Petitioner’s Reply to Patent Owner’s Opposition to Petitioner’s Motion to Exclude
`IPR2015-00698
`U.S. Patent No. 8,0923,345
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`UNDER ARMOUR, INC.
`Petitioner,
`
`
`
`v.
`
`
`
`ADIDAS AG,
`Patent Owner.
`
`
`
`
`
`
`
`
`
`
`Case No. IPR2015-00698
`U.S. Patent No. 8,092,345
`
`
`
`
`
`
`
`
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`PETITIONER’S REPLY TO PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION TO EXCLUDE
`
`
`
`
`
`
`IPR2015-00698
`U.S. Patent No. 8,0923,345
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`UNDER ARMOUR, INC.
`Petitioner,
`
`
`
`v.
`
`
`
`ADIDAS AG,
`Patent Owner.
`
`
`
`
`
`
`
`
`
`
`Case No. IPR2015-00698
`U.S. Patent No. 8,092,345
`
`
`
`
`
`
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION TO EXCLUDE
`
`
`
`
`
`
`
`Petitioner’s Reply to Patent Owner’s Opposition to Petitioner’s Motion to Exclude
`IPR2015-00698
`U.S. Patent No. 8,0923,345
`
`
`Table of Contents
`
`
`
`I.
`II.
`
`INTRODUCTION ........................................................................................... 1
`PATENT OWNER HAS NOT REBUTTED THAT ITS EVIDENCE
`IS SECONDARY CONSIDERATIONS IS INADMISSIBLE ...................... 1
`III. DR. MICHALSON’S TESTIMONY SHOULD BE EXCLUDED ................ 2
`A. Dr. Michalson’s Testimony Is Irrelevant .............................................. 2
`B. Dr. Michalson’s Testimony on Commercial Success Is
`Unreliable .............................................................................................. 3
`C. Dr. Michalson’s Testimony on Industry Praise Is Unreliable ............... 4
`To the Extent It Is Deemed Lay Testimony, Dr. Michalson’s
`D.
`Opinion on Secondary Considerations Is Inadmissible ........................ 5
`IV. THE WEBSITE PRINTOUTS ARE NOT AUTHENTICATED ................... 5
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`Petitioner’s Reply Patent Owner’s Opposition to Petitioner’s Motion to Exclude
`IPR2015-00698
`U.S. Patent No. 8,0923,345
`
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`
`Damaco Corp. v. F. Von. Langsdorff Licensing Ltd.,
`851 F.2d 1387 (Fed. Cir. 1988) ............................................................................ 1
`
`St. Jude Med., Cardiology Div., Inc. v. Bd. of Regents of the Univ. of Mich.,
`No. IPR2013-00041, 2014 WL 1783276 (May 1, 2014) ..................................... 2
`
`EMC Corp. v. PersonalWeb Tech., LLC, et al., No. IPR2013-00086,
`2014 WL 20906655 (May 15, 2014) .................................................................... 5
`
`
`
`
`
`
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`
`
`ii
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`
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`Petitioner’s Reply Patent Owner’s Opposition to Petitioner’s Motion to Exclude
`IPR2015-00698
`U.S. Patent No. 8,0923,345
`
`1006
`
`1013
`
`1014
`1015
`1016
`1017
`
`1018
`
`1019
`
`1020
`
`EXHIBIT LIST
`
`Exhibit
`Description
`Number
`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.
`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
`Transcript of February 5, 2016 deposition of Dr. William Michalson in
`1012
`IPR2015-00698
`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
`Transcript of October 21-22, 2015 deposition of Dr. William Michalson
`(Part I)
`Transcript of October 21-22, 2015 deposition of Dr. William Michalson
`(Part II)
`Petitioner’s September 9, 2015 Responses to Patent Owner’s
`Objections to Admissibility of Evidence
`Santarus, Inc. v. Par Pharmaceutical, Inc., No. 07-551 (GMS),
`Document 163 (D. Del. June 26, 2009)
`Excerpt of transcript of February 5, 2016 deposition of Dr. William
`Michalson in IPR2015-00700
`
`1021
`
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`iii
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`Petitioner’s Reply to Patent Owner’s Opposition to Petitioner’s Motion to Exclude
`IPR2015-00698
`U.S. Patent No. 8,0923,345
`
`INTRODUCTION
`
`I.
`
`
`For the reasons stated below, Patent Owner has not rebutted Petitioner’s
`
`arguments in support of its motion to exclude.
`
`II.
`
`
`
`PATENT OWNER HAS NOT REBUTTED THAT ITS EVIDENCE IS
`SECONDARY CONSIDERATIONS IS INADMISSIBLE
`Patent Owner has not made a prima facie case of nexus, and thus its cited
`
`case law is inapplicable. Damaco Corp. v. F. Von. Langsdorff Licensing Ltd., 851
`
`F.2d 1387, 1393 (Fed. Cir. 1988), states only that “[o]nce a prima facie case of
`
`nexus is made the court must consider the evidence ….” (emphasis added).
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`Similarly, “[w]hen a prima facie case is made and not fully rebutted, the district
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`court may not totally ignore the objective evidence.” Id. (citing W.L. Gore &
`
`Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1555 (Fed. Cir. 1983)).
`
`
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`These cases do not require the Board to consider (or admit) Patent Owner’s
`
`evidence, because Patent Owner has not made a prima facie case, and because
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`Petitioner has fully rebutted Patent Owner’s showing. The only evidence that
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`Patent Owner puts forth to show whether the MMF apps practice the claims is the
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`declaration of Dr. Jones (Ex. 2003). As explained in the motion to exclude, Dr.
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`Jones unambiguously distinguishes a server and personal computer, and confirms
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`that the MMF apps, contrary to the claim language, only upload journal entries to
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`the former. See Paper 38 at 5. Because Patent Owner has not shown that the MMF
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`apps practice each claimed limitation, Patent Owner has not put forth a prima facie
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`Petitioner’s Reply Patent Owner’s Opposition to Petitioner’s Motion to Exclude
`IPR2015-00698
`U.S. Patent No. 8,0923,345
`case of nexus. Also, as explained in the motion to exclude, Petitioner has fully
`
`rebutted any showing of nexus. See, e.g., id., UA-1011 at ¶¶214-228.
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`
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`The other cases on which Patent Owner relies, as well as the cases Petitioner
`
`cites, also do not stand for the proposition that secondary considerations evidence
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`is always relevant and must be considered. Instead, they merely hold that such
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`evidence is accorded substantial weight when a nexus is established.
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`
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`Finally, Patent Owner charges that Petitioner’s motion to exclude assumes
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`that the Board can never examine secondary considerations related to a third-party
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`product. See Paper 51 at 4. This is false. As made clear in 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), determining whether a product that
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`“is the subject of an ongoing litigation between the parties” practices the claims
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`of a patent is outside of the Board’s purview. (emphasis added). Here, the MMF
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`apps are a product of Petitioner’s wholly owned subsidiary and the subject of a co-
`
`pending litigation between the parties.
`
`III. DR. MICHALSON’S TESTIMONY SHOULD BE EXCLUDED
`A. Dr. Michalson’s Testimony Is Irrelevant
`Patent Owner has failed to rebut that Dr. Michalson’s secondary
`
`
`
`considerations testimony is irrelevant for the same reasons that it has failed to rebut
`
`that its of secondary considerations evidence is irrelevant, as explained above.
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`
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`2
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`Petitioner’s Reply Patent Owner’s Opposition to Petitioner’s Motion to Exclude
`IPR2015-00698
`U.S. Patent No. 8,0923,345
`B. Dr. Michalson’s Testimony on Commercial Success Is Unreliable
`Dr. Michalson lacks the experience to qualify as an expert on the
`
`
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`commercial success of a product, and Patent Owner has not shown otherwise.
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`Patent Owner has not, and cannot, cite to any place in his curriculum vitae that
`
`would show he has experience in this area. Instead, Patent Owner says that Dr.
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`Michalson has experience with the commercialization of products. Paper 51 at 8.1
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`But the pertinent issue is not whether a startup has a chance to succeed in the
`
`market based on its technological offerings; it is whether products already in the
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`market have in fact been a commercial success. At most, Dr. Michalson states that
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`he has “some experience in that area.” UA-1012 at 9:15-16. Some experience is
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`not enough to qualify a witness as an expert, particularly when that witness has not
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`(1) “explain[ed] how that experience leads to the conclusion reached,” (2) “why
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`that experience is a sufficient basis for the opinion,” and (3) “how that experience
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`is reliably applied to the facts.” See FRE 702 advisory committee’s note (2000).
`
`1 Patent Owner relies on Dr. Michalson’s deposition testimony, but notably leaves
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`out the following: In the co-pending IPR2015-00700, Dr. Michalson opined that
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`the MMF apps were a commercial success for the same reasons cited in this
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`proceeding, except that he additionally cited survey evidence. During his
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`deposition in that proceeding, Dr. Michalson admitted that he was not offering
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`himself as an expert on commercial success. See UA-1021 at 9:4-18.
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`3
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`Petitioner’s Reply Patent Owner’s Opposition to Petitioner’s Motion to Exclude
`IPR2015-00698
`U.S. Patent No. 8,0923,345
`Patent Owner’s claim that Dr. Michalson applied a reliable methodology is
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`
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`baseless. Patent Owner provides no support for its assertion that the evidence
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`considered by Dr. Michalson “is exactly the kind of data that a reliable expert
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`would consider.” Paper 51 at 10. Further, just stating that “Dr. Michalson does not
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`merely parrot the information referenced” (id.) does not make it true. Thus, Patent
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`Owner has failed to rebut that Dr. Michalson merely offered ipse dixit conclusions.
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`
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`Patent Owner also mischaracterizes Petitioner’s arguments by stating that
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`“Petitioner does not substantively question whether the material Dr. Michalson
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`considered is proper, but rather merely disagrees with the conclusions [he] draws
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`….” Paper 51 at 10. This is simply false. See, e.g., Paper 38 at 11 (arguing that the
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`purchase price of a company is not a reliable basis for opining on the commercial
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`success of products).
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`
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`Finally, Patent Owner’s critiques regarding Ms. Davis’s testimony are
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`incorrect for the reasons stated in Petitioner’s Response. See Paper 54 at 3-11.
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`C. Dr. Michalson’s Testimony on Industry Praise Is Unreliable
`Patent Owner is wrong that Dr. Michalson explained how social media
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`
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`functions in the MMF apps practice the claims. He simply concludes that such is
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`the case without support. In fact, Dr. Michalson does not even attest to being
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`familiar with how the MMF apps work other than by referencing the declaration of
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`Dr. Jones (who does not state that the 345 Patent claims are embodied by social
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`4
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`Petitioner’s Reply Patent Owner’s Opposition to Petitioner’s Motion to Exclude
`IPR2015-00698
`U.S. Patent No. 8,0923,345
`media). Finally, Petitioner did not ignore paragraph 85 of Dr. Michalson’s
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`declaration; his conclusory paragraph matter-of-factly does not establish a nexus.
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`D. To the Extent It Is Deemed Lay Testimony, Dr. Michalson’s
`Opinion on Secondary Considerations Is Inadmissible
`
`
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`Contrary to Patent Owner’s argument, Petitioner is not trying “to have it
`
`both ways.” Paper 51 at 14. Whether a product has been a commercial success
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`requires specialized knowledge (which Dr. Michalson does not have) and therefore
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`is not the proper subject matter for lay testimony.
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`IV. THE WEBSITE PRINTOUTS ARE NOT AUTHENTICATED
`
`Patent Owner has offered no evidence from a witness with knowledge of the
`
`websites to authenticate the documents. For example, Patent Owner has not
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`asserted that either Dr. Weber or Mr. Olinger were webmasters for these websites.
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`See EMC Corp. v. PersonalWeb Tech., LLC, et al., No. IPR2013-00086, 2014 WL
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`20906655, at *16 (May 15, 2014) (citations omitted).
`
`Dated: April 26, 2016
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`Respectfully submitted,
`
`/Brian E. Ferguson/
`Brian E. Ferguson (Reg. No. 36,801)
`Weil, Gotshal & Manges LLP
`1300 Eye Street NW, Suite 900
`Washington, DC 20005
`T: 202-682-7000
`brian.ferguson@weil.com
`
`5
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on April 26, 2016, the foregoing
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`PETITIONER’S REPLY TO PATENT OWNER’S OPPOSITION TO
`
`PETITIONER’S MOTION TO EXCLUDE was served via electronic mail, upon
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`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
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