Veeam Software Corp. v. Symantec Corp.

Addressing issues of claim construction and the requirements for a motion to amend, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (Board) ruled that the claims at issue were unpatentable and denied a motion to amend, finding that the patent owner had not sufficiently distinguished the proposed amended claims over the cited prior art and all prior art known to the patent owner.  Veeam Software Corp. v. Symantec Corp., Case No. IPR2013-00142 (PTAB, July 29, 2014) (Petravick, APJ).

Veeam filed a petition challenging certain claims of Symantec’s patent that relates to the restoration of computer systems backed up on storage managers (e.g., over a network) when normal restoration is not available. The Board determined the challenged claims were likely unpatentable and instituted the inter partes review proceeding.  The Board later found in a final written decision the claims to be unpatentable and denied Symantec’s motion to amend.

The Board construed the claim term “client disk configuration information,” adopting the broadest reasonable construction, which had been proposed by petitioner Veeam.  Under this construction, both independent claims were anticipated by an old computer user guide that disclosed a system including client disk configuration information as well as a restoration server. Although Symantec made no arguments regarding the additional limitations of the dependent claims, the Board found the dependent claims were also anticipated.

Symantec’s motion to amend proposed substitute claims that included additional limitations. The Board denied the motion to amend based on the unpatentability of the substitute claims.  Symantec failed to demonstrate that the substitute claims were patentable over the prior art of record and all prior art known to Symantec, noting that it was insufficient to simply argue the substitute claims are patentable over the grounds of unpatentability on which the Board instituted review.  For instance, neither Symantec’s motion to amend nor the attached expert declaration addressed whether it would have been obvious to one skilled in the art to modify the cited prior art in a manner suggested by the additional claim limitations.  Also, neither Symantec’s motion nor its supporting expert declaration addressed that one of the additional limitations proposed to be added was already admitted to be known in the art in the patent specification.

In addition to denying the substitute claims based on unpatentability, the Board denied any substitute claim that included the term “server device” as improperly broadening the scope of the claim. Symantec had replaced the term “restoration server” with the “facially broader” term “service device.”  This amendment did not respond to any alleged ground of unpatentability, and Symantec’s motion failed to explain how this substitution did not broaden the claims.

Symantec had also filed a motion to exclude that sought to exclude a piece of prior art. Because the above listed reasons did not depend on the specific piece of art, the motion to exclude was dismissed as moot.