Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 8
`Entered: May 10, 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.
`____________
`
`Cases1
`IPR2019-00497 (Patent 8,769,747)
`IPR2019-00500 (Patent 9,737,154)
`
`
`
`
`Before KEN B. BARRETT, SCOTT A. DANIELS, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`1 This Order addresses issues that are the same in both cases. Therefore, we
`exercise our discretion to issue one Decision to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`
`
`1
`
`
`Tel: 571-272-7822
`
`
`Paper 8
`Entered: May 10, 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.
`____________
`
`Cases1
`IPR2019-00497 (Patent 8,769,747)
`IPR2019-00500 (Patent 9,737,154)
`
`
`
`
`Before KEN B. BARRETT, SCOTT A. DANIELS, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`1 This Order addresses issues that are the same in both cases. Therefore, we
`exercise our discretion to issue one Decision to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`
`
`1
`
`
`
`IPR2019-00497 (Patent 8,769,747)
`IPR2019-00500 (Patent 9,737,154)
`
`
`Petitioner’s counsel requested, by an email dated May 7, 2019,
`authorization to file a second or expanded Reply to Patent Owner’s
`Preliminary Response. 2 We deny this request for the following reasons.
`First, the email is improper because it contains detailed arguments
`responding to the Patent Owner’s Preliminary Response. Substantive
`arguments are not permitted in email correspondence with the Board.
`Second, Petitioner is not entitled as a matter of right, to enter a Reply to a
`Patent Owner Preliminary Response. 35 U.S.C. § 313; 42 C.F.R.
`§ 42.108(c). Even considering just these two points, Petitioner’s email is
`troubling as it is nothing less than a Motion for a reply to Patent Owner’s
`Preliminary Response or, considering the amount of substantive arguments
`contained in the email, effectively a Reply Brief. See 37 C.F.R. § 42.20(a).
`Such a practice is concerning because, not only does the Board have to
`respond to the correspondence, but it distracts the Board from the mission to
`secure the just, speedy, and inexpensive resolution of every proceeding. 37
`C.F.R. §42.1 (b). Additionally, it is prejudicial to the other party, who has
`no formal recourse to oppose, except to compound the situation by sending
`its own email. Further, Petitioner’s correspondence circumvents our rules
`prohibiting the filing of a motion without prior authorization. See 37 C.F.R.
`§ 42.20(b).
`Moreover, “good cause” does not exist simply because Petitioner
`surmises that it needs “to correct the record as to a number of misleading
`
`
`2 We previously authorized Petitioner to file a ten page Reply “addressing
`only the issue of service and issues relating to service of process raised in
`the Patent Owner Preliminary Response.” See, e.g., IPR2019-00497,
`Paper 6, 4–5.
`
`
`
`IPR2019-00497 (Patent 8,769,747)
`IPR2019-00500 (Patent 9,737,154)
`statements of fact and arguments made by Patent Owner,” as Petitioner’s
`email states. 42 C.F.R. § 42.108(c). Whether or not the presentation of
`evidence and arguments in a brief is “misleading” is highly subjective and,
`in this case, we determine that the allegations of misleading assertions does
`not rise to the level of good cause justifying the need for a reply. It is the
`very nature of the Board and inter partes review proceedings to consider the
`arguments of both parties, weigh the evidence, determine the most
`compelling arguments, and make determinations to which the applicable law
`is applied. 35 U.S.C. § 314.
` The arguments in Petitioner’s email state simply a disagreement with
`Patent Owner’s positions taken in its Preliminary Response, which at best,
`we find unpersuasive as to a showing of good cause.
`Contrary to Petitioner’s assertion, due process in this case does not
`favor a second reply brief. As permitted by statute and our rules, both
`parties have been permitted an equal opportunity to submit their pre-
`institution briefs. 42 C.F.R. §§ 42.102, 107. To the extent that the Board
`does not institute a trial, if Petitioner is dissatisfied with the Board’s decision
`it may request rehearing and at that time has an opportunity to identify a
`matter believed to have been misapprehended or overlooked. 37 CFR
`42.71(d)(1).
`Finally, we instruct the parties that in any request for a conference call
`with the Board to resolve a dispute, the requesting party shall: (a) certify that
`it has conferred with the other party in an effort to resolve the dispute; (b)
`identify (without substantive argument) with specificity the issues for which
`agreement has not been reached; (c) identify (without substantive argument)
`the precise relief to be sought; and (d) propose two or more specific dates
`and times at which both parties are available for the conference call.
`
`
`
`IPR2019-00497 (Patent 8,769,747)
`IPR2019-00500 (Patent 9,737,154)
`
`It is
`ORDERED that Petitioner’s request for leave to file a reply is denied;
`
`
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`
`
`IPR2019-00497 (Patent 8,769,747)
`IPR2019-00500 (Patent 9,737,154)
`PETITIONER:
`
`Kyle L. Elliott
`Kevin S. Tuttle
`Jaspal S. Hare
`SPENCER FANE LLP
`kelliott@spencerfane.com
`ktuttle@spencerfane.com
`jhare@spencerfane.com
`
`
`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
`
`
`
`
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