From:
`Sent:
`To:
`Subject:
`Attachments:
`
`Bear, Brian <bbear@spencerfane.com>
`Thursday, November 21, 2019 4:13 PM
`Hare, Jaspal; Hansen, Andrew S.; Nath, Archana; Tuttle, Kevin; Bear, Brian; Allee, J. Lori;
`Engle, Devonia S.; Scott, Kris K.; Patton, Elizabeth A.; Steve Moore; k ecia; Elliott, Kyle L.;
`Toft, Lukas
`[EXT] Petitioner’s discovery requests in IPR2019-00497, -500, and -514
`Draft ANM outbound additional discovery reqs (v1) (002) (002) (002) (002).docx
`
`Dear Counsel:
`
`Please find attached additional discovery that Petitioner intends to seek from Patent Owner in all
`three IPRs. As you know, the parties can agree to additional discovery. 37 CFR 42.51(b)(2). Please
`identify the discovery Patent Owner agrees to and/or disagrees to. Petitioner intends to file a motion
`with the board for any discovery to which Patent Owner does not agree. I believe that some of these
`requests, such as the inspection of third party pumps, we already have an agreement in principal.
`
`In the event that Patent Owner does not agree to some or all of the requested discovery, below is a
`draft communication to the Board. Please provide any revisions by 3:30 PM Central time November
`22, 2019.
`
` # # # #
`
` #
`
`
`Subject: American National Manufacturing v. Sleep Number, IPR2019-00497, -500, and -514
`
`Dear Board:
`
`Petitioner American National Manufacturing Inc. requests a call with the Board seeking authorization
`to file a motion in all three IPRs identified above for additional discovery to rebut Patent Owner’s
`assertions of secondary considerations raised in Patent Owner’s Response. Petitioner met and
`conferred with Patent Owner on ____ and the parties did not arrive at an agreement to the additional
`discovery sought by Petitioner. Petitioner will provide a court reporter for the call.
`
`The parties are available for a conference call with the Board on the following dates and times:
`
`Monday, December 2 from 11 AM to 4 PM Eastern time;
`Tuesday, December 3 from 11 AM to 4 PM Eastern time; and
`Wednesday, December 4 from 11 AM to 4 PM Eastern time.
`
`Brian Bear Of Counsel
`Spencer Fane LLP
`
`
`
`1000 Walnut, Suite 1400 | Kansas City, MO 64106
`O 816.292.8809
`BBear@spencerfane.com | spencerfane.com
`
`1
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`Sleep Number Corp.
`EXHIBIT 2078
`IPR2019-00500
`Page 1
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`

`

`
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`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. IPR2019-00497
`Case No. IPR2019-00500
`Case No. IPR2019-00514
`
`
`
`
`PETITIONER’S PROPOSED ADDITIONAL DISCOVERY REQUESTS
`
`
`
`
`
`Sleep Number Corp.
`EXHIBIT 2078
`IPR2019-00500
`Page 2
`
`

`

`Case No. IPR2019-00514
`Patent No. 5,904,172
`
`
`Petitioner American National Manufacturing Inc. (“ANM” or “Petitioner”)
`
`request that Patent Owner Sleep Number Corporation f/k/a Select Comfort
`
`Corporation (“Patent Owner,” “Sleep Number,” or “You(r)”) requests that produce
`
`the following information and documents within 7 days:
`
`INTERROGATORIES
`
`Interrogatory No. 1: Identify on a quarterly or annual basis the total
`
`expenditures for your “sales and marketing,” as identified in Sleep Number’s 10-K
`
`statements since January 1, 1994.
`
`Interrogatory No. 2: Describe that nature and types of expenditures that are
`
`included in the line item “sales and marketing” as identified in Sleep Number’s 10-
`
`K.
`
` Interrogatory No. 3: Identify on a quarterly or annual basis the total
`
`expenditures for your “Cost of Sales” as identified in Sleep Number’s 10-K
`
`statements since January 1, 1994.
`
`Interrogatory No. 4: Describe that nature and type of expenditures that are
`
`included in the line item “Costs of Sales” as identified in Sleep Number’s 10-K.
`
`2
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`
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`WA 13834712.1
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`Sleep Number Corp.
`EXHIBIT 2078
`IPR2019-00500
`Page 3
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`

`

`Case No. IPR2019-00514
`Patent No. 5,904,172
`
`
`Interrogatory No. 5: Identify on a quarterly or annual basis the total
`
`expenditures for the line item “General and Administrative” as identified in Sleep
`
`Number’s 10-K statements since January 1, 1994.
`
`Interrogatory No. 6: Describe that nature and type of expenditures that are
`
`included in the line item “General and Administrative” as identified in Sleep
`
`Number’s 10-K.
`
`Interrogatory No. 7: Identify on a quarterly or annual basis the total gross
`
`revenue as identified in Sleep Number’s 10-K statements since January 1, 1994.
`
`Interrogatory No. 8: To the extent that it is not included in the above line
`
`items regarding “cost of sales,” “Sales and Marketing,” or “General and
`
`Administrative” line items in Sleep Number’s 10-K statements, identify on a
`
`quarterly or annual basis the total amount expended by Sleep Number for
`
`construction, mortgage, rent, or other expenses associated with Sleep Number retail
`
`stores since January 1, 1994. If these expenses are included in “cost of sales,” “Sales
`
`and Marketing,” or “General and Administrative,” instead please identify the line
`
`item in which it was included.
`
`Interrogatory No. 8: To the extent that it is not included in the above line
`
`items regarding “cost of sales,” “Sales and Marketing,” or “General and
`
`3
`
`
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`WA 13834712.1
`
`Sleep Number Corp.
`EXHIBIT 2078
`IPR2019-00500
`Page 4
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`

`

`Case No. IPR2019-00514
`Patent No. 5,904,172
`
`Administrative” line items in Sleep Number’s 10-K statements, identify on a
`
`quarterly or annual basis the total amount expended by Sleep Number for salaries,
`
`commissions, benefits, and other employment related expenditures for staff and
`
`management associated with Sleep Number retail stores since January 1, 1994. If
`
`these expenses are included in “cost of sales,” “Sales and Marketing,” or “General
`
`and Administrative,” instead please identify the line item in which it was included.
`
`Interrogatory No. 9: To the extent that it is not included in the above line
`
`items regarding “cost of sales,” “Sales and Marketing,” or “General and
`
`Administrative” line items in Sleep Number’s 10-K statements, identify on a
`
`quarterly or annual basis the total amount expended by Sleep Number for
`
`construction, mortgage, rent, or other expenses associated with Sleep Number retail
`
`stores since January 1, 1994. If these expenses are included in “cost of sales,” “Sales
`
`and Marketing,” or “General and Administrative,” instead please identify the line
`
`item in which it was included.
`
`REQUESTS FOR PRODUCTION
`
`Request for Production No. 1: Produce a Microsoft Excel workbook that
`
`contains the information requested above in the interrogatories.
`
`Request for Production No. 2: Produce a business records affidavit from
`
`Sleep Number Corporation’s custodian of records that authenticates the above
`4
`
`
`
`WA 13834712.1
`
`Sleep Number Corp.
`EXHIBIT 2078
`IPR2019-00500
`Page 5
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`

`

`Case No. IPR2019-00514
`Patent No. 5,904,172
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`Microsoft Excel file as a summation of voluminous business records under FRE
`
`1006, or in the alternative, produce a corporate representative who may authenticate
`
`the file, confirm that the content is derived from the business records of Sleep
`
`Number Corporation, and answer questions regarding the same.
`
`Request for Production No. 3: Produce a copy of all source code versions
`
`utilized in the Sleep Number devices which are depicted in Exhibits 2080, 2081,
`
`2082, and 2083 (IPR2019-00517), otherwise known as Exhibits 2059, 2060, 2061
`
`2062 (IPR2019-00497 and IPR2019-00500).
`
`Request for Production No. 4: Produce a copy of all source code versions
`
`utilized in the devices depicted in Exhibits 2043, 2044, 2045, 2046, 2047, 2048,
`
`2049, 2050, 2051, 2052, and 2053 (IPR2019-00514).
`
`Request for Production No. 5: Produce a copy of all source code examined
`
`by John Abraham and George Edwards in connection with their respective
`
`declarations filed in these proceedings.
`
`Request for Production No. 6: Produce a copy of all licenses, covenants not
`
`to sue, and settlement agreements related to U.S. Patent No. 5,904,172, U.S. Patent
`
`No. 8,769,747, and U.S. Patent No. 9,737,154 including but not limited to the
`
`5
`
`
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`WA 13834712.1
`
`Sleep Number Corp.
`EXHIBIT 2078
`IPR2019-00500
`Page 6
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`

`

`Case No. IPR2019-00514
`Patent No. 5,904,172
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`settlement documents related to Select Comfort Corporation v. Tempur Sealy Int'l,
`
`Inc. (Civil No. 13-2451) in the District Court for Minnesota.
`
`REQUEST FOR ADMISSION
`
`Request for Admission No. 1: Admit Sleep Number is the market leader in
`
`the consumer adjustable-firmness air-mattress bed system market.
`
`Request for Admission No. 2: Admit that all documents, things, and
`
`information provided in response to these discovery requests are authentic.
`
`REQUEST FOR DEPOSITION
`
`Request for Deposition No. 1: Produce for deposition a corporate
`
`representative with knowledge sufficient to discuss authenticity, foundation, or
`
`otherwise the context of documents, things, and information provided by Sleep
`
`Number Corporation in response to these discovery requests.
`
`REQUEST FOR INSPECTION
`
`Request for Inspection No. 1: Produce for non-destructive inspection by the
`
`experts retained by ANM, all of the devices that are depicted in Exhibits 2043, 2044,
`
`2045, 2046, 2047, 2048, 2049, 2050, 2051, 2052, and 2053 (IPR2019-00514).
`
`6
`
`
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`WA 13834712.1
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`Sleep Number Corp.
`EXHIBIT 2078
`IPR2019-00500
`Page 7
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`

`

`Case No. IPR2019-00514
`Patent No. 5,904,172
`
`
`Date: November __, 2019
`
`
`
`
`
`
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`
`
`
`
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`
`
`Respectfully Submitted,
`SPENCER FANE LLP
`
`By /s/ .
`Kyle L. Elliott, Reg. No. 39,485
`Kevin S. Tuttle, Reg. No. 52,307
`Brian T. Bear (pro hac vice)
`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
`Telephone: (214) 750-3623
`
`7
`
`
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`WA 13834712.1
`
`Sleep Number Corp.
`EXHIBIT 2078
`IPR2019-00500
`Page 8
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`

`

`Case No. IPR2019-00514
`Patent No. 5,904,172
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies that a copy
`
`of the foregoing PETITIONER’S NOTICE OF DEPOSITION OF GEORGE
`
`EDWARDS is served in its entirety on _________, 2019, by electronic mail, as
`
`authorized by Patent Owner’s Updated Mandatory Notices, upon the following:
`
`Steven A. Moore
`steve.moore@pillsburylaw.com
`PILLSBURY WINTHORP SHAW PITTMAN LLP
`501 West Broadway, Suite 1100
`San Diego, CA 92101
`
`Luke Toft
`ltoft@foxrothschild.com
`Andew Hansen (pro hac vice)
`ahansen@foxrothschild.com
`Archana Nath (pro hac vice)
`anath@foxrothschild.com
`Elizabeth A. Patton (pro hac vice)
`epatton@foxrothschild.com
`FOX ROTHSCHILD LLP
`222 South Ninth Street, Suite 2000
`Minneapolis, MN 55402
`
`Kecia J. Reynolds
`kecia.reynolds@pillsburylaw.com
`PILLSBURY WINTHORP SHAW PITTMAN LLP
`1200 Seventeenth Street, NW
`Washington, DC 20036
`
`8
`
`
`
`WA 13834712.1
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`Sleep Number Corp.
`EXHIBIT 2078
`IPR2019-00500
`Page 9
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`

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`Case No. IPR2019-00514
`Patent No. 5,904,172
`
`
`Date: ____________
`
`
`
`
`
`
` /s/ .
`Kyle L. Elliott (Reg. No. 39,485)
`.
`Attorney for Petitioner
`American National Manufacturing, Inc.
`
`9
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`WA 13834712.1
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`Sleep Number Corp.
`EXHIBIT 2078
`IPR2019-00500
`Page 10
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