Proposed Claims Allowed Despite Including Amendments Not Responsive To Unpatentability Ground

In American National Manufacturing Inc. v. Sleep Number Corporation,¹ the Federal Circuit held that so long as a proposed claim amendment does not enlarge the scope of the claims, does not add new matter and is responsive to a ground of unpatentability, the patent owner may also make additional amendments to those proposed claims.

American National Manufacturing Inc. and Sleep Number Corp. each appealed the Patent Trial and Appeal Board's (Board) final written determinations in two inter partes reviews (IPRs). The Board delivered mixed results, holding that some, but not all, of the contested claims were not unpatentable.

Sleep Number owns U.S. Patent Nos. 8,769,747 and 9,737,154, directed to adjusting the pressure in an air mattress by determining the air pressure within the valve enclosure instead of in the air chambers.