Petitioner’s Motion to Exclude Evidence
`IPR2015-00698
`U.S. Patent No. 8,092,345
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`
`UNDER ARMOUR, INC.
`Petitioner,
`
`
`
`v.
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`
`
`ADIDAS AG,
`Patent Owner.
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`
`
`
`
`
`
`
`
`
`Case No. IPR2015-00698
`U.S. Patent No. 8,092,345
`
`
`
`
`
`
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`
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`PETITIONER’S MOTION TO EXCLUDE
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`

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`Petitioner’s Motion to Exclude Evidence
`IPR2015-00698
`U.S. Patent No. 8,092,345
`
`TABLE OF CONTENTS
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`
`Page
`
`RELIEF REQUESTED ........................................................................................................1 
`STATEMENT OF FACTS ..................................................................................................2 
`THE BOARD SHOULD EXCLUDE EXHIBITS USED ONLY FOR
`SUPPORTING PATENT OWNER’S SECONDARY CONSIDERATIONS
`ANALYSIS (EXs. 2003 and 2005-2022) ............................................................................3 
`THE BOARD SHOULD EXCLUDE DR. MICHALSON’S TESTIMONY ON
`SECONDARY CONSIDERATIONS OF NONOBVIOUSNESS (EX. 2002, ¶¶
`72-86) ...................................................................................................................................6 
`Dr. Michalson’s Testimony on the Commercial Success and Industry
`A. 
`Praise is Irrelevant....................................................................................................6 
`Dr. Michalson is Not Qualified to Testify on the Commercial Success of
`the MMF Mobile Applications and His Analysis and Methodology in
`Paragraphs 72 Through 81 is Unreliable .................................................................7 
`Dr. Michalson is not qualified to offer expert testimony on the
`1. 
`commercial success of the MMF applications. ............................................7 
`Dr. Michalson does not provide any reliable methodology to
`explain how the limited information he read leads to a conclusion
`of commercial success. ................................................................................8 
`Dr. Michalson’s Analysis and Methodology in Paragraphs 72 and 82-86 is
`Unreliable ...............................................................................................................12 
`To the Extent Dr. Michalson’s Testimony on Secondary Considerations in
`Paragraphs 72-86 is Lay Testimony, It is Improper Under FRE 701 ....................14 
`PATENT OWNER’S WEBSITE PRINTOUTS HAVE NOT BEEN
`AUTHENTICATED AND SHOULD BE EXCLUDED (EXs. 2007, 2017-2020)...........14 
`CONCLUSION ..................................................................................................................15 
`
`B. 
`
`2. 
`
`C. 
`
`D. 
`
`
`
`
`I. 
`II. 
`III. 
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`IV. 
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`V. 
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`VI. 
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`

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`Petitioner’s Motion to Exclude Evidence
`IPR2015-00698
`U.S. Patent No. 8,092,345
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`
`Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
`776 F.2d 281 (Fed. Cir. 1985)....................................................................................................4
`
`Daubert v. Merrell Dow Pharms., Inc.,
`43 F.3d 1311 (9th Cir. 1995) ...........................................................................................1, 9, 11
`
`Daubert v. Merrell Dow Pharms., Inc.,
`509 U.S. 579 (1993) .................................................................................................................11
`
`General Elec. Co. v. Joiner,
`522 U.S. 136 (1997) ...................................................................................................................9
`
`In re Huai-Hung Kao,
`639 F.3d 1057 (Fed. Cir. 2011)..................................................................................................4
`
`In re Huang,
`100 F.3d 135 (Fed. Cir. 1996)..................................................................................................11
`
`Kumho Tire Co. et al. v. Carmichael et al.,
`526 U.S. 137 (1999) .................................................................................................................12
`
`St. Jude Med., Cardiology Div., Inc. v. Bd. of Regents of the Univ. of Mich.,
`No. IPR2013-00041, 2014 WL 1783276 (May 1, 2014) ...................................................1, 4, 6
`
`
`
`
`
`ii
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`
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`

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`Petitioner’s Motion to Exclude Evidence
`IPR2015-00698
`U.S. Patent No. 8,092,345
`PETITIONER’S EXHIBIT LIST
`
`Exhibit
`Number
`
`Description
`
`1001 U.S. Patent No. 8,092,345 to Ellis et al.
`
`1002 Docket Report for Civil Action No. 1:14-cv-00130-GMS (excerpt)
`
`1003
`
`Expert Declaration of Dr. Joseph Paradiso
`
`1004 U.S. Patent No. 6,513,532 to Mault et al.
`
`1005 U.S. Patent No. 6,321,158 to DeLorme et al.
`
`1006
`
`Ari T. Adler, A Cost-Effective Portable Telemedicine Kit for Use in
`Developing Countries (May 2000) (M.S. thesis, Massachusetts Institute
`of Technology) (on file with MIT Libraries) (“Telemedicine Kit”)
`
`1007 U.S. Patent no. 6,790,178 to Mault et al.
`1008 NavTalk™ Cellular Phone/GPS Receiver, Owner’s Manual and
`Reference Guide (January 2000)
`
`1009
`
`Toshiba Satellite 2530CDS Product Specifications (February 2000)
`
`1010 U.S. Patent No. 5,864,870 to Guck et al.
`
`1011
`
`Reply Expert Declaration of Dr. Joseph Paradiso
`
`1012 October 21, 2015 deposition transcript of Dr. William Michalson
`
`1013
`
`1014
`
`1015
`
`1016
`
`MapMyFitness, Inc.’s non-infringement contentions (Excerpt of
`Defendant MapMyFitness, Inc.’s Supplemental Objections and
`Responses to Plaintiffs’ First Set of Interrogatories (Nos. 3, 6-12))
`
`Expert Declaration of Julie Davis
`
`Biography of Zac Garthe
`
`Biography of Robert T. Vlasis
`
`
`iii
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`

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`Petitioner’s Motion to Exclude Evidence
`IPR2015-00698
`U.S. Patent No. 8,092,345
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`RELIEF REQUESTED
`
`Petitioner requests the Board to exclude the following evidence relied upon
`
`I.
`
`
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`by Patent Owner under Federal Rules of Evidence (“FREs”) 402, 701, 702, and
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`901: Exs. 2003, 2005-2022, and paragraphs 72-86 from Ex. 2002, the Declaration
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`of William R. Michalson, Ph.D. This evidence is used solely to support Patent
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`Owner’s assertions of commercial success and industry praise of certain mobile
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`applications accused of infringing the 345 Patent in a co-pending district court
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`litigation. Because there is no finding—nor can there be in this proceeding—that
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`these mobile applications practice the 345 Patent claims (see See St. Jude Med.,
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`Cardiology Div., Inc. v. Bd. of Regents of the Univ. of Mich., No. IPR2013-00041,
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`2014 WL 1783276, at *20 n.10 (May 1, 2014)), there is no nexus to make Patent
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`Owner’s secondary considerations analysis relevant under FRE 401. Moreover,
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`Dr. Michalson’s testimony on secondary considerations in paragraphs 72-86 of his
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`declaration should be excluded under FREs 701 and 702. Dr. Michalson does not
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`possess the qualifications to render an opinion on the commercial success of
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`products, and his entire secondary considerations analysis is fundamentally
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`unreliable—and therefore inadmissible—under Daubert and its progeny. Finally,
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`Patent Owner has offered no evidence from a witness with adequate knowledge to
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`authenticate Exhibits 2007 and 2017-2020 under FRE 901.
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`

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`Petitioner’s Motion to Exclude Evidence
`IPR2015-00698
`U.S. Patent No. 8,092,345
`For the reasons stated herein, Petitioner respectfully requests that the Board
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`
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`affirmatively strike this evidence. If the evidence is allowed to remain in the
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`record, Patent Owner could continue to rely on it on appeal to the Federal Circuit,
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`where Petitioner would be required to address this evidence on the merits again.
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`II.
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`
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`STATEMENT OF FACTS
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`The dispute between Petitioner and Patent Owner began in February 2014,
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`when Patent Owner filed the co-pending suit in the U.S. District Court of Delaware
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`alleging that Petitioner MapMyFitness’ (“MMF”) smartphone applications
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`infringed U.S. Patent No. 8,092,345 (the “345 Patent”). See Paper 9 at 2; Ex.
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`1013.005-006. Petitioner petitioned for this inter partes review, which was
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`instituted on August 14, 2015 for claims 1-3, 6-11, 15-17, and 20 (the “Instituted
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`Claims”) of the 345 Patent. Paper 9. Patent Owner filed its Response on
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`November 19, 2015. Paper 20. The Response relied on several exhibits (i.e., Exs.
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`2003, 2005-2022) only for purposes of supporting its analysis that the Instituted
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`Claims are nonobvious in view of secondary considerations. See Paper 20 at 29-49
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`(citing Ex. 2003), 27-30 (citing Ex. 2005), 28 (citing Exs. 2007, 2008), 28-29
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`(citing Ex. 2009), 30-32 (citing Ex. 2010), 33-35 (citing Ex. 2011), 35-37 (citing
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`Ex. 2012), 38-39 (citing Ex. 2013), 42-43 (citing Ex. 2014), 43 (citing Ex. 2015),
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`44 (citing Ex. 2016), 50 (citing Exs. 2017-2019), 51 (citing Ex. 2020), 51-52
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`2
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`Petitioner’s Motion to Exclude Evidence
`IPR2015-00698
`U.S. Patent No. 8,092,345
`(citing Ex. 2021), 29-30 (citing Ex. 2022).1 The Response also relied on Ex. 2002,
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`the Declaration of Dr. Michalson, including paragraphs 72-86. See, e.g., Paper 20
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`at 26-29 (citing Ex. 2002 at ¶¶ 72-77), 49-52 (citing Ex. 2002 at ¶¶ 79-86).
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`
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`On November 24, 2015, Petitioner timely served its objections to Exs. 2002,
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`2003, and 2005-2022. Paper 21. There, Petitioner objected to Exs. 2003 and
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`2005-2022 under FRE 402 and Exs. 2007 and 2017-2020 under FRE 901. Id. at 3-
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`17. Petitioner also objected to, inter alia, paragraphs 72-86 of Ex. 2002 under
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`FREs 402, 701, 702. Id. at 2-3. Although Patent Owner provided a Notice of
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`Supplemental Evidence on December 9, 2015 (Paper 22), neither this Notice nor
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`the supplemental evidence cured these objections.
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`III. THE BOARD SHOULD EXCLUDE EXHIBITS USED ONLY FOR
`SUPPORTING PATENT OWNER’S SECONDARY
`CONSIDERATIONS ANALYSIS (EXs. 2003 and 2005-2022)
`
`
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`Patent Owner relies on Exs. 2003 and 2005-2022 in making its argument
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`that the alleged commercial success and industry praise of the MMF applications
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`support non-obviousness. See Paper 20 at 26-52. To be relevant, Patent Owner
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`must prove that this alleged commercial success and industry praise directly
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`1 A “Running USA” article is cited in the Response as Exhibit 2006, but this
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`document was not filed or served. See Paper 20 at 28. Instead, Patent Owner filed
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`and served a printout of MapMyFitness.com identified as Exhibit 2006. Patent
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`Owner does not cite to or otherwise rely on this printout in its Response.
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`3
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`

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`Petitioner’s Motion to Exclude Evidence
`IPR2015-00698
`U.S. Patent No. 8,092,345
`resulted from the MMF applications practicing—that is, infringing—the claims of
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`the 345 Patent. See, e.g., Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
`
`776 F.2d 281, 306 n. 42 (Fed. Cir. 1985) (“For secondary considerations to have
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`probative value, the decision maker must determine whether there is a nexus
`
`between the merits of the claimed invention and the secondary considerations.”)
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`(citations omitted); see also In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir.
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`2011) (“Where the offered secondary consideration actually results from
`
`something other than what is both claimed and novel in the claim, there is no
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`nexus to the merits of the claimed invention.” (emphasis added)). But
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`infringement of these applications is disputed in the co-pending litigation before a
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`U.S. district court. See Ex. 1013.005-006. Under these circumstances, Petitioner
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`respectfully submits that a determination of infringement cannot be made in this
`
`inter partes review. See St. Jude Med., Cardiology Div., Inc. v. Bd. of Regents of
`
`the Univ. of Mich., No. IPR2013-00041, 2014 WL 1783276, at *20 n.10 (May 1,
`
`2014) (“A determination that the Epic product is manufactured using the claimed
`
`process is outside our purview, and is the subject of an ongoing litigation between
`
`the parties.”). Because a finding of the requisite legal nexus is impossible here,
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`any evidence reliant on the existence of that nexus cannot be relevant and should
`
`be excluded.
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`4
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`Petitioner’s Motion to Exclude Evidence
`IPR2015-00698
`U.S. Patent No. 8,092,345
`Nonetheless, if the Board concludes that it can determine whether the MMF
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`
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`applications infringe the Instituted Claims, the undisputed evidence demonstrates
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`that the MMF applications do not practice any of the Instituted Claims. See Ex.
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`1011 at ¶¶ 212-235. For example, Dr. Paradiso explains that the MMF
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`applications running on smartphones do not “upload the journal entries to a
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`personal computer” as claimed (see Ex. 1001 at claims 1, 20), but instead upload
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`any collected and recorded data to a remote server. See Ex. 1011 at ¶¶ 214-228.
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`Even Patent Owner’s expert, Dr. Jones, concedes this: “The MMF mobile
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`applications use the mobile device’s cellular connection to upload [data] to a
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`server. The data may then be accessed on a personal computer, through
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`MapMyFitness.com and other MMF-branded websites.” Ex. 2003 at 20 (emphasis
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`added). Accordingly, a nexus between any evidence of commercial success or
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`industry praise and the Instituted Claims cannot be demonstrated from the record.
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`
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`Because there is not, and cannot be in this proceeding, a determination that
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`the MMF applications practice the Instituted Claims, there cannot be a nexus
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`between any secondary considerations evidence and the Instituted Claims.
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`Accordingly, the exhibits used in support—Exs. 2003 and 2005-2022—carry no
`
`probative value and must be excluded as inadmissible under FRE 403.
`
`5
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`

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`Petitioner’s Motion to Exclude Evidence
`IPR2015-00698
`U.S. Patent No. 8,092,345
`IV. THE BOARD SHOULD EXCLUDE DR. MICHALSON’S
`TESTIMONY ON SECONDARY CONSIDERATIONS OF
`NONOBVIOUSNESS (EX. 2002, ¶¶ 72-86)
`
`
`
`Dr. Michalson opines that the commercial success and industry praise of the
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`MMF applications supports a finding that the Instituted Claims are nonobvious.
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`See Ex. 2002, ¶¶ 72-86. He does not analyze any other secondary considerations
`
`or cite any other products allegedly demonstrating commercial success or industry
`
`praise. For the reasons explained below, the Board should exclude Dr.
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`Michalson’s testimony on secondary considerations under FREs 402, 701, and 702.
`
`A. Dr. Michalson’s Testimony on the Commercial Success and
`Industry Praise is Irrelevant
`
`
`
`As discussed above in Section III, there is not, and cannot be in this IPR, a
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`determination that the MMF applications practice the Instituted Claims. See See
`
`St. Jude Med., Cardiology Div., Inc. v. Bd. of Regents of the Univ. of Mich., No.
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`IPR2013-00041, 2014 WL 1783276, at *20 n.10 (May 1, 2014), Ex. 1011 at ¶¶
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`212-235. Without this determination, it is impossible for Dr. Michalson to
`
`establish a nexus between his arguments on secondary considerations and the
`
`Instituted Claims. Thus, Dr. Michalson’s testimony on secondary considerations at
`
`paragraphs 72-86 of Ex. 2002 is irrelevant and must be excluded under FRE 402.
`
`6
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`

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`Petitioner’s Motion to Exclude Evidence
`IPR2015-00698
`U.S. Patent No. 8,092,345
`B. Dr. Michalson is Not Qualified to Testify on the Commercial
`Success of the MMF Mobile Applications and His Analysis and
`Methodology in Paragraphs 72 Through 81 is Unreliable
`
`
`
`Dr. Michalson’s testimony on commercial success should be excluded under
`
`FRE 702. First, he lacks the qualifications to serve as an expert witness on
`
`whether the MMF applications have achieved commercial success and whether any
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`such success is attributable to features commensurate with the Instituted Claims.
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`Second, Dr. Michalson’s testimony fails to provide any reliable methodology for
`
`how he reached his conclusion from the limited information he read. He merely
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`paraphrases documentation about the number of MMF users, and Under Armour’s
`
`purchase of MMF, and then asks the Board to take his word that the MMF
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`applications are a commercial success. This is not enough to pass the threshold for
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`admissibility under FRE 702.
`
`1.
`
`Dr. Michalson is not qualified to offer expert testimony on the
`commercial success of the MMF applications.
`
`
`
`Dr. Michalson lacks the qualifications to testify as an expert on the
`
`commercial success of the MMF applications. Neither his declaration nor his
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`curriculum vitae (Attachment A to his declaration; Ex. 2002 at 43-81) demonstrate
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`that he has sufficient training or experience pertinent to evaluating the commercial
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`success of products. For example, his CV is devoid of any training in business,
`
`marketing, accounting, or product management. To the extent that Patent Owner
`
`asserts that he has some experience useful for evaluating commercial success, that
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`7
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`

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`Petitioner’s Motion to Exclude Evidence
`IPR2015-00698
`U.S. Patent No. 8,092,345
`is not enough. FRE 702 requires Dr. Michalson to explain how any such
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`experience permits him to reach the conclusions he offers. See FRE 702 advisory
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`committee’s note (2000) (“If the witness is relying solely or primarily on
`
`experience, then the witness must explain how that experience leads to the
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`conclusion reached, why that experience is a sufficient basis for the opinion, and
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`how that experience is reliably applied to the facts.”). He has not done that. As a
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`result, there has been no required showing that Dr. Michalson “is qualified as an
`
`expert by knowledge, skill, experience, training, or education ….” FRE 702.
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`2.
`
`Dr. Michalson does not provide any reliable methodology to
`explain how the limited information he read leads to a
`conclusion of commercial success.
`
`
`
`FRE 702 imposes the following requirements on expert testimony: “(a) the
`
`expert’s scientific, technical, or other specialized knowledge will help the trier of
`
`fact to understand the evidence or to determine a fact in issue; (b) the testimony is
`
`based on sufficient facts or data; (c) the testimony is the product of reliable
`
`principles and methods; and (d) the expert has reliably applied the principles and
`
`methods to the facts of the case.” FRE 702. Failure to satisfy any one of these
`
`requirements is grounds to exclude an expert’s testimony. Dr. Michalson’s
`
`testimony on commercial success fails to satisfy all four.
`
`
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`Dr. Michalson’s testimony on commercial success is not helpful in the least
`
`for determining whether the MMF applications are a commercial success. See
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`8
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`

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`Petitioner’s Motion to Exclude Evidence
`IPR2015-00698
`U.S. Patent No. 8,092,345
`FRE 702(a). In essence, he cites two documents—one stating that MMF had 30
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`million users in 2014 and another stating that Under Armour purchased MMF—
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`and concludes therefrom, without any explanation, that “the commercial success of
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`the MMF suite of products is plainly demonstrated ….” Ex. 2002 at ¶¶ 75-76.
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`Merely parroting information from source documents followed by an ipse dixit
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`conclusion on commercial success does not assist the trier of fact any more than
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`the source documents themselves. See General Elec. Co. v. Joiner, 522 U.S. 136,
`
`146 (1997) (stating that in some cases a court “may conclude that there is simply
`
`too great an analytical gap between the data and the opinion proffered.”). Further,
`
`as explained by the Advisory Committee Notes to the Federal Rules of Evidence,
`
`the “gatekeeping function [of FRE 702] requires more than simply ‘taking the
`
`expert’s word for it.’” FRE 702 advisory committee note (2000) (citing Daubert v.
`
`Merrell Dow Pharms., Inc., 43 F.3d 1311, 1319 (9th Cir. 1995) (“We’ve been
`
`presented with only the experts’ qualifications, their conclusions and their
`
`assurances of reliability. Under Daubert, that’s not enough.”)).
`
`
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`Dr. Michalson’s testimony is also not helpful for determining whether any
`
`the purported commercial success of the MMF applications is attributable to
`
`features claimed by the 345 Patent. See FRE 702(a). His testimony seems to
`
`suggest that the MMF applications’ commercial success is attributed to its “social
`
`media functions,” but he offers no explanation whatsoever on how the Instituted
`
`9
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`Petitioner’s Motion to Exclude Evidence
`IPR2015-00698
`U.S. Patent No. 8,092,345
`Claims cover “shar[ing] the workout via social media including via Twitter,
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`Facebook, and in the Activity Feed of the MapMyFitness apps.” Ex. 2002 at ¶ 79.
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`In fact, the Instituted Claims do not cover social media functions. Ex. 1011 at ¶
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`239. Even Dr. Jones’s declaration, upon which Dr. Michalson relies, does not
`
`establish this nexus. See Ex. 2003 at 11-30. His testimony here is just another
`
`example of asking Board to trust him unconditionally.
`
`
`
`Dr. Michalson’s opinions on commercial success also rely on insufficient
`
`facts. See FRE 702(b). To argue that the MMF applications are a commercial
`
`success, he relies on the two documents noted above. See also Ex. 1012 at 8:8-9:2
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`(“Q. … you mentioned two things. Again, it’s the number of MMF users and
`
`Under Armour’s purchase of MMF would be the two factors that you
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`considered…. Would there be any other information you would want to see to
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`assess whether or not the MapMyFitness suite of products are commercially
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`successful? [Objection] THE WITNESS: I wasn’t asked to consider any other
`
`factors and I didn’t consider any other factors ….”). But examining the number of
`
`users without placing that number in the proper context—i.e., the relevant market
`
`for MMF users2—is insufficient for the same reasons that evidence of units sold, as
`
`2 Dr. Michalson additionally cites “Running USA, 2014 State of the Sport – Part II:
`
`Running Industry Report, Ex. 2006,” but this document was not served or ever
`
`filed in this proceeding contrary to 37 C.F.R. § 42.51(b)(1)(i). Dr. Michalson cites
`
`10
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`

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`Petitioner’s Motion to Exclude Evidence
`IPR2015-00698
`U.S. Patent No. 8,092,345
`opposed to market share, “provides a very weak showing of commercial success, if
`
`any.” In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996). Further, the fact that one
`
`company purchased a second company does not indicate that the second
`
`company’s products were commercially successful. One would at least need to
`
`examine a variety of factors underlying the purchase (e.g., the value attributable to
`
`certain assets, the income statements of the target company, etc.). In rendering his
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`opinion, Dr. Michalson did not consider these things. See Ex. 1012 at 12:22-13:23.
`
`
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`Dr. Michalson’s opinion on commercial success is also the product of
`
`unreliable methods, and those methods were not reliably applied to the facts he
`
`examined.3 FRE 702(c)-(d). An examination of the Daubert factors highlights this
`
`unreliability. Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 593-594
`
`it for the proposition that there are 54 million runners in the United States, but it is
`
`unclear why this would be the relevant market for the MMF application. There is
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`no evidence that those 54 million runners constitute the market for those who log
`
`their workouts with the MMF applications or other competitive applications. At
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`the same time, looking only at “runners” is overly narrow in view of the fact that
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`the MMF applications allow users to log a variety of exercise activities, such as
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`cycling, hiking, swimming, weight lifting, yoga, and yard work.
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`3 As noted above, it is not clear what methods, if any, Dr. Michalson applied other
`
`than paraphrasing source documents and making an unfounded conclusions.
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`11
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`Petitioner’s Motion to Exclude Evidence
`IPR2015-00698
`U.S. Patent No. 8,092,345
`(1993). Specifically, relying solely on the number of users of a product and the
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`fact that the company making the product was purchased to measure commercial
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`success is not a technique or theory that has been measured or subject to peer
`
`review, that has a known or potential rate of error, that is governed by standards
`
`and controls, or that has been generally accepted. For example, as noted above,
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`courts have considered the number of sales relative to the relevant market for
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`evaluating commercial success, but have not expressly considered to the number of
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`users as a factor.
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`
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`Because Dr. Michalson’s testimony on commercial success fails each of the
`
`requirements under FRE 702, it should be excluded as inadmissible. See Kumho
`
`Tire Co. et al. v. Carmichael et al., 526 U.S. 137, 152 (1999) (“The objective of
`
`[the gatekeeping] requirement is to ensure the reliability and relevancy of expert
`
`testimony. It is to make certain that an expert, whether basing testimony upon
`
`professional studies or personal experience, employs in the courtroom the same
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`level of intellectual rigor that characterizes the practice of an expert in the relevant
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`field.” (emphasis added)).
`
`C. Dr. Michalson’s Analysis and Methodology in Paragraphs 72 and
`82-86 is Unreliable
`
`
`
`Dr. Michalson’s opinion on industry praise should be excluded under FRE
`
`702. His testimony in paragraphs 72 and 82-86 suffer from many of the same
`
`problems described above with regard to commercial success.
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`12
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`

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`Petitioner’s Motion to Exclude Evidence
`IPR2015-00698
`U.S. Patent No. 8,092,345
`In particular, his testimony does not satisfy FRE 702(a), because he does not
`
`
`
`explain how features discussed in the Running Shoes Guru article are covered by
`
`the Instituted Claims (i.e., he does not establish the requisite nexus).4 Ex. 2002 at ¶
`
`83. Similarly, in paragraphs 84-85, Dr. Michalson testifies about MapMyFitness
`
`receiving attention from media outlets and the industry, but he makes no effort to
`
`establish a nexus for these media and industry mentions. Ex. 2002 at ¶ 84-85.
`
`Instead, he concludes without analysis that all of these mentions “highlight[]
`
`features infringed, enabled, implicated, or contributed to by the Instituted Claims
`
`….” Id. Merely quoting from an exhibit and baldly concluding that this
`
`demonstrates industry praise of the Instituted Claims is not helpful to the Board.
`
`FRE 702 advisory committee note (2000) (noting that the “gatekeeping function
`
`[of FRE 702] requires more than simply ‘taking the expert’s word for it.’”).
`
`
`
`Relatedly, Dr. Michalson’s opinions do not rely on sufficient evidence under
`
`FRE 702(b). For example, Dr. Michalson has not testified that he reviewed any of
`
`the media and industry mentions listed in paragraph 84, and the fact that they were
`
`not individually cited and served as a matter of routine discovery indicates that he
`
`did not in fact rely on what these sources actually say. He therefore has no basis
`
`for concluding that any such praise is tied to claimed features of the 345 Patent.
`
`4 For example, noted above, Dr. Michalson does not explain how “social media
`
`features” are covered by the Instituted Claims. They are not. See Ex. 1011, ¶ 239.
`
`13
`
`

`
`Petitioner’s Motion to Exclude Evidence
`IPR2015-00698
`U.S. Patent No. 8,092,345
`Dr. Michalson’s testimony is additionally unreliable under FRE 702(c) and (d) for
`
`all of these reasons.
`
`
`
`Because Dr. Michalson’s testimony on industry praise fails each of the
`
`requirements under FRE 702, it should be excluded as inadmissible.
`
`D. To the Extent Dr. Michalson’s Testimony on Secondary
`Considerations in Paragraphs 72-86 is Lay Testimony, It is
`Improper Under FRE 701
`
`
`
`To the extent it is argued, or otherwise deemed, that Dr. Michalson’s
`
`testimony on secondary considerations is lay testimony, his opinion on commercial
`
`success, industry praise, and whether a showing of either serves as an indicia of
`
`nonobviousness, is improper under FRE 701. While Dr. Michalson’s descriptions
`
`of the evidence on which he relies may be “rationally based on [his] perception”
`
`under FRE 701(a), the conclusions he draws are “based on scientific, technical, or
`
`other specialized knowledge” counter to FRE 701(c). Accordingly, this lay
`
`opinion testimony is inadmissible.
`
`V.
`
`PATENT OWNER’S WEBSITE PRINTOUTS HAVE NOT BEEN
`AUTHENTICATED AND SHOULD BE EXCLUDED (EXs. 2007,
`2017-2020)
`
`
`
`Because Patent Owner has failed to authenticate website printouts at
`
`Exhibits 2007 and 2017-2020, they should be excluded. See Paper 20 at 28 (citing
`
`Ex. 2007), 50 (citing Exs. 2017-2019), 51(citing Ex. 2020). “To authenticate
`
`printouts from a website, the party proffering the evidence must produce some
`
`14
`
`

`
`Petitioner’s Motion to Exclude Evidence
`IPR2015-00698
`U.S. Patent No. 8,092,345
`statement or affidavit from someone with knowledge of the website . . . for
`
`example a web master or someone else with personal knowledge would be
`
`sufficient.” EMC Corp. v. PersonalWeb Tech., LLC, No. IPR2013-00086, 2014
`
`WL 2090665, at *16 (May 15, 2014) (citing U.S. v. Bansal, 663 F.3d 634, 667-68
`
`(Fed. Cir. 2011)); see also FRE 901(a) (“[T]he proponent must produce evidence
`
`sufficient to support a finding that the item is what the proponent claims it is.”).
`
`Patent Owner has offered no evidence from a witness with knowledge of the
`
`websites to authenticate the documents. Thus, these exhibits are inadmissible.
`
`VI. CONCLUSION
`
` Petitioner respectfully requests this Board to exclude Exs. 2003, 2005-2022,
`
`and paragraphs 72-86 from Ex. 2002, under FREs 402, 701, 702, and 901.
`
`Dated: April 8, 2016
`
`
`
`
`
`
`Respectfully submitted,
`
`/Brian E. Ferguson/
`Brian E. Ferguson (Reg. No. 36,801)
`Anish R. Desai (Reg. No. 73,760)
`Christopher T. Marando (Reg. No.67,898)
`W. Sutton Ansley (Reg. No. 67,828)
`Robert R. Vlasis (Pro Hac Vice)
`Zachary C. Garthe (Pro Hac Vice)
`Weil, Gotshal & Manges LLP
`1300 Eye Street NW, Suite 900
`Washington, DC 20005
`T: 202-682-7000
`brian.ferguson@weil.com
`anish.desai@weil.com
`
`15
`
`

`
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned hereby certifies that on April 8, 2016 the foregoing
`
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE was served via
`
`electronic mail, upon the following:
`
`Mitchell G. Stockwell
`Kilpatrick Townsend & Stockton LLP
`1100 Peachtree Street NE, Suite 2800
`Atlanta, GA 30309-4528
`mstockwell@kilpatricktownsend.com
`
`Wab P. Kadaba
`Kilpatrick Townsend & Stockton LLP
`1100 Peachtree Street NE, Suite 2800
`Atlanta, GA 30309-4528
`wkadaba@kilpatricktownsend.com
`
`Jonathan D. Olinger
`Kilpatrick Townsend & Stockton LLP
`1100 Peachtree Street NE, Suite 2800
`Atlanta, GA 30309-4528
`jolinger@kilpatricktownsend.com
`
`
`
`/ Timothy J. Andersen / c
`Timothy J. Andersen
`Case Manager
`Weil, Gotshal & Manges LLP
`1300 Eye Street NW, Suite 900
`Washington, DC 20005
`T: 202-682-7075
`timothy.andersen@weil.com