Allee, J. Lori
`
`From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`
`
`L Toft <ltoft@foxrothschild.com>
`Friday, January 11, 2019 4:54 PM
`trials@uspto.gov
`Tuttle, Kevin; Elliott, Kyle L.; Hare, Jaspal; e patton; A Hansen; Steve Moore; Nicole
`Cunningham; k ecia
`Re: IPR2019-00497; IPR2019-00500; IPR2019-00514
`
`Dear Board,
`Patent Owner Sleep Number Corporation respectfully request the Board’s guidance. On December 21, 2018, Petitioner
`filed petitions in IPR2019-00497, challenging the validity of U.S. Patent No. 8,769,747 (“the ‘747 Patent”), and IPR2019-
`00500, challenging the validity of U.S. Patent No. 9,737,154 (“the ‘154 Patent”). On December 29, 2019, Petitioner filed
`IPR2019-00514, challenging the validity of U.S. Patent No. 5,904,172 (“the ‘172 Patent”).
`
`
`Sleep Number disputes whether the patent owner was properly named and served. The parties met and conferred on
`Friday, January 11, 2019 regarding this dispute. Sleep Number respectfully requests a telephone call with the Board
`regarding this issue and the parties are jointly available at the following times:
`
`
`Monday, January 13: 11am to 7pm EST
`Tuesday, January 14: 11am to 12pm EST and 2pm to 5pm EST
`
`
`To provide further information in advance of the requested telephone conference, brief summaries of the parties’
`respective positions are set forth below.
`
`
`Sleep Number’s Position
`It is Sleep Number’s position that the each of the petitions are defective, that service is improper, and that no filing date
`should be afforded because each of the petitions name Select Comfort Corporation as the patent owner, whereas Sleep
`Number Corporation owns each of the patents at issue. Accordingly, Sleep Number does not intend to file Mandatory
`Notices pursuant to 37 C.F.R. § 42.8 until the Board is able to provide guidance on how to proceed. Sleep Number’s
`counsel can provide additional detail regarding its position upon request or during the requested telephone call with the
`Board. Sleep Number disagrees with Petitioner’s position, which is pasted below at their request.
`
`
`
`Petitioner’s position in the communication to the Board at the request of Fox Rothschild LLP, counsel for patent owner
`in IPR2019-00497, IPR2019-00500, and IPR2019-00514:
`
`
`Petitioner American National Manufacturing, Inc. joins in this request to state:
`1. Petitioner requests this email should copy Petitioner;
`2. Petitioner has served the above IPR petitions on the patent owner and designated representative of patent
`owner pursuant to 35 USC 312(a)(5) and 37 CFR 42.105(a);
`3. Petitioner opposes patent owner’s request to address this issue until they have: (a) complied with 37 CFR
`42.8(a)(2) in each of the above IPR proceedings; and (b) addressed the issue pursuant to 37 CFR 42.107 in each
`proceeding; and
`4. Kyle Elliott and Kevin Tuttle, counsel for Petitioner, are available for a call with the Board: Monday, Jan. 14 after
`11:00 am (EST); or Tuesday, Jan. 15 after 11:00 am (EST).
`
`
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`AMERICAN NATIONAL MANUFACTURING, INC. - EX 1025 - IPR2019-00500 - Page 1
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`

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`We look forward to the Board’s response.
`
`
`Sincerely,
`Luke Toft
`
`
`Luke Toft
`
`Associate
`Fox Rothschild LLP
`
`Campbell Mithun Tower - Suite 2000
`222 South Ninth St.
`Minneapolis, MN 55402-3338
`(612) 607-7336 - direct
`(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.
`
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`AMERICAN NATIONAL MANUFACTURING, INC. - EX 1025 - IPR2019-00500 - Page 2
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