Case No. IPR2019-00514
`Patent No. 5,904,172
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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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,
`
`v.
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`SLEEP NUMBER CORPORATION
`f/k/a SELECT COMFORT CORPORATION,
`PO.
`____________
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`Case No. IPR2019-00514
`
`Patent No. 5,904,172
`____________
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`
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION FOR
`ADDITIONAL DISCOVERY
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`
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`WA 13785278.1
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`Patent No. 5,904,172
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`
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`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,
`PO.
`____________
`
`Case No. IPR2019-00514
`
`Patent No. 5,904,172
`____________
`
`
`
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION FOR
`ADDITIONAL DISCOVERY
`
`
`
`
`WA 13785278.1
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`
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`Case No. IPR2019-00514
`Patent No. 5,904,172
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`TABLE OF CONTENTS
`INTRODUCTION ............................................................................................... 1
`I.
`II. THE REQUEST VIOLATES THE RIGHTS OF THIRD-PARTIES AND
`THE DISTRICT COURT’S PROTECTIVE ORDER .............................................. 1
`III. THERE ARE “OTHER MEANS” FOR PO TO SHOW COMMERCIAL
`SUCCESS .................................................................................................................. 3
`IV. THE PROPOSED DISCOVERY IS NOT USEFUL BECAUSE IT
`CANNOT SHOW COPYING ................................................................................... 4
`V.
`PO’S REQUEST IS IMPROPERLY AIMED AT OBTAINING
`LITIGATION POSITIONS ....................................................................................... 5
`VI. CONCLUSION ................................................................................................ 5
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`ii
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`WA 13785278.1
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`Case No. IPR2019-00514
`Patent No. 5,904,172
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`INTRODUCTION
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`Patent Owner (“PO”) is not entitled to this second round of discovery because
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`its theories of commercial success and copying are without merit. First, PO controls
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`approximately 95% of consumer air bed market, but strangely, it has not included
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`any evidence of its own commercial success in its Response. This renders a showing
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`of commercial success impossible, because PO has concealed 95% of the market
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`from the Board’s consideration. As for copying, PO intends to utilize its mere
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`allegations of infringement from the District Court case to prove supposed copying.
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`PO makes a generalized statement that Craig Miller, President of Petitioner had non-
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`particular access to their “technology,” but critically they cannot allege that he ever
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`had access to PO’s source code. The Board should view this request as a
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`disingenuous attempt to take a sneak-peak at Petitioner’s non-infringement theories,
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`violate the rights of third-party source code owners, all while violating a standing
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`District Court protective order.
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` THE REQUEST VIOLATES THE RIGHTS OF THIRD-PARTIES
`AND THE DISTRICT COURT’S PROTECTIVE ORDER
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`At the outset, PO claims they only learned “ANM was taking the position that
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`all Source Code is third-party owned” on October 10. This is not a matter of “taking
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`a position,” rather, it is simply stating a fact—Providence, Arco, Elysn, and
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`Medisphere are all independent, third-party corporations (collectively “Third
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`Parties”). Ex. 1033, ¶13. Moreover, PO has known about the ownership of the
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`Case No. IPR2019-00514
`Patent No. 5,904,172
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`source code since at least December 21, 2018, when Petitioners produced the
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`consumer air controller history (Exhibit 2052) in the District Court case. Ex. 1035,
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`¶¶3-4. That document plainly lists the owners of the code as Providence and Arco.
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`Ex. 2052 pg. 2-7. Additionally, Mr. Craig Miller disclosed this fact to PO during
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`his consultancy, and even introduced PO’s personnel to contacts at Arco and
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`Providence in 2008. Ex. 1033, ¶7.
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`With this knowledge, it was PO who offered to redact third-party source code
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`to mollify concerns about third-party rights in connection with its efforts to modify
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`the District Court’s protective order. Ex. 1035, ¶¶6, 7. The District Court accepted
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`PO’s offer, allowed use of the district court materials, but expressly ordered the
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`parties to redact all third-party source code in this specific proceeding. Ex. 2043,
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`pg. 8. Petitioner and PO only hold the source code in their possession by virtue of
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`the district court proceeding. Ex. 1033, ¶13; Ex. 1035, ¶5. Turning over code,
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`without the additional protective measures and remedies of the District Court and in
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`this forum more disposed to public disclosure, and in violation of the District Court’s
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`express order to the contrary, does not just fail to serve the “interests of justice,” it
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`actively undermines this standard as set forth in 37 CFR § 42.51(b)(2)(i).
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`To avoid this, PO could have sought further modification with the District
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`Court or petitioned PTAB to serve subpoenas on the third-party entities themselves.
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`These are precisely the “other means” envisioned under Garmin. But PO complains
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`Case No. IPR2019-00514
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`that availing itself of 37 CFR § 42.52(a) and seeking subpoenas is somehow not
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`“legitimate or reasonable.” Their complaint in this regard is solely based on the
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`limited time available, which is a direct result of PO’s own inaction. Indeed, to the
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`extent anything is not “legitimate or reasonable” it is PO’s instant request which
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`would have PTAB adjudicate Third Parties’ substantive rights regarding the
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`confidentiality of their source code without them being present to defend themselves,
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`an unconstitutional proposition in violation of procedural due process.
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` THERE ARE “OTHER MEANS” FOR PO TO SHOW COMMERCIAL
`SUCCESS
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`PO controls nearly 95% of the consumer air bed market, and out scales
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`Petitioner significantly. Ex. 1033, ¶14. The Board correctly observed that “PO can
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`provide its own equivalent information in the form of PO’s market share and sales
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`history.” Paper 34, p 10. Surprisingly, PO’s response nowhere talks about their
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`sales or financial information. Any notion of commercial success tied to the patents
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`in suit simply cannot be proven at this point, because the Board will be in the dark
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`about 95% of the consumer air adjustable bed market. PO could have relied on its
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`own products, which it asserts practices the patents (See e.g. Ex. 2044, p. 11), and
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`cease to burden Petitioner and the Board with repeated discovery requests. But
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`now, in the absence of making any showing about their own product’s sales
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`performance, the Board should deny any further discovery into the matter and award
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`Petitioner Costs for briefing and discovery.
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` THE PROPOSED DISCOVERY IS NOT USEFUL BECAUSE IT
`CANNOT SHOW COPYING
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`The discovery sought is not useful for showing copying because there is no
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`way to show that Petitioner, or more accurately the Third-Party companies, copied
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`PO’s source code or the functionality of its controllers. First, PO did not file its own
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`code as part of its response, and thus, it will be impossible for the Board to make
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`any comparison between it and the accused code and its functionality. Second, PO
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`does not claim that the Third Parties, the actual drafters of the source code, had
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`access to their source code. They claim that Mr. Miller, had general access to their
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`“technology” as part of his consulting agreement, but tellingly PO does not state that
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`he actually had access to their source code. This is because Mr. Miller does not
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`know how to code and never looked at any of PO’s source code. Ex. 1033, ¶6, ¶10-
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`11. Mr. Miller’s consultancy was instead focused on mattress construction, not on
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`air controller design and programming. Id. at ¶¶3-8. In fact, to the extent that there
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`was sharing of any air controllers, it was Mr. Miller who provided PO with three
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`examples of Petitioner’s already existing air controllers. Id. at ¶7. Finally, the Board
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`should note that none of PO’s experts state the code, or any algorithm within, was
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`copied verbatim from PO’s source code.
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`Case No. IPR2019-00514
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`PO’S REQUEST IS TO OBTAIN LITIGATION POSITIONS AND
`WILL NOT BE USEFUL FOR COMMERCIAL SUCCESS
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`The request violates the Garmin factor regarding litigation positions. On
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`January 25, 2019, PO filed revised infringement contentions in the District Court
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`case where they stated what portions of the accused code supposedly infringed the
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`patents in suit. Ex. 1035, ¶9. Because the stay was granted on February 12, 2019,
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`Petitioner did not serve non-infringement responses. Id. As such, the Board should
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`view this request at obtaining these non-infringement litigation positions, which
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`Garmin prohibits, while also being a worrisome foray into issues of infringement,
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`which Congress prohibited PTAB from considering.
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`Finally, PO improperly argues co-extensiveness with the accused commercial
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`products by adding all the prior art product features to the claims. See Tokai Corp.
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`v. Easton Enterprises, Inc., 632 F.3d 1358, 1369-70 (Fed. Cir. 2011). The alleged
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`inventions here are an abstract error adjustment algorithm and a valve assembly.
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`Thus, the alleged inventions are not co-extensive with the commercial products,
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`which include among other items mattresses and foundations. The mattresses, not
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`the air controllers, are the primary driving reason behind the sales. Ex. 1033, ¶2.
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`This fundamentally undercuts any “usefulness” for the proposed discovery.
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` CONCLUSION
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`The request should be denied. If the Board is inclined to grant the request, the
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`Board should grant leave to Third Parties to appear and protect their code.
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`Case No. IPR2019-00514
`Patent No. 5,904,172
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`Date: October 30, 2019
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`Respectfully Submitted,
`SPENCER FANE LLP
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`By /s/Kyle L. Elliott .
`Kyle L. Elliott, Reg. No. 39,485
`Kevin S. Tuttle, Reg. No. 52,307
`Brian T. Bear (pro hac vice)
`Spencer Fane LLP
`1000 Walnut Street, Suite 1400
`Kansas City, Missouri 64106-2140
`Telephone: (816) 474-8100
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`Jaspal S. Hare, Reg. No. 66,988
`jhare@spencerfane.com
`Spencer Fane LLP
`5700 Granite Pkwy, Suite 650
`Plano, TX 75024
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`Case No. IPR2019-00514
`Patent No. 5,904,172
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies that a copy
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`of the foregoing PETITIONER’S OPPOSITION TO PATENT OWNER’S
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`MOTION FOR ADDITIONAL DISCOVERY is served in its entirety on October
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`30, 2019, by electronic mail, as authorized by PO’s Updated Mandatory Notices,
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`directed to the attorneys of record for PO at the following correspondence address
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`of record:
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`Steven A. Moore
`steve.moore@pillsburylaw.com
`PILLSBURY WINTHORP SHAW PITTMAN LLP
`501 West Broadway, Suite 1100
`San Diego, CA 92101
`
`Luke Toft
`ltoft@foxrothschild.com
`Andrew Hansen (pro hac vice)
`ahansen@foxrothschild.com
`Archana Nath (pro hac vice)
`anath@foxrothschild.com
`Elizabeth A. Patton (pro hac vice)
`epatton@foxrothschild.com
`FOX ROTHSCHILD LLP
`222 South Ninth Street, Suite 2000
`Minneapolis, MN 55402
`
`Kecia J. Reynolds
`kecia.reynolds@pillsburylaw.com
`PILLSBURY WINTHORP SHAW PITTMAN LLP
`1200 Seventeenth Street, NW
`Washington, DC 20036
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`WA 13785278.1
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`Case No. IPR2019-00514
`Patent No. 5,904,172
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`Date: October 30, 2019
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` /s/Kyle L. Elliott .
`Kyle L. Elliott (Reg. No. 39,485)
`.
`Attorney for Petitioner
`American National Manufacturing, Inc.
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`WA 13785278.1
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