Page 1
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`--------------------------------------X
`AMERICAN NATIONAL MANUFACTURING INC.,
` Petitioner,
` v.
`SLEEP NUMBER CORPORATION,
`f/k/a SELECT COMFORT CORPORATION,
` Patent Owner.
`--------------------------------------X
` Cases
`IPR2019-00497 (Patent 8,769,747 B2)
`IPR2019-00500 (Patent 9,737,154 B2)
`
` DEPOSITION of DR. JOSHUA PHINNEY
` September 24, 2019
` New York, New York
`
`Reported by:
`Joseph Danyo V
`Job no: 26065
`
`TransPerfect Legal Solutions
`212-400-8845 - Depo@TransPerfect.com
`
`Sleep Number Corp.
`EXHIBIT 2065
`IPR2019-00514
`Page 1
`
`

`

`Page 2
` DEPOSITION of DR. JOSHUA PHINNEY, pursuant
`to Notice, held at the offices of Fox Rothschild,
`LLP, 101 Park Avenue, 17th Floor, New York, New
`York, on September 24, 2019, at 9:00 a.m., before
`Joseph Danyo V, a Shorthand Reporter and Notary
`Public for the State of New York.
`
`Page 4
`
`1
` J. PHINNEY
`2 D R. J O S H U A P H I N N E Y,
`3
` the Witness herein, having first been
`4
` duly sworn by the Notary Public, was
`5
` examined and testified as follows:
`6
` MR. MOORE: Steve Moore for Sleep
`7
` Number Corporation from Pillsbury
`8
` Winthrop, and with me is Luke Toft from
`9
` Fox Rothschild.
`10
` MR. TUTTLE: Kevin Tuttle from the
`11
` law firm of Spencer Fane LLP in Kansas
`12
` City, Missouri, for petitioners, American
`13
` National Manufacturing, and I'm here with
`14
` my colleague, Kyle Elliott, of Spencer
`15
` Fane in Kansas City, Missouri.
`16
`EXAMINATION
`17
`BY MR. MOORE:
`18
` Q. Good morning, Dr. Phinney.
`19
` A. Good morning.
`20
` (Whereupon, Phinney Exhibit 1,
`21
` declaration in support the party's review
`22
` of U.S. Patent 9737154 was hereby marked
`23
` for identification, as of this date.)
`24
` Q. Dr. Phinney, have you seen this
`25
`document before?
`
`Page 3
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`Page 5
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` J. PHINNEY
` A. Yes.
` Q. What is this document?
` A. This is my declaration in support of
`the party's review of U.S. Patent 9737154.
` Q. Did you prepare this document?
` A. Yes.
` Q. Just take a look at the introduction
`that begins on page 1 of this document.
` A. I'm there.
` Q. So you're here as an expert witness;
`are you not?
` A. Yes.
` Q. Paragraph 1 states you're a principal
`engineer at Exponent?
` A. Yes.
` Q. What is Exponent?
` A. Exponent is a scientific and
`engineering consulting firm. We have
`approximately a thousand employees, but we assist
`clients with different kinds of technical
`problems that they have.
` Q. What percentage of your work is
`legal?
` A. I'd say about 50 percent.
`2 (Pages 2 to 5)
`
`APPEARANCES:
`
` SPENCER FANE LLP
` Attorneys for Petitioner
` 1000 Walnut Street, Suite 1400
` Kansas City, Missouri 64106
` BY: KYLE L. ELLIOTT, ESQ.
` kelliott@spencerfane.com
`
` KEVIN S. TUTTLE, ESQ.
` ktuttle@spencerfane.com
`
` PILLSBURY WINTHROP SHAW PITTMAN LLP
` Attorneys for Patent Owner
` 501 West Broadway, Suite 1100
` San Diego, California 92101
` BY: STEVEN A. MOORE, JD, Ph.D.
` steve.moore@pillsburylaw.com
`
` -AND-
`
` FOX ROTHSCHILD LLP
` 222 South Ninth Street, Suite 2000
` Minneapolis, Minnesota 55402
` BY: LUKE D. TOFT, ESQ.
` ltoft@foxrothschild.com
`
` * * *
`
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`TransPerfect Legal Solutions
`212-400-8845 - Depo@TransPerfect.com
`
`Sleep Number Corp.
`EXHIBIT 2065
`IPR2019-00514
`Page 2
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` J. PHINNEY
` Q. 50?
` A. Yes.
` Q. And the other 50 percent is of what
`nature?
` A. It's engineering work, particularly
`helping clients understand the cause of failure
`of their products or assisting them with
`calculating things like electromagnetic.
` Q. What percentage of your current work
`is related to fluid dynamics?
` A. I'd say just this litigation, so
`right now maybe 10 percent.
` Q. Ten percent. About how many hours
`have you worked on this litigation?
` A. I'm going to guess it was about 250.
` Q. Was all that in 2019?
` A. No.
` Q. Which years did that work happen?
` A. I recall -- I was definitely working
`on this or the related district court matter one
`year ago, approximately, so October 2018.
` Q. Any other work that you're currently
`doing in pneumatic systems --
` A. No.
`
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` J. PHINNEY
` Q. Your work was related to the control
`of the pneumatic system?
` A. It involved a pneumatic system and a
`hydraulic system. The main working fluid for the
`actuators, which are these actuators around the
`experiment that would move the experiment for --
`the working fluids there was this mineral oil, so
`that was a hydraulic system, but it also included
`a pneumatic component, because one way I created
`a source of pressurized hydraulic fluid for the
`experiment was with a pneumatic control system
`and a pressurized volume of TRINYTE (phonetic).
` Q. Did that have any relation to traffic
`safety?
` A. That was not related to traffic
`safety.
` Q. Did it have any relation to trucking,
`generally?
` A. I wouldn't say that it had a general
`relationship to that, no.
` Q. Did it have any relation to
`biomedical devices?
` A. I'd say, no.
` Q. Or measurement of blood pressure?
`
`Page 7
`
`Page 9
`
`1
` J. PHINNEY
`2
` Q. -- or hydraulics?
`3
` A. No.
`4
` Q. Looking at your qualifications on
`5
`page 2 of this document, it says you worked on
`6
`the Laser Interferometric Gravitational Wave
`7 Observatory.
`8
` What specifically was your work
`9
`related to in that experiment?
`10
` A. So I had worked on the hydraulic
`11
`power supply for the experiment in order to
`12
`handle the outer stage isolation of the
`13
`experiment, which was itself in a vacuum.
`14
` Q. Outer stage isolation, could you
`15
`explain that a little more?
`16
` A. Yes. This is an experiment that is
`17
`designed to be in an inertial frame of reference,
`18
`and that means it needs to reject movements of
`19
`the earth with respect to an inertial frame.
`20
` So, for instance, seismic, the
`21 motions of the earth need to be detected, and if
`22
`they go left, the experiment needs to push right
`23
`to counteract them and sort of remain in what I'm
`24
`calling this inertial frame of reference. One
`25 will just be, you might say truly stellar.
`
`1
` J. PHINNEY
`2
` A. No.
`3
` Q. Did it have any relation to
`4
`inflatable beds?
`5
` A. I would say for all of these where
`6
`I'm answering, no, this is a-- it's not a
`7
`scientific experiment, so it's a physics
`8
`experiment, ultimately.
`9
` So apart from the principles of the
`10
`pneumatic and the hydraulic and fluid control
`11
`systems, I don't think there is a relationship.
`12
` Q. Thank you. Dr. Phinney, in paragraph
`13
`11, you list a number of cases and legal matters
`14
`in which you were involved. Is this a complete
`15
`list of your engagements in the legal
`16
`environment?
`17
` A. No. I think this would be the cases
`18
`in which I offered testimony at the time when I
`19
`submitted this report.
`20
` Q. Dr. Phinney, has a court ever found
`21
`your testimony to be unreliable?
`22
` A. I don't believe so.
`23
` Q. Dr. Phinney, have you ever made a
`24 mistake in your analysis in your reports?
`25
` A. In my analysis, I'm not aware of
`3 (Pages 6 to 9)
`
`TransPerfect Legal Solutions
`212-400-8845 - Depo@TransPerfect.com
`
`Sleep Number Corp.
`EXHIBIT 2065
`IPR2019-00514
`Page 3
`
`

`

`Page 10
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`Page 12
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`1
` J. PHINNEY
`2
`that. You know, I have had typos, but I'm not
`3
`aware of a mistake in any report.
`4
` Q. Were any of these cases related to
`5
`pneumatic systems?
`6
` A. The -- number N there, the
`7 Westinghouse air brake case, that was related to
`8
`air brakes for trains, which is a pneumatic
`9
`system.
`10
` Q. Would you say that that's related to
`11
`transportation safety?
`12
` A. Yes. I think that's a fair
`13
`characterization, but that's --
`14
` Q. Thank you.
`15
` A. Not just that, but I think that's
`16
`part of it that's related to.
`17
` Q. Is it related to trucking?
`18
` A. I give the same sort of answer that I
`19
`gave previously. Not -- it's not really, apart
`20
`from the principles of the operation in a
`21
`pneumatic control system, for instance.
`22
` Q. Is it related to measurement of blood
`23
`pressure?
`24
` A. Again, the same kind of answer, no,
`25 with that qualification.
`
`Page 11
`
`1
` J. PHINNEY
`2
` Q. Was this during your PhD?
`3
` A. Yes. That's fair. It was after I
`4
`got my master's, but before I got my PhD.
`5
` Q. Dr. Phinney, what was your
`6
`dissertation topic?
`7
` A. It was-- for the PhD?
`8
` Q. Um-hum.
`9
` A. It related to power electronics.
`10
` Q. So your work in the LIGO experiment
`11
`didn't relate to your research at MIT for your
`12
`PhD?
`13
` A. That is correct. One thing, I'm
`14
`sorry, if I can clarify, you asked what my PhD
`15 was about. My PhD also included some aspects of
`16
`electric mechanical conversion.
`17
` Q. Thank you. While you were working on
`18
`the LIGO experiment, how much of your time was
`19
`spent in your research at MIT versus how much of
`20
`your time was spent working on the hydraulics and
`21
`pneumatics of the LIGO experiment?
`22
` A. It was all LIGO. For that time, I
`23 was working on that constantly, apart from taking
`24
`classes.
`25
` Q. What percentage of your time did your
`Page 13
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` J. PHINNEY
` Q. Inflatable beds?
` A. The same answer, no, with that
`qualification.
` Q. Dr. Phinney, how many patents are you
`an inventor of?
` A. I think the answer is two. It may be
`three. I don't see where I wrote that here.
` Q. Are any of your patents related to
`pneumatics?
` A. No.
` Q. Are any of them related to
`hydraulics?
` A. No.
` Q. Back to paragraph 5, when you were
`working on the LIGO experiment, were you employed
`by MIT?
` A. I think that's a fair way to say it.
`It's an assistantship, so you're paid through a
`laboratory, which in this case was a
`collaborative endeavor between Cal Tech, MIT,
`Stanford.
` Q. Were you a student at MIT at the
`time?
` A. Yes.
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` J. PHINNEY
`classwork take?
` A. In the summer, it took no time, and
`during the school year, I'd say about 50 percent.
` Q. How long did you work on the LIGO
`experiment in terms of months?
` A. I think about 12 months.
` Q. Okay, so you would say out of that
`12 months, three quarters of it was 50 percent
`time, and the other quarter was a hundred
`percent; is that a reasonable estimate?
` MR. TUTTLE: Objection to form.
` A. That -- it's -- that seems
`reasonable, yes. It was for that time I spent a
`-- I'd say the majority of my time on LIGO.
` Q. Okay. Then, Dr. Phinney, is it your
`opinion that you have at least one year
`experience with hydraulics, fluid control and
`pneumatic air bed controllers?
` A. I think I have that or the
`equivalent, yes.
` Q. Didn't you just testify that it was
`substantially less than a year, and your only
`experience with pneumatics was the LIGO
`experiment?
`
`TransPerfect Legal Solutions
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`4 (Pages 10 to 13)
`
`Sleep Number Corp.
`EXHIBIT 2065
`IPR2019-00514
`Page 4
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`

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` J. PHINNEY
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` A. I think the experience I had is, you
`3
`know, I think is equivalent to that amount of
`4
`experience.
`5
` Q. Thank you. So starting at paragraph
`6
`19 in your declaration, you have a number of
`7
`claim terms that have been offered here for
`8
`construction. Do you see those?
`9
` A. Yes.
`10
` Q. Do you know if the board adopted any
`11
`of those?
`12
` A. I don't believe the board did is my
`13
`recollection.
`14
` Q. Your opinions in your declaration are
`15
`based on the claim constructions that you've
`16
`offered here; are they not?
`17
` A. I would say that they are, but that
`18 my opinions wouldn't change with other claim
`19
`constructions that have been offered in this
`20
`case.
`21
` Q. Specifically, paragraph 20, the first
`22
`sentence, doesn't it say that you've applied the
`23
`constructions below?
`24
` A. Yes.
`25
` Q. That means the constructions in
`
`1
` J. PHINNEY
`2
` MR. TUTTLE: Objection, form.
`3
` A. Yes. I believe so.
`4
` Q. Take a look at page 4. Under D1,
`5
`first sentence, do you see where it says,
`6
`"Mahoney is directed to a system and method for
`7
`adjusting the pressure in an inflatable object
`8
`such as an air bed"?
`9
` Do you see that?
`10
` A. Yes.
`11
` Q. Is that how you characterized
`12 Mahoney?
`13
` A. I can check.
`14
` Q. Would you, please.
`15
` A. I'll look at Exhibit 1, so, for
`16
`instance, in my paragraph 70, I have a similar
`17
`sentence, but I say that the '154 patent is
`18
`directed to a method for adjusting air pressure
`19 within an air bed.
`20
` Q. Thank you. Do you agree that the
`21
`patent is directed to air beds and not generally
`22
`inflatable objects?
`23
` A. It seems to be what I'm saying here,
`24
`that the '154 patent is directed to adjusting air
`25
`pressure within an air bed.
`
`Page 15
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`Page 17
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` J. PHINNEY
`paragraphs 21 through 26; does it not?
` A. Yes, but as I --
` Q. Thank you. Okay, let's take a look
`at -- I'm going to be handing you another
`document.
` (Whereupon, Phinney Exhibit 2,
` petition for interparty's review of patent
` 9737154 was hereby marked for
` identification, as of this date.)
` Q. Dr. Phinney, have you seen this
`document before?
` A. Yes.
` Q. What is this document?
` A. This is the petition for interparty's
`review of patent 9737154.
` Q. Did you draft this document?
` A. No.
` Q. Were you involved in drafting this
`document?
` A. No.
` Q. Are you aware that this document
`cites Exhibit 1, your declaration?
` A. Yes. That's my understanding.
` Q. Do you agree with this document?
`
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` J. PHINNEY
` Q. Thank you. So let's go back to your
`background for just a moment. That will be back
`in Exhibit 1.
` Any of your time in your professional
`career other than this casework related to
`inflatable beds?
` MR. TUTTLE: Objection to form.
` A. I have experience related to
`different types of blowers and flow control
`systems that I think would be applicable to
`inflatable beds.
` Q. Have you worked with inflatable beds
`before?
` A. Without -- not working with
`inflatable beds, but I think related to, because
`it's a similar type of application.
` Q. What application is that?
` A. Related to CPAP systems, for
`instance.
` Q. Do the CPAP systems show up in your
`CV here somewhere?
` A. No. I don't believe I've testified
`about them.
` Q. What is your knowledge of CPAP
`5 (Pages 14 to 17)
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`EXHIBIT 2065
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`Page 5
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`

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` J. PHINNEY
`2
`systems?
`3
` A. Well, the hardware that's used to
`4 maintain flow for treatment for a patient and the
`5
`different types of failure modes that can occur
`6
`in the systems.
`7
` Q. In what context did you work for CPAP
`8
`systems?
`9
` A. Well, as I explained -- you know,
`10
`about half of my time relates to engineering
`11 work, so it's in the context with that
`12
`engineering work.
`13
` Q. Specifically, what kind?
`14
` A. I think if -- you know, I wouldn't
`15 want to --
`16
` MR. TUTTLE: Objection, relevance.
`17
` MR. MOORE: If it's got a
`18
` confidentiality concern, then I'll
`19
` withdraw that question.
`20
` Q. The work that you did, without
`21
`divulging anything confidential, how did it
`22
`relate to something that would be analogous to
`23
`beds?
`24
` MR. TUTTLE: Objection to form.
`25
` A. So the controller and blower, for
`
`Page 19
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` J. PHINNEY
`2
`'747 and the '154 patents, what was your
`3
`experience with the skilled artisan in the field
`4
`at the time?
`5
` A. Can you repeat that question? I'm
`6
`sorry.
`7
` Q. At the time of the invention of the
`8
`'747 and '154 patents, did you have any
`9
`experience with engineers working in the field
`10
`that would be skilled artists in the inflatable
`11
`bed industry?
`12
` MR. TUTTLE: Objection to form.
`13
` A. I had experience with skilled
`14
`artisans in the field of pneumatics and pneumatic
`15
`control and in hydraulics, and I -- but they, as
`16
`far as I know, weren't specifically working in
`17
`the air bed industry.
`18
` Q. So nothing in the air bed industry;
`19
`is that your answer?
`20
` A. I think they were skilled artisans or
`21 would have been skilled artisans had they turned
`22
`their attention to the air bed industry, and so
`23 what I'm saying is that they had skill in
`24
`pneumatics, in fluid control, hydraulics and so
`25
`forth, but I don't believe that they worked in
`Page 21
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` J. PHINNEY
`instance, or a pump in a bed, there's similar
`types of structures and controllers in CPAP
`systems.
` Q. How does the CPAP system maintain a
`desired pressure?
` MR. TUTTLE: Objection to form.
` A. I believe it is with the pressure
`transducer.
` Q. The pressure transducer would measure
`a pressure; would it not?
` A. Yes.
` Q. How does the CPAP system maintain a
`desired pressure?
` MR. TUTTLE: Objection to form.
` A. So you know, as I said, there is a
`controller associated with a blower, and in that
`case I think the controller is responsible for
`controlling or maintaining the pressure required
`for treatment.
` Q. Does it calculate an error?
` A. In that, I don't know.
` MR. TUTTLE: Objection to form.
` A. I don't.
` Q. At the time of the invention in the
`
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` J. PHINNEY
`2
`the air bed industry.
`3
` Q. Do you know the dynamic range in
`4
`terms of PSI on an inflatable bed?
`5
` A. My understanding is that it's full
`6
`typically with one PSI gauge pressure.
`7
` Q. Is that information that you would
`8
`have had in 2008?
`9
` A. Specifically, I don't imagine I would
`10
`have.
`11
` Q. How about the tire industry, dynamic
`12
`range on tires used for logging trucks?
`13
` MR. TUTTLE: Objection to form.
`14
` A. Yes. I'm sorry. Could you just --
`15
`could you ask that question --
`16
` Q. Sure, absolutely.
`17
` A. -- just to clarify.
`18
` Q. Absolutely. Dr. Phinney, do you know
`19 what the dynamic range in the tires on logging
`20
`trucks would be?
`21
` MR. TUTTLE: Objection to form.
`22
` A. Well, I think it could range, for
`23
`instance, from about, I think, in the middle it
`24
`says somewhere around 10 PSI to about 50 PSI.
`25
` Q. In blood pressure cuffs?
`6 (Pages 18 to 21)
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` J. PHINNEY
`2
` A. In blood pressure cuffs, we typically
`3 measure in parts in millimeters of mercury, you
`4
`know, so that can-- you know, if you're measuring
`5
`for a patient, that can go up to about 180, 190.
`6 You can have readings that high for the systolic
`7
`reading.
`8
` So somewhere a little bit north of
`9
`that I think would be the pressure range in a
`10
`blood pressure cuff application.
`11
` Q. Millimeters of mercury is analogous
`12
`to PSI?
`13
` A. Well, they are both units of
`14
`pressure.
`15
` Q. Can you convert from mercury?
`16
` A. Yes.
`17
` Q. If I were to try to convert 150
`18 millimeters of mercury, what PSI would it be?
`19
` A. Well, I think it would be -- let's
`20
`think that about what, 760 millimeters of mercury
`21
`is about 14.6 PSI. So you asked about
`22
`150 millimeters of mercury, so we take 150 or
`23
`760. That's approximately, what? So it's
`24
`approximately a fifth, so a fifth into 14.6,
`25
`approximately, 3 PSI.
`
`1
` J. PHINNEY
`2
` Q. Okay. I just didn't want to be
`3 missing something. Thank you, and those errors
`4
`are inconsequential. I just didn't know if I was
`5 missing something. Thank you. Let's take a look
`6
`at paragraph 27.
`7
` A. 27, I'm there.
`8
` Q. This is a description of invalidity
`9
`under anticipation; is it not?
`10
` A. Yes.
`11
` Q. Where did you get this understanding?
`12
` A. From attorneys.
`13
` Q. From attorneys, okay. And is it your
`14
`opinion that any of the claims of either the '747
`15
`or the '154 patent are anticipated?
`16
` A. I'm not offering that opinion, no.
`17
` Q. The last sentence of paragraph 27
`18
`says:
`19
` "The prosecution history may limit
`20
` the interpretation of the claim,
`21
` especially if the patentee disavowed or
`22
` disclaimed any coverage in order to obtain
`23
` allowance of the claim."
`24
` Does it not?
`25
` A. That -- yes.
`
`Page 23
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`
` J. PHINNEY
` Q. Okay. What did you know about the
`problems that were facing the inflatable bed
`industry in 2008?
` MR. TUTTLE: Objection to form.
` A. So just the problems facing the
`industry in 2008?
` Q. Yes.
` A. And my awareness also in 2008?
` Q. Absolutely.
` A. At that time I don't think I-- in
`2008, I don't think I would have thought about
`the problems facing the air bed industry.
` Q. Can you go to paragraph 15 on page 6
`of Exhibit 1.
` A. I am there.
` Q. The last sentence of that, could you
`read that, please.
` A. Sure.
` "I will refer to prior art references
` discussed in this Declaration by the short
` names provided in Appendix B."
` Q. Do you know where Appendix B is?
` A. Yes. That, I don't think got
`prepared; is that--
`
`1
` J. PHINNEY
`2
` Q. Did you review the prosecution
`3
`history of the '747 and '154 patents?
`4
` A. Yes.
`5
` Q. Is that what you base your offered
`6
`claim construction in paragraphs 21 through 26
`7
`on?
`8
` A. I think in part.
`9
` Q. What other did you rely on?
`10
` A. I was just trying to read the claims
`11
`in light of the specification and just to
`12
`articulate what I thought certain claim terms
`13 would mean to a person of ordinary skill.
`14
` Q. Starting at paragraph 30, this is a
`15
`discussion of invalidity under section 103, also
`16
`known as Obviousness; is it not?
`17
` A. Yes.
`18
` Q. In order to ascertain invalidity or
`19
`an opinion of invalidity under obviousness, what
`20
`is the first thing that you need to do?
`21
` A. Well, I think I can say one thing you
`22
`have to do early on, at least, and possibly the
`23
`first thing would be to read the claims in light
`24
`of the specification, understand the claimed
`25
`subject matter.
`
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`EXHIBIT 2065
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`Page 7
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`Page 26
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`1
` J. PHINNEY
`2
` Q. In paragraph 31, you have a number of
`3
`factors and steps here; do you not?
`4
` A. Yes.
`5
` Q. What are they?
`6
` A. These are called the secondary
`7
`indicia of nonobviousness.
`8
` Q. So the scope and content of prior
`9
`art, you're saying that that is the secondary
`10
`indicia of nonobviousness?
`11
` A. Oh, no. I-- sorry. I was looking at
`12
`the small Roman numeral numbered list.
`13
`Previously in this paragraph 31, there is the --
`14
`there is an additional list with items 1 to 4.
`15
` Q. Yes.
`16
` A. And your question about those was
`17 what?
`18
` Q. I was asking you to take a look at
`19
`those, because my next question was did you apply
`20
`these?
`21
` A. I apologize, sorry. Before your
`22
`question about did I apply these, your question
`23 was what?
`24
` Q. I asked you if you would look at
`25
`those four, and I asked you what they were, and
`Page 27
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`1
` J. PHINNEY
`2
`patents?
`3
` A. I don't believe I did.
`4
` Q. In your declaration, other than
`5
`listing the secondary considerations, did you
`6
`provide any analysis on any of the secondary
`7
`considerations?
`8
` A. I don't believe I did.
`9
` Q. What is your understanding of the
`10
`first of the nonobvious consideration in the
`11
`small I?
`12
` A. So you're referring to whether the
`13
`invention proceeded in a direction contrary to
`14
`accepted wisdom in the field?
`15
` Q. Yes.
`16
` A. I think it's a secondary
`17
`consideration that an invention may be nonobvious
`18 when it does something opposite to what the
`19
`industry as a whole might do.
`20
` Q. How would you analyze that?
`21
` A. Well, you need to compare two things.
`22 You'd need to compare something showing,
`23
`reflecting what the accepted wisdom in the field
`24
`is and try to understand how a purported
`25
`invention aligns with that. Is it going against
`Page 29
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`1
` J. PHINNEY
`2
`then we got lost on --
`3
` A. Yes.
`4
` Q. -- whether they were secondary
`5
`indicia or not, but those four factors, did you
`6
`apply them in your analysis?
`7
` A. Yes. I'd say so.
`8
` Q. With respect to the scope and the
`9
`content of the prior art, did you look at the
`10
`entire scope of each reference?
`11
` A. I looked at many air bed references
`12
`and pneumatic references and hydraulic references
`13
`to understand what a person of ordinary skill
`14 might encounter.
`15
` Q. With respect to the Mittal reference,
`16
`did you look at the entire scope of that
`17
`reference?
`18
` A. I looked at patents that cited it. I
`19
`looked at the citations within it.
`20
` Q. Did you review its file history?
`21
` A. I did not review the file history for
`22
`that reference, no.
`23
` Q. Did you review the file history of
`24
`any of the references that you have applied
`25
`against the claims of the '747 or the '154
`
`1
` J. PHINNEY
`2
`the grain?
`3
` Q. Would you say at the time of my tell,
`4
`the accepted wisdom in the industry, the
`5
`pneumatics industry was you needed to stop
`6
`inflation in order to make an accurate
`7 measurement?
`8
` MR. TUTTLE: Objection to form.
`9
` A. I don't-- I wouldn't say that, no.
`10
` Q. Is that what Mittal says?
`11
` A. Well, Mittal has a way to use offsets
`12
`in order to obtain an accurate pressure reading
`13
`during flow.
`14
` Q. Why does Mittal stop inflation?
`15
` A. One way to put that is to check on an
`16
`ongoing basis the accuracy of that offset
`17
`correction that I had mentioned in my previous
`18
`answer.
`19
` Q. Is not stopping inflation contrary to
`20
`stopping inflation?
`21
` A. Well, in any inflation process that
`22 will --
`23
` Q. That was a yes or no question, Dr.
`24
`Phinney. I'm sorry.
`25
` Is stopping inflation contrary to not
`8 (Pages 26 to 29)
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`Page 30
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`1
` J. PHINNEY
`2
`stopping inflation?
`3
` MR. TUTTLE: Objection to form.
`4
` A. And my answer is any inflation
`5
`process that will have to stop at some point. It
`6
`doesn't continue indefinitely so --
`7
` Q. That doesn't answer my question. I'm
`8
`sorry. I'm trying to find a way to ask it
`9
`differently. Is stopping different than not
`10
`stopping?
`11
` A. Stopping is different than not
`12
`stopping.
`13
` Q. Thank you. In terms of the second
`14
`factor, "long felt but unresolved need," what
`15 would you say the need was in the Mittal
`16
`reference?
`17
` A. Well, one need is something I mention
`18
`at paragraph 94 that:
`19
` "A particular object of Mittal is the
`20
` use of dynamic offset values to control
`21
` inflation and deflation adjustment cycles,
`22
` which are updated after pressure
`23
` adjustment cycles to account for changing
`24
` pressurization characteristics," and one
`25
` thing that can do is eliminate hunting or
`Page 31
`
`1
` J. PHINNEY
`2
`inflation in order to achieve accuracy during a
`3
`pressure adjustment. The accuracy of that
`4
`process is indeed shacked after inflation, for
`5
`instance, ceases.
`6
` Q. I think that's yes. Is that yes?
`7 Does Mittal shut down to check the accuracy of
`8
`inflation?
`9
` MR. TUTTLE: Objection to form.
`10
` A. I think the way I put it is Mittal
`11
`shuts down -- ceases inflation in order to check
`12
`the accuracy or improve the accuracy of offsets
`13
`that reviews during inflation.
`14
` Q. Let's go back to paragraph 31 again
`15
`for a moment. What is your understanding of the
`16
`need that was addressed by the '747 and '154
`17
`patents?
`18
` A. On paragraph 70, I state that the
`19
`'154 patent purports to address the need for
`20
`adjusting pressure in an air bed that minimizes
`21
`the amount of time and the number of iterations
`22
`necessary to achieve a desired pressure in their
`23
`bladder while also increasing the accuracy of the
`24
`actual bladder pressure.
`25
` Q. So minimizing time and improving
`Page 33
`
`1
` J. PHINNEY
`2
` the repeated need to adjust pressure.
`3
` Q. Yet Mittal still shuts down for
`4
`accurate measurement; does it not?
`5
` MR. TUTTLE: Objection to form.
`6
` A. So as I mentioned before, Mittal uses
`7
`offsets --
`8
` Q. That wasn't my question. I'm sorry.
`9
`I do apologize.
`10
` MR. ELLIOTT: Allow him to answer.
`11
` If you want to go back to a yes or no
`12
` question, then go back to a yes or no
`13
` question. We obviously don't have a court
`14
` judge to instruct him.
`15
` MR. MOORE: I realize that.
`16
` Q. First of all, I'm sorry. I never
`17 meant to interrupt you.
`18
` Secondly, does Mittal shut down to
`19
`take accurate measurements?
`20
` That's simple yes or no, and, Dr.
`21
`Phinney, your attorneys are going to give you
`22 more than enough opportunity to explain yourself
`23
`later.
`24
` A. Like I said, every inflation process
`25
`stops. Mittal uses offset factors during
`
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` J. PHINNEY
`accuracy, is that your opinion of a need that was
`addressed in these two patents?
` A. That's a shorter way to put it, but I
`think it's -- roughly gets at what I'm stating
`here.
` (Whereupon, a short recess was
` taken.)
` Q. Dr. Phinney, would you go to
`paragraph 31 of your declaration, and this time
`I'd like to direct your attention to sub 4.
` A. I'm there.
` Q. What I'd like to ask you is how would
`you know if others were copying the invention?
` A. I guess one way would be, you know,
`if you had one party that you thought was
`innovating a