Written by Mark E. Davis and Benjamin Anger

On remand from the Federal Circuit, the PTAB granted Veritas’s Supplemental Motion to Amend for one substitute claim and denied the motion with respect to a second claim in Veeam Software Corporation v. Veritas Technologies LLC, IPR2014-00090, Paper 48 (P.T.A.B. Jul. 17, 2017).

In its original Final Written Decision, the PTAB found the pending claims of Veritas’s U.S. Patent 7,024,527 to be unpatentable as obvious and denied Veritas’s motion to amend. Veeam Software Corporation v. Symantec Corporation, IPR2014-00090, Paper 37 at 29 (P.T.A.B. April 23, 2015). The PTAB’s sole ground for denial of the motion to amend was Veritas’s failure to explain whether each newly added limitation of the proposed claims was separately known in the prior art. Veritas had discussed each new limitation only in combination with other existing claim limitations when explaining how the claim amendments overcame the prior art.

On appeal, the Federal Circuit affirmed the PTAB’s obviousness determination, but vacated and remanded the PTAB’s denial of the Motion to Amend. Veritas Technologies LLC v. Veeam Software Corporation, 835 f . 3d 1406, 1415 (Fed. Cir. 2016). The Federal Circuit found that Veritas’s motion satisfied the requirement of explaining whether or not the newly added features were in the prior art. The Federal Circuit further determined the PTAB’s insistence on the features being discussed separately was unreasonable to the point of being arbitrary and capricious because it is often the combination of existing features that make the claim patentable over exiting prior art.

On remand, the PTAB again denied the Motion to Amend with respect to the first substitute claim, Claim 26, finding it violated the written description requirement under 35 U.S.C. § 112, first paragraph, for adding new matter that was not supported by the original specification. The PTAB, however, found the second substitute claim, Claim 27, to be patentable over the prior art and to be sufficiently supported by the written description in the original specification.

This case is of particular note because the PTAB allowed Veritas to file a Supplemental Motion to Amend for Claim 27 on remand, to add the phrase “non-transitory” to the preamble in order to overcome a potential issue of unpatentable subject matter under § 101. Veeam argued that the Supplemental Motion to Amend should be denied in accordance with 37 C.F.R. § 42.121(a)(2)(i) because the amendment to add “non-transitory” was not made in response to a ground of unpatentability involved in the trial. As Veeam argued, grounds of unpatentability based on § 101 are not permitted in an IPR. The PTAB, however, found that: “Allowing an amendment to address potential 35 U.S.C. § 101 or § 112 issues in a motion to amend under 37 C.F.R. § 42.121, when a given claim is being amended already . . . serves the public interest by ensuring issuance of valid and clear patents.”

This case provides an example to patent owners of a possible route for successfully arguing the patentability of the claim amendments over the prior art by discussing the new claim limitations in combination with existing claim limitations. The future of motions to amend, however, may be in flux depending on the Federal Circuit’s eventual en banc ruling in the case In re Aqua Products, Inc., where the issue of burden of production for motions to amend is under consideration.