Federal Circuit Affirms PTAB Decision Allowing IPR Claim Amendments That Go Beyond Addressing Instituted Grounds
On November 14, 2022, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed a decision by the Patent Trial and Appeal Board (PTAB) allowing claim amendments during inter partes review (IPR) proceedings that addressed issues additional to those raised by the grounds relied upon for institution of the IPR. Am. Nat’l Mfg. Inc. v. Sleep No. Corp., Nos. 2021-1321, 1323, 1379, 1382, (Fed. Cir. Nov. 14, 2022). The Court found that the PTAB had not erred when it permitted Sleep Number, the patent owner, to submit claim amendments in IPR that addressed Section 112 issues (which were additional to amendments addressing the instituted grounds).
American National filed petitions for IPR challenging many of Sleep Number’s patent claims, which involved mattresses that used inflation to control firmness and comfort of the mattress. The petitions asserted obviousness, including obviousness over Gifft, a prior art patent that was owned by Sleep Number. The PTAB issued mixed decisions, finding that American National had successfully proven some of the challenged claims unpatentable, but that American National had not met that burden for other claims that required “a multiplicative pressure adjustment offset.”
In each proceeding, Sleep Number filed a motion to amend (contingent on a finding of unpatentability) in which the proposed amendments each added a requirement for “a multiplicative pressure adjustment factor” to address the obviousness-based unpatentability issue. The proposed amendments also included non-substantive amendments “for consistency,” which the PTAB permitted over American National’s objections.
American National argued that the additional non-substantive amendments improperly were allowed because some of the amendments were not made in response to a ground of unpatentability relied upon for institution of the IPR. The PTAB rejected that argument, and the CAFC affirmed, recognizing that “nothing 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.”
American National further argued that allowing claim amendments in IPR to correct for § 112 errors, which cannot be challenged in a petition for IPR, is unfair. The CAFC responded that the petitioner can challenge amended claims on grounds beyond §§ 102 and 103, including on the basis of § 112, and noted that American National made such challenges to Sleep Number’s amendments. Because the proposed claims included amendments responsive to a ground of unpatentability raised in the proceedings, the additional amendments were permissible.