It is arbitrary and capricious for PTAB to deny a motion to amend a patent claims alleging that patentee failed to address whether each newly added feature in each proposed claim was independently known in the prior art.

Sadao Kinashi | September 20, 2016

Veritas Techs. v. Veeam Software

August 30, 2016

Before Lourie, O’Malley and Taranto. Opinion by Taranto.


 U.S. Patent No. 7,024,527 is owned by Veritas Technologies LLC.  In October 2013, Veeam Software Corp. filed a petition for an inter partes review of several claims of the ’527 patent.  The Board instituted the review in April 2014.

After institution, the patent owner (Veritas) filed a conditional motion to amend, seeking to add new claims if the Board ultimately concluded that the challenged existing claims are unpatentable.  In the final decision of April 2015, the Board rejected all of the challenged claims for obviousness over the prior art.

The Board denied the motion to amend without making an evidentiary determination of patentability of the proposed new claims.  It concluded that Veritas (and its expert declarant) had failed to address whether each newly added feature in each proposed claim, as distinct from the claimed combination of features, was independently known in the prior art.

CAFC vacated the Board’s denial of Veritas’s motion to amend because the Board was arbitrary and capricious in its sole ground for denying the motion. CAFC remanded for the Board to consider the patentability of the proposed claims, which have the narrower claim scope.


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Surviving Alice with a Non-Conventional and Non-Generic Arrangement

John Kong | September 16, 2016

Bascom Global Internet Services, Inc. v. AT&T Mobility LLC

June 26, 2016

Before Newman, O’Malley, and Chen.  Opinion by Chen.


This is the third case, besides DDR and Enfish, where the Federal Circuit found a software related claim patent eligible under 35 USC §101.  In doing so, the Federal Circuit provided another example of how step two of the Alice/Mayo two-part test is to be applied.  In particular, by focusing on the specificity of claimed features, it can be argued that the claims recite a “non-conventional and non-generic arrangement” that is patent eligible.

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Written Description Requirement raised when the claimed invention is limited to one of the disclosed embodiments

Tsuyoshi Nakamura | September 8, 2016

Scriptpro LLC, v. Innovation Associates, Inc

August 15, 2016

Before Moore, Taranto and Hughes.  Opinion by Moore


ScriptPro alleges that the specification does not limit the claimed invention to “sorting and storing prescription containers by patient-identifying information.”  The district court interpreted the ’601 patent’s specification as limited to sorting by patient-identifying information and invalidated ‘601 patent for lacking written description requirement.  The CAFC reversed the case by describing the reasons that the specification contemplated many objectives and embodiments other than the one asserted by Innovation Associates; the original claims which would mostly provide written description were not limited by the patient-identifying information feature; and the present case should be distinguished from Gentry Gallery and ICU Medical.

本事件の争点を一言で表せば、クレームの対象とされた発明は、明細書の記載全体に鑑みて単一の実施形態へと狭く解釈されるべきであり、それよりも広い特許クレームは、Written Description Requirement の要件(サポートの問題)を満たさず、無効であるというものである。考え方としては、明細書の記載に基づいて、広いクレームを狭い実施形態の範囲へと限定解釈する際の議論と共通するものがある。明細書を作成する際に、単一の目的あるいは課題に限定しないことの重要性など、明細書作成に当たっての留意事項が再確認される事件である。

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Patentee’s standing to sue for infringement evaporates after correction of inventorship

Nicolas Seckel | August 25, 2016

Vapor Point v. Moorhead (Precedential)

August 10, 2016

Before O’Malley, Chen, Stoll (per Curiam, O’Malley concurrence)


After NanoVapor filed patent applications on a VOC removal technology, naming only its in-house inventor, it was sued by two non-employees trying to be added as inventors through an inventorship correction action. NanoVapor countersued for patent infringement, but having tied its infringement action to the inventorship action, NanoVapor lost standing when it lost on the inventorship action.

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