It was known that the Patent Trial and Appeal Board (“PTAB”) rarely grants a patent owner’s motion to amend claims during inter partes review (IPR) proceedings, and there is no exception in an IPR proceeding involving Veritas Technologies LLC and Veeam Software Corporation (No. IPR2014-00090). In view of the PTAB’s recent denial, Veritas appealed to the Federal Circuit. On August 30, 2016, the Federal Circuit issued its opinion in Veritas Technologies LLC v. Veeam Software Corporation, 120 USPQ2d 1046 (Fed. Cir. 2016) finding the PTAB’s denial of Verita’s motion to amend was “arbitrary and capricious” and vacated the PTAB’s decision. Id. at 1048.

The patent at issue is owned by Veritas and is directed to systems and methods for prioritizing the restoration of computer data sought by an active application during a restoration process. After institution of the IPR proceeding, Veritas filed a conditional motion to amend, seeking to add new, substitute claims 26 and 27, if the Board ultimately concluded that the challenged existing claims are unpatentable. Substitute claims 26 and 27 attempted to state more expressly the file-level restoration limitation that Veritas was urging as the proper construction of the existing claims.

The PTAB denied the motion to amend solely on the ground that Veritas did not discuss “whether each newly added feature was separately known in the prior art,” but instead only discussed “the newly added feature in combination with other known features.” The Federal Circuit disagreed with the PTAB’s rationale for denying entry of the conditional amendments finding that that Veritas sufficiently addressed the patentability of the combination of the newly added features with other known features. Regarding the PTAB’s reasoning based on Veritas’ failure to discuss whether each newly added feature was separately known in the prior art, the Federal Circuit did “not see how the Board could reasonably demand more from Veritas in this case” and stated “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. 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 claim.” Id. at 1053.

Therefore, the Court concluded that the PTAB’s denial of the motion merely because of the patent owner’s failure to discuss each separate feature of the claim was erroneous. The Court also stated that the Board rationale on denial of the motion to amend was in error regardless of how the en banc proceeding in In re Aqua Products, Inc. turns out.