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`UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C.
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`In the Matter of
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`CERTAIN AIR MATTRESS SYSTEMS,
`COMPONENTS THEREOF AND METHODS
`OF USING THE SAME
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`Investigation No. 337-TA-971
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`SIZEWISE’S INITIAL COMMENTS SUPPORTING VACATUR
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`Respondents/Appellants Sizewise Rentals LLC, American National Manufacturing Inc.,
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`and Dires LLC, d/b/a Personal Comfort Bed (collectively, “Sizewise”) hereby submit their Initial
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`Comments Supporting Vacatur in response to the U.S. International Trade Commission’s March
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`20, 2018 order. Sizewise, because of the limited appeal provision in Section 337(c), was denied
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`appellate review of the Commission’s findings and now faces having that unreviewed decision
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`used against it in district court. As demonstrated below, relevant precedent and the unique facts
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`and circumstances of this case make vacatur of the Commission’s Final Determination both
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`appropriate and necessary.
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`I.
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`FACTUAL AND PROCEDURAL BACKGROUND
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`Select Comfort Corporation and Select Comfort SC Corporation (collectively, “Select
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`Comfort”)1 filed U.S. Patent No. 5,904,172 (“the ’172 patent”) on July 28, 1997. With only 21
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`months remaining until expiration of the ’172 patent, on October 16, 2015, Select Comfort filed
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`its Section 337 complaint with the Commission. During the investigation, the Markman hearing
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`was postponed by two months and eventually not held at all (see Order Nos. 6-7). The claims of
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`1 On October 27, 2017, Select Comfort Corporation amended its articles of incorporation to change
`its name to Sleep Number Corporation. Sleep Number Corporation v. Sizewise Rentals LLC, Case
`No. 5:18-cv-00356-AB-SP, Dkt. No. 1, p. 6, n. 1.
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`CHI-156572-1
`103460-1
`103460-2
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`the ’172 patent were thus construed solely on the parties’ briefs, without the benefit of a full
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`evidentiary record on claim construction issues (see Order No. 19). The ALJ and Commission
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`found no violation as to U.S. Patent No. 7,389,554 (“the ’554 patent”), but found a violation with
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`respect to claims 12 and 16 of the ’172 patent. The Commission’s determination became final
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`on July 17, 2017. Two days later, Sizewise appealed the Commission’s determination regarding
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`the ’172 patent to the U.S. Court of Appeals for the Federal Circuit. (Sizewise Rentals LLC v.
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`ITC, Case No. 17-2334, Dkt. No. 1).
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`The ’172 patent expired on July 28, 2017, thus terminating the limited exclusion order
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`which had been in effect for only 11 days. On October 18, 2017, the Commission moved to
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`dismiss Sizewise’s appeal based on mootness due to the patent’s expiration. (Sizewise v. ITC,
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`Dkt. No. 14). In its motion, the Commission noted that Sizewise would not object to dismissal
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`of the appeal if, consistent with Federal Circuit practice, the underlying determination were
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`vacated. Notably, the Commission consented to vacatur. (Sizewise v. ITC, Dkt. No. 14, p. 3)
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`(“The Commission does not object to the vacatur of the Commission’s final determination as to
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`the ’172 patent.”). Sizewise also responded to the Commission’s motion on October 30, 2017,
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`withholding objection to the proposed dismissal “so long as the Commission’s underlying
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`determination with respect to the ’172 patent is vacated, per applicable precedent.” (Sizewise v.
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`ITC, Dkt. No. 15, p. 2).
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`Select Comfort failed to timely respond to the Commission’s motion to dismiss—rather,
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`Select Comfort impudently filed a purported “reply” to Sizewise’s response to the Commission’s
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`motion, two days after Select Comfort’s response was due, on November 1, 2017. (Sizewise v.
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`ITC, Dkt. No. 16). On December 26, 2017, the Federal Circuit granted the Commission’s
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`motion, dismissing Sizewise’s appeal but remanding the case for the Commission to address
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`2
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`whether to vacate its final determination relating to the ’172 patent. (Sizewise v. ITC, Dkt. No.
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`17, p. 3).
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`Select Comfort quickly attempted to capitalize on the Federal Circuit’s decision not to
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`vacate the Commission’s determination itself, (1) by filing parallel patent infringement litigation
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`in the Northern District of Texas on December 29, 2017 (only 3 days after dismissal of the
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`appeal), and (2) by trumpeting the Commission’s determination on the ’172 patent as support for
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`its claims of infringement. (Sleep Number Corporation v. Sizewise Rentals LLC, Case No. 3:17-
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`cv-03518-N, Dkt. No. 1; Sleep Number Corporation v. American National Manufacturing, Inc.,
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`Case No. 3:17-cv-03517-N, Dkt. No. 1). After a meet-and-confer between the parties, it became
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`evident that venue was improper, and Select Comfort therefore voluntarily dismissed the Texas
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`cases on February 20, 2018. (Id. at Dkt. Nos. 27, 29.) That same day, before the ink was dry on
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`the dismissals, Select Comfort refiled duplicate complaints in the Central District of California.
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`(Sleep Number Corporation v. Sizewise Rentals LLC, Case No. 5:18-cv-00356-AB-SP, Dkt. No.
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`1, attached hereto as Exhibit A; Sleep Number Corporation v. American National
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`Manufacturing, Inc., Case No. 5:18-cv-00357-AB-SP, Dkt. No. 1, attached hereto as Exhibit B).2
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`Just like its Texas complaints, Select Comfort’s California complaints detail the
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`Commission’s determination in paragraphs 21 through 29. (Ex. A, Sleep Number v. Sizewise,
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`Dkt. No. 1; Ex. B, Sleep Number v. American National, Dkt. No. 1). Then, in the subsequent
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`paragraphs, Select Comfort relies on the Commission’s determination as threadbare support
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`2 Select Comfort’s litigiousness was also evidenced by its filing of a second Section 337 complaint
`against American National Manufacturing and Dires in April 2016, which was instituted as Inv. No.
`337-TA-999. That duplicative matter involved the ’554 patent and its parent, U.S. Patent No.
`6,804,848. After setbacks in both discovery and motions practice, Select Comfort moved to
`terminate that investigation based on its unilateral withdrawal of the complaint. See Certain Air
`Mattress Bed Systems & Components Thereof, Inv. No. 337-TA-999, Notice of Commission
`Determination Not to Review Initial Determinations Terminating the Investigation (Dec. 9, 2016).
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`3
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`(indeed, the only support) for its arguments that Sizewise infringed “at least claims 12 and 16 of
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`the ’172 patent.” (Id.). Importantly, Select Comfort suggests the Central District should apply
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`preclusive weight to the Commission’s determination. For example, in paragraph 40 of each
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`complaint, Select Comfort contends the Central District should find willful and wanton
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`infringement based solely on “Sizewise’s [and American National’s] active participation as
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`Respondent in the prior ITC Investigation in which it failed to prove that at least claims 12 and
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`16 of the ’172 patent were invalid and not infringed.” (Id.).
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`II.
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`ARGUMENT
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`In remanding the question of vacatur to the Commission, rather than vacating the
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`determination itself, the Federal Circuit departed from its own well-established practice but did
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`not address its reasoning or purport to overturn any precedent.3 The Commission should
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`therefore apply the relevant Federal Circuit precedent and vacate its determination on the ’172
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`patent. Indeed, the Commission: (a) has consistently had its determinations in similar
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`circumstances vacated by the Federal Circuit under that precedent; (b) has itself applied that
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`precedent; and (c) has even argued for—and been granted—vacatur of a bankruptcy court
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`decision under analogous circumstances. Accordingly, vacatur is in complete consonance with
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`guiding precedent.
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`Furthermore, the equities overwhelmingly support vacatur to preserve the parties’ rights
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`and prevent prejudice in the pending district court litigation. The Federal Circuit’s failure to
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`vacate has already enabled Select Comfort to wield an unreviewed and potentially unreviewable
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`determination against Sizewise in the district courts. If the Commission allows the determination
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`3 The Federal Circuit disclaimed this three-page order as “nonprecedential,” clearly indicating that
`the court did not intend to overturn the longstanding precedent. (Sizewise v. ITC, Dkt. No. 17, p. 1).
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`4
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`to stand, it would be permitting (and encouraging) Select Comfort to continue leveraging the
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`Commission’s unreviewed determination as the basis for its district court claims, which would
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`force further appellate proceedings4 or motions practice at the district court, all due to Select
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`Comfort’s curious (and in hindsight, suspicious) decision to file an ITC action on a patent that
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`was guaranteed to expire before or shortly after issuance of any remedial order. In addition to
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`the law, therefore, the public interest weighs heavily in favor of vacatur.
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`A.
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`GOVERNING PRECEDENT SUPPORTS VACATUR OF THE
`COMMISSION’S DETERMINATION
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`1.
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`Supreme Court and Federal Circuit Precedent Supports
`Vacatur
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`The longstanding precedent is clear: “[w]hen a case becomes moot on appeal, the
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`‘established practice’ is to vacate the decision below with a direction to dismiss.” Evans v.
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`United States, 694 F.3d 1377, 1381 (Fed. Cir. 2012) (quoting United States v. Munsingwear,
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`Inc., 340 U.S. 36, 39 (1950)); Texas Instruments Inc. v. U.S. Int’l Trade Comm’n, 851 F.2d 342,
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`344 (Fed. Cir. 1988) (same). The Supreme Court has even gone so far as to state that “it is the
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`duty” of the appellate court to set aside and remand a moot decree with directions to dismiss.
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`Duke Power Co. v. Greenwood Cty., 299 U.S. 259, 267 (1936). This practice “is commonly
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`utilized . . . to prevent a judgment, unreviewable because of mootness, from spawning any legal
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`consequences.” Munsingwear, 340 U.S. at 41; Alvarez v. Smith, 558 U.S. 87, 87 (2009) (“In
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`moot cases, this Court normally vacates the lower court judgment, which clears the path for
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`relitigation of the issues and preserves the rights of the parties, while prejudicing none by a
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`preliminary decision.”).
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`4 Non-vacatur of the Commission’s determination—which is currently being used against Sizewise in
`ongoing litigation—would make Sizewise “adversely affected” and may render the underlying
`decision appealable anew to the Federal Circuit, per 19 U.S.C. § 1337(c).
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`5
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`Federal Circuit precedent regarding vacatur has consistently been applied to Commission
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`determinations. See, e.g., Texas Instruments, 851 F.2d at 344; LSI Corp. v. Int’l Trade Comm’n,
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`401 F. App’x 545, 546 (Fed. Cir. 2010); Tessera, Inc. v. Int’l Trade Comm'n, 646 F.3d 1357,
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`1371 (Fed. Cir. 2011). Arguments that vacatur is unwarranted because Commission
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`determinations “do not generally have preclusive effects,” or that the party seeking vacatur
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`“simply wishes to set aside an adverse decision,” have been considered and rejected. LSI, 401 F.
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`App’x at 546 (rejecting intervenors’ arguments and vacating the Commission’s determination on
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`the expired patent); Tessera, 646 F.3d at 1371 (same).
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`Federal Circuit precedent also specifically applies to judgments on patents which become
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`mooted by their expiration. That is, the “principal question with vacatur is whether the appeal
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`has become moot because of voluntary action by the party seeking relief.” Samsung Elecs. Co.
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`v. Ad Hoc Consortium of Floating Rate Noteholders, No. CIV. 09-0835, 2010 WL 2636115, at
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`*2 (D. Del. June 29, 2010). And the Federal Circuit has expressly ruled that the expiration of a
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`patent causes an ITC determination on its validity to become “moot by happenstance,” not by
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`voluntary action. Tessera, 646 F.3d at 1371 (concluding patent expiration rendered the appeal
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`“moot by happenstance” and vacating the Commission’s determination on the expired patent);
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`LSI, 401 F. App’x at 546 (same).
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`There are only two exceptions to the “established practice” of vacating moot
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`judgments—(1) where the party seeking vacatur failed to pursue an appeal, therefore failing to
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`protect itself, or (2) where the party seeking vacatur agreed to settlement, thereby causing the
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`subsequent mootness. If neither exception applies, courts should follow established practice and
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`vacate moot judgments. Evans, 694 F.3d at 1381 (vacating the moot judgment over objection
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`where appellant did not settle or fail to appeal); Alvarez, 558 U.S. at 87 (vacating the moot
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`6
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`judgment where there was no voluntary forfeiture of a legal remedy that would preclude
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`vacatur).
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`Here, Sizewise timely appealed the Commission’s determination regarding claims 12 and
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`16 of the ’172 patent. Nine days later, the patent expired. Thereafter, the Commission moved to
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`dismiss Sizewise’s appeal based on mootness—with both Sizewise and the Commission
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`expressing their understanding that, upon dismissal, the Federal Circuit would follow its ordinary
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`practice of vacating the underlying decision. (See Sizewise v. ITC, Dkt. No. 14, p. 3). Instead,
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`however, while the Federal Circuit dismissed the appeal, it remanded to the Commission
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`regarding vacatur. (Sizewise v. ITC, Dkt. No. 17). Because the Federal Circuit’s order does not
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`discuss or purport to overturn precedent, nor does it direct the Commission to ignore it, the
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`Commission has no cause or basis to depart from applicable precedent. The Commission should
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`follow the established practice and vacate where, as here, there is no applicable exception.
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`The ’172 patent’s expiration during the pendency of Sizewise’s appeal falls squarely
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`within the Federal Circuit’s precedent regarding appeals that become “moot by happenstance.”
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`Tessera, 646 F.3d at 137; LSI, 401 F. App’x at 546. Sizewise took no act that caused mootness,
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`nor was the Commission’s determination rendered moot by settlement. Indeed, if either party
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`caused mootness, it was Select Comfort—which failed to assert the ’172 patent for over 18
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`years, instead filing its complaint just 21 months before the patent expired. Accordingly, no
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`exception to the “established practice” exists, and the Commission should vacate the
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`determination. Alvarez, 558 U.S. at 87 (concluding that, where no exceptions apply, the court
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`“should follow its ordinary practice and order vacatur.”).
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`If the Commission declines to vacate, it will create an unreviewed and potentially
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`unreviewable determination that Sizewise infringed claims 12 and 16 of the ’172 patent, which
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`will generate adverse legal consequences for Sizewise in the parallel California litigation. To
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`prevent prejudice to Sizewise and to clear the path for relitigation, the Commission should vacate
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`its determination
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`in accordance with Supreme Court and Federal Circuit precedent.
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`Munsingwear, 340 U.S. at 41 (finding vacatur appropriate to eliminate the possibility of
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`spawning adverse legal consequences).
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`2.
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`Commission Precedent Supports Vacatur
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`The Commission applies Federal Circuit precedent in its own opinions regarding vacatur
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`of moot decisions. For example, in a recent case, the Commission relied on Evans (discussed
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`supra) in finding vacatur of a prior order appropriate, reasoning that:
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`The Court of Appeals for the Federal Circuit has explained that, “[w]hen a case
`becomes moot on appeal, the ‘established practice’ is to vacate the decision
`below with a direction to dismiss.” The only exceptions are “if the party seeking
`appellate relief fails to protect itself or is the cause of the mootness.” Here,
`neither exception applies. [Appellant] protected itself by petitioning for review of
`its disqualification, and did not cause the mootness. Rather, the mootness was
`caused by settlements among . . . the remaining respondents. Accordingly, we
`have determined to vacate Order No. 43.
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`Certain Laser Abraded Denim Garments, Inv. No. 337-TA-930, Comm’n Order at 12,
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`(May 16, 2016) (internal citations omitted). The Commission further stated that “the
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`circumstances in which vacatur is proper in the federal courts is informative.” Id.
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`Similarly, in Certain Bar Clamps, Bar Clamp Pads, & Related Packaging Display, &
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`Other Materials, the ALJ stated that “[t]he public policy and equitable considerations enunciated
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`by the Supreme Court and the CAFC regarding vacatur are applicable here, and the ITC should
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`apply and follow these holdings.” Inv. No. 337-TA-429, Comments of the Administrative Law
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`Judge, 2001 WL 869143 at *3 (Aug. 1, 2001). See also U.S. Bancorp, 513 U.S. at 25 (“A party
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`who seeks review of the merits of an adverse ruling, but is frustrated by the vagaries of
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`circumstance, ought not in fairness be forced to acquiesce in the judgment.”).
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`In fact, in a scenario similar to that presented here, the Commission itself petitioned the
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`Delaware District Court to vacate a Bankruptcy Court order that became moot through
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`settlement (between other parties, not including the Commission) pursuant to the Supreme
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`Court’s decision in Alvarez (discussed supra). (See Samsung Elecs. Co. v. Ad Hoc Consortium of
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`Floating Rate Noteholders, D. Del. Case No. 09-00836-RBK, Dkt. No. 44, ITC Letter
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`Supporting Vacatur (June 24, 2010), attached hereto as Exhibit C.) In its successful petition for
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`vacatur, the Commission highlighted the precedent cited herein and argued that the underlying
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`judgments should be vacated because the Commission did not cause their mootness:
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`Because this Commission did not take any actions to make this appeal moot, and
`the circumstances which caused unreviewability of the decision of the Bankruptcy
`Court were out of the control of the Commission, the equitable factors under
`Alvarez weigh in favor of vacating the Bankruptcy Court's Memorandum Opinion
`and Order to “preserve the rights” of the Commission and to “clear[] the path for
`future re litigation” should a similar bankruptcy issue arise in a future
`Commission investigation.
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`The Commission thus respectfully requests that the Court dismiss this appeal as
`moot, and vacate the Memorandum Opinion and Order of the Bankruptcy Court
`as moot.
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`(Ex. C (Id. at 4-5)).
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`Here, Sizewise requests the exact same relief. “Because [Sizewise] did not take any
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`actions to make this appeal moot, and the circumstances which caused the unreviewability of the
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`decision of the [Commission] were out of the control of [Sizewise], the equitable factors under
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`Alvarez weigh in favor of vacating the [Commission’s Determination] to ‘preserve the rights’ of
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`[Sizewise] and to ‘clear[] the path for future re litigation’” (litigation which has already begun in
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`the Central District of California). (See id. at 4-5). Consistent with its prior practice and its own
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`district court arguments, the Commission should vacate the determination on the ’172 patent.
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`B.
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`THE EQUITIES SUPPORT VACATUR
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`1.
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`Non-Vacatur would Prejudice Sizewise
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`Although Commission determinations do not have preclusive effect on the district courts,
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`they can nonetheless cause extreme prejudice to an adverse party in future litigation. Indeed, a
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`“district court can attribute whatever persuasive value to the prior ITC decision that it considers
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`justified.” Texas Instruments Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1570 (Fed.
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`Cir. 1996); Apple, Inc. v. Motorola Mobility, Inc., No. 11-CV-178-BBC, 2012 WL 5416941, at
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`*10 (W.D. Wis. Oct. 29, 2012) (“findings by the commission can be considered by district courts
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`for their persuasive value, so the parties may present evidence and argument at trial about
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`whether the decision of the commission should affect the value of [defendant’s] standards-
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`essential patent portfolio”).
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`The practical effect of such deference to Commission determinations is best evidenced by
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`Thomson Consumer Elecs., Inc. v. Innovatron, S.A., 3 F. Supp. 2d 49, 51 (D.D.C. 1998)
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`(emphasis added):
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`Regardless of the final outcome before the ITC, its determination will not
`formally have preclusive effect in the instant action. However, if there is appellate
`review of the ITC’s claim construction in this dispute, that will certainly have a
`pronounced effect, and in practical terms the stare decisis effect of appellate
`review of the ITC construction would have near-preclusive effect with respect to
`any review of this Court’s construction.
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`Additionally, the ITC record can be transmitted to the district court and considered as
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`admissible evidence in the civil action. SanDisk Corp. v. Phison Elecs. Corp., 538 F. Supp. 2d
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`1060, 1067 (W.D. Wis. 2008) (citing 28 U.S.C. § 1659(b)). District courts have even stated that
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`“the record developed in the proceeding before the commission may be used to ‘expedite
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`proceedings and provide useful information to the [district] court.’” SanDisk, 538 F. Supp. 2d at
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`1067 (quoting, H.R.Rep. No. 103–826(I), at 142, as reprinted in 1994 U.S.C.C.A.N. at 3914).
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`Here, it is evident that Select Comfort is opportunistically attempting to benefit in district
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`court from the Commission’s unreviewed determination on claims 12 and 16 of the ’172 patent.
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`Only three days after the Federal Circuit dismissed Sizewise’s appeal and remanded the question
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`of vacatur to the Commission, Select Comfort filed parallel litigation in the district courts,
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`trumpeting the Commission’s findings on claims 12 and 16. In nearly every pertinent paragraph
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`of its district court complaints, Select Comfort repeats the mantra that Sizewise infringed “at
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`least claims 12 and 16 of the ’172 patent,” yet its only support for this oft-repeated claim is the
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`Commission’s determination (see Exs. A and B). Select Comfort further requests the district
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`court to find that Sizewise’s infringement was willful and wanton on the sole basis of its “active
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`participation as Respondent in the prior ITC Investigation in which it failed to prove that at least
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`claims 12 and 16 of the ’172 patent were invalid and not infringed.” (Id. at ¶ 40).
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`This exploitation of the Commission’s unreviewed determination is prejudicial to
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`Sizewise—both before the judge on evidentiary and discovery issues, and especially if the cases
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`reach a jury. Although Sizewise timely appealed the determination, its appeal was not heard due
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`to mootness; and because Sizewise did not even receive the benefit of a Markman hearing at the
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`ITC, it now risks being cuffed to unreviewed and unreviewable claim construction findings in
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`the district court. In light of the fact that district courts can rely heavily on Commission
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`determinations as persuasive, if not “near[ly] preclusive” on such matters as claim construction,
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`this is profoundly unfair to Sizewise, which was denied the opportunity to vindicate its position
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`due to the patent’s expiration. See Thomson Consumer Elecs., 3 F. Supp. 2d 49 at 51.
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`Therefore, in accordance with the Supreme Court’s, Federal Circuit’s, and the
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`Commission’s goals of preventing prejudice to parties on the basis of moot judgments, equity
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`supports vacatur of the Commission’s determination on the ’172 patent to clear the path for the
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`district court litigation.
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`2.
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`The Public Interest Supports Vacatur Under These Unique
`Factual and Procedural Circumstances
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`Select Comfort filed the ’172 patent application over 20 years ago, on July 28, 1997. Yet
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`Select Comfort chose to wait to file its complaint with the Commission until October 16, 2015,
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`with the knowledge that the patent would expire only 21 months later, either before or just
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`shortly after conclusion of the investigation. In hindsight, it appears Select Comfort strategically
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`waited until the eleventh hour to file its complaint to gain the potential benefit of a positive
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`Commission determination, without permitting Sizewise time to appeal.5 In light of limited
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`judicial and administrative resources,
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`the Commission should not countenance such
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`manipulation of its proceedings. Failing to vacate here would effectively award Select Comfort
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`far more relief than it could have ever received from the ITC investigation alone, which resulted
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`in an exclusion order that was in effect for a mere 11 days. This is a classic instance of “the
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`public interest . . . be[ing] served by a vacatur.” U.S. Bancorp, 513 U.S. at 26-27.
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`Furthermore, only two days after the Commission’s determination on the ’172 patent,
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`Sizewise appealed, concerned about the potential harm it would suffer in district court if the
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`Commission’s claim construction, infringement, and validity findings were not reevaluated and
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`reversed. Then the patent expired and the Commission sought dismissal of the appeal on the
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`5 Select Comfort also benefitted from certain procedural idiosyncrasies and abnormalities, including
`the fact that no Markman hearing was held and Sizewise was prevented from submitting numerous
`invalidating prior art references into the record. See, e.g., Order Nos. 6-7, 11, 16, 18, 20, 23, 28.
`After the trial, Sizewise filed an offer of proof preserving the right to appeal the exclusion of those
`prior art references. Sizewise also petitioned for review of those findings and had planned to
`challenge, at the Federal Circuit, both the substantive and procedural bases of the conclusion that the
`’172 patent is not invalid and unenforceable. To date, of course, Sizewise has been denied any such
`appellate review, thus allowing Select Comfort to assert the ’172 patent in district court.
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`basis of mootness. In communications with the Commission, Sizewise agreed not to oppose the
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`motion subject to the condition of vacatur. In its motion to dismiss, the Commission noted
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`Sizewise’s predicate to dismissal and expressly consented to vacatur itself. (Sizewise v. ITC, Dkt.
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`No. 14, p. 3) (“The Commission does not object to the vacatur of the Commission’s final
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`determination as to the ’172 patent.”). Sizewise also filed a response to the Commission’s
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`motion, specifically requesting vacatur.
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`In sum, Sizewise took every precaution to ensure that it could either challenge the
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`Commission’s findings on the ’172 patent or obtain vacatur of that prejudicial decision. To date,
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`Sizewise has received neither, a reality being exploited by Select Comfort. Under these
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`circumstances, leaving the Commission’s determination in place would be fundamentally unfair
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`to Sizewise, which would either have to renew its appeal and/or challenge the decision not to
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`vacate, or engage in motions practice in the district courts, all to prevent the harm its original
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`appeal sought to avoid.6 A failure to vacate would also waste judicial and administrative
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`resources (and party resources) by forcing additional litigation over an expired patent. To
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`prevent this morass, and on account of overwhelming policy interests, the Commission should
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`vacate its determination on the ’172 patent.
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`
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`6 Another factor calling for fresh relitigation here is the nature of the reversible errors. In particular,
`different claim constructions were applied for the invalidity and infringement analyses, which is
`improper. See Respondents’ Contingent Petition for Review, Doc. ID 596839, at 17-18 and 20-28
`(Dec. 5, 2016) (addressing the construction of the claim term “pressure monitor means” and the
`Initial Determination’s application of the construction to the Accused Products, finding the ’172
`patent valid despite admitted prior art that clearly discloses the features found in the Accused
`Products deemed to be infringing).
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`13
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`American National Manufacturing, Inc.
`EXHIBIT 1046
`IPR2019-00514
`Page 13
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`III. CONCLUSION
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`As the U.S. Supreme Court stated and as recognized by the Commission, “[a] party who
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`seeks review of the merits of an adverse ruling, but is frustrated by the vagaries of circumstance,
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`ought not in fairness be forced to acquiesce in the judgment.” U.S. Bancorp, 513 U.S. at 25.
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`This principle squarely applies to the instant situation: Sizewise, through no fault of its own, was
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`unable to challenge the Commission’s findings on the ’172 patent and now that unreviewed
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`decision is being used against it in district court. Vacatur is needed “to prevent [this] judgment,
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`unreviewable because of mootness, from spawning any legal consequences.” See Munsingwear,
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`340 U.S. at 41.
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`Guiding precedent supports vacatur in this situation. Vacatur is also favored in equity—
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`given Select Comfort’s attempt to leverage the ITC’s unreviewed determination in district
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`court—and in the interests of judicial and administrative economy. To preserve the rights of all
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`parties while prejudicing none, the Commission should vacate its determination on the ’172
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`patent.
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`
`Dated: April 3, 2018
`
`
`14
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`Respectfully submitted,
`
`
`/s/ Beau Jackson
`Beau Jackson
`HUSCH BLACKWELL LLP
`4801 Main Street, Suite 1000
`Kansas City, MO 64112
`Telephone: 816.983.8202
`beau.jackson@huschblackwell.com
`
`/s/ Kiley C. Keefe
`Kiley C. Keefe
`HUSCH BLACKWELL LLP
`120 S. Riverside Plaza, Suite 2200
`Chicago, IL 60606
`Telephone: 312. 655.1500
`kiley.keefe@huschblackwell.com
`
`
`
`
`
`American National Manufacturing, Inc.
`EXHIBIT 1046
`IPR2019-00514
`Page 14
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`

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`
`/s/ Kyle L. Elliott
`Kyle L. Elliott
`Kevin S. Tuttle
`SPENCER FANE LLP
`1000 Walnut Street, Suite 1400
`Kansas City, MO 64106
`Telephone: 816.474.8100
`kelliott@spencerfane.com
`
`
`/s/ Paul M. Bartkowski
`Tom M. Schaumberg
`Paul M. Bartkowski
`Michael R. Doman, Jr.
`ADDUCI, MASTRIANI & SCHAUMBERG, LLP
`1133 Connecticut Avenue, N.W., 12th Floor
`Washington, DC 20036
`Telephone: 202.467.6300
`bartkowski@adduci.com
`
`Counsel for Respondents/Appellants Sizewise
`Rentals, LLC, American National Manufacturing,
`Inc., and Dires, LLC, d/b/a Personal Comfort Bed
`
`
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`
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`15
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`American National Manufacturing, Inc.
`EXHIBIT 1046
`IPR2019-00514
`Page 15
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`

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`
`
`EXHIBIT A
`SN v. Sizewise Complaint
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`
`American National Manufacturing, Inc.
`EXHIBIT 1046
`IPR2019-00514
`Page 16
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`

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`
`
`PILLSBURY WINTHROP
`SHAW PITTMAN LLP
`Steven A. Moore, State Bar No. 232114
`steve.moore@pillsburylaw.com
`Nicole S. Cunningham, State Bar No. 234390
`nicole.cunningham@pillsburylaw.com
`501 West Broadway, Suite 1100
`San Diego, CA 92101-3575
`Telephone: 619-234-5000
`Facsimile: 619-236-1995
`
`Kecia J. Reynolds (pro hac vice to be filed)
`kecia.reynolds@pillsburylaw.com
`PILLSBURY WINTHROP
`SHAW PITTMAN LLP
`1200 Seventeenth Street, NW
`Washington, DC 20036
`Telephone: 202-663-8000
`Facsimile: 202-663-8007
`
`Andrew S. Hansen (pro hac vice to be filed)
`ahansen@foxrothschild.com
`Archana Nath (pro hac vice to be filed)
`anath@foxrothschild.com
`Elizabeth A. Patton (pro hac vice to be filed)
`epatton@foxrothschild.com
`FOX ROTHSCHILD LLP
`222 South Ninth Street, Suite 2000
`Minneapolis, MN 55402
`Telephone: 612-607-7000
`Facsimile: 612-607-7100
`
`Attorneys for Plaintiff
`SLEEP NUMBER CORPORATION
`
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`EASTERN DIVISION
`
`SLEEP NUMBER CORPORATION,
`
`
`Plaintiff,
`
`Civil Action No. _______________
`
`
`COMPLAINT FOR
`PATENT INFRINGEMENT
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`
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`JURY TRIAL DEMANDED
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`
`
`COMPLAINT FOR PATENT INFRINGEMENT
`
`
`SIZEWISE RENTALS, L.L.C.,
`
`
`v.
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`Defendant.
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`American National Manufacturing, Inc.
`EXHIBIT 1046
`IPR2019-00514
`Page 17
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`Plaintiff Sleep Number Corporation (“Sleep Number”), by and through its
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`unde