Patent Owner May Amend Claims in IPRs to Address §§ 101 and 112 Issues

January 4, 2023

Authored and Edited by Christina Ji-Hye Yang; Esther H. Lim

In American National Manufacturing Inc. v. Sleep Number Corp., Nos. 21-1321, 21-1323, 21-1379, 21-1382 (Fed. Cir. Sept. 29, 2022), the Federal Circuit held that as 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. The Federal Circuit also held that a clear typographical error does not render the claims unpatentable for lack of enablement. For a more detailed analysis of this case, please read "Dialing up Fixes to your Patent Claims: So Relaxing!"

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