PTAB Grants Rare Motion To Amend Patent Claim After Federal Circuit Remand

by | Jul 30, 2017 | Amendment Practice, Federal Circuit

Programmer for Software PTAB case.

By Christian Damon and John Marlott

Last year, the Federal Circuit vacated the Board’s original decision denying the patent owner’s motion to amend two claims in IPR2014-00090, holding that the Board erred by “insist[ing] that the patent owner discuss whether each newly added feature was separately known in the prior art.” Veritas Techs. v. Veeam Software Corp., 835 F.3d 1406, 1414 (Fed. Cir. 2016).  On remand, the Board recently reconsidered patent owner Veritas Technologies, LLC’s (“Veritas”) motion to amend its claims.  IPR2014-00090, Paper 48 at 2 (July 17, 2017).

By rule, the Board may deny a motion to amend where “[t]he amendment does not respond to a ground of unpatentability involved in the trial.”  37 C.F.R. § 42.121(a)(2)(i).  Because a petition for IPR may only be based on unpatentability under §§ 102 and 103, this technically means that a patent owner may not use a motion to amend to respond to unpatentability issues under §§ 101 and 112.  However, in this case, the Board not only provided the patent owner an opportunity to supplement its previously denied motion to amend, but granted the motion despite the proposed claim including a new limitation added to address a § 101 issue.

Veritas’s original motion sought to substitute a proposed claim 26 if original claim 1 was found unpatentable, and a proposed substitute claim 27 if original claim 20 was found unpatentable.  Id. at 3.  With the Federal Circuit affirming the Board’s decision finding original claims 1 and 20 unpatentable, the only issue before the Board on remand was Veritas’s motion to amend. Id.  Before reconsidering Veritas’s motion to amend, the Board issued an order authorizing Veritas to file a supplement to its motion to amend which added the term “non-transitory” to proposed substitute claim 27.  Id.

The Board considered Veritas’s proposed claim 26 and determined that because Veritas could not sufficiently identify written description for the claim in the original disclosure, the proposed amendment failed under 35 U.S.C. § 316(d)(3), which requires that an amendment in an IPR not introduce new matter.  Id. at 18.  In opposing proposed claim 27, petitioner Veeam Software Corporation (“Veeam”) argued that the claim was unpatentable, inter alia, for failing the requirements of § 42.121(a)(2)(i).  Veritas did not dispute that “non-transitory” was added to claim 27 for purposes other than for overcoming a ground of unpatentability involved in the trial.  Rather, Veritas argued that the Board possessed “broad discretionary powers,” which it should use to allow Veritas to modify the proposed language of claim 27 to include the “non-transitory” limitation. Id. at 28.

In agreeing with Veritas’s position and granting the motion to amend claim 27, the Board explained that, in its view, § 42.121(a)(2)(i) requires that amendments must be the result of “a genuine effort to overcome the instituted grounds.”  Id.  According to the Board, this does not mean that every word added to or removed from a claim in a motion to amend be solely for the purpose of overcoming a ground of unpatentability involved in the trial.  Id. at 29.  The Board reasoned that it “serves the public interest” to allow patent owners to address § 101 or § 112 issues once a proposed claim has addressed a ground of unpatentability involved in the trial.  In other words, if the proposed claim “as a whole is responsive to a ground of unpatentability involved in the trial,” additional limitations addressing other grounds of unpatentability are permissible.  Id.

Takeaway.

A patent owner cannot utilize a motion to amend to solely correct issues of unpatentability unrelated to those involved in an IPR.  However, as the Board’s decision here illustrates, if a patent owner has a basis for amending a claim to overcome a § 102 or § 103 ground of unpatentability, the patent owner may have a valuable opportunity to also address patentability issues arising under §§ 101 or 112.

Veeam Software Corporation v. Veritas Technologies, LLC, IPR2014-00090 (July 17, 2017) (Paper 48).

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John Marlott

Partner at Jones Day
John Marlott brings more than 30 years of intellectual property law experience to his role as lead counsel in IP disputes for Jones Day clients. He focuses on high-stakes district court and ITC patent litigation, post-grant patent proceedings before the PTAB, and appeals to the U.S. Court of Appeals for the Federal Circuit.