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In an appeal from inter partes review proceedings before the Patent Trial and Appeal Board (PTAB), the Federal Circuit, among other issues, addressed whether PTAB erred in allowing patent owner Sleep Number to amend challenged claims by adding changes that did not directly respond to challenges by petitioner American National. The Federal Circuit affirmed PTAB’s determination allowing the amended claims, rejecting American National’s challenges. The Court also examined various other arguments raised by both Sleep Number and American National on appeal, again affirming PTAB’s determinations.

Sleep Number owns U.S. Patent Nos. 8,769,747 and 9,737,154 (the “Patents”), that describe systems and methods that adjust the pressure in an air mattress by measuring the air pressure inside the valve enclosure assembly, as opposed to the air chambers within the air mattress. American National challenged the Patents, arguing certain claims were obvious to the ordinary skilled artisan over a combination of three other patents.  PTAB ultimately resolved the proceedings with split decisions. For certain claims requiring a multiplicative pressure adjustment offset, PTAB determined that American National had failed to establish unpatentability. For the remaining claims, PTAB found that American National had proven they were unpatentable as obvious. 

In each proceeding, Sleep Number had filed a motion to amend the claims contingent on a finding that the challenged claims were unpatentable. In addition to adding the requirement of a multiplicative pressure adjustment factor to match the claims that PTAB had determined were not proven unpatentable, the proposed amended claims also included other non-substantive amendments. American National challenged the proposed amended claims. Among other things, it argued that the proposed amendments did not respond to a ground of unpatentability and thus were legally inappropriate, that the relevant specification contained an error that rendered the claims nonenabled, and that the proposed amended claims lacked written description support and were indefinite. PTAB rejected American National’s challenges to the proposed amended claims, and American National and Sleep Number appealed PTAB’s various decisions.   

The Federal Circuit first addressed American National’s arguments relating to Sleep Number’s proposed “substantive” and “non-substantive” changes to the challenged claims.

First, the Federal Circuit addressed American National’s argument that PTAB erred in permitting Sleep Number to present proposed amended claims that both responded to a ground of unpatentability involved in the proceedings and made other changes not responsive to an unpatentability ground. The Federal Circuit rejected this argument, reasoning that nothing in the America Invents Act or PTAB’s regulations precluded a patent owner from amending a claim to both overcome an instituted ground and correct other perceived issues in the claim. The Court noted that the only limitation is that amendments may not enlarge the scope of the claims or introduce new matter—which was not the case here. In so holding, the Court also rejected American National’s argument that allowing a patent owner to refine claims or correct potential errors invited a violation of due process and/or the Administrative Procedure Act (the APA).    

Second, the Federal Circuit addressed American National’s argument that the new claims were not enabled due to an admitted error in the specification of the application to which the Patents claim priority. The Court disagreed, pointing to Sleep Number’s expert testimony that the skilled artisan would understand that this was a typographical error inconsistent with the remainder of the disclosure in the specification. 

Third, the Federal Circuit turned to American National’s argument that PTAB should have denied the motion to amend because adding the term “valve enclosure” injected an inventorship issue into the Patents. According to American National, the term “valve enclosure” had been used in a related patent owned by Sleep Number, which named a different inventor than the Patents.  American National argued that amending the claims to use the term “valve enclosure” without adding the additional inventor rendered the amendments facially invalid. The Federal Circuit disagreed, reasoning that the Patents merely incorporated the prior art patent by reference, and that doing so did not make the other inventor an inventor of the Patents.

The Federal Circuit next swiftly addressed a number of other challenges from both American National and Sleep Number, rejecting them all.  First, the Court addressed American National’s argument that PTAB violated due process and the APA when it analyzed Sleep Number’s evidence of commercial success, which looked at the commercial success of American National’s allegedly infringing products. The Federal Circuit rejected this argument, noting that PTAB made clear that it was not resolving infringement issues.  Next, the Federal Circuit upheld PTAB’s findings that the claims requiring a multiplicative pressure adjustment offset were not proven to be unpatentable, whereas the remaining claims were proven to be unpatentable as obvious. The Federal Circuit also rejected Sleep Number’s invitation to reweigh PTAB’s assessment of the strength of Sleep Number’s evidence of commercial success and industry praise, as well as an argument that PTAB had improperly placed the burden on Sleep Number to prove non-obviousness of its claims. Lastly, the Federal Circuit rejected Sleep Number’s argument that PTAB improperly allowed the petition under 37 C.F.R. § 42.104 because it did not set forth an express construction of a means-plus-function term, giving deference to PTAB’s application of its own rules.

The opinion can be found here.

By Mario Delegato

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Cupp Computing AS v. Trend Micro Inc., Appeal Nos. 2020-2262, -2263, -2264 (Fed. Cir. Nov. 16, 2022)

In this consolidated appeal from three inter partes review decisions of the Patent Trial and ‎Appeal Board challenging U.S. Patent Nos. 8,631,488; 9,106,683; and 9,843,595, the Federal Circuit affirmed PTAB’s determination that the challenged claims were unpatentable as ‎obvious over two prior art references. The patents concerned systems and methods for waking a mobile device from a power-saving mode and then performing security operations on the device, and the Court addressed issues of claim ‎construction and obviousness. The Court ‎concluded that PTAB properly construed the challenged claims and that its obviousness determinations were ‎supported by substantial evidence.

The opinion can be found here.

By Annie White

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VLSI Technology LLC v. Intel Corporation, Appeal Nos. 2021-1826, -1827, -1828 (Fed. Cir. Nov. 15, 2022)

In this case, the Federal Circuit considered appeals from three inter partes review petitions brought by Intel against VLSI’s U.S. Patent No. 7,247,552, which is directed to improvements to the physical structure of integrated circuit chips. The Patent Trial and Appeal Board had found all challenged claims unpatentable over the prior art, a determination that the Federal Circuit affirmed as to challenged claims 1, 2, and 11, but reversed and remanded as to challenged claim 20.

Among other things, the court considered the effect of the 2018 revisions to 37 C.F.R. § 42.100(b) (adopting a district court-style claim construction standard in IPR proceedings and requiring PTAB to “consider[]” any applicable district court construction) where the parties agreed to a construction in related district court proceedings, but turned out during the IPRs to disagree as to the scope of a term used within that construction. In those circumstances, the Court found that there was no true agreement as to the appropriate construction, that PTAB did not run afoul of § 42.100(b) when it failed to expressly mention the district court construction in its final written decision (or that it was at most harmless error), and that PTAB was not otherwise bound to adopt a construction proposed by either party but was instead permitted to adopt its own analysis to resolve the parties’ underlying disagreement. 

The opinion can be found here.

By Jason A. Wrubleski

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This article summarizes aspects of the law and does not constitute legal advice. For legal advice for your situation, you should contact an attorney.