Federal Circuit Clarifies Extent of Permissible Claim Amendments During IPR Proceedings

In American National Manufacturing Inc. v. Sleep Number Corp., Case No. 2021-1321 (Fed. Cir. Nov. 14, 2022), the Federal Circuit found that the Patent Trial and Appeal Board (“PTAB”), in deciding related inter partes review (“IPR”) proceedings, did not err when it accepted proposed claim amendments submitted by the patent owner, Sleep Number, that both responded to a ground of unpatentability and included other wording changes unrelated to the proceedings.  During the IPR proceedings, the PTAB found that, of the challenged claims of USPNs 8,769,747 and 9,737,154 directed to methods of adjusting pressure within an air bed, dependent claims that recited “a multiplicative pressure adjustment offset” were not invalid, while claims that did not recite such limitation were invalid as obvious based on the combinations of references presented by the petitioner, American National.  In each IPR proceeding, Sleep Number filed motions to amend the claims contingent on a finding that the challenged claims were unpatentable, where those amendments included the incorporation of the “multiplicative pressure adjustment offset” along with additional unrelated amendments.  In its determination that the inclusion of the additional unrelated amendments were permissible, the Federal Circuit reasoned that Sleep Number had responded to a ground of patentability, addressing the PTAB regulations, while also complying with statutory requirements that the amendments not enlarge the scope of the claims or add new matter.  Because the regulatory and statutory requirements were met, there was no error in the inclusion of additional amendments.  Additionally, in response to American National’s contention that the introduction of amendments to “correct potential § 112 errors” was a violation of due process and statutory requirements because such grounds cannot be brought in an IPR proceeding, the Federal Circuit disagreed and stated that a petitioner, when faced with amended claims in an IPR proceeding, may challenge such amendments on grounds beyond 35 U.S.C. §§ 102 and 103.