Dialing Up Fixes To Your Patent Claims: So Relaxing!

• Published date: 06 January 2023
• Subject Matter: Intellectual Property, Patent
• Law Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Author: Ms Alissa E. Green, Angeline Premraj, Thomas Irving, Amanda Murphy and Stacy Lewis

Holding

In American National Manufacturing Inc. v. Sleep Number Corp., Nos. 21-1321, 21-1323, 21-1379, 21-1382 (Fed. Cir. Sept. 29, 2022), the Federal Circuit held that as long as a claim amendment proposed during an IPR 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. The Federal Circuit also held that a clear typographical error does not render the claims unpatentable for lack of enablement.

Background

The inter partes reviews ("IPRs") on appeal involved challenges to U.S. Patent Nos. 8,769,747 ("the '747 patent") and 9,737,154 ("the '154 patent"), directed to "systems and methods that purport to adjust the pressure in an air mattress 'in less time and with greater accuracy' than previously known." Id. at *3. The patents disclose adjusting pressure in an air bed by measuring the air pressure inside the valve enclosure assembly instead of the air chambers themselves. Id. This eliminates the "need to turn off the pump in order to obtain a substantially accurate approximation of the chamber pressure." Id.

American National alleged that most of the challenged claims of the '747 and '154 patents were obvious over three references. Id. at *6. American National also challenged six of the dependent claims as obvious in further view of a published patent application. Id.

Sleep Number argued that objective evidence of industry praise and commercial success strongly supported that the claims would not have been obvious. Id. at *8. While Sleep Number relied on two American National business documents praising Sleep Number's patents, the Patent Trial and Appeal Board ("the Board") found only one of these documents to weigh slightly in favor of industry praise. Id. For commercial success, Sleep Number relied on the success of the allegedly infringing American National products. Id. The Board granted a motion for discovery of American National's "sales of products sold with and without certain versions of source code that allegedly infringed claim 1." Id. In response to American National's objections, the Board explained that the discovery could show a nexus between the relevant American National products and the challenged products and that Sleep Number was not seeking any admission of infringement. Id. Subsequently, Sleep Number asserted, and the Board agreed, that the American National products were coextensive with the...