PTAB / Claim Amendments / Federal Circuit / Post Grant Reviews

PTAB’s denial of motion to amend was arbitrary and capricious

Published September 8, 2016

The Federal Circuit continues to show interest in the amendment process for PTAB proceedings. In addition to accepting In re Aqua Products for en banc review of the current standards for amending claims in PTAB proceedings, last week the Federal Circuit issued a decision in Veritas Tech. v. Veeam Software Corp., No. 2015-1894 (Fed. Cir. Aug. 30, 2016), reversing the PTAB’s denial of a motion to amend claims as arbitrary and capricious.

In Veeam Software Corp. v. Symantec Corp. (IPR2014-00090), the Patent Owner (originally Symantec, but Veritas on appeal) moved to substitute two claims, contingent on two other claims being found unpatentable. In the Final Written Decision issued on April 23, 2015, the PTAB found the original claims unpatentable and denied the motion to amend on the basis that Patent Owner failed to address whether the newly-added features themselves (as opposed to the “newly added feature in combination with other known features”) were found in the prior art.

On appeal, the Federal Circuit rejected this reasoning. First, the Federal Circuit found that the Patent Owner had indicated that the newly-added features themselves were not known and specifically discussed their absence from the two key prior-art references. Second, the Federal Circuit noted that it is often the combination of features that is patentable—not the individual elements themselves:

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.

Finding that the denial of the contingent motion to amend was “arbitrary and capricious,” the Federal Circuit remanded the case to allow for a determination of the patentability of the proposed substitute claims. The Federal Circuit also noted that its opinion would not be affected by the pending en banc proceeding in In re Aqua Products. See our discussion of In re Aqua Products here.


Posted on 9/8/2016 by Deakin T. Lauer