UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`AMERICAN NATIONAL MANUFACTURING INC.,
`Petitioner,
`
`v.
`
`SLEEP NUMBER CORPORATION
`f/k/a SELECT COMFORT CORPORATION,
`Patent Owner.
`____________
`
`Case No. IPR2019-00514
`Patent No. 5,904,172
`____________
`
`
`
`
`
`
`PATENT OWNER’S MOTION FOR ADDITIONAL DISCOVERY
`
`
`
`
`
`
`
`
`
`
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`AMERICAN NATIONAL MANUFACTURING INC.,
`Petitioner,
`
`v.
`
`SLEEP NUMBER CORPORATION
`f/k/a SELECT COMFORT CORPORATION,
`Patent Owner.
`____________
`
`Case No. IPR2019-00514
`Patent No. 5,904,172
`____________
`
`
`
`
`
`
`PATENT OWNER’S MOTION FOR ADDITIONAL DISCOVERY
`
`
`
`
`
`
`
`
`
`
`Case IRP2019-00514
`Patent 5,904,172
`
`
`Table of Contents
`
`
`Introduction ........................................................................................................... 1
`Factual and Procedural Background ....................................................................... 1
`Argument ............................................................................................................... 2
`
`The Source Code is Probative to Questions of Patentability. ........................ 2
`
`PO’s Request is Timely................................................................................ 3
` Discovery is Appropriate as to the Source Code in This Case. ..................... 3
`A.
`There is More than a Mere Possibility of Usefulness. ........................ 4
`B.
`Sleep Number Is Not Seeking Litigation Positions. ............................ 4
`C.
`Sleep Number Cannot Generate Equivalent Discovery. ..................... 4
`D.
`The Requested Discovery is Easily Understandable. .......................... 5
`E.
`The Requested Discovery is Not Overly Burdensome. ....................... 5
`
`
`
`
`
`
`
`
`
`
`
`i
`
`
`
`Case IRP2019-00514
`Patent 5,904,172
`
`
`Introduction
`
`Patent Owner (“PO”) requests the Board require Petitioner (“ANM”) produce
`
`(1) five versions of ANM’s source code printed on bates numbered pages (“Source
`
`Code”) in the district court case (“District Court Case”), and (2) the three exhibits to
`
`PO’s Infringement Contentions against ANM (“Contentions”). (See Ex. 2074.)
`
`Factual and Procedural Background
`
`During the District Court Case, ANM made various accused Source Code
`
`available for inspection at its counsel’s offices under strict procedures set forth in
`
`the District Court Protective Order (“DCPO”). Following inspection, PO drafted and
`
`served Infringement Contentions that refer to nine versions of Source Code line
`
`numbers, variables, and functions, including the five versions requested herein.
`
`On September 26, 2019, after PO sought use from the District Court, per the
`
`Board’s guidance, of District Court documents in this IPR (including Source Code),
`
`the District Court modified the DCPO, but based on ANM’s opposition arguments,
`
`held that PO must redact, i.e. not use, third-party source code in documents used in
`
`this IPR. (See Ex. 2036 ¶ 9; Ex. 2043.)1 While thereafter meeting and conferring on
`
`October 10, 2019 to formulate a stipulated protective order for this IPR (see Ex.
`
`
`1 PO made the initial offer to redact third-party code believing that only Medisphere
`
`code, one of nine versions of Source Code, would require redaction.
`
`1
`
`
`
`Case IRP2019-00514
`Patent 5,904,172
`
`2024), ANM took the position, only 13 days prior to Due Date 1 for PO’s Patent
`
`Owner Response (“POR”) and in a surprise to PO, that all Source Code constitutes
`
`third-party source code that must be redacted and cannot be provided to the Board.
`
`(See Ex. 2036 ¶ 11.) ANM later offered access to the Platinum code owned by Elsyn,
`
`but subsequently rescinded its offer and claimed it had no authority to consent to the
`
`use of any Source Code. (Id. ¶ 11; Ex. 2038.) Accordingly, PO did not learn until
`
`October 10, 2019 it could not use any Source Code in this IPR. PO immediately
`
`notified ANM it wanted to request a conference with the Board. (Ex. 2036 ¶ 12.)
`
`The parties requested one on October 14 and it was held October 16, 2019. As a
`
`result of the call, PO narrowed its discovery requests to five versions of Source Code.
`
`The Source Code is Probative to Questions of Patentability.
`
`Argument
`
`
`
`PO requests use of the Source Code because it is narrowly related to copying
`
`and nexus. “Evidence of copying tends to show nonobviousness.” WBIP, LLC v.
`
`Kohler Co., 829 F.3d 1317, 1336 (Fed. Cir. 2019).2 “[E]vidence of efforts to
`
`replicate a specific product” is probative of copying. Wyers v. Master Lock Co., 616
`
`F.3d 1231, 1246 (Fed. Cir. 2010). Further, as will be articulated in the POR when
`
`
`2 See also Silicon Labs., Inc. v. Cresta Tech. Corp., No. IPR2015-00626, 2016 WL
`
`8969909, at *13 (P.T.A.B. Aug. 11, 2016) (competitor copying may be relevant).
`
`2
`
`
`
`Case IRP2019-00514
`Patent 5,904,172
`
`filed on October 30, 2019, nexus is required to show secondary considerations. (See
`
`also IPR2019-00500, Paper 45 at 67); Brown & Williamson Tobacco Corp. v. Phillip
`
`Morris Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000) (“[I]f the marketed product
`
`embodies the claimed features . . . then a nexus is presumed and the burden shifts to
`
`PO’s Request is Timely.
`
`the party asserting obviousness to present evidence to rebut the presumed nexus.”).
`
`
`
`As detailed above, per the Board’s guidance, PO first sought use of the Source
`
`Code through modifying the DCPO. It was not until September 26, 2019 that the
`
`District Court issued its order prohibiting use of third-party source code, and it was
`
`not until October 10, 2019 that PO learned ANM was taking the position that all
`
` Discovery is Appropriate as to the Source Code in This Case.
`
`Source Code is third-party owned. PO requested to file this motion immediately.
`
`The Panel may order additional discovery if it “is in the interests of justice,”
`
`which involves considering the five Garmin factors discussed in detail below.
`
`Kingston Tech. Co., Inc. v. CATR Co., Ltd., IPR2015-00149, Paper 24 at 2 (PTAB
`
`June 10, 2015) (citing 35 U.S.C. § 316(a)(5); 37 C.F.R. § 42.51(b)(2)); Garmin Int’l,
`
`Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 26 at 6–7 (PTAB March
`
`5, 2013). Here, PO’s request is in the interests of justice because the Source Code
`
`will be instructive to the Board in analyzing secondary considerations. This is
`
`especially true as ANM should not be allowed to use this IPR proceeding as both a
`
`3
`
`
`
`Case IRP2019-00514
`Patent 5,904,172
`
`sword (choosing this forum to seek invalidation of PO’s patents) and a shield
`
`(withholding use of Source Code to restrict PO’s ability to fully defend its patents).
`
`A. There is More than a Mere Possibility of Usefulness.
`
`Under this factor, PO has evidence tending to show beyond speculation that
`
`something useful will be uncovered. Garmin, IPR2012-00001, Paper 26 at 6–8. PO’s
`
`request is based on code inspected in the District Court Case, which PO incorporated
`
`into its Infringement Contentions and which show copying and nexus. See, Kingston
`
`Tech., IPR2015-00149, Paper 24 at 3-4 (finding experts’ review of underlying
`
`litigation’s materials and party’s claim charts supported patent owner’s discovery
`
`request). Additional evidence will be articulated in the POR, further demonstrating
`
`the relevance of the Source Code. (See also IPR2019-00500, Paper 45 at 67.)
`
`B.
`
`Sleep Number Is Not Seeking Litigation Positions.
`
`Under this factor, PO does not seek any litigation position or infringement
`
`position; it simply seeks information relevant to secondary considerations.
`
`C.
`
`Sleep Number Cannot Generate Equivalent Discovery.
`
`PO has no ability to generate equivalent information by other means. Garmin,
`
`IPR2012-00001, Paper 26 at 6. The Source Code is not publicly or otherwise
`
`available; rather, it is apparently owned by third parties who have business
`
`relationships with Petitioner. Although PO could theoretically subpoena these third-
`
`parties, it would still be required to obtain the Board’s permission to do so. This is
`
`4
`
`
`
`Case IRP2019-00514
`Patent 5,904,172
`
`not a legitimate or reasonable means to generate equivalent discovery because: (1)
`
`the Source Code is already in both party’s possession and could be produced
`
`immediately without burdening third parties through another strict, time consuming,
`
`and expensive inspection; (2) the code is already protected by the DCPO and will be
`
`protected by the Stipulated Protective Order; (3) there is no contract prohibiting the
`
`code’s use in this IPR in the same way it can be used in the District Court under
`
`those protections; (4) ANM has the authority to produce or allow its use, evidenced
`
`by the access it provided in the District Court Case and its offer on one version
`
`during meet and confer; and (5) the Board has the power, as ANM acknowledged
`
`(Ex. 2037 at 2, 4), to order ANM and third parties to produce documents.
`
`D. The Requested Discovery is Easily Understandable.
`
`Under this factor, the requests are easily understandable because the Parties
`
`know exactly what the Source Code and Contentions are.
`
`E.
`
`The Requested Discovery is Not Overly Burdensome.
`
`Under this factor, PO’s requests are sensible and responsibly tailored
`
`according to genuine need and are not overly burdensome. Garmin, IPR2012-00001,
`
`Paper 26 at 7, 15–16. The requests can be answered by simply producing—or
`
`alternatively, merely allowing the use of—information already provided in the
`
`District Court Case, without the need to create or find any documents. Additionally,
`
`PO has narrowed its request to only five of nine versions of code in three exhibits.
`
`5
`
`
`
`Case IRP2019-00514
`Patent 5,904,172
`
`
`Dated: October 23, 2019
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`By: /s/ Luke Toft
`Luke Toft (Reg. No. 75,311)
`Andrew S. Hansen (pro hac vice)
`Archana Nath (pro hac vice)
`Elizabeth A. Patton (pro hac vice)
`FOX ROTHSCHILD LLP
`222 South Ninth Street, Suite 2000
`Minneapolis, MN 55402-3338
`Telephone: (612) 607-7000
`Facsimile: (612) 607-71000
`ltoft@foxrothschild.com
`ahansen@foxrothschild.com
`anath@foxrothschild.com
`epatton@foxrothschild.com
`
`Steven A. Moore (Reg. No. 55,462)
`PILLSBURY WINTHROP SHAW PITTMAN LLP
`501 West Broadway, Suite 1100
`San Diego, CA 92101
`Telephone: (619) 234-5000
`Facsimile: (619) 236-1995
`steve.moore@pillsburylaw.com
`
`Kecia J. Reynolds (Reg. No. 47,021)
`PILLSBURY WINTHROP SHAW PITTMAN LLP
`1200 Seventeenth Street, NW
`Washington, DC 20036
`Telephone: (202) 663-8000
`Facsimile: (202) 663-8007
`kecia.reynolds@pillsburylaw.com
`
`Attorneys for Patent Owner
`Sleep Number Corporation
`
`
`
`
`
`6
`
`
`
`Case IRP2019-00514
`Patent 5,904,172
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR § 42.6(e), the undersigned hereby certifies that on October
`
`23, 2019, the foregoing Patent Owner’s Motion for Additional Discovery, and its
`
`cited exhibits, were served via e-mail, as authorized by the Petitioner, at the
`
`following email correspondence address of record:
`
`Kyle L. Elliott
`kelliott@spencerfane.com
`Kevin S. Tuttle
`ktuttle@spencerfane.com
`Brian T. Bear
`bbear@spencerfane.com
`Lori J. Allee
`jallee@spencerfane.com
`SPENCER FANE LLP
`1000 Walnut Street, Suite 1400
`Kansas City, MO 64106
`
`Jaspal S. Hare
`jhare@spencerfane.com
`SPENCER FANE LLP
`2200 Ross Avenue
`Suite 4800 West
`Dallas, TX 75201
`
`
`Dated: October 23, 2019
`
`
`
`
`
`/s/ Luke Toft
`Luke Toft (Reg. No. 75, 311)
`Counsel for Patent Owner
`
`
`
`
`
`
`
`
`7
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
