Case: 21-1321 Document: 88 Page: 1 Filed: 11/14/2022
United States Court of Appeals
for the Federal Circuit
______________________
AMERICAN NATIONAL MANUFACTURING INC.,
Appellant
v.
SLEEP NUMBER CORPORATION, FKA SELECT
COMFORT CORPORATION,
Cross-Appellant
KATHERINE K. VIDAL, UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR OF THE UNITED STATES
PATENT AND TRADEMARK OFFICE,
Intervenor
______________________
2021-1321, 2021-1323, 2021-1379, 2021-1382
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2019-
00497, IPR2019-00500.
______________________
Decided: November 14, 2022
______________________
KYLE L. ELLIOTT, Spencer Fane, LLP, Kansas City,
MO, argued for appellant. Also represented by BRIAN T.
BEAR, KEVIN S. TUTTLE; ANDY LESTER, Oklahoma City, OK.
RUFFIN B. CORDELL, Fish & Richardson PC,
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2 AMERICAN NATIONAL v. SLEEP NUMBER CORPORATION
Washington, DC, argued for cross-appellant. Also repre-
sented by ROBERT COURTNEY, MATHIAS WETZSTEIN
SAMUEL, Minneapolis, MN; ANDREW S. HANSEN, ELIZABETH
A. PATTON, LUKAS D. TOFT, Fox Rothschild LLP, Minneap-
olis, MN; STEVEN A. MOORE, Moore IP Law PC, San Diego,
CA; KECIA JANNELL REYNOLDS, Paul Hastings LLP, Wash-
ington, DC.
SARAH E. CRAVEN, Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, argued for
intervenor. Also represented by THOMAS W. KRAUSE,
FARHEENA YASMEEN RASHEED; MEREDITH HOPE
SCHOENFELD.
______________________
Before STOLL, SCHALL, and CUNNINGHAM, Circuit Judges.
STOLL, Circuit Judge.
American National Manufacturing Inc. and Sleep
Number Corp. each appeals the Patent Trial and Appeal
Board’s final written decisions in two inter partes reviews.
The Board issued mixed decisions in those proceedings, de-
termining that some, but not all, of the challenged claims
were not unpatentable. These appeals and cross-appeals
involve two patents and numerous issues, including two on
which the U.S. Patent and Trademark Office has inter-
vened.
Our opinion focuses on four of these is-
sues: (1) whether the Board erred in permitting the patent
owner to present proposed amended claims that both re-
sponded to a ground of unpatentability and made other
wording changes unrelated to the IPR proceedings;
(2) whether those proposed amended claims were not ena-
bled because of an alleged error in the specification;
(3) whether those proposed amended claims should have
been rejected for allegedly raising an inventorship issue;
and (4) whether the Board inappropriately considered the
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AMERICAN NATIONAL v. SLEEP NUMBER CORPORATION 3
petitioner’s sales data in its secondary considerations anal-
ysis. For the below reasons, we affirm. Although we have
thoroughly considered the other issues raised by both par-
ties, we affirm the Board’s determinations regarding those
issues without significant discussion.
BACKGROUND
I
Sleep Number owns U.S. Patent Nos. 8,769,747 and
9,737,154. Both patents describe systems and methods
that purport to adjust the pressure in an air mattress “in
less time and with greater accuracy” than previously
known. ’747 patent col. 1 ll. 6–10. 1 Conventional air bed
systems have a control panel that allows a user to select a
desired inflation setting for each air chamber in the air bed
for optimal comfort and to change the inflation setting at
any time, allowing for changes in the firmness of the bed.
Id. at col. 1 ll. 13–25. The air chambers are in fluid com-
munication with an air pump manifold. Id. at col. 3
ll. 10–19, 46–51. The patents disclose adjusting pressure
in an air bed “in less time and with greater accuracy” by
measuring the air pressure inside the valve enclosure as-
sembly instead of in the air chambers themselves, thus
“eliminating the need to turn off the pump in order to ob-
tain a substantially accurate approximation of the chamber
pressure.” Id. at col. 1 ll. 6–10, col. 4 ll. 53–59.
As the patents’ shared specification explains, the pres-
sure control system computes and iteratively refines what
the patents call “pressure adjustment factors” or “offsets”—
the difference between the pressure in the valve enclosure
assembly and the pressure in the bed’s air chambers. Id. at
1 The ’154 patent is a continuation of the application
that matured into the ’747 patent. Because the patents
share a common specification, we refer only to the ’747 pa-
tent specification unless otherwise specified.
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4 AMERICAN NATIONAL v. SLEEP NUMBER CORPORATION
col. 2 ll. 26–31, col. 5 l. 9–col. 6 l. 7. The system then uses
the pressure adjustment factor to determine what the “tar-
get pressure” in the valve enclosure assembly must be for
the air chamber to reach the user’s desired pressure set-
point. Id. at col. 7 l. 51–col. 8 l. 59. The system adjusts the
valve enclosure assembly pressure until it meets the target
pressure, then re-tests the pressure in the air chamber.
Id. at col. 8 l. 63–col. 9 l. 43. If the air chamber has still not
reached the desired pressure setpoint, the system revises
its pressure adjustment factor, using what the patents call
an “adjustment factor error,” and tries again. Id. at col. 2
ll. 28–31, col. 9 l. 44–col. 10 l. 51; see also id. Fig. 6 (de-
scribing the process in flow diagram form). This process
repeats until the air chamber reaches the desired pressure.
The specification further explains that the process for
determining the pressure adjustment factor varies depend-
ing on whether the system is inflating or deflating the air
chamber. To differentiate between the two processes, the
patents describe using an additive offset (i.e., an offset that
is added to the measured valve enclosure pressure) for in-
flation and a multiplicative offset (i.e., an offset by which
the measured valve enclosure pressure is multiplied) for
deflation. Id. at col. 8 ll. 14–59, col. 9 ll. 51–61.
Claim 1 of the ’747 patent recites:
1. A method for adjusting pressure within an air
bed comprising:
providing or receiving an air bed, the air bed in-
cluding an air chamber and a pump having a pump
housing;
selecting a desired pressure setpoint for the air
chamber;
determining an initial pressure within the pump
housing;
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AMERICAN NATIONAL v. SLEEP NUMBER CORPORATION 5
calculating a pressure target based upon the de-
sired pressure setpoint and a pressure adjustment
factor, wherein an inflate pressure adjustment fac-
tor is used to calculate the pressure target when
the initial pressure within the pump housing is less
than the desired pressure setpoint, and wherein a
deflate pressure adjustment factor is used to calcu-
late the pressure target when the initial pressure
within the pump housing is greater than the de-
sired pressure setpoint;
adjusting pressure within the air chamber until a
sensed pressure within the pump housing is sub-
stantially equal to the calculated pressure target;
determining an actual chamber pressure within
the air chamber;
comparing the actual chamber pressure to the de-
sired pressure setpoint to determine the adjust-
ment factor error; and
modifying the pressure adjustment factor based
upon the adjustment factor error.
Id. at col. 12 ll. 43–67. Claim 1 of the ’154 patent is similar.
See ’154 patent col. 13 ll. 11–29. Certain dependent claims
of both patents require that the pressure adjustment factor
be a multiplicative pressure adjustment factor. See
’747 patent col. 13 ll. 8–13, col. 14 ll. 1–3 (claims 5, 6,
and 13); ’154 patent col. 13 ll. 39–44, col. 14 ll. 46–49
(claims 5, 6, and 15). Both patents also contain an inde-
pendent claim requiring, among other things, a “pressure
adjustment system for an air bed comprising . . . a pressure
sensing means adapted to monitor pressure within the
pump manifold.” ’747 patent col. 14 ll. 9–43 (claim 16);
’154 patent col. 15 l. 16–col. 16 l. 18 (claim 20).
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6 AMERICAN NATIONAL v. SLEEP NUMBER CORPORATION
II
American National filed petitions for inter partes re-
view challenging many claims of the ’747 and ’154 patents.
In its petitions, American National asserted that most of
the challenged claims would have been obvious over Gifft 2
in view of Mittal 3 and Pillsbury, 4 and that six of the de-
pendent claims would have been obvious in further view of
Ebel. 5
Gifft is owned by Sleep Number and incorporated by
reference in the patents-in-suit. Gifft discloses an air bed
system including a sealed valve enclosure assembly with
an air pump for inflating and deflating air chambers to a
desired pressure. Gifft col. 2 l. 56–col. 3 l. 2. Similar to the
patents-in-suit, Gifft discloses monitoring the pressure
within the valve enclosure instead of the air chamber itself
while the air pump is in operation, which the system
equates as being the actual pressure in the air chamber.
Id. at col. 9 ll. 57–67 (claim 9); ’747 patent col. 1 ll. 48–64
(describing prior art).
Mittal describes a system for quickly reaching a de-
sired air pressure in vehicle tires. Mittal Abstract, col. 8
l. 65–col. 9 l. 9. Mittal discloses that there is often a lag
between the time tire pressure is monitored and the time
the pressure adjustment cycle ends; that is, the tire may
reach the desired pressure before the pressure adjustment
system detects it has done so. Id. at col. 2 ll. 32–47. To
resolve this problem, Mittal’s system adjusts the desired
pressure with additive offsets to compensate for these lags
and to avoid “wasteful repeated pressure adjustment cy-
cles.” Id. at col. 2 ll. 3–9, 16–26, col. 4 ll. 44–49.
2
U.S. Patent No. 5,904,172.
3
U.S. Patent No. 5,629,873.
4
U.S. Patent No. 5,277,187.
5 U.S. Patent Application Pub. No. 2007/0000559.
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AMERICAN NATIONAL v. SLEEP NUMBER CORPORATION 7
Pillsbury is directed to an automatic blood pressure
cuff that measures a user’s blood pressure and employs a
filter to “prevent dust, dirt, and other debris from clogging”
the cuff’s air exit valve. Pillsbury Abstract, col. 8 ll. 25–63.
The system detects and records the pressure in the cuff
along with other data (including “oscillometric pulse am-
plitudes” recorded at each cuff pressure as the cuff pressure
reduces to zero) to “determine relatively accurately the
user’s blood pressure.”
Id. at col. 1 ll. 39–48. A data pro-
cessor adjusts the cuff pressure measurement to compen-
sate for any resistance added by the filter. Specifically, by
using an additive offset, Pillsbury explains, its blood pres-
sure cuff can provide an accurate measure of the air pres-
sure inside the cuff while compensating for the added air
resistance caused by build-up on the filter.
Id. at col. 2
ll. 40–54, col. 8 ll. 25–63.
Ebel discloses a method for measuring the pressure in-
side an air bag while filling or emptying the air bag. Ebel
¶¶ 1, 7. Ebel explains that, because of what it calls “con-
duit effects,” a pressure sensor cannot accurately measure
the actual pressure in the air bag during inflation or defla-
tion.
Id. ¶ 3. Ebel explains that it is “only in the idle state,
i.e., after a certain slow-down period[,] that the actual bag
pressure can be determined by the pressure sensor.”
Id.
To compensate for these effects during inflation and defla-
tion, Ebel proposes mathematical equations for calculating
the actual pressure inside the air bag. Those equations use
the air bag pressure measured by the pressure sensor as
one input parameter and include both additive and multi-
plicative components.
Id. ¶¶ 4–7, 28–32.
Before the Board, American National asserted that
most of the challenged claims would have been obvious to
the ordinarily skilled artisan over a combination of Gifft’s
air bed system, with its measurement of the valve assem-
bly pressure to approximate the air chamber pressure, and
Mittal’s and Pillsbury’s use of additive offsets, or pressure
adjustment factors. For the six dependent claims requiring
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8 AMERICAN NATIONAL v. SLEEP NUMBER CORPORATION
a multiplicative pressure adjustment factor, American Na-
tional argued these would have been obvious over a combi-
nation of those three references as well as Ebel’s use of
multiplicative offsets.
In opposition, Sleep Number argued that: (1) evidence
of industry praise and commercial success strongly sup-
ported that the claims would not have been obvious;
(2) American National had not adequately explained how
and why the skilled artisan would have combined the as-
serted references to meet the claim limitations; and
(3) American National had not proposed a construction for
the means-plus-function term “pressure sensing means” in
violation of the Board’s rules.
For industry praise, Sleep Number relied on two Amer-
ican National internal business documents that Sleep
Number asserted praised Sleep Number’s patents. The
Board determined that one of these documents weighed
“slightly in favor” of industry praise but that the other did
not.
For commercial success, Sleep Number relied on the
commercial success not of its own products, but of Ameri-
can National’s products—specifically, the products that
Sleep Number had accused of infringement in a parallel
district court proceeding. See J.A. 3647–49; see also First
Am. Compl., Sleep No. Corp. v. Am. Nat’l Mfg., Inc.,
No. 5:18-cv-00357 (C.D. Cal. Mar. 23, 2018). To support its
arguments, Sleep Number sought discovery before the
Board on American National’s sales of products sold with
and without certain versions of source code that allegedly
infringed claim 1. See J.A. 3004–05, 3050–55. The Board
granted this motion, explaining that the evidence could
help illuminate issues of nonobviousness, assuming Sleep
Number could show a nexus between the relevant Ameri-
can National products and the challenged patents.
J.A. 3356–59. In its order, the Board noted that Sleep
Number was not “seeking any admission of infringement,”
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AMERICAN NATIONAL v. SLEEP NUMBER CORPORATION 9
because its request simply sought a list of “products that
include the allegedly infringing source code[] and those
that do not.” J.A. 3359.
In its Patent Owner Response, Sleep Number asserted
American National products were coextensive with the
challenged claims based in part on the testimony of Sleep
Number’s experts, Drs. John Abraham and George Ed-
wards. J.A. 3648; see also J.A. 4634–35 ¶ 29 (Dr. Abraham
testifying that American National’s products “read on” the
challenged claims); J.A. 4725–26 ¶ 41 (Dr. Edwards testi-
fying the same).
Based in part on this expert testimony, the Board
found that Sleep Number had demonstrated a nexus be-
tween American National’s increased sales numbers and
its adoption of technology that “reads on” the challenged
patents. 6 See Am. Nat’l Mfg. Inc. v. Sleep No. Corp.,
No. IPR2019-00497, Paper 114, at 91–92 (P.T.A.B.
Sept. 30, 2020) (’747 Decision); Am. Nat’l Mfg. Inc. v. Sleep
No. Corp., No. IPR2019-00500, Paper 114, at 92–93
(P.T.A.B. Sept. 30, 2020) (’154 Decision). 7 Nevertheless,
the Board determined that the evidence did not show that
6 The Board’s original final written decisions stated
that American National “does not refute the testimonies of
Dr. Abraham and Dr. Edwards that” certain versions of the
source code “fall within the claims of the [challenged] pa-
tent[s] such that [American National]’s products using
these versions infringe the claims.” ’747 Decision at 91
(emphasis added); ’154 Decision at 92. After American Na-
tional sought rehearing, the Board modified its final writ-
ten decisions, changing the word “infringe” to “read on.”
J.A. 143–44, 294–95.
7 Although the Board issued separate final written
decisions in these proceedings, the decisions are largely
identical for many of the issues on appeal. In this opinion,
we cite primarily to the ’747 Decision.
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10 AMERICAN NATIONAL v. SLEEP NUMBER CORPORATION
American National’s products “were commercially success-
ful because of the merits of the claimed invention,” and not,
for example, because of increased advertising, consumer
recognition, or lowered price. ’747 Decision at 94. Thus,
the Board gave Sleep Number’s evidence of commercial
success “minimal probative weight.”
Id.
The Board ultimately resolved the proceedings with
split decisions. For the six dependent claims requiring a
multiplicative pressure adjustment offset, the Board deter-
mined that American National had failed to establish un-
patentability. See ’747 Decision at 139–40; ’154 Decision at
145–50. Although the Board found that Ebel taught the
use of multiplicative offsets, it also found that American
National had not adequately shown why the skilled artisan
would have applied Ebel’s multiplicative factors to the
pressure targeting methods disclosed in Gifft as modified
by Mittal and Pillsbury. See ’747 Decision at 81–84. Be-
cause American National had not sufficiently articulated
why the skilled artisan would have combined Ebel with the
remaining references, the Board found American National
had not established that the claims requiring multiplica-
tive pressure adjustment factors were unpatentable as ob-
vious.
For the remaining claims, the Board found that Amer-
ican National had proven they were unpatentable as obvi-
ous. See
id. at 140. For these claims, the Board credited
American National’s expert, who testified that the ordinar-
ily skilled artisan, presented with Gifft’s air bed pressure
adjustment system, would have understood that by “im-
proving the accuracy of [Gifft’s] pressure adjust cycles on
an ongoing basis, the number of pressure adjustments nec-
essary to reach a target pressure could be reduced.” See
id. at 45 (citing J.A. 1148 ¶ 101). The Board rejected Sleep
Number’s assertion that American National had failed to
explain how or why a skilled artisan would combine the as-
serted references and instead found that the skilled artisan
would have a motivation to increase both speed and
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AMERICAN NATIONAL v. SLEEP NUMBER CORPORATION 11
accuracy in Gifft’s system—and would have looked to tech-
niques disclosed in other pneumatic systems references,
such as Mittal and Pillsbury, to achieve these goals. See
id. at 50–51. The Board therefore found that all claims not
requiring a multiplicative pressure adjustment offset were
unpatentable as obvious. See
id. at 140.
Finally, the Board rejected Sleep Number’s assertion
that American National violated
37 C.F.R. § 42.104(b)(3),
governing the contents of petitions, because American Na-
tional’s petitions did not provide a sufficient construction
for the means-plus-function term “pressure sensing
means.” Although the Board acknowledged in both pro-
ceedings that American National’s petitions did not “explic-
itly state” how the means-plus-function term should be
construed, it nonetheless determined that the petitions
“fairly me[t] the requirements of” the regulation. ’747 De-
cision at 24–25; ’154 Decision at 23–25.
In each proceeding, Sleep Number filed a motion to
amend contingent on a finding that the challenged claims
were unpatentable. ’747 Decision at 104. Each of the pro-
posed claims added the requirement of a multiplicative
pressure adjustment factor,
id. at 105–07, matching the
claims that the Board had determined were not proven un-
patentable. The proposed amended claims also included
other non-substantive amendments, described by Sleep
Number as made “for consistency with terms used in the
industry and in related patents.” J.A. 3470; see also
J.A. 3473–77. These non-substantive amendments in-
cluded, for example, changing the term “pump housing” to
“valve enclosure” and the term “chamber” to “bladder.”
J.A. 3474, 3504–05.
American National challenged the proposed amended
claims. Among other things, it argued that: the proposed
amendments did not respond to a ground of unpatentabil-
ity and thus were legally inappropriate; the relevant spec-
ification contained an error that rendered the claims
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12 AMERICAN NATIONAL v. SLEEP NUMBER CORPORATION
nonenabled; and the proposed amended claims lacked writ-
ten description support and were indefinite.
The Board rejected American National’s challenges to
the proposed amended claims, finding that the amend-
ments—which added the substantive limitation requiring
a multiplicative pressure adjustment factor—responded to
a ground of unpatentability in the proceedings. ’747 Deci-
sion at 107–10. The Board also determined that the pro-
posed amended claims were not unpatentable under
35 U.S.C. § 112.
Id. at 110–16. The Board thus granted
Sleep Number’s contingent motions to amend.
Id. at 120.
American National appeals, and Sleep Number cross-
appeals, from both final written decisions. We have juris-
diction under
35 U.S.C. § 1295(a)(4)(A).
DISCUSSION
We review the Board’s legal conclusions de novo and its
factual findings for substantial evidence. Univ. of Strath-
clyde v. Clear-Vu Lighting LLC,
17 F.4th 155, 160
(Fed. Cir. 2021). Obviousness is a legal question based on
underlying findings of fact, including the existence of and
weight assigned to any objective indicia of nonobviousness.
Adapt Pharma Operations Ltd. v. Teva Pharms. USA, Inc.,
25 F.4th 1354, 1364 (Fed. Cir. 2022). “The substantial ev-
idence standard asks ‘whether a reasonable fact finder
could have arrived at the agency’s decision,’ and ‘involves
examination of the record as a whole, taking into account
evidence that both justifies and detracts from the agency’s
decision.’” OSI Pharms., LLC v. Apotex, Inc.,
939
F.3d 1375, 1381–82 (Fed. Cir. 2019) (quoting In re Gart-
side,
203 F.3d 1305, 1312 (Fed. Cir. 2000)). We review stat-
utory and constitutional issues de novo. MCM Portfolio
LLC v. Hewlett-Packard Co.,
812 F.3d 1284, 1287 (Fed. Cir.
2015). But “[d]ecisions related to compliance with the
Board’s procedures are reviewed for an abuse of discre-
tion.” Ericsson Inc. v. Intell. Ventures I LLC,
901 F.3d
1374, 1379 (Fed. Cir. 2018).
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AMERICAN NATIONAL v. SLEEP NUMBER CORPORATION 13
I
We turn first to American National’s argument that
the Board erred in permitting Sleep Number to present
proposed amended claims that both responded to a ground
of unpatentability involved in the proceedings and made
other changes not responsive to an unpatentability ground.
In its motion to amend, Sleep Number stated that some of
its proposed amendments (like changing the phrase “pump
housing” to “valve enclosure”) were made “to achieve con-
sistency and accuracy in terminology and phrasing”
throughout the patent family. J.A. 3474, 3504–05. Be-
cause this purpose was not directly “aimed at responding
to a ground of unpatentability at issue in” the IPR proceed-
ing, as required by
37 C.F.R. § 42.121, American National
argues on appeal, as it did below, that these proposed
amendments were improper.
In considering this issue, the Board has previously de-
termined that § 42.121 “does not require . . . that every
word added to or removed from a claim in a motion to
amend be solely for the purpose of overcoming an instituted
ground.” Lectrosonics, Inc. v. Zaxcom, Inc., No. IPR2018-
01129,
2019 WL 1118864, at *2 (P.T.A.B. Feb. 25, 2019)
(precedential). Instead, “once a proposed claim includes
amendments to address a prior art ground in the trial, a
patent owner also may include additional limitations to ad-
dress potential § 101 or § 112 issues, if necessary.” Id. Al-
lowing these amendments, the Board has explained,
“serves the public interest by helping to ensure the patent-
ability of amended claims” and “helps ensure a ‘just’ reso-
lution of the proceedings and fairness to all parties.”
Id. (quoting
37 C.F.R. § 42.1(b)).
We agree with the Board’s thoughtful analysis of this
issue in Lectrosonics. Indeed, nothing in the America In-
vents Act (AIA) or the Board’s regulations precludes a pa-
tent owner from amending a claim to both overcome an
instituted ground and correct other perceived issues in the
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14 AMERICAN NATIONAL v. SLEEP NUMBER CORPORATION
claim. The AIA explicitly restricts patent owner amend-
ments in only two ways: amendments may not enlarge the
scope of the claims or introduce new matter.
35 U.S.C.
§ 316(d)(3). The Board’s regulations add another re-
striction: amendments must respond to a ground of un-
patentability involved in the proceeding.
37 C.F.R.
§ 42.121(a)(2)(i). As we have previously explained, the Di-
rector introduced this regulation “merely to ensure that the
proposed amendment had a minimal level of relevancy to
the IPR.” Aqua Prods., Inc. v. Matal,
872 F.3d 1290, 1317
(Fed. Cir. 2017) (en banc) (plurality opinion) (citing
Changes to Implement Inter Partes Review Proceedings,
77 Fed. Reg. 48,680, 48,705 (Aug. 14, 2012)). Thus, so 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
without running afoul of the relevant statutes and regula-
tion.
American National argues that allowing a patent
owner to refine claims or correct potential § 112 errors “in-
vites a violation of due process and the Administrative Pro-
cedure Act, by allowing the patent owner and the Board to
address concerns that may be proper for [an] examination
or reexamination proceeding, but that were never germane
to an IPR process.” Appellant’s Br. 69–70. Specifically, ac-
cording to American National, because a petition cannot
challenge claims under § 112, it would be “asymmetr[ical]”
and “unfair” to allow the patent owner to amend its claims
to address § 112 concerns. We are not convinced. As we
have previously explained, the petitioner can challenge the
proposed amended claims on grounds beyond §§ 102 and
103, including under § 112. See Uniloc 2017 LLC v. Hulu,
Inc.,
966 F.3d 1295, 1305–07 (Fed. Cir. 2020) (holding that
petitioners may challenge proposed substitute claims out-
side of §§ 102 and 103); Samsung Elecs. Am. v. Prisua
Eng’g Corp.,
948 F.3d 1342, 1352 (Fed. Cir. 2020) (“[T]he
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AMERICAN NATIONAL v. SLEEP NUMBER CORPORATION 15
Board’s authority with respect to new and amended claims
necessarily extends to other possible grounds of unpatent-
ability, in particular, a failure to comply with section
112.”). Indeed, American National did so in its oppositions
to Sleep Number’s motions to amend in these IPRs. Ac-
cordingly, we discern no unfairness or asymmetry in the
Board’s granting of the motion to amend.
In this case, each of Sleep Number’s proposed substi-
tute claims included an amendment responsive to a ground
of unpatentability raised in the proceedings. Specifically,
each proposed substitute claim added a limitation requir-
ing a multiplicative pressure adjustment factor—mirroring
the claims that the Board had determined were not un-
patentable. ’747 Decision at 105–07 (proposed substitute
claims); see also J.A. 3474–77, 3504–08. Because each pro-
posed substitute claim included at least one responsive
narrowing limitation, Sleep Number was free to include
other amendments, including any addressing perceived
§§ 101 and 112 issues. American National was free to chal-
lenge these proposed claims, as it did in both proceedings.
And the Board was free to determine whether the proposed
claims were unpatentable under §§ 101, 102, 103, and 112.
We thus see no error in the Board’s decision to consider
Sleep Number’s proposed substitute claims.
II
We turn next to American National’s enablement argu-
ment. Section 112(a) requires, among other things, that
the specification enable a skilled artisan to make and use
the claimed invention. In re Wands,
858 F.2d 731, 735
(Fed. Cir. 1988). “Whether a claim satisfies the enable-
ment requirement of
35 U.S.C. § 112 is a question of law
that we review without deference, although the determina-
tion may be based on underlying factual findings, which we
review for clear error.” Amgen Inc. v. Sanofi, Aventisub
LLC,
987 F.3d 1080, 1084 (Fed. Cir. 2021) (citing Alcon
Rsch. Ltd. v. Barr Lab’ys Inc.,
745 F.3d 1180, 1188
Case: 21-1321 Document: 88 Page: 16 Filed: 11/14/2022
16 AMERICAN NATIONAL v. SLEEP NUMBER CORPORATION
(Fed. Cir. 2014)). American National argues that an ad-
mitted error in the specification of the application to which
the ’747 and ’154 patents claim priority necessarily means
that the proposed amended claims are not enabled. Appel-
lant’s Br. 70–71. We disagree.
There is undisputedly an error in the specification of
the challenged patents. ’747 Decision at 113–14. The spec-
ification states:
Updated Inflate Adjustment Factor = (Manifold
Pressure from Step 168) – (Pressure Setpoint
from Step 106)
Id. at 114 (citing J.A. 10163 ¶ 67) (emphasis added to erro-
neous portion). Both parties agree this equation should in-
stead read:
Updated Inflate Adjustment Factor = (Manifold
Pressure from Step 168 176) – (Pressure Set-
point from Step 106)
Id. (citing J.A. 10085 ¶ 20) (emphasis added to corrected
portion). Sleep Number’s expert testified that the skilled
artisan would understand that this “is a typographical er-
ror inconsistent with the remainder of the disclosure” in
the specification.
Id. (citing J.A. 10085 ¶ 20). This testi-
mony is supported by the specification. For example, im-
mediately before the equation, the specification correctly
explains that the “manifold pressure sampled in step 176”
is compared to the “setpoint pressure” of step 106.
J.A. 10162 ¶ 63; see also, e.g., ’747 patent col. 9 ll. 33–38
(discussing the “manifold pressure sampled in step 176”).
On this record, the Board reasonably found that the error
was a “mistake or typographical error,” ’747 Decision
at 114, and thus that American National had not shown
the proposed claims were unpatentable for lack of enable-
ment,
id. at 115.
In an analogous case, we affirmed a district court’s
finding that a patent was enabled, despite a calculation
Case: 21-1321 Document: 88 Page: 17 Filed: 11/14/2022
AMERICAN NATIONAL v. SLEEP NUMBER CORPORATION 17
error in the specification. PPG Indus. v. Guardian Indus.
Corp.,
75 F.3d 1558 (Fed. Cir. 1996). In PPG Industries,
the specification described how to make the patented “solar
control” glass composition but included test results and cal-
culations rendered “artificially high” by a software error.
Id. at 1563–64. The district court had found that the error
was “easily detectable by anyone who was skilled in the
art.”
Id. at 1564. And, we explained, the remainder of the
specification described the process with sufficient detail to
“indicate[] to one skilled in the art how” to make such a
glass composition.
Id. at 1565. We affirmed the district
court’s finding that the patent was enabled, despite the er-
ror, because the skilled artisan would, “[i]n light of the
guidance provided by the specification” as a whole, be ena-
bled to make and use the claimed invention.
Id. at 1564–
65. The same rationale and conclusion apply here.
American National nonetheless argues that this error
was not obvious because it was not noted during the origi-
nal examination process. And because the equation in the
specification, as erroneously written, would not work,
American National argues that the proposed amended
claims are not enabled. Appellant’s Br. 70 (citing In re
Wands,
858 F.2d at 737). We are not persuaded.
In this case, regardless of whether the error was first
discovered during examination or afterward, the specifica-
tion itself makes clear that the reference to step 168 in-
stead of step 176 is an obvious error. Indeed, the
remainder of the specification consistently and correctly
describes that the “manifold pressure [is] sampled in
step 176.” J.A. 10162 ¶ 63; see also J.A. 10177, Fig. 6
(showing step 176 as “Sample Manifold Pressure”);
J.A. 10178, Fig. 7 (showing same). This conclusion is fur-
ther supported by Sleep Number’s expert, who opined that
a skilled artisan, reading the specification in its entirety,
would view the reference to step 168 as an obvious typo-
graphical error and substitute the correct step—step 176—
in its place. J.A. 10085 ¶ 20. We thus conclude that the
Case: 21-1321 Document: 88 Page: 18 Filed: 11/14/2022
18 AMERICAN NATIONAL v. SLEEP NUMBER CORPORATION
Board did not err in determining that the proposed
amended claims were enabled, despite an admitted error
in the specification, because that error and its correction
would have been obvious to a person of ordinary skill in the
art.
III
We now turn to American National’s argument that the
Board should have denied the motion to amend because
adding the term “valve enclosure” injected an inventorship
issue into the patents. We review the Board’s decision to
grant a motion to amend under the Administrative Proce-
dure Act, and we may set aside the Board’s action if it is
“arbitrary, capricious, an abuse of discretion, or otherwise
not in accordance with law.”
5 U.S.C. § 706(2)(A); Bosch
Auto. Serv. Sols., LLC v. Matal,
878 F.3d 1027, 1039
(Fed. Cir. 2017). Inventorship is a question of law based on
underlying findings of fact. Duncan Parking Techs., Inc.
v. IPS Grp., Inc.,
914 F.3d 1347, 1357 (Fed. Cir. 2019) (cit-
ing Gen. Elec. Co. v. Wilkins,
750 F.3d 1324, 1329 (Fed. Cir.
2014)).
According to American National, the term “valve enclo-
sure” is used in related patents owned by Sleep Number,
including the Gifft patent, which name different inventors
than the ’747 and ’154 patents. For example, the Gifft pa-
tent lists James Gifft as an inventor while the ’747 and ’154
patents do not. American National argues that amending
the claims to use the term “valve enclosure” without adding
James Gifft as an inventor renders the amendments “fa-
cially invalid.” Appellant’s Br. 72–73. We disagree.
The ’747 and ’154 patents incorporate the prior art
Gifft patent by reference. ’747 patent, col. 1 ll. 18–25;
’154 patent, col. 1 ll. 28–35. That is, the patents them-
selves make clear that valve enclosures were well known
in the art and incorporated into the patent specification.
Sleep Number’s choice to recite these well-known struc-
tures in its amended claims does not make James Gifft an
Case: 21-1321 Document: 88 Page: 19 Filed: 11/14/2022
AMERICAN NATIONAL v. SLEEP NUMBER CORPORATION 19
inventor of the ’747 and ’154 patents. See Trovan, Ltd.
v. Sokymat SA,
299 F.3d 1292, 1302 (Fed. Cir. 2002)
(“[T]he basic exercise of ordinary skill in the art . . . does
not make one a joint inventor.”); see also Fina Oil & Chem.
Co. v. Ewen,
123 F.3d 1466, 1473 (Fed. Cir. 1997) (“[A] per-
son will not be a co-inventor if he or she does no more than
explain to the real inventors concepts that are well known
and the current state of the art.”). Accordingly, for at least
this reason, 8 we reject American National’s argument that
the Board should have rejected Sleep Number’s motion to
amend because of an alleged inventorship issue.
IV
Next, we address American National’s argument that
the Board violated due process and the APA when analyz-
ing Sleep Number’s evidence of commercial success. Ad-
dressing nexus, the Board stated that American National
“does not refute the testimonies of Dr. Abraham and
Dr. Edwards that these versions of the source code fall
within the claims of the ’747 patent such that ANM’s prod-
ucts using these versions read on the claims.” Based on
this sentence, American National argues that the Board in-
appropriately resolved infringement in violation of either
8 There may well be additional reasons why this ar-
gument fails. For example, it is unclear whether the Board
is authorized to address inventorship in the context of a
motion to amend. Cf.
35 U.S.C. § 116(c) (providing that,
outside the IPR context, “the Director may permit the ap-
plication to be amended” to fix inventorship errors). Fur-
ther, even if the proposed amended claims in this case did
inject an inventorship issue, American National identifies
no statutory or regulatory prohibition on patent owners
making such amendments. See
35 U.S.C. § 316(d)(3);
37 C.F.R. § 42.121. In any event, because American Na-
tional has not shown that James Gifft is an inventor of the
patents-in-suit, we do not address this issue further.
Case: 21-1321 Document: 88 Page: 20 Filed: 11/14/2022
20 AMERICAN NATIONAL v. SLEEP NUMBER CORPORATION
or both of the Constitution or the APA. Appellant’s
Br. 55–61. We disagree and note that the Board itself
made clear that it was not resolving infringement issues
by, among other things, changing the wording from “in-
fringe” to “read on” in its final written decisions.
We decline to address this argument further because
American National does not challenge the Board’s finding
that Sleep Number’s evidence of commercial success “has
minimal probative weight.” ’747 Decision at 94. Accord-
ingly, American National’s argument would not change the
Board’s patentability determination on appeal. Indeed,
American National concedes that its challenge to the
Board’s “read on” finding “would not change the patenta-
bility determinations.” Appellant’s Br. 59.
In SkyHawke Technologies, LLC v. DECA Interna-
tional Corp., we dismissed the appeal of a patent owner in
an analogous situation.
828 F.3d 1373, 1375 (Fed. Cir.
2016). There, the patent owner sought only to “correct” the
Board’s claim construction underlying its patentability de-
termination, not to alter the Board’s patentability determi-
nation itself.
Id. We reasoned that SkyHawke was merely
trying to preempt the possibility that the district court
would adopt the Board’s construction.
Id. at 1375–78; see
also, e.g., Pirlott v. NLRB,
522 F.3d 423, 433 (D.C. Cir.
2008) (“Where . . . a judgment gives a party all the relief
requested, an appeal may not be taken simply to challenge
the Board’s reasoning.”). Here, American National con-
cedes that its challenge to the Board’s “read on” decision
“would not change the patentability determinations.” Ap-
pellant’s Br. 59. Like the appellant in SkyHawke, Ameri-
can National will have the opportunity to argue
infringement in the district court (and, if necessary, on ap-
peal from the district court’s judgment).
V
The parties’ additional arguments on appeal are unper-
suasive. We have considered American National’s
Case: 21-1321 Document: 88 Page: 21 Filed: 11/14/2022
AMERICAN NATIONAL v. SLEEP NUMBER CORPORATION 21
challenges to the Board’s conclusion that the six dependent
claims requiring multiplicative pressure adjustment fac-
tors (claims 5, 6, and 13 of the ’747 patent and claims 5, 6,
and 15 of the ’154 patent) would not have been obvious at
the time of the invention. We conclude that substantial ev-
idence supports the Board’s finding that American Na-
tional did not meet its burden to show that a skilled artisan
would have been motivated to combine Ebel with Gifft in
view of Mittal and Pillsbury to satisfy the elements of these
claims.
Turning to Sleep Number’s cross-appeal, we likewise
conclude that substantial evidence supports the Board’s
finding that a skilled artisan would have been motivated to
combine Gifft, Mittal, and Pillsbury. The Board reasonably
found that a person of ordinary skill (1) would have been
motivated to improve the accuracy and speed of Gifft’s
pressure adjust cycles; and (2) would have understood from
Mittal that dynamic inflation/deflation offset values can be
used to achieve that goal. Expert testimony and the refer-
ences themselves support these findings. While the partic-
ular equations in Mittal and Pillsbury might not fit directly
into Gifft, the Board’s findings are consistent with the Su-
preme Court’s guidance that the “person of ordinary skill
is also a person of ordinary creativity, not an automaton.”
KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 421 (2007); see
also Fleming v. Cirrus Design Corp.,
28 F.4th 1214, 1223
(Fed. Cir. 2022) (affirming the Board’s obviousness deter-
mination which was “the result of a faithful application of
our law on obviousness, including KSR’s directive to con-
sider the creativity of the ordinarily skilled artisan”).
Similarly, we are not persuaded to reweigh the Board’s
assessment of the strength of Sleep Number’s evidence of
commercial success and industry praise. The Board thor-
oughly analyzed and considered the parties’ evidence, and
we cannot say that its findings were unreasonable.
Case: 21-1321 Document: 88 Page: 22 Filed: 11/14/2022
22 AMERICAN NATIONAL v. SLEEP NUMBER CORPORATION
We next consider Sleep Number’s argument that the
Board misallocated the burden of persuasion. Contrary to
Sleep Number’s assertion, we do not read the Board’s deci-
sions as improperly placing the burden on Sleep Number
to prove non-obviousness of its claims. See Cross-Appel-
lant’s Principal & Resp. Br. 57–64. After reading the deci-
sions as a whole, we are convinced that the Board properly
analyzed the obviousness issue, first setting forth its fact
findings and reasoning for why it concluded that the claims
would have been obvious and then responding to Sleep
Number’s specific contrary arguments. See ’747 Decision
at 48–68. The portions of the opinion that Sleep Number
quotes as allegedly improperly shifting the burden are
largely taken from the later sections in the opinion where
the Board affirmatively responded to Sleep Number’s argu-
ments regarding the proposed combinations. See
id. at 53–68. Overall, we conclude that the Board’s opinion
is most fairly read as properly allocating the burden of per-
suasion.
Finally, we see no abuse of discretion in the Board’s
conclusion that American National satisfied the require-
ments of
37 C.F.R. § 42.104. That regulation requires pe-
titioners to, for each means-plus-function term in the
challenged claims, “identify the specific portions of the
specification that describe the structure . . . corresponding
to each claimed function.”
Id. § 42.104(b)(3). Sleep Num-
ber argues that American National did not expressly pro-
vide a construction for the claim term “pressure sensing
means” and thus did not comport with the Board’s rules for
petitioners. In both decisions, however, the Board deter-
mined that American National sufficiently identified the
structure and function of the “pressure sensing means”
term. In other words, the Board found that American Na-
tional had done enough to meet the requirements of this
rule. We give deference to the Board’s application of its
own rules. See Ericsson, 901 F.3d at 1379 (citing Bilstad
Case: 21-1321 Document: 88 Page: 23 Filed: 11/14/2022
AMERICAN NATIONAL v. SLEEP NUMBER CORPORATION 23
v. Wakalopoulos,
386 F.3d 1116, 1121 (Fed. Cir. 2004)). Ac-
cordingly, we affirm on this issue.
CONCLUSION
For the reasons stated above, we affirm the Board’s fi-
nal written decisions in both proceedings.
AFFIRMED
COSTS
No costs.
