EXHIBIT F
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`Patent Owner’s Response and Notice of Supplemental
`Evidence in Response to Petitioner’s Objections to Patent
`Owner’s Evidence Dated October 30, 2019
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`Sleep Number Corp.
`SUPPLEMENTAL EXHIBIT 2033
`IPR2019-00500
`Page 1
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`Patent Owner’s Response and Notice of Supplemental
`Evidence in Response to Petitioner’s Objections to Patent
`Owner’s Evidence Dated October 30, 2019
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`Sleep Number Corp.
`SUPPLEMENTAL EXHIBIT 2033
`IPR2019-00500
`Page 1
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`AMERICAN NATIONAL MANUFACTURING INC.,
`Petitioner,
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`v.
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`SLEEP NUMBER CORPORATION
`f/k/a SELECT COMFORT CORPORATION,
`Patent Owner.
`____________
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`Case No. IPR2019-00500
`Patent No. 9,737,154 B2
`____________
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`SUPPLEMENTAL DECLARATION OF ELIZABETH A. PATTON
`IN SUPPORT OF PATENT OWNER’S RESPONSE
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`Sleep Number Corp.
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`IPR2019-00500
`Page 2
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`Case No. IPR2019-00500
`Patent No. 9,737,154 B2
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`I, Elizabeth A. Patton, declare as follows:
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`1.
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`I am a partner at the law firm Fox Rothschild LLP, and I am one of the
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`attorneys representing Sleep Number Corporation f/k/a Select Comfort Corporation
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`(herein “Sleep Number”) in the above matter initiated by American National
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`Manufacturing, Inc. (“ANM”). I have been admitted pro hac vice.
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`2.
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`I have first-hand knowledge of the information stated in this
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`Supplemental Declaration, which I submit in support of Patent Owner’s Response.
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`3.
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`I am a senior member of the team representing Patent Owner in the
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`following IPR proceedings: IPR2019-00497 (U.S. Pat. No. 8,769,747), IPR2019-
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`00500 (U.S. Pat. No. 9,737,154), and IPR2019-00514 (U.S. Pat. No. 5,904,172). I
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`am also a senior member of the team representing Patent Owner in the following
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`related district court cases (“District Court Case”): Sleep Number Corporation v.
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`American National Manufacturing Inc., 5:18-cv-00357(AB)(SPx) (C.D. Cal. 2018)
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`and Sleep Number Corporation v. Sizewise Rentals, LLC, 5:18-cv-00356(AB)(SPx)
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`(C.D. Cal. 2018).
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`4.
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`Additionally, I am a senior member of the team representing Sleep
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`Number Corporation in the following district court case involving ANM’s related
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`company and Real-Party-in-Interest Dires, LLC (“Dires Case”): Sleep Number
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`Corporation, et al. v. John Baxter, et al., 12-cv-2899-DWF-SER (D. Minn. 2012),
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`on appeal, Sleep Number Corporation, et al. v. John Baxter, et al., 19-1077 (8th Cir.
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`1
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`Sleep Number Corp.
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`IPR2019-00500
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`Case No. IPR2019-00500
`Patent No. 9,737,154 B2
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`2019). In September and October of 2017, a trial was conducted in the Dires Case
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`(“Dires Trial”). I was a senior member of the trial team representing Sleep Number
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`Corporation at the Dires Trial. During the Dires Trial, ANM President Craig S.
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`Miller Jr. (see Exhibit 1033 ¶1), testified at length regarding facts related to Sleep
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`Number’s claims in the litigation, including the false statements Sleep Number
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`alleged Dires had made to consumers, many of which involved statements pertaining
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`to Sleep Number in comparison to Dires/ANM. I was present for the entirety of Mr.
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`Miller’s testimony. Notably, Dires is a Real-Party-in-Interest in this IPR proceeding.
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`5.
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`The testimony elicited during the trial in the Dires Case was recorded
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`stenographically and publicly filed on the docket as full page transcripts at Docket
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`Entries 586-588. Exhibit 2034 is a true and correct copy of excerpts of Volumes
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`VI–VIII of the Dires Case trial testimony in minuscript form, which includes all of
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`Craig Miller’s trial testimony conducted on September 29, 2017, October 2, 2017,
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`and October 3, 2017. Based on being present during the entirety of Mr. Miller’s
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`testimony at the Dires Trial and my review of the transcripts filed in the Dires Case
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`docket, I believe that his testimony was fully, accurately, and authentically recorded
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`in the transcripts filed in the Dires Case docket. Exhibit W is a true and correct copy
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`of excerpts (pages 1090-1094) of Volume V of the Dires Case trial testimony in
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`manuscript form, which contains testimony of a witness named David Karr. I heard
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`2
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`Sleep Number Corp.
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`Case No. IPR2019-00500
`Patent No. 9,737,154 B2
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`all of this testimony, and I believe it to be accurately and authentically reflected in
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`Exhibit W.
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`6.
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`During the trial in the Dires Case, the parties entered thousands of
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`exhibits into evidence. Although those exhibits were not publicly filed on the
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`docket, they became publicly available at the conclusion of the trial when the parties
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`did not request any confidentiality designations or restrictions from public access
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`(with the exception of certain customer communications not being submitted in this
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`proceeding). In addition, those exhibits were later provided to the Eighth Circuit
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`Court of Appeals, again under no confidentiality designations or restrictions from
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`public access (and again with the same exception).
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`7.
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`Exhibit 2035 is a true and correct copy of Plaintiff’s Exhibit 730 from
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`the Dires Case trial, which are materials produced by Dires that include instructions
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`from Craig Miller regarding training. Dires stipulated without objection to the
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`admissibility of this Exhibit prior to the Dires Trial. During the Dires Trial, Mr.
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`Miller testified about this trial exhibit, including providing foundation for the
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`exhibit, and Dires did not object to Mr. Miller’s knowledge nor did Mr. Miller
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`suggest the exhibit was not authentic. (See Exhibit 2034 at 1332:3-1340:25 (Pltf.
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`Ex. 730).) Further, this trial exhibit bears a Dires bates stamp. Exhibit 2036 is a true
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`and correct copy of Defendant’s Exhibits 212, 213, and 215 and Plaintiff’s Exhibits
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`716 and 718 from the Dires Case trial, which are emails produced by Dires that
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`3
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`Sleep Number Corp.
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`Patent No. 9,737,154 B2
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`illustrate the training of its employees. During the Dires Trial, Mr. Miller testified
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`about these trial exhibits, including providing foundation for the exhibits, and Dires
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`did not object to Mr. Miller’s knowledge nor did Mr. Miller suggest these exhibits
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`were not authentic. (See Exhibit 2034 at 1790:15-1792:6 (Pltf. Ex. 716), 1356:7-
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`1359:2 (Pltf. Ex. 718), 1349:16-1352:2, 1788:2-1790:7 (Deft. Ex. 212), 1352:3-
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`1353:2 (Deft. Ex. 213), 1353:3-1354:6 (Deft. Ex. 215).) Further, all of these trial
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`exhibits bear Dires’ bates stamp and three are labeled as “Deft.” rather than “Pltf.”
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`exhibits (Deft. Exs. 212, 213, and 215) and were thus offered for admission at trial
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`by Dires.
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`8.
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`Exhibit 2037 is a true and correct copy of Defendant’s Exhibits 172 and
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`174 from the Dires Case trial, which is the Agreement and an Amendment to the
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`Agreement between Select Comfort Corporation, and American National
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`Manufacturing, Inc., and Craig Miller, dated August 11, 2006 and January 22, 2009
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`respectively. During the Dires Trial, Mr. Miller testified about these trial exhibits,
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`including providing foundation for the exhibits, and Dires did not object to Mr.
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`Miller’s knowledge nor did Mr. Miller suggest these exhibits were not authentic.
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`(See Exhibit 2034 at 1463:3-1465:2, 1469:20-1472:10 (Deft. Ex. 172), 1472:11-
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`1474:20 (Deft. Ex. 174).) Further, these trial exhibits bear Dires’ bates stamp and
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`are labeled as “Deft.” rather than “Pltf.” exhibits (Deft. Exs. 172, 174) and were thus
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`offered for admission at trial by Dires.
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`4
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`Sleep Number Corp.
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`IPR2019-00500
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`Case No. IPR2019-00500
`Patent No. 9,737,154 B2
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`9.
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`The following is a summary of portions of Mr. Miller’s testimony at the
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`Dires Trial, of Exhibit 2037, and of certain content from Dires’ website at
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`https://www.personalcomfortbed.com/the-original-number-bed (a true and correct
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`copy of which, as it appeared on October 14, 2019, is Exhibit 2038), based on seeing
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`live and then reviewing the transcripts of Mr. Miller’s testimony and on reviewing
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`the Exhibits:
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`a.
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`According to Mr. Miller’s testimony at the Dires Trial, ANM
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`purchased the Instant Comfort brand name of adjustable air beds in July 2006.
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`(See Exhibit 2034 at 1608:3-1609:20; Exhibit 2038.)
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`b.
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`According to Mr. Miller’s testimony at the Dires Trial, ANM was
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`subject to a non-compete agreement with Sleep Number from August 2006
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`through December 2011. (See Exhibit 2034 at 1463:3-1465:2, 1469:20-
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`1472:10, 1472:11-1474:20, 1514:1-13; Exhibit 2037; Exhibit 2038.)
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`According to Mr. Miller and the Exhibits, the initial agreement prohibited
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`ANM and its President, Mr. Miller, from selling consumer adjustable air beds,
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`except in small numbers to a small number of existing customers—
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`specifically no more than 100 beds annually to existing customers—thus
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`limiting ANM’s distribution of adjustable air beds. (Id.) According to Mr.
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`Miller and the Exhibits, the amendment prohibited ANM and Mr. Miller from
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`engaging in any commercial activity or services for certain specific
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`5
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`Sleep Number Corp.
`SUPPLEMENTAL EXHIBIT 2033
`IPR2019-00500
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`Case No. IPR2019-00500
`Patent No. 9,737,154 B2
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`companies. (Id.) According to Mr. Miller and the Exhibits, ANM was not
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`restricted, however, from its medical business or from servicing Nautilus
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`warranty claims. (Id.) Dires’ website states that the non-compete caused a
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`“limited distribution of adjustable firmness mattresses.” (See Exhibit 2038.)
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`c.
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`According to Mr. Miller’s testimony at the Dires Trial, after the
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`expiration of this non-compete agreement, Mr. Miller intended to take ANM’s
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`Instant Comfort brand direct to the consumer. (See Exhibit 2034 at 1665:4-
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`20, 1674:11-1675:9.)
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`d.
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`According to his testimony at the Dires Trial, in early 2012, Mr.
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`Miller helped form an entity called Dires, LLC, at which his title is Managing
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`member and co-founder. (See Exhibit 2034 at 1285:12-24, 1475:17-22,
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`1630:22-1631:3, 1673:8-1677:18.)
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`e.
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`Dires has been identified as a Real-Party-in-Interest in these IPR
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`proceedings. (See Paper 2 at 1.) According to Mr. Miller’s testimony at the
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`Dires Trial, both Dires and ANM are subsidiaries of Real-Party-in-Interest
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`Sizewise Rentals, LLC, and Dires and ANM are “part of the same corporate
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`family.” (See Exhibit 2034 at 1626:4-13, 1692:4-13.) Also according to Mr.
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`Miller’s testimony at the Dires Trial, Dires has described both ANM and Real-
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`Party-in-Interest Sizewise Rentals, LLC as its parent company. (See Exhibit
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`2034 at 1338:4-21; see also Ex. 2035 at 2.)
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`6
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`Sleep Number Corp.
`SUPPLEMENTAL EXHIBIT 2033
`IPR2019-00500
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`Case No. IPR2019-00500
`Patent No. 9,737,154 B2
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`f.
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`According to Mr. Miller’s testimony at the Dires Trial, Dires has
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`sold adjustable air beds manufactured by ANM directly to consumers since
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`September 2012. (See Exhibit 2034 at 1285:18-19, 1610:3-6, 1629:12-25,
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`1692:4-10; Exhibit 2038.)
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`10. Sleep Number accuses both ANM’s consumer air beds and Dires’
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`consumer air beds of patent infringement in the District Court Case—more
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`specifically, that the beds have been sold with certain accused air controllers and
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`certain accused source code. (See Exhibit 2044.) I understand Dr. John Abraham
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`and Dr. George Edwards are submitting declarations (Exhibits 2027, 2029) in
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`support of Patent Owner’s Response stating their opinions that ANM’s, and thus
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`Dires’, consumer air beds copy Sleep Number’s patents and consumer air beds.
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`11. As depicted on ANM’s Instant Comfort website, ANM’s adjustable air
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`beds are branded as “Instant Comfort” beds: https://www.instantcomfort.com/. As
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`depicted on Dires’ website, Dires’ adjustable air beds are branded as “Personal
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`Comfort” beds: https://www.personalcomfortbed.com/.
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`12. Mr. Miller testified at the Dires Trial that Dires’ adjustable air beds are
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`manufactured by ANM. (See Ex. 2034 at 1629:12-25.) I understand Dr. Abraham
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`opines in his declaration (Exhibit 2027) that the air controllers sold with these
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`respective air beds are functionally the same and that both are manufactured by
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`ANM.
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`7
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`Sleep Number Corp.
`SUPPLEMENTAL EXHIBIT 2033
`IPR2019-00500
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`Case No. IPR2019-00500
`Patent No. 9,737,154 B2
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`13. Dires
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`states
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`on
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`its
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`website
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`referenced
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`above,
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`https://www.personalcomfortbed.com/the-original-number-bed (Exhibit 2038), that
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`Personal Comfort claims to have helped “more than 20,000 sleepers achieve better
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`and more restful sleep.” I can attest that Exhibit 2038 is an authentic reproduction of
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`what appeared at that website as of the print date October 14, 2019, and that it was
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`created fully and accurately.
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`14. ANM’s public social media and website advertises its Instant Comfort
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`brand as “the Number Bed that changes with you.” First, Exhibit 2039 is a true and
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`correct copy of Instant Comfort’s User Guide, which is publically available on the
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`Instant
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`Comfort
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`website
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`at
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`https://www.instantcomfort.com/wp-
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`content/uploads/2018/09/IC-User-Guide.pdf, downloaded October 16, 2019, and
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`which uses this phrase. I can attest that Exhibit 2039 is an authentic reproduction of
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`what appeared at that website as of the print date October 16, 2019, and that it was
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`created fully and accurately. Second, below is a true and correct copy of a screen
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`shot of a post that uses this phrase on Instant Comfort’s Facebook page at
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`https://www.facebook.com/instantcomfort/posts/2335481476491633, which is a
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`screen shot I took on October 16, 2019 and which captures the Facebook post fully
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`and accurately:
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`8
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`Sleep Number Corp.
`SUPPLEMENTAL EXHIBIT 2033
`IPR2019-00500
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`Case No. IPR2019-00500
`Patent No. 9,737,154 B2
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`15. ANM’s Instant Comfort website includes a “Find a Store” webpage at
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`https://www.instantcomfort.com/find-a-store/. When searching on ANM’s “Find a
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`Store” website for retailers of Instant Comfort beds within 200 miles of Detroit,
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`Michigan for example, there are dozens of results, as shown in the true and correct
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`copy of a screen shot of ANM’s website at https://www.instantcomfort.com/find-a-
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`store/, which I took on November 13, 2019 and which captures that portion of the
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`website fully and accurately:
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`9
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`Sleep Number Corp.
`SUPPLEMENTAL EXHIBIT 2033
`IPR2019-00500
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`Case No. IPR2019-00500
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`See https://www.instantcomfort.com/find-a-store/ (depicting search for Detroit,
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`Michigan and miles radius of 200 miles).
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`16. Craig Miller has testified in this proceeding that the initial non-compete
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`agreement ANM entered into with Sleep Number (Exhibit 2037) only allowed ANM
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`to “sell[] to a few existing customers.” (Exhibit 1033 ¶4.) Mr. Miller testified that
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`he provided services under the agreement from 2006 through 2011. (Id. ¶5.) Exhibit
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`I is a true and correct copy of print-outs of 72 searches performed on ANM’s “Find
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`a Store” website in November 2019. Exhibit J is a true and correct copy of an Excel
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`chart with a copy/paste listing of the 177 current retail locations that were found by
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`searching ANM’s “Find a Store” website.
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`10
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`Sleep Number Corp.
`SUPPLEMENTAL EXHIBIT 2033
`IPR2019-00500
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`Case No. IPR2019-00500
`Patent No. 9,737,154 B2
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`I declare under penalty of perjury that the foregoing is true and correct.
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`Dated: November 13, 2019
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`s/Elizabeth A. Patton
`Elizabeth A. Patton
`Fox Rothschild LLP
`Suite 2000, Campbell Mithun Tower
`222 South Ninth Street
`Minneapolis, MN 55402-3338
`Phone: (612) 607-7000
`Fax: (612) 607-7100
`E-mail: epatton@foxrothschild.com
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`11
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`Sleep Number Corp.
`SUPPLEMENTAL EXHIBIT 2033
`IPR2019-00500
`Page 13
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