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
`____________
`Case No. IPR2019-00500
`Patent No. 9,737,154
`____________
`
`PETITIONER’S REPLY TO PATENT OWNER’S REQUEST TO RESCIND
`THE FILING DATE OF THE PETITION AND DENY INSTUTION OF
`THE PETTION FOR FAILURE TO TIMELY SERVE THE PETITION
`UPON PATENT OWNER
`
`i
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`WA 12980913.2
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMERICAN NATIONAL MANUFACTURING INC.
`Petitioner
`v.
`SLEEP NUMBER CORPORATION
`f/k/a SELECT COMFORT CORPORATION
`Patent Owner
`____________
`Case No. IPR2019-00500
`Patent No. 9,737,154
`____________
`
`PETITIONER’S REPLY TO PATENT OWNER’S REQUEST TO RESCIND
`THE FILING DATE OF THE PETITION AND DENY INSTUTION OF
`THE PETTION FOR FAILURE TO TIMELY SERVE THE PETITION
`UPON PATENT OWNER
`
`i
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`WA 12980913.2
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`
`
`Table of Contents
`
`B.
`
`INTRODUCTION ...............................................................................................................1
`STATEMENT OF MATERIAL FACTS ............................................................................2
`APPLICABLE LEGAL STANDARD ................................................................................3
`ARGUMENT.......................................................................................................................4
`A.
`Petitioner Timely Served Patent Owner by Serving Both Sleep Number
`Corporation’s Designated Litigation Counsel and the Correspondent
`Address of Record....................................................................................................4
`Petitioner Properly Identified Sleep Number Corporation as the Owner of
`the Patent..................................................................................................................6
`Sleep Number is On Notice Its Patent is Subject to an IPR and Cannot
`Show Any Prejudice. ...............................................................................................8
`Alternatively, If There Is Any Perceived Defect, the Board Could Cure on
`Its Own Initiative or Grant Petitioner Authorization to File a Motion to
`Seek Cure.................................................................................................................9
`CONCLUSION..................................................................................................................10
`
`C.
`
`D.
`
`I.
`II.
`III.
`IV.
`
`V.
`
`ii
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`WA 12980913.2
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`I.
`
`INTRODUCTION
`Patent Owner Sleep Number Corp.’s (“PO”) requested relief to rescind the
`
`filing date of the Petition and deny institution of the Petition for Inter Partes
`
`Review (“IPR”) of Patent 9,737,154 (“’154 Patent”) should be denied.
`
`It is indisputable that PO’s PTO counsel of record and its litigation counsel
`
`of record both were in fact served and received copies of the Petition. PO itself
`
`also received the Petition as evidence by its counsel (having been retained by PO
`
`for this IPR matter) reaching out to Petitioner’s counsel days later to address this
`
`very issue. Such satisfies the statutory and regulatory requirements.
`
`The Petition correctly identifies the PO throughout; however, the cover page
`
`inadvertently identifies “Select Comfort Corp.” Select Comfort is PO’s former
`
`name—not a separate or distinct entity. PO operated under that name for years and
`
`years and that name is also listed on the cover page of the ’154 Patent. Patent
`
`Owner only recently executed a name change (not an assignment). PO present no
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`controlling authority that this presents a defect as to service.
`
`There simply is no prejudice to PO from either of these form-over-
`
`substance issues. If there is any perceived defect, it can easily be waived or cured,
`
`either by the Board or granting authorization for Petitioner to file an appropriate
`
`motion.
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`Accordingly, following statutory law and PTAB precedent the Board should
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`deny PO’s request and find the Petition timely filed, properly served, and the
`
`current filing date should be maintained.
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`1. PO first filed a civil action against Petitioner alleging infringement of the
`
`‘154 Patent on December 29, 2017, and served it January 2, 2019. Ex. 1018
`
`(“Elliott Decl.”), ¶ 6, Ex. 1023.
`
`2. The third page of the Petition refers to the ‘154 Patent as “Mahoney,”
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`stating “Mahoney is assigned to Sleep Number Corporation” (Petition, Paper 2 at 3
`
`(“Pet.”)), and the Petition identifies PO as litigating the ‘154 Patent against
`
`Petitioner (Pet. at 1 (identifying the co-pending California District Court (“C.D.
`
`Cal.”) litigation)), jointly stayed by court order in view of this IPR. See Elliott
`
`Decl., ¶ 2, Ex. 1019.
`
`3. Petitioner served the Petition by FedEx Saturday delivery upon Ms. Patton
`
`on December 21, 2018, and it was received December 26, 2018. Pet. at 66; and
`
`Elliott Decl., ¶ 3, Ex. 1020. Ms. Elizabeth Patton of Fox Rothschild LLP,
`
`Minneapolis, MN is litigation counsel for PO in the C.D. Cal. litigation. Ex. 1017.
`
`4. Petitioner served the Petition by FedEx Saturday delivery upon PO’s
`
`listed correspondent of record, Fish and Richardson P. C., Minneapolis, MN, on
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`2
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`December 21, 2018, and it was received December 26, 2019. Pet. at 66; and Elliott
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`Decl., ¶ 4, Ex. 1021.
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`5. On January 10, 2019, Mr. Lukas Toft of Fox Rothschild LLP,
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`Minneapolis, MN, acknowledged receipt of the Petition, and corresponded with
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`Petitioner’s counsel on behalf of PO regarding service of the petition. Elliott Decl.,
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`¶ 5, Ex. 1022; and Ex. 2007 ¶ 2.
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`6. On January 11, 2019 Mr. Toft requested a telephone conference with the
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`Board seeking guidance regarding a service issue. See Paper 5 at 2.
`
`7. This Reply to Patent Owner’s Preliminary Response (“PR”) is authorized
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`by the Board. See Paper 5 at 4-5.
`
`III. APPLICABLE LEGAL STANDARD
`The statutory requirements for consideration of an IPR include that “the
`
`petitioner provides copies of any of the documents required under paragraphs (2),
`
`(3), and (4) to the patent owner or, if applicable, the designated representative of
`
`the patent owner.” 35 U.S.C. § 312(a)(5) (emphasis added). Serving the Petition
`
`upon a designated representative of the patent owner is sufficient. See Micron
`
`Tech., Inc. v. e.Digital Corp., IPR2015-00519, Paper 14 at 4 (PTAB Mar. 24, 2015
`
`(finding service of a petition on active litigation counsel independently effects
`
`service of the petition under § 312(a)(5). The regulations promulgated pursuant to
`
`the statute state that “[t]he petitioner may additionally serve the petition and
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`supporting evidence on the patent owner at any other address know to the
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`petitioner as likely to effect service.” 37 C.F.R. § 42.105(a).
`
`IV. ARGUMENT
`A.
`Petitioner Timely Served Patent Owner by Serving Both Sleep
`Number Corporation’s Designated Litigation Counsel and the
`Correspondent Address of Record.
` Petitioner provided PO with a copy of the required documents pursuant to
`
`35 U.S.C. § 312(a) by serving the Petition and supporting materials on both PO’s
`
`patent infringement litigation counsel and PO’s counsel of record with the PTO
`
`before the one-year statutory bar date. PO first filed a civil action against Petitioner
`
`alleging infringement of the ‘154 Patent on December 29, 2017, and it was served
`
`on January 2, 2018. Pet. at 1, Fn. 1; Ex. 1023.
`
`The statute requires a petition for IPR cannot be filed more than 1 year after
`
`a petitioner, or real party in interest is “served with a complaint alleging
`
`infringement of the patent.” 35 U.S.C. § 315(b). Petitioner served a copy of the
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`Petition on December 21, 2018, by FedEx, upon PO’s counsel of record in the C.D.
`
`Cal. litigation, (and also counsel of record in this IPR) specifically to the attention
`
`of their counsel managing the day-to-day aspects of that litigation, Ms. Elizabeth
`
`Patton (See Pet. at 66; Ex. 1020), and it was received and accepted on December
`
`26, 2018 (Ex. 1020), before the January 2, 2019 bar date in compliance with 35
`
`U.S.C. § 312(a), and 315(b). See Micron, IPR 2015-00519, Paper 14 at 4 (finding
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`Petitioner’s service of the petition upon patent owner’s litigation counsel of record,
`
`a designated representative patent owner, as meeting the governing statutory
`
`requirement for service). As Petitioner was already in communication with PO’s
`
`designated representative in the D. Cal. litigation, this was an address known to
`
`petitioner as likely to effect service, consistent with an intent of 37 C.F.R. § 105(a).
`
`In addition, the Petition was served via FedEx on December 21, 2018 on
`
`Fish & Richardson, identified by PO in PAIR as the correspondent of record, at its
`
`corresponding physical address via FedEx (Pet. at 66; Ex. 1021), and it was
`
`received and accepted on December 26, 2018. (Ex. 1021). Fish & Richardson has
`
`not objected to service. The regulations allow service by “Priority Mail Express®
`
`or by means at least as fast and reliable as Priority Mail Express®.” 37 CFR §
`
`42.105(b) (service of the petition). Thus, Petitioner also filed and served the
`
`Petition on PO’s correspondent of record well before the bar date in compliance
`
`with 35 U.S.C. § 312(a), 315(b), and 37 C.F.R. § 105(a).
`
`PO cites both Micron and Cultec in support of their arguments why service
`
`upon Fish & Richardson was deficient. But neither case helps PO. Micron
`
`supports Petitioner’s argument that service of litigation counsel is sufficient to
`
`satisfy the statutory requirements for service. While Cultec is not even about
`
`service but about payment of fees.
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`PO’s asserts that the “statutory” requirements have not been met (e.g., PR at
`
`6), which is inaccurate. Here, at best, only the regulatory requirements of service
`
`on the exact PTO-listed address have not been met. However, the regulations
`
`contemplate a scenario where service at that the PTO listed address would not be
`
`effective and thus provided an alternative addresses that may be served. See 77
`
`Fed. Reg. at 7,045 (describing the analogous scenario where an out-of-date address
`
`was listed with the PTO).
`
`Here, if the Board perceives a defect in strict compliance with regulations,
`
`the Board should exercise its discretion under 37 C.F.R. § 42.5(b) (allowing waiver
`
`or suspension of regulations) and allow the Petition to proceed.
`
`Petitioner acted in good faith and went through the effort to determine the
`
`physical address corresponding Fish & Richardson’s Minneapolis office where a
`
`person would be present to receive service as opposed to delivering the Petition to
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`Fish & Richardson’s Minneapolis P.O. Box. Attempted service on the P.O. Box
`
`would have likely delayed actual receipt of the Petition.
`
`Further, patent owners should not encouraged to make service of process
`
`more burdensome by designating a P.O. Box, which cannot be served by normal
`
`process servers or commercial carriers.
`
`B.
`
`Petitioner Properly Identified Sleep Number Corporation as the
`Owner of the Patent.
`
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`The substantive content of the Petition clearly identifies Sleep Number
`
`Corporation as the owner by assignment of the ‘154 Patent. Pet. at 3 (stating
`
`“Mahoney is assigned to Sleep Number Corporation.”). The statute and regulations
`
`do not require use of a cover page, or dictate the content or format of a cover page
`
`of a Petition upon filing. As to the Petition, the PTAB regulations proscribe general
`
`document requirements (see 37 C.F.R. § 42.6 (addressing format)), and the content
`
`of the petition, along with an ability to correct mistakes in the petition (37 C.F.R. §
`
`42.104). There is no requirement to state “patent owner”; the Board’s notice of a
`
`filing date typically dictates the format of the cover page.
`
`PO avoids the substantive content of the Petition when attacking service, and
`
`mischaracterizes the facts. First, the PO focuses on a typographical error on the
`
`cover page of the Petition identifying PO’s former name, Select Comfort, avoiding
`
`the substantive content of the Petition correctly identifying the PO to argue they
`
`are not on “notice” of the challenge to the ‘154 Patent. PR at 7-11. PO has failed to
`
`cite any controlling authority in support of their position that the form of a cover
`
`page dictates propriety of service.
`
`Second, and critically, PO mischaracterizes a change of name filing with the
`
`secretary of state and PTO as an assignment of ownership. PR at 9-10 (“While
`
`Select Comfort was previously the owner of the ‘154 Patent, it assigned ownership
`
`to Sleep Number in 2017.” (emphasis added); and Ex. 2007, ¶ 5 (Toft Decl.).
`
`7
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`WA 12980913.2
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`However, the PTO assignment documentation clearly indicate that the conveyance
`
`from Select Comfort to PO was only a “CHANGE OF NAME.” Ex. 2009; and
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`Elliott Decl., ¶ 7, Ex. 1024.
`
`Because the substantive content of the Petition identifies Sleep Number
`
`Corporation as the owner of the ‘154 Patent, and the Petition was served upon both
`
`PO’s patent infringement litigation counsel and PO’s correspondent of record with
`
`the PTO, service of the Petition should be held effective and proper under 35
`
`U.S.C. § 312(a)(5).1
`
`C.
`
`Sleep Number is On Notice Its Patent is Subject to an IPR and
`Cannot Show Any Prejudice.
`The purpose of serving the Petition “is to give adequate notice to the patent
`
`owner of the basis for relief by laying out the petitioner’s grounds and supporting
`
`evidence.” TD Bank, N.A. v. Global Session Holdings SRL, IPR2014-01350, Paper
`
`1 But, if the Board perceives any issue with the cover page or caption, the Board
`
`could amend the cover page or caption under its authority. Alternatively,
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`Petitioner requests authorization to file a motion to amend affected cover pages
`
`and captions pursuant to 37 C.F.R. § 42.104(c) (permitting a motion to correct a
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`clerical or typographical mistake in the petition without changing the filing date of
`
`the petition).
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`11 at 2 (PTAB Dec. 22, 2014) (citing the Office Patent Trial Practice Guide, 77
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`Fed. Reg. 48756, 48763 (Aug. 14, 2012)). Petitioner has provided PO notice.
`
`PO and its litigation counsel of record in the C.D. Cal. litigation were
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`actually served and in receipt of the Petition before the 1-year statutory bar date.
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`See Ex. 1020 (attaching FedEx receipts). Further, PO had actually received service
`
`of the Petition and as it reviewed the Petition, retained counsel, and that counsel
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`began corresponding with counsel for Petitioner—all within mere days of service.
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`Ex. 1025 (counsel email). And, shortly thereafter, Petitioner and PO jointly
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`submitted a motion to stay the civil action in view of the IPRs. Ex. 1026.
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`On the other hand, PO makes no evidentiary showing of actual prejudice.
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`See PR, § I.A.iii (no citation to any evidentiary exhibit). Attorney argument alone
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`is insufficient to show actual prejudice, especially when PO was in actual receipt
`
`of the Petition.
`
`D.
`
`Alternatively, If There Is Any Perceived Defect, the Board Could
`Cure on Its Own Initiative or Grant Petitioner Authorization to
`File a Motion to Seek Cure.
`As discussed supra, if the Board perceives any defect here, the Board could
`
`on its own initiative waive or suspend a formal requirement and/or amend the
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`cover page and caption. Alternatively, Petitioner requests authorization to file a
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`motion seeking to amend the cover page and caption pursuant to 37 C.F.R. §
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`9
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`WA 12980913.2
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`42.104(c) and/or waive or suspend strict compliance with service of the PTO-listed
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`address requirement pursuant to 37 C.F.R. § 42.5(b).
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`V.
`
`CONCLUSION
`For the foregoing reasons, the Board should maintain the filing date.
`
`10
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`WA 12980913.2
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`
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`Date: May 9, 2019
`
`Respectfully Submitted,
`SPENCER FANE LLP
`
`By /s/Kyle L. Elliott
`Kyle L. Elliott, Reg. No. 39,485
`Kevin S. Tuttle, Reg. No. 52,307
`Spencer Fane LLP
`1000 Walnut Street, Suite 1400
`Kansas City, Missouri 64106-2140
`Telephone: (816) 474-8100
`
`Jaspal S. Hare, Reg. No. 66,988
`jhare@spencerfane.com
`Spencer Fane LLP
`5700 Granite Pkwy, Suite 650
`Plano, TX 75024
`
`11
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`WA 12980913.2
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies that a copy
`
`of the foregoing PETITIONER’S REPLY TO PATENT OWNER’S REQUEST
`
`TO RESCIND THE FILING DATE OF THE PETITION AND DENY
`
`INSTUTION OF THE PETTION FOR FAILURE TO TIMELY SERVE THE
`
`PETITION UPON PATENT OWNER and its cited exhibits not currently of record
`
`were served in its entirety on May 9, 2019, by electronic mail, as authorized by
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`Patent Owner’s Mandatory Notices, directed to the attorneys of record for Patent
`
`Owner at the following correspondence address of record:
`
`Steven A. Moore
`Steve.moore@pillsburylaw.com
`PILLSBURY WINTHORP SHAW PITTMAN LLP
`501 West Broadway, Suite 1100
`San Diego, CA 92101
`Luke Toft
`LToft@foxrothschild.com
`FOX ROTHSCHILD LLP
`Campbell Mithun Tower, Suite 2000
`222 South Ninth Street
`Minneapolis, MN 55402
`Kecia J. Reynolds
`kecia.reynolds@pillsburylaw.com
`PILLSBURY WINTHORP SHAW PITTMAN LLP
`1200 Seventeenth Street, NW
`Washington, DC 20036
`
`12
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`WA 12980913.2
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`Date: May 9, 2019
`
` /s/Kyle L. Elliot
`Kyle L. Elliott (Reg. No. 39,485)
`
`Attorney for Petitioner
`American National Manufacturing, Inc.
`
`13
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`WA 12980913.2
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