Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in American Natl. Mfg. Inc. v. Sleep Number Corp. FKA Select Comfort Corp., No. 21-1321 (Nov. 14, 2022), affirming a decision of the Patent Trial and Appeal Board (1) allowing claim amendments addressing issues unrelated to the IPR, (2) finding claims enabled despite an apparent typographical error; (3) finding that incorporating a well-known prior art structure did not raise inventorship issues precluding amendment; and (4) addressing commercial success as a secondary consideration of nonobviousness.
American National challenged the validity of two Sleep Number patents related to quickly and accurately adjusting the pressure in an air mattress. The Board found all claims unpatentable as obvious except six dependent claims that included a “multiplicative pressure adjustment factor” limitation. Sleep Number sought to amend the unpatentable claims to (1) include the “multiplicative pressure adjustment factor” limitation and (2) make other amendments for “for consistency with the terms used in the industry and in related patents.” The Board allowed the amendments. American National appealed.
On appeal, American National argued that allowing Sleep Number to make changes to claims that were unrelated to unpatentability grounds, such as §112, violated due process and the Administrative Procedures Act (“APA”). The Federal Circuit disagreed, holding that once amendments related to an unpatentability ground are made, a patent owner can, under 37 C.F.R.§42.212, include additional limitations to address potential §101 or §112 issues. The Court explained that after claim amendments are made, American National was free to challenge the claims and the Board was free to determine if the proposed claims were unpatentable under §§ 101, 102, 103 and 112.
The Court also affirmed the Board’s decision that a typographical error in the specification was not fatal to whether the claims were enabled because the error was obvious to one skilled in the art and the whole of the specification enabled the claims. The Court rejected American National’s inventorship argument because reciting well-known structure from the prior art in a claim does not affect inventorship. Finally, the Court rejected American National’s argument that the Board violated due process and the APA in its commercial success analysis. The Court did not fully address the issue, however, because the Board gave it little weight and American National did not argue it would have changed the result.