UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AMERICAN NATIONAL MANUFACTURING INC.,
`Petitioner,
`v.
`SELECT COMFORT CORPORATION,
`Patent Owner.
`
`Case No. IPR2019-00500
`Patent 9,737,154
`
`DECLARATION OF LUKAS D. TOFT IN SUPPORT OF PATENT
`OWNER’S PRELIMINARY RESPONSE
`
`1
`
`Sleep Number Corp.
`EXHIBIT 2007
`IPR2019-00500
`Page 1
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AMERICAN NATIONAL MANUFACTURING INC.,
`Petitioner,
`v.
`SELECT COMFORT CORPORATION,
`Patent Owner.
`
`Case No. IPR2019-00500
`Patent 9,737,154
`
`DECLARATION OF LUKAS D. TOFT IN SUPPORT OF PATENT
`OWNER’S PRELIMINARY RESPONSE
`
`1
`
`Sleep Number Corp.
`EXHIBIT 2007
`IPR2019-00500
`Page 1
`
`
`
`I, Luke Toft, declare and state as follows:
`1.
`I am an attorney with the law firm of Fox Rothschild LLP. I represent
`Patent Owner Sleep Number Corporation in the above referenced proceeding. I
`submit this Declaration in support of Patent Owner’s Preliminary Response. All
`statements made herein are made of my own personal knowledge to the best of my
`recollection and, if called to testify, could and would do so.
`2.
`On January 10, 2019, I sent an email to counsel of record for
`Petitioner American National Manufacturing Co., informing them that Fox
`Rothschild was in receipt of three IPR Petitions – IPR2019-00497, challenging
`U.S. Patent No. 8,769,747 (“the ‘747 Patent”), IPR2019-00500, challenging U.S.
`Patent No. 9,737,154 (“the ‘154 Patent”), and IPR2019-00514, challenging U.S.
`Patent No. 5,904,172 (“the ‘172 Patent”) – but that, because each Petition named
`the wrong party as the patent owner, the Petitions were improperly served. Counsel
`for both parties conducted a telephonic meet and confer on this issue on January
`11, 2019, but were unable to resolve the dispute on this issue. Accordingly, also on
`January 11, I sent a joint email to the Patent Trial and Appeal Board (“Board”)
`requesting a call for guidance. On March 18, 2019, the Board scheduled a
`conference call with the parties for March 20, 2019.
`3.
`During the March 20, 2019 conference call with the parties, the Board
`asked counsel for Petitioner why they did not serve the registered correspondence
`address of record. Counsel acknowledged that the correspondence address of
`record was a P.O. Box of Fish & Richardson P.C. but explained that, because
`FedEx does not deliver to P.O. Boxes, they chose to FedEx the Petitions to another
`
`2
`
`Sleep Number Corp.
`EXHIBIT 2007
`IPR2019-00500
`Page 2
`
`
`
`address of the Minneapolis, MN office of Fish & Richardson P.C. and to the
`Minneapolis, MN office of Fox Rothschild LLP.
`4.
`The correspondence address of record for the ‘747 Patent, the ‘154
`Patent, and the ‘172 Patent is P.O. Box 1022, Minneapolis, MN 55440-1022. (See
`Exs. 2004-2006.) My review of the filing histories for these patents shows that this
`has been the recorded correspondence address of record for the ‘747 Patent since
`July 28, 2014, for the ‘154 Patent since February 3, 2015, and for the ‘172 Patent
`since September 21, 2015. Exhibit 2004 is a true and correct copy of the
`correspondence address of record information for the ‘747 Patent available on the
`PTO’s Public Patent Application Information Retrial database (“PAIR”). Exhibit
`2005 is a true and correct copy of the correspondence address of record
`information for the ‘154 Patent available on PAIR. Exhibit 2006 is a true and
`correct copy of the correspondence address of record information for the ‘172
`Patent available on PAIR.
`5.
`Each of these three patents was assigned from Select Comfort
`Corporation to Sleep Number Corporation in 2017, and then promptly recorded.
`The assignments of the ‘747 and ‘154 Patents to Sleep Number Corporation were
`recorded in the PAIR database as of November 15, 2017. (Exs. 2008, 2009.) The
`assignment of the ‘172 Patent to Sleep Number Corporation was recorded in the
`PAIR database on November 16, 2017. (Ex. 2010.) Exhibit 2008 is a true and
`correct copy of the Patent Assignment Abstract for the ‘747 Patent available on
`PAIR. Exhibit 2009 is a true and correct copy of the Patent Assignment Abstract
`
`3
`
`Sleep Number Corp.
`EXHIBIT 2007
`IPR2019-00500
`Page 3
`
`
`
`for the ‘154 Patent available on PAIR. Exhibit 2010 is a true and correct copy of
`the Patent Assignment Abstract for the ‘172 Patent available on PAIR.
`
`I declare under penalty of perjury under the laws of the United States of America
`
`that the foregoing is true and correct.
`
`Dated: April 25, 2019
`
`By: s/ Luke D. Toft
`Luke Toft
`Reg. No. 75,311
`Fox Rothschild LLP
`Campbell Mithun Tower, Suite 2000
`222 South Ninth Street
`Minneapolis, MN 55402-3338
`Telephone: (612) 607-7336
`
`4
`
`Sleep Number Corp.
`EXHIBIT 2007
`IPR2019-00500
`Page 4
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify, pursuant to 37 CFR § 42.6, that on April 25, 2019, a true
`and correct copy of the foregoing Declaration of Lukas D. Toft in Support of
`Patent Owner’s Preliminary Response is being served via e-mail as authorized by
`the Petitioner at the following e-mail addresses:
`
`Kyle L. Elliott
`kelliott@spencerfane.com
`
`Kevin S. Tuttle
`ktuttle@spencerfane.com
`
`Lori J. Allee
`jallee@spencerfane.com
`
`SPENCER FANE LLP
`1000 Walnut Street, Suite 1400
`Kansas City, MO 64106
`
`Jaspal S. Hare
`jhare@spencerfane.com
`
`SPENCER FANE LLP
`2200 Ross Avenue
`Suite 4800 West
`Dallas, TX 75201
`Dated: April 25, 2019
`
`By: s/ Luke D. Toft
`Luke Toft
`Reg. No. 75,311
`Fox Rothschild LLP
`Campbell Mithun Tower, Suite 2000
`222 South Ninth Street
`Minneapolis, MN 55402-3338
`Telephone: (612) 607-7336
`
`5
`
`Sleep Number Corp.
`EXHIBIT 2007
`IPR2019-00500
`Page 5
`
`
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