Once You’re In, You’re In, Amending Claims Addressing an Instituted Ground Allows for More Unrelated Amendments

| Matthew PhamHans L. Mayer


Before Stoll, Schall, and Cunningham. Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2019-00497 and IPR2019‑00500.

Summary: Once a patent owner includes at least one amendment that is responsive to an instituted unpatentability ground, the patent owner may include more amendments to address other non-instituted grounds, such as potential § 101 and § 112 issues.

American filed IPRs challenging certain Sleep Number patent claims. The Board found claims that included a limitation requiring a “multiplicative pressure adjustment factor” patentable, while finding claims that did not include such limitation unpatentable. In response, Sleep Number amended the unpatentable claims by adding the multiplicative pressure adjustment factor limitation to them. Sleep Number also included additional amendments addressing other non-instituted grounds that were intended to “correct potential § 112 errors.” Sleep Number alleged that its proposed amendments were made “to achieve consistency and accuracy in terminology and phrasing” and the Board allowed the amendments.

American argued that the Board erred in allowing these amendments because they would invite due process and Administrative Procedure Act violations by unilaterally addressing issues that are: (1) better handled in examinations or reexaminations, and (2) could not be raised as an IPR ground (i.e. § 112 issues). The Federal Circuit disagreed, and held that the Board did not err. It held that “once a proposed claim includes amendments to address a prior art ground in the trial, a patent owner also may include additional limitations to address potential § 101 or § 112 issues, if necessary.” The Federal Circuit recognized that although IPR petitions cannot challenge claims under § 112, it is well established that the petitioner can challenge any amendments that are made to address § 112 issues, and American actually made such a challenge.

American also argued that one of Sleep Number’s proposed amendments did not fix an enablement issue due to an unchanged typographical error in the patent specification. American argued that the proposed amended claim was still unpatentable due to a lack of enablement in part because the error was not obvious as it went unnoticed during the original examination process. The Federal Circuit affirmed the Board’s decision against American and held that the error was obvious, regardless of whether the error was brought up in any prior examination.

American further argued that one of Sleep Number’s proposed amendments adding a “valve enclosure” limitation created an inventorship issue that made the proposed claim facially invalid. American specifically argued that because another Sleep Number patent involved “valve enclosures” and had different named inventors, the different named inventors should be the named inventors to the amended claims. The Federal Circuit also rejected this argument, recognizing that the patents at issue clearly incorporate the prior patent and indicate that valve enclosures are well-known structures.

Editor: Paul Stewart