Case 5:18-cv-00357-AB-SP Document 141 Filed 02/12/19 Page 1 of 6 Page ID #:4500
`
`SPENCER FANE LLP
`Kyle L. Elliott (SBN 164209)
`kelliott@spencerfane.com
`Kevin Tuttle (pro hac vice)
`ktuttle@spencerfane.com
`Brian T. Bear (pro hac vice)
`bbear@spencerfane.com
`1000 Walnut Street, Suite 1400
`Kansas City, Missouri 64106
`Telephone: (816) 474-8100
`Facsimile: (816) 474-3216
`
`
`(continued on next page)
`
`Counsel for Defendants Sizewise
`Rentals, L.L.C. and American National
`Manufacturing, Inc.
`
`
`
`
`
`FOX ROTHSCHILD LLP
`Andrew S. Hansen (pro hac vice)
`ahansen@foxrothschild.com
`Archana Nath (pro hac vice)
`anath@foxrothschild.com
`Elizabeth A. Patton (pro hac vice)
`epatton@foxrothschild.com
`Lukas D. Toft (pro hac vice)
`ltoft@foxrothschild.com
`222 South Ninth Street, Suite 2000
`Minneapolis, MN 55402
`Telephone: 612-607-7000
`Facsimile: 612-607-7100
`
`(continued on next page)
`
`Counsel for Plaintiff Sleep Number
`Corporation
`
`UNITED STATES DISTRICT COURT
`
`CENTRAL DISTRICT OF CALIFORNIA
`
`SLEEP NUMBER CORPORATION,
`
`
`Plaintiff,
`
`
`
`v.
`
`
`SIZEWISE RENTALS, LLC,
`
`
`Defendant.
`
`
`
`Case No. 5:18–cv–00356 AB (SPx)
`5:18–cv–00357 AB (SPx)
`
`
`STIPULATION REGARDING STAY
`OF DISTRICT COURT ACTIONS
`
`
`
`SLEEP NUMBER CORPORATION,
`
`
`Plaintiff,
`
`v.
`
`
`
`
`
`
`
`
`
`AMERICAN NATIONAL
`MANUFACTURING, INC.,
`
`
`Defendant.
`
`
`
`AMERICAN NATIONAL MANUFACTURING, INC. - EX 1026 - IPR2019-00500 - Page 1
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`

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`Case 5:18-cv-00357-AB-SP Document 141 Filed 02/12/19 Page 2 of 6 Page ID #:4501
`
`Jaspal S. Hare (SBN 282171)
`jhare@spencerfane.com
`SPENCER FANE LLP
`5800 Granite Parkway, Suite 800
`Plano, Texas 75024
`Telephone: (214) 750-3623
`Facsimile: (972) 324-0301
`
`Alison M. Rowe (pro hac vice)
`arowe@spencerfane.com
`SPENCER FANE LLP
`2200 Ross Avenue, Suite 4800 West
`Dallas, Texas 75201
`Telephone: (214) 750-3610
`Facsimile: (214) 750-3612
`
`Thomas J. Daly (SBN 119684)
`tdaly@lrrc.com
`Drew Wilson (SBN 283616)
`dwilson@lrcc.com
`LEWIS ROCA ROTHGERBER
`CHRISTIE LLP
`655 N. Central Avenue, Suite 2300
`Glendale, CA 91203-1445
`Telephone: (626)795-9900
`Facsimile: (626)577-8800
`
`
`Counsel for Defendants Sizewise
`Rentals, L.L.C. and American National
`Manufacturing, Inc.
`
`
`
`Ashe P. Puri, SBN. 297814
`apuri@foxrothschild.com
`FOX ROTHSCHILD LLP
`10250 Constellation Blvd., Suite 900
`Los Angeles, CA 90067
`Telephone: 310-598-4150
`Facsimile: 310-556-9828
`
`Steven A. Moore, SBN 232114
`steve.moore@pillsburylaw.com
`Nicole S. Cunningham, SBN 234390
`nicole.cunningham@pillsburylaw.com
`PILLSBURY WINTHROP SHAW
`PITTMAN LLP
`501 West Broadway, Suite 1100
`San Diego, CA 92101-3575
`Telephone: 619-234-5000
`Facsimile: 619-236-1995
`
`Kecia J. Reynolds (pro hac vice)
`kecia.reynolds@pillsburylaw.com
`PILLSBURY WINTHROP SHAW
`PITTMAN LLP
`1200 Seventeenth Street, NW
`Washington, DC 20036
`Telephone: 202-663-8000
`Facsimile: 202-663-8007
`
`Counsel for Plaintiff Sleep Number
`Corporation
`
`
`
`AMERICAN NATIONAL MANUFACTURING, INC. - EX 1026 - IPR2019-00500 - Page 2
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`

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`Case 5:18-cv-00357-AB-SP Document 141 Filed 02/12/19 Page 3 of 6 Page ID #:4502
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`Plaintiff Sleep Number Corporation and Defendants Sizewise Rentals, LLC
`
`and American National Manufacturing, Inc. (collectively, the “Parties”) by and
`
`through their undersigned counsel, hereby enter into this Stipulation Regarding Stay
`
`of District Court Actions as follows:
`
`WHEREAS, Plaintiff filed the above-captioned actions in this Court on
`
`February 20, 2019 asserting patent infringement of U.S. Patent No. 5,904,172 (“the
`
`‘172 Patent”), U.S. Patent No. 8,769,747 (“the ‘747 Patent”), and U.S. Patent No.
`
`9,737,154 (“the ‘154 Patent”) (collectively, “the patents-in-suit”). [Dkt. 1 in Case
`
`No. 5:18–cv–00356; Dkt. 1 in Case No. 5:18–cv–00357.]
`
`WHEREAS, the Parties have litigated the actions, largely in consolidated
`
`format, since that time.
`
`WHEREAS, in late December 2018, Defendants filed Petitions for Inter
`
`Partes Review (“IPR”) on each of the patents-in-suit, IPR2019-00497, -00500, and -
`
`00514.
`
`WHEREAS, on January 4, 2019, Defendants notified Plaintiff that they
`
`intended to file a motion to stay pending the IPRs, which the parties met and
`
`conferred about on January 7, 2019.
`
`WHEREAS, on January 9, 2019, Defendants filed a Motion to Stay Pending
`
`Inter Partes Review [Dkt. 133 in Case No. 5:18–cv–00356; Dkt. 134 in Case No.
`
`5:18–cv–00357], which Plaintiff opposed.
`
`WHEREAS, on January 25 and February 5, 2019, the Patent Trial & Appeal
`
`Board (“PTAB”) accorded filing dates to Defendants’ Petitions.
`
`WHEREAS, the hearing on Defendants’ Motion to Stay is set before the
`
`Court on Friday, February 15, 2019.
`
`WHEREAS, the Parties have continued to meet and confer regarding
`
`Defendants’ Motion to Stay and have reached an agreement that the district court
`
`actions shall be stayed pending the PTAB’s institution decision on the IPRs.
`
`AMERICAN NATIONAL MANUFACTURING, INC. - EX 1026 - IPR2019-00500 - Page 3
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`

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`Case 5:18-cv-00357-AB-SP Document 141 Filed 02/12/19 Page 4 of 6 Page ID #:4503
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`WHEREAS, the Parties have good cause for this stipulation because they
`
`have reached an agreement that will avoid further court intervention, will conserve
`
`resources for both the Parties and the Court, and will allow their dispute to proceed
`
`in the most timely manner possible.
`
`THEREFORE, IT IS HEREBY STIPULATED by and between the Parties as
`
`follows:
`
`1. With the exceptions set forth in paragraphs 2 and 3 below, the above-
`
`captioned district court actions shall be immediately stayed until the PTAB has
`
`issued institution decisions on each of the IPRs. The stay will remain in effect
`
`subject to paragraphs 4 and 5 below.
`
`2.
`
`Defendants’ February 14, 2019 deadline to file an amended pleading
`
`pursuant to the Court’s Order on Plaintiff’s Motion to Dismiss dated January 31,
`
`2019 [Dkt. 141 in Case No. 5:18–cv–00356; Dkt. 140 in Case No. 5:18–cv–00357]
`
`shall be extended to February 18, 2019. Because an amended pleading would
`
`render any answer moot, Plaintiff need not file an Answer to Defendants’ Second
`
`Amended Answer and Counterclaims. However, in the event Defendants do not file
`
`an amended pleading, Plaintiff will have until March 4, 2019 to file an Answer to
`
`Defendants’ Second Amended Answer and Counterclaims. Further, any response to
`
`Defendants’ amended pleading due February 18, 2019 shall be due within 14 days
`
`from the date the stay is lifted.
`
`3.
`
`The stay does not affect (1) Defendants’ now February 18, 2019
`
`deadline to file an amended pleading pursuant to the Court’s Order on Plaintiff’s
`
`Motion to Dismiss dated January 31, 2019 [Dkt. 141 in Case No. 5:18–cv–00356;
`
`Dkt. 140 in Case No. 5:18–cv–00357]; or (2) Defendants’ February 22, 2019
`
`deadline to serve amended invalidity contentions pursuant to the Court’s Order
`
`Granting Stipulation dated January 30, 2019 [Dkt. 139 in Case No. 5:18–cv–00356;
`
`Dkt. 138 in Case No. 5:18–cv–00357]. The foregoing deadlines remain pending.
`
`AMERICAN NATIONAL MANUFACTURING, INC. - EX 1026 - IPR2019-00500 - Page 4
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`

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`Case 5:18-cv-00357-AB-SP Document 141 Filed 02/12/19 Page 5 of 6 Page ID #:4504
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`4.
`
`The stay shall be lifted with respect to the ‘172 Patent as a result of an
`
`issuance of a decision denying institution of IPR2019-00514, which will go into
`
`effect once the PTAB has issued institution decisions on all three IPRs. The stay
`
`shall be lifted with respect to the ‘154 and ‘747 Patents as a result of an issuance of
`
`a decision denying institution of IPR2019-00497 and -00500, which will go into
`
`effect once the PTAB has issued institution decisions on all three IPRs. If the stay is
`
`lifted as to less than all of the patents-in-suit, any party may then file a motion with
`
`(or otherwise seek guidance from) this Court to sever or bifurcate the claims at issue
`
`following meet and confer efforts with the opposing party.
`
`5.
`
`In the event all three IPRs are instituted, the stay will be lifted as to all
`
`three patents-in-suit upon the issuance of the Final Written Decision from the PTAB
`
`in the last pending IPR, unless Plaintiff elects to appeal any of the Final Written
`
`Decisions from the PTAB. In the event Defendants elect to appeal any of the Final
`
`Written Decisions from the PTAB, Defendants may file a motion to stay with this
`
`Court following meet and confer efforts with Plaintiff. Further, again, if the stay is
`
`lifted as to less than all of the patents-in-suit, any party may then file a motion with
`
`(or otherwise seek guidance from) this Court to sever or bifurcate the claims at issue
`
`following meet and confer efforts with the opposing party.
`
`6.
`
`The Parties will provide quarterly updates to the Court regarding the
`
`status of the IPRs and any appeals.
`
`7.
`
`The hearing scheduled for Friday, February 15, 2019 on Defendants’
`
`Motion to Stay Pending Inter Partes Review [Dkt. 133 in Case No. 5:18–cv–00356;
`
`Dkt. 134 in Case No. 5:18–cv–00357] may be cancelled.
`
`
`
`
`
`
`
`AMERICAN NATIONAL MANUFACTURING, INC. - EX 1026 - IPR2019-00500 - Page 5
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`

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`Case 5:18-cv-00357-AB-SP Document 141 Filed 02/12/19 Page 6 of 6 Page ID #:4505
`
`Date: February 12, 2019
`
`
`
`
`
`
`Date: February 12, 2019
`
`
`FOX ROTHSCHILD LLP
`
`s/Ashe P. Puri
`Ashe P. Puri
`Attorney for Plaintiff
`
`SPENCER FANE LLP
`
`s/Jaspal S. Hare
`Jaspal S. Hare
`Attorney for Defendants
`
`
`
`
`DECLARATION OF CONSENT TO ELECTRONIC SIGNATURE
`
`Pursuant to Central Dist. LR 5-4.3.4(a)(2), the electronic filer of this
`
`Stipulation, Ashe P. Puri, hereby attests that all other signatories listed, and on
`
`whose behalf the filing is submitted, concur in the filing’s content and have
`
`authorized this filing.
`
`
`
`
`
`
`
`s/Ashe P. Puri
`Ashe P. Puri
`
`
`
`
`
`
`
`
`AMERICAN NATIONAL MANUFACTURING, INC. - EX 1026 - IPR2019-00500 - Page 6
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`