Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 6
`Entered: March 26, 2019
`
`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.
`____________
`
`Cases1
`IPR2019-00497 (Patent 8,769,747)
`IPR2019-00500 (Patent 9,737,154)
`IPR2019-00514 (Patent 5,904,172)
`
`
`
`
`Before KEN B. BARRETT, SCOTT A. DANIELS, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`1 This Order addresses issues that are the same in all three cases. Therefore,
`we exercise our discretion to issue one Decision to be filed in each case.
`The parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper 6
`Entered: March 26, 2019
`
`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.
`____________
`
`Cases1
`IPR2019-00497 (Patent 8,769,747)
`IPR2019-00500 (Patent 9,737,154)
`IPR2019-00514 (Patent 5,904,172)
`
`
`
`
`Before KEN B. BARRETT, SCOTT A. DANIELS, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`1 This Order addresses issues that are the same in all three cases. Therefore,
`we exercise our discretion to issue one Decision to be filed in each case.
`The parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`
`
`
`
`
`IPR2019-00497 (Patent 8,769,747)
`IPR2019-00500 (Patent 9,737,154)
`IPR2019-00514 (Patent 5,904,172)
`
`
`Patent Owner requested, by several emails dated January 11, 2019,
`January 16, 2019, and March 13, 2019, a telephone conference with the
`Board seeking guidance as to Patent Owner’s assertion that each of the
`Petitions in the above-captioned cases are defective because service of the
`Petitions was improper.2 Patent Owner’s counsel contended in its third
`email of March 13, 2019 that because it disputed service of process, no
`mandatory notices were due and that the filing dates of the Petitions should
`be rescinded. Following the third email, the Board requested that Patent
`Owner provide relevant statutory and regulatory provisions and case law
`supporting its argument with respect to service of process and the purported
`defects in the Petitions. Patent Owner’s counsel subsequently provided via
`email on March 19, 2019, citations to certain rules and PTAB cases upon
`which it relies for its position.
`A conference call including Judges Daniels, Barrett, and Ippolito, as
`well as, among others, Patent Owner’s counsel, Mr. Steve Moore, and
`Petitioner’s counsel, Mr. Kyle Elliot, was conducted on March 20, 2019.
`During the call Mr. Moore explained that he did not file mandatory notices
`within the time proscribed by 37 C.F.R. § 42.8(a)(3) out of concern that
`filing such notices was an acknowledgement or acquiescence to service of
`process, and that Patent Owner did not concede that service of the Petitions
`was proper in these proceedings. The Board explained that mandatory
`notices, are in fact mandatory, so that the Board has knowledge of who
`represents Patent Owner in these proceedings and can appropriately and
`
`
`2 Patent Owner’s first two emails were sent to the Board prior to the cases
`being assigned to a panel.
`
`
`
`2
`
`
`
`IPR2019-00497 (Patent 8,769,747)
`IPR2019-00500 (Patent 9,737,154)
`IPR2019-00514 (Patent 5,904,172)
`timely communicate with the correct legal representative of the Patent
`Owner. We noted that we will not consider the filing of the mandatory
`notices as waiver of any argument that Patent Owner might make in this
`proceeding regarding the assertion of improper service of process. Patent
`Owner’s counsel was instructed to file the appropriate Mandatory notices by
`close of business March 21, 2019.
`Patent Owner’s counsel, Mr. Moore, asserted during the call that in
`captioning the Petitions with Patent Owner’s previous name, “Select
`Comfort Corporation,” Petitioner failed to properly serve the correct entity.
`Also, Mr. Moore argued that Petitioner failed to provide service at the
`proper correspondence address of record as required under 37 C.F.R.
`§ 42.105(a). In view of these deficiencies, Mr. Moore contends that the
`Board should dismiss the current Petitions and that Petitioner cannot, now,
`refile, and properly serve Patent Owner within the 1-year time bar following
`service of process in the underlying district court litigation under 35 U.S.C.
`§ 315(b).3
`Petitioner’s counsel, Mr. Elliot, argued that the correct entity was
`properly served, namely that “Select Comfort Corporation” was the same
`corporate entity as “Sleep Number Corporation” is now, and considering that
`this was simply a name change effected in 2017, not a corporate
`restructuring, reorganization, or substantive change in corporate entity. Mr.
`Elliot argued that the proper recourse was to allow Petitioner to file a motion
`
`
`3The parties explained that litigation in the United States District Court
`Central District of California, Case No.: 5:18-cv-00357-AB-SP, is currently
`stayed, pending the outcome of the Board’s relevant decisions and
`determinations in these IPR’s with regards to filing dates and institution of
`inter partes review.
`
`
`
`3
`
`
`
`IPR2019-00497 (Patent 8,769,747)
`IPR2019-00500 (Patent 9,737,154)
`IPR2019-00514 (Patent 5,904,172)
`to correct this clerical defect under 37 C.F.R. § 42.104(c), so that the case
`headings reflect the current name of Patent Owner–Sleep Number
`Corporation. Mr. Elliot argued further that the appropriate representatives at
`the correct correspondence addresses, were in fact served, namely counsel as
`listed in the Office’s Patent Assignments database as the proper
`correspondence address of record, as well as counsel of record handling the
`underlying litigation in the district court litigation of the patents at issue in
`these proceedings.
`After brief discussions relating to service of process under 37 C.F.R.
`§§ 42.105–106 and a recap of certain PTAB decisions relating to service, we
`instructed Patent Owner to submit its arguments relating to insufficiency of
`service of process in its Patent Owner Preliminary Response. We also
`granted Petitioner a 10-page Reply to Patent Owner’s Preliminary Response
`in each of these proceedings, due two weeks following the filing of the
`Preliminary Responses for each respective case, and addressing only the
`issue of service and any issues relating to service of process raised in the
`Patent Owner Preliminary Response. No sur-reply by Patent Owner is
`authorized.
`
`It is
`ORDERED that Patent Owner shall file its Mandatory Notices under
`37 C.F.R. § 42.8(a)(3).
`FURTHER ORDERED that Patent Owner will submit its arguments
`relating to insufficiency of service of process in its respective Patent Owner
`Preliminary Responses.
` FURTHER ORDERED that Petitioner is authorized a 10 page Reply,
`due two weeks following the respective filing date of each Preliminary
`
`
`
`4
`
`
`
`IPR2019-00497 (Patent 8,769,747)
`IPR2019-00500 (Patent 9,737,154)
`IPR2019-00514 (Patent 5,904,172)
`Response, and addressing only the issue of service and issues relating to
`service of process raised in the Patent Owner Preliminary Response.
`
`For PETITIONER:
`
`Kyle L. Elliott
`Kevin S. Tuttle
`Jaspal S. Hare
`SPENCER FANE LLP
`kelliott@spencerfane.com
`ktuttle@spencerfane.com
`jhare@spencerfane.com
`
`For PATENT OWNER:
`
`Steven A. Moore
`Kecia J. Reynolds
`Pillsbury Winthrop Shaw Pittman LLP
`steve.moore@pillsburylaw.com
`kecia.reynolds@pillsburylaw.com
`
`Luke Toft
`Fox Rothschild LLP
`ltoft@foxrothschild.com
`
`
`
`
`
`5
`
`
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