`
`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
`____________
`
`
`
`
`DECLARATION OF KYLE L. ELLIOTT IN SUPPORT OF
`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION FOR
`ADDITIONAL DISCOVERY AND OTHER MISCELLANEOUS RELIEF
`
`
`
`WA 13784714.1
`
`American National Manufacturing Inc.
`Exhibit 1035
`IPR2019-00500
`Page 1
`
`
`
`Case No. IPR2019-00500
`Patent No. 9,737,154
`
`I, Kyle L. Elliott, declare and state as follows:
`
`1.
`
`I am an attorney with the law firm of Spencer Fane LLP. I represent
`
`Petitioner, American National Manufacturing, Inc., in the above captioned
`
`proceeding. I make this Declaration in support of Petitioner’s Opposition to Patent
`
`Owner’s Motion for Additional Discovery and Other Miscellaneous Relief. I am
`
`above eighteen years of age, of sound mind, and if called to testify I could and would
`
`competently testify hereto. I make this declaration of my own personal knowledge.
`
`2.
`
`Beyond this proceeding, I am also counsel for American National
`
`Manufacturing, Inc., and Sizewise Rentals, LLC in the underlying cases in the
`
`Central District of California where Patent Owner has sued American National
`
`Manufacturing and Sizewise Rentals under the three patents that are subject to these
`
`proceedings. Those cases are Sleep Number Corporation v. Sizewise Rentals, LLC
`
`(Case No. 5:18-cv-00356) and Sleep Number Corporation v. American National
`
`Manufacturing (Case No. 5:18-cv-00357). In connection with my role of counsel, I
`
`acquired personal knowledge regarding the filings in that proceeding, and the
`
`arguments and actions taken by both Plaintiffs and Defendants in that case.
`
`3.
`
`On December 21, 2018, American National Manufacturing served its
`
`supplemental responses to Sleep Number Corporation’s first set of interrogatories.
`
`The very first interrogatory that Sleep Number served sought information regarding
`
`2
`
`
`WA 13784714.1
`
`American National Manufacturing Inc.
`Exhibit 1035
`IPR2019-00500
`Page 2
`
`
`
`Case No. IPR2019-00500
`Patent No. 9,737,154
`
`the nature and history of the consumer air controllers offered by American National
`
`Manufacturing. In response American National stated:
`
`A summary of the history of ANM pumps is provided in
`the Pump History Document located at ANMI00133410
`and at ANMI00133414-AMNI00133422. Generally
`speaking, the various pumps/blowers utilized by AMN in
`its consumer models had at various times different pumps,
`manifolds, and software depending on the year of
`production.
`
`The Pump History Document was produced to Sleep Number
`
`4.
`
`contemporaneously with the Interrogatory response. A true and correct copy of the
`
`Pump History Document was filed by Sleep Number in IPR2019-00497 and
`
`IPR2019-00500 as Exhibit 2052. As Sleep Number’s response in connection with
`
`IPR2019-00514 is not due at the time of this filing, we have filed the same Pump
`
`History Document as Exhibit 1051.
`
`5.
`
`On September 12, 2019, Sleep Number sought to modify the protective
`
`order entered in the District Court cases. That protective order broadly prohibited
`
`the use of any confidential information in any other proceeding including the Inter
`
`Partes Review actions here. American National Manufacturing, Inc. and Sizewise
`
`Rentals broadly objected to the modification on various grounds, such as timeliness
`
`and need. One of the broad areas of concern we articulated was that the concern that
`
`several third parties had turned over source code to counsel for American National
`
`3
`
`
`WA 13784714.1
`
`American National Manufacturing Inc.
`Exhibit 1035
`IPR2019-00500
`Page 3
`
`
`
`Case No. IPR2019-00500
`Patent No. 9,737,154
`
`Manufacturing and Sizewise with the understanding that the code would be kept
`
`under the strictest protections. In the case of all third parties this protection not only
`
`included preventing public disclosure, but barring Sleep Number from reviewing the
`
`code, and in the case of one third party, Medishpere, also prevent American National
`
`Manufacturing/Sizewise from examining the source code. At the time we
`
`articulated a concern to counsel for Sleep Number that the District Court would be
`
`violating the constitutional protections of procedural due process by adjudicating
`
`these entities’ property rights, without an opportunity for these parties to be heard.
`
`6.
`
`In apparent understanding of the gravity of this issue, Sleep Number
`
`proposed in its applications for modification that the third-party source code
`
`continue to be excluded for use in the IPR proceedings and that the code portions be
`
`submitted to PTAB fully redacted. This was not a proposal from American National
`
`but was a solution proposed solely by Sleep Number’s counsel.
`
`7.
`
`Attached to this declaration is Exhibit 1036 which is a true and correct
`
`copy of Plaintiff’s Ex Parte Application to Modify the Protective Order filed on
`
`September 12, 2019. On pages 5 and 6 of their filing, Sleep Number’s states this
`
`fact expressly, writing “Plaintiff further ensured that all citations to source code and
`
`other confidential information would be redacted from the contentions alleviating
`
`any confidentiality concerns.”
`
`4
`
`
`WA 13784714.1
`
`American National Manufacturing Inc.
`Exhibit 1035
`IPR2019-00500
`Page 4
`
`
`
`Case No. IPR2019-00500
`Patent No. 9,737,154
`
`8.
`
`Ultimately, the District Court issued an order modifying the protective
`
`order. A true and correct copy of that order was filed as Exhibit 2043 in IPR2019-
`
`00497 and IPR2019-00500. As Sleep Number’s response in connection with
`
`IPR2019-00514 is not due at the time of this filing, we have filed the same District
`
`Court Order as Exhibit 1053. In that order, the Court noted the concerns about the
`
`third-party source code rights on page 7, finding them valid. The District Court then
`
`specifically ordered on page 9 that “In addition to the other provisions in the
`
`Stipulated Protective Order, as modified, any documents used in IPR must have
`
`private source code information from third parties redacted.”
`
`9.
`
`As part of the underlying District Court case, On January 25, 2019,
`
`Patent Owner filed revised infringement contentions in the District Court case where
`
`they stated what portions of the accused code supposedly infringed the patents in
`
`suit. This was the first time that Defendants were provided with meaningful
`
`information regarding the theories of infringement regarding the source code.
`
`Defendants did not serve any responsive contentions regarding non-infringement or
`
`expert reports regarding the same, because the Court entered a stay pending the
`
`outcome of the IPR proceedings on February 12, 2019.
`
`10. Counsel for Patent Owner also laments the “withdraw” of an offer to
`
`use one version (Sizewise Medical Version) of the relevant source code without
`
`5
`
`
`WA 13784714.1
`
`American National Manufacturing Inc.
`Exhibit 1035
`IPR2019-00500
`Page 5
`
`
`
`Case No. IPR2019-00500
`Patent No. 9,737,154
`
`redaction. However, this offer was not withdrawn it was rejected by Patent Owner.
`
`The proposal was to permit the use of the Sizewise Medical Version, if the parties
`
`could agree to avoid further motion practice on discovery. Petitioner made this offer
`
`even though Sizewise Medical Version is still owned by a third party (Elysn), and
`
`the obligation of Elysn to assign the source code is to Sizewise not American
`
`National. Patent Owner rejected this offer.
`
`11. Patent Owner also exaggerates the scope of this disagreement referring
`
`to 9 versions of software. The dispute is really only about 4, perhaps 5, versions of
`
`the software that would be used in Patent Owners infringement contentions. The
`
`remaining versions predate two of the patents at issue in these IPRs.
`
`I declare under penalty of perjury under the laws of the United States of
`
`America that the foregoing is true and correct.
`
`Date: October 30, 2019
`
`
`
`
`
`
`
`
`
`
`By /s/Kyle L. Elliott .
`Kyle L. Elliott, Reg. No. 39,485
`Spencer Fane LLP
`1000 Walnut Street, Suite 1400
`Kansas City, Missouri 64106-2140
`Telephone: (816) 474-8100
`
`6
`
`
`WA 13784714.1
`
`American National Manufacturing Inc.
`Exhibit 1035
`IPR2019-00500
`Page 6
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
