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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`AMERICAN NATIONAL MANUFACTURING INC.,
`Petitioner,
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`v.
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`SLEEP NUMBER CORPORATION
`f/k/a SELECT COMFORT CORPORATION,
`Patent Owner.
`
`____________
`
`Case No. IPR2019-00500
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`Patent No. 9,737,154
`____________
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`
`
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`DECLARATION OF KYLE L. ELLIOTT IN SUPPORT OF
`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION FOR
`ADDITIONAL DISCOVERY AND OTHER MISCELLANEOUS RELIEF
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`
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`WA 13784714.1
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`American National Manufacturing Inc.
`Exhibit 1035
`IPR2019-00500
`Page 1
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`
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`Case No. IPR2019-00500
`Patent No. 9,737,154
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`I, Kyle L. Elliott, declare and state as follows:
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`1.
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`I am an attorney with the law firm of Spencer Fane LLP. I represent
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`Petitioner, American National Manufacturing, Inc., in the above captioned
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`proceeding. I make this Declaration in support of Petitioner’s Opposition to Patent
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`Owner’s Motion for Additional Discovery and Other Miscellaneous Relief. I am
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`above eighteen years of age, of sound mind, and if called to testify I could and would
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`competently testify hereto. I make this declaration of my own personal knowledge.
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`2.
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`Beyond this proceeding, I am also counsel for American National
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`Manufacturing, Inc., and Sizewise Rentals, LLC in the underlying cases in the
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`Central District of California where Patent Owner has sued American National
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`Manufacturing and Sizewise Rentals under the three patents that are subject to these
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`proceedings. Those cases are Sleep Number Corporation v. Sizewise Rentals, LLC
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`(Case No. 5:18-cv-00356) and Sleep Number Corporation v. American National
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`Manufacturing (Case No. 5:18-cv-00357). In connection with my role of counsel, I
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`acquired personal knowledge regarding the filings in that proceeding, and the
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`arguments and actions taken by both Plaintiffs and Defendants in that case.
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`3.
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`On December 21, 2018, American National Manufacturing served its
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`supplemental responses to Sleep Number Corporation’s first set of interrogatories.
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`The very first interrogatory that Sleep Number served sought information regarding
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`WA 13784714.1
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`American National Manufacturing Inc.
`Exhibit 1035
`IPR2019-00500
`Page 2
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`Case No. IPR2019-00500
`Patent No. 9,737,154
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`the nature and history of the consumer air controllers offered by American National
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`Manufacturing. In response American National stated:
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`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.
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`The Pump History Document was produced to Sleep Number
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`4.
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`contemporaneously with the Interrogatory response. A true and correct copy of the
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`Pump History Document was filed by Sleep Number in IPR2019-00497 and
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`IPR2019-00500 as Exhibit 2052. As Sleep Number’s response in connection with
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`IPR2019-00514 is not due at the time of this filing, we have filed the same Pump
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`History Document as Exhibit 1051.
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`5.
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`On September 12, 2019, Sleep Number sought to modify the protective
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`order entered in the District Court cases. That protective order broadly prohibited
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`the use of any confidential information in any other proceeding including the Inter
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`Partes Review actions here. American National Manufacturing, Inc. and Sizewise
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`Rentals broadly objected to the modification on various grounds, such as timeliness
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`and need. One of the broad areas of concern we articulated was that the concern that
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`several third parties had turned over source code to counsel for American National
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`WA 13784714.1
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`American National Manufacturing Inc.
`Exhibit 1035
`IPR2019-00500
`Page 3
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`Case No. IPR2019-00500
`Patent No. 9,737,154
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`Manufacturing and Sizewise with the understanding that the code would be kept
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`under the strictest protections. In the case of all third parties this protection not only
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`included preventing public disclosure, but barring Sleep Number from reviewing the
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`code, and in the case of one third party, Medishpere, also prevent American National
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`Manufacturing/Sizewise from examining the source code. At the time we
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`articulated a concern to counsel for Sleep Number that the District Court would be
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`violating the constitutional protections of procedural due process by adjudicating
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`these entities’ property rights, without an opportunity for these parties to be heard.
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`6.
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`In apparent understanding of the gravity of this issue, Sleep Number
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`proposed in its applications for modification that the third-party source code
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`continue to be excluded for use in the IPR proceedings and that the code portions be
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`submitted to PTAB fully redacted. This was not a proposal from American National
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`but was a solution proposed solely by Sleep Number’s counsel.
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`7.
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`Attached to this declaration is Exhibit 1036 which is a true and correct
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`copy of Plaintiff’s Ex Parte Application to Modify the Protective Order filed on
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`September 12, 2019. On pages 5 and 6 of their filing, Sleep Number’s states this
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`fact expressly, writing “Plaintiff further ensured that all citations to source code and
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`other confidential information would be redacted from the contentions alleviating
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`any confidentiality concerns.”
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`4
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`WA 13784714.1
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`American National Manufacturing Inc.
`Exhibit 1035
`IPR2019-00500
`Page 4
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`Case No. IPR2019-00500
`Patent No. 9,737,154
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`8.
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`Ultimately, the District Court issued an order modifying the protective
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`order. A true and correct copy of that order was filed as Exhibit 2043 in IPR2019-
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`00497 and IPR2019-00500. As Sleep Number’s response in connection with
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`IPR2019-00514 is not due at the time of this filing, we have filed the same District
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`Court Order as Exhibit 1053. In that order, the Court noted the concerns about the
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`third-party source code rights on page 7, finding them valid. The District Court then
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`specifically ordered on page 9 that “In addition to the other provisions in the
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`Stipulated Protective Order, as modified, any documents used in IPR must have
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`private source code information from third parties redacted.”
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`9.
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`As part of the underlying District Court case, On January 25, 2019,
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`Patent Owner filed revised infringement contentions in the District Court case where
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`they stated what portions of the accused code supposedly infringed the patents in
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`suit. This was the first time that Defendants were provided with meaningful
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`information regarding the theories of infringement regarding the source code.
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`Defendants did not serve any responsive contentions regarding non-infringement or
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`expert reports regarding the same, because the Court entered a stay pending the
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`outcome of the IPR proceedings on February 12, 2019.
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`10. Counsel for Patent Owner also laments the “withdraw” of an offer to
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`use one version (Sizewise Medical Version) of the relevant source code without
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`WA 13784714.1
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`American National Manufacturing Inc.
`Exhibit 1035
`IPR2019-00500
`Page 5
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`Case No. IPR2019-00500
`Patent No. 9,737,154
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`redaction. However, this offer was not withdrawn it was rejected by Patent Owner.
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`The proposal was to permit the use of the Sizewise Medical Version, if the parties
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`could agree to avoid further motion practice on discovery. Petitioner made this offer
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`even though Sizewise Medical Version is still owned by a third party (Elysn), and
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`the obligation of Elysn to assign the source code is to Sizewise not American
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`National. Patent Owner rejected this offer.
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`11. Patent Owner also exaggerates the scope of this disagreement referring
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`to 9 versions of software. The dispute is really only about 4, perhaps 5, versions of
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`the software that would be used in Patent Owners infringement contentions. The
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`remaining versions predate two of the patents at issue in these IPRs.
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`I declare under penalty of perjury under the laws of the United States of
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`America that the foregoing is true and correct.
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`Date: October 30, 2019
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`
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`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
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`WA 13784714.1
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`American National Manufacturing Inc.
`Exhibit 1035
`IPR2019-00500
`Page 6
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