Background
Sleep Number Corp. owns patents covering adjustable air-bed systems. American National Manufacturing (ANM) filed inter partes review petitions challenging Sleep Number’s patents on obviousness grounds. During the IPR proceedings before the Patent Trial and Appeal Board (PTAB), Sleep Number moved to amend its claims. The proposed amendments went beyond merely responding to the specific grounds of unpatentability raised in ANM’s petition — they also addressed other potential patentability concerns not directly tied to the instituted grounds.
ANM argued that patent owners may only amend claims to directly respond to the instituted grounds of unpatentability, and that Sleep Number’s broader amendments exceeded the permissible scope of a motion to amend under 35 U.S.C. § 316(d). The Board allowed the amendments, and ANM appealed to the Federal Circuit.
The Court’s Holding
The Federal Circuit affirmed the Board’s decision, holding that patent owners are not limited to addressing only the specific grounds of unpatentability raised in the IPR petition when they move to amend their claims. Under § 316(d), a patent owner may propose amended claims that respond to any patentability concern — not just those the petitioner raised — so long as the amended claims do not enlarge the scope of the original claims and do not introduce new matter.
The court reasoned that nothing in the statute or the legislative history of the America Invents Act (AIA) restricts a patent owner’s motion to amend to only the grounds instituted by the Board. The purpose of allowing claim amendments in IPR is to give patent owners an opportunity to obtain claims that are patentable, not just to survive the particular challenge at hand. Limiting amendments solely to the grounds under review would undermine that purpose and could lead to claims that survive IPR but remain vulnerable to other patentability challenges.
The Federal Circuit also upheld the Board’s finding that Sleep Number’s amended claims were patentable over the prior art presented in the proceeding.
Key Takeaways
- Patent owners filing motions to amend during IPR are not confined to addressing only the specific grounds of unpatentability raised in the petitioner’s challenge — amendments may address broader patentability concerns.
- The statutory limits on IPR amendments remain: amended claims may not enlarge scope and may not introduce new matter, but within those bounds, patent owners have significant flexibility.
- Petitioners challenging motions to amend should be prepared for proposed claims that may differ substantially from the original claims and that address issues beyond the petition’s scope.
- The decision reinforces that IPR is not solely a forum for defeating the petitioner’s specific challenge — it can also be a vehicle for a patent owner to refine and strengthen claims more broadly.
Why It Matters
This decision gives patent owners more strategic room during inter partes review proceedings. Previously, there was uncertainty about whether the scope of permissible amendments was tightly linked to the grounds under review. The Federal Circuit’s ruling confirms that patent owners can use the amendment process as an opportunity to clean up and strengthen their claims against a wider range of potential invalidity arguments — not just the ones the petitioner chose to assert.
For petitioners, the ruling is a reminder that a successful IPR campaign may result in amended claims that are arguably stronger than the original claims. Companies planning IPR challenges should account for the possibility that the patent owner will emerge from the proceeding with revised, harder-to-challenge claims. Patent prosecutors and litigators alike should factor this dynamic into their IPR strategy and post-grant review planning.