On remand from the Federal Circuit the PTAB granted authorization for a patent owner to file a supplement to its Motion to Amend in Veeam Software Corporation v. Veritas Technologies LLC, IPR2014-00090, Paper 42 (P.T.A.B. Jan. 27, 2017).

In its final written decision, the PTAB held all challenged claims of Veritas’s U.S. Patent 7,024,527 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 rationale for denying the motion to amend was that Veritas discussed whether each new limitation was known in the prior art in combination with other limitations as opposed to discussing the new limitations separately. On appeal, the Court of Appeals for the Federal Circuit (CAFC) upheld the PTAB’s obviousness determination but vacated and remanded the denial of the motion to amend. Veritas Technologies LLC v. Veeam Software Corporation, 835 F.3d 1406, 1415 (Fed. Cir. 2016). The CAFC held that Veritas’s motion satisfied the requirement of discussing whether or not the newly added features were in the prior art. The CAFC further determined the PTAB’s insistence on the features being discussed separately was unreasonable to the point of being arbitrary and capricious because Veritas did describe what was patentable about the proposed claims.

While the CAFC left room for the PTAB to deny the motion to amend on an alternative basis, the PTAB instead allowed Veritas to supplement its motion to amend. Specifically, the PTAB permitted Veritas to add the words “non-transitory” to address a potential subject matter eligibility issue under 35 U.S.C. § 101. The PTAB noted that the proposed amended claim would likely have been unpatentable in light of its precedential decision in Ex parte Mewherter, Appeal 2012-00792 (P.T.A.B. May 8, 2013) (holding that “the claim term ‘machine-readable storage medium’ would include signals per se”). The order also allowed the patent owner to make supporting arguments on the patentability of the amended claim. Additionally, the Board authorized the petitioner to file an opposition to the motion to amend and the patent owner to file a reply to petitioner’s opposition.

The fact that the PTAB had opportunity to deny the motion to amend in light of Mewherter, but instead allowed the Patent Owner to supplement the motion, suggests the PTAB may be willing to grant Veritas’s motion to amend.