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
`____________
`
`PATENT OWNER’S OBJECTIONS TO PETITIONER’S EVIDENCE
`PURSUANT TO 37 C.F.R. § 42.64(b)(1)
`
`
`____________
`
`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
`____________
`
`PATENT OWNER’S OBJECTIONS TO PETITIONER’S EVIDENCE
`PURSUANT TO 37 C.F.R. § 42.64(b)(1)
`
`
`
`Case No. IPR2019-00514
`Patent No. 5,904,172
`
`Pursuant to 37 C.F.R. § 42.64 and the Federal Rules of Evidence, as applied
`by the Board, Patent Owner Sleep Number Corporation (“Sleep Number”) provides
`the following objections to evidence submitted by Petitioner American National
`Manufacturing Inc. (“ANM”). These objections are timely served within ten (10)
`business days.
`Sleep Number serves ANM with these objections to provide notice that Sleep
`Number may move to exclude the challenged evidence under 37 C.F.R. § 42.64(c)
`unless ANM cures the defects associated with the challenged evidence identified
`below. In addition, Sleep Number reserves the right to present further objections to
`this or additional evidence submitted by ANM, as allowed by the applicable rules or
`other authority.
`Exhibit 1002 – “File History of U.S. Patent No. 5,904,172”
`Sleep Number objects to Exhibit 1002 under Fed. R. Evid. 106 because ANM
`did not include the entire file history and the entire file history of U.S. Patent No.
`5,904,172 “ought in fairness [] be considered.”
`Exhibit 1003 – “File History of Re-Examination No. 90-012456 of U.S.
`Patent No. 5,904,172”
`Sleep Number objects to Exhibit 1003 under Fed. R. Evid. 106 because ANM
`did not include the entire file history and the entire file history of Reexamination No.
`90-12456 of U.S. Patent No. 5,904,172 “ought in fairness [] be considered.”
`
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`Case No. IPR2019-00514
`Patent No. 5,904,172
`
`Exhibit 1005 – “Opening Expert Report of Dr. Robert Giachetti”
`Sleep Number objects to Exhibit 1005 to the extent the testimony provided by
`Dr. Giachetti is not cited to or relied upon by the Petition. See 37 C.F.R. § 42.104
`(In the Petition, “[t]he Board may exclude or give no weight to the evidence where
`a party has failed to state its relevance or to identify specific portions of the evidence
`that support the challenge.”); Actifo, Inc. v. Delphix Corp., IPR2015-00108, Paper
`56 at 57 (PTAB Apr. 29, 2016) (excluding evidence not relied upon by the Petition);
`SK Innovation Co., Ltd. v. Celgard, LLC, IPR2014-00679, Paper 58 at 49 (PTAB
`Sept. 25, 2015) (same). For example, paragraphs 16–18, 20–26, 28–34, 39–41, 43–
`44, 62–79, 91–93, 95, 98–145, 157, 162–177, 194–198, 203–204, 222–224, 238,
`260–269, 271, 278–279, 297–318, 329, 340–349, and 355–356 of Dr. Giachetti’s
`report are not cited to or relied upon in the Petition. This failure cannot be cured
`because Petitioner is now time-barred from filing another petition under 35 U.S.C.
`§ 315(b). Accordingly, this testimony is also irrelevant, misleading, and confusing
`under Fed. R. Evid. 401–403.
`Sleep Number further objects to Exhibit 1005 as including “[e]xpert testimony
`that does not disclose the underlying facts or data on which the opinion is based” in
`violation of 37 C.F.R. § 42.55(a) and Fed. R. Evid. 702–703 and 705. For example,
`Dr. Giachetti testifies that “Vrzalik discloses a low air loss bed having
`compartmentalized air bags (or bladders), and a means (including valves, pump
`means, and associated circuitry) for inflating said bags.” See Ex. 1005 at ¶ 217. But
`Dr. Giachetti provides no citations in support of such an argument. In another
`
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`Case No. IPR2019-00514
`Patent No. 5,904,172
`
`example, Dr. Giachetti testifies that “[m]anifolds are common pieces of equipment
`today and they were common pieces of equipment well before the ‘172 application.
`They are common in hydraulic applications, and any application where one is
`interested in dividing or adding air streams” but fails to provide any underlying facts
`or data to support such an opinion. See Ex. 1005 at ¶ 19. Sleep Number further
`objects to other portions of Exhibit 1005 to the extent it does not adequately disclose
`the underlying facts or data on which statements and/or the opinion is based, either
`by (1) providing no citations or (2) failing to cite where in a reference the disclosure
`supporting the statement and/or opinion can be found, i.e., by providing pin cites.
`See Ex. 1005 at ¶¶ 17–26, 39, 42, 45, 47, 50, 54–55, 57, 59, 61–62, 82–84, 90, 94–
`97, 148, 152, 182–183, 191–192, 211, 215, 217, 220, 231, 241, 254, 270, 272–273,
`277, 280–282, 289, 291, 319, 331, and 350. Indeed, Dr. Giachetti relies on quotes
`or concepts disclosed in books and other purported prior art but cites generally to the
`entire book or reference instead of providing any pin cites and without providing the
`book or reference. See, e.g., Ex. 1005 at ¶¶ 22–26, and 192. In addition, Dr.
`Giachetti fails to provide adequate citations for several statements and/or opinions,
`i.e., the citations fail to provide support for the statement and/or opinion being
`proffered. Ex. 1005 at ¶¶ 46, 57, 59, 82, 86–87, 89–90, 150–151, 180–181, 218–
`219, 234, and 239. This is also true for any analysis that cites to paragraphs
`identified herein as deficient. See, e.g., Ex. 1005 at ¶ 88 (citing to ¶¶ 57–61, of which
`paragraphs 57, 59, and 61 are identified above as deficient). Because many
`statements and opinions in Exhibit 1005 are unsupported and conclusory, Sleep
`
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`Case No. IPR2019-00514
`Patent No. 5,904,172
`
`Number further objects to this testimony as irrelevant, misleading, unduly
`prejudicial, and confusing under Fed. R. Evid. 401–403.
`Sleep Number objects to Exhibit 1005 to the extent it references unspecified
`other arguments to support a position. See Ex, 1005 at ¶¶ 53, 102, 231, and 282.
`Accordingly, this testimony is misleading and confusing under Fed. R. Evid. 401–
`403.
`
`Sleep Number further objects to the extent Exhibit 1005 relies on evidence
`not filed in this proceeding in violation of 37 C.F.R. § 42.63(a). See Ex. 1005 at ¶¶
`17, 19–25, and 192. Similarly, Sleep Number objects to the pictures on pages 15
`and 19 of Exhibit 1005 under Fed. R. Evid. 1002, which requires “an original
`writing, recording, or photograph … in order to prove its content.” The images on
`pages 15 and 19 are purported to be images from books, but ANM has failed to
`provide a copy of these books. Sleep Number further objects to reliance on such
`evidence under Fed. R. Evid. 901–902 because ANM “must produce evidence
`sufficient to support a finding that the item is what the proponent claims it is” and
`ANM has not made a sufficient showing that the references contain content that
`existed as of a particular date as is evidently claimed. Accordingly, Sleep Number
`also objects to the reliance on such evidence as misleading, prejudicial, and
`confusing the issues under Fed. R. Evid. 401–403.
`Exhibit 1013 – “U.S. Patent 3,155,991 (‘Dunham’)”
`Sleep Number objects to Exhibit 1013 to the extent the exhibit is not cited to
`or relied upon by the Petition. For example, Exhibit 1013 is only cited in paragraph
`
`4
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`Case No. IPR2019-00514
`Patent No. 5,904,172
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`105 of Exhibit 1005, which as explained above is not cited in support of any
`argument in the Petition. See 37 C.F.R. § 42.104 (In the Petition, “[t]he Board may
`exclude or give no weight to the evidence where a party has failed to state its
`relevance or to identify specific portions of the evidence that support the
`challenge.”); Actifo, Inc. v. Delphix Corp., IPR2015-00108, Paper 56 at 57 (PTAB
`Apr. 29, 2016) (excluding evidence not relied upon by the Petition); SK Innovation
`Co., Ltd. v. Celgard, LLC, IPR2014-00679, Paper 58 at 49 (PTAB Sept. 25, 2015)
`(same). Accordingly, this testimony is irrelevant, misleading, and confusing under
`Fed. R. Evid. 401–403.
`Exhibit 1015 – “U.S. Patent 5,494,074 (‘Ramacier’)”
`Sleep Number objects to Exhibit 1015 to the extent the exhibit is not cited to
`or relied upon by the Petition or cited in any other document on which the Petition
`relies. See 37 C.F.R. § 42.104 (In the Petition, “[t]he Board may exclude or give no
`weight to the evidence where a party has failed to state its relevance or to identify
`specific portions of the evidence that support the challenge.”); Actifo, Inc. v. Delphix
`Corp., IPR2015-00108, Paper 56 at 57 (PTAB Apr. 29, 2016) (excluding evidence
`not relied upon by the Petition); SK Innovation Co., Ltd. v. Celgard, LLC, IPR2014-
`00679, Paper 58 at 49 (PTAB Sept. 25, 2015) (same). Accordingly, this testimony
`is irrelevant, misleading, and confusing under Fed. R. Evid. 401–403.
`Exhibit 1016 – “U.S. Patent 4,540,154”
`Sleep Number objects to Exhibit 1016 to the extent the exhibit is not cited to
`or relied upon by the Petition. For example, Exhibit 1016 is only cited in paragraph
`
`5
`
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`Case No. IPR2019-00514
`Patent No. 5,904,172
`
`26 of Exhibit 1005, which as explained above is not cited in support of any argument
`in the Petition. See 37 C.F.R. § 42.104 (In the Petition, “[t]he Board may exclude
`or give no weight to the evidence where a party has failed to state its relevance or to
`identify specific portions of the evidence that support the challenge.”); Actifo, Inc.
`v. Delphix Corp., IPR2015-00108, Paper 56 at 57 (PTAB Apr. 29, 2016) (excluding
`evidence not relied upon by the Petition); SK Innovation Co., Ltd. v. Celgard, LLC,
`IPR2014-00679, Paper 58 at 49 (PTAB Sept. 25, 2015) (same). Accordingly, this
`testimony is irrelevant, misleading, and confusing under Fed. R. Evid. 401–403.
`Exhibit 1017 – “U.S. Patent 2,364,812”
`Sleep Number objects to Exhibit 1017 to the extent the exhibit is not cited to
`or relied upon by the Petition. For example, Exhibit 1017 is only cited in paragraph
`26 of Exhibit 1005, which as explained above is not cited in support of any argument
`in the Petition. See 37 C.F.R. § 42.104 (In the Petition, “[t]he Board may exclude
`or give no weight to the evidence where a party has failed to state its relevance or to
`identify specific portions of the evidence that support the challenge.”); Actifo, Inc.
`v. Delphix Corp., IPR2015-00108, Paper 56 at 57 (PTAB Apr. 29, 2016) (excluding
`evidence not relied upon by the Petition); SK Innovation Co., Ltd. v. Celgard, LLC,
`IPR2014-00679, Paper 58 at 49 (PTAB Sept. 25, 2015) (same). Accordingly, this
`testimony is irrelevant, misleading, and confusing under Fed. R. Evid. 401–403.
`Exhibit 1018 – “U.S. Patent 2,713,986”
`Sleep Number objects to Exhibit 1018 to the extent the exhibit is not cited to
`or relied upon by the Petition. For example, Exhibit 1018 is only cited in paragraph
`
`6
`
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`Case No. IPR2019-00514
`Patent No. 5,904,172
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`26 of Exhibit 1005, which as explained above is not cited in support of any argument
`in the Petition. See 37 C.F.R. § 42.104 (In the Petition, “[t]he Board may exclude
`or give no weight to the evidence where a party has failed to state its relevance or to
`identify specific portions of the evidence that support the challenge.”); Actifo, Inc.
`v. Delphix Corp., IPR2015-00108, Paper 56 at 57 (PTAB Apr. 29, 2016) (excluding
`evidence not relied upon by the Petition); SK Innovation Co., Ltd. v. Celgard, LLC,
`IPR2014-00679, Paper 58 at 49 (PTAB Sept. 25, 2015) (same). Accordingly, this
`testimony is irrelevant, misleading, and confusing under Fed. R. Evid. 401–403.
`Exhibit 1019 – “U.S. Patent 4,368,756”
`Sleep Number objects to Exhibit 1019 to the extent the exhibit is not cited to
`or relied upon by the Petition. For example, Exhibit 1019 is only cited in paragraph
`26 of Exhibit 1005, which as explained above is not cited in support of any argument
`in the Petition. See 37 C.F.R. § 42.104 (In the Petition, “[t]he Board may exclude
`or give no weight to the evidence where a party has failed to state its relevance or to
`identify specific portions of the evidence that support the challenge.”); Actifo, Inc.
`v. Delphix Corp., IPR2015-00108, Paper 56 at 57 (PTAB Apr. 29, 2016) (excluding
`evidence not relied upon by the Petition); SK Innovation Co., Ltd. v. Celgard, LLC,
`IPR2014-00679, Paper 58 at 49 (PTAB Sept. 25, 2015) (same). Accordingly, this
`testimony is irrelevant, misleading, and confusing under Fed. R. Evid. 401–403.
`Exhibit 1020 – “U.S. Patent 4,526,340”
`Sleep Number objects to Exhibit 1020 to the extent the exhibit is not cited to
`or relied upon by the Petition. For example, Exhibit 1020 is only cited in paragraph
`
`7
`
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`Case No. IPR2019-00514
`Patent No. 5,904,172
`
`26 of Exhibit 1005, which as explained above is not cited in support of any argument
`in the Petition. See 37 C.F.R. § 42.104 (In the Petition, “[t]he Board may exclude
`or give no weight to the evidence where a party has failed to state its relevance or to
`identify specific portions of the evidence that support the challenge.”); Actifo, Inc.
`v. Delphix Corp., IPR2015-00108, Paper 56 at 57 (PTAB Apr. 29, 2016) (excluding
`evidence not relied upon by the Petition); SK Innovation Co., Ltd. v. Celgard, LLC,
`IPR2014-00679, Paper 58 at 49 (PTAB Sept. 25, 2015) (same). Accordingly, this
`testimony is irrelevant, misleading, and confusing under Fed. R. Evid. 401–403.
`Exhibit 1021 – “U.S. Patent 4,988,967”
`Sleep Number objects to Exhibit 1021 to the extent the exhibit is not cited to
`or relied upon by the Petition. For example, Exhibit 1021 is only cited in paragraph
`26 of Exhibit 1005, which as explained above is not cited in support of any argument
`in the Petition. See 37 C.F.R. § 42.104 (In the Petition, “[t]he Board may exclude
`or give no weight to the evidence where a party has failed to state its relevance or to
`identify specific portions of the evidence that support the challenge.”); Actifo, Inc.
`v. Delphix Corp., IPR2015-00108, Paper 56 at 57 (PTAB Apr. 29, 2016) (excluding
`evidence not relied upon by the Petition); SK Innovation Co., Ltd. v. Celgard, LLC,
`IPR2014-00679, Paper 58 at 49 (PTAB Sept. 25, 2015) (same). Accordingly, this
`testimony is irrelevant, misleading, and confusing under Fed. R. Evid. 401–403.
`Exhibit 1027 – “Power Transmission Handbook (1st. Ed.), 1993, Chapter
`13, pp. 1-22”
`
`8
`
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`Case No. IPR2019-00514
`Patent No. 5,904,172
`
`Sleep Number objects to Exhibit 1027 as lacking authentication as required
`under Fed. R. Evid. 901–902. Rule 901 requires that the “proponent must produce
`evidence sufficient to support a finding that the item is what the proponent claims it
`is.” ANM provides no evidentiary foundation for this document or attempt to
`authenticate it.
`Sleep Number objects to Exhibit 1027 to the extent the exhibit is not cited to
`or relied upon by the Petition. For example, Exhibit 1027 is only cited in Exhibit
`1005 in paragraphs not cited or relied upon in the Petition. See 37 C.F.R. § 42.104
`(In the Petition, “[t]he Board may exclude or give no weight to the evidence where
`a party has failed to state its relevance or to identify specific portions of the evidence
`that support the challenge.”); Actifo, Inc. v. Delphix Corp., IPR2015-00108, Paper
`56 at 57 (PTAB Apr. 29, 2016) (excluding evidence not relied upon by the Petition);
`SK Innovation Co., Ltd. v. Celgard, LLC, IPR2014-00679, Paper 58 at 49 (PTAB
`Sept. 25, 2015) (same). Accordingly, this testimony is irrelevant, misleading, and
`confusing under Fed. R. Evid. 401–403.
`Exhibit 1028 – “Power Transmission Handbook (1st. Ed.), 1993, Chapter
`9, pp. 1–14”
`Sleep Number objects to Exhibit 1028 as lacking authentication as required
`under Fed. R. Evid. 901–902. Rule 901 requires that the “proponent must produce
`evidence sufficient to support a finding that the item is what the proponent claims it
`is.” ANM provides no evidentiary foundation for this document or attempt to
`authenticate it.
`
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`Case No. IPR2019-00514
`Patent No. 5,904,172
`
`Sleep Number objects to Exhibit 1028 to the extent the exhibit is not cited to
`or relied upon by the Petition. For example, Exhibit 1028 is only cited in Exhibit
`1005 in paragraphs not cited or relied upon in the Petition. See 37 C.F.R. § 42.104
`(In the Petition, “[t]he Board may exclude or give no weight to the evidence where
`a party has failed to state its relevance or to identify specific portions of the evidence
`that support the challenge.”); Actifo, Inc. v. Delphix Corp., IPR2015-00108, Paper
`56 at 57 (PTAB Apr. 29, 2016) (excluding evidence not relied upon by the Petition);
`SK Innovation Co., Ltd. v. Celgard, LLC, IPR2014-00679, Paper 58 at 49 (PTAB
`Sept. 25, 2015) (same). Accordingly, this testimony is irrelevant, misleading, and
`confusing under Fed. R. Evid. 401–403.
`
`Dated: August 19, 2019
`
`By: /s/ Luke Toft
`Luke Toft (Reg. No. 75,311)
`FOX ROTHSCHILD LLP
`222 South Ninth Street, Suite 2000
`Minneapolis, MN 55402
`Telephone: (612) 607-7000
`Facsimile: (612) 607-7100
`ltoft@foxrothschild.com
`
`Steven A. Moore (Reg. No. 55,462)
`PILLSBURY WINTHROP SHAW PITTMAN LLP
`501 West Broadway, Suite 1100
`San Diego, CA 92101
`Telephone: (619) 234-5000
`Facsimile: (619) 236-1995
`steve.moore@pillsburylaw.com
`
`10
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`Case No. IPR2019-00514
`Patent No. 5,904,172
`
`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
`
`11
`
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`Case No. IPR2019-00514
`Patent No. 5,904,172
`
`CERTIFICATE OF SERVICE
`Pursuant to 37 CFR § 42.6(e), the undersigned hereby certifies that on August
`
`19, 2019, the foregoing Patent Owner’s Objections to Petitioner’s Evidence Pursuant
`
`to 37 C.F.R. § 42.64(b)(1) was served via 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
`
`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: August 19, 2019
`
`/s/ Luke Toft
`Luke Toft (Reg. No. 75, 311)
`Counsel for Patent Owner
`
`12
`
`
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