UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AMERICAN NATIONAL MANUFACTURING INC.,
`Petitioner,
`v.
`SELECT COMFORT CORPORATION,
`Patent Owner.
`
`Case No. IPR2019-00514
`Patent 5,904,172
`
`PATENT OWNER’S MANDATORY NOTICES
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AMERICAN NATIONAL MANUFACTURING INC.,
`Petitioner,
`v.
`SELECT COMFORT CORPORATION,
`Patent Owner.
`
`Case No. IPR2019-00514
`Patent 5,904,172
`
`PATENT OWNER’S MANDATORY NOTICES
`
`
`
`The named patent owner in the above-referenced proceeding, Select
`Comfort Corporation, is not the patent owner of U.S. Patent No. 5,904,172 (“the
`‘172 Patent”). Instead, Sleep Number Corporation is the patent owner (“Patent
`Owner”). In light of the foregoing, Patent Owner provides these notices without
`waiving any of Patent Owner’s rights, including but not limited to its right to
`service of process or to contest personal jurisdiction or standing.
`1.
`Real Party in Interest (§ 42.8(b)(1)).
`The real parties in interest are SLEEP NUMBER CORPORATION, located
`at 1001 Third Ave. South Minneapolis, MN 55404; SELECT COMFORT RETAIL
`CORPORATION, located at 1001 Third Ave. South Minneapolis, MN 55404;
`SELECT COMFORT SC CORPORATION, located at 1001 Third Ave. South
`Minneapolis, MN 55404; SELECT COMFORT CANADA HOLDING INC.,
`located at 1001 Third Ave. South Minneapolis, MN 55404; SELECT COMFORT
`COSC CANADA ULC, located at 3400, 350-7th Ave. SW Calgary, Alberta,
`T2P3N9; and SELECT COMFORT LIMITED, located at 100 New Bridge Street,
`London, UK EC4V 6JA.
`As detailed above, Petitioner improperly named SELECT COMFORT
`CORPORATION as
`the patent owner.
` However, SLEEP NUMBER
`CORPORATION is the Patent Owner.
`2.
`Related Matters (§ 42.8(b)(2)).
`A. Matters Involving Petitioner.
`On December 29, 2017, Patent Owner filed complaints against Petitioner and
`a related entity in the Northern District of Texas alleging infringement of U.S.
`Patent No. (“USPN”) 9,737,154 (“the ‘154 Patent,” which Petitioner refers to as
`
`
`
`“Mahoney”), USPN 8,769,747 (“the ‘747 Patent,” which Petitioner also refers to as
`“Mahoney”), and USPN 5,904,172 (“the ‘172 Patent,” which Petitioner refers to as
`“Gifft”): Sleep Number Corp. v. Am. Nat’l Mfg., Inc., No. 3:17-cv-03517-B (N.D.
`Tex.) and Sleep Number Corp. v. Sizewise Rentals, LLC, 3:17-cv-03518-N (N.D.
`Tex.) (“the Texas Actions”). On February 20, 2018, Patent Owner voluntarily
`dismissed the Texas Actions and refiled its complaints in the Central District of
`California: Sleep Number Corp. v. Am. Nat’l Mfg., Inc., No. 5:18-cv-00357-AB SP
`(C.D. Cal.) and Sleep Number Corp. v. Sizewise Rentals, LLC, 5:18-cv-00356-
`AB SP (C.D. Cal.) (“the California Actions”). The California Actions are currently
`stayed.
`Petitioner has filed IPR Petitions against each of the patents asserted in the
`Texas and California Actions. On December 21, 2018, Petitioner filed IPR2019-
`00497 against the ‘747 Patent and IPR2019-00500 against the ‘154 Patent. On
`December 29, 2018, Petitioner filed IPR2019-00514 against the ‘172 Patent (the
`instant action).
`Previously, Patent Owner filed a complaint against Petitioner and a related
`entity with the International Trade Commission (“ITC”) on October 16, 2015,
`where Patent Owner asserted infringement of the ‘172 Patent: Certain Air Mattress
`Systems, Components Thereof, and Methods of Using the Same, ITC Inv. No. 337-
`TA-971 (USITC Oct. 16, 2015). The ITC ultimately determined that Petitioner and
`the related entity infringed certain claims of the ‘172 Patent. In addition, Petitioner
`and a related entity previously filed an antitrust complaint against Patent Owner, in
`which Petitioner alleged the ‘172 Patent was invalid: Am. Nat’l Mfg. v. Select
`
`
`
`Comfort Corp., et al., No. 16-cv-00582-GHK-JC (C.D. Cal., filed March 30, 2016).
`That complaint was later dismissed.
`B. Other Matters.
`On August 29, 2012, a Reexamination was anonymously requested on the
`‘172 Patent, which resulted in the issuance of a Reexamination Certificate on
`January 3, 2014: Reexamination Control No. 90/012456. In addition, an IPR
`Petition was previously filed against the ‘172 Patent (IPR2014-01419): Tempur
`Sealy Int’l Inc. v. Select Comfort Corp., IPR2014-01419 (PTAB, filed August 29,
`2014). That IPR Petition was not instituted.
`Additionally, the ‘172 Patent was previously involved in the following, now
`closed, matters: Select Comfort Corp. v. The Sleep Better Store, LLC, No. 0:12-cv-
`1148 (D. Minn., filed May 11, 2012); Select Comfort Corp. v. Halcyon
`Waterspring, No. 0:03:cv-3324 (D. Minn. filed June 3, 2003); and Select Comfort
`Corp. v. Tempur Sealy Int’l, Inc. d/b/a Tempur-Pedic, No. 0:14-cv-00245
`(D. Minn. filed Jan. 24, 2014).
`C.
`Priority.
`The ‘154 and ‘747 Patents and pending Application No. 15/662,623 (the
`‘623 App.”) claim priority to U.S. Patent Application 12/936,084, which was filed
`October 1, 2010, and which is a National Stage Entry of Application No.
`PCT/US2008/059409, which was filed on April 4, 2008. The ‘154 Patent and
`pending ‘623 App. claim priority to Application No. 14/283,675, which was filed
`on May 21, 2014. The ‘172 Patent claims priority to U.S. Patent Application No.
`08/901,144, which was filed on July 28, 1997.
`
`
`
`3.
`
`Designation of Lead and Backup Counsel (§ 42.8(b)(3)).
`
`Lead Counsel
`Steven A. Moore, (Reg. No. 55,462)
`
`Backup Counsel
`Luke Toft (Reg. No. 75,311)
`
`Steve.moore@pillsburylaw.com
`
`LToft@Foxrothschild.com
`
`Pillsbury Winthrop Shaw Pittman LLP
`501 West Broadway, Suite 1100
`San Diego, CA 92101
`Telephone: (619) 234-5000
`Facsimile: (619) 236-1995
`
`Fox Rothschild LLP
`Campbell Mithun Tower, Suite 2000
`222 South Ninth Street
`Minneapolis, MN 55402
`Telephone: (612) 607-7000
`Facsimile: (612) 607-7100
`
`Backup Counsel
`Kecia J. Reynolds (Reg. No. 47,021)
`
`kecia.reynolds@pillsburylaw.com
`
`Pillsbury Winthrop Shaw Pittman LLP
`1200 Seventeenth Street, NW
`Washington, DC 20036
`Telephone: (202) 663-8000
`Facsimile: (202) 663-8007
`Additional counsel for Patent Owner may seek pro hac vice admission for the
`three IPR Petitions referenced herein.
`4.
`Service Information.
`Service on Patent Owner may be made by electronic mail to Patent
`Owner’s counsel at the email addresses above. Alternatively, service may be
`made by mail or hand delivery to: Fox Rothschild LLP, Campbell Mithun Tower,
`Suite 2000, 222 South Ninth Street, Minneapolis, MN 55402 and Pillsbury
`Winthrop Shaw Pittman LLP, 1200 Seventh Street, NW, Washington, DC 20036.
`The fax numbers for lead and backup counsels are reflected above.
`
`
`
`Dated: March 21, 2019
`
`Respectfully Submitted,
`
`By: s/ Luke D. Toft
`Luke Toft
`Reg. No. 75,311
`Fox Rothschild LLP
`Campbell Mithun Tower, Suite 2000
`222 South Ninth Street
`Minneapolis, MN 55402-3338
`Telephone: (612) 607-7336
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify, pursuant to 37 CFR § 42.6, that on March 25, 2019, a true
`and correct copy of the foregoing Patent Owner’s Mandatory Notices for
`IPR2019-00514 is being served via e-mail as authorized by the Petitioner at the
`following e-mail addresses:
`
`Kyle L. Elliott
`kelliott@spencerfane.com
`
`Kevin S. Tuttle
`ktuttle@spencerfane.com
`
`Jaspal S. Hare
`jhare@spencerfane.com
`
`Lori J. Allee
`jallee@spencerfnae.com
`
`Dated: March 25, 2019
`
`By: s/ Luke D. Toft
`Luke Toft
`Reg. No. 75,311
`Fox Rothschild LLP
`Campbell Mithun Tower, Suite 2000
`222 South Ninth Street
`Minneapolis, MN 55402-3338
`Telephone: (612) 607-7336
`
`
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