Takeaway: A patent owner’s arguments that are outside of the scope of the claims as construed will not be persuasive. Also, the Board does not have the authority to amend the dependency of claims if the proposed amendments are not set forth in a motion to amend.

In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence “that claims 1, 2, 4, 5, 12, 14, and 15 of the ’299 patent are unpatentable, based on each of the challenges for which trial was instituted.”

The ’299 patent “relates to data storage and retrieval generally and more particularly to a method and system of providing periodic replication.” The Board construed two terms in the ’299 patent according to the “broadest reasonable construction in light of the specification.”  The Board adopted the constructions set forth in the Decision to Institute, noting that Patent Owner’s arguments to the contrary were not persuasive.

The Board then addressed each of the instituted grounds of unpatentability. First, the Board was persuaded that Petitioner established by a preponderance of the evidence that claims 1, 2, 4, 5, 12, 14, and 15 are anticipated by Ohran.  The Board was not persuaded by Patent Owner’s arguments, holding that they were based on claim constructions not adopted by the Board, not commensurate in scope with the claims, and based on an incorrect interpretation of Ohran.

With respect to the alleged anticipation of claims 1, 2, 4, 5, 12, 14, and 15 by Kleiman, the Board was persuaded that Petitioner had established their unpatentability by a preponderance of the evidence. The Board considered Patent Owner’s arguments but found them not persuasive because it did not agree with Patent Owner’s interpretation of Kleiman.

With respect to the alleged obviousness of claims 1, 2, 4, 5, 12, 14, and 15 over DeKoning and Linde, the Board again found Patent Owner’s arguments to be not persuasive. In particular, the Board found that Patent Owner attacked references individually where the rejection was based on the combination of references.  The Board was also not persuaded by Patent Owner’s arguments that the references could not be combined or that they taught away from the claimed invention.  There was no showing that the proposed combination would require “substantial modifications” or render the prior art “unsuitable for its intended purpose.”  Further, Patent Owner had not shown that the prior art disparaged the proposed combination such that a person of ordinary skill in the art would have been taught away from the invention.

Motion to Amend

The Board next addressed Patent Owner’s Motion to Amend Claims, proposing claims 18-21 as substitutes for claims 1, 12, 14, and 15, respectively. In a footnote, the Board first addressed a formality regarding the dependent claims.  Rather than setting forth the proposed substitute dependent claims, Patent Owner requested that the Board update the dependencies of the corresponding dependent claims should the Motion to Amend be granted.  The Board indicated that it had no authority to amend the dependencies as Patent Owner requested.

Addressing the proposed substitute claims, the Board found that the claims were adequately supported by the original disclosure of the ’299 patent. However, Patent Owner had not established by a preponderance of the evidence that the substitute claims were patentable over the prior art, and particularly the Ohran reference.

Veeam Software Corporation v. Symantec Corporation, IPR2013-00143
Paper 44: Final Written Decision
Dated: July 29, 2014
Patent: 7,191,299 B1
Before: Francisco C. Prats, Thomas L. Giannetti, and Trenton A. Ward
Written by: Prats
Related Proceedings: IPR2013-00141 (6,931,558 B1); IPR2013-00142 (6,931,558 B1); IPR2013-00150 (7,093,086 B1)