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In an inter partes review, the Patent Trial and Appeal Board, in addition to finding the challenged claims to be obvious, denied the patent owner’s motion to amend—solely because the patent owner and its expert had failed to address “whether each newly added feature in each proposed claim, as distinct from the claimed combination of features, was independently known in the art.”

The Federal Circuit affirmed the finding of obviousness by reasoning that “the Board permissibly applied the broadest reasonable interpretation standard” in the IPR. But it vacated the Board’s denial of the motion to amend because it held that “the Board was arbitrary and capricious in its sole ground for denying the motion.”  The Federal Circuit found that there is “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.” Accordingly, the Federal Circuit “fail[ed] 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.”

Veritas Technologies, LLC v. Veeam Software Corp., Case No. 2015-1894 (August 30, 2016); Opinion by: Taranto, joined by Lourie and O’Malley; Appealed From: United States Patent and Trademark Office, Patent Trial and Appeal Board.  Read the full opinion here.

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