`
`
`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 ELIZABETH A. PATTON
`IN SUPPORT OF PATENT OWNER’S MOTION
`FOR ADDITIONAL DISCOVERY
`
`
`Sleep Number Corp.
`EXHIBIT 2071
`IPR2019-00500
`Page 1
`
`
`
`Case No. IPR2019-00500
`Patent No. 9,737,154 B2
`
`
`I, Elizabeth A. Patton, declare as follows:
`
`1.
`
`I am a partner 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”).
`
`2.
`
`I have first-hand knowledge of the information stated in this
`
`Declaration, which I submit in support of Patent Owner’s Motion for Additional
`
`Discovery.
`
`3.
`
`I am a senior 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)
`
`(“IPR proceedings”). I am also a senior 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).
`
`4.
`
`During the District Court Case, ANM made various versions of source
`
`code (“Source Code”) available for inspection voluntarily and without a motion to
`
`compel. That inspection occurred at ANM’s counsel’s offices under strict
`
`procedures set forth in the District Court Protective Order (“DCPO”). For example,
`
`1
`
`Sleep Number Corp.
`EXHIBIT 2071
`IPR2019-00500
`Page 2
`
`
`
`Case No. IPR2019-00500
`Patent No. 9,737,154 B2
`
`Sleep Number’s counsel and expert witnesses were required to travel to counsel’s
`
`office in another state to review the code under opposing counsel’s supervision,
`
`could only inspect the code on a specific non-internet accessible computer, and could
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`only print a limited number of pages of code onto bates-numbered pages.
`
`5.
`
`Following inspection, Sleep Number drafted and served Infringement
`
`Contentions that refer to nine versions of ANM and Sizewise’s Source Code,
`
`including ANM’s versions 1.8, 1.9. 1.92. 1.97, and 2.0 source code and Sizewise’s
`
`Platinum and Medisphere source code. The references to Source Code in Sleep
`
`Number’s Infringement Contentions consist of line numbers, variables, and
`
`functions, and the Infringement Contentions explain how the Source Code satisfies
`
`certain claim limitations of the patents at issue in the District Court Case and these
`
`IPR proceedings.
`
`6.
`
`On September 5, 2019, the parties attended a telephone conference with
`
`the Board related to Sleep Number’s first request to file a motion for additional
`
`discovery in these IPR proceedings. During that call, the Board provided guidance
`
`that Sleep Number should follow the “fairly straightforward” procedure of
`
`requesting modification of the DCPO in order to produce relevant District Court
`
`Case documents in these IPR proceedings. Sleep Number decided to follow that
`
`guidance in requesting from the District Court use of all District Court Case
`
`documents (including Source Code) in these IPR proceedings.
`
`2
`
`Sleep Number Corp.
`EXHIBIT 2071
`IPR2019-00500
`Page 3
`
`
`
`Case No. IPR2019-00500
`Patent No. 9,737,154 B2
`
`
`7.
`
`Via email from September 5–11, 2019, Sleep Number’s counsel met
`
`and conferred with ANM’s counsel in advance of filing an ex parte application to
`
`modify the DCPO. Additionally, on September 9, 2019, myself and co-counsel,
`
`Lukas Toft, met and conferred on the phone with ANM’s counsel, Jaspal Hare and
`
`Kevin Tuttle. During that phone call, ANM’s counsel stated that they would not
`
`agree to a “wholesale” modification of the DCPO to allow all documents in the
`
`District Court Case to be used in these IPR Proceedings, but that they would be
`
`willing to consider a specific list of documents. In response, Sleep Number’s counsel
`
`provided ANM’s counsel with such an initial list of documents referenced in ANM’s
`
`interrogatory answers. Sleep Number’s counsel also later asked to use Sleep
`
`Number’s Infringement Contentions from the District Court Case. ANM’s counsel
`
`refused to allow use of any of the foregoing documents or stipulate to any
`
`modification of the protective order.
`
`8.
`
`As a result, Sleep Number filed an ex parte application to modify the
`
`DCPO to allow use of all District Court Case documents (including Source Code) in
`
`these IPR proceedings. ANM opposed that application. One of the reasons ANM
`
`opposed the application was because of third-party Source Code. Specifically, ANM
`
`referenced a single third party and asserted that Sleep Number’s motion could not
`
`be granted because it had not “Given Third-Party Medisphere Notice and Right to
`
`3
`
`Sleep Number Corp.
`EXHIBIT 2071
`IPR2019-00500
`Page 4
`
`
`
`Case No. IPR2019-00500
`Patent No. 9,737,154 B2
`
`be Heard in this Proceeding.” Exhibits 2072 is a true and correct copy of ANM’s
`
`opposition to Sleep Number’s ex parte application.
`
`9.
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`On September 26, 2019, the District Court issued a ruling modifying
`
`the DCPO to allow use of District Court documents in this IPR proceeding, but held
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`that Sleep Number must redact third-party source code from the documents it uses
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`in this IPR proceeding. Exhibit 2043 is a true and correct copy of the District Court’s
`
`September 26, 2019 order.
`
`10. Thus, the District Court held that Sleep Number could not use third-
`
`party source code or provide it to the Board. At the time, Sleep Number believed
`
`(and assumed the District Court believed) that this was a compromise that would
`
`only require redaction of the Medisphere source code, which is only one of nine
`
`versions of Source Code referenced in Sleep Number’s Infringement Contentions.
`
`In other words, Sleep Number believed that it would be allowed to use all eight other
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`versions, which includes all of the five ANM versions, of Source Code in this IPR
`
`proceeding. At that time, Sleep Number decided not to seek relief from the Board
`
`because it believed it was going to be able to use the vast majority of the Source
`
`Code, including all of ANM’s Source Code, in this IPR proceeding.
`
`11. Thereafter, the parties began meeting and conferring to formulate a
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`stipulated protective order for this IPR proceeding. During an October 10, 2019
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`meet and confer call, only 13 days prior to Due Date 1 for Sleep Number’s Patent
`
`4
`
`Sleep Number Corp.
`EXHIBIT 2071
`IPR2019-00500
`Page 5
`
`
`
`Case No. IPR2019-00500
`Patent No. 9,737,154 B2
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`Owner Response (“POR”) and in a surprise to Sleep Number’s counsel, ANM’s
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`counsel took the position that all Source Code constitutes private third-party source
`
`code and that all such Source Code needed to be redacted and could not be provided
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`to the Board in these IPR proceedings. The following day, ANM did offer access to
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`the Platinum code owned by Elsyn, which is only one of nine versions of Source
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`Code and does not include any of the versions of ANM Source Code, but ANM
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`subsequently rescinded its offer and claimed it had no authority to consent to the use
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`of any Source Code. Exhibit 2073 is a true and correct copy of an email exchange
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`between Sleep Number and ANM’s counsel between September 27 and October 14,
`
`2019.
`
`12. Because ANM took this position so close to the POR due date and Sleep
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`Number could no longer go to the District Court to seek access to the Source Code,
`
`Sleep Number’s only option was to send an email to the Board requesting a call with
`
`the Board to discuss its request to bring a Motion for Additional Discovery, which
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`it did very quickly. Indeed, the day after the issue arose, on October 11, 2019, I
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`provided ANM’s counsel with a draft email to the Board and requested any revisions
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`by the end of the day so that it could be sent to the Board before the weekend. ANM
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`did not provide revisions to my draft email until October 14, 2019, after which I
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`immediately sent the email to the Board requesting a call between October 14 and
`
`5
`
`Sleep Number Corp.
`EXHIBIT 2071
`IPR2019-00500
`Page 6
`
`
`
`Case No. IPR2019-00500
`Patent No. 9,737,154 B2
`
`16, 2019. The Board scheduled the call on October 16, 2019, during which it
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`authorized the filing of a Motion for Additional Discovery.
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`13. Exhibit 2074 is a true and correct copy of Sleep Number’s proposed
`
`discovery requests.
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`I declare under penalty of perjury that the foregoing is true and correct.
`
`Dated: October 23, 2019
`
`
`
`
`
`s/Elizabeth A. Patton
`Elizabeth A. Patton
`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: epatton@foxrothschild.com
`
`6
`
`Sleep Number Corp.
`EXHIBIT 2071
`IPR2019-00500
`Page 7
`
`
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