Federal Circuit IP

American National Manufacturing Inc., v. Sleep Number Corporation, (Fed. Cir. Nov. 2022)

By Francisco Almeida Test Published March 3, 2023

American National Manufacturing Inc., v. Sleep Number Corporation CAFC Opinion No. 2021-1321, Decided November 14, 2022 (Stoll, Schall, Cunningham) (Precedential)

Overview: A patent owner may amend a claim to both overcome an instituted ground and correct other perceived issues in a claim.

Facts/Procedural Posture:

  • Sleep Number sues American National for infringing two patents, and American National files IPRs challenging multiple claims of the patents as obvious.
  • In each proceeding, Sleep Number filed a motion to amend contingent on a finding that the challenged claims were unpatentable, which included both amendments responsive to a ground of unpatentability and non-responsive amendments fixing perceived §§ 101 & 112 issues.
  • American National challenged the proposed amendments arguing they were improper under 37 C.F.R. § 42.121[1] because the proposed non-responsive amendments did not respond to a ground of unpatentability.
  • The Board rejected American National’s challenges, and American National appealed.

Issue on Appeal:  Did the Board err in permitting Sleep Number to propose claim amendments that are not responsive to a ground of unpatentability?

Holding: No, because:

(1) AIA or PTAB regulations do not preclude “a patent owner from amending a claim to both overcome an instituted ground and correct other perceived issues in the claim” (emphasis added).

(2) Sleep Number’s proposed substitute claims included an amendment with “at least one responsive narrowing limitation.”

 Takeaways:

  • So long as each proposed claim includes an amendment responding to a ground of unpatentability, patentee may propose changes fixing perceived §§ 101 and 112 issues unrelated to the IPR proceedings.
  • The Board had already confirmed this position in prior cases. Here, the Federal Circuit adopted it.
  • Unclear whether the Board is authorized to address inventorship in the context of a motion to amend.

[1] § 42.121: A motion to amend may be denied where: (i) The amendment does not respond to a ground of unpatentability involved in the trial; or (ii) The amendment seeks to enlarge the scope of the claims of the patent or introduce new subject matter.