`
`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. IPR2019-00514
`Patent No. 5,904,172
`____________
`
`
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`
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`PATENT OWNER’S REQUEST FOR ORAL ARGUMENT
`
`
`
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`Case No. IPR2019-00514
`Patent No. 5,904,172
`
`
`
`Pursuant to the March 5, 2020, Revised Scheduling Order (Paper 77) and 37
`
`C.F.R. § 42.70(a), Patent Owner Sleep Number Corporation f/k/a Select Comfort
`
`Corporation (“Patent Owner” or “Sleep Number”), respectfully requests oral
`
`argument in the above-referenced proceeding.
`
`More specifically, Patent Owner requests that oral argument in each of the
`
`following related proceedings, all currently scheduled for May 20, 2020 (if
`
`requested), occur at the same time: IPR2019-00497 (related to USPN 8,769,747);
`
`IPR2019-00500 (related to USPN 9,737,154); and IPR2019-00514 (related to
`
`USPN 5,904,172). IPR2019-00497, -00500, and -00514 all involve related patents,
`
`two of which are in the same patent family, and the third of which is incorporated
`
`by reference in the other two. Further, one of the prior art references asserted in
`
`IPR2019-00497 and IPR2019-00500 is the challenged patent in IPR2019-00514.
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`Given the scope of issues and significant overlap between these proceedings, Patent
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`Owner respectfully requests 150 minutes (delineated below) for the three
`
`proceedings in a combined hearing over the course of at least one day if not two
`
`days given the multitude of patents and motions at issue. Additionally, Patent
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`Owner respectfully requests to reserve a portion of its time for a brief sur-rebuttal
`
`to Petitioner’s rebuttal.
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`1
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`
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`Case No. IPR2019-00514
`Patent No. 5,904,172
`
`
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`Patent Owner proposes as follows: (1) that arguments on IPR2019-00514
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`take place first, for a period of 60 minutes allotted to each side; (2) that arguments
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`on IPR2019-00497 and IPR2019-00500 take place second, and conjunctively, for
`
`a period of 90 minutes allotted to each side; and (3) that arguments on the motions
`
`to exclude in each proceeding take place conjunctively but separately from the
`
`foregoing (if unresolved and intended to be heard).
`
`With respect to the order of arguments, it is efficient and appropriate to
`
`address arguments as to IPR2019-00514 first because it involves the earliest patent
`
`in time (the ‘172 Patent), because the ‘172 Patent is incorporated by reference into
`
`both the ‘747 and ‘154 Patents at issue in the other two proceedings, and because
`
`the ‘172 Patent is asserted as a prior art reference in the other two proceedings. It
`
`is efficient and appropriate to address arguments on IPR2019-00497 and IPR2019-
`
`00500 second, and conjunctively, because the ‘747 and ‘154 Patents are in the same
`
`family, because they stem from the same patent application, because they have
`
`similar disclosures and similar claims, because the Petitions involve the assertion
`
`of identical prior art references, and because both patents are subject to motions to
`
`amend involving similar claim amendments. Moreover, by addressing the ‘172
`
`Patent first, the parties will need to spend less time discussing its disclosures in the
`
`later oral argument on the ‘154 and ‘747 Patents. Lastly, it is appropriate that
`
`2
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`
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`Case No. IPR2019-00514
`Patent No. 5,904,172
`
`
`arguments on the motions to exclude in all three proceedings, if unresolved and
`
`intended to be heard, take place separately and conjunctively because there will
`
`likely be substantial overlap between them.
`
`With respect to time limits, Patent Owner respectfully requests that the
`
`length of oral argument to address the Petition in IPR2019-00514 (instituted on
`
`thirteen different grounds utilizing at least eight different references) be the
`
`ordinary 60 minutes per side, as stated in the Board’s Trial Practice Guide.1
`
`However, for the proposed consolidated oral argument in IPR2019-00497 and
`
`IPR2019-00500, Patent Owner respectfully requests that the length of oral
`
`argument be a combined 90 minutes per side (rather than the ordinary 60 minutes
`
`each for a total of 120 minutes). This would allow both sides to conjunctively
`
`address both the Petitions and Motions to Amend (involving six obviousness
`
`grounds utilizing at least eight references as well as arguments related to written
`
`description, enablement, and indefiniteness), which will result in a savings of total
`
`time.
`
`
`1 See Trial Practice Guide Update (August 2018) at pg. 19, available at
`
`https://www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_Practic
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`e_Guide.pdf.
`
`3
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`
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`Case No. IPR2019-00514
`Patent No. 5,904,172
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`
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`Patent Owner and Petitioner have met and conferred and agree that each side
`
`be given 60 minutes for IPR2019-00514 but otherwise do not agree as to the
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`foregoing order of arguments and timetables. Patent Owner is willing to further
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`confer with Petitioner in the event the Board requests it.
`
`In accordance with 37 C.F.R. § 42.70(a), Patent Owner specifies the
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`following issues to be addressed with respect to IPR2019-00497, IPR2019-00500,
`
`and IPR2019-00514 during oral argument:
`
`1.
`
`2.
`
`3.
`
`The proper standard for a person of ordinary skill in the art.
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`The state of the prior art at the time of the respective inventions.
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`The proper construction of several terms in the claims of the
`
`respective patents.
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`4.
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`The validity of the respective patents, including the failure of
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`Petitioner to meet its burden of proving the claims of the patents as obvious over
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`the references and combinations thereof cited in the respective Petitions, (see
`
`IPR2019-00497, Paper 2; IPR2019-00500, Paper 2; IPR2019-00514, Paper 2), and
`
`including Patent Owner’s rebuttal evidence, such as on secondary considerations.
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`5.
`
`As proposed in Patent Owner’s Revised Motion to Amend in
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`IPR2019-00497 and Motion to Amend in IPR2019-00500, the non-obviousness of
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`4
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`
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`Case No. IPR2019-00514
`Patent No. 5,904,172
`
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`substitute claims 20-32 in IPR2019-00497 (see Paper 81) and of substitute claims
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`23-41 in IPR2019-00500 (see Paper 42).
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`6.
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`The exclusion of certain evidence for the reasons set forth in Patent
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`Owner’s motions to exclude in each proceeding, which are forthcoming.
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`7.
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`Any motions to exclude filed by Petitioner, other issues raised in
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`papers yet to be filed, or any other issues identified by Petitioner for oral argument.
`
`
`Dated: April 8, 2020
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`
`
`
`
`Respectfully submitted,
`
`
`
`
`By: /s/ Luke Toft
`Luke Toft (Reg. No. 75,311)
`Andrew Hansen (pro hac vice)
`Archana Nath (pro hac vice)
`Elizabeth A. Patton (pro hac vice)
`FOX ROTHSCHILD LLP
`222 South Ninth Street, Suite 2000
`Minneapolis, MN 55402
`Telephone: (612) 607-7000
`Facsimile: (612) 607-7100
`ltoft@foxrothschild.com
`ahansen@foxrothschild.com
`anath@foxrothschild.com
`epatton@foxrothschild.com
`
`Steven A. Moore (Reg. No. 55,462)
`ZHONG LUN LAW FIRM LLP
`1717 Kettner Boulevard, Suite 200
`San Diego, CA 92101
`Telephone: (323) 930-5690
`Facsimile: (323) 930-5693
`stevemoore@zhonglun.com
`
`
`5
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`
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`Case No. IPR2019-00514
`Patent No. 5,904,172
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`
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`
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`
`
`Kecia J. Reynolds (Reg. No. 47,021)
`PILLSBURY WINTHROP SHAW PITTMAN LLP
`1200 Seventeenth Street, NW
`Washington, DC 20036
`Telephone: (202) 663-8000
`Facsimile: (202) 663-8007
`kecia.reynolds@pillsburylaw.com
`
`Attorneys for Patent Owner
`Sleep Number Corporation
`
`
`
`6
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`
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`Case No. IPR2019-00514
`Patent No. 5,904,172
`
`
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`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR § 42.6(e), the undersigned hereby certifies that on April
`
`8, 2020, the foregoing Patent Owner’s Request for Oral Argument was served via
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`e-mail, as authorized by the Petitioner, at the following email correspondence
`
`address of record as follows:
`
`Kyle L. Elliott
`kelliott@spencerfane.com
`
`Kevin S. Tuttle
`ktuttle@spencerfane.com
`
`Brian T. Bear
`bbear@spencerfane.com
`
`Lori J. Allee
`jallee@spencerfane.com
`SPENCER FANE LLP
`1000 Walnut Street, Suite 1400
`Kansas City, MO 64106
`
`Jaspal S. Hare
`jhare@spencerfane.com
`SPENCER FANE LLP
`2200 Ross Avenue
`Suite 4800 West
`Dallas, TX 75201
`
`
`Dated: April 8, 2020
`
`
`
`
`
`/s/ Luke Toft
`Luke Toft (Reg. No. 75, 311)
`Counsel for Patent Owner
`
`
`
`
`
`7
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