`IPR2015-00698
`Patent Owner’s Response in Opposition to Petitioner’s Motion to Exclude
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`Under Armour Inc.,
`Petitioner
`
`v.
`
`adidas AG,
`Patent Owner
`
`
`
`
`Case No. IPR2015-000698
`
`Patent No. 8,092,345
`
`PATENT OWNER ADIDAS AG’S RESPONSE IN OPPOSITION TO
`PETITIONER’S MOTION TO EXCLUDE
`
`
`
`
`
`
`
`
`
`
`U.S. Pat. No. 8,092,345
`IPR2015-00698
`Patent Owner’s Response in Opposition to Petitioner’s Motion to Exclude
`
`
`Table of Contents
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`ARGUMENT ................................................................................................... 1
`
`A.
`
`B.
`
`Patent Owner’s Exhibits supporting Secondary
`Considerations are Relevant and Admissible ........................................ 1
`
`Dr. Michalson’s Testimony on Secondary Considerations
`should not be Excluded ......................................................................... 7
`
`1.
`
`2.
`
`3.
`
`4.
`
`Dr. Michalson’s testimony is not Irrelevant ............................... 7
`
`Dr. Michalson is Qualified to Testify on
`Commercial Success of the MMF Mobile
`Applications and his Analysis is Reliable................................... 7
`
`Dr. Michalson’s Analysis and Methodology
`regarding Industry Praise are Reliable ...................................... 12
`
`Dr. Michalson’s Testimony is not Improper Lay
`Testimony under FRE 701 ........................................................ 14
`
`C.
`
`Patent Owner’s Website Printouts Have Been
`Authenticated and should not be Excluded ......................................... 14
`
`III. CONCLUSION .............................................................................................. 15
`
`
`
`
`
`U.S. Pat. No. 8,092,345
`IPR2015-00698
`Patent Owner’s Response in Opposition to Petitioner’s Motion to Exclude
`
`
`Patent Owner’s Exhibit List
`
`Exhibit
`Number
`2001
`2002
`2003
`2004
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`2010
`
`2011
`
`2012
`
`2013
`
`Description
`
`Biography of Jonathan D. Olinger
`Declaration of William R. Michalson, Ph.D.
`Declaration of Mark T. Jones, Ph.D.
`Deposition Transcript of Dr. Joseph Paradiso
`MapMyFitness, About Us (last visited November 15, 2015)
`http://about.mapmyfitness.com/about/company-history/
`Running USA, 2014 State of the Sport – Part II: Running Industry
`Report June 15, 2014
`http://www.runningusa.org/2014-running-industry-
`report?returnTo=annual-reports
`Bloomberg, Company Overview of MapMyFitness, Inc. (November
`15, 2015)
`http://www.bloomberg.com/research/stocks/private/snapshot.asp?priv
`capId=60835454
`Under Armour, Inc. SEC Form 10-K, for the fiscal year ended
`December 31, 2013
`Sterne Agee company Report, “Under Armour Inc.: 2Q15 Preview,”
`MapMyFitness Help and Support, Getting Started, (last visited
`November 19, 2015)
`https://support.mapmyfitness.com/hc/en-us/articles/200118014-
`Getting-started-with-the-app
`MapMyFitness Help and Support, Change Profile Photo, (last visited
`November 19, 2015)
`https://support.mapmyfitness.com/hc/en-us/articles/200117694-
`Change-Profile-Photo
`MapMyFitness Help and Support, How to Save and View Photos
`using the In-App Camera (last visited November 19, 2015)
`https://support.mapmyfitness.com/hc/en-us/articles/200118494-How-
`to-save-and-view-photos-using-the-in-app-camera
`MapMyFitness Help and Support, Where are my Workouts and
`Routes, (last visited November 19, 2015)
`https://support.mapmyfitness.com/hc/en-us/articles/200118224-
`Where-are-my-workouts-and-routes
`
`
`
`U.S. Pat. No. 8,092,345
`IPR2015-00698
`Patent Owner’s Response in Opposition to Petitioner’s Motion to Exclude
`
`2014
`
`Under Armour Connected Fitness, DOCS, (last visited November 19,
`2015)
`https://developer.underarmour.com/docs
`Under Armour Connected Fitness, Activity Type, (last visited
`November 19, 2015)
`https://developer.underarmour.com/docs/read/v71_Activity_Type
`MapMyFitness, Incorrect Calorie Calculations (last visited November
`16, 2015)
` https://support.mapmyfitness.com/hc/en-us/articles/200118084-
`Incorrect-Calorie-Calculations
`MobiHealthNews, “MapMyFitness Activity Feed Enables Social
`Sharing Across Devices” (Jan. 20, 2014)
`Google, “Mobile App Marketing Insights: How Consumers Really
`Find and Use Your Apps” (May 2015)
`Adobe Digital Index, “Social Intelligence Report” (Q1 2014)
`Running Shoes Guru, The 10 Best Running Apps for Android for
`2015 (December 26, 2014)
`www.runningshoesguru.com/2014/12/the-10-best-running-apps-for-
`android-for-2015
`adidas AG v. Under Armour, Inc. and MapMyFitness, Inc., Case No.
`14-cv-130 (D. Del.) D.I. 170 ¶ 227
`MapMyFitness Help and Support, Mobile App Questions, (last visited
`November 19, 2015)
`https://support.mapmyfitness.com/hc/en-us/categories/200003344-
`Mobile-App-Questions
`Intentionally Left Blank
`Intentionally Left Blank
`Deposition Transcript of Julie Davis, dated March 21, 2016
`(Protective Order Material)
`Davis Deposition Exhibit 1 – Excerpts from the Deposition Transcript
`of Chris Glode, dated July 17, 2015 (Protective Order Material)
`Davis Deposition Exhibit 2 – Excerpts from the Deposition Transcript
`of Scott Laing, dated July 20, 2015 (Protective Order Material)
`Davis Deposition Exhibit 3 – Excerpts from the Deposition Transcript
`of Andrew Page, dated June 12, 2015 (Protective Order Material)
`Davis Deposition Exhibit 4 – Excerpts from Deposition Transcript of
`Robin Thurston, June 30, 2015 (Protective Order Material)
`
`2015
`
`2016
`
`2017
`
`2018
`
`2019
`2020
`
`2021
`
`2022
`
`2023
`2024
`2025
`
`2026
`
`2027
`
`2028
`
`2029
`
`
`
`U.S. Pat. No. 8,092,345
`IPR2015-00698
`Patent Owner’s Response in Opposition to Petitioner’s Motion to Exclude
`
`2030
`
`Davis Deposition Exhibit 5 – Under Armour, Inc. Q4 2013 Earnings
`Call, dated January 30, 2014
`Davis Deposition Exhibit 6 – Under Armour, Inc. Q1 2014 Earnings
`Call, dated April 24, 2014
`Davis Deposition Exhibit 7 – Under Armour’s (UA) CEO Kevin
`Plank on Q2 2014 Results Earnings Call Transcript
`Davis Deposition Exhibit 8 – Under Armour’s (UA) CEO Kevin
`Plank on Q3 2014 Results Earning Call Transcript
`Davis Deposition Exhibit 9 – Under Armour’s (UA) CEO Kevin
`Plank on Q4 2014 Results Earnings Call Transcript
`Davis Deposition Exhibit 10 – Under Armour’s (UA) CEO Kevin
`Plank on Q1 2015 Results Earnings Call Transcript
`Davis Deposition Exhibit 11 – Under Armour’s (UA) CEO Kevin
`Plank on Q2 2015 Results Earnings Call Transcript
`Davis Deposition Exhibit 12 – Under Armour, Inc. Q3 2015 Earnings
`Call dated October 22, 2015
`Intentionally Left Blank
`Deposition Transcript of Joseph Paradiso, dated April 1, 2016
`(Protective Order Material)
`Paradiso Deposition Exhibit 1 – Excerpts from the Deposition
`Transcript of William Quast, dated July 1, 2015 (Protective Order
`Material)
`September 25, 2015 Email from Maria Vignone to Mitch Stockwell
`April 6, 2016 Email from Brian Ferguson to Trials
`Patent Owner’s Notice of Supplemental Evidence dated December 9,
`2015
`Declaration of Lynne J. Weber, Ph.D.
`Declaration of Jonathan D. Olinger
`
`2031
`
`2032
`
`2033
`
`2034
`
`2035
`
`2036
`
`2037
`
`2038
`2039
`
`2040
`
`2041
`2042
`2043
`
`2044
`2045
`
`
`
`
`
`U.S. Pat. No. 8,092,345
`IPR2015-00698
`Patent Owner’s Response in Opposition to Petitioner’s Motion to Exclude
`
`I.
`
`INTRODUCTION
`
`As movant, Petitioner has the burden of proof to establish that it is entitled to
`
`the requested relief. Samsung Elecs. Co., Ltd. v. Virginia Innovation Sciences,
`
`Inc., IPR2013-00569, Paper 42 (P.T.A.B. Feb. 17, 2015). Petitioner has failed to
`
`carry its burden on its motion to exclude, because it has not demonstrated that the
`
`contested Exhibits are inadmissible under the Federal Rules of Evidence (“FRE”).
`
`II. ARGUMENT
`A.
`Patent Owner’s Exhibits supporting Secondary Considerations
`are Relevant and Admissible
`
`In Exhibits 2003 and 2005-2022, Patent Owner presented evidence used to
`
`establish a prima facie case that certain products, including the MapMyFitness
`
`(“MMF”) suite of products embody the claimed invention of the ‘345 patent, that
`
`these products have been commercially successful and received industry praise,
`
`and that there is a nexus between the commercial success and praise of these apps
`
`and the claimed invention of the ‘345 patent.
`
`Petitioner nonetheless argues that the entirety of Exhibits 2003 and 2005-
`
`20221 should be excluded as irrelevant, presumably under FRE 402. Paper 38 at 3-
`
`1 Petitioner also complains that the “Running USA” article cited in the Response as
`
`Exhibit 2006 was not filed or served. Patent Owner submits that this was a clerical
`
`error and requests permission from the Board to file the corrected Exhibit.
`
`1
`
`
`
`U.S. Pat. No. 8,092,345
`IPR2015-00698
`Patent Owner’s Response in Opposition to Petitioner’s Motion to Exclude
`
`5. Petitioner’s argument is meritless and squarely contradicted by controlling
`
`authority.
`
`Courts consistently recognize that evidence of secondary considerations,
`
`when present, are invariably relevant to determinations under section 103. Litton
`
`Sys., Inc. v. Honeywell, Inc., 87 F.3d 1559 (Fed. Cir. 1996) (citation omitted). In
`
`fact, the Federal Circuit has recognized that such evidence is often the most
`
`probative evidence in an obviousness analysis. Id. “Once a prima facie case of
`
`nexus is made the court must consider the evidence adduced on both sides of the
`
`question, with such weight as is warranted.” Demaco Corp. v. F. Von Langsdorff
`
`Licensing Ltd., 851 F.2d 1387, 1393 (Fed. Cir. 1988); see also Knoll Pharm. Co. v.
`
`Teva Pharms. USA, Inc., 367 F.3d 1381 (Fed. Cir. 2004).
`
`Here, as explained, Patent Owner has provided evidence that the MMF
`
`products embody the claims, thereby establishing a prima facie case that there is a
`
`nexus between the ‘345 patent and the commercial success of the MMF apps. It
`
`Petitioner is not prejudiced because it is clear from Patent Owner’s Response and
`
`Ex. 2003 that Petitioner intended to submit the “Running USA” article.
`
`Furthermore, Petitioner has already received a copy of this exhibit as it was
`
`submitted in the co-pending IPR2015-00700 in support of Patent Owner’s
`
`Response as Exhibit 2008.
`
`2
`
`
`
`U.S. Pat. No. 8,092,345
`IPR2015-00698
`Patent Owner’s Response in Opposition to Petitioner’s Motion to Exclude
`
`cannot legitimately be argued that such evidence fails to be relevant under FRE
`
`402.
`
`Petitioner argues that since it has disputed whether the MMF applications
`
`infringe the Instituted Claims, the Board cannot find that a nexus exists between
`
`Patent Owner’s evidence of secondary considerations and the Instituted claims.
`
`Paper 38 at 5.2 Petitioner relies exclusively on a single Board decision for the
`
`proposition that the Board cannot determine infringement in inter partes review,
`
`and therefore cannot evaluate the existence of a nexus between Petitioner’s
`
`products and the ‘345 patent. See Paper 38 at 4 (citing St. Jude Med., Caridology
`
`Div., Inc. v. Bd. Of Regents of the Univ. of Mich., No. IPR2013-00041, 2014 WL
`
`2 In describing its arguments regarding nexus and the weight to be given Patent
`
`Owner’s evidence of secondary considerations, Petitioner suggests that Dr. Jones
`
`concedes that the MMF applications do not “upload the journal entries to a
`
`personal computer.” Paper 38 at 5. This is simply incorrect. Dr. Jones
`
`unambiguously asserts that the “MMF mobile applications for iOS and Android
`
`embody or practice at least claims 1, 6, 7, 8, 9, 10, and 20 of the ‘345 patent.” Ex.
`
`2003 at ¶ 28. Thus, Petitioner is incorrect to suggest that undisputed evidence
`
`demonstrates that the MMF applications do not practice any of the Instituted
`
`Claims.
`
`3
`
`
`
`U.S. Pat. No. 8,092,345
`IPR2015-00698
`Patent Owner’s Response in Opposition to Petitioner’s Motion to Exclude
`
`1783276, at *20 n. 10 (May 1, 2014)). Under Petitioner’s logic, any time a patent
`
`owner sets forth evidence of secondary considerations related to a third-party
`
`product, such evidence is per se irrelevant and cannot be considered by the Board.
`
`However, such a result cannot be correct, as it flies in the face of controlling case
`
`law requiring that a fact finder “must consider the evidence adduced on both sides
`
`of the question” and assign appropriate weight. Demaco, 851 F.2d at 1393; see
`
`also TriMed, Inc. v. Stryker Corp., 608 F3d 1333, 1343 (Fed. Cir. 2010) (“We have
`
`repeatedly held that evidence of secondary considerations must be considered if
`
`present.”)
`
`In support of its untenable position, Petitioner selectively quotes from cases
`
`that, in proper context, describe the weight to be accorded evidence of secondary
`
`considerations. Petitioner first cites to a footnote in Ashland Oil, Inc. v. Delta
`
`Resins & Refractories, Inc. 776 F.2d 281, 306 n. 42 (Fed. Cir. 1985) for the
`
`proposition that, “[f]or secondary considerations to have probative value, the
`
`decision maker must determine whether there is a nexus between the merits of the
`
`claimed invention and the secondary considerations.” Paper 38 at 4. Petitioner
`
`intentionally omits the citation to Simmons Fastener Corp. v. Illinois Tool Works,
`
`Inc., 739 F.2d 1573, 1575 (Fed. Cir. 1984). There, the Federal Circuit discusses
`
`W.L. Gore & Associates, Inc. v. Garlock, Inc. 721 F.2d 1540, 1555 (Fed. Cir.
`
`4
`
`
`
`U.S. Pat. No. 8,092,345
`IPR2015-00698
`Patent Owner’s Response in Opposition to Petitioner’s Motion to Exclude
`
`1983), wherein the court made clear that evidence of secondary considerations
`
`should always be considered:
`
`The objective evidence of non-obviousness, i.e., the “indicia” of
`
`Graham may in a given case be entitled to more weight or less,
`
`depending on its nature and its relationship to the merits of the
`
`invention. It may be the most pertinent, probative, and revealing
`
`evidence available
`
`to aid
`
`in reaching a conclusion on
`
`the
`
`obvious/nonobvious issue. It should when present always be
`
`considered as an integral part of the analysis.
`
`The Court in Simmons further stated that “[a] nexus between the merits of the
`
`claimed invention and the evidence of secondary considerations is required in
`
`order for the evidence to be given substantial weight in an obviousness decision.”
`
`Simmons, 739 F.2d at 1575. Thus, Petitioner relies on an overly narrow
`
`interpretation of the Court’s footnote in Ashland Oil. Instead, a comprehensive
`
`review of the Federal Circuit’s case law demonstrates that evidence of secondary
`
`considerations should be considered and that evidence relating to nexus may
`
`impact the weight of the evidence, but not its underlying relevance to the
`
`obviousness analysis.
`
`Petitioner also cites to a single sentence from In re Huai-Huang Kao, 639
`
`5
`
`
`
`U.S. Pat. No. 8,092,345
`IPR2015-00698
`Patent Owner’s Response in Opposition to Petitioner’s Motion to Exclude
`
`F.3d 1057, 1068 (Fed. Cir. 2011) to support its suggestion that without a nexus,
`
`evidence of secondary considerations is irrelevant. Petitioner ignores that the
`
`sentence preceding its quoted language states that “[f]or objective evidence of
`
`secondary considerations to be accorded substantial weight, its proponent must
`
`establish a nexus between the evidence and the merits of the claimed invention.”
`
`Id. at 1068 (citing Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed.Cir.2010))
`
`(emphasis added). Thus, this case further supports the proposition that the nexus
`
`question is not about admissibility, but rather weight accorded to the proffered
`
`evidence.
`
`Finally, Petitioner quotes a portion of a footnote from 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) to support its argument that Patent
`
`Owner’s proffered evidence is per se irrelevant. Petitioner ignores the remainder
`
`of that footnote, which states that the Board, for purposes of that decision, assumed
`
`but did not decide that the alleged infringer’s product was made using the claimed
`
`process. Accordingly, the Board did not conclude that any evidence was irrelevant
`
`or inadmissible, but rather considered the evidence as a part of its secondary
`
`considerations analysis.
`
`Thus, contrary to Petitioner’s arguments, Patent Owner’s proffered evidence
`
`6
`
`
`
`U.S. Pat. No. 8,092,345
`IPR2015-00698
`Patent Owner’s Response in Opposition to Petitioner’s Motion to Exclude
`
`of commercial success and praise of the MMF apps is relevant and admissible.
`
`B. Dr. Michalson’s Testimony on Secondary Considerations should
`not be Excluded
`1.
`For the same reasons as discussed above, Petitioner’s argument that Dr.
`
`Dr. Michalson’s testimony is not Irrelevant
`
`Michalson’s declaration testimony in Exhibit 2002 is per se irrelevant because
`
`Petitioner challenges the sufficiency of Patent Owner’s nexus showing is incorrect.
`
`Dr. Michalson’s testimony on commercial success and industry praise are relevant
`
`and should not be excluded under FRE 402.
`
`2.
`
`Dr. Michalson is Qualified to Testify on Commercial
`Success of the MMF Mobile Applications and his Analysis is
`Reliable
`
`Petitioner next seeks to exclude Dr. Michalson’s commercial success
`
`testimony (Ex. 2003, ¶¶ 74-81) on the basis that he lacks appropriate qualifications
`
`and simply summarizes available information and documents.
`
`As to qualifications, Petitioner argues that Dr. Michalson’s CV is devoid of
`
`any training in business, marketing, accounting, or product management. Paper 38
`
`at 7. As the Supreme Court itself explained “[i]t might not be surprising in a
`
`particular case, for example, that a claim made by a scientific witness has never
`
`been the subject of peer review, for the particular application at issue may never
`
`previously have interested any scientist.” Kumho Tire Co. v. Carmichael, 526 U.S.
`
`7
`
`
`
`U.S. Pat. No. 8,092,345
`IPR2015-00698
`Patent Owner’s Response in Opposition to Petitioner’s Motion to Exclude
`
`137, 151 (1999). Thus, the point is not whether Mr. Michalson has addressed the
`
`legal issue of commercial success (a point few practicing engineers would ever
`
`address), rather it is whether his practical experience as an engineer evaluating
`
`commercialization of products qualifies him to opine on whether a product was
`
`successful or not.
`
`His experience does so. Dr. Michalson’s curriculum vitae sets forth his
`
`extensive employment history. Through this work, Dr. Michalson has obtained
`
`extensive experience with the commercialization of products, a fact he testified to
`
`during his deposition. Ex. 10123 at 9:4-16 (“I have in the past been asked to
`
`provide opinions about technology and likelihood of success of technologies
`
`offered by different companies, both, you know, by entrepreneurial groups and
`
`3 Patent Owner has filed a motion to exclude Exhibit 1012, in part because
`
`Petitioner did not establish that the exhibit is what Petitioner claimed it to be,
`
`namely, a deposition transcript from the underlying litigation. What was filed was
`
`the transcript of Dr. Michalson’s February 5, 2016 deposition in these inter partes
`
`review proceedings. All citations to Exhibit 1012 are to the document as filed. To
`
`the extent the Board grants Patent Owner’s motion to exclude, Patent Owner
`
`requests permission to file a copy of Dr. Michalson’s inter partes review
`
`deposition transcript.
`
`8
`
`
`
`U.S. Pat. No. 8,092,345
`IPR2015-00698
`Patent Owner’s Response in Opposition to Petitioner’s Motion to Exclude
`
`also in some of my own endeavors trying to do technical evaluations of companies
`
`longevity. So I certainly have some experience in that area.”) Even when pressed
`
`as to whether he is an expert on commercial success, Dr. Michalson testified “I
`
`think that I have enough knowledge about the field to be able to look at some of
`
`the typical indicators of success and determine if that, you know, at least represents
`
`to me something that is commercially successful.” Id. at 9:18 – 10:3; see also id.
`
`at 10:5-18, 14:2-15:24, 16:2-19, 17:22-19:17. Thus, Petitioner’s suggestion that
`
`Dr. Michalson has not explained how his professional experience permits him to
`
`reach the conclusions he offers has no basis.
`
`Petitioner next suggests that Dr. Michalson’s testimony must be excluded
`
`under FRE 702 because his testimony is unhelpful, is not based on sufficient facts
`
`or data, and because his opinion is not the product of reliable principles and
`
`methods that he applied to the facts presented. Paper 38 at 8-12. All of these
`
`arguments gloss over the actual analysis that Dr. Michalson performed.
`
`Dr. Michalson’s declaration discusses at length the facts and data that he
`
`considered in reaching his conclusion that evidence of commercial success
`
`supports his conclusion that the ‘345 patent is valid. Petitioner suggests that Dr.
`
`Michalson focused on only two pieces of information in reaching his opinion, but
`
`his is simply incorrect. Paper 38 at 10-11. Dr. Michalson pointed to evidence
`
`9
`
`
`
`U.S. Pat. No. 8,092,345
`IPR2015-00698
`Patent Owner’s Response in Opposition to Petitioner’s Motion to Exclude
`
`relating to the number of users for the MMF apps, the sale price of MMF to Under
`
`Armour, the size of the market for runners in the United States, trade publications
`
`describing the commercial benefit of UA’s acquisition of MMF, testimony from
`
`Dr. Jones regarding how the MMF apps embody the Instituted Claims, and
`
`industry publications, including statements from MMF employee Chris Glode,
`
`regarding the importance of social media for the success of the MMF applications.
`
`See Ex. 2002 at ¶¶ 74-81. The above evidence is exactly the kind of data that a
`
`reliable expert would consider when evaluating commercial success and industry
`
`praise. Moreover, Dr. Michalson does not merely parrot the information
`
`referenced, but explains why, when considered as a whole, this evidence
`
`demonstrates commercial success. Id.
`
`Petitioner’s remaining arguments are not the proper subject of a Daubert
`
`challenge, as Petitioner does not substantively question whether the material Dr.
`
`Michalson considered is proper, but rather merely disagrees with the conclusions
`
`Dr. Michalson draws from these documents. Such arguments go to the weight of
`
`Dr. Michalson’s testimony, not its admissibility under FRE 702.
`
`When facts are in dispute, experts sometimes reach different
`
`conclusions based on competing versions of the facts. The emphasis
`
`in the amendment on “sufficient facts or data” is not intended to
`
`10
`
`
`
`U.S. Pat. No. 8,092,345
`IPR2015-00698
`Patent Owner’s Response in Opposition to Petitioner’s Motion to Exclude
`
`
`authorize a trial court to exclude an expert’s testimony on the ground
`
`that the court believes one version of the facts and not the other.
`
`Fed. R. Evid. 702 advisory committee’s note. See also Micro Chemical, Inc. v.
`
`Lextron, Inc. 317 F.3d 1387, 1392 (Fed. Cir. 2003) (“[A]s the Supreme Court
`
`stated in Daubert: ‘Vigorous cross-examination, presentation of contrary evidence,
`
`and careful instruction on the burden of proof are the traditional and appropriate
`
`means of attacking shaky but admissible evidence.’ 509 U.S. at 595, 113 S.Ct.
`
`2786.”) For example, Petitioner argues that Dr. Michalson is incorrect to conclude
`
`that the Instituted Claims do not cover social media functions and cites to
`
`testimony from its own expert Dr. Paradiso. Paper 38 at 9-10 (citing Ex. 1011 at ¶
`
`239.) Such a battle of the experts does not demonstrate inadmissibility, but rather
`
`demonstrates that the trier of fact must consider the competing opinions and assign
`
`them the necessary weight. See Pipitone v. Biomatrix, Inc., 288 F.3d 239, 249–50
`
`(5th Cir. 2002) (holding that jury was entitled to hear expert testimony and decide
`
`whether to accept or reject it after considering whether predicate facts on which
`
`expert relied were accurate). Similarly, Petitioner offers absolutely no support for
`
`its suggestion that Dr. Michalson was required to consider the value attributable to
`
`certain assets and the income statements of the target company to render an
`
`opinion on commercial success. Paper 38 at 11. Such unsupported attorney
`
`11
`
`
`
`U.S. Pat. No. 8,092,345
`IPR2015-00698
`Patent Owner’s Response in Opposition to Petitioner’s Motion to Exclude
`
`argument does not demonstrate the unreliability or incompleteness of Dr.
`
`Michalson’s analysis.
`
`The admissibility of Dr. Michalson’s testimony is underscored when
`
`contrasted with the analysis performed by Petitioner’s purported expert on
`
`
`
`If her analysis passes
`
`commercial success and industry praise, Ms. Julie Davis.
`
`muster as suggested by Petitioner, then Dr. Michalson’s more fulsome and robust
`
`techniques certainly satisfy Daubert’s requirements.
`
`Dr. Michalson’s testimony makes clear that he has applied reliable principles
`
`to the relevant facts and data and his testimony will undoubtedly assist the trier of
`
`fact in evaluating the existence and importance of commercial success in this case.
`
`Accordingly, Dr. Michalson’s testimony complies with the requirements of FRE
`
`702 and should not be excluded.
`
`3.
`
`Dr. Michalson’s Analysis and Methodology regarding
`Industry Praise are Reliable
`
`Similar to Petitioner’s attacks on Dr. Michalson’s commercial success
`
`analysis, Petitioner’s arguments that Dr. Michalson’s opinions regarding industry
`
`praise (Ex. 2002 at ¶¶ 72 and 82-86) must be excluded under FRE 702 are without
`
`merit. Paper 38 at 12-14. As discussed above, Dr. Michalson has explained that
`
`12
`
`
`
`U.S. Pat. No. 8,092,345
`IPR2015-00698
`Patent Owner’s Response in Opposition to Petitioner’s Motion to Exclude
`
`the ‘345 patent claims are embodied by MMF social media posts about workout
`
`journal entries that include pictures. Ex. 2002 at ¶ 83. Petitioner also suggests that
`
`Dr. Michalson’s opinion in paragraphs 84 and 85 fail, in that he makes no effort to
`
`establish a nexus for these media and industry mentions. Petitioner seems to
`
`ignore his plain statement that “the praise MMF has received, all of which
`
`highlights features infringed, enabled, implicated, or contributed to by the
`
`Instituted Claims.” Ex. 2002 at ¶ 85. The fact that Petitioner may disagree with
`
`his conclusion does not render his conclusion inadmissible.
`
`Again, Dr. Michalson’s testimony makes clear that he has applied reliable
`
`principles to the relevant facts and data4 and his testimony will undoubtedly assist
`
`the trier of fact in evaluating the existence and important of industry praise in this
`
`case. Accordingly, Dr. Michalson’s testimony complies with the requirements of
`
`FRE 702 and should not be excluded.
`
`
`4 Petitioner’s suggestion that Dr. Michalson did not rely on sufficient evidence
`
`under FRE 702(b) is meritless and appears to be nothing more than a belated, and
`
`consequently waived, concern regarding production of information as routine
`
`discovery. Such an argument is not proper in a motion to exclude.
`
`13
`
`
`
`U.S. Pat. No. 8,092,345
`IPR2015-00698
`Patent Owner’s Response in Opposition to Petitioner’s Motion to Exclude
`
`
`4.
`
`Dr. Michalson’s Testimony is not Improper Lay Testimony
`under FRE 701
`
`Petitioner attempts to have it both ways, arguing that to the extent Dr.
`
`Michalson’s testimony on secondary considerations is lay testimony, his opinion is
`
`improper under FRE 701 because it is based on scientific, technical, or other
`
`specialized knowledge. Petitioner has already argued that as a result of a lack of
`
`credentials and improper methodology, Dr. Michalson’s conclusions are not based
`
`on acceptable scientific, technical, or other specialized knowledge. Paper 38 at 7-
`
`14. If the Board agrees with Plaintiffs argument, Dr. Michalson’s testimony must
`
`then qualify as lay opinion testimony under FRE 701.
`
`C.
`
`Patent Owner’s Website Printouts Have Been Authenticated and
`should not be Excluded
`
`Petitioner’s arguments regarding Exhibits 2007 and Exhibits 2017-2020 also
`
`fail. Petitioner wholly ignores the Supplemental Evidence served on Petitioner on
`
`December 9, 2015. (Ex. 2043). This evidence included a declaration by Dr. Lynne
`
`Weber (Exhibit 2044) and a declaration by Jonathan Olinger (Exhibit 2045). Dr.
`
`Weber testified that exhibit 2020 is a true and correct copy of an article appearing
`
`on the website reflected in that exhibit and that the information therein is regularly
`
`considered by individuals in her industry performing market analysis, market
`
`research, and/or market modeling. Ex. 2044 at ¶¶ 9-10. Similarly, Mr. Olinger
`
`14
`
`
`
`U.S. Pat. No. 8,092,345
`IPR2015-00698
`Patent Owner’s Response in Opposition to Petitioner’s Motion to Exclude
`
`testified that Exhibits 2007 and Exhibits 2017-2019 are true and correct copies of
`
`the information available on the websites reflected in those exhibits. Ex. 2045 at
`
`¶¶ 5 and 14-16. Thus, there is ample testimony demonstrating that these website
`
`printouts are authentic under FRE 901(b)(1) and (b)(4). Petitioner has not
`
`identified any evidence to suggest that the information in these exhibits is not
`
`authentic. Accordingly, Exhibits 2007 and Exhibits 2017-2020 should not be
`
`excluded.
`
`III. CONCLUSION
`For the reasons set forth above, Patent Owner respectfully requests that the
`
`Board deny Petitioner’s Motion to Exclude.
`
`Dated: April 20, 2016
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`/s/ Mitchell G. Stockwell
`Mitchell G. Stockwell
`
`Reg. No. 39,389
`Lead Counsel for Patent Owner
`adidas AG
`
`
`
`15
`
`
`
`U.S. Pat. No. 8,092,345
`IPR2015-00698
`Patent Owner’s Response in Opposition to Petitioner’s Motion to Exclude
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of PATENT OWNER
`
`ADIDAS AG’S RESPONSE IN OPPOSITION TO PETITIONER’S
`
`MOTION TO EXCLUDE was served via email on the date below, upon the
`
`following:
`
`Brian E. Ferguson
`Weil, Gotshal & Manges LLP
`1300 Eye Street NW, Suite 900
`Washington, DC 20005
`Phone: 202-682-7000
`brian.ferguson@weil.com
`
`
`Dated: April 20, 2016
`
`
`
`
`
`
`
`Anish R. Desai
`Christopher T. Marando
`W. Sutton Ansley
`Weil Gotshal & Manges LLP
`1300 Eye Street NW, Suite 900
`Washington, DC 20005
`Phone: 202-682-7103
`anish.desai@weil.com
`christopher.marando@weil.com
`sutton.ansley@weilc.om
`
`
`
`/s/ Mitchell G. Stockwell
`Mitchell G. Stockwell
`
`Reg. No. 39,389
`Lead Counsel for Patent Owner
`adidas AG
`
`
`
`16