The Federal Circuit recently held that clarifying and §112-based amendments are allowed in addition to narrowing amendments used to overcome prior art teachings in Motions to Amend during PTAB proceedings.

In American National v. Sleep Number Corp., Case 21-1321, Judge Stoll, writing for Schall and Cunningham, held for Patent Owner Sleep Number that they could include non-substantive amendments.

The patents claimed technology for adjusting the pressure in an air mattress. Petitioner American National argued substitute claims cannot “both responded to a ground of unpatentability and made other wording changes unrelated to the IPR proceedings.” Am. Nat’l Mfg. Inc. v. Sleep No. Corp., 52 F.4th 1371, 1374 (Fed. Cir. 2022). The Federal Circuit disagreed, stating “[S]o long as a proposed claim amendment does not enlarge the scope of the claims, does not add new matter, and responds to a ground of unpatentability in the proceeding, the patent owner may also make additional amendments to a claim.” Id. at 1380.

Patent Owner included amendments addressing the prior art, e.g., adding “multiplicative pressure adjustment offset.” As this narrowing amendment was directed to overcoming the obviousness Ground, Patent Owner is also allowed to “include additional limitations to address potential § 101 or § 112 issues” and “’to achieve consistency and accuracy in terminology and phrasing’ throughout the patent family.” Id. (citing Lectrosonics, Inc. v. Zaxcom, Inc., No. IPR2018-01129, 2019 WL 1118864 (P.T.A.B. Feb. 25, 2019)).

Finally, the Court found no due process violation when both substantive and non-substantive amendments are made. Id. at 1381. For example, Petitioner had the right to challenge the new claim amendments under § 112 or other provisions, and they had the opportunity to show the non-substantive amendment was improper during the proceeding. Id. And Petitioner took advantage of this procedure. Id. With this reasoning, the Court rejected Petitioner’s argument that allowing the Patent Owner to include amendments not specifically responsive to the prior art grounds creates “’asymetr[y]’ and ‘unfair[ness].’” Id.

Take away:

In summary, when responding to grounds of unpatentability in an IPR proceeding, Patent Owner should additionally include any amendments that address perceived issues with § 101 or § 112. As long as a portion of the claim amendment is responsive to the grounds of unpatentability, without enlarging the scope or adding new matter, Patent Owner is free to address any additional issues of unpatentability believed to exist. The perceived issues do not have to be in dispute or recognized by the Board or Petitioner. These claim amendments may be particularly helpful in cases such as this, where the patent(s) at issue is part of a patent family where terminology may have been inadvertently changed, and a clarifying amendment may be beneficial to avoid § 112 in the future. Patent owners should take note that the Court has previously addressed the Board’s regulation requiring proposed claim amendments to address prior art grounds. Aqua Prods., Inc. v. Matal, 872 F.3d 1290, 1317 (Fed. Cir. 2017).

Likewise, Petitioner should be aware of Patent Owner’s ability to propose claim amendments beyond those responsive to the grounds of unpatentability and Petitioner’s ability to challenge the proposed claims. As the Patent Owner has the ability to propose claim amendment addressing potential §§ 101, 102, 103, and 112 issues, Petitioner has the ability to challenge the proposed claim amendments under the same.

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