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 B2
`____________
`
`
`
`
`
`
`DECLARATION OF LUKAS D. TOFT
`IN SUPPORT OF PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`
`Sleep Number Corp.
`EXHIBIT 2040
`IPR2019-00500
`Page 1
`
`
`
`____________
`
`
`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 B2
`____________
`
`
`
`
`
`
`DECLARATION OF LUKAS D. TOFT
`IN SUPPORT OF PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`
`Sleep Number Corp.
`EXHIBIT 2040
`IPR2019-00500
`Page 1
`
`
`
`Case No. IPR2019-00500
`Patent No. 9,737,154 B2
`
`
`I, Lukas D. Toft, declare as follows:
`
`1.
`
`I am an attorney at the law firm Fox Rothschild LLP, and I am one of
`
`the attorneys representing Sleep Number Corporation f/k/a Select Comfort
`
`Corporation (herein “Sleep Number”) in the above matter initiated by American
`
`National Manufacturing, Inc. (“ANM”). I submit this Declaration in support of
`
`Patent Owner’s Response. All statements made herein are of my own personal
`
`knowledge to the best of my recollection and, if called to testify, could and would
`
`do so.
`
`2.
`
`I am a member of the team representing Patent Owner in the following
`
`IPR proceedings: IPR2019-00497 (U.S. Pat. No. 8,769,747), IPR2019-00500 (U.S.
`
`Pat. No. 9,737,154), and IPR2019-00514 (U.S. Pat. No. 5,904,172). I am also a
`
`member of the team representing Patent Owner in the following related district court
`
`cases (“District Court Case”): Sleep Number Corporation v. American National
`
`Manufacturing Inc., 5:18-cv-00357(AB)(SPx) (C.D. Cal. 2018) and Sleep Number
`
`Corporation v. Sizewise Rentals, LLC, 5:18-cv-00356(AB)(SPx) (C.D. Cal. 2018).
`
`3.
`
`Exhibit 2041 is a true and correct copy of the transcript of the deposition
`
`of Dr. Joshua Phinney, taken September 24, 2019 in IPR proceedings IPR2019-
`
`00497 and IPR2019-00500.
`
`1
`
`Sleep Number Corp.
`EXHIBIT 2040
`IPR2019-00500
`Page 2
`
`
`
`Case No. IPR2019-00500
`Patent No. 9,737,154 B2
`
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`4.
`
`Exhibit 2042 is a true and correct copy of the transcript of the deposition
`
`of Dr. Joshua Phinney, taken September 25, 2019 in IPR proceedings IPR2019-
`
`00497 and IPR2019-00500.
`
`5.
`
`Exhibit 2043 is a true and correct copy of the District Court Order (In
`
`Chambers) Granting Plaintiff’s Ex Parte Application to Modify Protective Order But
`
`Ordering Redactions to Private Source Code Information dated September 26, 2019
`
`and filed in both District Court Case proceedings (“District Court Order”).
`
`6.
`
`Exhibit 2044 is a true and correct copy of a document served by Patent
`
`Owner on ANM in the District Court Case titled “Plaintiff’s Amended Disclosure of
`
`Asserted Claims and Infringement Contentions,” dated January 25, 2019.
`
`7.
`
`Exhibit 2045 is a true and correct copy of a document served by Patent
`
`Owner on Sizewise in the District Court Case titled “Plaintiff’s Amended Disclosure
`
`of Asserted Claims and Infringement Contentions,” dated January 25, 2019.
`
`8.
`
`Exhibit 2046 is a true and correct copy of a document served by Patent
`
`Owner in the District Court Case entitled “U.S. Patent No. 5,904,172 versus
`
`American National Manufacturing Accused Products.” It has been redacted
`
`pursuant to the District Court Order filed as Exhibit 2043; a non-redacted copy is
`
`not being provided at this time.
`
`9.
`
`Exhibit 2047 is a true and correct copy of a document served by Patent
`
`Owner in the District Court Case entitled “U.S. Patent No. 5,904,172 versus
`
`2
`
`Sleep Number Corp.
`EXHIBIT 2040
`IPR2019-00500
`Page 3
`
`
`
`Case No. IPR2019-00500
`Patent No. 9,737,154 B2
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`Sizewise Rentals, LLC Accused Products.” It has been redacted pursuant to the
`
`District Court Order filed as Exhibit 2043; a non-redacted copy is not being provided
`
`at this time.
`
`10. Exhibit 2048 is a true and correct copy of a document served by Patent
`
`Owner in the District Court Case entitled “U.S. Patent No. 9,737,154 versus
`
`American National Manufacturing Accused Products.” It has been redacted
`
`pursuant to the District Court Order filed as Exhibit 2043; a non-redacted copy is
`
`not being provided at this time.
`
`11. Exhibit 2049 is a true and correct copy of a document served by Patent
`
`Owner in the District Court Case entitled “U.S. Patent No. 8,769,747 versus
`
`American National Manufacturing Accused Products.” It has been redacted
`
`pursuant to the District Court Order filed as Exhibit 2043; a non-redacted copy is
`
`not being provided at this time.
`
`12. Exhibit 2050 is a true and correct copy of a document produced by
`
`ANM in the District Court Case, which is an email thread dated October 17, 2016
`
`and bates labeled as ANMI00178030-ANMI001780435. It is designated by
`
`Petitioner as Highly Confidential – Outside Counsel Only and, pursuant to a meet
`
`and confer conference between the parties, is filed under seal. An Unopposed
`
`Motion to Seal is being filed currently herewith.
`
`3
`
`Sleep Number Corp.
`EXHIBIT 2040
`IPR2019-00500
`Page 4
`
`
`
`Case No. IPR2019-00500
`Patent No. 9,737,154 B2
`
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`13. Exhibit 2051 is a true and correct copy of a document produced by
`
`ANM in the District Court case, which is an email thread dated October 17, 2016
`
`and bates labeled as ANMI00178036-ANMI00178041. It is designated by
`
`Petitioner as Highly Confidential – Outside Counsel Only and, pursuant to a meet
`
`and confer conference between the parties, is filed under seal. An Unopposed
`
`Motion to Seal is being filed currently herewith.
`
`14. Exhibit 2052 is a true and correct copy of a document produced by
`
`ANM in the District Court case, which is a PDF named “ANM-Pump History.pdf”
`
`and bates labeled as ANMI00133414-ANMI00133422. It is designated by
`
`Petitioner as Confidential, but pursuant to a meet and confer conference between the
`
`parties, it is filed publically for use in this IPR proceeding.
`
`15. Exhibit 2053 is a true and correct copy of a print out of a document
`
`produced natively by ANM in the District Court Case, which is a spreadsheet titled
`
`Longman_Spec_01.xlsx and bates labeled as ANMI00268037. It is designated by
`
`Petitioner as Highly Confidential – Outside Counsel Only and, pursuant to a meet
`
`and confer conference between the parties, is filed under seal. An Unopposed
`
`Motion to Seal is being filed currently herewith.
`
`16. Exhibit 2054 is a true and correct copy of a document produced by
`
`ANM in the District Court case, which is an email thread dated March 23, 2016 and
`
`bates labeled as ANMI00178191. It is designated by Petitioner as Highly
`
`4
`
`Sleep Number Corp.
`EXHIBIT 2040
`IPR2019-00500
`Page 5
`
`
`
`Case No. IPR2019-00500
`Patent No. 9,737,154 B2
`
`Confidential – Outside Counsel Only and, pursuant to a meet and confer conference
`
`between the parties, is filed under seal. An Unopposed Motion to Seal is being filed
`
`currently herewith.
`
`17. Exhibit 2055 is a true and correct copy of a document produced by
`
`ANM in the District Court case, which is an email thread dated March 23, 2016 and
`
`bates labeled as ANMI00260633. It is designated by Petitioner as Highly
`
`Confidential – Outside Counsel Only and, pursuant to a meet and confer conference
`
`between the parties, is filed under seal with a redacted version filed publically. An
`
`Unopposed Motion to Seal is being filed currently herewith.
`
`18. Exhibit 2056 is a true and correct copy of a document produced by
`
`ANM in the District Court case, which is an email thread dated March 23, 2016 and
`
`bates labeled as ANMI00260628-ANMI00260629. It is designated by Petitioner as
`
`Highly Confidential – Outside Counsel Only and, pursuant to a meet and confer
`
`conference between the parties, is filed under seal with a redacted version filed
`
`publically. An Unopposed Motion to Seal is being filed currently herewith.
`
`19. Exhibit 2057 is a true and correct copy of the “Raw Data” tab of a
`
`document produced by ANM in this IPR proceeding titled “IPR 8,” which has been
`
`sorted by Month (Column B) lowest-highest. It is designated by Petitioner as Highly
`
`Confidential – Outside Counsel Only and, pursuant to a meet and confer conference
`
`5
`
`Sleep Number Corp.
`EXHIBIT 2040
`IPR2019-00500
`Page 6
`
`
`
`Case No. IPR2019-00500
`Patent No. 9,737,154 B2
`
`between the parties, is filed under seal. An Unopposed Motion to Seal is being filed
`
`currently herewith.
`
`20. Exhibit 2058 is a true and correct copy of a document produced by
`
`Sleep Number in the District Court Case, which is a Sleep Number pump history
`
`document bates labeled as SN_0021013–SN_0021033. Pursuant to a meet and
`
`confer conference between the parties, it is being filed publicly for use in this IPR
`
`proceeding.
`
`21. Exhibit 2059 is a true and correct copy of a document, which is Sleep
`
`Number technical drawings titled ASSY, SOLENOID HOUSING, PFCS03, DUAL
`
`and last revised May 7, 2007, which I understand contains a drawing for Sleep
`
`Number’s 5000 air controller sold in that timeframe.
`
`22. Exhibit 2060 is a true and correct copy of a document, which is Sleep
`
`Number technical drawings titled HOUSING, VALVE BOX, SINGLE, COROLLA
`
`and dated September 8, 2008, which I understand contains a drawing for Sleep
`
`Number’s Corolla air controller sold in that timeframe.
`
`23. Exhibit 2061 is a true and correct copy of a document, which is Sleep
`
`Number technical drawings titled COVER, VALVE BOX, COROLLA and dated
`
`September 24, 2013, which I understand contains a drawing for Sleep Number’s
`
`Corolla air controller sold in that timeframe.
`
`6
`
`Sleep Number Corp.
`EXHIBIT 2040
`IPR2019-00500
`Page 7
`
`
`
`Case No. IPR2019-00500
`Patent No. 9,737,154 B2
`
`
`24. Exhibit 2062 is a true and correct copy of a document, which is Sleep
`
`Number technical drawings titled ASSY, SOLENOID HOUSING, DUAL, SIQ and
`
`dated December 9, 2013, which I understand is a drawing for Sleep Number’s
`
`SleepIQ air controller, which has a drawing that is the same as one for Sleep
`
`Number’s ADAT air controller that Dr. John Abraham informed me he relied on in
`
`the ITC proceeding.
`
`25. Exhibit 2063 is a true and correct copy of an article from the website
`
`TruckingInfo.com, titled “The Magic Number,” by Jim Park. It is dated August 6,
`
`2013 and was printed October 22, 2019.
`
` It
`
`is available online at
`
`https://www.truckinginfo.com/153054/the-magic-number.
`
`26. Exhibit 2064 is a true and correct copy of an article from the website
`
`fleetequipmentmag.com, titled “Understanding truck tires and air pressure,” by Al
`
`Cohn. It is dated September 8, 2011 and was printed October 22, 2019. It is
`
`available online at https://www.fleetequipmentmag.com/understanding-truck-tires-
`
`and-air-pressure/.
`
`27. Exhibit 2069 is a true and correct copy of a page from the website
`
`instantcomfort.com, titled “Why We’re Better.” It was printed October 23, 2019
`
`and is available online at https://www.instantcomfort.com/why-we-are-better/.
`
`28. Exhibit 2070 is a true and correct copy of a dictionary definition of “set
`
`point” from the McGraw-Hill Dictionary of Scientific and Technical Terms, Sixth
`
`7
`
`Sleep Number Corp.
`EXHIBIT 2040
`IPR2019-00500
`Page 8
`
`
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`Case No. IPR2019-00500
`Patent No. 9,737,154 B2
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`Edition, which was published in 2002, and a copy of which is maintained in my
`
`firm’s library.
`
`I declare under penalty of perjury that the foregoing is true and correct.
`
`Dated: October 23, 2019
`
`
`
`
`
`s/Lukas D. Toft
`Lukas D. Toft
`Fox Rothschild LLP
`Suite 2000, Campbell Mithun Tower
`222 South Ninth Street
`Minneapolis, MN 55402-3338
`Phone: (612) 607-7000
`Fax: (612) 607-7100
`E-mail: ltoft@foxrothschild.com
`
`8
`
`Sleep Number Corp.
`EXHIBIT 2040
`IPR2019-00500
`Page 9
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`
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