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.



CAFC noted that the standard of review for the denial of motion to amend is “arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law,” and concluded that the Board erred on its sole ground for denying Veritas’s motion.

Claim 26 is proposed to substitute for claim 1, and it adds to claim 1 some features: that “the set of files is a subset of a plurality of files that were previously backed-up” and that the file server, during the restore, “receive[s], from an application, a request for at least a portion of a particular file on the primary storage.”

Claim 27 also adds to claim 20 additional preparatory steps performed by the restore application and file server and makes explicit that the blocks needed by a running application are restored first.

Veeam contested neither before the Board nor before the CAFC that these amendments address the claim-construction dispute.

CAFC pointed out that the Board concluded that the motion and the declaration of Veritas’s expert do not discuss the features separately but discuss only “the newly added feature in combination with other known features.”  CAFC ruled that the sole basis for denying the motion to amend is unreasonable and hence must be set aside as arbitrary and capricious.

Veritas’s motion stated citing to the expert’s declaration:

None of these prior art systems disclose any restoration process that restores a particular subset of files and, during the restore, determines whether a requested file is in this set of files before checking whether needed blocks in the file have been restored. . . . None of these prior art systems disclose any mechanisms for a restore process that passes various information back and forth between a restore application and a file server prior to starting a restore of a set of files and, during this file restoration provides on-demand restorations of requested blocks by restoring them ahead of a standard order in which the blocks that make up the files are being restored.

CAFC also noted that Veritas’s motion and the expert’s declaration also discuss the absence of newly added features in the two key prior-art references.  CAFC stated:

We do not see how the Board could reasonably demand more from Veritas in this case.  What would it have added that was not already so clear as to be beyond dispute, including based on the patent itself, for Veritas to say that the prior art recognized that restoration can be done at the file level or that a “set of files [can be] a subset of a plurality of [already backed-up] files” or that an application requests part of a “particular file” on primary storage? See generally J.A. 1923–26 ¶¶ 80–89. Here, we have been shown no reason to doubt that it is only the combination that was the “new feature,” a scenario recognized in a long line of Supreme Court and Federal Circuit cases noting that novel and nonobvious inventions often are only a combination of known individual features. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418–19 (2007) (“[I]nventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.”); Parks v. Booth, 102 U.S. 96, 102 (1880); Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013); Envtl. Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 693, 698 (Fed. Cir. 1983); In re Warner, 379 F.2d 1011, 1016 (CCPA 1967).  In this case, we fail to see how describing the combination is meaningfully different from describing what is new about the proposed claims, even in comparison to the unamended claims.

For that reason, CAFC concluded that the Board erred in its sole reason for denying the motion to amend.  CAFC vacated the Board’s decision on the motion to amend and remand the matter to allow for a determination of the patentability of the proposed substitute claims.

Take Away

USPTO denied the motion to amend just because just because the patentee fails to address whether each newly added feature in each proposed claim was independently known in the prior art, but not because amendment does not respond to a ground of unpatentability.

Who owes the burden of proof whether the proposed amendment is patentable?  In the inter partes review, isn’t it on the third-party petitioner or USPTO?  Otherwise, patentee has to prove negative fact that no prior art make the amended claim unpatentable.

42.121    Amendment of the patent.

(a) Motion to amend. A patent owner may file one motion to amend a patent, but only after conferring with the Board.

(1) Due date. Unless a due date is provided in a Board order, a motion to amend must be filed no later than the filing of a patent owner response.

(2) Scope. A motion to amend may be denied where:

(i) The amendment does not respond to a ground of unpatentability involved in the trial; or

(ii) The amendment seeks to enlarge the scope of the claims of the patent or introduce new subject matter.

(3) A reasonable number of substitute claims. A motion to amend may cancel a challenged claim or propose a reasonable number of substitute claims. The presumption is that only one substitute claim would be needed to replace each challenged claim, and it may be rebutted by a demonstration of need.

(b) Content. A motion to amend claims must include a claim listing, which claim listing may be contained in an appendix to the motion, show the changes clearly, and set forth:

(1) The support in the original disclosure of the patent for each claim that is added or amended; and

(2) The support in an earlier-filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.

(c) Additional motion to amend. In addition to the requirements set forth in paragraphs (a) and (b) of this section, any additional motion to amend may not be filed without Board authorization. An additional motion to amend may be authorized when there is a good cause showing or a joint request of the petitioner and the patent owner to materially advance a settlement. In determining whether to authorize such an additional motion to amend, the Board will consider whether a petitioner has submitted supplemental information after the time period set for filing a motion to amend in paragraph (a)(1) of this section.

Full Opinion



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