Authored by Brian S. Mudge
In a recent precedential opinion, the Federal Circuit vacated a ruling by the PTAB that had rejected a motion to amend on procedural grounds. The case, Veritas Techs. LLC v. Veeam Software Corp.,[i] saw the court of appeals disagree with the Board on the level of discussion required of a patent owner seeking to amend, and represents a relaxation of one of the requirements imposed by the PTAB for motions to amend claims in an AIA trial. In addition, this case (along with the pending en banc review in the Aqua Products case) signals that the Federal Circuit may be taking a harder look at the procedures for amending patents in AIA trials.
Key Takeaway: Where the distinguishing feature in a proposed amended claim derives from a combination of elements including a newly-added feature, a patent owner can meet its burden to address whether the new feature is in the prior art by explaining that the new claim feature in combination with other claim elements is not disclosed, without having to discuss how each new element is separately disclosed in the prior art. In such cases, a patent challenger would be well-advised to point to evidence showing how the new feature is disclosed in the prior art, and include arguments showing that the prior art anticipates or renders obvious the new claim.
Background: Petitioner Veeam Software filed a petition challenging claims 1, 6, 8, 20, and 24 of U.S. patent 7,024,527, which is directed to restoring computer files and data, as unpatentable in view of several prior art references. The PTAB instituted review of the challenged claims on obviousness grounds. In response, the patent owner argued that the claims are not obvious because they are limited to file-level background restoration, which was not taught by the prior art. But the patent owner also submitted a conditional motion to amend that was contingent on a determination by the PTAB that claims 1 and/or 20 are unpatentable. The motion added features designed to expressly limit the claims to file-level restoration (as patent owner had urged in its claim construction).
In its final written decision, the Board determined that the challenged claims are not limited to file-level restoration but are broad enough to encompass block-level restoration and, thus, rendered obvious by the prior art. The Board then denied the motion to amend, finding the patent owner’s discussion of the new claim features deficient in view of the Board’s framework set forth beginning in Idle Free. In particular, focusing on the requirement to discuss whether new claim features were previously known anywhere, the PTAB explained that the patent owner only considered features in combination and failed to address whether the newly-added claim features separately were known in the prior art. Although acknowledging the patent owner’s argument that the new claim features were, in combination with other features, previously unknown in the art, the PTAB ruled that such a statement, without separately addressing the individual newly-added features, was not enough – citing Idle Free’s rule against relying on mere “conclusory” statements.
CAFC Affirms Obviousness Determination. The Federal Circuit first reviewed the PTAB’s ruling on obviousness. Considering claim scope, the court noted that nothing in the claim language or in the specification specifically limited the invention to file-level restoration, or explained any differences between block-level and file-level restoration that would be material to the invention. Thus, the court rejected the patent owner’s argument and agreed with the Board’s conclusion that the broadest reasonable interpretation of the claims would include block-level as well as file-level restoration. With that claim interpretation, the court then quickly concluded that there was no error in the Board’s determination that the claims are obvious.
CAFC Vacates Ruling on Motion to Amend. Once it affirmed the obviousness ruling, the Federal Circuit then turned to the Board’s denial of the motion to amend. Highlighting that the Board’s sole basis for denying the motion was the patent owner’s failure to address whether the newly-added claim features were separately known, in contrast to discussing the combination of new and existing claim features, the court rejected the Board’s decision as unreasonable and, thus, arbitrary and capricious. Quoting the very same passages from the patent owner’s motion as cited by the Board, the court concluded, contrary to the Board’s determination, that the patent owner’s statements – which are broad statements directed to the prior art in general – “on their face” sufficiently describe whether the newly-added features are disclosed in the prior art. Additionally, the court pointed out that the motion papers also explained that the specific prior art references at issue in the proceeding did not disclose the newly-added claim features in combination. In sum, the court stated that the Board could not reasonably have asked more of the patent owner.
Further explaining its disagreement with the PTAB, the court recognized that the “new feature” here was in effect the combination of elements rather than a specific individual element. Indeed, the court pointed out the axiom – long recognized by the Supreme Court as well as the Federal Circuit – that novel and nonobvious inventions often result only from a combination of previously known individual features. According to the court, in this case describing the combination is not meaningfully different from discussing what is new in the proposed claims. Thus, the court concluded that the Board’s denial of the motion to amend was in error, and vacated that part of the final decision.
What does this mean for patent owners and challengers? The Federal Circuit’s decision should result in relaxing one of the strict requirements established by the PTAB for motions to amend, perhaps signaling more changes to come via the en banc review in the Aqua Products case. Through Idle Free and its progeny, the PTAB has required patent owners seeking to amend to explain where each new element is found in the prior art, as well as whether that element is known in combination with any other claim elements. But where the novelty in a proposed amended claim derives from a combination of elements including the newly-added feature, Veritas teaches that the patent owner can meet its burden by discussing that the new claim features in combination with other claim elements are not disclosed in the prior art. As a result, this would appear to obviate the requirement for discussing each new individual claim limitation separately in such circumstances. And even though the Federal Circuit approved the patent owner’s blanket statement about the prior art generally, a patent owner should also include arguments directed to the specific prior art references involved in the trial – much like the patent owner did in Veritas. Of course, if a patent owner argues in its motion to amend that it is the combination of features that distinguishes over the prior art, then the petitioner would be well-advised to address such combination in its opposition to the motion, including presentation of evidence as may be relevant to establishing novelty or obviousness grounds to challenge the amended claim.
. Veritas Techs. LLC v. Veeam Software Corp., No. 15-1894 (Fed. Cir. August 30, 2016).
. Veeam Software Corp. v. Symantec Corp., IPR2014-00090, paper 37 (PTAB April 23, 2015). Of note, during the PTAB proceeding Symantec was the owner of the ’527 patent, but it subsequently assigned the patent to Veritas.
. Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027, paper 26 at 6–8 (PTAB June 11, 2013).
. Veeam, IPR2014-00090, paper 37 at 28.
. Veeam, IPR2014-00090, paper 37 at 28-29.
. Veritas, slip op. at 9-12.
. Id. at 12.
. Id. at 13.
. Id. at 13-14.
. Id. at 15 (citations omitted).
. Id. The court also noted that the Board’s rationale was erroneous independently of any resolution of the en banc proceeding in In re Aqua Products, Inc., No. 15-1177 (reh’g en banc granted Aug. 12, 2016).