Kom Software, Inc. v. Netapp, Inc.

Case: 21-1181 Document: 58 Page: 1 Filed: 12/17/2021
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
KOM SOFTWARE, INC.,
Appellant
v.
NETAPP, INC.,
Cross-Appellant
______________________
2021-1181, 2021-1182, 2021-1351, 2021-1352, 2021-1353,
2021-1354
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2019-
00598, IPR2019-00604, IPR2019-00606, IPR2019-00607,
IPR2019-00608.
______________________
Decided: December 17, 2021
______________________
DAVID FARNUM, Anova Law Group, PLLC, Sterling,
VA, argued for appellant. Also represented by WENYE TAN.
JOSHUA GOLDBERG, Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP, Washington, DC, argued for cross-
appellant. Also represented by ERIKA ARNER,
CHRISTOPHER CHARLES JOHNS, CHEN ZANG; CORY C. BELL,
Boston, MA; JACOB ADAM SCHROEDER, Palo Alto, CA; JASON
E. STACH, Atlanta, GA.
Case: 21-1181 Document: 58 Page: 2 Filed: 12/17/2021
2 KOM SOFTWARE, INC. v. NETAPP, INC.
______________________
Before PROST, TARANTO, and CHEN, Circuit Judges.
PER CURIAM.
KOM Software, Inc. owns four related patents claiming
systems and methods for restricting access to a storage me-
dium: U.S. Patent Nos. 7,076,624, 7,536,524, 8,234,477,
and 9,361,243. On petitions from NetApp, Inc., the Patent
Trial and Appeal Board conducted five inter partes reviews
of numerous claims of those patents: IPR Nos. 2019-
00598, -00604, -00606, -00607, and -00608. The Board de-
termined that NetApp had shown most of the challenged
claims to be unpatentable for obviousness over the prior art
(Vossen, Nagar, Denning, McGovern, and Kung). KOM ap-
peals with respect to the claims ruled unpatentable;
NetApp cross-appeals with respect to the claims upheld.
We affirm.
KOM challenges the Board’s construction and applica-
tion of claims at issue that require “associating” an “access
privilege” with a “portion” of a “storage medium.” We reject
the challenge. The Board, in all the reviews, properly re-
jected KOM’s implicit constructions of “associating” as re-
quiring either “combin[ing] or join[ing] the access privilege
with the storage medium” or “sav[ing] or stor[ing]” the ac-
cess privilege “in the physical storage medium” as un-
grounded in the ordinary and customary meaning of the
word “associating.” See, e.g., NetApp, Inc. v. KOM Soft-
ware, Inc., IPR2019-00606, 2020 WL 5665753, at *5–7
(P.T.A.B. Sept. 23, 2020) (IPR 606 Final Written Decision).
And under the ordinary and customary meaning of “associ-
ating,” the Board’s findings that both the Vossen and Na-
gar references disclose “associating an access privilege
with at least a portion of the storage medium” are sup-
ported by substantial evidence. The method of Vossen re-
stricts access privileges of processes to certain sub-
hierarchies of a file system, which represent “portion[s] of
Case: 21-1181 Document: 58 Page: 3 Filed: 12/17/2021
KOM SOFTWARE, INC. v. NETAPP, INC. 3
the storage medium.” See, e.g., id. at *8. Vossen thereby
“associates” the access privilege with the portion of the
storage medium. And as the Board reasonably found, the
virus-checking filter driver described in Nagar “layers, or
attaches, itself” to a “mounted logical volume” representing
a storage medium and “intercept[s] I/O requests” targeting
that volume, denying access if a virus signature is found.
See, e.g., NetApp, Inc. v. KOM Software, Inc., IPR2019-
00607/IPR2019-00608, 2020 WL 5647750, at *13 (P.T.A.B.
Sept. 22, 2020) (IPR 607/608 Final Written Decision). Na-
gar thereby “associat[es]” an “access privilege” with a “por-
tion” of a “storage medium.”
KOM challenges the Board’s finding in IPR 2019-00606
that the Denning reference discloses “at least one of allow-
ing, or deleting the file based on said evaluating,” as re-
quired by claim 4 of the ’477 patent. We reject the
challenge. Substantial evidence supports the Board’s find-
ing. Adopting KOM’s explanation that “allowing a file
‘means to not delete it after the evaluating,’” IPR 606 Final
Written Decision, at *9 (quoting J.A. 1108–09), the Board
correctly noted that the Denning example permits altera-
tion of the file conditional on the evaluation of its content,
which necessarily requires that the file not be deleted. Id.at *9–10.
Contrary to KOM’s contention, substantial evidence
also supports the Board’s findings in IPRs 2019-
00604, -00606, and -00607 that the Kung reference dis-
closes “forcing a secure erasure for a delete operation,” as
required by claim 16 of the ’477 patent (and other claims).
The Kung reference teaches overwriting content as a form
of secure erasure, which is performed (forced) by the com-
puter system. See, e.g., IPR 606 Final Written Decision, at
*14–15. KOM argues to us that permitting the user to se-
lect secure erasure means that there is no “forcing,” but
that contention is missing from KOM’s IPR responses and
is therefore forfeited. See In re Warsaw Orthopedic, Inc.,
832 F.3d 1327, 1333 (Fed. Cir. 2016).
Case: 21-1181 Document: 58 Page: 4 Filed: 12/17/2021
4 KOM SOFTWARE, INC. v. NETAPP, INC.
KOM also challenges the Board’s findings that a rele-
vant artisan had a motivation to combine the various prior
art references on which the Board relied in its unpatenta-
bility determinations. But NetApp’s petitions identified
motivations to combine for each combination put forward,
and KOM did not challenge them before the Board. Thus,
KOM’s arguments are again forfeited. See id.; In re Watts,
354 F.3d 1362, 1367–68 (Fed. Cir. 2004). That KOM styles
its arguments as challenges to the sufficiency of the
Board’s explanation, rather than substantive challenges to
the merits of the findings, does not excuse KOM’s failure to
raise its arguments before the Board. Cf. In re Nuvasive,
Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016) (“Our precedent
dictates that the PTAB must make a finding of a motiva-
tion to combine when it is disputed.” (emphasis added)).
NetApp cross-appeals the Board’s determination that
the language of claims 4, 34, 69, and 103 of the ’243 patent
requires creating a file on the computer storage medium
before evaluating the content of the created file and, there-
fore, that the Nagar reference does not disclose those
claims. But we agree with the Board that the claim lan-
guage must be understood to require that “allowing . . . a
create file operation to create a file on . . . the computer
storage medium” occurs before “evaluating . . . a content of
the file.” IPR 607/608 Final Written Decision, at *18–19.
Among other considerations, permitting the other ordering
would render superfluous the third step of “allowing . . . the
attempted operation.”
We have considered the parties’ remaining arguments
and find them unpersuasive. For the foregoing reasons, we
affirm.
The parties shall bear their own costs.
AFFIRMED