Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper No. 41
`Entered: October 17, 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)
` IPR2019-00514 (Patent 5,904,172)1
`____________
`
`Before SCOTT A. DANIELS, FRANCES L. IPPOLITO2, and
`ALYSSA A. FINAMORE, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`
`ORDER
`Authorizing Motion for Additional Discovery
`37 C.F.R. § 42.51(b)(2)
`
`
`
`
`1 We issue one Order and enter it in each proceeding.
`2 Judge Ippolito was not present on the conference call; however, she joins
`the panel for this Order in granting the briefing regarding additional
`discovery.
`
`
`
`1
`
`
`Tel: 571-272-7822
`
`
`Paper No. 41
`Entered: October 17, 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)
` IPR2019-00514 (Patent 5,904,172)1
`____________
`
`Before SCOTT A. DANIELS, FRANCES L. IPPOLITO2, and
`ALYSSA A. FINAMORE, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`
`ORDER
`Authorizing Motion for Additional Discovery
`37 C.F.R. § 42.51(b)(2)
`
`
`
`
`1 We issue one Order and enter it in each proceeding.
`2 Judge Ippolito was not present on the conference call; however, she joins
`the panel for this Order in granting the briefing regarding additional
`discovery.
`
`
`
`1
`
`
`
`IPR2019-00497 (Patent 8,769,747 B2)
`IPR2019-00500 (Patent 9,737,154 B2)
`IPR2019-00514 (Patent 5,904,172)
`Patent Owner requested, by an email dated October 14, 2019, a
`conference call with the Board to discuss its request for authorization to file
`a motion for additional discovery. A conference call was conducted on
`October 16, 2019 including Judges Daniels and Finamore, as well as
`Petitioner’s counsel Elizabeth Patton and Luke Toft, and Patent Owner’s
`counsel Kyle Elliot, Kevin Tuttle, and Jaspal Hare.
`At the conclusion of the call, we authorized Patent Owner to file its
`requested motion for additional discovery.
`Patent Owner’s email requested leave to file a motion for additional
`discovery relating to use of the “accused source code” in these proceedings.
`See Paper 34 (granting Patent Owner’s Motion for Additional Discovery
`including “inter alia, ‘inflatable air beds sold with ANM’s Accused Source
`Code’”). Patent Owner’s counsel, Ms. Patton, explained during the call that
`the District Court’s prior modification of the protective order in the
`underlying district court litigation prohibits use in these IPR proceedings of
`nine versions of third-party source code allegedly used by Petitioner,
`ANM’s, accused products. Ms. Patton explained that she did not realize
`until recently that the modified protective order did not enable Patent Owner
`to use any of the nine versions of the third-party source code from the
`district court litigation necessary to show nexus of Petitioner’s products to
`the claims, and also copying, both related to Patent Owner’s objective
`evidence of non-obviousness in these IPR proceedings. Further, Ms. Patton
`argued that the source code was referenced throughout Patent Owner’s
`infringement contentions in the underlying district court litigation and thus
`Patent Owner could not submit these infringement contentions, for purposes
`
`
`
`2
`
`
`
`IPR2019-00497 (Patent 8,769,747 B2)
`IPR2019-00500 (Patent 9,737,154 B2)
`IPR2019-00514 (Patent 5,904,172)
`of showing nexus, without violating the District Court’s modified protective
`order.
`According to the parties, certain of the nine source code variations are
`used in Sizewise’s products. In our previous Order granting Patent Owner’s
`Motion for Additional Discovery we explained, based on the lack of any
`explanation or evidence from Patent Owner as to any controlling, financial,
`or corporate relationship between Sizewise and ANM, that “[w]e are not
`persuaded based on the simple fact that Sizewise is named as a real party-in-
`interest, that Sizewise is somehow subject to additional discovery in these
`IPR proceedings.” Paper 34, 12.
`Petitioner’s counsel, Mr. Elliot, argued that the accused source code
`versions used in Petitioner ANM’s products are subject to third-party
`agreements between Petitioner and the various third parties that developed
`and wrote the source code. Mr. Elliot explained that it had obtained
`permission, and the source code itself, from its third-party suppliers for use
`only in the underlying district court litigation, and under the requisite
`District Court’s protective order. Mr. Elliot indicated that to reproduce the
`accused source code information in these IPR proceedings would require
`obtaining permission from these third parties, and would take some time.
`Under the Leahy-Smith America Invents Act, discovery is available
`for the deposition of witnesses submitting affidavits or declarations and for
`“what is otherwise necessary in the interest of justice.” 35 U.S.C.
`§ 316(a)(5); see also 37 C.F.R. § 42.51(b)(2) (“The moving party must show
`that such additional discovery is in the interest of justice . . .”). That is
`significantly different from and limited compared to the scope of discovery
`generally available under the Federal Rules of Civil Procedure. Limited
`
`
`
`3
`
`
`
`IPR2019-00497 (Patent 8,769,747 B2)
`IPR2019-00500 (Patent 9,737,154 B2)
`IPR2019-00514 (Patent 5,904,172)
`discovery lowers the cost, minimizes the complexity, and shortens the period
`required for dispute resolution. Given the one-year statutory deadline for
`completion of Inter Partes Review, generally the Board will be conservative
`in granting additional discovery.
`The Board authorizes Patent Owner to file a five page motion for
`additional discovery, and for Petitioner to file a five page opposition to the
`same. The parties arguments should address the Garmin factors and explain
`how the granting of the motion will, or will not, impact the timeline of these
`IPR proceedings.3
` For the reasons given, it is
`ORDERED that Patent Owner is authorized to file a five page motion
`for additional discovery under 37 C.F.R. § 42.51(b)(2) relating to use of
`source code in these proceedings, no later than October 23, 2019;
`FURTHER ORDERED that Petitioner is authorized to file a five page
`opposition no later than October 30, 2019;
`FURTHER ORDERED that in particular Patent Owner should explain
`in its motion why with respect to objective evidence of non-obviousness for
`copying, and nexus with respect to Petitioner’s products, Patent Owner did
`not request this information in its earlier motion for additional discovery;
`
`
`3 Garmin Int’l Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001, slip op. at
`6–7 (PTAB Mar. 5, 2013) (Paper 26) (precedential). The Garmin factors
`are: (1) more than a possibility and mere allegation that something useful
`will be discovered; (2) requests that do not seek other party’s litigation
`positions and the underlying basis for those positions; (3) ability to generate
`equivalent information by other means; (4) easily understandable
`instructions; and (5) requests that are not overly burdensome to answer. Id.
`4
`
`
`
`
`
`IPR2019-00497 (Patent 8,769,747 B2)
`IPR2019-00500 (Patent 9,737,154 B2)
`IPR2019-00514 (Patent 5,904,172)
` FURTHER ORDERED that in its motion Patent Owner should
`provide an explanation of why it has submitted this discovery request at this
`late date with just seven (7) days remaining until the due date for the Patent
`Owner’s Response; and
`FURTHER ORDERED that Petitioner in its opposition to the motion
`should indicate with particularity the burden the discovery request imposes
`on Petitioner, understanding that the parties are already in possession of this
`information, subject to a protective order, in the underlying district court
`litigation.
`
`
`
`5
`
`
`
`IPR2019-00497 (Patent 8,769,747 B2)
`IPR2019-00500 (Patent 9,737,154 B2)
`IPR2019-00514 (Patent 5,904,172)
`For PETITIONER:
`
`Kyle Elliott
`Kevin Tuttle
`Jaspal Hare
`SPENCER FANE LLP
`kelliott@spencerfane.com
`ktuttle@spencerfane.com
`jhare@spencerfane.com
`
`For PATENT OWNER:
`
`Steven Moore
`Kecia Reynolds
`PILLSBURY WINTHROP SHAW PITTMAN LLP
`steve.moore@pillsburylaw.com
`kecia.reynolds@pillsburylaw.com
`
`Luke Toft
`FOX ROTHSCHILD LLP
`ltoft@foxrothschild.com
`
`
`
`
`6
`
`
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