UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`AMERICAN NATIONAL MANUFACTURING INC.,
`Petitioner,
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`v.
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`SLEEP NUMBER CORPORATION
`f/k/a SELECT COMFORT CORPORATION,
`Patent Owner.
`____________
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`Case No. IPR2019-00514
`Patent No. 5,904,172
`____________
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`PATENT OWNER’S OBJECTIONS TO PETITIONER’S EVIDENCE
`PURSUANT TO 37 C.F.R. § 42.64(b)(1)
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`AMERICAN NATIONAL MANUFACTURING INC.,
`Petitioner,
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`v.
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`SLEEP NUMBER CORPORATION
`f/k/a SELECT COMFORT CORPORATION,
`Patent Owner.
`____________
`
`Case No. IPR2019-00514
`Patent No. 5,904,172
`____________
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`PATENT OWNER’S OBJECTIONS TO PETITIONER’S EVIDENCE
`PURSUANT TO 37 C.F.R. § 42.64(b)(1)
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`Case No. IPR2019-00514
`Patent No. 5,904,172
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`Pursuant to 37 C.F.R. § 42.64 and the Federal Rules of Evidence, as applied
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`by the Board, Patent Owner Sleep Number Corporation (“Sleep Number”) provides
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`the following objections to evidence submitted by Petitioner American National
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`Manufacturing Inc. (“ANM”). These objections are timely served within five (5)
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`business days.
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`Sleep Number serves ANM with these objections to provide notice that Sleep
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`Number may move to exclude the challenged evidence under 37 C.F.R. § 42.64(c)
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`unless ANM adequately cures the defects associated with the challenged evidence
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`identified below. In addition, Sleep Number reserves the right to present further
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`objections to this or additional evidence submitted by ANM, as allowed by the
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`applicable rules or other authority.
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`Exhibit 1041 – “Screen Capture of Sleep Number Corporation Financial
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`Profile from Dun & Bradstreet”
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`Sleep Number objects to Exhibit 1041 as lacking authentication as required
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`under Fed. R. Evid. 901–902. Rule 901 requires that the “proponent must produce
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`evidence sufficient to support a finding that the item is what the proponent claims it
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`is.” ANM provides no evidentiary foundation for this document or attempt to
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`authenticate it. Accordingly, this testimony is irrelevant, misleading, unduly
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`prejudicial, and confusing under Fed. R. Evid. 401–403.
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`Sleep Number further objects to Exhibit 1041 as inadmissible hearsay under
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`Fed. R. Evid. 801–802. ANM’s proffered testimony meets the definition of
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`inadmissible hearsay because it offers the statement of Dun & Bradstreet, an out of
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`Patent No. 5,904,172
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`court declarant, to prove the truth of the matter asserted, that Sleep Number made a
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`revenue of approximately $1.5 billion in 2018. Such testimony meets the definition
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`of hearsay under Fed. R. Evid. 801, and because no exception applies, it is
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`inadmissible under Fed. R. Evid. 802.
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`Exhibit 1042 – “Screen Capture of American National Manufacturing,
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`Inc. Financial Profile from Dun & Bradstreet”
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` Sleep Number objects to Exhibit 1041 as lacking authentication as required
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`under Fed. R. Evid. 901–902. Rule 901 requires that the “proponent must produce
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`evidence sufficient to support a finding that the item is what the proponent claims it
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`is.” ANM provides no evidentiary foundation for this document or attempt to
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`authenticate it. Accordingly, this testimony is irrelevant, misleading, unduly
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`prejudicial, and confusing under Fed. R. Evid. 401–403.
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`Sleep Number further objects to Exhibit 1041 as inadmissible hearsay under
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`Fed. R. Evid. 801–802. ANM’s proffered testimony meets the definition of
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`inadmissible hearsay because it offers the statement of Dun & Bradstreet, an out of
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`court declarant, to prove the truth of the matter asserted, that ANM made a revenue
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`of approximately $21 million in 2018. Such testimony meets the definition of
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`hearsay under Fed. R. Evid. 801, and because no exception applies, it is inadmissible
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`under Fed. R. Evid. 802.
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`Case No. IPR2019-00514
`Patent No. 5,904,172
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`Exhibit 1043 – “Plaintiff’s First Supplemental Responses to Defendants’
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`First Set of Interrogatories (Nos. 1–9)”
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`Sleep Number objects to Exhibit 1043 as irrelevant under Fed. R. Evid. 401.
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`ANM introduces Exhibit 1043 to support its assertion that Sleep Number failed to
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`identify any secondary indicia or commercial success in the related District Court
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`action. However, ANM did not request any such identification. Further, Exhibit
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`1043 relates to a different proceeding, and as a result of ANM’s IPR petitions and
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`the resulting stay, discovery in the District Court action was immediately halted in
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`its early stages—shortly after ANM served its first invalidity contentions, before
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`ANM served its last supplemental invalidity contentions pursuant to the parties’
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`meet and confer efforts, and before Sleep Number could meaningfully have an
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`opportunity to review ANM’s contentions and identify any evidence of secondary
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`considerations in response.
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`Sleep Number further objects to Exhibit 1043 because its probative value is
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`substantially outweighed by a danger of prejudice and confusion pursuant to Fed. R.
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`Evid. 403. ANM’s use of Exhibit 1043 of purported evidence of discovery
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`deficiencies only misleads and confuses the issues, as the discovery process was
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`ongoing when ANM petitioned for IPR and requested a stay. Sleep Number’s
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`purported burden to identify secondary considerations could have arisen only right
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`as the District Court action stay was commencing. A patent owner’s burden to
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`produce evidence of secondary considerations only arises when a case of
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`obviousness has been established. See Ormco Corp. v. Align Tech., Inc., 463 F.3d
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`Patent No. 5,904,172
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`1299, 1311 (Fed. Cir. 2006) (noting that secondary considerations are considered
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`only after a prima facie case of obviousness is shown). Such a case cannot be
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`established until, at minimum, invalidity contentions are served. ANM served its
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`last supplemental invalidity contentions pursuant to the parties’ various meet and
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`confer efforts 10 days after the District Court action’s stay. As such, any purported
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`burden of Sleep Number’s to identify secondary considerations had only just begun,
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`would have been ongoing, and was suspended in light of the stay. Accordingly,
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`citing Exhibit 1043 for the proposition that Sleep Number failed to identify any
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`secondary indicia or commercial success is misleading, confuses the issues, and is
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`unduly prejudicial to Sleep Number under Fed. R. Evid. 401–403.
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`Exhibit 1044 – “Stipulation to Use ITC 971 Discovery”
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`Sleep Number objects to Exhibit 1044 as irrelevant, misleading, and
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`confusing under Fed. R. Evid. 401–403. Because ANM cites Exhibit 1044 for the
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`proposition that Sleep Number could have, pursuant to the parties’ Stipulation, used
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`discovery from the ITC case in the District Court action to identify secondary
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`considerations, Sleep Number incorporates herein its objections to Exhibit 1043
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`detailed above. As with Exhibit 1044, citing Exhibit 1043 for the proposition that
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`Sleep Number failed to identify any secondary indicia or commercial success is
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`misleading, confuses the issues, and is unduly prejudicial to Sleep Number under
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`Fed. R. Evid. 401–403.
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`Case No. IPR2019-00514
`Patent No. 5,904,172
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`Exhibit 1045 – “Letter to Sleep Number Regarding Deficiencies”
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`Sleep Number objects to Exhibit 1045 as irrelevant under Fed. R. Evid. 401.
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`Exhibit 1045 relates to a different proceeding, the District Court action, and as a
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`result of ANM’s IPR petitions and the resulting stay, discovery in the District Court
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`action was immediately halted in its early stages. Discovery was ongoing when the
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`District Court action was stayed and Sleep Number had only just supplemented its
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`infringement contentions as part of the parties’ various meet and confer efforts as to
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`purported deficiencies (of which none existed), and had not yet disclosed expert
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`opinions as to infringement.
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`Sleep Number further objects to Exhibit 1045 because its probative value is
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`substantially outweighed by a danger of prejudice and confusion pursuant to Fed. R.
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`Evid. 403. Exhibit 1045 is dated October 19, 2018—three months before Sleep
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`Number served its last supplemental infringement contentions. Such a letter could
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`not have addressed those most recent infringement contentions and, thus, has no
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`probative value to show the sufficiency of Sleep Number’s infringement
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`contentions. Relatedly, the risk of unfair prejudice to Sleep Number by introducing
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`such a letter is significant, as it falsely indicates that Sleep Number’s last
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`supplemental infringement contentions were deficient, which they were not.
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`Even more, Sleep Number objects to Exhibit 1045 because ANM refused to
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`allow Sleep Number to file even redacted versions of its infringement contentions in
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`relation to Sleep Number’s motion for additional discovery. ANM cannot
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`simultaneously prevent Sleep Number from filing infringement contentions while
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`Patent No. 5,904,172
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`submitting a misleading exhibit stating those contentions are insufficient. In order
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`to provide the Board with a complete view of the evidence, at the very least Sleep
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`Number’s infringement contentions “in fairness ought to be considered” in
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`conjunction with Exhibit 1045. See Fed. R. Evid. 106. Accordingly, consideration
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`of Exhibit 1045, without simultaneous consideration of Sleep Number’s
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`infringement contentions, is misleading, confusing, and unfairly prejudicial under
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`Fed. R. Evid. 401–403.
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`Exhibit 1046 – “Sizewise Brief Supporting Vacatur”
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` Sleep Number objects to Exhibit 1046 as irrelevant under Fed. R. Evid. 401.
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`ANM makes no attempt to pare down Exhibit 1046 to only those portions that
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`support its argument; rather, Exhibit 1046 includes a full brief with accompanying
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`exhibits. The vast majority of the content of Exhibit 1046 includes arguments not
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`relevant to these proceedings, and will only confuse the issues and waste time.
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`Sleep Number further objects to Exhibit 1046 as inadmissible hearsay under
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`Fed. R. Evid. 801–802. ANM’s proffered testimony meets the definition of
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`inadmissible hearsay because it offers the statement of Sizewise, an out of court
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`declarant, to prove the truth of the matter asserted, that the ITC’s infringement
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`decision is not final because a motion to vacate is pending. Such testimony meets
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`the definition of hearsay under Fed. R. Evid. 801, and because no exception applies,
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`it is inadmissible under Fed. R. Evid. 802.
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`Sleep Number further objects to Exhibit 1046 as improper attorney argument.
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`Again, ANM submits Exhibit 1046 with no attempt to limit the exhibit to only
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`Case No. IPR2019-00514
`Patent No. 5,904,172
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`relevant portions demonstrating a motion has been filed in an attempt to vacate the
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`ITC decision. Instead, Exhibit 1046 includes full briefing and exhibits that include
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`almost exclusively attorney argument. Such argument does not constitute evidence.
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`Accordingly, Exhibit 1046 is irrelevant, misleading, and confusing under Fed. R.
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`Evid. 401–403.
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`Dated: September 26, 2019
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`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
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`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
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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
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`Attorneys for Patent Owner
`Sleep Number Corporation
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`Case No. IPR2019-00514
`Patent No. 5,904,172
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e), the undersigned hereby certifies that on
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`September 26, 2019, the foregoing Patent Owner’s Objections to Petitioner’s
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`Evidence Pursuant to 37 C.F.R. § 42.64(b)(1) was served via e-mail, as authorized
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`by the Petitioner, at the following email correspondence address of record as
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`follows:
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`Kyle L. Elliott
`kelliott@spencerfane.com
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`Kevin S. Tuttle
`ktuttle@spencerfane.com
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`Lori J. Allee
`jallee@spencerfane.com
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`SPENCER FANE LLP
`1000 Walnut Street, Suite 1400
`Kansas City, MO 64106
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`Jaspal S. Hare
`jhare@spencerfane.com
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`SPENCER FANE LLP
`2200 Ross Avenue
`Suite 4800 West
`Dallas, TX 75201
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`Dated: September 26, 2019
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`/s/ Luke Toft
`Luke Toft (Reg. No. 75, 311)
`Counsel for Patent Owner
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