The CAFC in Veritas v. Veeam addresses claim amendments in IPR proceedings

The clarification of IPR law related to a burden PTAB placed
on amendments by patentees.


[PTAB] also denied Veritas’s motion to amend, though
without making an evidentiary determination of patentability
of the proposed claims 26 and 27. It concluded only
that Veritas (and its expert declarant) had failed to address
something the Board said must be addressed,
namely, whether each newly added feature in each proposed
claim, as distinct from the claimed combination of
features, was independently known in the prior art.



Whether or not EACH element of a combination claim is independently known
is not dispositive of patentability. In vacating PTAB's denial of
a motion to amend, the CAFC quoted from KSR
as to combination patents:


We do not see how the Board could reasonably demand
more from Veritas in this case. What would it have
added that was not already so clear as to be beyond
dispute, including based on the patent itself, for Veritas to
say that the prior art recognized that restoration can be
done at the file level or that a “set of files [can be] a subset
of a plurality of [already backed-up] files” or that an
application requests part of a “particular file” on primary
storage? See generally J.A. 1923–26 ¶¶ 80–89. 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.




Note also the CAFC's added comment:


The Board rationale here is erroneous independently of any
resolution of this court’s recently initiated en banc proceeding
in In re Aqua Products, Inc., No. 2015-1177,
petition for rehearing en banc granted, 2016 WL 4375651
(Fed. Cir. Aug. 12, 2016). We therefore vacate the Board’s
decision on the motion to amend and remand the matter
to allow for a determination of the patentability of the
proposed substitute claims.




link: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/15-1894.Opinion.8-26-2016.1.PDF