PTAB Amendments May Address More Than Pending Unpatentability Grounds

The Federal Circuit has upheld the PTAB's relatively liberal approach to proposed claim amendments in an IPR, holding that so long as a proposed substitute claim includes an amendment made in response to an unpatentability ground, the patent owner may make additional changes to address other perceived issues in the claim.  Am. Natl. Mfg. Inc. v. Sleep No. Corp., 52 F.4th 1371 (Fed. Cir. 2022)

The Federal Circuit agreed with the PTAB that “nothing in the America Invents Act (AIA) or the PTAB's regulations precludes a patent owner from amending a claim to both overcome an instituted ground and correct other perceived issues in the claim.”  Id. at 1380. First, the Court recounted the PTAB's “thoughtful analysis” in Lectrosonics, Inc. v. Zaxcom, Inc., No. IPR2018-01129, 2019 WL 1118864, at *2 (P.T.A.B. Feb. 25, 2019) where the PTAB found that 37 C.F.R. § 42.121 permits amendments in response to an unpatentability ground to address other issues, such as § 101 or §