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 OPPOSITION TO
`PETITIONER’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 OPPOSITION TO
`PETITIONER’S MOTION FOR ADDITIONAL DISCOVERY
`
`
`
`
`
`
`
`
`
`
`Case IRP2019-00514
`Patent 5,904,172
`
`
`TABLE OF CONTENTS
`
`Introduction ........................................................................................................... 1
`Factual Background ............................................................................................... 1
`
`ANM’s Discovery Requests Do Not Satisfy the Garmin Factors. ................ 1
`A.
`The Requests Do Not Have Any Possibility of Usefulness................. 2
`B.
`ANM Can Generate Equivalent Discovery. ....................................... 4
`C.
`and Are Not Tailored or Understandable. ........................................... 5
`ANM’s Discovery Requests Are Untimely. ................................................. 5
`
`
`
`
`
`The Requests Are Burdensome, Seek PO’s Litigation Positions,
`
`
`
`
`
`
`
`
`
`
`
`
`
`i
`
`
`
`Case IRP2019-00514
`Patent 5,904,172
`
`
`Introduction
`
`Patent Owner (“PO”) opposes Petitioner’s (“ANM”) belated Motion for
`
`Additional Discovery (“Motion”) because ANM’s discovery requests seek
`
`expansive, overbroad, and burdensome marketing and advertising financial
`
`information not relevant to any arguments pending before the Board.
`
`Factual Background
`
`Following PO’s motion for additional discovery, the Board previously
`
`ordered ANM to produce a certain subset of data related to ANM’s financials. (Paper
`
`35.) PO’s economics expert analyzed and opined on that ANM data, which PO cited
`
`in the secondary considerations argument of its Patent Owner Response (“POR”).
`
`(See Paper 47 (“POR”) at 65–67; Ex. 2055.) Other PO experts analyzed PO’s
`
`products for purposes of a copying opinion, but not for any opinion as to PO’s
`
`financials or to the success of PO’s products as ANM contends. (See POR at 60–64;
`
`Exs. 2041, 2054.) No PO expert opined on PO’s financials or product success, nor
`
`ANM’s Discovery Requests Do Not Satisfy the Garmin Factors.
`
`did PO rely on such evidence in its POR. (See POR & accompanying Exs.)
`
`
`
`The Board may order additional discovery if it “is in the interests of justice,”
`
`which involves considering the five Garmin factors discussed below. See 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 (P.T.A.B. Mar. 5, 2013). ANM’s requests fail to
`
`1
`
`
`
`Case IRP2019-00514
`Patent 5,904,172
`
`satisfy these factors because they are overbroad, burdensome, not sufficiently
`
`limited in scope, seeking data available elsewhere, and irrelevant.
`
`A. The Requests Do Not Have Any Possibility of Usefulness.
`
`There is no evidence tending to show beyond speculation that something
`
`useful will be uncovered by ANM’s requests. See Garmin, IPR2012-00001, Paper
`
`26 at 6–8.1 In satisfying its initial burden on secondary considerations, PO relied
`
`upon evidence of (1) ANM’s commercial success, (2) industry praise, and (3)
`
`copying and industry adoption. (POR at 58–67.) The requested data relating to PO’s
`
`financials could only be relevant (if at all) to rebut an argument relying on PO’s
`
`marketing and sales, which was not made. Therefore, the requested data cannot rebut
`
`PO’s arguments and is not relevant.
`
`Attempting to circumvent this, ANM essentially lumps all secondary
`
`consideration factors together, arguing that the success of PO and its products (or
`
`lack thereof) could refute PO’s arguments related to ANM’s success or to copying
`
`of PO’s products. This is nonsensical. PO’s marketing efforts are irrelevant to
`
`ANM’s sales or commercial success. See Pfizer Inc. v. Ivax Pharm., Inc., No.
`
`CIV.A.07CV00174(DMC), 2009 WL 2905454, at *6 (D.N.J. Sept. 9, 2009)
`
`
`1 For two of its requests, ANM admits they only “may show” certain information,
`
`which is insufficient under this factor. (Ex. 2093 at Reason for Interrog. 8, 9.)
`
`2
`
`
`
`Case IRP2019-00514
`Patent 5,904,172
`
`(marketing of one product cannot impact commercial success analysis of different
`
`product).2 Moreover, even ANM’s cited cases demonstrate that evidence rebutting
`
`each factor must actually relate to that factor. See Seadrill Ams., Inc. v. Transocean
`
`Offshore Deepwater Drilling, Inc., IPR2015-01929, Paper 103 at 46–64 (P.T.A.B.
`
`May 18, 2017) (analysis involves “placing the evidence offered” into different
`
`“buckets – commercial success, praise, copying, etc.” but recognizing that certain
`
`evidence may relate to more than one bucket, e.g. to either “praise” or “copying”);
`
`WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1329–37 (Fed. Cir. 2016) (evaluating
`
`evidence related to each factor separately).
`
`Simply put, ANM seeks evidence it cannot use to rebut PO’s secondary
`
`considerations arguments, which relate to ANM’s commercial success, not PO’s.
`
`ANM’s requests should thus be denied. See Prong, Inc. v. Yeoshua Sorias, IPR2015-
`
`01317, Paper 22 at 4–6 (P.T.A.B. Mar. 10, 2016) (denying motion for additional
`
`discovery because party had “not provided a threshold amount of reasoning or
`
`
`2 Additionally, ANM’s reliance on PO’s recent marketing efforts rather than those
`
`at the time the patented technology was introduced (i.e. 1998 and 2008) supports a
`
`finding that requests for 25 years of marketing data is pure speculation. (Compare
`
`Motion at 2–4 (relying on a 2019 10-K, website, and marketing deal) with Ex. 2094
`
`(containing public links to PO’s 10-Ks dating back to the late 1990s).)
`
`3
`
`
`
`Case IRP2019-00514
`Patent 5,904,172
`
`evidence to show sales allegedly amounting to commercial success”).
`
`B. ANM Can Generate Equivalent Discovery.
`
`ANM has the ability to generate equivalent information by other means. See
`
`Garmin, IPR2012-00001, Paper 26 at 6. Indeed, ANM is able to make its desired
`
`arguments related to PO’s marketing and sales based upon publicly available
`
`information it has already located. As just one example, ANM is free to rely upon
`
`the sales and marketing figures in the 2019 10-K cited in its Motion, a portion of
`
`which is depicted below, to make any argument it desires about why PO has been
`
`commercially successful or not:
`
`
`
`(Ex. 1059 at 33.) ANM may also rely upon information contained in any other of
`
`PO’s 10-Ks, which date back to the late 1990s. (Ex. 2094.) Additionally, ANM can
`
`make any arguments it chooses about PO’s public statements on success or litigation
`
`positions on lost sales, which ANM argues are purportedly relevant to secondary
`
`considerations. (See Motion at 2–4.)3
`
`
`3 PO disagrees that its public statements are relevant here or that its positions are
`
`inconsistent. For example, whether Real-Party-in-Interest Dires, LLC achieved
`
`4
`
`
`
`Case IRP2019-00514
`Patent 5,904,172
`
`
`C. The Requests Are Burdensome, Seek PO’s Litigation Positions, and
`
`Are Not Tailored or Understandable.
`
`The requests fail to satisfy the remaining factors, particularly the requirement
`
`that the requests be responsibly tailored according to genuine need and not overly
`
`burdensome. Garmin, IPR2012-00001, Paper 26 at 7, 14–16. ANM’s requests are
`
`convoluted, broad in scope, and seek detailed data dating back 25 years. The Board
`
`did not authorize discovery into ANM’s detailed financials and should not allow
`
`ANM to obtain such information from PO, particularly given the irrelevance to the
`
`pending secondary considerations arguments. If anything, ANM seeks data to use in
`
`the underlying infringement suit, which is improper. The requests should be denied.
`
` ANM’s Discovery Requests Are Untimely.
`
`ANM waited until November 21, 2019 to notify PO it sought PO’s financials
`
`(Ex. 2095), despite knowing since the September 5, 2019 Board call that PO was
`
`seeking ANM’s financials. ANM should have made a reciprocal request at that time.
`
`Instead, ANM waited until a month after receiving the POR, which does not refer to
`
`PO’s sales or product success and thus cannot constitute the reason for ANM’s delay.
`
`
`sales as a result of trademark infringement does not alter the evidence—based
`
`upon ANM’s data—that demonstrates ANM experienced commercial success as a
`
`result of incorporating PO’s patented technology.
`
`5
`
`
`
`Case IRP2019-00514
`Patent 5,904,172
`
`
`Dated: December 31, 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
`
`December 31, 2019, the foregoing Patent Owner’s Opposition to Petitioner’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: December 31, 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
