1000 Walnut, Suite 1400 | Kansas City, MO 64106
`O 816.292.8809
`
`From:
`Bear, Brian <bbear@spencerfane.com>
`Sent:
`Wednesday, December 11, 2019 11:21 AM
`To:
`Trials; Tuttle, Kevin
`Elliott, Kyle L.; Allee, J. Lori; Hare, Jaspal; Nath, Archana; Steve Moore; k ecia; Hansen,
`Cc:
`Andrew S.; Patton, Elizabeth A.; Engle, Devonia S.; Scott, Kris K.; Toft, Lukas
`Subject:
`[EXT] RE: American National Manufacturing v. Sleep Number, IPR2019-00497, -500,
`and -514
`ANM v Select Comfort - Chart for Board.DOCX
`Attachments:
`Dear Board,
` Please find attached a chart that has been prepared by the parties in accordance with guidance provided below.
` Sincerely,
`
`
`Spencer Fane LLP
`BBear@spencerfane.com | spencerfane.com
`
`From: Trials [Trials@USPTO.GOV]
`Sent: Monday, December 09, 2019 2:14 PM
`To: Tuttle, Kevin; Trials
`Cc: Bear, Brian; Elliott, Kyle L.; Allee, J. Lori; Hare, Jaspal; A Nath; Steve Moore; k ecia; A Hansen; e patton; D Engle;
`Scott, Kris K.; L Toft
`Subject: RE: American National Manufacturing v. Sleep Number, IPR2019-00497, -500, and -514
`Counsel,
` Petitioner will submit its proposed discovery requests to the Board. In addition, the parties will produce a joint discovery
`
`request chart as follows: For each disputed discovery request, Column 1 will include the disputed discovery request;
`column 2 will contain Petitioner’s reason and explanation for the request; Column 3 will contain Patent Owner’s objection
`to the disputed discovery request. The chart is limited to 3 pages.
` A conference call will be scheduled once the Board receives both Petitioner’s discovery requests as well as the discovery
`
`request chart.
` Regards,
`
` Andrew Kellogg,
`
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`Direct: 571-272-5366
`
`
`Brian Bear Of Counsel
`
`1
`
`Sleep Number Corp.
`EXHIBIT 2093
`IPR2019-00514
`Page 1
`
`

`

`
`Petitioner is following up with its request for a call with the Board to address the discovery described
`
`
`
`
`
`
`Kevin S. Tuttle Attorney at Law
`
`From: Tuttle, Kevin <ktuttle@spencerfane.com>
`Sent: Friday, December 6, 2019 4:36 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Bear, Brian <bbear@spencerfane.com>; Elliott, Kyle L. <KElliott@spencerfane.com>; Allee, J. Lori
`<JAllee@spencerfane.com>; Hare, Jaspal <jhare@spencerfane.com>; A Nath <anath@foxrothschild.com>; Steve Moore
`<steve.moore@pillsburylaw.com>; k ecia <kecia.reynolds@pillsburylaw.com>; A Hansen <ahansen@foxrothschild.com>;
`e patton <epatton@foxrothschild.com>; D Engle <dengle@foxrothschild.com>; Scott, Kris K.
`<kkscott@foxrothschild.com>; L Toft <ltoft@foxrothschild.com>
`Subject: RE: American National Manufacturing v. Sleep Number, IPR2019-00497, -500, and -514
`
`
`Dear Board:
`
`below.
`
`The parties are available for a conference call with the Board on the following dates and times:
`
`Monday, December 9 from 11 AM to 4 PM Eastern time; and
`Tuesday, December 10 from 11 AM to 12 PM or 1 PM to 2 PM Eastern time
`
`Spencer Fane LLP
`ktuttle@spencerfane.com | spencerfane.com
`
`From: Bear, Brian <bbear@spencerfane.com>
`Sent: Friday, November 22, 2019 3:06 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Tuttle, Kevin <ktuttle@spencerfane.com>; Elliott, Kyle L. <KElliott@spencerfane.com>; Allee, J. Lori
`<JAllee@spencerfane.com>; Bear, Brian <bbear@spencerfane.com>; Hare, Jaspal <jhare@spencerfane.com>; A Nath
`<anath@foxrothschild.com>; Steve Moore <steve.moore@pillsburylaw.com>; k ecia
`<kecia.reynolds@pillsburylaw.com>; A Hansen <ahansen@foxrothschild.com>; e patton <epatton@foxrothschild.com>;
`D Engle <dengle@foxrothschild.com>; Scott, Kris K. <kkscott@foxrothschild.com>; L Toft <ltoft@foxrothschild.com>
`Subject: American National Manufacturing v. Sleep Number, IPR2019-00497, -500, and -514
`
`
`Dear Board:
`
`discovery sought by Petitioner. Petitioner will provide a court reporter for the call.
`
`The parties are available for a conference call with the Board on the following dates and times:
`
`Monday, December 2 from 11 AM to 4 PM Eastern time; and
`Tuesday, December 3 from 11 AM to 4 PM Eastern time
`
`2
`
`
`Petitioner American National Manufacturing Inc. requests a call with the Board seeking authorization
`to file a motion in all three IPRs identified above for additional discovery to rebut Patent Owner’s
`assertions of secondary considerations raised in Patent Owner’s Response. Petitioner met and
`conferred with Patent Owner on November 22, 2019 and the parties were able to reach agreement
`on certain proposed discovery requests but did not arrive at an agreement to the remaining additional
`
`1000 Walnut, Suite 1400 | Kansas City, MO 64106
`O 816.292.8311 F 816.474.3216
`
`
`
`
`
`
`
`Sleep Number Corp.
`EXHIBIT 2093
`IPR2019-00514
`Page 2
`
`

`

`Brian Bear Of Counsel
`
`Spencer Fane LLP
`BBear@spencerfane.com | spencerfane.com
`
`
`1000 Walnut, Suite 1400 | Kansas City, MO 64106
`O 816.292.8809
`
`3
`
`Sleep Number Corp.
`EXHIBIT 2093
`IPR2019-00514
`Page 3
`
`

`

`
`
`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. IPR2019-00497
`Case No. IPR2019-00500
`Case No. IPR2019-00514
`
`
`
`
`PETITIONER’S CHART OF
`
`PROPOSED ADDITIONAL DISCOVERY REQUESTS
`
`
`
`
`
`
`
`
`
`Sleep Number Corp.
`EXHIBIT 2093
`IPR2019-00514
`Page 4
`
`

`

`
`
`
`
`REQUEST
`
`Interrogatory No. 1: Identify on a
`quarterly or annual basis the total
`expenditures for your “sales and
`marketing,” as identified in Sleep
`Number’s 10-K statements since
`January 1, 1994.
`
`PETITIONER’S
`REASON FOR
`REQUESTING
`Patent Owner has stated
`that their products practice
`the patents in suit. This
`Interrogatory is directed
`towards their factual basis
`for commercial success.
`This evidence will
`demonstrate that any
`commercial success
`experienced by PO is due
`to an extensive marketing,
`sales, and advertising
`campaign.
`
`See Interrogatory No. 1
`
`Interrogatory No. 1: Describe
`that nature
`and
`types of
`expenditures that are included in
`the
`line
`item
`“sales
`and
`marketing” as identified in Sleep
`Number’s 10-K.
`
`Interrogatory No. 2: Identify on a
`quarterly or annual basis the total
`expenditures for your “Cost of
`Sales” as identified in Sleep
`Number’s 10-K statements since
`January 1, 1994.
`
`PATENT OWNER’S (“PO”)
`OBJECTION
`
`This request is overly broad,
`unduly burdensome, not
`sufficiently limited in
`time/scope, and not relevant
`to arguments pending before
`the Board. First, it seeks
`detailed and onerous data
`dating back 25 years. Second,
`PO has not relied on its own
`financials in making
`secondary considerations
`arguments and thus the
`requested data will not be
`useful. (See, e.g., IPR2019-
`00497, Paper 45 at 58–67.)
`Third, the Board did not
`authorize discovery into
`Petitioner’s detailed
`financials and should not do
`so for PO’s financials.
`Therefore, this request does
`not satisfy the interests of
`justice or the Garmin factors
`and should be denied. See
`Prong, Inc. v. Yeoshua
`Sorias, IPR2015-01317,
`Paper 22 at 4–6 (P.T.A.B.
`Mar. 10, 2016).
`See supra PO’s Objection to
`Interrogatory No. 1.
`
`See Interrogatory No. 1
`
`See supra PO’s Objection to
`Interrogatory No. 1.
`
`Interrogatory No. 3: Describe that
`nature and type of expenditures
`
`See Interrogatory No. 1
`
`See supra PO’s Objection to
`Interrogatory No. 1.
`
`Sleep Number Corp.
`EXHIBIT 2093
`IPR2019-00514
`Page 5
`
`

`

`that are included in the line item
`“Costs of Sales” as identified in
`Sleep Number’s 10-K.
`
`Interrogatory No. 4: Identify on a
`quarterly or annual basis the total
`expenditures for the line item
`“General and Administrative” as
`identified in Sleep Number’s 10-
`K statements since January 1,
`1994.
`
`Interrogatory No. 5: Describe that
`nature and type of expenditures
`that are included in the line item
`“General and Administrative” as
`identified in Sleep Number’s 10-
`K.
`
`Interrogatory No. 7: Identify on
`a quarterly or annual basis the
`total gross revenue as identified
`in
`Sleep Number’s
`10-K
`statements since January 1, 1994.
`
`Interrogatory No. 8: To the
`extent that it is not included in the
`above line items regarding “cost
`of sales,” “Sales and Marketing,”
`or “General and Administrative”
`line items in Sleep Number’s 10-
`K statements,
`identify on a
`quarterly or annual basis the total
`amount expended by Sleep
`Number
`for
`construction,
`mortgage, rent, or other expenses
`associated with Sleep Number
`retail stores since January 1,
`1994. If these expenses are
`included in “cost of sales,” “Sales
`and Marketing,” or “General and
`Administrative,” instead please
`identify the line item in which it
`was included.
`
`See Interrogatory No. 1
`
`See supra PO’s Objection to
`Interrogatory No. 1.
`
`See Interrogatory No. 1
`
`See supra PO’s Objection to
`Interrogatory No. 1.
`
`See Interrogatory No. 1
`
`See supra PO’s Objection to
`Interrogatory No. 1.
`
`See supra PO’s Objection to
`Interrogatory No. 1.
`Additionally, Petitioner
`acknowledges that the
`information sought by this
`interrogatory only “may
`show” certain information,
`which does not satisfy Prong
`1 of the Garmin factors.
`
`Patent Owner has stated
`that their products practice
`the patents in suit. This
`Interrogatory is directed
`towards their factual basis
`for commercial success.
`Petitioner believes that
`this evidence may show
`that any commercial
`success related to the
`patents in suit are the
`result of significant
`expenditure by Patent
`Owner with regards to
`brick and mortar retail
`locations throughout the
`country that sell directly to
`consumers.
`
`Interrogatory No. 9: To the
`extent that it is not included in the
`
`Patent Owner has stated
`that their products practice
`
`See supra Objection to
`Interrogatory No. 1.
`
`
`
`
`
`Sleep Number Corp.
`EXHIBIT 2093
`IPR2019-00514
`Page 6
`
`

`

`Additionally, Petitioner
`acknowledges that the
`information sought by this
`interrogatory only “may
`show” certain information,
`which does not satisfy Prong
`1 of the Garmin factors.
`
`the patents in suit. This
`Interrogatory is directed
`towards their factual basis
`for commercial success.
`Petitioner believes that
`this evidence may show
`that any commercial
`success related to the
`patents in suit are the
`result of significant
`expenditure by Patent
`Owner with regards to
`sales and marketing staff.
`
`See above Interrogatories. See supra Objection to
`Interrogatory No. 1.
`
`See above Interrogatories.
`Such an affidavit will
`provide foundation for the
`admission of these figures.
`
`See supra Objection to
`Interrogatory No. 1.
`
`above line items regarding “cost
`of sales,” “Sales and Marketing,”
`or “General and Administrative”
`line items in Sleep Number’s 10-
`K statements,
`identify on a
`quarterly or annual basis the total
`amount expended by Sleep
`Number
`for
`salaries,
`commissions, benefits, and other
`employment related expenditures
`for
`staff
`and management
`associated with Sleep Number
`retail stores since January 1,
`1994. If these expenses are
`included in “cost of sales,” “Sales
`and Marketing,” or “General and
`Administrative,” instead please
`identify the line item in which it
`was included.
`
`Request for Production No. 1:
`Produce
`a Microsoft Excel
`workbook
`that contains
`the
`information requested above in
`the interrogatories.
`
`Request for Production No. 2:
`Produce a business records
`affidavit from Sleep Number
`Corporation’s custodian of
`records that authenticates the
`above Microsoft Excel file as a
`summation of voluminous
`business records under FRE
`1006.
`
`
`
`
`
`
`
`Sleep Number Corp.
`EXHIBIT 2093
`IPR2019-00514
`Page 7
`
`