Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 34
`Entered: October 7, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMERICAN NATIONAL MANUFACTURING INC,
`Petitioner,
`
`v.
`
`SLEEP NUMBER CORPORATION
`f/k/a SELECT COMFORT CORPORATION,
`Patent Owner.
`____________
`
`IPR2019-00497 (Patent 8,769,747 B2)
`IPR2019-00500 (Patent 9,737,154 B2)
`IPR2019-00514 (Patent 5,904,172)1
`____________
`
`
`Before SCOTT A. DANIELS, FRANCES L. IPPOLITO, and
`ALYSSA A. FINAMORE, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`
`
`DECISION
`Granting-In-Part Patent Owner’s Motion for Additional Discovery and to
`Waive the Word Count for the Parties’ Response, Reply, and Sur-Reply
`37 C.F.R. §§ 42.24, 42.51(b)(2)
`
`
`
`
`
`
`
`1 We issue one Order and enter it in each proceeding.
`
`
`
`
`1
`
`
`Tel: 571-272-7822
`
`
`Paper 34
`Entered: October 7, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMERICAN NATIONAL MANUFACTURING INC,
`Petitioner,
`
`v.
`
`SLEEP NUMBER CORPORATION
`f/k/a SELECT COMFORT CORPORATION,
`Patent Owner.
`____________
`
`IPR2019-00497 (Patent 8,769,747 B2)
`IPR2019-00500 (Patent 9,737,154 B2)
`IPR2019-00514 (Patent 5,904,172)1
`____________
`
`
`Before SCOTT A. DANIELS, FRANCES L. IPPOLITO, and
`ALYSSA A. FINAMORE, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`
`
`DECISION
`Granting-In-Part Patent Owner’s Motion for Additional Discovery and to
`Waive the Word Count for the Parties’ Response, Reply, and Sur-Reply
`37 C.F.R. §§ 42.24, 42.51(b)(2)
`
`
`
`
`
`
`
`1 We issue one Order and enter it in each proceeding.
`
`
`
`
`1
`
`
`
`IPR2019-00497 (Patent 8,769,747 B2)
`IPR2019-00500 (Patent 9,737,154 B2)
`IPR2019-00514 (Patent 5,904,172)
`
`Following a conference call with the parties on September 5, 2019,
`
`and by an Order of September 11, 2019, we authorized Patent Owner to file
`
`a Motion for Additional Discovery (“Motion,” or “Mot.”) and Petitioner to
`
`file an Opposition (“Opposition,” or “Opp.”) to the Motion in each of the
`
`above captioned proceedings. Paper 14. Where necessary, and for purposes
`
`of brevity we refer in this Decision only to papers filed in IPR2019-00497.
`
`With its Motion (Paper 18), Petitioner presents proposed Discovery
`
`Requests (Ex. 2016, “Requests”) requiring responses to five Interrogatories
`
`and five Requests for Production. Mot. 18; Ex. 2016. Patent Owner filed an
`
`Opposition (Paper 24) to the Motion and Requests. Opp. 1. The Motion
`
`also requests that we permit a 15% increase in additional words for the
`
`parties’ briefing, asserting that more words are necessary to accommodate a
`
`full discussion of secondary considerations.
`
`After considering the arguments and evidence before us, we determine
`
`that it is in the interests of justice to grant, in part, Patent Owner’s Motion.
`
`A. Background
`
`Patent Owner’s claims pertain generally to a system and method for
`
`adjusting pressure within an inflatable air mattress, (’747 and ’154 patents),
`
`as well as a specific valve enclosure assembly, (’172 patent) used with
`
`inflatable air mattresses. See, e.g., Ex. 1001, 12:42–14:50. The origins of
`
`this discovery dispute, as it relates to this Decision, begin with Patent Owner
`
`being desirous of using information in these IPR proceedings already
`
`obtained in the underlying district court proceeding, and obtaining in these
`
`proceedings additional potentially confidential information, including sales
`
`and financial data, about Petitioner’s allegedly infringing products. Mot. 1–
`
`2. Patent Owner indicates that the information it already has is subject to a
`
`
`
`2
`
`
`
`IPR2019-00497 (Patent 8,769,747 B2)
`IPR2019-00500 (Patent 9,737,154 B2)
`IPR2019-00514 (Patent 5,904,172)
`
`district court protective order. See id. at n.1.2 Patent Owner’s main
`
`argument is that obtaining the information and production in the Requests in
`
`these IPRs will help support its assertions of objective indicia of
`
`nonobviousness, specifically for the elements of commercial success and
`
`copying. Id. at 2–4.
`
`Petitioner opposes the Motion and Requests for a variety of reasons,
`
`arguing in sum, that Patent Owner has failed to show that additional
`
`discovery is in the interest of justice. Opp. 2 (citing 35 U.S.C. § 316(a)(5);
`
`37 C.F.R. § 42.51(b)(2)).
`
`B. Patent Owner’s Requests
`
`Patent Owner characterizes its Requests as “narrow requests directed
`
`toward information in the sole custody of ANM Patent Owner.” Mot. 3.
`
`Patent Owner’s over-arching contention is that Petitioner has information
`
`that “will show an adoption or copying of Sleep Number’s own patented
`
`design and the resulting commercial success of the practicing products.” Id.
`
`at 4. Patent Owner also requests additional pages in its Response to address
`
`secondary considerations implicated by this additional evidence. Id. at 9–
`
`10.
`
`Patent Owner proposes five Interrogatories and five corresponding
`
`Requests for Production. Ex. 2016, 2–6. Interrogatories 1–3 request the
`
`same or similar information relating to sales of (1) consumer inflatable air
`
`bed systems sold by Petitioner ANM, (2) medical inflatable air bed systems
`
`
`2 Patent Owner indicated in an email of September 30, 2019 to the Board
`that subsequent to the filing of its Motion before us here, the District Court
`granted Patent Owner’s motion to modify the district court protective order,
`apparently enabling certain confidential information in that proceeding, to be
`used in these IPRs.
`
`
`
`3
`
`
`
`IPR2019-00497 (Patent 8,769,747 B2)
`IPR2019-00500 (Patent 9,737,154 B2)
`IPR2019-00514 (Patent 5,904,172)
`
`sold by ANM, and (3) medical inflatable air bed systems sold or leased by
`
`ANM or Sizewise. Id. at 2–3. These Interrogatories request Petitioner to
`
`specifically identify inter alia, “inflatable air beds sold with ANM’s
`
`Accused Source Code,” and also “identification of inflatable air beds sold
`
`without ANM’s Accused Source Code.” Id. at 3. Interrogatory 4 requests
`
`that for all sales in interrogatories 1–3, Petitioner disclose which sales and
`
`leases “were to third-party retailers or distributors” and the revenue from
`
`these sales and leases. Id. at 3–4. Interrogatory 5 requests that Petitioner
`
`identify various differentiating features for each SKU or product sold or
`
`leased by Petitioner since 2009.
`
`C. Analysis
`
`We address Interrogatories 1–5 and corresponding Requests for
`
`Production 1–5, together, as they request essentially the same or similar
`
`information relating to three different classifications (consumer, medical,
`
`sales/lease) of Petitioner’s products.
`
`1.
`
`Patent Owner’s Arguments
`
`Patent Owner addresses the Garmin factors3 with respect to its
`
`Requests as a whole. Mot. 4–9. Patent Owner argues that something useful
`
`will be uncovered because “[Patent Owner] is in possession of evidence that
`
`something useful will be uncovered.” Id. at 5. While Patent Owner does not
`
`
`3 Garmin Int’l Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001, slip op. at
`6–7 (PTAB Mar. 5, 2013) (Paper 26) (precedential). The Garmin factors
`are: (1) more than a possibility and mere allegation that something useful
`will be discovered; (2) requests that do not seek other party’s litigation
`positions and the underlying basis for those positions; (3) ability to generate
`equivalent information by other means; (4) easily understandable
`instructions; and (5) requests that are not overly burdensome to answer. Id.
`
`
`
`4
`
`
`
`IPR2019-00497 (Patent 8,769,747 B2)
`IPR2019-00500 (Patent 9,737,154 B2)
`IPR2019-00514 (Patent 5,904,172)
`
`explain, specifically, what evidence it has, Patent Owner states that “in the
`
`District Court Case, ANM and Sizewise have produced some financial
`
`documents with limited information.” Id. Patent Owner argues further that
`
`“[Patent Owner] will be able to show nexus.” Id. Patent Owner explains
`
`that it has not made any showing towards nexus in its Motion, because
`
`Petitioner opposes submission in these IPR’s of the infringement contentions
`
`from the district court litigation due to confidentiality. Id. at n.2.
`
`Patent Owner argues specifically that based on a review of the
`
`information it currently has, “the requested discovery would show
`
`commercial success through (1) ANM and Sizewise incorporating Sleep
`
`Number’s patented technology into their bed models after patent issuance,
`
`and (2) those products experiencing an increase in unit sales and revenues.”
`
`Id. at 6. Patent Owner asserts that this information does not seek Petitioner’s
`
`litigation positions because it is seeking only information “to show
`
`commercial success and copying, not position(s) on secondary
`
`considerations, validity, or infringement.” Id. at 7. Patent Owner asserts
`
`that the information available to it from the district court litigation is
`
`incomplete, and that it is not aware of other methods or procedures to “show
`
`the relative success—certainly not historically—of ANM’s air mattresses
`
`with or without the patented features.” Id. at 8. Patent Owner then asserts
`
`that the proposed Requests are clear and not overly burdensome. Id. at 8–9.
`
`2.
`
`Petitioner’s Arguments
`
`Petitioner argues that Patent Owner’s Motion relies on unsupported
`
`attorney arguments and fails to provide evidence “that the Requested
`
`Discovery relates to secondary indicia of nonobviousness, namely
`
`commercial success.” Opp. 3. Petitioner argues that the best evidence of
`
`
`
`5
`
`
`
`IPR2019-00497 (Patent 8,769,747 B2)
`IPR2019-00500 (Patent 9,737,154 B2)
`IPR2019-00514 (Patent 5,904,172)
`
`objective indicia of nonobviousness would be from Patent Owner itself, a
`
`significantly bigger entity reporting revenue of $1.5 billion, in comparison to
`
`Petitioner’s estimated revenue of approximately $21 million. Id. at 1, nn.3,
`
`4. Petitioner argues that Petitioner fails to show any evidence, or even
`
`acknowledge that an appropriate examination of objective indicia of
`
`nonobviousness should include its own products and market share analysis.
`
`Id. at 7.
`
`Petitioner argues that Patent Owner has failed to produce any
`
`evidence in the way of claim charts, or otherwise, of nexus beyond the
`
`assertion that “nexus is presumed.” Id. at 5 (citing Mot. 6). Patent Owner
`
`argues that the Requests also seek Petitioner’s litigation position with
`
`respect to infringement, essentially as “a trial-within-a-trial,” and that if
`
`forced to address issues of nexus, such arguments would necessarily
`
`implicate Petitioner’s noninfringement positions to the benefit of Patent
`
`Owner. Id. at 6. Petitioner asserts that the Requests, covering a period of 10
`
`years, are overly burdensome in the required detail and customization of the
`
`responses and far from clear and thus “likely will lead to further disputes
`
`requiring additional judicial resources.” Id. at 9.
`
`3.
`
`The Garmin Factors
`
`We consider Patent Owner’s Interrogatories together along with its
`
`Requests for Production as they all relate to, supplement in varying details,
`
`and request a specific spreadsheet format, the three enumerated requests in
`
`Interrogatories 1–3. By way of example, Interrogatory 1 requests
`
`identification of “sales and financial information on all consumer inflatable
`
`air bed systems sold by ANM,” specifically enumerating:
`
`
`
`6
`
`
`
`IPR2019-00497 (Patent 8,769,747 B2)
`IPR2019-00500 (Patent 9,737,154 B2)
`IPR2019-00514 (Patent 5,904,172)
`
` (1) an identification of inflatable air beds sold with ANM’s
`Accused Source Code, (2) an identification of inflatable air beds
`sold without ANM’s Accused Source Code, and (3) separately
`for the foregoing two categories, an identification of (by SKU or
`product name) the number of units sold and the revenue
`generated therefrom.
`
`Ex. 2016, 2–3. Relatedly, Request for Production 1 states a desired
`
`spreadsheet format for this same enumerated information: “[p]lease produce
`
`an excel spreadsheet that identifies sales and financial information on all
`
`consumer inflatable air bed systems sold by ANM.” Id. at 4.
`
`Garmin Factor 1 – Useful Information
`
`Although we agree with Petitioner that Patent Owner has not offered
`
`explicit analysis, or even attempted a showing of nexus, we are persuaded
`
`that some of the information requested will be useful as to properly
`
`determining objective indicia of nonobviousness. Even though it is not set
`
`forth in detail before us here, Patent Owner has provided in the district court
`
`litigation some modicum of infringement analysis. Mot. 1–2; Opp. 1–2.
`
`Absent specific facts to the contrary, we are persuaded that Patent Owner
`
`has at least some measure of good-faith basis for believing that Petitioner’s
`
`products are covered by the patents at issue before us. For the time-being,
`
`we leave the burden of nexus, as it relates not only to its own products, but
`
`to Petitioner’s products, for Patent Owner to establish in its Patent Owner
`
`Response.
`
`Considering the first Garmin factor, we are persuaded by Patent
`
`Owner’s arguments that certain of Petitioner’s information to show the
`
`commercial merit and market demand of inflatable air mattresses, allegedly
`
`incorporating the claimed system, method and valve enclosure assembly, by
`
`
`
`7
`
`
`
`IPR2019-00497 (Patent 8,769,747 B2)
`IPR2019-00500 (Patent 9,737,154 B2)
`IPR2019-00514 (Patent 5,904,172)
`
`showing the market trends before and after the introduction of its product,
`
`would be useful. It is not unreasonable to also request and consider
`
`Petitioner’s evidence, to the extent it is reasonably available, in addition to
`
`Patent Owner’s own evidence of objective indicia of nonobviousness from
`
`its own products. As an aggregate, and assuming Patent Owner can show
`
`nexus, it would be more fulsome to our ultimate finding of patentability to
`
`have evidence from both parties’ products in the record needed to perform a
`
`comparison of the marketplace before and after introduction of inflatable
`
`mattresses incorporating the claimed system, method, and valve enclosure
`
`assembly.
`
`The nature of this request is that the information would be useful to
`
`Patent Owner in contrasting the pre- and post-patent issuance marketplace;
`
`information regarding certain products without the allegedly patentable
`
`features are required for this contrast analysis. Patent Owner is not using the
`
`products without the allegedly patentable features to show nonobviousness
`
`directly, but rather using it to put the products with the allegedly patentable
`
`features into their proper context within the marketplace. Accordingly,
`
`allowing Patent Owner to paint a picture of the marketplace before and after
`
`the introduction of products with the pertinent features in this instance would
`
`be useful to show the marketplace’s reaction to Patent Owner’s, as well as
`
`Petitioner’s products, having the particular features.
`
`We acknowledge Petitioner’s argument that based on the significant
`
`disparity in size between the parties as suggested by the annual revenue
`
`numbers, it is Patent Owner’s own evidence that is most likely to be the
`
`dominant factor in determining commercial success. See Opp. 1, nn.3, 4
`
`(estimating Patent Onwer’s revenue at $1.5 billion and Petitioner’s revenue
`
`
`
`8
`
`
`
`IPR2019-00497 (Patent 8,769,747 B2)
`IPR2019-00500 (Patent 9,737,154 B2)
`IPR2019-00514 (Patent 5,904,172)
`
`at $21 million). And, Petitioner may introduce its own evidence to rebut
`
`Patent Owner’s evidence, may point out flaws in Patent Owner’s reasoning,
`
`and may argue how much weight we should afford Patent Owner’s evidence.
`
`The purpose of this Decision is not to establish facts, but rather to determine
`
`whether Patent Owner has offered sufficient evidence and explanation for it
`
`to obtain certain information from Petitioner. Accordingly, we are
`
`persuaded that there is more than a mere allegation that the requested
`
`information will be found and that having certain information regarding
`
`inflatable air beds sold with, and without, ANM’s Accused Source Code,
`
`sold or leased since 2009 time frame would be useful to Patent Owner for its
`
`arguments of nonobviousness.
`
`On the other hand, with respect to the demands for particular financial
`
`information throughout the Requests, as well as specific retailers or
`
`distributors to which ANM’s products were sold as set forth in Interrogatory
`
`4, we are not persuaded that information beyond the number of products sold
`
`would be useful. Furthermore, in its Motion Patent Owner has not explained
`
`with any particularly why revenue, profit, or any other financial data imparts
`
`evidence of commercial success and market share that cannot be gleaned
`
`from product sales numbers. Patent Owner has not explained why the
`
`specific distributor, retailer or customer information to which products were
`
`sold or leased is relevant to determining market share either. In our view,
`
`the number of allegedly infringing, and non-infringing inflatable air
`
`mattresses, sold to vendors is a sufficient metric to paint a picture of the
`
`marketplace. The relevant concern that we see from Patent Owner’s
`
`arguments can be answered effectively, and most efficiently, based on
`
`whether more of one type of mattress was sold versus another. See Mot. 5
`
`
`
`9
`
`
`
`IPR2019-00497 (Patent 8,769,747 B2)
`IPR2019-00500 (Patent 9,737,154 B2)
`IPR2019-00514 (Patent 5,904,172)
`
`(Patent Owner alleging that “‘sales figures alone’ are evidence of
`
`commercial success”) (quoting Tec Air, Inc. v. Denso Mfg. Michigan Inc.,
`
`192 F.3d 1353, 1361 (Fed. Cir. 1999)). Accordingly, we are not persuaded
`
`that Patent Owner’s wide-ranging requests for “financial information” such
`
`as information to calculate net sales, costs of goods sold, gross revenues, or
`
`gross profits, will provide useful information.
`
`Accordingly, we have amended Patent Owner’s proposed Requests in
`
`Exhibit 3003 to reflect our findings here and below.4
`
`Garmin Factor 2 – Litigation Positions
`
`With respect to the second Garmin factor, litigation positions, we do
`
`not determine Patent Owner to be seeking any admission of infringement or
`
`any other litigation position. Petitioner is not, at least at the moment, being
`
`asked to compare product features to claims but rather simply list, and
`
`identify by SKU or product name, those products that include the allegedly
`
`infringing source code, and those that do not.
`
`Garmin Factor 3 – Equivalent Information
`
`Turning to the third Garmin factor, we agree with Petitioner that
`
`Patent Owner can provide its own equivalent information in the form of
`
`Patent Owner’s market share and sales history, based on its own data from
`
`its vendors and retailers to determine market share. While we find in favor
`
`of Petitioner for this factor, this is balanced to some extent by the first two
`
`factors, and as discussed below, by granting in-part Patent Owner’s Motion,
`
`we have significantly lowered Petitioner’s burden.
`
`Garmin Factor 4 – Instructions
`
`
`4 The amended discovery requests are entered as Exhibit 3001 in IPR2019-
`00514.
`
`
`
`10
`
`
`
`IPR2019-00497 (Patent 8,769,747 B2)
`IPR2019-00500 (Patent 9,737,154 B2)
`IPR2019-00514 (Patent 5,904,172)
`
`Petitioner argues mainly that the Requests implicate materials covered
`
`by the district court protective order. This factor no longer appears to be an
`
`issue in this case. If the modified district court protective order does not
`
`alleviate this issue, and that the Requests, as amended by the Board, cannot
`
`be answered with information that may be appropriately protected by a joint
`
`protective order in these IPR proceedings, the parties should meet and confer
`
`to determine a solution to resolve the matter before contacting the Board.
`
`Garmin Factor 5 – Burden
`
` Petitioner argues that the Requests and excel formatting “would
`
`require review, analysis, and compilation of complex financial data covering
`
`over ten years and all of ANM’s air bed products.” Opp. 10. We agree with
`
`Petitioner that the detail and breadth of the information requested,
`
`particularly with respect to the categories of financial data, is unduly
`
`burdensome. For example, Patent Owner’s demand for specific bed size and
`
`mattress heights, in its requests in Interrogatory 5 is overly burdensome. See
`
`Ex. 2016, 4. Interrogatory 5 is an outsized request that, in our view, is
`
`intended almost exclusively to supplement the financial data requested by
`
`Patent Owner. As we have already determined, above, Patent Owner has not
`
`explained sufficiently why this financial data and any supplementary product
`
`details are necessary beyond the identification of and number of products
`
`sold or leased. Accordingly, the Requests, as amended by the Board, do not
`
`require the production of any financial data or significant supplementary
`
`product information apart from identifying the products sold and leased, and
`
`which products include, or do not include, the accused source code.
`
`Sizewise
`
`11
`
`
`
`
`
`IPR2019-00497 (Patent 8,769,747 B2)
`IPR2019-00500 (Patent 9,737,154 B2)
`IPR2019-00514 (Patent 5,904,172)
`
`Also with respect to the burden on Petitioner, Patent Owner’s
`
`Requests require the same or similar information from Sizewise Rentals
`
`LLC, (“Sizewise”), named by Petitioner as a real party-in-interest in these
`
`proceedings. Mot. 1; Pet. 1. Petitioner argues that Sizewise “is not a named
`
`party to this action, is not believed to be entitled to participate in this
`
`proceeding, and is not believed to be subject to the PO’s requested discovery
`
`(which does not include a request for a subpoena).” Opp. 1, n.1. That
`
`Sizewise is named as a real party-in-interest does not, without more, provide
`
`any evidence of a specific corporate, financial or controlling relationship
`
`between Petitioner and Sizewise. Patent Owner’s Motion provides no
`
`explanation of the relationship between Petitioner and Sizewise, nor does it
`
`explain how or why Petitioner would have access to Sizewise’s information
`
`or documents. We are not persuaded based on the simple fact that Sizewise
`
`is named as a real party-in-interest, that Sizewise is somehow subject to
`
`additional discovery in these IPR proceedings.
`
`We have amended Patent Owner’s proposed Requests to also reflect
`
`our determination here as to Sizewise not being a party to this proceeding,
`
`based on the evidence before us as provided in Patent Owner’s Motion.
`
`D. Expansion of Word Count
`
`Based on Patent Owner’s arguments for expanding the word count
`
`allowed in our briefing, the Board determines that good cause exists to
`
`increase the word limit for the Patent Owner’s Responses to allow Patent
`
`Owner to address more completely claim construction and secondary
`
`considerations. See Mot. 9–10. The Board authorizes an increase of 1,000
`
`words to the word limit for each of the Patent Owner’s Responses and a
`
`corresponding increase of 1,000 words to the word limit for each of the
`
`
`
`12
`
`
`
`IPR2019-00497 (Patent 8,769,747 B2)
`IPR2019-00500 (Patent 9,737,154 B2)
`IPR2019-00514 (Patent 5,904,172)
`
`Petitioner’s Replies. See 37 C.F.R. § 42.24(c)(1) (setting the word count for
`
`a Petitioner’s Reply to 5,600 words). No expansion of the word count is
`
`authorized for any Sur-Reply or other briefing.
`
`E. Conclusion
`
`We determine that portions of Interrogatories 1–5 and similarly
`
`coinciding portions of Requests for Production 1–5 would be useful and not
`
`unduly burdensome, and grant Patent Owner’s request to that extent.
`
`Accordingly, the Requests, including amendments to Interrogatories 1–5 are
`
`modified as set forth in Exhibit 3003, entered by the Board in these
`
`proceedings and in conjunction with this Order.
`
`Specifically, we authorize discovery of products sold and leased by
`
`Petitioner that incorporate the allegedly infringing source code, and those
`
`that do not, from 2009 to at least the first quarter of 2019. We would expect,
`
`content-wise, that the information provided with respect to these items will
`
`be organized in a spreadsheet format and provide sufficient descriptors
`
`uniquely identifying the item, an order year, and an order quantity. There
`
`must also be a way to identify whether the product contains the allegedly
`
`infringing source code, or not.
`
`We also grant Petitioner’s unopposed Request for Extension of Time
`
`(Paper 26) in IPR2019-00514.
`
`Lastly, based on the asserted confidential nature of the information
`
`that may be discovered, the parties should meet and confer with respect to
`
`requesting entry of the Board’s Default Protective Order. To the extent the
`
`parties agree to terms for a protective order that differ from the Default
`
`Protective Order set forth in our Trial Practice Guide, the parties should
`
`detail the reasons for altering Default Protective Order and include an
`
`
`
`13
`
`
`
`IPR2019-00497 (Patent 8,769,747 B2)
`IPR2019-00500 (Patent 9,737,154 B2)
`IPR2019-00514 (Patent 5,904,172)
`
`exhibit showing proposed modifications to the Default Protective Order in
`
`redline. See e.g., Trial Practice Guide, 77 Fed. Reg. 48756, 48760 and
`
`Appendix B (Aug. 14, 2012). We note that material relied upon in making
`
`our Final Decision may be made public in some form, and further that sealed
`
`material may be unsealed at the conclusion of the trial. See also 37 C.F.R.
`
`§ 42.56 (providing that a party is authorized to file a motion to expunge
`
`confidential information from the record upon conclusion of the
`
`proceeding).
`
` For the reasons given, it is
`
`ORDERED that Patent Owner’s Motion for Additional Discovery and
`
`to Waive the Word Count for the parties’ Response, Reply, and Sur-Reply is
`
`granted-in-part;
`
`FURTHER ORDERED that Patent Owner may serve Petitioner with
`
`the Requests as amended by the Board, as shown in redline in Exhibit 3003
`
`(IPR2019-00497, IPR2019-00500) and Exhibit 3001 (IPR2019-00514);
`
`FURTHER ORDERED that Petitioner’s unopposed Request for
`
`Extension of Time in IPR2019-00514 is granted.
`
`and
`
`FURTHER ORDERED that the parties are authorized an increase of
`
`1,000 words to the word limit for each of the Patent Owner’s Responses and
`
`a corresponding increase of 1,000 words to the word limit for each of the
`
`Petitioner’s Replies. No other briefing is authorized additional word count.
`
`
`
`14
`
`
`
`IPR2019-00497 (Patent 8,769,747 B2)
`IPR2019-00500 (Patent 9,737,154 B2)
`IPR2019-00514 (Patent 5,904,172)
`
`For PETITIONER:
`
`Kyle L. Elliott
`Kevin S. Tuttle
`Jaspal S. Hare
`SPENCER FANE LLP
`kelliott@spencerfane.com
`ktuttle@spencerfane.com
`jhare@spencerfane.com
`
`For PATENT OWNER:
`
`Steven A. Moore
`Kecia J. Reynolds
`PILLSBURY WINTHROP SHAW PITTMAN LLP
`steve.moore@pillsburylaw.com
`kecia.reynolds@pillsburylaw.com
`
`Luke Toft
`FOX ROTHSCHILD LLP
`ltoft@foxrothschild.com
`
`
`
`15
`
`
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