Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper No. 14
`Entered: September 11, 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.
`____________
`
`IPR2019-00497 (Patent 8,769,747 B2)
`IPR2019-00500 (Patent 9,737,154 B2)1
`____________
`
`Before SCOTT A. DANIELS, FRANCES L. IPPOLITO, and
`ALYSSA A. FINAMORE, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`1 We issue one Order and enter it in each proceeding.
`
`
`571-272-7822
`
`
`
`
`
`
`Paper No. 14
`Entered: September 11, 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.
`____________
`
`IPR2019-00497 (Patent 8,769,747 B2)
`IPR2019-00500 (Patent 9,737,154 B2)1
`____________
`
`Before SCOTT A. DANIELS, FRANCES L. IPPOLITO, and
`ALYSSA A. FINAMORE, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`1 We issue one Order and enter it in each proceeding.
`
`
`
`IPR2019-00497 (Patent 8,769,747 B2)
`IPR2019-00500 (Patent 9,737,154 B2)
`
`
`By emails of August 16, and August 20, 2019, the parties requested a
`conference call with the Board to discuss Sleep Number’s request for
`authorization to file motions for additional discovery and to extend the word
`count for the Patent Owner Response and ANM’s opposition to the same in
`each of the above-captioned cases. The Board scheduled a conference call
`with the parties for September 5, 2019, and instructed Sleep Number to
`forward, via email to the Board and ANM, the draft discovery requests prior
`to the conference call. Sleep Number emailed its proposed discovery
`requests to the Board and ANM on September 3, 2019. Ex. 3002. Also,
`ANM retained a court reporter, and was instructed by the Board during the
`call to file the transcript as an exhibit when completed.
`Sleep Number indicated that its proposed motion would request
`discovery regarding ANM’s sales and financial information regarding
`various products, including for example, ANM’s “Instant Comfort” brand
`inflatable air bed systems, that Sleep Number alleges in the related district
`court proceeding, infringes its patents.2 Sleep Number argued that obtaining
`ANM’s financial and sales information, including ANM’s profits on its
`allegedly infringing products, was important for Sleep Number to adequately
`evaluate commercial success in these IPR proceedings. Sleep Number
`argued, specifically, that ANM’s financial data, for example profits, were
`important to show the success of the allegedly infringing products relative to
`other of ANM’s non-infringing products. Sleep Number explained that they
`
`
`2 Sleep Number has filed case No. 5:18-cv-0356-AB (SPx), and case No.
`5:18-cv-0357-AB (SPx) against ANM in the United States District Court for
`the Central District of California. These district court cases are currently
`stayed.
`
`
`
`2
`
`
`
`IPR2019-00497 (Patent 8,769,747)
`IPR2019-00500 (Patent 9,737,154)
`
`have obtained certain ANM sales data in the district court litigation, but
`cannot use that information in these IPR proceedings due to the protective
`order in the district court.
`ANM opposed the motion, arguing that obtaining the financial data
`would be extremely burdensome and that financial data such as profit was
`no more relevant to commercial success than sales of allegedly infringing
`products relative to sales of non-infringing products.
`The Board explained that Sleep Number’s proposed discovery
`requests appeared overly broad, particularly, the demands for highly specific
`financial data, especially profits, and urged Sleep Number to consider
`narrowing its discovery requests. The Board instructed that where Sleep
`Number was already in possession of certain sales information in the district
`court litigation, it should request a modification of the protective order from
`the district court in order to use that information in these proceedings.
`Despite the Board’s concern as to the breadth of Sleep Number’s
`discovery requests, we noted that it is reasonable to permit Sleep Number a
`chance to persuade us that the proposed additional discovery is necessary to
`develop arguments and evidence with respect to objective indicia of
`non-obviousness. Accordingly, we authorized Sleep Number to file a
`motion for additional discovery, limited to ten pages, no later than
`September 12, 2019. We authorized ANM to file a ten page opposition no
`later than September 19, 2019. No reply or sur-reply was authorized. We
`will address the parties’ requests to extend word counts and for a protective
`order in the event the motion for additional discovery is granted.
` For the reasons given, it is
`
`3
`
`
`
`IPR2019-00497 (Patent 8,769,747)
`IPR2019-00500 (Patent 9,737,154)
`
`
`ORDERED that Sleep Number is authorized to file a motion for
`additional discovery, not to exceed ten (10) pages and no later than
`September 12, 2019; and
`FURTHER ORDERED that ANM is authorized to file an opposition
`to the motion for additional discovery, not to exceed ten (10) pages and no
`later than September 19, 2019.
`
`4
`
`
`
`IPR2019-00497 (Patent 8,769,747)
`IPR2019-00500 (Patent 9,737,154)
`
`For PETITIONER:
`
`Kyle L. Elliott
`Kevin S. Tuttle
`Jaspal S. Hare
`SPENCER FANE LLP
`kelliott@spencerfane.com
`ktuttle@spencerfane.com
`jhare@spencerfane.com
`
`For PATENT OWNER:
`
`Steven A. Moore
`Kecia J. Reynolds
`PILLSBURY WINTHORP SHAW PITTMAN LLP
`steve.moore@pillsburylaw.com
`kecia.reynolds@pillsburylaw.com
`
`Luke Toft
`FOX ROTHSCHILD LLP
`ltoft@foxrothschild.com
`
`5
`
`
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