Kom Software, Inc. v. Netapp, Inc.

Case: 21-1075 Document: 51 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NOTE: This disposition is nonprecedential.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
______________________
2021-1075, 2021-1076
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2019-
00594.
______________________
Decided: December 17, 2021
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DAVID FARNUM, Anova Law Group, PLLC, Sterling,
VA, argued for appellant. Also represented by WENYE TAN.
SYDNEY KESTLE, Finnegan, Henderson, Farabow, Gar-
rett & Dunner, LLP, Washington, DC, argued for cross-ap-
pellant. Also represented by ERIKA ARNER, JOSHUA
GOLDBERG, SONJA SAHLSTEN; CORY C. BELL, Boston, MA;
JACOB ADAM SCHROEDER, Palo Alto, CA; JASON E. STACH,
Atlanta, GA.
______________________
Case: 21-1075 Document: 51 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 U.S. Patent No. 6,654,864.
NetApp, Inc. filed a petition for inter partes review of
claims 1–3, 5, 6, and 9. The Patent Trial and Appeal Board
(Board) determined that claims 1–3 were anticipated by
U.S. Patent No. 6,185,661 (Ofek) but upheld claims 5, 6,
and 9. KOM appeals with respect to the claims the Board
found to be unpatentable and NetApp cross-appeals with
respect to the claims the Board upheld. We affirm.
KOM first challenges the Board’s construction of “re-
striction to alteration of a same portion of each file,” focus-
ing on the word “portion.” KOM argues that “portion” must
mean “less than the entirety of each file.” In other words,
KOM reads “portion” to mean “only a portion.” We see no
error in the Board’s treatment of this limitation. While the
Board did not expressly construe “portion,” the Board con-
cluded that Ofek’s disclosure satisfied the limitation be-
cause Ofek’s restriction to alteration of entire files
“encompasses every portion of that file.” NetApp, Inc. v.
KOM Software, Inc., IPR2019-00594, 2020 WL 4814234, at
*7 (P.T.A.B. Aug. 17, 2020) (Final Written Decision).
Therefore, the Board found, regardless of whether the term
“portion” includes or excludes the whole file, Ofek discloses
the limitation. The Board’s reasoning aligns with this
court’s decision in Hewlett-Packard Co. v. Mustek Systems,
Inc., 340 F.3d 1314 (Fed. Cir. 2003). In Hewlett-Packard,
we affirmed a district court’s finding that a prior art refer-
ence that scanned an entire image disclosed scanning a se-
lected portion of the image. Id. at 1324. We held that
“[w]hen an entire picture is scanned, any previously se-
lected portion will also necessarily be scanned” and de-
clined to require “that no more than the selected portion
[be] scanned.” Id.Case: 21-1075 Document: 51 Page: 3 Filed: 12/17/2021
KOM SOFTWARE, INC. v. NETAPP, INC. 3
This court’s decision in Dippin’ Dots, Inc. v. Mosey, 476
F.3d 1337 (Fed. Cir. 2007), is distinguishable. KOM relies
on Dippin’ Dots for the premise that “comprising” in the
preamble does not broaden the individual steps of a method
claim. See id. at 1343. While we agree, the Board did not
violate that principle here. In Dippin’ Dots, the relevant
claim term was already “narrowly defined” during claim
construction to exclude specific processes and appellant
sought to rely on “comprising” to bring those same explic-
itly excluded processes back within the scope of the claim.
Id. (“The presumption raised by the term ‘comprising’ does
not reach into each of the six steps to render every word
and phrase therein opened-ended—especially where, as
here, the patentee has narrowly defined the claim term it
now seeks to have broadened.”). Here, in contrast, the
Board’s conclusion is consistent with the scope of the claim
language.
Accordingly, we reject KOM’s narrowing construction
and hold that substantial evidence supports the Board’s
conclusion that Ofek discloses “restriction of alteration of a
same portion of each file.”
KOM also challenges the Board’s finding that Ofek re-
stricts “file access” because Ofek describes restricting ac-
cess to “tracks.” We reject this challenge. As the Board
explained, while “files” and “tracks” do not have a one-to-
one correspondence (i.e., “a file may comprise the entirety
of one or more tracks or portions of one or more tracks” and
vice versa), Ofek discloses at least one mode of operation
that restricts access to files by making entire tracks on
which they are stored read-only. Final Written Decision, at
*7. Substantial evidence therefore supports the Board’s
conclusion that Ofek discloses this limitation.
KOM’s third ground for appeal is that the Board did
not clearly identify whether it relied on anticipation or ob-
viousness in finding claims 1–3 unpatentable. But, “we
will uphold a decision of less than ideal clarity if the
Case: 21-1075 Document: 51 Page: 4 Filed: 12/17/2021
4 KOM SOFTWARE, INC. v. NETAPP, INC.
agency’s path may reasonably be discerned.” Yeda Rsch. &
Dev. Co. v. Mylan Pharms., Inc., 906 F.3d 1031, 1047 (Fed.
Cir. 2018) (quoting In re NuVasive, Inc., 842 F.3d 1376,
1383 (Fed. Cir. 2016)). It is reasonably clear from the
Board’s reliance on the Ofek reference alone that the Board
found claims 1–3 to be unpatentable as anticipated under
35 U.S.C. § 102.
NetApp cross-appeals the Board’s finding that NetApp
failed to demonstrate that the prior art discloses “allowing
access to free space portions of the same logical storage me-
dium.” NetApp argues that it “articulated two alternative
mappings” for this limitation and the Board improperly
considered only one. We review the Board’s judgments con-
cerning what arguments are fairly presented in a petition
and other pleadings for abuse of discretion. See, e.g., Erics-
son Inc. v. Intellectual Ventures I LLC, 901 F.3d 1374, 1379
(Fed. Cir. 2018); Altaire Pharms., Inc. v. Paragon Bioteck,
Inc., 889 F.3d 1274, 1284 (Fed. Cir. 2018), remand order
modified by stipulation, 738 F. App’x 1017 (Fed. Cir. 2018).
The statement NetApp identifies in its petition as an alter-
native mapping is not clearly a distinct argument, and we
thus discern no error in the Board’s conclusion that the pe-
tition set forth a single mapping only. Final Written Deci-
sion, at *9.
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