From:
`Sent:
`To:
`Cc:
`Subject:
`
`Jaspal,
`
`Patton, Elizabeth A.
`Wednesday, September 11, 2019 3:54 PM
`Hare, Jaspal; Toft, Lukas
`Tuttle, Kevin; Elliott, Kyle L.; Bear Brian; Allee, J. Lori; Nath, Archana
`RE: Modification to PO in C.D. Cal. [Sleep Number v. Sizewise/ANM]
`
`We disagree with your positions. While we think it would be permissible under the protective order and helpful to the
`Board to submit redacted infringement contentions in relation to Sleep Number’s motion for additional discovery, Sleep
`Number will refrain from doing so in light of your objection.
`
`Additionally, we continue to believe it is proper to modify the district court protective order to allow for use in the IPR
`proceedings the financial documents ANM/Sizewise referenced in its district court interrogatory responses, and to
`obtain additional financial documents not in the district court case. Such documents are directly relevant to issues in
`the IPR proceedings. We will move forward with our motion for additional discovery tomorrow and our ex parte motion
`for leave to modify the protective order in the district court case.
`
`Liz
`
`Elizabeth Patton
`Partner
`Fox Rothschild LLP
`Campbell Mithun Tower - Suite 2000
`222 South Ninth St.
`Minneapolis, MN 55402-3338
`(612) 607-7202 - direct
`(612) 607-7100- fax
`epatton@foxrothschild.com
`www.foxrothschild.com
`
`From: Hare, Jaspal <jhare@spencerfane.com>
`Sent: Wednesday, September 11, 2019 2:35 PM
`To: Patton, Elizabeth A. <epatton@foxrothschild.com>; Toft, Lukas <ltoft@foxrothschild.com>
`Cc: Tuttle, Kevin <ktuttle@spencerfane.com>; Elliott, Kyle L. <KElliott@spencerfane.com>; Bear Brian
`<bbear@spencerfane.com>; Allee, J. Lori <JAllee@spencerfane.com>; Nath, Archana <anath@foxrothschild.com>
`Subject: [EXT] RE: Modification to PO in C.D. Cal. [Sleep Number v. Sizewise/ANM]
`
`Liz,
`
`We disagree with the substance of your email and do not believe it would be productive to respond point-by-point. But, I
`will address certain points.
`
`First, I never made a "request" that you provide a list of confidential documents for use in the IPRs. Instead, I suggested
`that Defendants would consider a narrower request than Plaintiff's blanket request to be able to use any documents from
`the District Court actions in the IPR (including third parties' confidential documents).
`
`1
`
`Sleep Number Corp.
`EXHIBIT 2020
`IPR2019-00500
`Page 1
`
`

`

`Second, Defendants still oppose use of their confidential information (and also third parties' confidential information
`without the third parties' permission) in the IPR for the reasons stated in my prior email, among others.
`
`Last, Defendants oppose Plaintiff's request to unilaterally redact highly confidential documents. Plaintiff is free to rely on
`public sources of information to make its case, but we caution: "If Par makes such a motion [for additional discovery]
`before the PT AB, it must be prepared to document how every aspect of that application is based exclusively on
`information that is either publicly available or that Jazz has previously produced to Par in the IPR proceeding. If Par
`violates the DCO further, Jazz should make a new application to this Court, which will consider the imposition of severe
`sanctions against Par and its counsel. Such potential sanctions may include a prosecution bar going forward, revocation
`of pro hac vice admission before this Court, monetary sanctions, and other appropriate relief." Jazz Pharmaceuticals, Inc.
`v. Amneal Pharmaceuticals LLC, No. 13-391(ES) (JAD), Dkt No. 211, 2016 WL 11480203 (D.N.J. Jan. 22, 2016)
`(emphasis added).
`
`Jaspal S. Hare | Attorney at Law
`Spencer Fane LLP
`5700 Granite Pkwy, Suite 650 | Plano, TX 75024
`O 214.750.3623 | M 317.294.7132 | F 972.324.0301
`jhare@spencerfane.com | spencerfane.com
`
`From: Patton, Elizabeth A. [epatton@foxrothschild.com]
`Sent: Wednesday, September 11, 2019 11:29 AM
`To: Hare, Jaspal; L Toft
`Cc: Tuttle, Kevin; Elliott, Kyle L.; Bear Brian; Allee, J. Lori; A Nath
`Subject: RE: Modification to PO in C.D. Cal. [Sleep Number v. Sizewise/ANM]
`
`Jaspal,
`
`Thanks for the quick response though I’m frankly surprised at the accusations. We take confidentiality very seriously
`and have not improperly used or quoted confidential materials. Instead, we’re done exactly as the Board requested –
`drafted proposed discovery per the Board’s request and sought a modification to the district court Protective Order per
`the Board’s guidance. ANM’s position would only vitiate any discussion of the required Garmin factors in Sleep
`Number’s brief. Further, in the emails below, I simply asked, pursuant to your request, that certain documents be
`allowed to be used in the IPR proceedings. You have said no. We are therefore left with no choice but to file our brief
`on Thursday noting your position and to file an ex parte motion in the district court requesting leave for a modification
`of the protective order.
`
`To clarify, are you really taking the position that even referencing a confidential document from the district court
`litigation in the IPR proceedings would constitute a violation of the district court protective order? If so, we completely
`disagree and don’t think your case law (discussed below) supports your position. We direct your attention to the
`following cases: Royal Park Investments SA/NV v. Deutsche Bank Nat'l Tr. Co., 192 F. Supp. 3d 400, 404 (S.D.N.Y. 2016)
`(“Royal Park has not identified any case other than Jazz which has sanctioned a litigant, under comparable protective
`order language, merely for using its knowledge of the existence of discovery documents in one case to advocate for their
`production in other litigation in which those documents are also discoverable.”); Milwaukee Elec. Tool Corp. v. Snap-on
`Inc., No. 14-CV-1296-JPS, 2016 WL 1719657, at *3-5 (E.D. Wis. Mar. 16, 2016) (finding that referencing previously
`produced documents by their bates numbers in requesting discovery in an IPR proceeding did not violate the Protective
`Order in the related district court case, and “declin[ing] to interpret the protective order in a manner that leads to
`absurd results that would give an unfair competitive advantage to [defendant/petitioner] and undermine the efficacy of
`IPR”); Streck, Inc. v. Research & Diagnostic Sys., Inc., 250 F.R.D. 426, 435 (D. Neb. 2008) (holding that defendants’ were
`“straining the term ‘use’” as plaintiff did not violate the protective order because it did not disclose any confidential
`information and did not rely on the materials themselves; rather, plaintiff simply referred to the documents in an
`attempt to secure their disclosure in collateral proceeding).
`
`To be clear, Sleep Number is not “using” confidential information/documents to draft its IPR discovery requests or its
`brief requesting such discovery. Sleep Number is not attaching copies of any such documents or articulating anything
`2
`
`Sleep Number Corp.
`EXHIBIT 2020
`IPR2019-00500
`Page 2
`
`

`

`they contain. Instead, Sleep Number is referring merely to the existence of the documents and the conclusion that
`Sleep Number needs additional discovery in order to show certain secondary considerations in the IPR proceedings. The
`case upon which ANM relies, Jazz Pharm., Inc. v. Amneal Pharm. LLC, No. 13-391(ES)(JAD), 2016 WL 11480203 (D.N.J.
`Jan. 22, 2016), is inapposite. First, the court in Jazz had already interpreted the protective order at issue to bar the use of
`confidential information “in any form during related covered business method review or inter partes review (‘IPR’)
`proceedings.” Id. at *1. Such an order has not been issued in this case. Second, the Jazz court highlighted the “serious”
`issue that arises when parties use district court protective orders to “prohibit the legitimate use of information in other
`proceedings.” Id. at *4. Accordingly, and in an effort to “reduce the potential for unfair gamesmanship in post-grant
`proceedings,” the court ordered the parties to meet and confer regarding a revisions to the protective order to allow for
`the confidential information to be used in the IPR proceedings. Id. Indeed, this is exactly what Sleep Number has been
`trying to achieve but which ANM continues to oppose. Sleep Number believes it is improper for ANM to use the district
`court protective order as both a sword and a shield.
`
`Therefore, Sleep Number requests that ANM reconsider its position as to the bates numbers identified in my email from
`yesterday. Additionally, Sleep Number requests that ANM and Sizewise allow Sleep Number to file redacted versions of
`the infringement claim charts served in the underlying district court case in support of its motion for additional discovery
`due tomorrow. Sleep Number would redact out all citations to any source code, thereby alleviating any confidentiality
`concerns. Please let us know by the COB today if ANM and Sizewise would be amenable to this request.
`
`Lastly, as to your allegation about Sleep Number’s discovery disclosures in the district court: Note that Defendants
`chose to file IPRs and to seek a stay of the district court litigation while the parties were in the midst of producing
`documents and meeting and conferring on discovery requests. Whether or not Sleep Number had already produced
`financial documents at the specific point in time of the stay does not mean Sleep Number was ever “intentionally
`withholding” such documents. The same is true of whether or not Sleep Number had identified certain secondary
`considerations yet. Secondary considerations are clearly relevant, and they are a proper reason to ask for additional
`discovery in an IPR proceeding.
`
`Liz
`
`Elizabeth Patton
`Partner
`Fox Rothschild LLP
`Campbell Mithun Tower - Suite 2000
`222 South Ninth St.
`Minneapolis, MN 55402-3338
`(612) 607-7202 - direct
`(612) 607-7100- fax
`epatton@foxrothschild.com
`www.foxrothschild.com
`
`From: Hare, Jaspal <jhare@spencerfane.com>
`Sent: Tuesday, September 10, 2019 4:27 PM
`To: Patton, Elizabeth A. <epatton@foxrothschild.com>; Toft, Lukas <ltoft@foxrothschild.com>
`Cc: Tuttle, Kevin <ktuttle@spencerfane.com>; Elliott, Kyle L. <KElliott@spencerfane.com>; Bear Brian
`<bbear@spencerfane.com>; Allee, J. Lori <JAllee@spencerfane.com>
`Subject: [EXT] RE: Modification to PO in C.D. Cal. [Sleep Number v. Sizewise/ANM]
`
`Liz,
`
`3
`
`Sleep Number Corp.
`EXHIBIT 2020
`IPR2019-00500
`Page 3
`
`

`

`Per our call yesterday, it is Defendants’ position that Sleep Number has violated of the District Court’s stipulated
`protective order (“PO”) (-356, dkt. 69). In particular, the PO only permits Sleep Number to “use Protected Material that
`is disclosed or produced by another Party or by a Non-Party in connection with this Action only for prosecuting,
`defending, or attempting to settle this Action.” PO at 10-11 (emphasis added). The PO defines “this Action” as the two
`district court actions only, and “this Action” does not include the IPR proceedings. PO at 3. Thus, the PO prohibits Sleep
`Number from using confidential information in the IPRs.
`
`However, it is evident that Sleep Number used Defendants’ confidential information to craft its proposed discovery
`request in the IPR proceedings. See Draft Discovery emailed by Mr. Toft on 9/3/19 (e.g., expressly referencing “an
`identification of inflatable air beds sold or leased with Sizewise’s Accused Source Code (as identified by Sleep Number in
`its infringement contentions served on January 25, 2019 in Sleep Number v. Sizewise, 5:18-cv-00356AB(SPx) and which
`includes the Platinum Source File source code).”) The Platinum Source File source code is designated as confidential
`under the PO, and the infringement contentions served on January 25, 2019 also contain information designated as
`confidential under the PO. Accordingly, Sleep Number has used Defendants’ confidential information for purposes of
`preparing its discovery requests in the IPRs. Such is improper. See, e.g., Jazz Pharmaceuticals, Inc. v. Amneal
`Pharmaceuticals LLC, No. 13-391(ES) (JAD), Dkt No. 211, 2016 WL 11480203 (D.N.J. Jan. 22, 2016) (“The Court finds that,
`in utilizing information gleaned from confidential documents that Jazz produced pursuant to the terms of the DCO (e.g.,
`using those documents as evidence of an alleged inconsistency in a position that Jazz took in the IPR proceedings, and
`confirming the origin of that position by referring to specific bates-numbered documents), both Amneal and Par
`unequivocally violated the terms of that Order. . . . The Court finds that, by referring to the fact that Jazz had already
`produced documents responsive to the IPR requests in connection with this litigation (i.e., inherently relying on the
`contents of those confidential documents as the basis for its point), and using that fact as part of its argument as to why
`Jazz should have to provide additional discovery in the IPR proceedings, Par and Amneal again violated the DCO.”).
`
`Regarding your below email, it further confirms that Sleep Number is outright “using” confidential information of
`Defendants for the express purpose of seeking discovery in the IPR. Again, such use of Defendants’ protected
`information is prohibited and in violation of the PO. Moreover, to date, Sleep Number has not identified “commercial
`success” as relevant to any claim or defense, even though it should have done so a long time ago in response to
`Defendants’ duly propounded discovery. Sleep Number also has not produced any evidence related to commercial
`success of its own products, and indeed, it has been intentionally withholding producing its own financial
`information. Defendants do not see how any of the documents you list show commercial success. Given these issues,
`Sleep Number’s request strongly appears to be for an improper purpose—to create a costly side show. Defendants
`oppose your below request.
`
`Defendants strongly caution Sleep Number against further using confidential information of Defendants or third parties
`produced in the District Court actions in the IPR proceedings, in particular, in preparing its upcoming motion for
`additional discovery. Defendants reserve their rights to seek redress for these violations and any additional violations
`with the District Court.
`
`Jaspal S. Hare | Attorney at Law
`Spencer Fane LLP
`
`5700 Granite Pkwy, Suite 650 | Plano, TX 75024
`O 214.750.3623 | M 317.294.7132 | F 972.324.0301
`jhare@spencerfane.com | spencerfane.com
`
`From: Patton, Elizabeth A. <epatton@foxrothschild.com>
`Sent: Tuesday, September 10, 2019 11:57 AM
`To: Hare, Jaspal <jhare@spencerfane.com>; Tuttle, Kevin <ktuttle@spencerfane.com>; Elliott, Kyle L.
`<KElliott@spencerfane.com>
`Cc: L Toft <ltoft@foxrothschild.com>
`Subject: RE: Modification to PO in C.D. Cal.
`
`4
`
`Sleep Number Corp.
`EXHIBIT 2020
`IPR2019-00500
`Page 4
`
`

`

`Jaspal and Kevin,
`
`I am writing to confirm our discussion yesterday regarding Sleep Number’s request to modify the Protective Order in the
`district court litigation to allow the parties to use discovery/disclosures in the course of the IPRs. We understand from
`the discussion that your position is that ANM/Sizewise are opposed to a wholesale modification of the Protective Order
`but would be willing to consider use of specific documents if Sleep Number provides a list. Although not exhaustive,
`Sleep Number’s initial request is that it be allowed to use the documents referenced in ANM’s/Sizewise’s interrogatory
`responses:
`
`•
`•
`
`Exhibits A, B, C to Sizewise’s First Supplemental Responses to Plaintiff’s First Set of Interrogatories
`The following produced documents cited in ANM’s First Supplemental Responses to Plaintiff’s First Set of
`Interrogatories:
`o ANMI00133410, ANMI00133414-422, ANMI00132315-605, ANMI00133010-123, ANMI00133008-009,
`ANMI00132606-777, ANMI00132778-829, ANMI0013385-387, ANMI0013385-388, ANMI00132830-952
`
`As some of these, particularly ANMI00133414-422, are relevant to Sleep Number’s brief due this Thursday, please
`provide a response as to the above list by the end of the day this Wednesday. To the extent ANM/Sizewise agree to
`allow Sleep Number to use of any of these documents, including in its filing on Thursday, we envision agreeing that they
`would be filed with the Board under seal.
`
`Thanks,
`Liz
`
`Elizabeth Patton
`Partner
`Fox Rothschild LLP
`Campbell Mithun Tower - Suite 2000
`222 South Ninth St.
`Minneapolis, MN 55402-3338
`(612) 607-7202 - direct
`(612) 607-7100- fax
`epatton@foxrothschild.com
`www.foxrothschild.com
`
`From: Toft, Lukas <ltoft@foxrothschild.com>
`Sent: Friday, September 6, 2019 2:59 PM
`To: Hare, Jaspal <jhare@spencerfane.com>; Patton, Elizabeth A. <epatton@foxrothschild.com>
`Cc: Tuttle, Kevin <ktuttle@spencerfane.com>; Elliott, Kyle L. <KElliott@spencerfane.com>
`Subject: RE: Modification to PO in C.D. Cal.
`
`Jaspal,
`
`As I mentioned yesterday and as suggested by the Panel, Sleep Number is seeking to modify the protective order from
`the C.D. Cal. case (Dkt. 75, attached for your reference) in order to allow the parties to use any discovery or disclosures
`already propounded or served in the district court action in the related IPR proceedings. Specifically, to allow for this,
`Sleep Number is proposing a modification to the existing protective order at paragraph 2.1 such that “Actions” shall be
`inclusive of IPR2019-00497, -00500, and -00514. In order to alleviate any concerns ANM/Sizewise may have, Sleep
`Number would be amenable to modifying the default protective order recommended by the PTAB with provisions
`5
`
`Sleep Number Corp.
`EXHIBIT 2020
`IPR2019-00500
`Page 5
`
`

`

`similar to the confidentiality provisions articulated in the attached protective order, including the provisions negotiated
`as to source code.
`
`Best Regards,
`Luke
`
`Luke Toft
`Fox Rothschild LLP
`(612) 607-7336
`ltoft@foxrothschild.com
`
`From: Hare, Jaspal <jhare@spencerfane.com>
`Sent: Thursday, September 5, 2019 3:12 PM
`To: Toft, Lukas <ltoft@foxrothschild.com>; Patton, Elizabeth A. <epatton@foxrothschild.com>
`Cc: Tuttle, Kevin <ktuttle@spencerfane.com>; Elliott, Kyle L. <KElliott@spencerfane.com>
`Subject: [EXT] RE: Modification to PO in C.D. Cal.
`
`Luke,
`
`We are available to meet and confer Monday afternoon at 2:00 pm CDST. We’ll need more detail. Please provide an
`outline of your proposal at least 1 business day in advance.
`
`Jaspal S. Hare | Attorney at Law
`Spencer Fane LLP
`
`5700 Granite Pkwy, Suite 650 | Plano, TX 75024
`O 214.750.3623 | M 317.294.7132 | F 972.324.0301
`jhare@spencerfane.com | spencerfane.com
`
`From: Toft, Lukas <ltoft@foxrothschild.com>
`Sent: Thursday, September 5, 2019 11:52 AM
`To: Elliott, Kyle L. <KElliott@spencerfane.com>
`Cc: e patton <epatton@foxrothschild.com>
`Subject: Modification to PO in C.D. Cal.
`
`Kyle,
`Would ANM/Sizewise be open to a stipulation modifying the protective order in the district court to allow the parties to
`use relevant information in the related IPR proceedings? If so, we can draft up a stipulation for your review. If not, do
`you have time to meet and confer on this issue tomorrow or Monday?
`Best Regards,
`Luke
`
`Luke Toft
`Attorney
`Fox Rothschild LLP
`Campbell Mithun Tower - Suite 2000
`222 South Ninth St.
`Minneapolis, MN 55402-3338
`(612) 607-7336 - direct
`
`6
`
`Sleep Number Corp.
`EXHIBIT 2020
`IPR2019-00500
`Page 6
`
`

`

`(612) 607-7100- fax
`ltoft@foxrothschild.com
`www.foxrothschild.com
`
`This email contains information that may be confidential and/or privileged. If you are not the intended recipient,
`or the employee or agent authorized to receive for the intended recipient, you may not copy, disclose or use any
`contents in this email. If you have received this email in error, please immediately notify the sender at Fox
`Rothschild LLP by replying to this email and delete the original and reply emails. Thank you.
`
`This email contains information that may be confidential and/or privileged. If you are not the intended recipient,
`or the employee or agent authorized to receive for the intended recipient, you may not copy, disclose or use any
`contents in this email. If you have received this email in error, please immediately notify the sender at Fox
`Rothschild LLP by replying to this email and delete the original and reply emails. Thank you.
`
`This email contains information that may be confidential and/or privileged. If you are not the intended recipient,
`or the employee or agent authorized to receive for the intended recipient, you may not copy, disclose or use any
`contents in this email. If you have received this email in error, please immediately notify the sender at Fox
`Rothschild LLP by replying to this email and delete the original and reply emails. Thank you.
`
`7
`
`Sleep Number Corp.
`EXHIBIT 2020
`IPR2019-00500
`Page 7
`
`