JASPAL S. HARE
`+1 214.750.3623 (DIRECT)
`+1 317.294.7132 (MBL.)
`jhare@spencerfane.com
`
`
`
`
`File No. 5015342-80
`
`
`
`
`
`October 19, 2018
`
`
`VIA E-MAIL
`
`Elizabeth A. Patton
`Fox Rothschild LLP
`Campbell Mithun Tower
`222 South Ninth Street, Suite 2000
`Minneapolis, MN 55402-3338
`Tel.: 612-607-7202
`epatton@foxrothschild.com
`
`
`Re:
`
`Third Request to Meet and Confer re Non-Compliance with Discovery
`(Deficiencies re Plaintiff’s Infringement Contentions to ANM)
`Sleep Number Corp. v. Sizewise Rentals, L.L.C., No. 5:18-cv-356-AB (SPx) (C.D. Cal.)
`Sleep Number Corp. v. Am. Nat’l Man., Inc., No. 5:18-cv-357-AB (SPx) (C.D. Cal.)
`
`
`Dear Ms. Patton:
`
`Per L.R. 37, this letter is a meet and confer communication concerning the inadequacies of Plaintiff’s
`Disclosure of Asserted Claims and Infringement Contentions (P.R. 3-1) to Defendant American National
`Manufacturing, Inc. (“ANM”). Please provide your availability to meet and confer regarding the below. To
`the extent the below are not satisfactorily resolved, Defendants intend to bring a motion to strike and/or
`motion to compel as appropriate.
`
`I.
`
`PLAINTIFF’S DISCLOSURE OF ASSERTED CLAIMS AND INFRINGEMENT CONTENTIONS
`(P.R. 3-1) TO ANM
`
`“The Patent Rules demonstrate high expectations as to plaintiffs’ preparedness before bringing suit,
`requiring plaintiffs to disclose their preliminary infringement contentions before discovery has even
`begun.’’ Connectel, LLC v. Cisco Systems, Inc., 391 F. Supp. 2d 526, 527–28 (E.D. Tex. 2005)
`(quotations and citation omitted). “Compliance with Patent Rule 3–1 therefore demands [infringement
`contentions] that set forth particular theories of infringement with sufficient specificity to provide
`defendants with notice of infringement beyond that which is provided by the mere language of the patent
`claims themselves.” Id. (citation, quotations, and alterations omitted). “[Infringement contentions]
`providing vague, conclusory language or simply mimicking the language of the claims when identifying
`infringement fail to comply with Patent Rule 3–1.” Id. “ [M]ore than a perfunctory submission is required.”
`Id. “Plaintiffs are expected to rigorously analyze all publicly available information before bringing suit and
`must explain with great detail their theories of infringement.” Id.
`
`Plaintiff’s infringement contentions fail to provide the requisite detail and are deficient.
`
`
`
`SPENCER FANE LLP | 5800 GRANITE PKWY, SUITE 800, PLANO, TX 75024 | 972.324.0300 | FAX 972.324.0301 | spencerfane.com
`
`American National Manufacturing, Inc.
`EXHIBIT 1022
`IPR2019-00497
`Page 1
`
`

`

`
`
`Third Deficiencies Letter re
`Plaintiff’s Infringement Contentions to ANM
`Sleep Number v. Sizewise/ANM
`October 19, 2018
`Page 2
`
`A.
`
`Identification of Accused Instrumentalities
`
`Pursuant to P.R. 3-1(b), each accused instrumentality must be identified as specifically as possible
`including by name and model number. Plaintiff’s contentions identify the following products by model
`number and no other:
`
` Q2, Q3, Q4, Q5, Q6, Q7, Q7-T, Q8, Q9, S6, S7, S7-T, S8, and S9;
`
` A2, A3, A4, A5, A6, A7, A8, A10, H5, H7, H9, H10, H11, H12, A10 Smart Bed, and H12 Smart
`Bed, Online Edition, Online Special, Silver, and Silver sLE; and
`
` Platinum 5000.
`
`No other products have been properly identified. It is ANM’s position that Plaintiff has waived accusing
`any other products and all other products are not a part of this case. Plaintiff’s attempts to rope in
`additional products without specifically identifying them is improper.
`
`B.
`
`Representative Product
`
`Plaintiff’s assertion that the certain products are “representative” is improper. It is Plaintiff’s burden to
`show that a product is actually representative. Yet, Plaintiff’s contentions lack any support for the
`contention that any product is representative of any other product and do not even identify which
`products are representative which other products. ANM demands that Plaintiff properly supports this
`contention, and if Plaintiff does not, it is ANM’s position that Plaintiff has waived this contention.
`
`C.
`
`Claim Charts (Exs. A–C)
`
`Pursuant to P.R. 3-2(c), “a chart identifying specifically where each element of each asserted claim is
`found within each Accused Instrumentality.” Plaintiff’s claim charts are woefully deficient.
`
`First, for the ’172 patent chart (Ex. A), Plaintiff provides a single chart that mixes evidence from multiple
`sources related to different products. This obfuscates what evidence Plaintiff is relying to support its
`infringement claim related to each accused instrumentality. ANM demands separate charts for each
`Accused Instrumentality be provided clearly and specifically showing “where each element of each
`asserted claim is found within each Accused Instrumentality” (P.R. 3-2(c)). To the extent there are
`different versions of an Accused Instrumentality being accused, a separate chart for each version should
`be provided.
`
`Second, for the ’747 and ’154 patents (Exs. B and C), Plaintiff fails to chart any product except the Gen 3
`Arco. It is ANM’s positon that Plaintiff has waived its contention of infringement with respect to any other
`controller or products.
`
`Third, Plaintiff relies on an image labelled as “Photograph of medical air mattress system” (see, e.g., Ex.
`A at 8). In addition to failing to properly cite this image (discussed below), Plaintiff’s contentions fail to in
`anyway show how this unidentified mattress meets the claim limitations or infringes. ANM demands that
`Plaintiff properly identify this mattress and support such contentions, and if Plaintiff does not to, it is
`ANM’s position that Plaintiff has waived such contentions and this mattress is not a part of this case.
`
`Fourth, for the Gen X, Plaintiff fails to provide any evidence showing how this product infringes or is
`relevant. For example, Plaintiff does not contend when this product was sold, who sold it, or even
`
`
`
`
`
`
`
`
`American National Manufacturing, Inc.
`EXHIBIT 1022
`IPR2019-00497
`Page 2
`
`

`

`Third Deficiencies Letter re
`Plaintiff’s Infringement Contentions to ANM
`Sleep Number v. Sizewise/ANM
`October 19, 2018
`Page 3
`
`
`
`whether it was sold with air bladders, which is prerequisite for infringement for each asserted patent.
`ANM demands that Plaintiff properly support its contentions related to the Gen X, and if Plaintiff chooses
`not to, it is ANM’s position that Plaintiff has waived its contentions related to the Gen X.
`
`Fifth, Plaintiff’s charts lack any showing with respect to many claim elements. For example, for the ’172
`patent:
`
`1. Plaintiff provides no evidence or showing to support that the claim element of “a processor for
`providing commands . . . during the inflate/deflate cycle” is present within any Accused
`Instrumentality. Indeed, Plaintiff appears to acknowledge this deficiency and contends this claim
`element is met only supported by “information and belief.” See Ex. A at 15.
`
`2. Plaintiff provides no citation to the specification and figures to support its contention for what is
`the disclosed structure of the means-plus-function claim element of a “pressure monitor means.”
`Such is a prerequisite to determining infringement of a means-plus-function element, which
`requires a comparison of the disclosed structure to the structure of an accused product.
`
`3. Plaintiff’s assertion of certain claim elements being “capable of” being performed is also deficient.
`See, e.g., Ex. A at 44. Plaintiff must show how such elements are actually present in or
`performed by any Accused Instrumentality.
`
`For example, for the ’154 and ’747 patents:
`
`1. Plaintiff provides no evidence or showing to support its contention that the claim element of
`“calculating a pressure target for the pump housing” is performed by any Accused
`Instrumentality.
`
`2. Plaintiff provides no evidence or showing to support its contention that the claim element of “a
`pressure adjustment factor” is performed by any Accused Instrumentality.
`
`3. Plaintiff provides no evidence or showing to support its contention that the claim element of
`“determining an actual chamber pressure within the air chamber” is present within any Accused
`Instrumentality.
`
`4. Plaintiff provides no evidence or showing to support its contention that the claim element of “an
`adjustment factor error” is present within any Accused Instrumentality.
`
`5. Plaintiff provides no citation to the specification and figures to support its contention for what is
`the disclosed structure of the means-plus-function claim element of “a pressure sensing means.”
`Such is a prerequisite to determining infringement of a means-plus-function element, which
`requires a comparison of the disclosed structure to the structure of an accused product.
`
`ANM demands that Plaintiff properly support such contentions, and if Plaintiff does not, it is ANM’s
`position that Plaintiff has waived such contentions.
`
`Sixth, the charts provided do not properly cite or identify (such as by Bates Number) evidence upon
`which Plaintiff is relying. For example, many of the photographs reproduced in the charts appear to
`come from Defendants’ websites (see, e.g., Ex. A at 3), yet no URL is provided for such photographs.
`Other photographs appear to be of physical samples, but the contentions do not provide a serial number
`for the products or describe when, how, or where these physical samples were obtained. ANM demands
`
`
`
`
`
`
`
`
`American National Manufacturing, Inc.
`EXHIBIT 1022
`IPR2019-00497
`Page 3
`
`

`

`
`
`Third Deficiencies Letter re
`Plaintiff’s Infringement Contentions to ANM
`Sleep Number v. Sizewise/ANM
`October 19, 2018
`Page 4
`
`that Plaintiff properly cites and identifies the evidence it is relying on for its contentions and all also to
`produce all such evidence. If Plaintiff does not, it is ANM’s position that Plaintiff has waived its
`contentions that rely on such evidence.
`
`D.
`
`Doctrine of Equivalents
`
`Pursuant to P.R. 3-1(d), Plaintiff is required to disclose elements for which it is relying on doctrine of
`equivalents. Plaintiff’s perfunctory recitation of boilerplate language is insufficient to provide Defendants
`with notice of which claim elements Plaintiff intends to rely on doctrine of equivalent. It is ANM’s position
`that Plaintiff has waived any argument under doctrine of equivalents that are not specially made in the
`charts.
`
`E.
`
`Indirect Infringement
`
`Plaintiff’s recitation of conclusory allegations of indirect infringement is insufficient to provide Defendants
`with notice of Plaintiff’s indirect infringement theory. For example, Plaintiff does not identify a single
`customer or describe how any customer directly infringes. Such contentions are deficient. It is ANM’s
`position that Plaintiff has waived such allegations.
`
`F.
`
`Reservation of Rights
`
`Plaintiff’s attempts to reserve rights to modify and/or supplement is contrary to P.R. 3-6. To the extent
`Plaintiff attempts to modify or supplement its contentions, it is required to follow the procedure of P.R. 3-
`6.
`
`G.
`
`Incorporation by Reference
`
`Plaintiff throughout its contentions attempts to incorporate by reference or rely on contentions from other
`documents or cases. This is confusing and improper. For example, Plaintiff attempts to incorporate by
`reference and rely on charts from the Sizewise case (see, e.g., at 5:1–3 and 5:16–20); however, it is
`unclear what are the relevant portions of such incorporated-by-reference documents upon which Plaintiff
`is relying. Accordingly, ANM demands that Plaintiff properly disclose all its contentions and withdraw all
`attempts to incorporate by reference.
`
`II.
`
`DOCUMENT PRODUCTION ACCOMPANYING DISCLOSURE (P.R. 3-2)
`
`The documents bearing the Bates Nos. SN_0017648 and SN_0017899 each state “THIS DOCUMENT
`WAS PROVIDED IN NATIVE FORMAT UPON REQUEST;” however, native versions were not produced.
`This document is cited in Plaintiff’s infringement contentions pursuant to P.R. 3-2(b) as relevant to the
`conception and reduction to practice of the ’172 patent. Defendants demand that all such native
`documents that have been withheld be produced immediately and that Plaintiff explains why such
`documents were withheld.
`
`
`*
`
`*
`
`
`Please provide your availability to meet and confer within ten (10) days to discuss the above. To the
`extent the above issues are not satisfactorily resolved, Defendants intend to bring an appropriate
`motion(s).
`
`*
`
`
`
`
`
`
`
`
`American National Manufacturing, Inc.
`EXHIBIT 1022
`IPR2019-00497
`Page 4
`
`

`

`Third Deficiencies Letter re
`Plaintiff’s Infringement Contentions to ANM
`Sleep Number v. Sizewise/ANM
`October 19, 2018
`Page 5
`
`Sincerely,
`
`
`
`SPENCER FANE LLP
`
`
`
`/s/ Jaspal S. Hare
`
`
`
`By:
` Jaspal S. Hare
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`American National Manufacturing, Inc.
`EXHIBIT 1022
`IPR2019-00497
`Page 5
`
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