Am. Nat'l Mfg. v. Sleep No. Corp.

• Decision Date: 14 November 2022
• Docket Number: 2021-1321,2021-1323,2021-1379,2021-1382
• Parties: 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
• Court: U.S. Court of Appeals — 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

Nos. 2021-1321, 2021-1323, 2021-1379, 2021-1382

United States Court of Appeals, Federal Circuit

November 14, 2022

Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2019-00497, IPR2019-00500.

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.

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RUFFIN B. CORDELL, Fish &Richardson PC, Washington, DC, argued for cross-appellant. Also represented by ROBERT COURTNEY, MATHIAS WETZSTEIN SAMUEL, Minneapolis, MN; ANDREW S. HANSEN, ELIZABETH A. PATTON, LUKAS D. TOFT, Fox Rothschild LLP, Minneapolis, MN; STEVEN A. MOORE, Moore IP Law PC, San Diego, CA; KECIA JANNELL REYNOLDS, Paul Hastings LLP, Washington, 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, determining 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 intervened.

Our opinion focuses on four of these issues: (1) whether the Board erred in permitting the patent owner to present proposed amended claims that both responded to a ground of unpatentability and made other wording changes unrelated to the IPR proceedings; (2) whether those proposed amended claims were not enabled 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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petitioner's sales data in its secondary considerations analysis. For the below reasons, we affirm. Although we have thoroughly considered the other issues raised by both parties, we affirm the Board's determinations regarding those issues without significant discussion.

BACKGROUND

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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 communication 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 assembly instead of in the air chambers themselves, thus "eliminating the need to turn off the pump in order to obtain 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 pressure 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

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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 "target pressure" in the valve enclosure assembly must be for the air chamber to reach the user's desired pressure setpoint. 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 (describing 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 depending 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 inflation 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 including 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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calculating a pressure target based upon the desired pressure setpoint and a pressure adjustment factor, wherein an inflate pressure adjustment factor 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 calculate the pressure target when the initial pressure within the pump housing is greater than the desired pressure setpoint;

adjusting pressure within the air chamber until a sensed pressure within the pump housing is substantially equal to the calculated pressure target;

determining an actual chamber pressure within the air chamber;

comparing the actual chamber pressure to the desired pressure setpoint to determine the adjustment 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 independent 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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II

American National filed petitions for inter partes review 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 dependent 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 desired 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 cycles." Id. at col. 2 ll. 3-9, 16-26, col. 4 ll. 44-49.

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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 amplitudes" 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 processor adjusts the cuff pressure measurement to compensate for any resistance added by the filter. Specifically, by using an additive offset, Pillsbury explains, its blood pressure cuff can provide an accurate measure of the air pressure 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 inside an air bag while filling or emptying the air bag. Ebel ¶¶ 1, 7. Ebel explains that, because of what it...