Another CAFC reversal regarding claim amendments.
United States Court of Appeals
for the Federal Circuit
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VERITAS TECHNOLOGIES LLC,
Appellant
v.
VEEAM SOFTWARE CORPORATION,
Appellee
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2015-1894
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2014-
00090.
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Decided: August 30, 2016
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K. LEE MARSHALL, Bryan Cave LLP, San Francisco,
CA, argued for appellant. Also represented by JOSEPH J.
RICHETTI, ALEXANDER DAVID WALDEN, New York, NY.
BYRON LEROY PICKARD, Sterne Kessler Goldstein &
Fox, PLLC, Washington, DC, argued for appellee. Also
represented by MARK FOX EVENS, LORI A. GORDON,
MICHAEL Q. LEE, DANIEL S. BLOCK.
MEREDITH HOPE SCHOENFELD, Office of the Solicitor,
United States Patent and Trademark Office, Alexandria,
VA, argued for intervenor Michelle K. Lee. Also repreVERITAS
2 TECHS. LLC v. VEEAM SOFTWARE CORP.
sented by THOMAS W. KRAUSE, SCOTT WEIDENFELLER,
ROBERT MCBRIDE, MOLLY R. SILFEN.
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Before LOURIE, O’MALLEY, and TARANTO, Circuit Judges.
TARANTO, Circuit Judge.
At issue here is U.S. Patent No. 7,024,527, a computer
patent owned by Veritas Technologies LLC. The patent
describes and claims systems and methods through
which, while certain processes for restoring computer
data are in progress, particular data sought by an active
application may be given priority for restoration and
made immediately accessible to the application. In October
2013, Veeam Software Corp. filed a petition asking
the Patent Trial and Appeal Board to institute an inter
partes review of claims 1, 6, 8, 20, and 24 of the ’527
patent, which Veeam asserted were unpatentable over
prior art. The Board instituted the review in April 2014.
After institution, the patent owner (Symantec Corp. at
that time, but we will refer throughout to Veritas) filed a
conditional motion to amend, seeking to add new claims
26 and 27 if the Board ultimately concluded that the
challenged existing claims are unpatentable.
In its April 2015 final decision, the Board resolved the
parties’ claim-construction dispute at the heart of the
proceeding. The Board concluded, contrary to Veritas’s
contention, that the claims were not limited to file-level
background restoration processes, but could reasonably be
read as also covering block-level restoration processes: the
background restorer could proceed with restoration without
identifying files, just by restoring blocks of data,
which often will end up restoring whole files. Based on
that construction, the Board rejected all of the challenged
claims for obviousness, under 35 U.S.C. § 103. Veeam
Software Corp. v. Symantec Corp., No. IPR2014-90, 2015
WL 1906723, at *6–7, *8–14 (PTAB Apr. 23, 2015). The
VERITAS TECHS. LLC v. VEEAM SOFTWARE CORP. 3
Board 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. Id. at
*14–15.
We affirm the Board’s construction as the broadest
reasonable interpretation of the claims and therefore
uphold its obviousness determination. We vacate the
Board’s denial of Veritas’s motion to amend because the
Board was arbitrary and capricious in its sole ground for
denying the motion. We remand for the Board to consider
the patentability of the proposed claims, which, Veritas
asserts, have the narrower claim scope (limited to filelevel
background restoration) that Veritas unsuccessfully
urged for the original claims.
