Case No. IPR2019-00500
`Patent No. 9,737,154
`
`
`
`
`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
`____________
`
`
`
`
`PETITIONER’S UNOPPOSED MOTION FOR
`PRO HAC VICE ADMISSION OF
`MARK A. THORNHILL UNDER 37 C.F.R. § 42.10(c)
`
`1
`
`
`WA 13913521.1
`
`
`Patent No. 9,737,154
`
`
`
`
`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
`____________
`
`
`
`
`PETITIONER’S UNOPPOSED MOTION FOR
`PRO HAC VICE ADMISSION OF
`MARK A. THORNHILL UNDER 37 C.F.R. § 42.10(c)
`
`1
`
`
`WA 13913521.1
`
`
`
`Case No. IPR2019-00500
`Patent No. 9,737,154
`
`
`Pursuant to 37 C.F.R. § 42.10, American National Manufacturing, Inc.
`
`(“Petitioner”) respectfully requests the pro hac vice admission of Mark A. Thornhill
`
`into the present proceeding (IPR2019-00500).
`
`I.
`
`Introduction
`
`This motion is filed further to the Notice of Filing Date Accorded to Petition
`
`and Time for filing Patent Owner Preliminary Response, Paper No. 3 (the “Notice”),
`
`which authorizes motions for pro hac vice admission under 37 C.F.R. § 42.10.
`
`Further to the Notice, this motion is filed in accordance with the “Order –
`
`Authorizing Motion for Pro Hac Vice Admission” in Case IPR2013-00639, Paper 7
`
`(the “Order”) and no sooner than twenty-one (21) days after service of the petition.
`
`In accordance with the Order, this motion includes the following Statement of Facts,
`
`as well as a Declaration of Mark A. Thornhill in Support of Motion for Pro Hac Vice
`
`Admission, attached hereto and made part of hereof (the “Thornhill Declaration”).
`
`II. No Opposition to this Motion
`
`The parties met and conferred on this issue November 7, 2019, and Patent
`
`Owner counsel does not oppose the pro hac vice admission request of Mr. Mark A.
`
`Thornhill.
`
`2
`
`
`WA 13913521.1
`
`
`
`Case No. IPR2019-00500
`Patent No. 9,737,154
`
`III. Statement of the Facts
`
`Lead counsel for Petitioner, Kyle L. Elliott, is a patent attorney registered to
`
`practice before the USPTO. Mr. Elliott will remain as lead counsel. Mr. Thornhill
`
`will become a back-up counsel.
`
`Mr. Thornhill is an experienced litigator, and patent litigator with an
`
`established familiarity with the subject matter at issue in this proceeding, e.g., U.S.
`
`Patent No. 9,737,154 (the “‘514 Patent”), at least by virtue of Mr. Thornhill’s active
`
`role as co-counsel in the matter of Select Comfort Corporation v. American National
`
`Manufacturing, et al. (337-ITC-971) before the International Trade Commission.
`
`Thornhill was substantially involved with that litigation and is familiar with all facets
`
`of the dispute, including but not limited to, the subject matter of the ‘514 Patent and
`
`its relationship with the prior art.
`
`Mr. Thornhill works closely with the undersigned lead and back-up counsel
`
`in this matter. Mr. Thornhill has reviewed, and is familiar with, the Petition for Inter
`
`Partes Review of the ‘514 Patent (Paper No. 1), the prior art cited in the petition, the
`
`arguments and factual assertions made by this petition, the file history of the ‘514
`
`Patent, and the papers filed in this proceeding to date.
`
`Patent Owner has identified eight (8) declarants as part of its Response. Due
`
`to the volume of adverse declarants, Mr. Thornhill’s entry of appearance is necessary
`
`to assist in the conducting of the depositions of these declarants.
`
`3
`
`
`WA 13913521.1
`
`
`
`Case No. IPR2019-00500
`Patent No. 9,737,154
`
`IV. Argument
`
`Upon a showing of good cause, the Board may admit counsel who are not
`
`registered practitioners to appear pro hac vice in IPR and other Board proceedings.
`
`The applicable rule provides as follows:
`
`The Board may recognize counsel pro hac vice during a proceeding
`
`upon a showing of good cause, subject to the condition that lead counsel
`
`be a registered practitioner and to any other conditions as the Board
`
`may impose. For example, where the lead counsel is a registered
`
`practitioner, a motion to appear pro hac vice by counsel who is not a
`
`registered practitioner may be granted upon showing that counsel is an
`
`experienced litigating attorney and has an established familiarity with
`
`the subject matter at issue in the proceeding.
`
`37 C.F.R. § 42.10(c).
`
`As seen in the Statement of Facts above and in the accompanying declaration,
`
`the conditions for admission pro hac vice have been satisfied. In particular, Mr.
`
`Thornhill is an experienced litigator and has ample familiarity with the subject
`
`matter at issue in this IPR proceeding. Mr. Thornhill has never been censured,
`
`disciplined, suspended, nor denied admission by any court or administrative body.
`
`Further, Mr. Thornhill agrees to comply with or be subject to all relevant procedural
`
`and ethical rules. Finally, a registered practitioner, the undersigned Mr. Elliott, will
`
`4
`
`
`WA 13913521.1
`
`
`
`Case No. IPR2019-00500
`Patent No. 9,737,154
`
`remain lead counsel, and Mr. Tuttle and Mr. Hare, registered practitioners, shall
`
`remain back-up counsel.
`
`V. Conclusion
`
`In view of the foregoing and the attached Thornhill Declaration, Petitioner
`
`most respectfully submits that there is good cause for the Board to recognize Mr.
`
`Thornhill pro hac vice as additional back-up counsel in this IPR.
`
`Date: November 21, 2019
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully Submitted,
`SPENCER FANE LLP
`
`By /s/Kyle L. Elliott .
`Kyle L. Elliott, Reg. No. 39,485
`Kevin S. Tuttle, Reg. No. 52,307
`Spencer Fane LLP
`1000 Walnut Street, Suite 1400
`Kansas City, Missouri 64106-2140
`Telephone: (816) 474-8100
`
`Jaspal S. Hare, Reg. No. 66,988
`jhare@spencerfane.com
`Spencer Fane LLP
`5700 Granite Pkwy, Suite 650
`Plano, TX 75024
`
`5
`
`
`WA 13913521.1
`
`
`
`Case No. IPR2019-00500
`Patent No. 9,737,154
`
`
`
`
`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 MARK A. THORNHILL
`IN SUPPORT OF MOTION FOR PRO HAC VICE ADMISSION
`
`1
`
`
`WA 13913521.1
`
`
`
`Case No. IPR2019-00500
`Patent No. 9,737,154
`
`
`I, Mark A. Thornhill, hereby attest and declare the following:
`
`i.
`
`ii.
`
`I am a member in good standing of the Bar of the State of Missouri.
`
`I have never been suspended or disbarred from practice before any court
`
`or administrative body.
`
`iii.
`
`I have never had an application for admission to practice before any
`
`court or administrative body denied.
`
`iv. No sanctions or contempt citations have been imposed against me by
`
`any court or administrative body.
`
`v.
`
`I have read and will comply with the Office Patent Trial Practice Guide
`
`and its updates, and the Board’s Rules of Practice for Trials set forth in part 42 of
`
`the C.F.R.
`
`vi.
`
`I will be subject to the USPTO Rules of Professional Conduct set forth
`
`in 37 C.F.R. §§ 11.101 et. seq., and disciplinary jurisdiction under 37 C.F.R. §
`
`11.19(a).
`
`vii.
`
`I have not applied to appear pro hac vice before the Office in any other
`
`proceeding within the last three (3) years.
`
`viii.
`
`I am an experienced litigator in the field of intellectual property, and
`
`have over forty (40) years of litigation experience in the federal and state courts. I
`
`have an established familiarity with the subject-matter at issue in this proceeding,
`
`e.g., US Patent No. 9,737,154 (the “‘514 Patent”), at least by virtue of my active role
`
`2
`
`
`WA 13913521.1
`
`
`
`Case No. IPR2019-00500
`Patent No. 9,737,154
`
`as co-counsel in the co-pending patent litigation of the ‘514 Patent and other related
`
`patents before the United States District Court for the Central District of California,
`
`Civil Action Nos. 5:18-cv-00356-AB (Spx) and 5:18-cv-00357- AB (Spx). I have
`
`been involved with this litigation since near its inception and am familiar with all
`
`facets of the dispute, including but not limited to, the subject matter of the ‘514
`
`Patent and its relationship with the prior art. I have also worked closely with lead
`
`and back-up counsel in this matter (Messrs. Elliott, Tuttle, Hare, and Bear). I am
`
`familiar with the Petition for Inter Partes Review of the ‘514 Patent (Paper No. 1),
`
`the prior art cited by this petition, the arguments and factual assertions made by this
`
`petition, the file history of the ‘514 Patent, and the papers filed in this proceeding to
`
`date.
`
`I hereby certify that all statements made herein of my own knowledge are true, and
`
`that all statements made on information and belief are believed to be true, and
`
`further certify that these statements were made with the knowledge that willful false
`
`statements and the like are punishable by fine or imprisonment, or both, under 18
`
`U.S.C. § 1001, and may jeopardize the validity of U.S. Patent No. 9,737,154.
`
`Date: November 21, 2019
`
`
`
` /s/ Mark A. Thornhill .
`Mark A. Thornhill
`.
`
`
`
`3
`
`
`WA 13913521.1
`
`
`
`Case No. IPR2019-00500
`Patent No. 9,737,154
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies that a copy
`
`of the foregoing PETITIONER’S MOTION FOR PRO HAC VICE ADMISSION
`
`OF MARK A. THORNHILL UNDER 37 C.F.R. § 42.10(c) and DECLARATION
`
`OF MARK A. THORNHILL IN SUPPORT OF MOTION FOR PRO HAC VICE
`
`ADMISSION are served in its entirety on November 21, 2019, by electronic mail,
`
`as authorized by Patent Owner’s Updated Mandatory Notices, directed to the
`
`attorneys of record for Patent Owner at the following correspondence address of
`
`record:
`
`Steven A. Moore
`Steve.moore@pillsburylaw.com
`PILLSBURY WINTHORP SHAW
`PITTMAN LLP
`501 West Broadway, Suite 1100
`San Diego, CA 92101
`
`Kecia J. Reynolds
`kecia.reynolds@pillsburylaw.com
`PILLSBURY WINTHORP SHAW
`PITTMAN LLP
`1200 Seventeenth Street, NW
`Washington, DC 20036
`
`
`
`Elizabeth A. Patton (pro hac vice)
`epatton@foxrothschild.com
`FOX ROTHSCHILD LLP
`222 South Ninth Street, Suite 2000
`Minneapolis, MN 55402
`
`Luke Toft
`ltoft@foxrothschild.com
`
`Andew Hansen (pro hac vice)
`ahansen@foxrothschild.com
`
`Archana Nath (pro hac vice)
`anath@foxrothschild.com
`
`
`
`
`Date: November 21, 2019
`
`
`
`
`
`
` /s/Kyle L. Elliott .
`Kyle L. Elliott (Reg. No. 39,485)
`.
`Attorney for Petitioner
`American National Manufacturing, Inc.
`
`4
`
`
`WA 13913521.1
`
`
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
