In American National Manufacturing Inc. v. Sleep Number Corporation,1 the Federal Circuit held that so long as a proposed claim amendment does not enlarge the scope of the claims, does not add new matter and is responsive to a ground of unpatentability, the patent owner may also make additional amendments to those proposed claims.
American National Manufacturing Inc. and Sleep Number Corp. each appealed the Patent Trial and Appeal Board’s (Board) final written determinations in two inter partes reviews (IPRs). The Board delivered mixed results, holding that some, but not all, of the contested claims were not unpatentable.
Sleep Number owns U.S. Patent Nos. 8,769,747 and 9,737,154, directed to adjusting the pressure in an air mattress by determining the air pressure within the valve enclosure instead of in the air chambers.
Claim 1 of the ’747 patent recited the following:
1. A method for adjusting pressure within an air bed comprising:
providing or receiving an air bed, the air bed including an air chamber and a pump having a pump housing;
selecting a desired pressure setpoint for the air chamber;
determining an initial pressure within the pump housing;
calculating a pressure target based upon the desired pressure setpoint and a pressure adjustment factor, wherein an inflate pressure adjustment factor is used to calculate the pressure target when the initial pressure within the pump housing is less than the desired pressure setpoint, and wherein a deflate pressure adjustment factor is used to calculate the pressure target when the initial pressure within the pump housing is greater than the desired pressure setpoint;
adjusting pressure within the air chamber until a sensed pressure within the pump housing is substantially equal to the calculated pressure target;
determining an actual chamber pressure within the air chamber;
comparing the actual chamber pressure to the desired pressure setpoint to determine the adjustment factor error; and
modifying the pressure adjustment factor based upon the adjustment factor error.2
Claim 1 of the ’154 patent was comparable.
American National submitted petitions for IPRs contesting various claims of the ’747 and ’154 patents. In its petitions, American National contended that the contested claims would have been obvious over Gifft (U.S. Patent No. 5,904,172), also owned by Sleep Number, in view of Mittal (U.S. Patent No. 5,629,873) and Pillsbury (U.S. Patent No. 5,277,187), and that six of the dependent claims would have been obvious in an additional combination with Ebel (U.S. Patent Application Pub. No. 2007/0000559).
In each IPR proceeding, Sleep Number filed a motion to amend the claims conditioned on the Board determining that the contested claims were not patentable. Each of the proposed claims was amended to include the feature of a multiplicative pressure adjustment factor, mirroring the claims that the Board had previously decided were not shown to be unpatentable. The proposed claims also included other modifications that Sleep Number indicated were made for consistency with language used in the industry and in related patents, such as changing the claimed “pump housing” to “valve enclosure” and the claimed “chamber” to “bladder.”3
Before the Board, American National asserted that the proposed amendments did not reply to a ground of unpatentability and therefore were legally impermissible, and the claims were not enabled in view of a mistake in the specification. The Board discarded American National’s arguments regarding the proposed amended claims and held that the amendments were appropriate because they addressed a ground of unpatentability, that the proposed amended claims were not unpatentable and that the specification was enabled under 35 U.S.C. § 112. The Board approved Sleep Number’s conditional motions to amend and allowed the amended claims.
Both parties appealed the Board’s final written decisions, and the Federal Circuit affirmed. On appeal, American National contended that the Board mistakenly allowed Sleep Number to amend the claims not related to a ground of unpatentability. Specifically, Sleep Number detailed in its motion to amend that some of its proposed amendments were made for uniformity and correctness in terminology. American National asserted on appeal that these proposed amendments were impermissible because they were not in direct response to a ground of unpatentability.4 The Federal Circuit disagreed and reasoned:
[N]othing in the America Invents Act (AIA) or the Board’s regulations precludes a patent owner from amending a claim to both overcome an instituted ground and correct other perceived issues in the claim. The AIA explicitly restricts patent owner amendments in only two ways: amendments may not enlarge the scope of the claims or introduce new matter. 35 U.S.C. § 316(d)(3). The Board’s regulations add another restriction: amendments must respond to a ground of unpatentability involved in the proceeding. 37 C.F.R. § 42.121(a)(2)(i). . . . Thus, so long as a proposed claim amendment does not enlarge the scope of the claims, does not add new matter, and responds to a ground of unpatentability in the proceeding, the patent owner may also make additional amendments to a claim without running afoul of the relevant statutes and regulations.5
American National contended that permitting a patent owner to improve claims or rectify potential § 112 errors enables a patent owner and the Board to fix problems that are not proper for an IPR. The court was not convinced, because a petitioner can challenge the proposed amended claims on grounds outside §§ 102 and 103, including grounds under § 112. In fact, American National did challenge Sleep Number’s motions to amend in these IPRs on these other grounds. Therefore, the court did not perceive anything wrong in the Board’s granting of Sleep Number’s motion to amend.
The court noted that each of Sleep Number’s proposed substitute claims involved an amendment directed to a ground of unpatentability presented in the IPRs. On this basis, the court held the following:
Because each proposed substitute claim included at least one responsive narrowing limitation, Sleep Number was free to include other amendments, including any addressing perceived §§ 101 and 112 issues. American National was free to challenge these proposed claims, as it did in both proceedings. And the Board was free to determine whether the proposed claims were unpatentable under §§ 101, 102, 103, and 112.6
Accordingly, the court held that the Board did not err when it considered and entered Sleep Number’s proposed substitute claims.
Takeaways and Tips
The Federal Circuit, the United States Patent and Trademark Office (Patent Office) and the Board continue to clarify amendment practice for IPRs. This decision clarifies amendment practice and specifically allows patent owners to include additional amendments so long as the proposed claims include amendments responding to an unpatentability ground. Previously, the Patent Office issued a pilot program concerning motions to amend (MTA) that enables a patent owner that files an MTA to request preliminary guidance from the Board on the MTA and whether to file a revised MTA.7 The program has been renewed recently.8
The American National Manufacturing Inc. v. Sleep Number Corporation decision adds another layer of potential litigation strategy for defendants deciding whether to file an IPR petition, as well as additional opportunities for patent owners to clean up loose ends that may have been a vestige of patent prosecution completed many years earlier. Defendants that spot significant errors in a patent they are accused of infringing might decide to forgo the filing of an IPR to prevent a patent owner from correcting such an error. That’s because this decision enables a patent owner to enhance/amend their claims for reasons other than an IPR ground of unpatentability and craft narrower claims that might be more difficult to invalidate.
Patent owner litigants now have an additional weapon in their arsenal to use should their patents/inventions be subjected to IPR. Specifically, patent owners are free to further amend claims in a narrower manner so long as an amendment to that claim responds to a ground of unpatentability. This should provide additional help in leveling the playing field between patent owners and defendants during litigation because it should make defendants think carefully about whether the filing of an IPR has significant potential to damage their case of invalidity and/or noninfringement.
Irah Donner is a partner in Manatt’s Intellectual Property practice and the author of Patent Prosecution: Law, Practice, and Procedure, Eleventh Edition, and Constructing and Deconstructing Patents, Second Edition, both published by Bloomberg Law.
1 Am. Nat’l Mfg. Inc. v. Sleep No. Corp., 52 F.4th 1371, 2022 USPQ2d 1085, 2022 WL 16909720 (Fed. Cir. 2022).
2 Id., 52 F.4th at 1375–76.
3 Id., 52 F.4th at 1379.
4 Id., 52 F.4th at 1380.
5 Id., 52 F.4th at 1380 (citations omitted).
6 Id., 52 F.4th at 1381.
7 Notice Regarding a New Pilot Program Concerning Motion To Amend Practice and Procedures in Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board, 84 Fed. Reg. 9497 (March 15, 2019).
8 Extension of the Patent Trial and Appeal Board Motion To Amend Pilot Program, 87 Fed. Reg. 60134 (October 4, 2022).