{"id":1180,"date":"2016-08-30T12:00:56","date_gmt":"2016-08-30T16:00:56","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1180"},"modified":"2016-09-03T10:05:24","modified_gmt":"2016-09-03T14:05:24","slug":"compliance-with-ptabs-requirements-for-motion-to-amend-arbitrary-and-capricious","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1180","title":{"rendered":"Compliance with PTAB’s Requirements for Motion to Amend Arbitrary and Capricious?"},"content":{"rendered":"

In Veritax Technologies\u00a0LLC,\u00a0v.\u00a0Veeam Software Corp<\/em>., [2015-1894] (August 30, 2016). \u00a0The Federal Circuit vacated\u00a0the PTAB’s denial of the patent owner’s motion to amend in\u00a0IPR2014-00090 as arbitrary and capricious.<\/p>\n

The\u00a0Board also denied the\u00a0motion to amend\u00a0without making an evidentiary determination of patentability\u00a0of the proposed new claims. \u00a0The Board concluded only\u00a0that the patent owner failed to address\u00a0something the Board said must be addressed,\u00a0namely, whether each newly added feature in each proposed\u00a0claim, as distinct from the claimed combination of\u00a0features, was independently known in the prior art. \u00a0The Federal Circuit said:<\/p>\n

\n

The Board concluded that the motion and the\u00a0declaration of Veritas\u2019s expert, Dr. Levy, do not discuss\u00a0the features separately but discuss only \u201cthe newly added\u00a0feature in combination with other known features.\u201d Id.\u00a0That conclusion, the sole basis for denying the motion to\u00a0amend, is unreasonable and hence must be set aside as\u00a0arbitrary and capricious.<\/p>\n<\/blockquote>\n

The Federal Circuit said that the the patent owner’s submissions contained statements that the newly added features are not described in\u00a0the prior art. \u00a0The Federal Circuit said that there is\u00a0no reason to doubt that it is only the\u00a0combination that was the \u201cnew feature,\u201d a scenario recognized\u00a0in a long line of Supreme Court and Federal Circuit
\ncases noting that novel and nonobvious inventions often\u00a0are only a combination of known individual features. \u00a0The Federal Circuit said that “In this case,\u00a0we fail to see how describing the combination is meaningfully\u00a0different from describing what is new about the\u00a0proposed claims, even in comparison to the unamended\u00a0claims.”<\/p>\n

Thus according to the Federal Circuit, a strict adherence to the PTAB’s stated requirement for a statement\u00a0\u201cwhether the feature was previously known anywhere, in whatever setting, and whether or not the feature was known in combination with any of the other elements in the claim.\u201d (Toyota Motor Corp. v. American Vehicular Sciences LLC, IPR2013-00419, slip op. at 4\u20135 (Paper 32) (PTAB March 7, 2014)), can be “arbitrary and capricious.” \u00a0One has to wonder what other PTAB requirements are similarly “arbitrary and capricious.”<\/p>\n

 <\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

In Veritax Technologies\u00a0LLC,\u00a0v.\u00a0Veeam Software Corp., [2015-1894] (August 30, 2016). \u00a0The Federal Circuit vacated\u00a0the PTAB’s denial of the patent owner’s motion to amend in\u00a0IPR2014-00090 as arbitrary and capricious. The\u00a0Board also denied the\u00a0motion to amend\u00a0without making an evidentiary determination of patentability\u00a0of the … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[26],"tags":[],"class_list":["post-1180","post","type-post","status-publish","format-standard","hentry","category-inter-partes-review"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1180","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1180"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1180\/revisions"}],"predecessor-version":[{"id":1181,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1180\/revisions\/1181"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1180"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1180"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1180"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}