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 IPR2019-00500
`Patent 9,737,154 B2
`_________________________
`PATENT OWNER’S MOTION TO AMEND
`
`

`

`
`
`TABLE OF CONTENTS
`Introduction ............................................................................................................... 1
`Background ............................................................................................................... 2
`Argument................................................................................................................... 2
`The Proposed Amendments Do Not Enlarge the Scope of the Claims or
`Introduce New Subject Matter. ....................................................................... 4
`The Proposed Amendments Are Responsive to a Ground of Invalidity
`Asserted by Petitioner. .................................................................................... 6
` The Proposed Amendments Have Support In Earlier Disclosures. ............... 8
`A.
`Elements 23.P, 27.P, 30.P, and 32.P. ................................................... 9
`B.
`Elements 23.1, 23.2, 27.1, 30.1, 30.2, 32.1, 32.2, 32.5, and 32.6. .......... 9
`C.
`Elements 23.3, 23.6, 27.2, 30.3, 32.9, 32.10, 32.17, and 32.18. ........... 10
`D.
`Elements 23.4 and 23.5. ...................................................................... 10
`E.
`Elements 23.7, 23.8, 30.5, and 30.6. .................................................... 10
`F.
`Elements 23.9, 23.10, 27.4, 30.4, 32.11, and 32.12. ............................ 11
`G.
`Elements 23.11, 23.12, 27.5, 30.7, 32.7, 32.13, and 32.14. ................. 11
`H.
`Elements 23.13, 23.14, 24.1, 27.6, 30.8, 32.15, and 32.16. ................. 12
`I.
`Elements 23.15, 23.16, 27.7, and 30.9. ................................................ 12
`J.
`Elements 25.1 and 26.1. ...................................................................... 12
`K.
`Elements 27.3 and 28.1. ...................................................................... 12
`L.
`Elements 33.1, 34.1, 35.1, 36.1, 38.1, 39.1, 40.1, and 41.1.................. 13
`M. Elements 30.10, 32.19, and 32.20. ....................................................... 13
`N.
`Element 30.11. .................................................................................... 13
`O.
`Elements 32.3 and 32.8. ...................................................................... 13
`
`i
`
`

`

`Element 32.4. ...................................................................................... 14
`P.
`Element 29.1. ...................................................................................... 14
`Q.
`Element 31.1. ...................................................................................... 14
`R.
`Element 37.1. ...................................................................................... 15
`S.
`Conclusion .............................................................................................................. 15
`
`ii
`
`

`

`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Ariad Pharms., Inc. v. Eli Lilly & Co.,
`598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) .................................................. 8
`Aqua Products Inc. v. Matal,
`872 F.3d 1290 (Fed. Cir. 2017) ........................................................................ 3, 4
`Nichia Corp. v. Emcore Corp.,
`IPR2012-00005, Paper 27 (PTAB June 3, 2013) ................................................. 8
`Veeam Software Corp. v. Veritas Techs.,
`LLC, IPR2014-00090, Paper 48 (PTAB July 17, 2017) ...................................... 6
`Statutes
`35 U.S.C. § 316 .......................................................................................................... 3
`35 U.S.C. § 316(d)(1)(B) ........................................................................................... 2
`35 U.S.C. § 316(d)(3)................................................................................................. 2
`Other Authorities
`37 C.F.R. § 1.175(b) .................................................................................................. 4
`37 C.F.R. § 42.121(c) ................................................................................................. 7
`37 C.F.R. § 42.5(a) ..................................................................................................... 7
`37 C.F.R. § 42.121 ..................................................................................................... 3
`37 C.F.R. § 42.121(a)(2)(i) .................................................................................... 2, 6
`37 C.F.R. § 42.121(a)(2)(ii) ....................................................................................... 2
`37 C.F.R. §§ 42.121(b)(1)-(2) .................................................................................... 8
`U.S. Patent and Trademark Office, Manual of Patent Examination
`Procedure § 2658 (9th ed. Revision 08.2017, Last Revised Jan.
`2018) ..................................................................................................................... 4
`iii
`
`

`

`U.S. Patent and Trademark Office, Manual of Patent Examination
`Procedure § 1412.03 (9th ed. Revision 08.2017, Last Revised Jan.
`2018) .................................................................................................................... 4
`
`iv
`
`

`

`Introduction
`Pursuant to the Decision of the Institution of Inter Partes Review (“IPR”),
`
`entered July 24, 2019, Patent Owner Sleep Number Corporation (“PO”) provides
`
`these substitute claims contingent upon a finding of invalidity of the respective
`
`challenged original claim(s). These substitute claims address the grounds of
`
`invalidity asserted in the Petition of Petitioner American National Manufacturing,
`
`Inc. (“Petitioner”) by further emphasizing the means of inflating and deflating one
`
`or more of the air chambers of the adjustable air bed system. Certain proposed
`
`amendments further elaborate upon the means by which the pressure adjustment
`
`factor is calculated and dynamically modified. For example, in some proposed
`
`substitute independent claims, specific means for calculating a default pressure
`
`adjustment factor have been added. In other proposed substitute claims, words or
`
`phrases have been substituted for consistency with terms used in the industry and in
`
`related patents. As detailed below, these amendments do not increase the scope of
`
`the claims and indeed narrow them with additional limitations.
`
`Therefore, PO respectfully submits that these amendments are permissible and
`
`should be entered into this IPR pending the Panel’s determination of the patentability
`
`of the originally-issued counterpart claims. PO requests that the Board provide guid-
`
`ance with respect to these proposed amendments, as discussed during the October 3,
`
`2019 call with the Board.
`
`1
`
`

`

`Background
`The ‘154 patent discloses systems and methods “for adjusting pressure within
`
`an air bed including an air chamber and a pump having a pump housing”, using a
`
`pressure adjustment factor and dynamically modifying this pressure adjustment
`
`factor. (See, e.g., ‘154 patent, 13:10-30.) Additionally, the ‘154 patent further
`
`discloses systems and methods for determining the pressure adjustment factor, and
`
`systems and methods for incorporating the dynamically modified pressure
`
`adjustment factor for both inflation processes and deflation processes. (Id.) The
`
`advantage of the invention is realized by comparisons of actual chamber pressure to
`
`desired pressure setpoints using calculations for both inflation and deflation of the
`
`one or more air chambers.
`
`Argument
`Under 35 U.S.C. § 316(d)(1)(B), PO may propose a reasonable number of
`
`substitute claims for each challenged claim. Such substitutions may not enlarge the
`
`scope of the claims or introduce new matter. 35 U.S.C. § 316(d)(3); 37 C.F.R.
`
`§ 42.121(a)(2)(ii). Further, the amendment “may” be denied if it does not respond
`
`to a ground of unpatentability involved in the trial. 37 C.F.R. §42.121(a)(2)(i). “A
`
`motion to amend claims must include a claim listing, which claim listing may be
`
`contained in an appendix to the motion, show the changes clearly, and set forth:
`
`(1) The support in the original disclosure of the patent for each claim that is added
`
`or amended; and (2) The support in an earlier-filed disclosure for each claim for
`2
`
`

`

`which benefit of the filing date of the earlier filed disclosure is sought.” Id., subd.
`
`(b). Thus, PO must show the amended claims are non-broadening, supported by the
`
`specification, and responsive to a ground already at issue in the IPR. As requested
`
`by the Board, PO has carefully reviewed the Aqua Products decision as well as 35
`
`U.S.C. § 316 and 37 C.F.R. § 42.121.
`
`Here, the ‘154 Patent has 22 claims, thus allowing for 22 substituted claims.
`
`PO has proposed 19 substitutions. These amendments are listed in the Appendix A
`
`(“App.”), which is set forth with headings clearly indicating which original claim is
`
`being substituted and how (using strike-through text for removed language and
`
`underlined text for added language). The proposed amendments are proposed
`
`contingent upon a conclusion of the Panel that the existing claim to which each
`
`amendment relates is invalid. For example, PO proposes a new claim 23 that would
`
`replace claim 1 in the event claim 1 is found invalid. Other times, PO proposes a
`
`new claim to replace another claim but only if one claim is found unpatentable and
`
`replaced and another claim is also found unpatentable—e.g. PO proposes a new
`
`claim 24 to replace claim 3 but only if both claim 1 is found unpatentable and
`
`replaced with proposed claim 23 and claim 3 is also found unpatentable. As detailed
`
`below, the proposed amendments (1) are non-broadening, (2) have support in the
`
`specification of the original disclosure, and (3) are responsive to a ground at issue
`
`in this IPR.
`
`3
`
`

`

`Importantly, Petitioner has the burden to show the amended claims to be
`
`unpatentable over the prior art. Id., § 316(e); Aqua Products Inc. v. Matal, 872 F.3d
`
`1290, at 1324 (Fed. Cir. 2017). PO bears no burden of patentability but will address
`
`Petitioner’s arguments of unpatentability in its reply brief.
`
`The Proposed Amendments Do Not Enlarge the Scope of the Claims or
`
`Introduce New Subject Matter.
`
`A claim enlarges the scope of the claims of the patent where the claim is
`
`broader than each and every claim of the patent. U.S. PATENT AND
`
`TRADEMARK OFFICE, MANUAL OF PATENT EXAMINATION
`
`PROCEDURE § 2658 (9th ed. Revision 08.2017, Last Revised Jan. 2018)
`
`(hereinafter “MPEP”). “A claim which is greater in scope than each and every claim
`
`of the original patent is a broadened claim.” MPEP § 1412.03. An amended claim
`
`enlarges the scope of the claims of the patent if it is broader in at least one respect,
`
`even though it may be narrower in other respects. Id. (citing 37 C.F.R. § 1.175(b)).
`
`An amended claim that includes subject matter not covered by the original patent
`
`claims enlarges the scope of the patent claims. Id.
`
`PO’s proposed amendments set forth in Appendix A properly meet these
`
`requirements. The only true deletions are grammatical (e.g., the removal of “and” or
`
`replacing “determining” with “determine”) to achieve consistency and accuracy in
`
`terminology and phrasing, which do not add substantive limitations or broader
`
`limitations. The substitutions of certain terms/phrases (e.g. “pump housing” changed
`4
`
`

`

`to “valve enclosure” and “air chamber” changed to “air bladder”) are meant to
`
`achieve consistency with terms used in the industry and in related patents such as
`
`U.S. Patent No. 5,904,172 (“the ‘172 Patent”), which the ‘154 Patent cites and
`
`incorporates by reference. Citations to these terms in the ‘172 Patent are included
`
`below. These substituted terms do not have a different meaning, and certainly do not
`
`constitute a broader meaning than the original terms. In fact, the term “valve
`
`enclosure” further adds the limitation of a valve at least partially within an
`
`enclosure/manifold, narrowing the claim even further; thus, they do not broaden or
`
`substantively alter the claims.
`
`Otherwise, proposed amendments are in the form of adding limitations that
`
`expand upon calculating the pressure adjustment factor (e.g., App. at 23.3, 27.2),
`
`dynamically modifying the pressure adjustment factor (e.g., App. at 23.7, 23.8, 27.9,
`
`27.10, 30.5, 30.9, 32.5), incorporating multiple air chambers (e.g., 23.1, 23.2, 32.1,
`
`32.2), each with separate pressure setpoints (see id.), and determining adjustment
`
`factor errors (e.g., 23.13, 23.14, 24.1). The underlined text in the proposed
`
`amendments reflects these additional limitations, none of which create a broader
`
`claim overall and all of which instead create a narrower claim.
`
`Because PO’s proposed amendments do not broaden the claims, and in most
`
`cases actually narrow the claims, PO has satisfied this requirement.
`
`5
`
`

`

`The Proposed Amendments Are Responsive to a Ground of Invalidity
`
`Asserted by Petitioner.
`
`“A motion to amend may be denied” where “[t]he amendment does not re-
`
`spond
`
`to a ground of unpatentability
`
`involved
`
`in
`
`the
`
`trial.” 37 C.F.R.
`
`§ 42.121(a)(2)(i). As long as the proposed amendment is intended to address the
`
`grounds, additional modifications may be permissible. According to the Panel in
`
`Veeam Software Corp. v. Veritas Techs., LLC, IPR2014-00090, Paper 48 at 28-29
`
`(PTAB July 17, 2017):
`
`In our view, the requirement in 37 C.F.R. § 42.121(a)(2)(i) that
`precludes amendments not responsive to a ground of unpatentability in
`a trial requires that any claim proposed in a motion to amend must be
`the result of a genuine effort to overcome the instituted grounds. We do
`not view the requirement to be that every word added to or removed
`from a claim in a motion to amend must be solely for the purpose of
`overcoming an instituted ground. Thus, we do not view 37 C.F.R.
`§ 42.121(a)(2)(i) precluding additional modifications that address
`potential 35 U.S.C. § 101 or § 112 issues.
`
`Once a proposed claim includes amendments to address the prior art
`grounds in the trial, a patent owner can also include additional limitations
`to address potential § 101 or § 112 issues. Allowing an amendment to
`address potential 35 U.S.C. § 101 or § 112 issues in a motion to amend
`under 37 C.F.R. § 42.121, when a given claim is being amended already
`in view of a 35 U.S.C. § 102 or § 103 ground, serves the public interest
`by ensuring issuance of valid and clear patents.
`6
`
`

`

`Additionally, the Board has broad discretionary powers to determine the conduct of
`
`a proceeding and consider additional motions to amend. 37 C.F.R. §§ 42.5(a),
`
`42.121(c).
`
`Petitioner claims that every element of the ‘154 Patent is disclosed through a
`
`combination of prior art references. The Board’s Institution decision describes
`
`“[a]lleged obviousness over Gifft, Mittal, and Pillsbury” for claims 1-4, 7-14, and
`
`16-22 as a potential ground of unpatentability. (Paper 11 at 18.) The Board also in-
`
`stituted on an obviousness ground based on Gifft, Mittal, Pillsbury, and Ebel for
`
`claims 5-6 and 15. (Id. at 37.) Ultimately, the Board instituted trial on each claim of
`
`the ‘154 Patent.
`
`Thus, since the Board’s Institution decision describes alleged obviousness in
`
`regards to the independent claims, any additional substantive limitation to any
`
`element of the independent claims, or the dependent claims which depend from the
`
`independent claims, is responsive to a ground asserted by Petitioner. Here, PO has
`
`made a number of such amendments. For example, PO proposes a new claim 23 (to
`
`replace claim 1) that adds ten entirely new claim limitations. (See App. at 23.2, 23.4,
`
`23.5, 23.6, 23.7, 23.8, 23.10, 23.12, 23.14, 23.16.) These additional limitations are
`
`responsive to Petitioner’s grounds of obviousness for claim 1, in which Petitioner
`
`argues that each of the limitations of claim 1 is obviousness in light of the asserted
`
`prior art combinations, because they add additional claim limitations not shown in
`7
`
`

`

`the prior art or argued to be shown in the prior art by Petitioner. In addition, PO
`
`proposes entirely new claims as substitutes for certain original claims. (See App. at
`
`24, 25, 26, 28, 31, 33, 34, 35, 36, 37, 38, 39, 40, 41.) These too are responsive to a
`
`ground because they propose an entirely new claim that would and could not be
`
`obvious in light of Petitioner’s asserted prior art combinations.
`
`Because the proposed claims further clarify the subject matter in the ‘154
`
`Patent in response to a ground of unpatentability, the proposed claims are proper.
`
`The Proposed Amendments Have Support In Earlier Disclosures.
`
`Each of the proposed substitute claims are supported by the original disclosure
`
`of International Application No. PCT/US2008/059409 (“the ‘409 Application”), to
`
`which U.S. App. Ser. No. 14/283,675 (“the ‘675 Application”) claimed priority, that
`
`issued as the ‘154 Patent, thereby reasonably conveying to a person of ordinary skill
`
`in the art that the inventor had possession of the claimed subject matter as of the
`
`filing date of the ‘409 Application. Additional support can be found in U.S. Patent
`
`No. 5,904,172 (“the ‘172 Patent”), to which the ‘409 Application claimed priority,
`
`thereby reasonably conveying to a person of ordinary skill in the art that the inventor
`
`had possession of the claimed subject matter as of the filing date of the ‘172 Patent.
`
`37 C.F.R. §§42.121(b)(1)-(2); see also Nichia Corp. v. Emcore Corp., IPR2012-
`
`00005, Paper 27 at 3, (PTAB June 3, 2013) (citing Ariad Pharms., Inc. v. Eli Lilly &
`
`Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)).
`
`8
`
`

`

`The ‘409 Application starts at page 39 of Exhibit 1002. The ‘172 Patent starts
`
`on page 1 of Exhibit 1004. As stated above, Appendix A includes a claim listing
`
`clearly identifying the proposed changes in the event the Board finds any claim
`
`invalid. Written support in the ‘409 Application (related to substantive changes) and
`
`the ‘172 Patent (related to changing certain terms for synonymous terms) is
`
`demonstrated for each element of each substitute claim as indicated below. Similar
`
`claim elements are grouped together for ease of reference.
`
`Elements 23.P, 27.P, 30.P, and 32.P.
`A.
`Support for proposed amendments 23.P, 27.P, 30.P, and 32.P can be found in
`
`at least Ex. 1002 at pages 39, 41, 43, 44, 46, 63, 64, 65, 66, and 68—more specifically
`
`in the ‘409 Application at paragraphs [0008], [0009], and [0019], FIG. 2, and the
`
`Abstract. Further support can be found in at least Ex. 1004 at pages 1-10, and 12—
`
`more specifically in the ‘172 Patent, at column 2, lines 36-55, column 3, lines 26-57,
`
`column 4, lines 8-29, column 7, lines 3-15, in FIGS. 2-11, and the Abstract.
`
`Elements 23.1, 23.2, 27.1, 30.1, 30.2, 32.1, 32.2, 32.5, and 32.6.
`B.
`Support for proposed amendments 23.1, 23.2, 27.1, 30.1, 30.2, 32.1, 32.2,
`
`32.5, and 32.6 can be found in at least Ex. 1002 at pages 39, 41, 42, 43, 44, 45, 52-
`
`60, and 68—more specifically in the ‘409 Application at paragraphs [0003],
`
`[0006], [0007], [0008], [0009], [0046], [0048], [0049], [0074], FIGS. 2, and the
`
`Abstract. Further support can be found in at least Ex 1004, pages 1, 9, 10, and 12—
`
`9
`
`

`

`more specifically in the ‘172 Patent, at column 2, lines 36-55, column 3, lines 26-
`
`57, column 4, lines 8-29, column 7, lines 3-15, in FIGS. 2-11, and the Abstract.
`
`Elements 23.3, 23.6, 27.2, 30.3, 32.9, 32.10, 32.17, and 32.18.
`C.
`Support for proposed amendments 23.3, 23.6, 27.2, 30.3, 32.9, 32.10, 32.17,
`
`and 32.18 can be found in at least Ex. 1002 at pages 39, 43, 44, 45, 54, 55, 60, and
`
`61—more specifically in the ‘409 Application at paragraphs [0008], [0009], [0052],
`
`[0053], [0054], [0055], [0056], [0057], [0058], [0060], [0061], [0062], [0075], and
`
`[0076], and the Abstract. Further support can be found in at least Ex. 1004 at pages
`
`1, 9, 10, and 12—more specifically in the ‘172 Patent, at column 2, lines 36-55,
`
`column 3, lines 26-57, column 4, lines 8-29, column 7, lines 3-15, in FIGS. 2-11, and
`
`the Abstract.
`
`Elements 23.4 and 23.5.
`D.
`Support for proposed amendments 23.4 and 23.5 can be found in at least Ex.
`
`1002 at pages 39, 43, 49, 51, 52, 55, 56, and 58—more specifically in the ‘409
`
`Application at paragraphs [0008], [0031], [0045], [0046], [0057], [0060], [0061],
`
`[0066], [0069], and the Abstract.
`
`Elements 23.7, 23.8, 30.5, and 30.6.
`E.
`Support for proposed amendments 23.7, 23.8, 30.5, and 30.6 can be found in
`
`at least Ex. 1002 at pages 39, 43, 47, 49, 51, 52, 53, and 59—more specifically in the
`
`‘409 Application at paragraphs [0008], [0023], [0031], [0045], [0047], and [0071],
`
`and the Abstract. Further support can be found in at least Ex. 1004 at pages 1, 2, 9,
`
`10
`
`

`

`10, and 12—more specifically in the ‘172 Patent, at column 2, lines 36-55, column
`
`3, lines 29-30, column 4, lines 8-16, column 7, lines 3-15, in FIGS. 2, and the Ab-
`
`stract.
`
`Elements 23.9, 23.10, 27.4, 30.4, 32.11, and 32.12.
`F.
`Support for proposed amendments 23.9, 23.10, 27.4, 30.4, 32.11, and 32.12
`
`can be found in at least Ex. 1002 at pages 39, 43, 52, 56, 57, and 58—more
`
`specifically in the ‘409 Application at paragraphs [0008], [0046], [0061], [0062],
`
`[0063], and [0068], and the Abstract. Further support can be found in at least Ex.
`
`1004 at pages 1-10, and 12—more specifically in the ‘172 Patent, at column 2, lines
`
`36-55, column 3, lines 26-57, column 4, lines 8-29, column 7, lines 3-15, in FIGS.
`
`2-11, and the Abstract.
`
`Elements 23.11, 23.12, 27.5, 30.7, 32.7, 32.13, and 32.14.
`G.
`Support for proposed amendments 23.11, 23.12, 27.5, 30.7, 32.7, 32.13, and
`
`32.14 can be found in at least Ex. 1002 at pages 39, 43, 51, 52, 54, 56, and 57—more
`
`specifically in the ‘409 Application at paragraphs [0008], [0045], [0046], [0052],
`
`[0061], and [0063], and the Abstract. Further support can be found in at least Ex.
`
`1004 at pages 1, 2, 9, 10, and 12—more specifically in the ‘172 Patent, at column 2,
`
`lines 36-55, column 3, lines 29-30, column 4, lines 8-16, column 7, lines 3-15, in
`
`FIG. 2, and the Abstract.
`
`11
`
`

`

`Elements 23.13, 23.14, 24.1, 27.6, 30.8, 32.15, and 32.16.
`H.
`Support for proposed amendments 23.13, 23.14, 24.1, 27.6, 30.8, 32.15, and
`
`32.16 can be found in at least Ex. 1002 at pages 39, 41, 43, 45, 52, 56, and 57—more
`
`specifically in the ‘409 Application at paragraphs [0004], [0007], [0008], [0009],
`
`[0046], and [0062], and the Abstract. Further support can be found in at least Ex.
`
`1004 at pages 1, 2, 9, 10, and 12—more specifically in the ‘172 Patent, at column 2,
`
`lines 36-55, column 3, lines 29-30, column 4, lines 8-16, column 7, lines 3-15, in
`
`FIG. 2, and the Abstract.
`
`Elements 23.15, 23.16, 27.7, and 30.9.
`I.
`Support for proposed amendments 23.15, 23.16, 27.7, and 30.9 can be found at
`
`least in Ex. 1002 at pages 39, 41, 43, 45, 52, 57, and 58—more specifically in the ‘409
`
`Application at paragraphs [0004], [0007], [0008], [0009], [0046], [0063], and [0068],
`
`and the Abstract.
`
`Elements 25.1 and 26.1.
`J.
`Support for proposed amendments 25.1 and 26.1 can be found in at least Ex.
`
`1002 at pages 55, 57, and 58—more specifically in the ‘409 Application at
`
`paragraphs [0055], [0063], [0064], [0065], [0066], [0067], and [0068].
`
`Elements 27.3 and 28.1.
`K.
`Support for proposed amendments 27.3 and 28.1 can be found in at least Ex.
`
`1002 at pages 52, 53, 54, 55, 56, 58, and 59—more specifically in the ‘409
`
`Application at paragraphs [0047], [0052], [0055], [0059], [0069], and [0070].
`
`12
`
`

`

`Elements 33.1, 34.1, 35.1, 36.1, 38.1, 39.1, 40.1, and 41.1.
`L.
`Support for proposed amendments 33.1, 34.1, 35.1, 36.1, 38.1, 39.1, 40.1, and
`
`41.1 can be found in at least Ex. 1002 at pages 47, 55 and 68—more specifically in
`
`the ‘409 Application at paragraphs [0009], [0023], [0047], [0052], [0053], [0055],
`
`and FIG. 2. Further support can be found in at least Ex. 1004 at pages 1, 2, 9, 10, and
`
`12—more specifically in the ‘172 Patent, at column 2, lines 36-55, column 3, lines
`
`29-30, column 4, lines 8-16, column 7, lines 3-15, in FIG. 2, and the Abstract.
`
`Elements 30.10, 32.19, and 32.20.
`M.
`Support for proposed amendments 30.10, 32.19, and 32.20 can be found in at
`
`least Ex. 1002 at pages 42, 43, 44, 45, 58, 59, and 60—more specifically in the ‘409
`
`Application at paragraphs [0005], [0009], [0068], [0072], [0073], and [0074].
`
`Further support can be found in at least Ex. 1004 at pages 1, 2, 9, 10, and 12—more
`
`specifically in the ‘172 Patent, at column 2, lines 36-55, column 3, lines 29-30,
`
`column 4, lines 8-16, column 7, lines 3-15, in FIG. 2, and the Abstract.
`
`Element 30.11.
`N.
`Support for proposed amendment 30.11 can be found in at least Ex. 1002 at
`
`pages 59, 60, 61, and 73—more specifically in the ‘409 Application at paragraphs
`
`[0072], [0073], [0075], [0076] and FIG. 7.
`
`Elements 32.3 and 32.8.
`O.
`Support for proposed amendments 32.3 and 32.8 can be found in at least Ex.
`
`1002 at pages 43, 44, 52, 53, and 68—more specifically in the ‘409 Application at
`
`13
`
`

`

`paragraphs [0008], [0009], [0046], [0048], and [0049], and FIG. 2. Further support
`
`can be found in at least Ex. 1004 at pages 1, 2, 9, 10, and 12—more specifically in
`
`the ‘172 Patent, at column 2, lines 36-55, column 3, lines 29-30, column 4, lines 8-
`
`16, column 7, lines 3-15, in FIG. 2, and the Abstract.
`
`Element 32.4.
`P.
`Support for proposed amendment 32.4 can be found in at least Ex. 1002 at
`
`pages 43, 44, 46, and 67—more specifically in the ‘409 Application at paragraphs
`
`[0009] and [0019], and FIG. 1.
`
`Element 29.1.
`Q.
`Support for proposed amendment 29.1 can be found in at least Ex. 1002 at pages
`
`55, 64, and 65—more specifically in the ‘409 Application at paragraphs [0053], [0054],
`
`[0055], [0056], and claims 6, 12 and 13. Further support can be found in at least Ex.
`
`1004 at pages 1, 2, 9, 10, and 12—more specifically in the ‘172 Patent, at column 2,
`
`lines 36-55, column 3, lines 29-30, column 4, lines 8-16, column 7, lines 3-15, in
`
`FIG. 2, and the Abstract.
`
`Element 31.1.
`R.
`Support for proposed amendment 31.1 can be found in at least Ex. 1002 at pages
`
`59, 60, 61, and 73—more specifically in the ‘409 Application at paragraphs [0072],
`
`[0073], [0075], and [0076] and FIG. 7. Further support can be found in at least Ex.
`
`1004 at pages 1-10, and 12—more specifically in the ‘172 Patent, at column 2, lines
`
`14
`
`

`

`36-55, column 3, lines 26-57, column 4, lines 8-29, column 7, lines 3-15, in FIGS.
`
`2-11, and the Abstract.
`
`Element 37.1.
`S.
`Support for proposed amendment 37.1 can be found in at least Ex. 1002 at
`
`pages 46, 47, 52, 67, 68, and 71—more specifically in the ‘409 Application at
`
`paragraphs [0019], [0023], [0024], and [0046] and FIGS. 1, 2, and 5.
`
`Conclusion
`
`As stated above, Patent Owner provides the proposed substitute claims
`
`contingent upon a finding of invalidity of the respective challenged original claim(s).
`
`Patent Owner requests that the Board provide guidance with respect to these
`
`proposed amendments, as discussed during the October 3, 2019 call with the Board.
`
`15
`
`

`

`Dated: October 23, 2019
`
`Respectfully submitted,
`
`
`By: /s/Luke Toft
`Luke Toft (Reg. No. 75,311)
`Andrew S. Hansen (pro hac vice)
`Archana Nath (pro hac vice)
`Elizabeth A. Patton (pro hac vice)
`FOX ROTHSCHILD LLP
`222 South Ninth Street, Suite 2000
`Minneapolis, MN 55402-3338
`Telephone: (612) 607-7000
`ltoft@foxrothschild.com
`ahansen@foxrothschild.com
`anath@foxrothschild.com
`epatton@foxrothschild.com
`
`Steven A. Moore (Reg. No. 55,462)
`PILLSBURY WINTHROP SHAW PITTMAN LLP
`501 West Broadway, Suite 1100
`San Diego, CA 92101
`Telephone: (619) 234-5000
`steve.moore@pillsburylaw.com
`
`Kecia J. Reynolds (Reg. No. 47,021)
`PILLSBURY WINTHROP SHAW PITTMAN LLP
`1200 Seventeenth Street, NW
`Washington, DC 20036
`Telephone: (202) 663-8000
`kecia.reynolds@pillsburylaw.com
`
`Attorneys for Patent Owner
`Sleep Number Corporation
`
`16
`
`

`

`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies that on
`
`October 23, 2019, the foregoing Patent Owner’s Motion to Amend was served via
`
`e-mail, as authorized by the Petitioner, at the following email correspondence
`
`address of record:
`
`Kyle L. Elliott
`kelliott@spencerfane.com
`Kevin S. Tuttle
`ktuttle@spencerfane.com
`Brian T. Bear
`bbear@spencefane.com
`Lori J. Allee
`jallee@spencerfane.com
`SPENCER FANE LLP
`1000 Walnut Street, Suite 1400
`Kansas City, MO 64106
`
`Jaspal S. Hare
`jhare@spencerfane.com
`SPENCER FANE LLP
`2200 Ross Avenue
`Suite 4800 West
`Dallas, TX 75201
`
`Dated: October 23, 2019
`
`/s/Luke Toft
`Luke Toft (Reg. No. 75, 311)
`Counsel for Patent Owner
`
`17
`
`

`

`CLAIM LISTING APPENDIX FOR U.S. PATENT NO. 9,737,154
`
`A.
`
`Proposed Substitute Claim 23 To Replace Claim 1 If Claim 1 Is Found
`
`Unpatentable.
`
`[23.P] 23. A method for adjusting pressure within an air bed including an a
`
`plurality of air chamber bladders and a pump having a pump housing valve enclosure
`
`comprising:
`
`[23.1] receiving a selection for a first desired pressure setpoint for the a first air
`
`chamber bladder;
`
`[23.2] receiving a selection for a second desired pressure setpoint for a second air
`
`bladder;
`
`[23.3] calculating a first pressure target for the pump housing valve enclosure,
`
`wherein the first pressure target for the pump housing valve enclosure is calculated
`
`based upon the first desired pressure setpoint for the first air chamber bladder and a
`
`first pressure adjustment factor,
`
`[23.4] wherein, if the first pressure target is a first inflate pressure target the
`
`first pressure adjustment factor is a first additive pressure adjustment factor;
`
`and
`
`[23.5] wherein, if the first pressure target is a first deflate pressure target the
`
`first pressure adjustment factor is a first multiplicative pressure adjustment
`
`factor; and
`
`18
`
`

`

`[23.6] calculating a second pressure target for the valve enclosure, wherein the
`
`second pressure target for the valve enclosure is calculated based upon the second
`
`desired pressure setpoint for the second air bladder and a second pressure adjustment
`
`factor,
`
`[23.7] wherein, if the second pressure target is a second inflate pressure target
`
`the second pressure adjustment factor is a second additive pressure adjustment
`
`factor; and
`
`[23.8] wherein, if the second pressure target is a second deflate pressure target
`
`the second pressure adjustment factor is a second multiplicative pressure
`
`adjustment factor; and
`
`[23.9] adjusting pressure within the first air chamber bladder until a pressure sensed
`
`within the pump housing valve enclosure is substantially equal to the first pressure
`
`target;
`
`[23.10] adjusting pressure within the second air bladder until a pressure sensed
`
`within the valve enclosure is substantially equal to the second pressure target;
`
`[23.11] determining an a first actual chamber bladder pressure within the first air
`
`chamber bladder;
`
`[23.12] determining a second actual bladder pressure within the second air bladder;
`
`[23.13] comparing the first actual chamber bladder pressure to the first desired
`
`pressure setpoint to determine an a first adjustment factor error;
`
`19
`
`

`

`[23.14] comparing the second actual bladder pressure to the second desired pressure
`
`setpoint to determine a second adjustment factor error; and
`
`[23.15] modifying the first pressure adjustment factor based upon the first
`
`adjustment factor error; and
`
`[23.16] modifying the second pressure adjustment factor based upon the second
`
`adjustment factor error.
`
`(See supra Sections III.A–I.)
`
`B.
`
`Proposed Substitute Claim 24 To Replace Claim 3 If Both (1) Claim 1 Is
`
`Found Unpatentable and Replaced with Proposed Substitute Claim 23 and (2)
`
`Claim 3 Is Also Found Unpatentable.
`
`[24.1] 24. The method of claim 1 24, wherein pressure is sensed with a pressure
`
`transducer determining the first adjustment factor error further comprises:
`
`quantifying a value representative of a difference between the first actual bladder
`
`pressure and the first desired pressure setpoint.
`
`(See supra Section III.H.)
`
`C.
`
`Proposed Substitute Claim 25 To Replace Claim 4 If Both (1) Claim 1 Is
`
`Found Unpatentable and Replaced with Proposed