  United States Court of Appeals
      for the Federal Circuit
                ______________________

          VERITAS TECHNOLOGIES LLC,
                   Appellant

                          v.

       VEEAM SOFTWARE CORPORATION,
                    Appellee
             ______________________

                      2015-1894
                ______________________

    Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2014-
00090.
                 ______________________

               Decided: August 30, 2016
               ______________________

   K. LEE MARSHALL, Bryan Cave LLP, San Francisco,
CA, argued for appellant. Also represented by JOSEPH J.
RICHETTI, ALEXANDER DAVID WALDEN, New York, NY.

    BYRON LEROY PICKARD, Sterne Kessler Goldstein &
Fox, PLLC, Washington, DC, argued for appellee. Also
represented by MARK FOX EVENS, LORI A. GORDON,
MICHAEL Q. LEE, DANIEL S. BLOCK.

   MEREDITH HOPE SCHOENFELD, Office of the Solicitor,
United States Patent and Trademark Office, Alexandria,
VA, argued for intervenor Michelle K. Lee. Also repre-
2               VERITAS TECHS. LLC   v. VEEAM SOFTWARE CORP.



sented by THOMAS W. KRAUSE, SCOTT WEIDENFELLER,
ROBERT MCBRIDE, MOLLY R. SILFEN.
              ______________________

Before LOURIE, O’MALLEY, and TARANTO, Circuit Judges.
TARANTO, Circuit Judge.
    At issue here is U.S. Patent No. 7,024,527, a computer
patent owned by Veritas Technologies LLC. The patent
describes and claims systems and methods through
which, while certain processes for restoring computer
data are in progress, particular data sought by an active
application may be given priority for restoration and
made immediately accessible to the application. In Octo-
ber 2013, Veeam Software Corp. filed a petition asking
the Patent Trial and Appeal Board to institute an inter
partes review of claims 1, 6, 8, 20, and 24 of the ’527
patent, which Veeam asserted were unpatentable over
prior art. The Board instituted the review in April 2014.
After institution, the patent owner (Symantec Corp. at
that time, but we will refer throughout to Veritas) filed a
conditional motion to amend, seeking to add new claims
26 and 27 if the Board ultimately concluded that the
challenged existing claims are unpatentable.
    In its April 2015 final decision, the Board resolved the
parties’ claim-construction dispute at the heart of the
proceeding. The Board concluded, contrary to Veritas’s
contention, that the claims were not limited to file-level
background restoration processes, but could reasonably be
read as also covering block-level restoration processes: the
background restorer could proceed with restoration with-
out identifying files, just by restoring blocks of data,
which often will end up restoring whole files. Based on
that construction, the Board rejected all of the challenged
claims for obviousness, under 35 U.S.C. § 103. Veeam
Software Corp. v. Symantec Corp., No. IPR2014-90, 2015
WL 1906723, at *6–7, *8–14 (PTAB Apr. 23, 2015). The
VERITAS TECHS. LLC   v. VEEAM SOFTWARE CORP.               3



Board also denied Veritas’s motion to amend, though
without making an evidentiary determination of patenta-
bility of the proposed claims 26 and 27. It concluded only
that Veritas (and its expert declarant) had failed to ad-
dress something the Board said must be addressed,
namely, whether each newly added feature in each pro-
posed claim, as distinct from the claimed combination of
features, was independently known in the prior art. Id. at
*14–15.
    We affirm the Board’s construction as the broadest
reasonable interpretation of the claims and therefore
uphold its obviousness determination. We vacate the
Board’s denial of Veritas’s motion to amend because the
Board was arbitrary and capricious in its sole ground for
denying the motion. We remand for the Board to consider
the patentability of the proposed claims, which, Veritas
asserts, have the narrower claim scope (limited to file-
level background restoration) that Veritas unsuccessfully
urged for the original claims.
                        BACKGROUND
     In a brief “technology background” discussion that the
parties accept, the Board described a distinction at the
center of the dispute here. “A data storage device (e.g., a
hard disk) is divided into small storage containers called
blocks.” Veeam at *2. “A file is essentially a named
collection of blocks, those blocks containing all of the data
of the file,” with “[a] file system keep[ing] track of which
blocks have been allocated to which files.” Id. A program
may access data in two ways of relevance here. In one,
“file-level access,” a program “requests a file,” in which
case “the file system”—“acting as a translator between the
logical file name and the physical collection of blocks”—
“looks up which blocks hold the data of the file and sends
the requestor the data in those blocks.” Id. In the other,
“block-level access,” a program that “already knows which
4                VERITAS TECHS. LLC    v. VEEAM SOFTWARE CORP.



block has the data it needs” may “ask for the data in that
block, without consulting the file system.” Id.
    The ’527 patent, entitled “Data Restore Mechanism,”
in describing the prior art, refers to both block-level-
access and file-level-access methods for backing up and
restoring data. ’527 patent, col. 1, lines 41–51. The
patent identifies a problem with existing systems:
    Typically, during restores, an application will
    have to wait for a file to be fully restored before
    accessing the file. Since a restore operation may
    restore files in any order, an application may have
    to wait a considerable amount of time for a par-
    ticular file to be fully restored. Large databases
    may include hundreds of gigabytes or even tera-
    bytes of data; restores of these databases may
    take hours or even days before the data reaches a
    stable state. In many cases, applications may
    have to wait until all of the data is restored before
    they can access any of the data.
Id., col. 1, line 66, through col. 2, line 8; see id., col. 3,
lines 57–60. The patent then identifies the goal of the
invention:
    Therefore, it is desirable to provide a restore
    mechanism that has reduced impact on produc-
    tion applications. It is also desirable to restore
    data needed from disk-based disaster recovery
    backups in a near instantaneous manner from the
    production application’s perspective. It is also de-
    sirable to allow [the] application to be active and
    accessing data being restored while the restore is
    in progress transparent to the applications.
Id., col. 2, lines 9–16; see id., col. 3, lines 55–57.
    The specification describes a system and method “for
performing restores from backups while applications are
active and accessing the data being restored,” i.e., for
VERITAS TECHS. LLC   v. VEEAM SOFTWARE CORP.               5



allowing an active application to request that specific data
be restored first and to access that restored data while the
background restore is still running. Id., col. 2, lines 20–
22; id., Abstract. According to the summary of the inven-
tion, “a map correlating destination locations on primary
storage to source locations on backup storage for a set of
files to be restored may be generated,” and “[a] restore of
the set of files from the backup storage to the primary
storage may be started.” Id., col. 2, lines 34–38. That
background restore is performed by “a restore applica-
tion.” Id., col. 6, lines 47–49; id., fig. 2. While the back-
ground restore is underway, an actively running
application may request “one or more blocks of data of a
file in the set of files,” and “[t]he map may be accessed to
determine if the blocks have been restored.” Id., col. 2,
lines 38–41. If not, the restore application is told to
restore the needed block immediately, id., col. 2, lines 40–
43; id., col. 8, lines 61–64, and once restored, the “blocks
of data are accessible by the application while the restore
is in progress,” id., col. 2, lines 43–45.
    Claim 20 is illustrative. It reads as follows:
       20. A computer-accessible medium comprising
    program instructions, wherein the program in-
    structions 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 re-
         stored; and
        the file server directing the restore applica-
          tion to restore the determined one or more
          blocks of data in response to said determin-
6                VERITAS TECHS. LLC   v. VEEAM SOFTWARE CORP.



          ing that the one or more blocks of data have
          not been restored; and
        the restore application restoring the deter-
          mined 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.
Id., col. 12, lines 43–60.
     In its corrected petition for inter partes review of the
’527 patent under 35 U.S.C. § 312, Veeam requested
cancellation of claims 1, 6, 8, 20, and 24 as anticipated by
and obvious over several prior-art references. For one set
of obviousness contentions, Veeam relied primarily on
U.S. Patent Application Publication No. US 2002/0083366
to Ohran, in combination with other references (specifical-
ly, a user guide for Microsoft’s Windows NT file system
and U.S. Patent No. 7,234,077 to Curran et al.). Ohran
discloses a block-level restoration system that uses two
channels to provide an application on-demand access to
lost data blocks while the lost data blocks are being
restored. Ohran, Abstract. In the first channel, when a
running application requests a data block that has not yet
been restored, that data block is immediately restored
from the backup to the primary storage. Id., ¶¶ 11, 21,
38–39. In the second channel, a snapshot copy of all the
lost data is taken at the backup storage and subsequently
transported (often physically) to the primary storage. Id.,
¶¶ 13, 22, 44. Once the snapshot copy arrives at the
primary storage, the blocks that have not yet been re-
stored via the first channel fill in the missing slots. See
id., ¶¶ 13, 22, 45–46.
   The Board, as delegee of the Director of the Patent
and Trademark Office, 37 C.F.R. § 42.4, instituted review
under 35 U.S.C. § 314(a) upon finding a reasonable likeli-
hood that the system and method of the ’527 patent’s
VERITAS TECHS. LLC   v. VEEAM SOFTWARE CORP.              7



claims are unpatentable because they would have been
obvious over Ohran and other prior-art references.
Veritas filed its response on the merits, which included
arguments for reading the claims as limited to file-level
background restoration. Veritas also filed a conditional
motion to amend the existing claims under 35 U.S.C.
§ 316(d) and 37 C.F.R. § 42.121, asking that, if the Board
found the existing claims unpatentable, it allow proposed
new claims 26 and 27, which attempt to claim more
expressly what Veritas was urging as the proper construc-
tion of the existing claims.
     After conducting its review under 35 U.S.C. § 316, the
Board reached a final decision cancelling the challenged
claims under § 318. The central issue addressed by the
Board and presented in this appeal is whether the claims
are restricted to file-level restoration or are broad enough
also to cover block-level restoration. The Board adopted
the latter construction, ruling that the claims in their
broadest reasonable interpretation “do not require file-
level knowledge or a file-level restoration.” Veeam at *13.
In particular, the Board concluded that the background
restoration program’s identification of “files” in executing
its restore is not required by the claim language or speci-
fication and is not “required from a technical standpoint.”
Id. at *7.
    Under that broad construction, the Board observed, it
was not a ground for distinguishing Ohran that, as Veri-
tas argued, the Ohran-taught system employs only block-
level restoration. Id. at *10, *13. The Board added that a
person having ordinary skill in the art would understand
that, because blocks often make up a file, running Ohran’s
block-level restore “in many instances” will “result in”
restoration of a set of files, which under the Board’s
construction is all that the claims require. Id. at *13. On
that basis, the Board concluded that “it would have been
obvious to a person of ordinary skill in the art to operate
Ohran’s restoration process to restore a set of files.” Id.
8               VERITAS TECHS. LLC   v. VEEAM SOFTWARE CORP.



    The Board then denied Veritas’s contingent motion to
add substitute claims, relying on what it deemed a defi-
ciency in Veritas’s motion and supporting declaration.
Specifically, the Board explained that Veritas “offer[ed] no
discussion of whether the newly added features” stated in
substitute claims 26 and 27 were separately “known in
the art.” Id. at *14–15. All that Veritas discussed, the
Board said, was that “the newly added feature[s] in
combination with other known features [were] not in the
prior art.” Id. The Board found the statements of Veri-
tas’s expert, Dr. Levy, deficient for the same reason. Id.
at *15. For that reason alone, the Board denied the
motion to amend. Id.
    Veritas appeals under 35 U.S.C. § 319, challenging
the Board’s claim construction, obviousness analysis, and
denial of its motion to amend. We have jurisdiction under
28 U.S.C. § 1295(a)(4)(A).
                       DISCUSSION
                             A
    We first address the Board’s claim construction and
its obviousness determination. The Board permissibly
applied the broadest-reasonable-interpretation standard
in this inter partes review proceeding, see Cuozzo Speed
Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016) (uphold-
ing Director’s adoption of the standard), there being no
issue here about an expiration date of the patent that
would warrant application of the normal judicial claim-
construction standard, see 37 C.F.R. § 42.100(b); 81 Fed.
Reg. 18750, 18752–53 (Apr. 1, 2016). We review the
Board’s construction de novo because there is no dispute
about findings or evidence addressed to extra-patent
usage or other facts extrinsic to the patent. In re Varma,
816 F.3d 1352, 1359 (Fed. Cir. 2016). We review de novo
the ultimate determination of obviousness and compliance
with legal standards, and we review underlying factual
VERITAS TECHS. LLC   v. VEEAM SOFTWARE CORP.                9



findings for substantial evidence. Belden Inc. v. Berk-Tek
LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015).
    Although the ’527 patent gives indications that the
contemplated restore application operates at the file level,
the indications here are not enough under the broadest-
reasonable-interpretation standard to exclude block-level
restoration. For example, the patent does not state that it
is restricted to file-level background restorers; nor does it
explain aspects of the contemplated process that make
sense only for a file-level restorer, not by a block-level
restorer, and so fairly imply such a restriction. Without
those or other bases for limiting the claims to file-level
restoration, it would not be unreasonable for a relevant
skilled artisan to read the claims also to cover block-level
restoration, as the Board concluded. We therefore uphold
the Board’s construction under the broadest-reasonable-
interpretation standard.
     We begin with the claim language, which refers to
files in prescribing what the background restoration
program does. Claim 20 states that the restore applica-
tion “start[s] a restore of a set of files.” ’527 patent, col.
12, line 46 (emphasis added). That language on its face
does tend to suggest that the restore is a file-level one
(calling what is to be restored a “file,” which some table
would then translate to memory blocks for execution).
But the words do not actually require that reading. They
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 restor-
ing an entire disk that contains complete files. Starting a
restore that results in restoring a set of files is one rea-
sonable reading of “starting a restore of a set of files.”
    We draw the same conclusion about the claim re-
quirement 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.”
10               VERITAS TECHS. LLC   v. VEEAM SOFTWARE CORP.



Id., col. 12, lines 49–50. Like the “starting a restore of a
set of files” language, the phrase “blocks of data of a file in
the set of files” is reasonably, maybe even most naturally,
read to refer to the restore application’s retrieving blocks
from files it identifies as such in undertaking its restora-
tion, i.e., engaging in a file-level restoration. But we see
no sufficient reason that 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.
     When we turn to the specification, we conclude that it
too suggests that the restore application generally oper-
ates at the file level, but that it goes no further: nothing
in the specification states or fairly implies a limitation to
file-level restoration so as to make a broader reading
unreasonable. Thus, in the summary of the invention and
detailed description, including in the passages quoted
earlier in this opinion, the specification speaks about
starting a restore of files, rather than blocks. See, e.g., id.,
Abstract (“files to be restored”); id., Abstract (“A restore of
the files from the backup storage to the primary storage
may be started.”); id., col. 2, lines 36–38 (same); id., col. 6,
lines 48–49 (“The restore application 112 may be request-
ed to restore the set of files.”); id., col. 9, lines 38–40; see
also id., fig. 5 (depicting a flowchart where step 302 is to
“[s]tart a restore of the set of files from the backup storage
to the primary storage”). But those passages are no
stronger than the claim language in excluding restora-
tions that end up restoring files by operating at the block
level.
     Other passages in the specification are to similar ef-
fect. For example, some embodiments include prelimi-
nary preparatory steps—such as retrieving file properties
(e.g., file name and size), allocating space for the to-be-
restored files on the primary storage, and mapping the
locations of the file data on the backup and primary
VERITAS TECHS. LLC   v. VEEAM SOFTWARE CORP.                11



storage, see id., col. 6, lines 49–65; id., col. 7, lines 9–10;
id., col. 8, lines 41–43, 48–58—that would be difficult or
impossible to perform with a block-level restoration. But
those references are all couched in terms of specific em-
bodiments, not general requirements of the invention.
See In re Papst Licensing Digital Camera Patent Litig.,
778 F.3d 1255, 1265 (Fed. Cir. 2015); Phillips v. AWH
Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc).
Likewise, we see no reason to draw an inference about
file-level operation of the background restorer from the
explicit discussion of blocks when describing the grabbing
of blocks sought by an active application during the
restore. See, e.g., id., Abstract (“During the restore, one or
more blocks of data of a file needed by an application may
be determined.”); id., col. 2, lines 38–40 (same).
     Importantly, nothing in the claims or the specification
explains why it makes a material difference—e.g., to the
challenges assertedly overcome by the invention—
whether the background restore application does file- or
block-level restoration. The specification distinguishes
between file- and block-level access, noting that file-level
access requires “some knowledge of the underlying file
system,” while block-level access does not because it uses
physical storage device addresses. Id., col. 1, lines 41–45,
49–51. And it explains that some prior-art systems
required an application to wait for substantial periods for
the restoration to finish before accessing a restored file.
Id., col. 1, line 66, through col. 2, line 8. But in those
places, the specification does not clearly identify a mate-
rial difference between performing an out-of-order block
grab when the restorer is generally operating at the file
level versus doing so when it is operating at the block
level. It does not even say that such block grabbing for a
block-level restorer is old and what is new is block grab-
bing for a file-level restorer. Without some kind of expla-
nation along those lines, explicit or implicit, we think that
the Board properly concluded that the broadest reasona-
12              VERITAS TECHS. LLC   v. VEEAM SOFTWARE CORP.



ble interpretation of the claims includes block-level resto-
ration.
     Under that construction, we find no error in the
Board’s obviousness analysis and conclusion. The Board
cited Veeam’s contention that (in the Board’s words) “it
would have been obvious that the blocks in Ohran were
part of files, such that when Ohran’s block-level restore
process was running, the result is the restoration of files.”
Veeam at *13. Veeam’s contention was supported by the
declaration of Veeam’s expert Dr. Amer, which was cited
by the Board. See J.A. 1461–62 ¶ 59 (“Since all files are
composed of data blocks, it would have been obvious that
the data blocks of Ohran cover data blocks of a file being
accessed by the application . . . .”). The Board found that
Veeam’s evidence “suggests that a person of ordinary skill
in the art would understand that, in many instances,
Ohran’s two-channel block-level restoration process will
result in a restoration of a set of files.” Veeam at *13.
Because the claim construction covers such a result, even
if reached by block-level restoration, the Board concluded
that “it would have been obvious to a person of ordinary
skill in the art to operate Ohran’s restoration process to
restore a set of files.” Id. Once file-level restoration is
rejected as a claim requirement, we see no basis for
overturning the Board’s conclusion of obviousness.
                             B
    Our affirmance of the Board’s obviousness determina-
tion as to the unamended claims requires that we proceed
to address the Board’s denial of Veritas’s contingent
motion to amend by adding substitute claims 26 and 27.
We review that denial under the Administrative Proce-
dure Act. Microsoft Corp. v. Proxyconn, Inc., 789 F.3d
1292, 1306 (Fed. Cir. 2015); see Belden, 805 F.3d at 1080;
see also Cuozzo, 136 S. Ct. at 2146. We set aside the
Board’s action if it is “arbitrary, capricious, an abuse of
discretion, or otherwise not in accordance with law.” 5
VERITAS TECHS. LLC   v. VEEAM SOFTWARE CORP.              13



U.S.C. § 706(2)(A). We conclude here that the Board
erred on its sole ground for denying Veritas’s motion.
     It appears to be undisputed that Veritas submitted
substitute claims 26 and 27 in an effort to state more
expressly the file-level restoration limitation that it urged
as a construction of the unamended claims. Claim 26 is
proposed to substitute for claim 1, and it adds that “the
set of files is a subset of a plurality of files that were
previously backed-up” and that the file server, during the
restore, “receive[s], from an application, a request for at
least a portion of a particular file on the primary storage.”
J.A. 345–46. Claim 27, proposed to substitute for claim
20, adds additional preparatory steps performed by the
restore application and file server and makes explicit that
the blocks needed by a running application are restored
first. J.A. 346–47. At oral argument in this court, Veeam
agreed that it did not contest before the Board that these
amendments address the claim-construction dispute
discussed above, Oral Arg. at 27:50–28:41, and its brief to
this court does not do so either. But we need not here say
whether the amended claims are properly construed as
limited to a background restoration program operating at
the file level or what arguments are open to the parties on
that question in the remand we order.
    The Board denied the motion based on its insistence
that the patent owner discuss whether each newly added
feature was separately known in the prior art. Veeam at
*14–15. The Board concluded that the motion and the
declaration of Veritas’s expert, Dr. Levy, do not discuss
the features separately but discuss only “the newly added
feature in combination with other known features.” Id.
That conclusion, the sole basis for denying the motion to
amend, is unreasonable and hence must be set aside as
arbitrary and capricious.
    The Board quoted statements in Veritas’s motion that
on their face satisfy the requirement of discussing wheth-
14               VERITAS TECHS. LLC   v. VEEAM SOFTWARE CORP.



er the newly added features are in the prior art. In its
motion to amend, Veritas stated:
     None of these prior art systems disclose any resto-
     ration process that restores a particular subset of
     files and, during the restore, determines whether
     a requested file is in this set of files before check-
     ing whether needed blocks in the file have been
     restored. . . . None of these prior art systems dis-
     close any mechanisms for a restore process that
     passes various information back and forth be-
     tween a restore application and a file server prior
     to starting a restore of a set of files and, during
     this file restoration provides on-demand restora-
     tions of requested blocks by restoring them ahead
     of a standard order in which the blocks that make
     up the files are being restored.
J.A. 358–59, quoted at Veeam at *15. Those passages cite
to Dr. Levy’s declaration, which contains similar state-
ments that the newly added features are not described in
the prior art. See J.A. 1927–29 ¶¶ 92, 95.
    Veritas’s motion and Dr. Levy’s declaration also
discuss the absence of newly added features in the two
key prior-art references—Ohran and the Windows NT
user guide. For example, with regard to claim 26’s claim-
ing of a subset of files, Veritas stated that “[n]either
Ohran [n]or Windows NT disclose[s] any mechanism for
restoring a particular set of files from a backup storage,
let alone a subset of a group of files that were previously
backed-up,” J.A. 355, and Dr. Levy stated that “[n]othing
in the data block-level restore of Ohran teaches or sug-
gests the claimed file-level functionality [in substitute
claim 26],” J.A. 1956 ¶ 148. Similarly, for claim 27’s
reciting that the blocks needed by a running application
are restored first, Veritas stated that “[t]here is no disclo-
sure in Ohran, however, of prioritizing the restoration of
any blocks ahead of a standard order,” J.A. 357, and Dr.
VERITAS TECHS. LLC   v. VEEAM SOFTWARE CORP.                 15



Levy stated that “neither Ohran nor Windows NT dis-
close[s] the step[ ] of restoring needed blocks ahead [of]
other blocks in the set of files,” J.A. 1957 ¶ 149. Veritas
went through the same analysis, including citations to Dr.
Levy’s declaration, for each of the newly added features.
See J.A. 355–57 (motion to amend), 1956–57 ¶¶ 148–49
(Dr. Levy declaration).
     We do not see how the Board could reasonably de-
mand more from Veritas in this case. What would it have
added that was not already so clear as to be beyond
dispute, including based on the patent itself, for Veritas to
say that the prior art recognized that restoration can be
done at the file level or that a “set of files [can be] a subset
of a plurality of [already backed-up] files” or that an
application requests part of a “particular file” on primary
storage? See generally J.A. 1923–26 ¶¶ 80–89. Here, we
have been shown no reason to doubt that it is only the
combination that was the “new feature,” a scenario recog-
nized 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. See
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418–19 (2007)
(“[I]nventions in most, if not all, instances rely upon
building blocks long since uncovered, and claimed discov-
eries almost of necessity will be combinations of what, in
some sense, is already known.”); Parks v. Booth, 102 U.S.
96, 102 (1880); Plantronics, Inc. v. Aliph, Inc., 724 F.3d
1343, 1354 (Fed. Cir. 2013); Envtl. Designs, Ltd. v. Union
Oil Co. of Cal., 713 F.2d 693, 698 (Fed. Cir. 1983); In re
Warner, 379 F.2d 1011, 1016 (CCPA 1967). In this case,
we fail to see how describing the combination is meaning-
fully different from describing what is new about the
proposed claims, even in comparison to the unamended
claims.
    For that reason, we conclude that the Board erred in
its sole reason for denying the motion to amend. The
Board rationale here is erroneous independently of any
16                VERITAS TECHS. LLC   v. VEEAM SOFTWARE CORP.



resolution of this court’s recently initiated en banc pro-
ceeding in In re Aqua Products, Inc., No. 2015-1177,
petition for rehearing en banc granted, 2016 WL 4375651
(Fed. Cir. Aug. 12, 2016). We therefore vacate the Board’s
decision on the motion to amend and remand the matter
to allow for a determination of the patentability of the
proposed substitute claims.
                         CONCLUSION
    For the foregoing reasons, we affirm the Board’s
construction and obviousness determinations for claims 1,
6, 8, 20, and 24. We vacate the Board’s denial of the
motion to amend, and remand the case for the Board to
address the patentability of proposed substitute claims 26
and 27.
      No costs.
     AFFIRMED IN PART, VACATED IN PART, AND
                   REMANDED
