The Software IP Report
Broadest Reasonable Interpretation Gives Little Weight to Claiming a Functional Result
By Charles Bieneman
Categories: The Claims Interpreted Report, The Software IP Report
The Federal Circuit has upheld the Patent Trial and Appeal Board’s broadest reasonable interpretation of claims including “a restore application starting a restore of a set of files” in an Inter Partes Review proceeding. Veritas Techs. LLC v. Veeam Software Corp., No. 2015-1894 (Fed. Cir. Aug. 30, 2016). This case will garner attention for the court’s vacation of a PTAB denial of the patent owner’s motion to amend claims in the IPR proceeding. Although more subtle, perhaps as significant is the court’s endorsement of an approach to the broadest reasonable interpretation of patent claims under which recitations of a functional result receive virtually no patentable weight.
Representative claim 20 of US Patent No. 7,024,527 recites:
A computer-accessible medium comprising program instructions, wherein the program instructions are configured to implement:
a restore application starting a restore of a set of files from a backup storage to a primary storage;
during said restore:
a file server determining that one or more blocks of data of a file in the set of files needed by an application have not been restored; and
the file server directing the restore application to restore the determined one or more blocks of data in response to said determining that the one or more blocks of data have not been restored; and
the restore application restoring the determined one or more blocks of data;
wherein the restored one or more blocks of data are accessible by the application while said restore is in progress.
In the IPR, the petitioner had cited prior art showing block-level, but not file-level, restoration processes. The PTAB agreed, holding that, under a broadest reasonable interpretation, the claims “do not require file-level knowledge or a file-level restoration.”
The Federal Circuit agreed with the PTAB and the petitioner. The phrase “starting a restore of a set of files” suggested a file-level restoration. However, the court explained, these words
can bear a broader reading, under which the language would cover a restore at the block level as long as that process will result in restoring a set of files, as by restoring an entire disk that contains complete files. Starting a restore that results in restoring a set of files is one reasonable reading of “starting a restore of a set of files.”
Moreover, the court drew “the same conclusion about the claim requirement that, when directed by the file server to do so, the restore application first restores designated ‘blocks of data of a file in the set of files needed by an application.’” This language could be read as referring to file-level restoration. However, the court saw no reason why “this language could not also reasonably be read so that the use of ‘file in the set of files’ refers only to a result, with both the background restore and the out-of-priority grab of needed blocks occurring at the block level.”
Further, the court thought it important that nothing in the patent explained a material difference between file-level and block-level restoration. Neither did it distinguish between the two with respect to prior art. Moreover, there was evidence in the record that “in many instances” the prior art “block level restoration process will result in a restoration of a set of files.”
And thus we are lead to an important patent preparation and prosecution tip. I can only speculate as to whether the claim drafter here thought that he or she was protecting only file-level restoration. But assume that the was the drafter’s intention, and surely that was the patent owner’s desire in the IPR proceeding. The patent drafter might have included claim language that explicitly limited the claims to restoring files, rather than sets of blocks that could be files. Presumably this is what the amendments proposed during the IPR attempt to do.
Drafting non-functional language, and also avoiding recitation of results, can be difficult in computer patent claims. The patent drafter here probably thought the ’527 patent claims recited affirmative steps, and not a result. Thus, the practice tip from the present case is that the drafter cannot be over-vigilant when considering functional language.