............................................ 3
`V.
`Exhibit 2059 – Trial Transcript. .................................................................... 4
`VI. Exhibit 2060 – Dires LLC Emails. ................................................................ 5
`VII. Exhibit 2061 – Dires LLC E-mails. ............................................................... 5
`VIII. Exhibits 2070-75, PO’s District Court Infringement Contentions. ................ 5
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`Case No. IPR2019-00514
`Patent No. 5,904,172
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`TABLE OF AUTHORITIES
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` Page(s)
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`Federal Cases
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`Mays v. United Assn. etc.,
`407 F. Supp. 3d 1121 (D. Or. 2019) ................................................................... 4
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`Provepharm, Inc. v. Wista Labs. Ltd.,
`IPR2018-00323, Paper 49 (PTAB July 2, 2019) ................................................ 5
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`Rogers v. Oregon Trail Elec. Commissioners. Co-op., Inc.,
`No. 3:10-cv-1337, 2012 WL 163512 (D. Or. May 8, 2012) ............................... 5
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`Sheehan v. Daily Racing Form, Inc.,
`104 F.3d 940 (7th Cir. 1997) .............................................................................. 1
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`Sommerfield v. City of Chicago,
`254 F.R.D. 317 (N.D. Ill. 2008) (8th Cir. 1994) ................................................. 2
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`Teamsters, Chauffeurs, etc. v. N.Y. State Teamsters Council etc.,
`909 F. Supp. 102 (N.D. N.Y. 1995) ................................................................... 4
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`United States v. Tran Trong Cuong,
`18 F.3d 1132 (4th Cir. 1994) .............................................................................. 2
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`Case No. IPR2019-00514
`Patent No. 5,904,172
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`Petitioner presents its Reply in Support of its Motion to Exclude Evidence.
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`None of Petitioner’s objections to PO’s evidence have been cured by supplemental
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`declarations from PO’s witnesses.
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`I.
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`Exhibit 2041 – Declaration Dr. John Abraham.
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`In litigation “an expert may consider (he may have a financial incentive to
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`consider) looser standards to apply” than in the expert’s scientific work. Sheehan v.
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`Daily Racing Form, Inc., 104 F.3d 940, 942 (7th Cir. 1997). When that happens,
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`the expert has failed to exercise the required degree of care. Id.
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`Dr. Abraham did not exercise the required degree of care in this litigation as
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`he did not test, operate, use or fully assemble a pump or air mattress. By contrast,
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`in other engagements he fully examines the product. Opposition p. 3. PO essentially
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`argues that Dr. Abraham’s work in the past, with the same type of product, allowed
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`him to be less diligent here. Diligence in investigation is directly related to reliability
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`of an opinion. Dr. Abraham’s work was deficient.
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`II. Exhibit 2054 – Declaration of George Edwards.
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`Dr. Edwards said that understanding the design and function of Petitioner’s
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`and PO’s products “requires an understanding of the software”. Supp. Ex. 2054
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`¶ 31. But Dr. Edwards does not communicate, in his declaration or in his deposition,
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`what he says is required. He opines that ANM source code practices various claims
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`Patent No. 5,904,172
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`based solely on PO’s attorney-drafted infringement contentions. See, e.g., Ex. 1038
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`263:10-269:9. The infringement contentions, however, are just a summary of an
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`alleged inspection and they were prepared by PO’s counsel. A summary does not
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`meet the requirement of 37 C.F.R. 42.65(a) regarding disclosure of the data on which
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`an opinion is based. Lawyer-prepared documents “are not, by definition, of a type
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`reasonably relied on by experts in the particular field”. United States v. Tran Trong
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`Cuong, 18 F.3d 1132, 1143-44 (4th Cir. 1994); see, Sommerfield v. City of Chicago,
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`254 F.R.D. 317, 321-22 (N.D. Ill. 2008) (8th Cir. 1994). Dr. Edwards’ declaration
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`should be excluded.
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`III. Exhibit 2055 – Declaration of Carl Degen.
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`Mr. Degen’s analysis fails the basic test of “reliability” stated in F.R.E. 702
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`for admissible expert testimony. Mr. Degen acknowledged various factors (not the
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`patents) that could be the cause of Petitioner’s unit sales and he acknowledged that
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`a regression analysis might “sort out” the cause. MTE p. 8-9. Nevertheless, Mr.
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`Degen performed none of these analyses. Mr. Degen and PO default on proof of the
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`necessary element of causation to an argument of commercial success.
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`PO characterizes Mr. Miller’s statement regarding the underlying data as an
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`“unsupported assertion”. Opposition p. 6. This is false. PO deposed Mr. Miller and
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`questioned him regarding the data. Ex. 2081/2097 24:4-35:5. If Mr. Miller’s
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`testimony was “unsupported”, PO would have sought relief from the Board because
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`the stakes are high – Mr. Miller’s testimony regarding the data and Dr. Lynde’s
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`analysis demonstrate PO’s commercial success argument has no merit.
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`IV. Exhibit 2058 – Declaration of Elizabeth Patton.
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`PO asserts that Ms. Patton can authenticate transcripts and exhibits from Sleep
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`Number Corp. v. Baxter because she was “present” at the trial. Supp. Ex. 2058 ¶ 5.
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`Mere presence is not the standard for authentication. Knowledge is required that the
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`“item is what the proponent claims it to be”. F.R.E. 901(b). Ms. Patton cannot recall
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`all the statements in the 14 day trial and she cannot say that the transcripts and
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`exhibits are authentic. What Ms. Patton really knows is that there was a long trial
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`with many witnesses and exhibits. Also, Ms. Patton presents a transcript summary,
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`which is hearsay. Ex. 2058, p. 9.
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`Ms. Patton presents improper lay testimony regarding the manipulation of an
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`ANM website. Id., at ¶ 14-15. Who performed the manipulation is not disclosed.
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`Also lay opinion testimony is restricted to knowledge acquired in the witness’s
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`personal or professional experience. F.R.E. 701, Advisory Committee Note. Ms.
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`Patton’s professional experience is as a trial lawyer.
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`PO seeks to avoid Ms. Patton’s violation of 37 C.F.R. 11-307 by stating she
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`is not a “necessary witness”. But Ms. Patton is the necessary witness because no
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`one else sponsors the exhibits listed in her supplemental declaration. Also, Petitioner
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`was not required to object to Ms. Patton’s conduct because it is an ethics issue, not
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`an evidence issue. PTAB Consolidated Trial Prac. Guide, p. 13.
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`V. Exhibit 2059 – Trial Transcript.
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`The trial transcript from Select Comfort Corp. v. Baxter is not an admission
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`by a party opponent. ANM was not a party. Mr. Miller was a party, but in his
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`personal capacity, not as a representative of ANM. All the trial testimony is hearsay.
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`Teamsters, Chauffeurs, etc. v. N.Y. State Teamsters Council etc., 909 F. Supp. 102,
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`110 (N.D. N.Y. 1995).
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`The transcript also is not admissible under F.R.E. 803(6) as a record of a
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`regularly conducted activity. The rule specifies that the record be made under
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`particular conditions and that the custodian of the record, or other qualified witness,
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`testify that the conditions were satisfied. Here, the required witness would be the
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`court reporter or some other court official. Mays v. United Assn. etc., 407 F. Supp.
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`3d 1121, 1141 (D. Or. 2019) (“qualified witness” is one who knows the record
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`keeping system.).
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`The trial testimony also is not relevant. Mr. Miller has been deposed in this
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`case and PO does not assert any conflict between the deposition and trial testimony.
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`PO has not shown that the testimony from the trial makes more or less probable any
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`part of Mr. Miller’s testimony in this case. F.R.E. 401.
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`VI. Exhibit 2060 – Dires LLC Emails.
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`The real party in interest rule is not a basis for admission of these records. It
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`is an estoppel rule, not a rule of evidence. See, 35 U.S.C. § 315(e). Provepharm,
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`Inc., IPR 2018-0323, Paper 49 p. 28-29 does not state that real party in interest status
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`alone is a basis for imputing knowledge or participation to another entity.
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`PO has not shown that the documents were made in regular course of Dires’
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`business by Dires’ persons. F.R.E. 803 (6)(A), (B). E-mails are not presumed to be
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`records of systematic business activity.
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` Rogers v. Oregon Trail Elec.
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`Commissioners. Co-op., Inc., No. 3:10-cv-1337, 2012 WL 163512 (D. Or. May 8,
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`2012). These e-mails certainly were not Dires’ regular activity as they include
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`statements of third parties. PO also does not present the documents through a Dires’
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`custodian or qualified witness. F.R.E. 803(6)(D).
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`VII. Exhibit 2061 – Dires LLC E-mails.
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`The argument in Section VI applies.
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`VIII. Exhibits 2070-75, PO’s District Court Infringement Contentions.
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`PO’s attorneys drafted the contentions but PO asserts they “reflect” opinions
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`of experts. Experts are to make their own factual statements in their declarations.
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`Also, PO offers the contentions for the “truth” of nexus. These attorney statements
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`are hearsay.
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`Case No. IPR2019-00514
`Patent No. 5,904,172
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`Date: May 13, 2020
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`Respectfully Submitted,
`SPENCER FANE LLP
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`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
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`Jaspal S. Hare, Reg. No. 66,988
`jhare@spencerfane.com
`Spencer Fane LLP
`5700 Granite Pkwy, Suite 650
`Plano, TX 75024
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`Case No. IPR2019-00514
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies that a copy
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`of the foregoing PETITIONER’S REPLY IN SUPPORT OF ITS MOTION TO
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`EXCLUDE EVIDENCE is served in its entirety on May 13, 2020, by electronic
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`mail, as authorized by Patent Owner’s Updated Mandatory Notices, directed to the
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`attorneys of record for Patent Owner at the following correspondence address of
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` Kecia J. Reynolds
`kecia.reynolds@pillsburylaw.com
`PILLSBURY WINTHORP SHAW
`PITTMAN LLP
`1200 Seventeenth Street, NW
`Washington, DC 20036
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`record:
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`Steven A. Moore
`stevemoore@zhonglun.com
`ZHONG LUN
`4322 Wilshire Boulevard, Suite 200
`Los Angeles, CA 90010
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`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
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`Case No. IPR2019-00514
`Patent No. 5,904,172
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`Date: May 13, 2020
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` /s/Kyle L. Elliott .
`Kyle L. Elliott (Reg. No. 39,485)
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`Attorney for Petitioner
`American National Manufacturing, Inc.
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