<em>American National v. Sleep Number Corporation</em>
52 F.4th 1371 (Fed. Cir. 2022)
On November 14, 2022, the federal circuit court released a precedential opinion on an appeal from the Patent Trial and Appeal Board. The court’s opinion affirmed and clarified the Board’s decision. The case hinged on multiple claims’ of patentability regarding Sleep Number’s mattress pressure programming and in what ways Sleep Number could amend their claims in anticipation of an inter partes review. The court held that the Board was correct in rejecting multiple unpatentability arguments from American National Manufacturing and further held that some Sleep Number claims were unpatentable.
The case centered on two patents of Sleep Number: U.S. Patent Nos. 8,769,747 and 9,737,154. Both patents describe mattress products that use pressurized air to accommodate different levels of firmness, as well as the mathematical equations used to achieve those desired levels. American National Manufacturing (ANM) had challenged multiple Sleep Number claims as unpatentable on issues including obviousness, specification, and inventorship.
The federal circuit’s opinion addresses two decisions by the Patent Trial and Appeal Board over inter partes reviews which were appealed and cross-appealed by Sleep Number and ANM. Additionally, the USPTO had intervened on two issues within the decisions. See More.
The court affirmed the Board’s decisions on multiple obviousness disputes. On several disputes, the court held that ANM failed to provide enough evidence that a reasonable and skilled artisan would have found the pressure calculation of the air mattress obvious. The court also looked to Sleep Number’s industry praise as proof of non-obviousness. On similar claims, the court held that ANM had properly proven that certain combinations of calculations were obvious to a reasonable and skilled artisan because of expert testimony. If a reasonable and skilled artisan had desired to improve the accuracy of an overall pressure calculation, the combinations of certain calculations would have been obvious.
The court affirmed the Board’s decisions over enablement as a matter of law. A claim incorrectly referenced the wrong calculation and, as such, made the claim impossible to recreate. The court held that a reasonable and skilled artisan would have plainly determined that an error in a calculation was a typographical error rather than an impossible innovation. Therefore, the claim was not unpatentable as a matter of law.
The court affirmed the Board’s decision over inventorship as a matter of law. ANM had argued that Sleep Number failed to include a previous inventor because it included prior art of valve enclosures. Thus, making the claim facially invalid. The court rejected this argument because the claim acknowledged that the valve enclosures were well known and were simply incorporated into the claim. There was no extraordinary skill by the prior artist in the new claim, and it was, therefore, not unpatentable.
The court clarified a change in wording made by the Board in its previous decision. The Board had changed the language of “infringed” to “read on” in regards to ANM’s relationship with Sleep Number’s patents. ANM argued that this change in language violated its due process, but the court pointed out that ANM had admitted that there would not be a change in ruling based on this language. As such, the court quickly dismissed this argument.
The court also made a decision over amendments made by Sleep Number in response to the inter partes reviews. Sleep Number had submitted amendments that both addressed the unpatentability claim and changed wording that was unrelated to the review. ANM argued that in IPR’s of patentability, amendments could only address the unpatentability claims and that the Board violated due process by accepting the amendments. The Board had ruled that the amendments could be made to address other potential issues with § 101 or § 112, in the interest of public service and a just outcome for all parties. The court held that amendments can be accepted as long as they introduce new matters, respond to a ground of unpatentability, and do not increase the scope of the claims. It further stated, as long as an amendment does not violate these three principles, it may make additional changes to the wording of the claim. As such, the court ruled that the Board did not err in admitting Sleep Number’s amendments.
This decision by the court clarifies the IPR process for patent disputes moving forward. It keeps the door open for inventors to properly update their claims in anticipation of potential issues that could otherwise create unfair or unjust outcomes. An important question for the future is where the line of helpful and egregious amendments may lie.