Case: 21-1005 Document: 56 Page: 1 Filed: 12/16/2021
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
KOM SOFTWARE, INC.,
Appellant
v.
NETAPP, INC.,
Cross-Appellant
______________________
2021-1005, 2021-1006, 2021-1100
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2019-
00601, IPR2019-00603.
______________________
Decided: December 16, 2021
______________________
DAVID FARNUM, Anova Law Group, PLLC, Sterling,
VA, argued for appellant. Also represented by WENYE TAN.
ERIKA ARNER, Finnegan, Henderson, Farabow, Garrett
& Dunner, LLP, Washington, DC, argued for cross-appel-
lant. Also represented by JOSHUA GOLDBERG, SYDNEY
KESTLE; CORY C. BELL, Boston, MA; JACOB ADAM
SCHROEDER, Palo Alto, CA; JASON E. STACH, Atlanta, GA.
______________________
Case: 21-1005 Document: 56 Page: 2 Filed: 12/16/2021
2 KOM SOFTWARE, INC. v. NETAPP, INC.
Before PROST, TARANTO, and CHEN, Circuit Judges.
PER CURIAM.
This case involves two inter partes review final written
decisions, one from IPR2019-00601 (“the Sitka IPR”) and
the other from IPR2019-00603 (“the Blickenstaff IPR”). In
the Sitka IPR, the Patent Trial and Appeal Board (“Board”)
determined that claims 1–7, 45–57, and 59 of
U.S. Patent
No. 7,392,234 (“the ’234 patent”) were unpatentable as ob-
vious over two prior-art references, Sitka and Cannon. In
the Blickenstaff IPR, the Board considered precisely the
same claims as in the Sitka IPR and determined that, in
view of other prior-art references, some claims were un-
patentable and that some were not. KOM Software, Inc.
(“KOM”) appeals the Board’s unpatentability determina-
tions in each IPR. NetApp, Inc. (“NetApp”) cross-appeals
the Board’s determination in the Blickenstaff IPR that cer-
tain claims were not shown to be unpatentable.
Concerning the Sitka IPR, the Board construed the
“transparent access” limitation of claim 1 (and other
claims) to “not require that a user have a misplaced belief
about the location of the file.” J.A. 16. KOM argues here,
as it did before the Board, that “transparent access is pro-
vided to the requested file without a user’s awareness of
any file lifecycle management structure[;] as far as the user
is concerned the file is stored in a particular directory on a
particular drive,” Appellant’s Br. 27, i.e., that “the user
would be provided . . . the fiction that a file resides . . . on a
particular directory,” J.A. 977–78 (Patent Owner’s Re-
sponse) (emphasis added); see Appellant’s Reply Br. 44.
We conclude that the Board’s construction of “transpar-
ent access” to not require misplaced user belief as to the
location of the file is consistent with the plain claim lan-
guage (which is agnostic as to user knowledge), and the
specification and the prosecution history, neither of which
narrows the claim as KOM suggests but rather merely de-
scribes (at most) an embodiment wherein the user may
Case: 21-1005 Document: 56 Page: 3 Filed: 12/16/2021
KOM SOFTWARE, INC. v. NETAPP, INC. 3
have such misplaced belief, see, e.g., ’234 patent col. 5
ll. 61–67; J.A. 369. Also concerning the Sitka IPR, KOM
attempts to raise a claim-construction issue by arguing
that the Board improperly found that Sitka discloses the
“last storage medium” limitation of claim 3 (and other
claims) because “the ‘last storage medium’ is not simply the
final storage medium to which a file is transferred. In-
stead, the last storage medium is an archival storage me-
dium.” Appellant’s Br. 37. But we agree with NetApp that
this is not properly an issue of claim construction and fur-
ther that substantial evidence supports the Board’s finding
that Sitka teaches the claimed “last storage medium . . .
associated with archived files” limitation via its “lowest
level stores,” see, e.g., J.A. 230–31 (Long Decl. ¶ 98);
J.A. 761 (Sitka col. 26 ll. 39–63).
We have considered KOM’s remaining arguments with
respect to the Sitka IPR but find them unpersuasive. Be-
cause we affirm the Board’s unpatentability determina-
tions in the Sitka IPR, the issues raised with respect to the
Blickenstaff IPR are moot. Accordingly, we affirm in
KOM’s appeal and dismiss NetApp’s cross-appeal.
AFFIRMED-IN-PART, DISMISSED-IN-PART
COSTS
The parties shall bear their own costs.
