Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper: 111
`Entered: September 24, 2020
`
`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.
`
`IPR2019-00500
`Patent 9,737,154 B2
`
`
`
`
`Before SCOTT A. DANIELS, FRANCES L. IPPOLITO, and
`ALYSSA A. FINAMORE, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Petitioner’s Request for
`Rehearing of Final Written Decision
`37 C.F.R. §§ 42.71(d)
`
`
`Tel: 571-272-7822
`
`Paper: 111
`Entered: September 24, 2020
`
`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.
`
`IPR2019-00500
`Patent 9,737,154 B2
`
`
`
`
`Before SCOTT A. DANIELS, FRANCES L. IPPOLITO, and
`ALYSSA A. FINAMORE, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Petitioner’s Request for
`Rehearing of Final Written Decision
`37 C.F.R. §§ 42.71(d)
`
`
`
`IPR2019-00500
`Patent 9,737,154 B2
`
`INTRODUCTION
`I.
`ANM filed a Request for Rehearing (Paper 109, “Request” or “Req.”)
`of our Final Written Decision (Paper 105, “Final Written Decision” or
`“Dec.”) in which we determined that claims 1–4, 7–14, 16–22 of U.S. Patent
`No. 9,737,154 B2 (Ex. 1001, “the ’154 patent”) are unpatentable. In our
`Final Written Decision we also granted Sleep Number’s Revised Motion to
`Amend as to proposed substitute claims 23–25, 30–31, 38–41. Dec. 105–
`126. Sleep Number did not file an opposition to ANM’s Request for
`Rehearing. For the reasons that follow, ANM’s Request for Rehearing is
`denied.
`
`THE REQUEST FOR REHEARING
`II.
`In pertinent part, 37 C.F.R. § 42.71(d) states:
`The burden of showing a decision should be modified lies with
`the party challenging the decision. The request must
`specifically identify all matters the party believes the Board
`misapprehended or overlooked, and the place where each
`matter was previously addressed in a motion, an opposition, or
`a reply.
`Thus, a request for rehearing is not an opportunity merely to disagree with
`the Board’s assessment of the arguments or weighing of the evidence, or to
`present new arguments or evidence. Moreover, “[w]hen rehearing a
`decision on petition, a panel will review the decision for an abuse of
`discretion.” 37 C.F.R. § 42.71(c).
`ANM requests rehearing to address one aspect of our Final Written
`Decision found in our discussion of secondary considerations. Req. 1 (citing
`Dec. 92). ANM specifically requests that we strike the following passage
`from page 92 of our Final Written Decision:
`ANM does not refute the testimonies of Dr. Abraham and Dr.
`Edwards that these versions of the source code fall within the
`
`2
`
`
`
`IPR2019-00500
`Patent 9,737,154 B2
`claims of ’154 patent such that ANM’s products using these
`versions infringe the claims (Ex. 2027 ¶ 29; Ex. 2029 ¶ 41).
`Id. at 1. ANM argues that this passage is a statement regarding patent
`infringement that is outside the Board’s statutory authority. Id. ANM
`contends that it is not accurate to imply that ANM failed to refute Dr.
`Abraham and Dr. Edwards testimony. Id. According to ANM “there is no
`evidentiary basis to state that Dr. Abraham or Dr. Edward communicated
`any opinion about infringement in their written testimony, as both expressly
`disclaimed any opinions about infringement, stating that they were only
`speaking to copying and nexus.” Id. at 1–2.
`III. DISCUSSION
`Our review of each Declarant’s individual testimony as it relates to
`copying and nexus is consistent with ANM’s position that neither Dr.
`Abraham nor Dr. Edwards states an opinion as to infringement. Dr.
`Edwards’s testimony explains his analysis of several versions of ANM’s
`source code and comparison with the claims of the ’154 patent, concluding
`that “at least Version 1.8, Version 1.97, and Version 2.0 of ANM’s source
`code read on the software-related limitations of claims 1–19 of the ‘154
`Patent and claims 1–18 of the ‘747 Patent.” Ex. 2029 ¶ 41. Dr. Abraham
`performed a physical review of various ANM air controllers, and determined
`“that ANM’s products sold with Gen 3 Arco and Gen 3 Koge air controllers
`read on the claimed mechanical related elements of (i.e. structural
`components of) the ‘154 and ‘747 Patents.” Ex. 2027 ¶ 29. Thus, Dr.
`Abraham and Dr. Edwards testimony is more accurately that ANM’s
`software and air controllers “read on” on the claims of the ’154 patent.
`We do not agree, however, with ANM’s argument that general
`objections and ANM’s Motion to Exclude (Pet. Mot. Exclude 1) the entirety
`
`3
`
`
`
`IPR2019-00500
`Patent 9,737,154 B2
`of Dr. Abraham and Dr. Edwards testimony under Federal Rule of Evidence
`702 and 37 C.F.R. § 42.65(a) are sufficient to disprove specific testimony
`and analyses with respect to nexus as it pertains to secondary considerations.
`Req. 1. Here, Petitioner has used its Request as an opportunity to argue
`positions which disagree with our Final Written Decision. Merely
`disagreeing with our analysis does not serve as a proper basis for a request
`for rehearing. Also, we do not make any finding or conclusion as to a
`comparison of the products and claims, only noting that ANM did not
`specifically address or refute the testimony that the air controllers and
`software read on the claims. For example, in its Motion to Exclude, ANM
`did not address the opinions and testimony in either of the paragraphs relied
`upon in this passage in our Final Written Decision. Pet. Mot. Exclude 1–6.
`Indeed, as we explained in our Final Written Decision discussing ANM’s
`effort to exclude the entirety of Dr. Abraham and Dr. Edwards testimony,
`“ANM does not support this broad, undeveloped, exclusion effort further,
`and, to the extent that ANM seeks to exclude each Declaration in its entirety
`rather than the enumerated paragraphs later referenced by ANM, we decline
`to do so.” Dec. 136.
`Although we are not persuaded to strike this passage in its entirety, we
`are persuaded to amend page 92 of our Final Written Decision to comport
`with the Declarants’ testimony. Therefore, as shown by the strikeout
`indicating the subject matter removed and underlining indicating the added
`subject matter below, the objected to passage in our Final Written Decision
`will be amended as follows:
`ANM does not refute the testimonies of Dr. Abraham and Dr.
`Edwards that these versions of the source code fall within the
`claims of ’154 patent such that ANM’s products using these
`
`4
`
`
`
`IPR2019-00500
`Patent 9,737,154 B2
`versions infringe read on the claims (Ex. 2027 ¶ 29; Ex. 2029
`¶ 41)
`
`IV. CONCLUSION
`We have reviewed and considered the arguments in ANM’s Request
`and conclude that ANM has not carried its burden of demonstrating that the
`Board abused its discretion or misapprehended or overlooked any matters in
`rendering the Final Written Decision such that the objected to passage
`should be struck from the Final Written Decision. 37 C.F.R. § 42.71(d).
`Rather, ANM has persuaded us that Sleep Number’s Declarants did not
`testify specifically as to infringement in their respective testimony regarding
`objective indicia of non-obviousness, and although we deny the Request, we
`amend our Final Written Decision to comport with the testimony of Sleep
`Number’s Declarants.
`Outcome of Decision on Rehearing: Denied—We omit a table in this case
`because the Request did not include a challenge or arguments with respect to
`any claim or ground implicated in our Final Written Decision.
`
`Final Outcome of Final Written Decision after Rehearing:
`
`
`35
`U.S.C.
`§
`103(a) Gifft, Mittal,
`Pillsbury
`103(a) Gifft, Mittal,
`Pillsbury and Ebel
`
`
`Claims
`
`1–4, 7–14,
`16–22
`5, 6, 15
`
`Overall
`Outcome
`
`
`
`
`
`
`
`
`Claims
`Shown
`Unpatentable
`1–4, 7–14,
`16–22
`
`
`1–4, 7–14,
`16–22
`
`Claims
`Not shown
`Unpatentable
`
`
`5, 6, 15
`
`5, 6, 15
`
`References
`
`5
`
`
`
`IPR2019-00500
`Patent 9,737,154 B2
`Motion to Amend Outcome
`Original Claims Canceled by Amendment
`Substitute Claims Proposed in the Amendment
`Substitute Claims: Motion to Amend Granted
`Substitute Claims: Motion to Amend Denied
`Substitute Claims: Not Reached
`
`
`
`
`
`V. ORDER
`
`Claims
`1–4, 7–14, and 16–22
`23–41
`23–25, 30–31, 38–41
`27, 28, 32–37
`26, 29
`
`Accordingly, it is
`ORDERED that, page 92, second paragraph, second sentence, of our
`Final Written Decision is amended to read as indicated above in this
`Decision; and
`FURTHER ORDERED that Petitioner’s Request for Rehearing is
`denied.
`
`
`
`
`6
`
`
`
`IPR2019-00500
`Patent 9,737,154 B2
`
`For PETITIONER:
`
`Kyle Elliott
`Kevin Tuttle
`Jaspal Hare
`SPENCER FANE LLP
`kelliott@spencerfane.com
`ktuttle@spencerfane.com
`jaspal428@gmail.com
`
`For PATENT OWNER:
`
`Kecia Reynolds
`PILLSBURY WINTHROP SHAW PITTMAN LLP
`kecia.reynolds@pillsburylaw.com
`
`Steven Moore
`ZHONG LUN
`stevemoore@zhonglu.com
`
`Luke Toft
`FOX ROTHSCHILD LLP
`ltoft@foxrothschild.com
`
`
`7
`
`
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