A showing that the combination of newly added features in substitute claims for inter partes review distinguishes over the prior art is generally sufficient to satisfy the requirements of a motion to amend without addressing whether each newly added feature was independently known. Here, for example, a showing that the newly added feature of a particular file system in combination with other file restoration operations distinguished over the prior art was found to be sufficient even though the motion to amend provided no discussion of the file system itself. “[W]e have been shown no reason to doubt that it is only the combination that was the ‘new feature,’ a scenario recognized in a long line of Supreme Court and Federal Circuit cases noting that novel and nonobvious inventions often are only a combination of known individual features.“ This would be a good case to consult and cite in response to a denial of a motion to amend during inter partes review predicated on a perceived failure to address newly added features individually.
Background / Facts: The patent on appeal here from inter partes review proceedings at the PTO is directed to prioritizing the restoration of computer data sought by an active application during a restoration process. The patentee submitted substitute claims in an effort to state more expressly the file-level restoration limitation that it urged as a construction of the unamended claims. While the motion to amend discussed the novelty of the newly added features in combination, it did not address whether each newly added feature in each proposed claim was independently known in the prior art.
Issue(s): Whether it was proper for the PTO to deny the motion to amend based on its insistence that the patent owner discuss whether each newly added feature was separately known in the prior art.
Holding(s): No. “We do not see how the Board could reasonably demand more from [the patentee] in this case. … [W]e have been shown no reason to doubt that it is only the combination that was the ‘new feature,’ a scenario recognized in a long line of Supreme Court and Federal Circuit cases noting that novel and nonobvious inventions often are only a combination of known individual features. [] In this case, we fail to see how describing the combination is meaningfully different from describing what is new about the proposed claims, even in comparison to the unamended claims.”