Fresh From the Bench: Latest Federal Circuit Court Case
CASE OF THE WEEK
American National Manufacturing Inc. v. Sleep Number Corporation, Appeal Nos. 2021-1321, -1323, -1379, -1382 (Fed. Cir. Nov. 14, 2022)
In an appeal from inter partes review proceedings before the Patent Trial and Appeal Board (PTAB), the Federal Circuit, among other issues, addressed whether PTAB erred in allowing patent owner Sleep Number to amend challenged claims by adding changes that did not directly respond to challenges by petitioner American National. The Federal Circuit affirmed PTAB’s determination allowing the amended claims, rejecting American National’s challenges. The Court also examined various other arguments raised by both Sleep Number and American National on appeal, again affirming PTAB’s determinations.
Sleep Number owns U.S. Patent Nos. 8,769,747 and 9,737,154 (the “Patents”), that describe systems and methods that adjust the pressure in an air mattress by measuring the air pressure inside the valve enclosure assembly, as opposed to the air chambers within the air mattress. American National challenged the Patents, arguing certain claims were obvious to the ordinary skilled artisan over a combination of three other patents. PTAB ultimately resolved the proceedings with split decisions. For certain claims requiring a multiplicative pressure adjustment offset, PTAB determined that American National had failed to establish unpatentability. For the remaining claims, PTAB found that American National had proven they were unpatentable as obvious.
In each proceeding, Sleep Number had filed a motion to amend the claims contingent on a finding that the challenged claims were unpatentable. In addition to adding the requirement of a multiplicative pressure adjustment factor to match the claims that PTAB had determined were not proven unpatentable, the proposed amended claims also included other non-substantive amendments. American National challenged the proposed amended claims. Among other things, it argued that the proposed amendments did not respond to a ground of unpatentability and thus were legally inappropriate, that the relevant specification contained an error that rendered the claims nonenabled, and that the proposed amended claims lacked written description support and were indefinite. PTAB rejected American National’s challenges to the proposed amended claims, and American National and Sleep Number appealed PTAB’s various decisions.
Cupp Computing AS v. Trend Micro Inc., Appeal Nos. 2020-2262, -2263, -2264 (Fed. Cir. Nov. 16, 2022)
In this consolidated appeal from three inter partes review decisions of the Patent Trial and Appeal Board challenging U.S. Patent Nos. 8,631,488; 9,106,683; and 9,843,595, the Federal Circuit affirmed PTAB’s determination that the challenged claims were unpatentable as obvious over two prior art references. The patents concerned systems and methods for waking a mobile device from a power-saving mode and then performing security operations on the device, and the Court addressed issues of claim construction and obviousness. The Court concluded that PTAB properly construed the challenged claims and that its obviousness determinations were supported by substantial evidence.
In this case, the Federal Circuit considered appeals from three inter partes review petitions brought by Intel against VLSI’s U.S. Patent No. 7,247,552, which is directed to improvements to the physical structure of integrated circuit chips. The Patent Trial and Appeal Board had found all challenged claims unpatentable over the prior art, a determination that the Federal Circuit affirmed as to challenged claims 1, 2, and 11, but reversed and remanded as to challenged claim 20.
Among other things, the court considered the effect of the 2018 revisions to 37 C.F.R. § 42.100(b) (adopting a district court-style claim construction standard in IPR proceedings and requiring PTAB to “consider” any applicable district court construction) where the parties agreed to a construction in related district court proceedings, but turned out during the IPRs to disagree as to the scope of a term used within that construction. In those circumstances, the Court found that there was no true agreement as to the appropriate construction, that PTAB did not run afoul of § 42.100(b) when it failed to expressly mention the district court construction in its final written decision (or that it was at most harmless error), and that PTAB was not otherwise bound to adopt a construction proposed by either party but was instead permitted to adopt its own analysis to resolve the parties’ underlying disagreement.