Takeaway: A substitute claim is impermissibly broadening where any limitation added in the substitute claim is broader than the feature in that claim that it replaces, regardless of whether other features in the claim narrow the scope of the claim.

In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence that claims 17-23 of the ’558 patent are unpatentable, and denied Patent Owner’s Motion to Amend. The ’558 patent “relates to local and wide are interconnected computers and data communication networks.”

The Board began its analysis with claim construction. The Board construed one term in the ’558 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 17-23 are anticipated by BMR User Guide. The Board was persuaded by Petitioner’s arguments, supported by an expert, that the features in the claim not explicitly disclosed must have been present, and thus were inherent in BMR User Guide. The Board was not persuaded by Patent Owner’s arguments that the disclosure was too vague to necessarily require the features that were not explicitly disclosed in BMR User Guide.

With respect to the alleged anticipation of claims 17-23 by BMR Webpages, the Board determined that BMR User Guide was a more complete description, and that it was not necessary to address this question of patentability separately. The Board also found that claim 17 is anticipated by Goshey.

The Board next addressed Patent Owner’s contingent Motion to Amend Claims, proposing claims 28-33 as substitutes for claims 17-20, 22, and 23, respectively. The Board determined that the Motion was inadequate because Patent Owner’s arguments were confined to whether the cited prior art anticipated the substitute claims, and failed to demonstrate that the newly added features were unobvious over the cited prior art and over all prior art known to Patent Owner, including admissions within the ’558 patent itself.

Further, the Board determined that proposed substitute claims 29-33 impermissibly enlarged the scope of the claims and were not responsive to an alleged ground of unpatentability, by amending “restoration server” to “server device.”

Finally, the Board addressed Patent Owner’s Motion to Exclude seeking to exclude certain portions of Petitioner’s evidence. The Board determined that the evidence, which had not already been considered and ruled upon for exclusion, was not relied upon in reaching the final decision on patentability. Thus, whether it should be excluded was moot.

Veeam Software Corporation v. Symantec Corporation, IPR2013-00142
Paper 51: Final Written Decision
Dated: July 29, 2014
Patent: 6,931,558 B1
Before: Meredith C. Petravick, Thomas L. Giannetti, and Trenton A. Ward
Written by: Petravick
Related Proceeding: IPR2013-00141 (6,931,558 B1); IPR2013-00143 (7,191,299 B1); IPR2013-00150 (7,093,086 B1); Symantec Corp. v. Veeam Software Corp., No. 3:12-cv-00700