From:
`Sent:
`To:
`Cc:
`Subject:
`
`Kyle,
`
`Patton, Elizabeth A. <epatton@foxrothschild.com>
`Monday, October 14, 2019 10:18 AM
`Elliott, Kyle L.; Tuttle, Kevin; Bear, Brian; Hare, Jaspal
`Toft, Lukas; Nath, Archana; Allee, J. Lori
`RE: IPR2019-514, -500, and -497 (ANM v. Sleep Number)
`
`We accept your revisions and will send this email shortly to the Board.
`
`Liz
`
`Elizabeth Patton
`Partner
`Fox Rothschild LLP
`Campbell Mithun Tower - Suite 2000
`222 South Ninth St.
`Minneapolis, MN 55402-3338
`(612) 607-7202 - direct
`(612) 607-7100- fax
`epatton@foxrothschild.com
`www.foxrothschild.com
`
`From: Elliott, Kyle L. <KElliott@spencerfane.com>
`Sent: Monday, October 14, 2019 10:07 AM
`To: Patton, Elizabeth A. <epatton@foxrothschild.com>; Tuttle, Kevin <ktuttle@spencerfane.com>; Bear, Brian
`<bbear@spencerfane.com>; Hare, Jaspal <jhare@spencerfane.com>
`Cc: Toft, Lukas <ltoft@foxrothschild.com>; Nath, Archana <anath@foxrothschild.com>; Allee, J. Lori
`<JAllee@spencerfane.com>; Curti, Jennifer L. <jcurti@foxrothschild.com>
`Subject: [EXT] RE: IPR2019-514, -500, and -497 (ANM v. Sleep Number)
`
`Hello Liz:
` Here are the suggested revisions. Please let me know if you have any issues/questions. ~kle
`
`Dear Board,
`
`Patent Owner respectfully requests a call with the Board to discuss its request for leave to file a motion for limited
`additional discovery solely for the purpose of allowing Patent Owner to use what Petitioner has represented is third-
`party owned source code in the course of these IPR proceedings. Petitioner represents that this source code is owned
`by multiple third parties. Patent Owner has conferred with Petitioner, which opposes this request, and the Parties are
`available at the following dates and times (in Eastern), if the Board believes a call is necessary:
`
`Monday, October 14: 1pm to 5pm ET
`Tuesday, October 15: 9am to 5pm ET I’m available 9:30am-11am and noon-2pm ET
`Wednesday, October 16: 9:30am to 5pm ET
`
`1
`
`Sleep Number Corp.
`EXHIBIT 2038
`IPR2019-00514
`Page 1
`
`

`

`Regards,
`Liz Patton
`
`Kyle Elliott Attorney at Law
`Spencer Fane LLP
`
`1000 Walnut, Suite 1400 | Kansas City, MO 64106
`O 816.292.8150 M 816.506.4628
`kelliott@spencerfane.com | spencerfane.com
`
`NOTICE: This electronic mail transmission constitutes confidential attorney work-product and may contain attorney-
`client privileged communication. It is not intended for transmission to, or receipt by, any unauthorized persons. If you
`have received this electronic mail transmission in error, please delete it from your system without copying it, and notify
`the sender by Reply e-mail or by calling (816)474-8100, so that our address records can be corrected.
`
`From: Patton, Elizabeth A. <epatton@foxrothschild.com>
`Sent: Monday, October 14, 2019 9:22 AM
`To: Elliott, Kyle L. <KElliott@spencerfane.com>; Tuttle, Kevin <ktuttle@spencerfane.com>; Bear, Brian
`<bbear@spencerfane.com>; Hare, Jaspal <jhare@spencerfane.com>
`Cc: L Toft <ltoft@foxrothschild.com>; A Nath <anath@foxrothschild.com>; Allee, J. Lori <JAllee@spencerfane.com>;
`Curti, Jennifer L. <jcurti@foxrothschild.com>
`Subject: RE: IPR2019-514, -500, and -497 (ANM v. Sleep Number)
`
`Kyle,
`
`I can confirm we will not intentionally mine for/review metadata as described below. Attached are instructions for using
`our secure file transfer site. Shortly you’ll be receiving a link to upload documents from our paralegal, Jen Curti. Please
`zip the files before you load them.
`
`Lastly, please respond as soon as possible to my draft email to the Board that I sent on Friday at 12:40pm (reflected
`below). As you know, this is a time sensitive matter.
`
`Liz
`
`Elizabeth Patton
`Partner
`Fox Rothschild LLP
`Campbell Mithun Tower - Suite 2000
`222 South Ninth St.
`Minneapolis, MN 55402-3338
`(612) 607-7202 - direct
`(612) 607-7100- fax
`epatton@foxrothschild.com
`www.foxrothschild.com
`
`From: Elliott, Kyle L. <KElliott@spencerfane.com>
`Sent: Monday, October 14, 2019 8:37 AM
`
`2
`
`Sleep Number Corp.
`EXHIBIT 2038
`IPR2019-00514
`Page 2
`
`

`

`To: Patton, Elizabeth A. <epatton@foxrothschild.com>; Tuttle, Kevin <ktuttle@spencerfane.com>; Bear, Brian
`<bbear@spencerfane.com>; Hare, Jaspal <jhare@spencerfane.com>
`Cc: Toft, Lukas <ltoft@foxrothschild.com>; Nath, Archana <anath@foxrothschild.com>; Allee, J. Lori
`<JAllee@spencerfane.com>
`Subject: [EXT] RE: IPR2019-514, -500, and -497 (ANM v. Sleep Number)
`
`Good Morning Liz:
`
` We have been working on and reviewing the production data over the weekend, and I will respond
`to your e-mail below in full later today. Regarding the production, the volume of data is quite
`large. Thus, we will need to produce this in native format; it is not feasible to pdf the
`spreadsheets. We will attempt to pull out metadata, but we also need your assurances that you will
`not mine the document for metadata.
`
`Because these are spreadsheets, we should reach a consensus on what is metadata. To that end,
`normal non-visible, operational items, such as pivot tables and formulas, etc. would not be
`considered metadata. Creation dates, revisions, operators, and other non-operational items would be
`considered metadata. Please let me know if this is an agreement we can reach.
`
` Also, we will be providing two spreadsheets totaling over 50MBs, so please let me know if it is
`possible for you to set up a portal for us to load the files.
`
`Regards,
`Kyle
`
`Kyle Elliott Attorney at Law
`Spencer Fane LLP
`
`1000 Walnut, Suite 1400 | Kansas City, MO 64106
`O 816.292.8150 M 816.506.4628
`kelliott@spencerfane.com | spencerfane.com
`
`NOTICE: This electronic mail transmission constitutes confidential attorney work-product and may contain attorney-
`client privileged communication. It is not intended for transmission to, or receipt by, any unauthorized persons. If you
`have received this electronic mail transmission in error, please delete it from your system without copying it, and notify
`the sender by Reply e-mail or by calling (816)474-8100, so that our address records can be corrected. ~kle
`
`From: Patton, Elizabeth A. <epatton@foxrothschild.com>
`Sent: Saturday, October 12, 2019 3:52 PM
`To: Elliott, Kyle L. <KElliott@spencerfane.com>; Tuttle, Kevin <ktuttle@spencerfane.com>; Bear, Brian
`<bbear@spencerfane.com>; Hare, Jaspal <jhare@spencerfane.com>
`Cc: L Toft <ltoft@foxrothschild.com>; A Nath <anath@foxrothschild.com>; Allee, J. Lori <JAllee@spencerfane.com>
`Subject: RE: IPR2019-514, -500, and -497 (ANM v. Sleep Number)
`
`Kyle,
`
`I revised the PO to reflect Providence instead of Arco as owning the Versions 1.8, 1.97, and 2.0 source code and
`exempting the Platinum code from needing to be redacted. I also prepared a Stipulation seeking entry of a PO, with
`indication that the draft PO and a redline against the Default PO will be attached (as we understand is required). Please
`
`3
`
`Sleep Number Corp.
`EXHIBIT 2038
`IPR2019-00514
`Page 3
`
`

`

`send any additional comments by Monday morning at 11am CT so that this can be filed prior to Petitioner’s production,
`which we’ve agreed will be completed by COB.
`
`Regarding your proposal to allow use of only the Platinum code, while we appreciate your offer of this limited
`compromise, we believe it is still insufficient. Patent Owner’s request to use all third party code should not be disputed
`because we have agreed to the same PO provisions that is keeping the source code confidential in the underlying district
`court cases. As indicated earlier, we will be asking the Board to allow use of all of the third party source code. If
`Petitioner will not agree, please provide any insertions or revisions to my draft email to the Board by Monday morning
`at 9am CT.
`
`Lastly, I disagree that Patent Owner will be required to expunge Petitioner or Sizewise’s confidential information in the
`event the Board denies the motion to seal or will not enter the modified PO. As you know, the Default PO language
`(which our Stipulated PO reflects at paragraph 10(i)) states that a submission is treated confidential and remains under
`seal “unless, upon motion of a party and after a hearing on the issue, or sua sponte, the Board determines that the
`documents or information do not to qualify for confidential treatment.” In other words, the Board has the power to
`determine whether something you’ve designated is truly confidential and should remain under seal.
`
`I understand your position that data requested by Patent Owner’s discovery requests in IPR2019-00514 does not exist
`prior to 2004. Patent Owner reserves all rights on this issue.
`
`Liz
`
`Elizabeth Patton
`Partner
`Fox Rothschild LLP
`Campbell Mithun Tower - Suite 2000
`222 South Ninth St.
`Minneapolis, MN 55402-3338
`(612) 607-7202 - direct
`(612) 607-7100- fax
`epatton@foxrothschild.com
`www.foxrothschild.com
`
`From: Elliott, Kyle L. <KElliott@spencerfane.com>
`Sent: Friday, October 11, 2019 4:19 PM
`To: Patton, Elizabeth A. <epatton@foxrothschild.com>; Tuttle, Kevin <ktuttle@spencerfane.com>; Bear, Brian
`<bbear@spencerfane.com>; Hare, Jaspal <jhare@spencerfane.com>
`Cc: Toft, Lukas <ltoft@foxrothschild.com>; Nath, Archana <anath@foxrothschild.com>; Allee, J. Lori
`<JAllee@spencerfane.com>
`Subject: [EXT] RE: IPR2019-514, -500, and -497 (ANM v. Sleep Number)
`
`Liz,
`
` I have reviewed the PO revisions, and I have no objections to the revisions with the exception that
`we need to change ARCO to Providence. Regarding what we are referring to as the Platinum Code
`(as opposed to the Medisphere Code), we have confirmed that ownership/copyright to that code still
`resides with third party vendor Elsyn under 17 USC 204. However, according to “Platinum Upgrade
`Project” proposals provided by Elsyn, it is the intent of the parties (Elsyn and Sizewise) that the
`copyright/ownership would be assigned. Thus, that assignment, when executed, would be to
`Sizewise, which has not been ordered to produce anything by the Board. However, to resolve this
`4
`
`Sleep Number Corp.
`EXHIBIT 2038
`IPR2019-00514
`Page 4
`
`

`

`overall dispute regarding the use of source code without bothering the Board or District Court, we
`would be willing to permit the use of Platinum Code lines and variables as set forth in your
`infringement contentions if you agree to redact all Medishpere and Providence code.
`
`The redaction of the Medisphere and Providence code is consistent with Judge Pym’s order, which
`referenced redaction of third party software generally (not Medisphere specifically). The fact that this
`source code needs to be redacted should come as no surprise to SN. First, SN, and not American
`National, proposed the redaction of third party software as a means of satisfying the constitutional
`issues of notice and right to be heard raised in the briefing before the District Court. In fact, we still
`think it is prejudicial to American National. Second, we disclosed with particularity to SN that the
`source code at issue was almost entirely from third parties, and this was disclosed to SN months prior
`to the stay being enacted -- the document we have been referencing ANMI133414-133422 was
`created and produced in response to the interrogatories that SN served in the district court, and that
`document clearly shows the consumer source code was from ARCO and Providence, not ANM or
`Sizewise.
`
` Looking to housekeeping issues, the Platinum code and any other source code ultimately used, and
`any confidential information in Patent Owner’s filing, must be submitted with a motion to seal. If the
`motion to seal is not granted, or if the Board does not enter a protective order in these IPRs as
`agreed by the parties, Patent Owner must immediately file a motion to expunge the confidential
`information of Petitioner in Patent Owner’s filings from the record prior to the information becoming
`public.
`
` Shifting to the production dates issue. American National data being produced goes back to 2004
`with some prior data provided in a document produced in the acquisition of Nautilus. Other data prior
`to this, is in a retired Peachtree 2000 ERP accounting system, and prior, multiple attempts to access
`this data have failed.
`
` Please let me know if there are any further unresolved issues for the day.
`
`Regards,
`Kyle
`
`Kyle Elliott Attorney at Law
`Spencer Fane LLP
`
`1000 Walnut, Suite 1400 | Kansas City, MO 64106
`O 816.292.8150 M 816.506.4628
`kelliott@spencerfane.com | spencerfane.com
`
`NOTICE: This electronic mail transmission constitutes confidential attorney work-product and may contain attorney-
`client privileged communication. It is not intended for transmission to, or receipt by, any unauthorized persons. If you
`have received this electronic mail transmission in error, please delete it from your system without copying it, and notify
`the sender by Reply e-mail or by calling (816)474-8100, so that our address records can be corrected. ~kle
`
`From: Patton, Elizabeth A. <epatton@foxrothschild.com>
`Sent: Friday, October 11, 2019 12:40 PM
`To: Elliott, Kyle L. <KElliott@spencerfane.com>; Tuttle, Kevin <ktuttle@spencerfane.com>; Bear, Brian
`<bbear@spencerfane.com>; Hare, Jaspal <jhare@spencerfane.com>
`Cc: L Toft <ltoft@foxrothschild.com>; A Nath <anath@foxrothschild.com>; Allee, J. Lori <JAllee@spencerfane.com>
`Subject: RE: IPR2019-514, -500, and -497 (ANM v. Sleep Number)
`
`5
`
`Sleep Number Corp.
`EXHIBIT 2038
`IPR2019-00514
`Page 5
`
`

`

`Kyle,
`
`Following up, below is a draft email to the Board. Please provide any revisions or insertions by the end of the day.
`
`---------------------
`
`Dear Board,
`
`Patent Owner respectfully requests a call with the Board to discuss its request for leave to file a motion for limited
`additional discovery solely for the purpose of allowing Patent Owner to use what Petitioner has represented is third-
`party owned source code in the course of these IPR proceedings. Patent Owner has conferred with Petitioner, which
`[opposes/does not oppose] this request, and the Parties are available at the following dates and times (in Eastern):
`
`Monday, October 14: 9am to 5pm ET
`Tuesday, October 15: 9am to 5pm ET
`
`Regards,
`Liz Patton
`
`---------------------
`
`Thanks,
`Liz
`
`Elizabeth Patton
`Partner
`Fox Rothschild LLP
`Campbell Mithun Tower - Suite 2000
`222 South Ninth St.
`Minneapolis, MN 55402-3338
`(612) 607-7202 - direct
`(612) 607-7100- fax
`epatton@foxrothschild.com
`www.foxrothschild.com
`
`From: Patton, Elizabeth A.
`Sent: Friday, October 11, 2019 12:07 PM
`To: 'Elliott, Kyle L.' <KElliott@spencerfane.com>; 'Tuttle, Kevin' <ktuttle@spencerfane.com>; 'Bear, Brian'
`<bbear@spencerfane.com>; 'Hare, Jaspal' <jhare@spencerfane.com>
`Cc: Toft, Lukas <ltoft@foxrothschild.com>; Nath, Archana <anath@foxrothschild.com>; 'Allee, J. Lori'
`<JAllee@spencerfane.com>
`Subject: RE: IPR2019-514, -500, and -497 (ANM v. Sleep Number)
`
`Kyle,
`
`Per our discussion, attached is a set of redlines to the Stipulated Protective Order. As I mentioned, Patent Owner thinks
`it is important to provide additional clarity as to your representations of source code being owned by third parties and
`your position as to what can and cannot be provided to the Board in light of the District Court’s order. I also redlined a
`few typos and other clarification items.
`
`6
`
`Sleep Number Corp.
`EXHIBIT 2038
`IPR2019-00514
`Page 6
`
`

`

`Also, per our discussion, I will draft a proposed email to the Board asking for a motion for additional discovery for the
`purpose of allowing Patent Owner to use the third party source code in the IPRs, thus allowing Patent Owner to file its
`infringement contentions under seal without source code redactions.
`
`Thanks,
`Liz
`
`Elizabeth Patton
`Partner
`Fox Rothschild LLP
`Campbell Mithun Tower - Suite 2000
`222 South Ninth St.
`Minneapolis, MN 55402-3338
`(612) 607-7202 - direct
`(612) 607-7100- fax
`epatton@foxrothschild.com
`www.foxrothschild.com
`
`From: Patton, Elizabeth A.
`Sent: Thursday, October 10, 2019 6:41 PM
`To: 'Elliott, Kyle L.' <KElliott@spencerfane.com>; Tuttle, Kevin <ktuttle@spencerfane.com>; Bear, Brian
`<bbear@spencerfane.com>; Hare, Jaspal <jhare@spencerfane.com>
`Cc: Toft, Lukas <ltoft@foxrothschild.com>; Nath, Archana <anath@foxrothschild.com>; Allee, J. Lori
`<JAllee@spencerfane.com>
`Subject: RE: IPR2019-514, -500, and -497 (ANM v. Sleep Number)
`
`Kyle,
`
`Thanks for the email and voicemail. I am available to discuss from 8am-1pm tomorrow if anything works for you in that
`window.
`
`On the Stipulation, it appears Kevin wants only the dates applicable to each IPR present in each Stipulation, so I’ll have
`my assistant create three documents in the morning for your approval.
`
`On the PO, I will get back to you in the morning on whether our discussion warrants any additional edits from Patent
`Owner.
`
`Liz
`
`Elizabeth Patton
`Partner
`Fox Rothschild LLP
`Campbell Mithun Tower - Suite 2000
`222 South Ninth St.
`Minneapolis, MN 55402-3338
`(612) 607-7202 - direct
`(612) 607-7100- fax
`epatton@foxrothschild.com
`www.foxrothschild.com
`
`7
`
`Sleep Number Corp.
`EXHIBIT 2038
`IPR2019-00514
`Page 7
`
`

`

`From: Elliott, Kyle L. <KElliott@spencerfane.com>
`Sent: Thursday, October 10, 2019 4:35 PM
`To: Patton, Elizabeth A. <epatton@foxrothschild.com>; Tuttle, Kevin <ktuttle@spencerfane.com>; Bear, Brian
`<bbear@spencerfane.com>; Hare, Jaspal <jhare@spencerfane.com>
`Cc: Toft, Lukas <ltoft@foxrothschild.com>; Nath, Archana <anath@foxrothschild.com>; Allee, J. Lori
`<JAllee@spencerfane.com>
`Subject: [EXT] RE: IPR2019-514, -500, and -497 (ANM v. Sleep Number)
`
`Liz,
` I left you a voicemail as well. Following our conversation this morning, I have been researching the
`background of the Platinum code you referenced during the call and in your email below. Though I
`do not have a definite answer yet on the ownership of that code, I am hopeful to get that answer
`tonight or tomorrow morning.
` I disagree completely with your characterization of our brief. All these third parties responsible for
`developing source code are clearly “true third parties:” Medisphere, Arco, Providence, etc.
` Of course, you should feel free to seek what District Court intervention you need. However, I have
`some additional facts, which you should fairly be aware of before we bother Judge Pym with another
`motion.
` Do you need any further responses from us on the PO, or Stipulated Deadlines?
`Regards,
`~kle
`
`Kyle Elliott Attorney at Law
`Spencer Fane LLP
`
`1000 Walnut, Suite 1400 | Kansas City, MO 64106
`O 816.292.8150 M 816.506.4628
`kelliott@spencerfane.com | spencerfane.com
`
`NOTICE: This electronic mail transmission constitutes confidential attorney work-product and may contain attorney-
`client privileged communication. It is not intended for transmission to, or receipt by, any unauthorized persons. If you
`have received this electronic mail transmission in error, please delete it from your system without copying it, and notify
`the sender by Reply e-mail or by calling (816)474-8100, so that our address records can be corrected.
`
`From: Patton, Elizabeth A. <epatton@foxrothschild.com>
`Sent: Thursday, October 10, 2019 1:58 PM
`To: Elliott, Kyle L. <KElliott@spencerfane.com>; Tuttle, Kevin <ktuttle@spencerfane.com>; Bear, Brian
`<bbear@spencerfane.com>; Hare, Jaspal <jhare@spencerfane.com>
`Cc: L Toft <ltoft@foxrothschild.com>; A Nath <anath@foxrothschild.com>; Allee, J. Lori <JAllee@spencerfane.com>
`Subject: RE: IPR2019-514, -500, and -497 (ANM v. Sleep Number)
`
`Kyle,
`
`Thanks for the discussion earlier. I understand based on your comments that Petitioner is taking the position that the
`entirety of the air controller code referenced in Patent Owner’s infringement contentions in the district court is third-
`party code that must be redacted and cannot be filed in the IPR proceedings. We are disappointed to hear this position
`given that ANM only referenced Medisphere code in its opposition to Sleep Number’s application to modify the
`8
`
`Sleep Number Corp.
`EXHIBIT 2038
`IPR2019-00514
`Page 8
`
`

`

`protective order, which given Sleep Number's identification in its infringement contentions of one version of the code
`being "Medisphere" code (and a different version being “Platinum” code, etc.), we understood suggested that ANM had
`concerns with only this version of the code. In addition, although we understand that ANM is free to choose a specific
`example in its briefing, ANM’s briefing also suggested that only some code fell in the third-party category – e.g. by
`calling Medisphere (but not Arco) a “true third party.” We are evaluating Sleep Number’s rights, including seeking
`district court intervention.
`
`Liz
`
`Elizabeth Patton
`Partner
`Fox Rothschild LLP
`Campbell Mithun Tower - Suite 2000
`222 South Ninth St.
`Minneapolis, MN 55402-3338
`(612) 607-7202 - direct
`(612) 607-7100- fax
`epatton@foxrothschild.com
`www.foxrothschild.com
`
`From: Elliott, Kyle L. <KElliott@spencerfane.com>
`Sent: Thursday, October 10, 2019 11:22 AM
`To: Patton, Elizabeth A. <epatton@foxrothschild.com>; Tuttle, Kevin <ktuttle@spencerfane.com>; Bear, Brian
`<bbear@spencerfane.com>; Hare, Jaspal <jhare@spencerfane.com>
`Cc: Toft, Lukas <ltoft@foxrothschild.com>; Nath, Archana <anath@foxrothschild.com>; Allee, J. Lori
`<JAllee@spencerfane.com>
`Subject: [EXT] RE: IPR2019-514, -500, and -497 (ANM v. Sleep Number)
`
`Liz,
` I’m available for the next 35 minutes today, and then after 4:00 to discuss 3rd party source code.
`~kle
`
`Kyle Elliott Attorney at Law
`Spencer Fane LLP
`
`1000 Walnut, Suite 1400 | Kansas City, MO 64106
`O 816.292.8150 M 816.506.4628
`kelliott@spencerfane.com | spencerfane.com
`
`NOTICE: This electronic mail transmission constitutes confidential attorney work-product and may contain attorney-
`client privileged communication. It is not intended for transmission to, or receipt by, any unauthorized persons. If you
`have received this electronic mail transmission in error, please delete it from your system without copying it, and notify
`the sender by Reply e-mail or by calling (816)474-8100, so that our address records can be corrected.
`
`From: Patton, Elizabeth A. <epatton@foxrothschild.com>
`Sent: Thursday, October 10, 2019 10:41 AM
`To: Tuttle, Kevin <ktuttle@spencerfane.com>; Elliott, Kyle L. <KElliott@spencerfane.com>; Bear, Brian
`<bbear@spencerfane.com>; Hare, Jaspal <jhare@spencerfane.com>
`Cc: L Toft <ltoft@foxrothschild.com>; A Nath <anath@foxrothschild.com>; Allee, J. Lori <JAllee@spencerfane.com>
`Subject: RE: IPR2019-514, -500, and -497 (ANM v. Sleep Number)
`9
`
`Sleep Number Corp.
`EXHIBIT 2038
`IPR2019-00514
`Page 9
`
`

`

`Kevin,
`
`We do not believe we have any additional edits to the Protective Order; however I’d like to schedule a call with
`someone for your team today or tomorrow so that I can be perfectly clear as to the 3rd party source code provision and
`ensure we plan accordingly for our filings. Please let me know when someone would be available for such a call. In the
`meantime, attached is a clean draft of the Protective Order with updated signature blocks.
`
`Thanks,
`Liz
`
`Elizabeth Patton
`Partner
`Fox Rothschild LLP
`Campbell Mithun Tower - Suite 2000
`222 South Ninth St.
`Minneapolis, MN 55402-3338
`(612) 607-7202 - direct
`(612) 607-7100- fax
`epatton@foxrothschild.com
`www.foxrothschild.com
`
`From: Patton, Elizabeth A.
`Sent: Wednesday, October 9, 2019 5:33 PM
`To: 'Tuttle, Kevin' <ktuttle@spencerfane.com>; Elliott, Kyle L. <KElliott@spencerfane.com>; Bear, Brian
`<bbear@spencerfane.com>; Hare, Jaspal <jhare@spencerfane.com>
`Cc: Toft, Lukas <ltoft@foxrothschild.com>; Nath, Archana <anath@foxrothschild.com>; Allee, J. Lori
`<JAllee@spencerfane.com>
`Subject: RE: IPR2019-514, -500, and -497 (ANM v. Sleep Number)
`
`Kevin,
`
`Agreed we plan to file the final version in all three proceedings. We will update the signature blocks and send any
`additional redlines to you tomorrow.
`
`Liz
`
`Elizabeth Patton
`Partner
`Fox Rothschild LLP
`Campbell Mithun Tower - Suite 2000
`222 South Ninth St.
`Minneapolis, MN 55402-3338
`(612) 607-7202 - direct
`(612) 607-7100- fax
`epatton@foxrothschild.com
`www.foxrothschild.com
`
`10
`
`Sleep Number Corp.
`EXHIBIT 2038
`IPR2019-00514
`Page 10
`
`

`

`From: Tuttle, Kevin <ktuttle@spencerfane.com>
`Sent: Wednesday, October 9, 2019 3:49 PM
`To: Patton, Elizabeth A. <epatton@foxrothschild.com>; Tuttle, Kevin <ktuttle@spencerfane.com>; Elliott, Kyle L.
`<KElliott@spencerfane.com>; Bear, Brian <bbear@spencerfane.com>; Hare, Jaspal <jhare@spencerfane.com>
`Cc: Toft, Lukas <ltoft@foxrothschild.com>; Nath, Archana <anath@foxrothschild.com>; Allee, J. Lori
`<JAllee@spencerfane.com>
`Subject: [EXT] RE: IPR2019-514, -500, and -497 (ANM v. Sleep Number)
`
`Liz,
`
`Attached is the redlined exemplar draft of the modified default protective order for IPR2019-00500
`you provided for review, further redlined by Petitioner. Petitioner expects the final, agreed-upon
`modified protective order will apply to, and will be filed in each of IPR2019-00497, IPR2019-
`00500,and IPR2019-00514. Please update the counsel listings in the signature block.
`
`Kevin S. Tuttle Attorney at Law
`Spencer Fane LLP
`
`1000 Walnut, Suite 1400 | Kansas City, MO 64106
`O 816.292.8311 F 816.474.3216
`ktuttle@spencerfane.com | spencerfane.com
`
`From: e patton <epatton@foxrothschild.com>
`Sent: Wednesday, October 2, 2019 9:39 AM
`To: Tuttle, Kevin <ktuttle@spencerfane.com>; Elliott, Kyle L. <KElliott@spencerfane.com>; Bear, Brian
`<bbear@spencerfane.com>; Hare, Jaspal <jhare@spencerfane.com>
`Cc: L Toft <ltoft@foxrothschild.com>; A Nath <anath@foxrothschild.com>; Allee, J. Lori <JAllee@spencerfane.com>
`Subject: RE: IPR2019-514, -500, and -497 (ANM v. Sleep Number)
`
`Kevin,
`
`Apologies, let me try again. I have attached a PDF in case the Word version does not reflect redlines.
`
`Liz
`
`Elizabeth Patton
`Partner
`Fox Rothschild LLP
`Campbell Mithun Tower - Suite 2000
`222 South Ninth St.
`Minneapolis, MN 55402-3338
`(612) 607-7202 - direct
`(612) 607-7100- fax
`epatton@foxrothschild.com
`www.foxrothschild.com
`
`11
`
`Sleep Number Corp.
`EXHIBIT 2038
`IPR2019-00514
`Page 11
`
`

`

`From: Tuttle, Kevin <ktuttle@spencerfane.com>
`Sent: Wednesday, October 2, 2019 9:30 AM
`To: Patton, Elizabeth A. <epatton@foxrothschild.com>; Elliott, Kyle L. <KElliott@spencerfane.com>; Bear, Brian
`<bbear@spencerfane.com>; Hare, Jaspal <jhare@spencerfane.com>
`Cc: Toft, Lukas <ltoft@foxrothschild.com>; Nath, Archana <anath@foxrothschild.com>; Allee, J. Lori
`<JAllee@spencerfane.com>
`Subject: [EXT] RE: IPR2019-514, -500, and -497 (ANM v. Sleep Number)
`
`Liz,
`
`Your draft does not appear to have redlining. Please send a redlined version.
`
`Kevin S. Tuttle Attorney at Law
`Spencer Fane LLP
`
`1000 Walnut, Suite 1400 | Kansas City, MO 64106
`O 816.292.8311 F 816.474.3216
`ktuttle@spencerfane.com | spencerfane.com
`
`From: Patton, Elizabeth A. <epatton@foxrothschild.com>
`Sent: Tuesday, October 1, 2019 4:38 PM
`To: Tuttle, Kevin <ktuttle@spencerfane.com>; Elliott, Kyle L. <KElliott@spencerfane.com>; Bear, Brian
`<bbear@spencerfane.com>; Hare, Jaspal <jhare@spencerfane.com>
`Cc: L Toft <ltoft@foxrothschild.com>; A Nath <anath@foxrothschild.com>; Allee, J. Lori <JAllee@spencerfane.com>
`Subject: RE: IPR2019-514, -500, and -497 (ANM v. Sleep Number)
`
`Kevin,
`
`Attached is a redlined exemplar draft of a modified default protective order for your review. Please note that we did not
`include formatting-related changes (i.e. caption, signature block, and justifying/indenting text) in redline.
`
`Thanks,
`Liz
`
`Elizabeth Patton
`Partner
`Fox Rothschild LLP
`Campbell Mithun Tower - Suite 2000
`222 South Ninth St.
`Minneapolis, MN 55402-3338
`(612) 607-7202 - direct
`(612) 607-7100- fax
`epatton@foxrothschild.com
`www.foxrothschild.com
`
`From: Patton, Elizabeth A.
`Sent: Saturday, September 28, 2019 11:31 AM
`To: 'Tuttle, Kevin' <ktuttle@spencerfane.com>; Elliott, Kyle L. <KElliott@spencerfane.com>; Bear, Brian
`12
`
`Sleep Number Corp.
`EXHIBIT 2038
`IPR2019-00514
`Page 12
`
`

`

`<bbear@spencerfane.com>; Hare, Jaspal <jhare@spencerfane.com>
`Cc: Toft, Lukas <ltoft@foxrothschild.com>; Nath, Archana <anath@foxrothschild.com>; Allee, J. Lori
`<JAllee@spencerfane.com>
`Subject: RE: IPR2019-514, -500, and -497 (ANM v. Sleep Number)
`
`Thanks, Kevin, I should have caught that. I also should have caught that Tuesday is October 1, not September 31. Final
`draft below.
`
`-----------------------------------------
`
`Dear Board,
`
`Patent Owner is writing to notify the Board as to Patent Owner’s motion in the underlying District Court litigation to
`modify the protective order, which the District Court granted Thursday, September 26. If, in the context of deciding
`Patent Owner’s motion for additional discovery in the above-referenced IPRs, the Board would find it helpful to consider
`certain District Court documents referenced in Patent Owner’s motion for additional discovery, Patent Owner can
`submit those documents to the Board or to have a call to discuss such submission. Patent Owner’s counsel has reached
`out to Petitioner’s counsel and has identified the following times that both parties are available for a call if the Board
`desires:
`
`Monday, September 30 – 9am ET to 5pm ET
`Tuesday, October 1 – 9am ET to 5pm ET
`
`Petitioner opposes this request. If the Board is inclined to entertain this request, Petitioner requests leave to file a
`motion to address any newly submitted evidence. Petitioner also notes any submission of protected materials would
`still be governed by the District Court’s protective order.
`
`Regards,
`Luke Toft
`
`-----------------------------------------
`
`Liz
`
`Elizabeth Patton
`Partner
`Fox Rothschild LLP
`Campbell Mithun Tower - Suite 2000
`222 South Ninth St.
`Minneapolis, MN 55402-3338
`(612) 607-7202 - direct
`(612) 607-7100- fax
`epatton@foxrothschild.com
`www.foxrothschild.com
`
`From: Tuttle, Kevin <ktuttle@spencerfane.com>
`Sent: Saturday, September 28, 2019 11:24 AM
`To: Patton, Elizabeth A. <epatton@foxrothschild.com>; Elliott, Kyle L. <KElliott@spencerfane.com>; Bear, Brian
`<bbear@spencerfane.com>; Hare, Jaspal <jhare@spencerfane.com>
`Cc: Toft, Lukas <ltoft@foxrothschild.com>; Nath, Archana <anath@foxrothschild.com>; Allee, J. Lori
`
`13
`
`Sleep Number Corp.
`EXHIBIT 2038
`IPR2019-00514
`Page 13
`
`

`

`<JAllee@spencerfane.com>
`Subject: [EXT] RE: IPR2019-514, -500, and -497 (ANM v. Sleep Number)
`
`Liz,
`
`Please correct the word “Broad” to “Board” in Petitioner’s statement.
`
`Kevin S. Tuttle Attorney at Law
`Spencer Fane LLP
`
`1000 Walnut, Suite 1400 | Kansas City, MO 64106
`O 816.292.8311 F 816.474.3216
`ktuttle@spencerfane.com | spencerfane.com
`
`From: Patton, Elizabeth A. <epatton@foxrothschild.com>
`Sent: Saturday, September 28, 2019 11:17 AM
`To: Tuttle, Kevin <ktuttle@spencerfane.com>; Elliott, Kyle L. <KElliott@spencerfane.com>; Bear, Brian
`<bbear@spencerfane.com>; Hare, Jaspal <jhare@spencerfane.com>
`Cc: L Toft <ltoft@foxrothschild.com>; A Nath <anath@foxrothschild.com>; Allee, J. Lori <JAllee@spencerfane.com>
`Subject: RE: IPR2019-514, -500, and -497 (ANM v. Sleep Number)
`
`Kevin,
`
`Thanks for the response. We disagree with your comment on the timing for modifying the default protective order, but
`do intend to provide a proposed modified default protective order for your review early next week. As to the draft
`email to the Board, we will include your additional paragraph and will plan to send the email on Monday morning
`around 9am ET. A revised draft is reflected below.
`
`-----------------------------------------
`
`Dear Board,
`
`Patent Owner is writing to notify the Board as to Patent Owner’s motion in the underlying District Court litigation to
`modify the protective order, which the District Court granted Thursday, September 26. If, in the context of deciding
`Patent Owner’s motion for additional discovery in the above-referenced IPRs, the Board would find it helpful to consider
`certain District Court documents referenced in Patent Owner’s motion for additional discovery, Patent Owner can
`submit those documents to the Board or to have a call to discuss such submission. Patent Owner’s counsel has reached
`out to Petitioner’s counsel and has identified the following times that both parties are available for a call if the Board
`desires:
`
`Monday, September 30 – 9am ET to 5pm ET
`Tuesday, September 31 – 9am ET to 5pm ET
`
`Petitioner opposes this request. If the Broad is inclined to entertain this request, Petitioner requests leave to file a
`motion to address any newly submitted evidence. Petitioner also notes any submission of protected materials would
`still be governed by the District Court’s protective order.
`
`Regards,
`Luke Toft
`
`14
`
`Sleep Number Corp.
`EXHIBIT 2038
`IPR2019-00514
`Page 14
`
`

`

`-----------------------------------------
`
`Thanks,
`Liz
`
`Elizabeth Patto