Trials@uspto.gov
`571-272-7822
`
`
`
`
`
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`Paper 11
`Entered: August 5, 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 COMPORATION,
`Patent Owner.
`____________
`
`IPR2019-00514
`Patent 5,904,172
`____________
`
`
`
`Before SCOTT A. DANIELS, FRANCES L. IPPOLITO, and
`ALYSSA A. FINAMORE, Administrative Patent Judges.
`
`FINAMORE, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`Paper 11
`Entered: August 5, 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 COMPORATION,
`Patent Owner.
`____________
`
`IPR2019-00514
`Patent 5,904,172
`____________
`
`
`
`Before SCOTT A. DANIELS, FRANCES L. IPPOLITO, and
`ALYSSA A. FINAMORE, Administrative Patent Judges.
`
`FINAMORE, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`
`
`
`IPR2019-00514
`Patent 5,904,172
`
`A. GENERAL INSTRUCTIONS
`1. Request for an Initial Conference Call
`An initial conference call is not scheduled in any of these proceedings.
`A party may request an initial conference call within twenty-five (25) days
`after the institution of trial if there is a need to discuss proposed changes to
`this Order or proposed motions that have not been authorized in this Order
`or other prior Order or Notice. See Office Patent Trial Practice Guide,
`77 Fed. Reg. 48756, 48765–66 (Aug. 14, 2012) (available at
`https://go.usa.gov/xU7GK) (“Practice Guide”) (guidance in preparing for the
`initial conference call).
`A party requesting an initial conference call shall: (a) identify the
`requested relief, e.g., proposed changes to the schedule, proposed motions;
`and (b) propose two or more dates and times when both parties are available
`for the call. When an initial conference call is scheduled in response to a
`request, the parties should be prepared to discuss any concerns relating to the
`schedule in the proceeding.
`2. Protective Order
`No protective order shall apply to any of these proceedings unless the
`parties file one and the Board approves it. The Board encourages the parties
`to adopt the Board’s Default Protective Order if they conclude that a
`protective order is necessary. See Practice Guide, 77 Fed. Reg. at 48771
`(App. B) (the “Default Protective Order”). If the parties choose to propose a
`protective order deviating from the Default Protective Order, they must
`explain why good cause exists to deviate from the Default Protective Order
`and must file as exhibits the proposed protective order and a marked-up
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`IPR2019-00514
`Patent 5,904,172
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`comparison showing the differences between the proposed protective order
`and the Default Protective Order.
`If either party files a motion to seal before entry of a protective order,
`the motion to seal should include as an exhibit a proposed protective order
`that has been discussed with the opposing party and, preferably, be jointly
`proposed. If the protective order is not jointly proposed, the proponent of
`the order should identify where the parties differ in the proposed language of
`the order.
`The Board has a strong interest in the public availability of trial
`proceedings. Redactions to documents filed in any of these proceedings
`should be limited to the minimum amount necessary to protect confidential
`information, and the thrust of the underlying argument or evidence must be
`clearly discernible from the redacted versions. We also advise the parties
`that information subject to a protective order may become public if
`identified in a final written decision in the proceeding, and that a motion to
`expunge the information will not necessarily prevail over the public interest
`in maintaining a complete and understandable file history. See Practice
`Guide, 77 Fed. Reg. at 48761.
`3. Resolution of Disputes
`The Board encourages parties to resolve disputes, including disputes
`relating to discovery, on their own and in accordance with the precepts of
`securing a just, speedy, and inexpensive resolution, as set forth in 37 C.F.R.
`§ 42.1(b). To the extent that a dispute arises between the parties, the parties
`shall meet and confer to resolve such a dispute before contacting the Board.
`If attempts to resolve the dispute fail, a party may request a conference call
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`IPR2019-00514
`Patent 5,904,172
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`with the Board and the other party in order to seek authorization to move for
`relief.
`In any request for a conference call with the Board to resolve a
`dispute, the requesting party shall: (a) certify that it has conferred with the
`other party in an effort to resolve the dispute; (b) identify with specificity
`any issue for which agreement has not been reached; (c) identify the precise
`relief to be sought; and (d) propose two or more specific dates and times at
`which both parties are available for the conference call.
`4. Testimony
`The parties are reminded that the Testimony Guidelines appended to
`the Trial Practice Guide as Appendix D apply to these proceedings. The
`Board may impose an appropriate sanction for failure to adhere to the
`Testimony Guidelines. 37 C.F.R. § 42.12. For example, reasonable
`expenses and attorneys’ fees incurred by any party may be levied on a
`person who impedes, delays, or frustrates the fair examination of a witness.
`Whenever a party submits a deposition transcript as an exhibit, the
`submitting party shall file the full transcript of the deposition rather than
`excerpts of only those portions being cited. After a deposition transcript has
`been submitted as an exhibit, any party who subsequently cites to portions of
`the transcript shall cite to the filed exhibit rather than submitting another
`copy of the same transcript.
`5. Cross-Examination
`Except as the parties might otherwise agree, for each due date:
`Cross-examination ordinarily takes place after any supplemental
`
`evidence is due. 37 C.F.R. § 42.53(d)(2).
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`IPR2019-00514
`Patent 5,904,172
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`Cross-examination ordinarily ends no later than a week before the
`filing date for any paper in which the cross-examination testimony is
`expected to be used. Id.
`6. Motion to Amend
`Patent Owner may file a motion to amend without prior authorization
`from the Board. Nevertheless, Patent Owner must confer with the Board
`before filing such a motion. 37 C.F.R. § 42.121(a). To satisfy this
`requirement, Patent Owner should request a conference call with the Board
`no later than two weeks prior to DUE DATE 1 set forth in the Due Date
`Appendix attached hereto.
`Patent Owner has the option to receive preliminary guidance from the
`Board on its motion to amend. See Notice Regarding a New Pilot Program
`Concerning Motion to Amend Practice and Procedures in Trial Proceedings
`under the America Invents Act before the Patent Trial and Appeal Board,
`84 Fed. Reg. 9497 (Mar. 15, 2019) (“MTA Pilot Program Notice”). If
`Patent Owner elects to request preliminary guidance from the Board on its
`motion, it must do so in its motion to amend filed on DUE DATE 1.
`Any motion to amend and briefing related to such a motion shall
`generally follow the practices and procedures described in MTA Pilot
`Program Notice, unless otherwise ordered by the Board in any of these
`proceedings. The parties are further directed to the Board’s Guidance on
`Motions to Amend in view of Aqua Products (https://go.usa.gov/xU6YV),
`and Lectrosonics, Inc. v. Zaxcom, Inc., Case IPR2018-01129 (Paper 15)
`(PTAB Feb. 25, 2019) (precedential).
`As indicated in the MTA Pilot Program Notice, Patent Owner has the
`option at DUE DATE 3 to file a revised motion to amend, instead of a reply,
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`IPR2019-00514
`Patent 5,904,172
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`as noted above, after receiving Petitioner’s opposition to the original motion
`to amend and/or after receiving the Board’s preliminary guidance, if
`requested. A revised motion to amend must provide amendments,
`arguments, and/or evidence in a manner that is responsive to issues raised in
`the preliminary guidance and/or Petitioner’s opposition.
`If Patent Owner files a revised motion to amend, the Board shall enter
`a revised scheduling order setting the briefing schedule for that revised
`motion and adjusting other due dates as needed. MTA Pilot Program
`Notice, App. 1B.
`As also discussed in the MTA Pilot Program Notice, if the Board
`issues preliminary guidance on the motion to amend and the Patent Owner
`does not file either a reply to the opposition to the motion to amend or a
`revised motion to amend at DUE DATE 3, Petitioner may file a reply to the
`Board’s preliminary guidance, no later than three (3) weeks after DUE
`DATE 3. The reply may only respond to the preliminary guidance. Patent
`Owner may file a sur-reply in response to Petitioner’s reply to the Board’s
`preliminary guidance. The sur-reply may only respond to arguments made
`in the reply and must be filed no later than three (3) weeks after the
`Petitioner’s reply. No new evidence may accompany the reply or the
`sur-reply in this situation.
`7. Oral Argument
`Requests for oral argument must comply with 37 C.F.R. § 42.70(a).
`To permit the Board sufficient time to schedule the oral argument, the
`parties may not stipulate to an extension of the request for oral argument
`beyond the date set forth in the Due Date Appendix.
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`IPR2019-00514
`Patent 5,904,172
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`Unless the Board notifies the parties otherwise, oral argument, if
`requested, will be held at the USPTO headquarters in Alexandria, Virginia.
`The parties should meet and confer, and jointly propose the parties’
`preference at the initial conference call, if requested. Alternatively, the
`parties may jointly file a paper stating their preference for the hearing
`location within one month of this Order. Note that the Board may not be
`able to honor the parties’ preference of hearing location due to, among other
`things, the availability of hearing room resources and the needs of the panel.
`The Board will consider the location request and notify the parties
`accordingly if a request for change in location is granted.
`Seating in the Board’s hearing rooms may be limited, and will be
`available on a first-come, first-served basis. If either party anticipates that
`more than five (5) individuals will attend the argument on its behalf, the
`party should notify the Board as soon as possible, and no later than the
`request for oral argument. Parties should note that the earlier a request for
`accommodation is made, the more likely the Board will be able to
`accommodate additional individuals.
`8. Word Count/Page Limit/Type Face Requirements
`The parties shall comply with 37 C.F.R. § 42.24 and be familiar with
`the Board’s interpretations of that regulation. For example, “[e]xcessive
`wording in figures, drawings or images, deleting spacing between words, or
`using excessive acronyms or abbreviations for word phrases, in order to
`bypass the rules on word count, are not reasonable.” Google Inc. v. Makor
`Issues & Rights Ltd., No. IPR2016-01535, slip op. at 7 (PTAB, Dec. 1,
`2016) (Paper 8). See, e.g., Arctic Cat Inc. v. Polaris Indus. Inc.,
`No. IPR2017-00433 (PTAB, June 22, 2017) (Paper 15); Google Inc. v. Porto
`
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`IPR2019-00514
`Patent 5,904,172
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`Tech. Co. Ltd., No. IPR2016-00022, (PTAB, Nov. 23, 2016) (Paper 25);
`Electro Sci. Indus., Inc. v. Hamamatsu Photonics, K.K.,
`No. IPR2016-01364, slip op. at 1 (PTAB, Jan. 17, 2017) (Paper 8)
`(explaining “our rules impose a page/word limit on all requests for relief”).
`Cutting and pasting text into a document as an image is unreasonable unless
`the text is ancillary to an existing image or the text comprises pre-existing
`labels as part of a figure, or unless any added text is included manually in
`the final word count. The excessive deletion of spaces in citations may be
`deemed inappropriate—the parties are to make reasonable efforts to comply
`with accepted citation formats. See Axon Enter., Inc. v. Digital Ally, Inc.,
`No. IPR2017-00375, slip op. at 2, n.2 (PTAB, June 6, 2017) (Paper 9)
`(cautioning petitioner that the failure to use normal citations in order to
`reduce the word count may result in sanctions). Counsel for both parties
`will review the cited papers above, and by signing the certification under
`37 C.F.R. § 42.24(d), counsel is attesting that any filing they make in the
`proceeding is in compliance with our regulations as interpreted in the above
`cited papers. Failure to comply with these requirements may result in
`expungement of any paper or brief not in compliance and/or sanctions.
`9. Motion for Pro Hac Vice Admission
`The Board may recognize counsel pro hac vice during a proceeding
`upon a showing of good cause. 37 C.F.R. § 42.10(c). The parties are
`authorized in the Notice of Filing Date Accorded to Petition to file motions
`for pro hac vice admission. A pro hac vice motion may be filed no sooner
`than twenty-one (21) days after service of the petition, and any opposition
`must be filed no later than one week after the filing of the underlying
`motion. No reply to any opposition shall be filed unless further authorized.
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`IPR2019-00514
`Patent 5,904,172
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`B. DUE DATES
`This Order sets due dates for the parties to take action after institution
`of the proceeding. The parties may stipulate different dates for DUE
`DATES 1–3, 5, and 6 (earlier or later, but no later than DUE DATE 7). A
`notice of the stipulation, specifically identifying the changed due dates, must
`be promptly filed. Regardless of whether the parties stipulate to a change of
`DUE DATE 4, any request for oral argument must be filed no later than the
`date for DUE DATE 4 set forth in this Order, for the Board’s planning
`purposes. The parties may not stipulate an extension of DUE DATES 4, 7,
`and 8.
`
`In stipulating different dates, the parties should consider the effect
`of the stipulation on times to object to evidence (37 C.F.R. § 42.64(b)(1)),
`to supplement evidence (§ 42.64(b)(2)), to conduct cross-examination
`(§ 42.53(d)(2)), and to draft papers depending on the evidence and
`cross-examination testimony.
`1. DUE DATE 1
`Patent Owner may file—
`a.
`A response to the petition (37 C.F.R. § 42.120). If Patent
`Owner elects not to file a response, Patent Owner must arrange a conference
`call with the parties and the Board. Patent Owner is cautioned that any
`arguments for patentability not raised in the response may be deemed
`waived.
`A motion to amend the patent (37 C.F.R. § 42.121).
`b.
`2. DUE DATE 2
`Petitioner may file a reply to the Patent Owner’s response.
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`IPR2019-00514
`Patent 5,904,172
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`Petitioner may file an opposition to the motion to amend.
`3. DUE DATE 3
`Patent Owner may file a sur-reply to Petitioner’s reply. See Trial
`Practice Guide Update 1, 14–15, available at https://go.usa.gov/xU7GP
`(“Practice Guide Update”); see also Office Patent Trial Practice Guide,
`August 2018 Update, 83 Fed. Reg. 38989 (Aug. 13, 2018) (notifying the
`public of the availability of the Practice Guide Update).
`Patent Owner may file either: (1) a reply to the opposition to the
`motion to amend and, if provided, the Board’s preliminary guidance; or (2) a
`revised motion to amend.
`4. DUE DATE 4
`Either party may file a request for oral argument, which may not be
`extended by stipulation.
`4. DUE DATE 5
`Petitioner may file a sur-reply to Patent Owner’s reply to the
`opposition to the motion to amend. See Practice Guide Update 14–16.
`Either party may file a motion to exclude evidence (37 C.F.R.
`§ 42.64(c)). See Practice Guide Update 16–18.
`5. DUE DATE 6
`Either party may file an opposition to a motion to exclude evidence.
`Either party may request that the Board hold a pre-hearing conference.
`6. DUE DATE 7
`Either party may file a reply to an opposition to a motion to exclude
`evidence.
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`7. DUE DATE 8
`The oral argument, if requested by either party, shall be held on this
`date. Approximately one month prior to the argument, the Board will issue
`an order setting the start time of the hearing and the procedures that will
`govern the parties’ arguments.
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`IPR2019-00514
`Patent 5,904,172
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`DUE DATE APPENDIX
`
`DUE DATE 1 ...................................................................... October 21, 2019
`Patent Owner’s response to the petition
`Patent Owner’s motion to amend the patent
`
`DUE DATE 2 ......................................................................... January 6, 2020
`Petitioner’s reply to Patent Owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ..................................................................... February 19, 2020
`Patent Owner’s sur-reply to reply
`Patent Owner’s reply to Petitioner’s opposition to motion to amend or
`Patent Owner’s revised motion to amend
`
`DUE DATE 4 ............................................................................ March 5, 2020
`Request for oral argument (no stipulated extension allowed)
`DUE DATE 5 .......................................................................... March 19, 2020
`Petitioner’s sur-reply to reply to opposition to motion to amend
`Motion to exclude evidence
`
`DUE DATE 6 .......................................................................... March 26, 2020
`Opposition to motion to exclude
`Request for pre-hearing conference
`
`DUE DATE 7 .............................................................................. April 2, 2020
`Reply to opposition to motion to exclude
`
`DUE DATE 8 ............................................................................ April 16, 2020
`Oral argument (if requested)
`
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`IPR2019-00514
`Patent 5,904,172
`
`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
`
`
`13
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`
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