# 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 T rademark Office, Patent Trial and Appeal Board in No s . IPR2019

- 00497, IPR2019

- 00500.

______________________

Decided: November 1 4 , 2022

______________________

K

YLE L. E LLIOTT , Spencer Fane, LLP, Kansas City, MO, argued for appellant. Also represented by B RIAN T. B EAR , K EVIN S. T UTTLE ; A NDY L ESTER , Oklahoma City, OK.

R UFFIN B. C ORDELL , Fish & Richardson PC, Case: 21-1321 Document: 88 Page: 1 Filed: 11/14/2022A MERICAN NATIONAL v. SLEEP NUMBER CORP ORATION 2

Washington, DC, argued for cross

- appellant. Also represented by R OBERT C OURTNEY , M ATHIAS W ETZSTEIN S AMUEL , Minneapolis, MN; A NDREW S. H ANSEN , E LIZABETH A. P ATTON , L UKAS D. T OFT , Fox Rothschild LLP , Minneapolis, MN ; S TEVEN A. M OORE , Moore IP Law PC, San Di ego, CA; K ECIA J ANNELL R EYNOLDS , Paul Hastings LLP, Washington, DC.

S ARAH E. C RAVEN , Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, argued for intervenor. Also represented by T HOMAS W. K RAUSE , F ARHEENA Y ASME EN R ASHEED ; M EREDITH H OPE S CHOENFELD

.

______________________

Before S TOLL , S CHALL , and C UNNINGHAM , Circuit Judges

. S TOLL , Circuit Judge

. American National Manufacturing Inc. and Sleep Number Corp. each appeal s 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. The se appeals and cross

- ap peals involve two patents and numerous issues, including two onwhich 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 amende d 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 prop osed amended claims should have been rejected for allegedly raising an inventorship issue; and (4) whether the Board inappropriately considered the Case: 21-1321 Document: 88 Page: 2 Filed: 11/14/2022A MERICAN NATIONAL v. SLEEP NUMBER CORP ORATION 3

petitioner’s sales data in its secondary considerations analysis. For the below reasons, we affirm. Althou gh we havethoroughly considered the other issues raised by both parties, we affirm the Board’s determinations regarding th o se issues without significant discussion

. B ACKGROUND

I
Sleep Number owns U.S. Patent Nos. 8,769,747 and 9,737,154. Both patents d escribe 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

measur ing the air p ressure inside the valve enclosure assembly instead of in the air chambers themselves

, thus “eliminat ing 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 explain s , the pressure control system computes and iteratively refines what the patents call “pressure adjustment factors” or “offsets”

— the difference between the pressure in the val ve 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 patentsshare a common specification, we refer only to the ’747 patent specification unless otherwise specified. Case: 21-1321 Document: 88 Page: 3 Filed: 11/14/2022A MERICAN NATIONAL v. SLEEP NUMBER CORP ORATION 4

col. 2 ll. 26

– 31, col. 5 l. 9– col. 6 l. 7. The system then usesthe pressure adjustment factor to determine what the “target pressure” in the valve enclosure assembly must be for th e 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 reach ed 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 ; s ee 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 explain s that the process fordetermining the pressure adjustment factor varies depending on whether the system is inflating or deflating the air chamber

. T o differentiate between the two processes, t he 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

. C laim 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 ; Case: 21-1321 Document: 88 Page: 4 Filed: 11/14/2022A MERICAN NATIONAL v. SLEEP NUMBER CORP ORATION 5

calculating a pressure target based upon the desired pressure setpoint and a pressure adjustmentfactor, wherein an inflate pressure adjustment factor is used to calculate the pressure targ et when the initial pressure within the pump housing is less than the desired pressure setpoint, and wherein adeflate 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 asensed pressure within the pump housing is substantially equal to the calculated pressure targe t; 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 s imilar. 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.” ’7 47 patent col. 14 ll. 9– 43 (claim 16) ; ’154 patent col. 15 l. 16

– col. 16 l. 18 (claim 20)

. Case: 21-1321 Document: 88 Page: 5 Filed: 11/14/2022A MERICAN NATIONAL v. SLEEP NUMBER CORP ORATION 6

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 pate nts

- in

- suit. Gif f t discloses a n 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 pa tent col. 1 ll. 48

– 64 (describing prior art )

.Mittal describes a system for quickly reaching a desired air pressure in vehicle tires. Mit tal 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 desi red

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

.

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. Case: 21-1321 Document: 88 Page: 6 Filed: 11/14/2022A MERICAN NATIONAL v. SLEEP NUMBER CORP ORATION 7

Pillsbury is directed to a n 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 cu ff 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 th e 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 cause d 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 calls “conduit effects,” a pressure sensor cannot accurately measurethe actual pressure in the air bag during inflation or deflation

. 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 deflation , Ebel proposes mathematical equations for calculating the actual pressure in side the air bag. Those equations use the air bag pressure measured by the pressure sensor as one input parameter and include both additive and multiplicative 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 assembly pressure to approximate the air chamber pressure, and Mittal ’s and Pillsbury ’s use of addit ive offsets, or pressure adjustment factors. For the six dependent claims requiring Case: 21-1321 Document: 88 Page: 7 Filed: 11/14/2022A MERICAN NATIONAL v. SLEEP NUMBER CORP ORATION 8

a multiplicative pressure adjustment factor, American National argued these would have been obvious over a combination of those three references as well as Ebel ’s use of

m ultiplicative offsets.
In opposition, Sleep Number argued that: (1) evidenceof industry praise and commercial success strongly supported that the claims would not have been obvious; (2) American National had not adequately explained how and why the skill ed artisan would have combined the asserted 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 American 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 o f American National’s products

— specifically, the product s 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 Nu mber 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 SleepNumber could show a nexus between the relevant American 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,” Case: 21-1321 Document: 88 Page: 8 Filed: 11/14/2022A MERICAN NATIONAL v. SLEEP NUMBER CORP ORATION 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 P atent O wner R esponse , 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 Edwards. J.A. 3648; see also J.A. 4634

– 35 ¶ 29 (Dr. Abraham testifying that American Nat ional’s products “read on” the challenged claims); J.A. 4725

– 26 ¶ 41 (Dr. Edwards testifying the same).
Based in part on this expert testimony, t he Board found that Sleep Number had demonstrated a nexus between 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

- 0050 0, 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 thesource code “fall within the claims of the [challenged] patent[s] such that [American National]’s products using these versions infringe the claims.” ’747 Decision at 91 (emphasis added) ; ’154 Decision at 92 . Aft er American National sought rehearing, the Board modified its final written 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 la rgely identical for many of the issues on appeal. In this opinion, we cite primarily to the ’747 Decision

. Case: 21-1321 Document: 88 Page: 9 Filed: 11/14/2022A MERICAN NATIONAL v. SLEEP NUMBER CORP ORATION 10

American National’s products “ were commercially successful 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 res olved the proceedings with split decisions. For the six dependent claims requiring amultiplicative pressure adjustment offset, the Board determined that American National had failed to establish unpatentability. See ’747 Decision at 139

– 40 ; ’154 Decisio n 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 meth ods disclosed in Gifft as modified by Mittal and Pillsbury. See ’747 Decision at 81

– 84. Because American National had not sufficiently articulated why the skilled artisan would have combined Ebel with the remaining references, the Board found American Na tionalhad not established that the claims requiring multiplicative pressure adjustment factors were unpatentable as obvious.
For the remaining claims, the Board found that American National had proven they were unpatentable as obvious. See id. at 140. For these claims, the Board creditedAmerican National’s expert, who testified that the ordinarily skilled artisan, presented with Gifft’s air bed pressureadjustment system, would have understood that by “improving the accuracy of [Gifft’s] pressure adjust cycles onan ongoing basis, the number of pressure adjustments necessary 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 asserted references and instead found that the skilled artisan would have a motivation to increase both speed and Case: 21-1321 Document: 88 Page: 10 Filed: 11/14/2022A MERICAN NATIONAL v. SLEEP NUMBER CORP ORATION 11

accuracy in Gifft’s system

— and would have looked to techniques 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 National’s petitions did not provide a sufficient construction for the means

- plus

- function term “pressure sens ing

means

. ” Although the Board acknowledged in both proceedings that American National’s petitions did not “explicitly 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 Decision 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

we re unpatentable

. ’747 Decision at 104

. Each of the proposed 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 unpatentable

. The proposed amended claims also included other non

- substantive am endments, 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 included, for example, changing the term “pump housing” to “valve enc losure” 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 proposedamendments did not respond to a ground of unpatentability and thus were legally inappropriate; the relevant specification contained an error that rendered the claims Case: 21-1321 Document: 88 Page: 11 Filed: 11/14/2022A MERICAN NATIONAL v. SLEEP NUMBER CORP ORATION 12

nonenabled ; and the proposed amended claims lacked written description support and were indefinite.
The Board rejected American National’s challenges tothe proposed amended claims, finding that the amendments

— which added the substantive limitation requiring a multiplicative pressure adjustment factor

— responded to a ground of unpatentability in the proce edings. ’747 Decision at 107

– 10 . The Board also determined that the proposed 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 decision s . We have jurisdiction under 35 U.S.C. § 1295(a)(4)(A).

D ISCUSSION We review the Board’s legal conclusions de novo and its factual findings for substantial evidence. Univ. of Strat hclyde 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 Op eration s Ltd. v. Teva Pharms. USA, Inc.

, 25 F.4th 1354, 1364 (Fed. Cir. 2022) . “The substantial evidence 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 Gartside , 203 F.3d 1305, 1312 (Fed. Cir. 2000)). We review statutory and constitution al 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 theBoard’s procedures are reviewed for an abuse of discretion.” Ericsson Inc. v. Intell

. Ventures I LLC , 901 F.3d 1374, 1379 (Fed. Cir. 2018). Case: 21-1321 Document: 88 Page: 12 Filed: 11/14/2022A MERICAN NATIONAL v. SLEEP NUMBER CORP ORATION 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
ot her 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 consistency and accuracy in term inology and phrasing” throughout the patent family. J.A. 3474, 3504

– 05. Because this purpose wa s not directly “aimed at respondingto a ground of unpatentability at issue in” the IPR proceeding, as required by 37 C.F.R. § 42.121, American National
argu es on appeal, as it did below, that these proposed amendments were improper

. In considering this issue, the Board has previously determined 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, apatent owner also may include additional limitations to address potential § 101 or § 112 issues, if necessary.” Id. Allowing these amendments, the Board has explained,“serves the public interest by helping to ensure the patentability of amended claims” and “helps ensure a ‘ just ’ resolution of the proceedings and fairness to all parties.” Id. ( quo ting 37 C.F.R. § 42.1(b)).
We agree w ith the Board’s thoughtful analysis of this issue in Lectrosonics . Indeed, nothing in the America Invents Act (AIA) or the Board’s regulations precludes a patent owner from amending a claim to both overcome an instituted ground and correct other perceived issues in the Case: 21-1321 Document: 88 Page: 13 Filed: 11/14/2022A MERICAN NATIONAL v. SLEEP NUMBER CORP ORATION 14

claim . The AIA explicitly restricts patent owner amendments 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 restriction: amendments must respond to a ground of unpatentability involved in the proceeding. 37 C.F.R. § 42.121(a)(2)(i). As we have previously explained, the Director 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 additio nal amendments to a claimwithout running afoul of the relevant statutes and regulation.
American National argues that allowing a patent owner to refine claims or correct potential § 112 errors “invites a violation of due process and the Administrative Pr ocedure 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, a ccording to American Na tional, 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. A s we have previously explained, the petitioner can c hallenge the proposed amended claims on grounds beyond §§ 102 and 103 , including under § 112

. See Uniloc 2017 LLC v. Hulu, Inc. , 966 F.3d 1295, 130 5– 07 (Fed. Cir. 2020) ( holding thatpetitioners may challenge proposed substitute claims outside of §§ 102 and 103); Samsung Elecs. Am. v. Prisua Eng’g Corp. , 948 F.3d 1342, 1352 (Fed. Cir. 2020) (“[T]he Case: 21-1321 Document: 88 Page: 14 Filed: 11/14/2022A MERICAN NATIONAL v. SLEEP NUMBER CORP ORATION 15

Board’s authority with respect to new and amended claims necessarily extends to other po ssible grounds of unpatentability, 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. Accordingly, we discern no unfairness or asymmetry in the Boa rd’s granting of the motion to amend

. In this case, each of Sleep Number’s proposed substitute claims includ ed an amendment responsive to a ground of unpatentability raised in the proceedings . Specifically,each proposed substitute claim added a limitation requiring a multiplicative pressure adjustment factor

— mirroringthe claims that the Board had determined were not unpatentable. ’747 Decision at 105

– 07 (proposed substitute claims) ; see also J.A. 3474

– 77, 3504

– 08. Because each proposed substitute claim included at least one respons ive narrowing limitation, Sleep Number was free to include other amendments, including any addressing perceived §§ 101 and 112 issues. American National was free to challenge these proposed claims , as it did in both proceed ings. And the Board was free to determine whether the proposed claims were un patentable 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 Nati onal’s enablement argument. 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 enablement requirement of 35 U.S.C. § 112 is a question of lawthat we review without deference, although the determination may be based on underlying factual findings, which we review for clear error.” Amgen Inc. v. Sanof i , Aventisub LLC , 987 F.3d 1080, 1084 (Fed. Cir. 2021) (citing Alcon R sch. Ltd. v. Barr Lab ’ ys Inc. , 745 F.3d 1180, 1188 Case: 21-1321 Document: 88 Page: 15 Filed: 11/14/2022A MERICAN NATIONAL v. SLEEP NUMBER CORP ORATION 16

(Fed. Cir. 2014)). American National argues that an admitted error in the specification of the application to which the ’747 and ’154 patents claim priority necessarily meansthat the proposed amended claims are not enabled. Appellant’s Br. 70

– 71

. We disagree.
There is undisputedly an error in the specification of the challenged patents. ’747 Decision at 113

– 14. The specification s tates: Updated Inflate Adjustment Factor = (Manifold Pres sure from Step 168 ) – (Pressure Setpoint from Step 106)

Id. at 114 (citing J.A. 1016 3 ¶ 67 ) (e mphasis added to erroneous portion). Both parties agree this equation should instead read:
Updated Infla te Ad justment Factor = (Manifold Pressure from Step 168 176 ) – (Pressure Setpoint from Step 106)

Id. (citing J.A. 10 08 5 ¶ 20 ) (emphasis added to corrected portion ). Sleep Number’s expert testified that the skilledartisan would understand that this “is a typographical error inconsistent with the remainder of the disclosure” in the specification. Id. (citing J.A. 10085 ¶ 20). This testimony is supported by the specification. For example, i mmediate ly 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 shownthe proposed claims were unpatentable for lack of enablement, 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: 16 Filed: 11/14/2022A MERICAN NATIONAL v. SLEEP NUMBER CORP ORATION 17

error in the specification. PPG Indus. v. Guardian Indus. Corp. , 75 F.3d 1558 (Fed. Cir. 1996). In PPG Indus tries

, the specification described how to make the patented “solarcontrol” glass composition but included test results and calculations 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 s killed in the art how” to make such a glass composition. Id. at 1565. We affirmed the districtcourt’s finding that the patent was enabled, despite the error, because the skilled artisan would, “[i]n light of the guidance provided by the specification” a s a whole, be enabled 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 original examination proce ss. 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, r egardless of whether the error was first discovered during examination or afterward

, the specification itself makes clear that the reference to step 168 instead 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 further supported b y 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 typographical 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: 17 Filed: 11/14/2022A MERICAN NATIONAL v. SLEEP NUMBER CORP ORATION 18

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 un der the A dministrative P rocedure A ct , 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, 10 39 (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) (citing Gen. Elec

. Co. v. Wilkins , 750 F.3d 1324, 1329 (Fed. Cir. 2014)).

Ac cording to American National

, the term “valve enclosure” 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 patent list s 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 “facially invalid .” Appellant’s Br. 7 2– 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 themselves make clear that valve enclosures were well known in the art and incorporated in to the patent specification

. Sleep Number’s choice to recite these well

- known structures in its amended claims does not make James Gifft an Case: 21-1321 Document: 88 Page: 18 Filed: 11/14/2022A MERICAN NATIONAL v. SLEEP NUMBER CORP ORATION 19

inventor of the ’747 and ’154 patents. See Trovan, Ltd.

v. Sokymat S A , 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] person 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 analyzing Sleep Number’s evidence o f commercial success

. Addressing nexus, t he Board stated that American National “d oes not refute the testimonies of Dr. Abraham and Dr. Edwards that these versions of the source code fallwithin the claims of the ’747 patent such that ANM’s products using these versions read on the claims.” Based on this sentence, American National arg ues that the Board inappropriately resolved infringement in violation of either

8 There may well be additional reasons why this argument 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 Di rector may permit the application to be amended” to fix inventorship errors). Further, 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 National 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: 19 Filed: 11/14/2022A MERICAN NATIONAL v. SLEEP NUMBER CORP ORATION 20

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 “infringe” to “read on” in its final written decisions

. W e decline to address this argument further because American National does not challenge the Board’s finding that Sleep Number’s evidence of commer cial success “has minimal probative weight .” ’747 Decision at 94. Accordingly, 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 patentability determinations.” Appellant’s Br. 59.

In SkyHawke Technologies, LLC v. DECA International Corp. , we dismissed the appeal of a patent owner in an analogous situation. 828 F.3d 1373, 1375 (Fed. Cir. 2016). Ther e, the patent owner sought only to “correct” the Board’s claim construction underlying its patentability determination , not to alter the Board’s patentability determination 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 concedes that its challenge to the Board’s “read on” decision“would not change the patentability determinations.” Appellant’s Br. 59. Like the appellant in SkyHawke , American National will hav e the opportunity to argue infringement in the district court (and

, if necessary

, on appeal from the district court’s judgment).

V

The parties’ additional arguments on appeal are unpersuasive. We have considered American National’s Case: 21-1321 Document: 88 Page: 20 Filed: 11/14/2022A MERICAN NATIONAL v. SLEEP NUMBER CORP ORATION 21

challenges to the Boa rd ’s conclusion that the six dependent claims requiring multiplicative pressure adjustment factors (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 th at substantial evidence supports the Board’s finding that American National 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 or dinary skill (1) would have been motivated to improv e 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 references themselves support these findings. W hile the particular equations in Mittal and Pillsbury might not fit directlyinto Gifft, the Board’s findings are consistent with the Supreme Court’s guidance that the “person of or dinary 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, 122 3 (Fed. Cir. 2022) (affirming the Board’s obviousness determinati on which was “the result of a faithful application of our law on obviousness, including KSR ’s directive to consider the creativity of the ordinarily skilled artisan”).
Similarly, we are not persuaded to reweigh the Board’s assessment of the strength of S leep Number’s evidence of commercial success and industry praise

. The Board thoroughly analyzed and considered the parties’ evidence

, and we cannot say that its findings were unreasonable. Case: 21-1321 Document: 88 Page: 21 Filed: 11/14/2022A MERICAN NATIONAL v. SLEEP NUMBER CORP ORATION 22

We next consider Sleep Number’s argument that the Board misallocat ed the burden of persuasion. Contrary to Sleep Number’s assertion, we do not read the Board’s decisions as improperly placing the burden on Sleep Number to prove non

- obviousness of its claims. See Cross

- Appellant’s Principal & Resp

. Br

. 57

– 64. After reading the decisions 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 wherethe Board affirmatively responded to Sleep Number’s arguments regarding the proposed combinations

. See id. at 53 –68

. Overall, we conclude that the Board’s opinionis most fairly read as properly allocating the burden of persuasion.
Finally, we see no abuse of discretion in the Board’s conclusion that American National satisfied the requirements of 37 C.F.R. § 42.104 . That regulation requires petitioners 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 Number argues that American National did not expressly provide a construction for the claim term “pressure sensing means” and thus did not comport with the Board’ s rules forpetitioners. In both decisions, however, the Board determined that American National sufficiently identified the structure and function of the “pressure sensing means”
term. In other words, the Board found that American National 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: 22 Filed: 11/14/2022A MERICAN NATIONAL v. SLEEP NUMBER CORP ORATION 23

v. Wakalopoulos , 386 F.3d 1116, 1121 (Fed. Cir. 2004)) . Accordingly, we affirm on this issue

. C ONCLUSION For the reasons stated above, we affirm the Board’s final written decisions in both proceedings.

AFFIRMED

C OSTS

No costs. Case: 21-1321 Document: 88 Page: 23 Filed: 11/14/2022