KOM Software, Inc.

Patent Trials and Appeals Board

Sep 22, 2020

IPR2019-00607 (P.T.A.B. Sep. 22, 2020)

Trials@uspto.gov Paper 32
571-272-7822 September 22, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

NETAPP, INC.,
Petitioner,
v.
KOM SOFTWARE, INC.,
Patent Owner.

IPR2019-00607
IPR2019-00608
Patent 9,361,243 B2

Before KIMBERLY McGRAW, DANIEL J. GALLIGAN, and
BRENT M. DOUGAL, Administrative Patent Judges.
McGRAW, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining Some Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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I. INTRODUCTION
In inter partes review IPR2019-00607, NetApp, Inc. (“Petitioner”)1
challenges the patentability of claims 1–4, 16, 24–26, 32–37, 39, 54–57, 61–
63, 66–69, 81, 87–89, 93–95, and 101–103 of U.S. Patent No. 9,361,243 B2
(“the ’243 patent,” Ex. 10012), which is assigned to KOM Software, Inc.
(“Patent Owner”). Paper 3 (“Pet.”). In inter partes review IPR2019-00608,
Petitioner challenges the patentability of claims 1, 5–8, 10–12, 14, 17–21,
27, 62, 64–66, 70–73, 75–77, 79, 82–86, and 96 of the ’243 patent.
IPR2019-00608, Paper 3 (“IPR608-Pet.”).
We have jurisdiction under 35 U.S.C. § 6. This Final Written
Decision, issued pursuant to 35 U.S.C. § 318(a), addresses issues and
arguments raised during the trials in these inter partes review proceedings.
For the reasons discussed below, we determine that Petitioner has proven by
a preponderance of the evidence that claims 1–3, 6–8, 10–12, 14, 17, 21, 24,
25, 27, 32, 33, 35–37, 39, 54–57, 61–63, 65–68, 71–73, 75–77, 79, 82, 86–
89, 93, 94, 96, 101, and 102 of the ’243 patent are unpatentable, but has not
shown by a preponderance of the evidence that claims 4, 34, 69, 103 are
unpatentable. See 35 U.S.C. § 316(e) (“In an inter partes review instituted
under this chapter, the petitioner shall have the burden of proving a
proposition of unpatentability by a preponderance of the evidence.”).

1 Hewlett Packard Enterprise Company (“HPE”) was a petitioner on the
original Petition, but this inter partes review has since been terminated as to
HPE. See Paper 25.
2 Unless otherwise indicated, citations are to papers filed in IPR2019-00607.
Similar papers are filed in IPR2019-00608.
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A. Procedural History
On January 28, 2019, Petitioner filed a Petition for inter partes review
of claims 1–4, 16, 24–26, 32–37, 39, 54–57, 61–63, 66–69, 81, 87–89, 93–
95, and 101–103 of the ’243 patent in IPR2019-00607. Pet. 14, 53, 66. On
the same day, Petitioner filed a Petition for inter partes review of 1, 5–8, 10–
12, 14, 17–21, 27, 62, 64–66, 70–73, 75–77, 79, 82–86, and 96 of the ’243
patent. IPR608-Pet. Patent Owner filed a Preliminary Response in each
proceeding. Paper 9 (“Prelim. Resp.”); IPR2019-00608, Paper 9 (“IPR608-
Prelim. Resp.”). Trial was instituted on all grounds of unpatentability.
Paper 10 (“Inst. Dec.”), 27; IPR2019-00608, Paper 10 (IPR608-Inst. Dec.”),
30.
Following institution, in each proceeding, Patent Owner filed a
Response (Paper 14, “PO Resp.”; IPR2019-00608, Paper 14 (“IPR608-PO
Resp.”)), Petitioner filed a Reply (Paper 23, (“Reply”); IPR2019-00608,
Paper 23 (“IPR608-PO Resp.”)), and Patent Owner filed a Sur-reply (Paper
28, “PO Sur-reply”; IPR2019-00608, Paper 28 (“IPR608-PO Sur-resp.”)). A
consolidated oral hearing was held on June 18, 2020 for both proceedings, a
transcript of which appears in the record. Paper 31 (“Tr.”).
B. Related Matters
Petitioner identifies the following pending litigations involving the
’243 patent: (1) KOM Software Inc. v. Hitachi Vantara Corp., Case
No. 1-18-cv-00158 (D. Del.); (2) KOM Software Inc. v. Hewlett Packard
Enterprise Co., Case No. 1-18-cv-00159 (D. Del.); and (3) KOM Software
Inc. v. NetApp, Inc., Case No. 1-18-cv-00160 (D. Del.). Pet. 73; Paper 4, 3.
Additionally, the parties identify numerous other inter partes review
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proceedings relating to other patents owned by the Patent Owner. See, e.g.,
Pet. 73; Paper 4, 2–3; Paper 8, 2–3.
C. Real Parties-in-Interest
Petitioner identifies NetApp, Inc. and Hewlett Packard Enterprise
Company and Patent Owner identifies KOM Software, Inc. as the real
parties-in-interest. Pet. 73; Paper 4, 2; Paper 8, 2.
D. The ’243 Patent
The ’243 patent, titled “Method and System for Providing Restricted
Access to a Storage Medium,” relates generally to a method of providing
restricted write access on a data storage medium. Ex. 1001, code (54), 1:33–
35; id. at 1:45–48 (describing “access privileges including read and write
privileges”). The ’243 patent states that access privileges provided by
previous operating systems “fail to adequately provide protection for
archival storage devices such as magnetic tape or removable optical media.”
Id. at 1:49–51. For example, “[w]hen an archive data store is used with a
data store device, it is often desirable that it not be written to.” Id. at 2:33–
34. However, when a data store device is accessed, file systems of previous
operating systems may perform updating of file access information even
when it is not desired. Id. at 2:34–39. To solve this problem, the ’243
patent discloses, inter alia, an operating system that includes a “trap layer”
or “filter layer” disposed between the application layer and the file system
layer. Id. at 13:20–22. Figure 3, reproduced below, illustrates a block
diagram of an operating system that includes a trap layer.
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Figure 3 above illustrates an operating system that includes
application layer 302 that communicates with input output layer 306.
Ex. 1001, 13:11–15. Input output layer 306 may include display 308 and
file system layer 310. Id. at 13:15–17. Application layer 302 communicates
with file system layer 310 to perform read and write operations with storage
media. Id. at 13:18–20. Trap layer 304 (also referred to as a filter layer) is
disposed between application layer 302 and file system layer 310. Id.
at 13:20–22. Each file system access request that is transmitted from the
application layer to the file system layer is intercepted by the trap layer,
where restrictions relating to access privileges are implemented. Id.
at 13:23–27. Some access requests are blocked and error messages are
returned to the application layer, and some access requests may be modified
and passed on to the file system in modified form. Id. at 13:28–35.
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Figure 5, reproduced below, illustrates a flow diagram of a method of
storing data in a storage medium applying a trap layer as in Figure 3.

Figure 5 above is a flow diagram including step 502, in which an
application layer (e.g., 302 discussed supra) may seek to store data on a
storage medium by communicating with a file system layer (e.g., 310
discussed supra). Ex. 1001, 15:27–37. A trap layer (e.g., 304 discussed
supra) intercepts the request at step 504 and, at step 506, determines whether
the storage medium supports the request to store data. Id. at 15:37–39. If
step 506 determines the storage medium supports the request to store data,
step 512 passes the request on to the file system layer for normal processing.
Id. at 15:40–42. If step 506 determines the storage medium does not support
the request to store data, step 508 determines whether the request can be
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modified to allow the requested access, and if so, step 514 modifies the
request and forwards the modified request to step 512 for further processing.
Id. at 15:42–47. If step 508 determines the unsupported request cannot be
appropriately modified, step 510 returns a corresponding error indication to
the application layer. Id. at 15:47–53.
E. Illustrative Claim
Of the challenged claims, claims 1, 62, 66 are independent. Claim 1
is illustrative and is reproduced below, with bracketed material and
formatting added for clarity.
1. [a] A computer implemented method for applying, by
at least one computer processor, a computer file system operation
access privilege to a computer storage medium, comprises:
[b] associating, by the at least one computer processor, the
computer file system operation access privilege with at
least a portion of the computer storage medium;
[c] intercepting, by the at least one computer processor, by at
least one computer file system trap layer or at least one file
system filter layer, an attempted operation on said at least
a portion of the computer storage medium,
[d] wherein said intercepting occurs regardless of an identity
of a user attempting the attempted operation;
[e] comparing, by the at least one computer processor, the
attempted operation to the computer file system operation
access privilege; and
[f] allowing, or denying, by the at least one computer
processor, the attempted operation based on the comparing
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the attempted operation to the computer file system
operation access privilege.
Ex. 3002 (Certificate of Correction), 1.3
F. Asserted Challenges to Patentability
In IPR2019-00607, Petitioner asserts that claims 1–4, 16, 24–26, 32–
37, 39, 54–57, 61–63, 66–69, 81, 87–89, 93–95, and 101–103 are
unpatentable based on the following challenges:
Claims Challenged 35 U.S.C. §4 Reference(s)/Basis
1–4, 24, 25, 32–37, 39,
54–57, 61–63, 66–69,
87–89, 93, 94, 101–103
102(a) Nagar5
1–4, 24, 25, 32–37, 39,
54–57, 61–63, 66–69,
87–89, 93, 94, 101–103
103 Nagar
16, 26, 81, 95 103 Nagar, Kung6
In IPR2019-00608, Petitioner asserts that claims 1, 5–8, 10–12, 14,
17–21, 27, 62, 64–66, 70–73, 75–77, 79, 82–86, and 96 are unpatentable
based on the following challenges:

3 A Certificate of Correction (Ex. 3002) issued on April 23, 2019 to correct
claims 1–5 to reflect claim amendments that were made during prosecution
but that were not included in the originally issued patent. See Ex. 3001, 1.
4 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the
challenged claims of the ’243 patent have an effective filing date before the
effective date of the applicable AIA amendments, we refer to the pre-AIA
versions of §§ 102 and 103.
5 RAJEEV NAGAR, WINDOWS NT FILE SYSTEM INTERNALS: A DEVELOPER’S
GUIDE (1997) (Ex. 1005, “Nagar”).
6 US 5,265,159, issued Nov. 23, 1993 (Ex. 1008, “Kung”).
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Claims Challenged 35 U.S.C. § Reference(s)/Basis
1, 62, 667 102(a) Nagar
6–8, 10–12, 14, 17, 21,
27, 65, 71–73, 75–77, 82,
86, 96
103 Nagar, McGovern8
18, 19, 83, 84 103 Nagar, Vossen9
5, 20, 64, 70, 85 103 Nagar, Denning10

G. Testimonial Evidence
In each proceeding, Petitioner relies on a declaration by Jon B.
Weissman, Ph.D. (Ex. 1002; IPR2019-00608, Ex. 1002) and Patent Owner
relies on a declaration by Jose Luis Melendez, Ph.D. (Ex. 2001; IPR2019-
00608, Ex. 2001).
II. ANALYSIS
A. Principles of Law
To prevail on its challenge to Patent Owner's claims, Petitioner must
demonstrate by a preponderance of the evidence that the claims are
unpatentable. 35 U.S.C. § 316(e) (2012); 37 C.F.R. § 42.1(d) (2018). The
petitioner “has the burden from the onset to show with particularity why the
patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815
F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring

7 Petitioner presents the same Nagar based anticipation and obviousness
arguments for independent claims 1, 62, and 66 in both IPR2019-00607 and
IPR2019-00608. See IPR608-Pet.19 n.3.
8 US Patent Publication No. 2005/0097260 A1 (Ex. 1006 “McGovern”)..
9 US 6,026,402 (Ex. 1007, “Vossen”).
10 Dorothy Elizabeth Robling Denning, CRYPTOGRAPHY AND DATA
SECURITY, (1982) (Ex. 1013, “Denning”).
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inter partes review petitions to identify “with particularity . . . the evidence
that supports the grounds for the challenge to each claim”)). This burden
never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l
Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing
Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008))
(discussing the burden of proof in inter partes review).
To establish anticipation, each and every element in a claim, arranged
as recited in the claim, must be found in a single prior art reference. Net
MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008);
Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
2001). Each element of the challenged claim must be found, either
expressly or inherently, in the single prior art reference. Verdegaal Bros.,
Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). While the
elements must be arranged or combined in the same way as in the claim,
“the reference need not satisfy an ipsissimis verbis test,” i.e., identity of
terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir.
2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Thus, the dispositive
question is whether one skilled in the art would reasonably understand or
infer from a prior art reference that every claim element is disclosed in that
reference. Eli Lilly v. Los Angeles Biomedical Research Inst. at Harbor–
UCLA Med. Ctr., 849 F.3d 1073, 1074–75 (Fed. Cir. 2017). Still further, “it
is proper to take into account not only specific teachings of the reference but
also the inferences which one skilled in the art would reasonably be
expected to draw therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968).
A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
differences between the claimed subject matter and the prior art are such that
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the subject matter, as a whole, would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
(3) the level of ordinary skill in the art; and (4) any secondary
considerations, if in evidence.11 Graham v. John Deere Co., 383 U.S. 1,
17–18 (1966).
B. Level of Ordinary Skill in the Art
Petitioner contends a person of ordinary skill at the time of the
invention of the ’243 patent (a “POSITA”) “would have held either a
bachelor’s degree in computer engineering or computer science with two
years of experience in the field of data storage management or a master’s
degree in either discipline with an emphasis on data storage
management.” Pet. 9 (citing Ex. 1002 ¶ 35).
In its Patent Owner Response, Patent Owner provides a slightly
different definition from that proposed by Petitioner, stating “a POSITA
should have a bachelor’s degree in electrical engineering, computer science,
or equivalent with two years or more of experience in computing systems
development; a master’s degree in electrical engineering, computer science,
or equivalent; or comparable computing systems work experience.” PO
Resp. 11–12 (citing Ex. 2001 ¶ 35). Patent Owner’ declarant, Dr. Melendez,
also provides a slightly different definition, stating that a POSITA may also

11 Patent Owner does not present any objective evidence of nonobviousness
(i.e., secondary considerations) as to any of the challenged claims.
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have a degree in electronics engineering or applied mathematics. See, e.g.,
Ex. 2001 ¶ 35.
Thus, the parties dispute whether a POSITA must have a degree in
computer science/engineering or whether a POSITA could instead have a
degree in electrical engineering (or a degree in electronics engineering or
applied mathematics as asserted by Dr. Melendez) as well as whether the
POSITA’s experience must be in data storage management or could
encompass experience in the field of computing systems development.
Although the parties articulate different levels of skill for a POSITA,
neither party explains how its recited level of skill impacts the obviousness
analysis such that application of one proposal versus the other would lead to
different ultimate outcomes.
Rather, both parties contend that the other party’s declarant is not a
person of ordinary skill in the art. Petitioner contends Patent Owner’s
expert, Dr. Melendez, does not have experience in the relevant field of data
storage management and that Patent Owner has not demonstrated that
Dr. Melendez is one of ordinary skill, let alone an expert in the field of data
storage management. Reply 5–6, 23–25. Patent Owner contends
Petitioner’s expert, Dr. Weissman, is “a person with a high degree of
expertise in the art rather than ordinary skill” and that “Dr. Weissman’s
opinions of what a person of ordinary skill would think should accordingly
not be relied upon, because there is no way to ascertain if that opinion would
remain his opinion if the skill was actually ordinary.” PO Sur-reply 10.
Based on the record before us, including the types of problems and
solutions described in the ’243 patent and the cited prior art, we determine
that a person of ordinary skill in the art would have had a bachelor’s degree
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in a technical field such as computer engineering, computer science,
electrical engineering, electronics engineering, applied mathematics, or their
equivalent, with two years of experience in the field of computing systems
development, including fields of data storage management or file storage
and manipulation; a master’s degree in such a technical field; or comparable
computing systems work experience. We further note that our analysis
would be the same under either parties’ or Dr. Melendez’s definition.
Regarding the parties’ arguments that the other party’s expert is not a
person of ordinary skill in the art, the law does not require that a declarant
must actually be a person of ordinary skill in the art in order to present
testimony as to what a person of ordinary skill in the art would have
understood at the time of the invention. See, e.g., SEB S.A. v. Montgomery
Ward & Co. Inc., 594 F.3d 1360, 1373 (Fed. Cir. 2010) (stating there is no
requirement of a perfect match between an expert’s experience and the field
of the art in question, provided the expert has “sufficient relevant technical
experience” to testify). The Federal Circuit has explained that a person of
ordinary skill in the art is a “hypothetical person postulated by § 103” that is
“presumed to have . . . knowledge of all material prior art.” Kimberly-Clark
Corp. v. Johnson & Johnson, 745 F.2d 1437, 1452–53 (Fed. Cir. 1984); see
also id. at 1454 (“It should be clear that that hypothetical person [of ordinary
skill in the art] is not the inventor, but an imaginary being possessing
‘ordinary skill in the art’ created by Congress to provide a standard of
patentability . . . .”).
Thus, the proper question to ask is not whether the testifying witness
is in fact such a “hypothetical person,” but rather whether the testifying
witness possesses sufficient qualifications to be able to testify as to what the
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hypothetical person of ordinary skill in the art postulated by § 103 would
have known and understood at the time of the invention.
We determine both declarants have sufficient qualifications to be able
to testify as to what the hypothetical person of ordinary skill in the art would
have known and understood at the time of the invention.12 We disagree with
Patent Owner that we should accord little or no weight to Dr. Weissman’s
opinions because it cannot be determined which opinions are offered are a
result of Dr. Weissman’s allegedly unusually high level of expertise. See,
e.g., PO Sur-reply 10. Dr. Weissman testified that he considered the level of
skill when rendering his opinion. See, e.g., Ex. 1002 ¶¶ 29–31, 35–36.
We also disagree with Petitioner that Dr. Melendez lacks sufficient
experience in data storage management such that his testimony should be
accorded little to no weight. See, e.g., Reply 5–6, 23–25. Dr. Melendez
holds a Doctor of Philosophy in Electrical Engineering from Stanford
University and a Master of Science in Electrical Engineering and Computer
Science as well as a Bachelor of Science in Electrical Engineering from
Massachusetts Institute of Technology. Ex. 2001 ¶ 19. Dr. Melendez is
currently a Professor of Computer Science and Engineering at the University
of Puerto Rico at Mayagüez, where he develops and teaches courses and
defines and conducts research related to computer science. Id. ¶ 18.
Additionally, Patent Owner explains that Dr. Melendez specifically worked
on data storage systems including while working at Texas Instruments
(1999-2001). See PO Sur-reply 22 (citing Ex. 2001 ¶ 22). As such, we find
Dr. Melendez has sufficient qualifications to be able to testify as to what the

12 As noted above, the obviousness analysis would be same under all
proposed definitions of a POSITA.
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hypothetical person of ordinary skill in the art would have known and
understood at the time of the invention.
C. Claim Interpretation
In an inter partes review filed after November 13, 2018, such as here,
we construe the claims using the same “claim construction standard that
would be used to construe the claim in a civil action under 35 U.S.C.
§ 282(b).” See Changes to the Claim Construction Standard for Interpreting
Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83
Fed. Reg. 51,340, 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R.
§ 42.100(b) effective November 13, 2018) (now codified at 37 C.F.R.
§ 42.100(b) (2019)). Under this standard, claim terms are given their
ordinary and customary meaning as would have been understood by a person
of ordinary skill in the art at the time of the invention and in the context of
the entire patent disclosure. Philips v. AWH Corp., 415 F.3d 1303, 1312–14
(Fed. Cir. 2005) (en banc). If the specification “reveal[s] a special
definition given to a claim term by the patentee that differs from the
meaning it would otherwise possess[,] . . . the inventor’s lexicography
governs.” Id. at 1316 (Fed. Cir. 2005). We construe the claims in
accordance with these principles.
1. “associating, by the at least one computer processor, the computer file
system operation access privilege with at least a portion of the computer
storage medium”
Although both parties assert that none of the claim terms needs to be
expressly construed (see Pet. 9; PO Resp. 13), the parties dispute the
meaning of the “associating” step recited in claim element 1[b]
(i.e., “associating, by the at least one computer processor, the computer file
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system operation access privilege with at least a portion of the computer
storage medium”) and similarly recited in independent claims 62 and 66.
Patent Owner argues that the associating step requires that “the
storage medium itself maintains its associated operation access privileges—
independent of the computer” such that “the associated privileges follow the
medium when it is used on other computers.” PO Resp. 17–19 (citing
Ex. 1001, 15:64–16:7, Fig. 6; Ex. 2001 ¶¶ 41, 43). Patent Owner further
contends that “[p]rivileges associated with the medium within the ’243
patent are persistent, and would necessarily follow the medium from where
they may be loaded when mounted.” PO Sur-reply 4. Patent Owner also
contends the ’243 patent teaches that “the operation access privileges are
associated with the mounted storage medium and not with the computer’s
programs and executing processes.” PO Resp. 4–5 (citing Ex. 1001, 15:64–
16:7; Ex. 2001 ¶ 37). During oral argument, Patent Owner stated that the
purpose of the invention is to have a “persistent association of” “operation
access privileges” “with a particular storage medium” and that “the only
embodiment of association” depicted in the ’243 patent states the “storage
medium may have stored thereon data relating to access privileges for the
storage medium.” Tr. 32:6–17.
Thus, Patent Owner contends the operation access privileges must be
stored or maintained on the storage medium so that the privileges are
“persistent” and therefore would follow the storage medium, such that they
may be loaded from the storage medium when the storage medium is
mounted.
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Petitioner responds that Patent Owner is attempting improperly to
read limitations from a preferred embodiment into the claims. See Reply 2–
4.
We agree with Petitioner.
The plain and ordinary meaning of the phrase “associating, by [a]
computer processor, the computer file system operation access privilege
with at least a portion of the computer storage medium” does not mean that
the access privilege must be stored or maintained on the computer storage
medium or that the access privileges associated with the storage medium are
persistent and would necessarily follow the storage medium from where
they may be loaded when the storage medium is mounted. The plain and
ordinary meaning of “associating” does not require “storing” or
“maintaining.” The independent claims do not recite “store” or “maintain”
or otherwise indicate that the access privilege must be stored on the
computer storage medium or otherwise persistently maintained on the
computer storage medium even if the medium is dismounted from a
computer, as proposed by Patent Owner.
Moreover, Patent Owner’s construction––requiring that the “storage
medium itself maintains its associated operation access privileges––
independent of the computer” (PO Resp. 18–19)––is inconsistent with the
claim language itself, which requires the computer processor to associate the
access privilege with the storage medium. See Ex. 3002, 1 (stating
“associating, by the at least one computer processor, the computer file
system operation access privilege with at least a portion of the computer
storage medium”). Thus, the plain meaning of a claim term that requires the
association of an operation access privilege with a storage medium by a
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computer processor is not that the storage medium must maintain its
associated operation access privileges independent of the computer
processor.
Nor does the specification clearly set forth or otherwise support the
definition of the “associating” term proposed by Patent Owner. Patent
Owner cites to the disclosure of the ’243 patent pertaining to Figure 6, which
is reproduced below. See, e.g., PO Resp. 4–5, 17–19; PO Sur-reply 4–5.

Figure 6 of the ’243 patent, reproduced above, is “a simplified flow diagram
of a method of providing software settable access privileges within
Windows NT®.” Ex. 1001, 8:57–59. Patent Owner cites to the following
description of Figure 6:
In exemplary step 608, upon mounting the storage medium, the
data relating to access privileges for the storage medium may
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be loaded into the trap layer 304. The trap layer 304 may limit
operations performed on the storage medium to those supported
by the read/write device by limiting the requests passed onto the
file system layer 310 or, when the trap layer 304 forms part of
the file system layer 310, by filtering and/or modifying the
requests. The data relating to access privileges for the storage
medium may be used to limit those requests provided to the file
system layer 310.
See, e.g., PO Resp. 19 (citing Ex. 1001, 15:64–16:7 (emphasis added in PO
Resp.)). Patent Owner contends that this passage “clearly establishes that
the storage medium has associated operation access privileges––independent
of the computer mounting the storage medium.” Id.
Patent Owner, however, has not sufficiently explained how the cited
passage supports its proposed claim construction of the associating step as
the cited passage does not equate “associating” with either “storing” or
“maintaining.” Indeed, the term “associating” is not recited in this
paragraph.
Furthermore, the cited passage of the ’243 patent specification relates
to a preferred embodiment of the invention. See Ex. 1001, 15:54–56 (stating
Fig. 6 depicts “an exemplary method of providing software settable access
privileges within Windows NR®”). It is improper to read limitations from
preferred embodiments described in the specification into the claims absent
a clear indication in the intrinsic record that the patentee intended the claims
to be so limited. See Superguide Corp. v. DirecTV Enterprises, Inc., 358
F.3d 870, 875 (Fed. Cir. 2004) (stating “a particular embodiment appearing
in the written description may not be read into a claim when the claim
language is broader than the embodiment”).
Patent Owner argues the cited portion of the specification should limit
the claims because there is no other disclosure in the intrinsic record for the
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association between the access privilege and medium. PO Sur-reply 4–56;
see also Tr. 32:6–12 (stating “the purpose of the invention is to have a
persistent association of . . . operation access privileges . . . with a particular
storage medium. And that is the only embodiment of association that’s
depicted in the patent.”). We disagree with this argument because the
passage does not indicate that the disclosed exemplary method is the only
method for providing access privileges to the system. See Ex. 1001, 15:54–
56 (stating that Figure 6 is only “an exemplary method of providing software
settable access privileges within Windows NR®”).
For these reasons, we do not agree with Patent Owner that
“associating, by the at least one computer processor, the computer file
system operation access privilege with at least a portion of the computer
storage medium” requires that “the storage medium itself maintains its
associated operation access privileges––independent of the computer” or
that “the storage medium has associated operation access privileges––
independent of the computer mounting the storage medium” or that
operation access privileges are “persistent” so that they necessarily follow
the medium from where they may be loaded when mounted. See PO Resp.
16–19; PO Sur-reply 3–6.
No further construction of this phrase is necessary to resolve the
issues in dispute. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean
Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe
terms ‘that are in controversy, and only to the extent necessary to resolve the
controversy’.” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
F.3d 795, 803 (Fed. Cir. 1999))). To the extent we find it necessary to
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address the meaning of any other claim terms, we do so in the context of our
unpatentability analysis.
D. Asserted Art
1. Nagar (Ex. 1005)
Nagar is a developer’s guide for the Windows NT operating system
that is useful to those who design or implement “kernel-mode software, such
as file system or device drivers.” Ex. 1005, 12.13 Petitioner argues that
Nagar was published in 1997, and therefore qualifies as prior art under
35 U.S.C. § 102(a). Pet. 8 (citing Ex. 1014; Exs. 1001, 1004, 1015, 1016,
1018–1020); see also Inst. Dec. 8–9 (determining that Petitioner sufficiently
established Nagar qualifies as a printed publication for purposes of
institution). Patent Owner does not challenge the prior art status of Nagar.
See generally PO Resp. We are persuaded that Petitioner has shown that
Nagar qualifies as prior art under 35 U.S.C. § 102(a).
Nagar states that a “filter driver is an intermediate driver that
intercepts requests targeted to some existing software module (e.g., the file
system or a disk driver).” Ex. 1005, 51. “By intercepting the request before
it reaches its intended target, the filter driver has the opportunity to either
extend, or simply replace, the functionality provided by the original recipient
of the request.” Id. Nagar states that someone who wanted to design
software that could encrypt user data before the data is stored on a disk and
decrypt the data before it is given back to the user could do so by designing
a filter driver. Id. at 52. Such a filter driver that intercepts requests above

13 Exhibit 1005 includes original page numbers and sequential exhibit page
numbers added by Petitioner. This Decision refers to the sequential exhibit
page numbers.
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the file system would allow the “code to intercept the user request before the
file system driver ever gets the opportunity to see it.” Id. A filter driver that
intercepts request below the file system would allow the driver to perform
any required processing after the file system has finished its task but before
the request is received by a disk driver. Id. Nagar Figure 2-6, reproduced
below, illustrates two places where such filter driver software could be
inserted. Id.

Figure 2-6 above shows that filter drivers can be “stacked virtually
anywhere in the driver hierarchy” and that they can be “inserted easily into
the driver hierarchy because the Windows NT I/O system uses a layered
driver approach.” Id. at 53.
Nagar also states that filter drivers can be used to “provide virus
detection functionality.” Id. at 498–499. The filter driver can have a “virus-
detection module” that intercepts I/O requests before they reach the file
system. Id. at 499. The virus-detection module can check for any virus
signatures in the data being written out to the disk. Id. Read requests can be
immediately forwarded from the filter driver to the file system. With respect
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to a write request, if a virus signature is detected, the filter driver can reject
the write request. Id. If no virus signature is detected, however, the filter
driver can safely forward the I/O Request Packet (“IRP”) to the file system
for further processing. Id.
Figure 12-2 of Nagar, reproduced below, “illustrates how a filter
driver that layers itself above a mounted logical volume device object
managed by a file system driver can perform the virus detection
functionality.” Id. at 498.

Figure 12-2 above illustrates a filter driver inserted as a layer between
the I/O Manager layer and the File System Driver, wherein the filter driver
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intercepts file system requests and processes data to check for known virus
signatures. See id. at 498–499.
2. Kung (Ex. 1008)
Kung is a U.S. Patent titled “Secure File Erasure” directed to
“methods of deleting (erasing) files stored on permanent storage media of a
computer system that eliminates the possibility of recovery of the data as a
readable file by unauthorized persons.” Ex. 1008, 1:6–10. Kung discloses
known techniques for such a secure erasure in which 0’s and 1’s are
overwritten on the data to be erased. Id. at 1:24–29. Kung also discloses a
technique of encrypting all data to be deleted so that the erased data is
unreadable even if recovered. Id. at 3:18–62.
3. McGovern (Ex. 1006)
McGovern is a U.S. Patent Application Publication titled “System and
method for record retention date in a write once read many [WORM] storage
system” and describes a WORM system that stores files with a “specified
retention date” to protect them “against deletion or modification.” Ex. 1006,
codes (54), (57), ¶ 20. Setting the retention date causes the system to
observe “WORM properties” (no deletion, no modification, etc.) for the
WORM file “during the applicable retention period.” Id. ¶ 119. “[A]fter
expiration of the period,” the system “allows the user to perform a limited
set of non-WORM actions on the now-expired WORM file,” such as
deletion. Id
4. Vossen (Ex. 1007)
Vossen is a U.S. Patent titled “Process restriction within file system
hierarchies” and describes “a method and apparatus for restricting a process
or process hierarchy to a subset of a computer host’s file system(s) in an
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environment where all file systems are simultaneously available to an
application.” Ex. 1007, codes (54), (57). Vossen teaches “modify[ing] the
usual operation of the host computer’s operating system interface such that
any file system access attempts by the affected process are constrained to
occur logically within the restriction domain.” Id. at 2:27–30. Vossen
teaches that Windows NT supports external devices via loadable device
drivers and that the operating system kernel delivers one of a large set of
requests to the driver in a I/O Request Packet (or IRP) when a process
requests some service of the device. Id. at 4:24–30.
Vossen further teaches that it is possible to add layers above file
system drivers called intermediate drivers. Id. at 4:57–58. An intermediate
driver is “known as a file system filter driver since its usual task is to filter
the requests delivered to the underlying file system driver.” Id. at 4:58–61.
“A filter driver will typically examine the IRP provided by the kernel and
make modifications (according to the function of the specific driver) before
passing it along to the actual file system driver.” Id. at 4:61–64. Vossen
further discloses that one example of such a filter driver is a process
restriction filter driver, such as that shown below in Vossen Figure 6. Id. at
4:64–67.
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Figure 6 of Vossen, above, depicts an NT system configuration
including a process restriction filter driver. Id. at 2:59–60. “[T]he process
restriction filter operates by examining all IRPs containing path names sent
to each file system it restricts.” Id. at 9:65–67. “For each IRP received, the
filter driver determines if the process that initiated the I/O request should be
subject to file system restrictions.” Id. at 10:6–8. The process restriction
filter modifies restricted IRPs before passing them to the driver that resides
below it. Id. at 11:1–3.
5. Denning (Ex. 1013)
Denning is non-patent literature (a book) intended for graduate level
computer science courses concerning cryptography and data security.
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Ex. 1013, 5–6.14 Petitioner argues that Denning was published in 1982, and
therefore qualifies as prior art under at least 35 U.S.C. § 102(b). IPR608-
Pet. 11–13 (citing Ex. 1014 ¶¶ 11–13, 20–24: Exs. 1017, 1023); see also
IPR608-Inst. Dec. 8–9 (preliminarily determining that Petitioner sufficiently
established Denning qualifies as a printed publication for purposes of
institution). Patent Owner does not challenge the prior art status of Denning.
See generally PO Resp. We are persuaded that Petitioner has shown that
Denning qualifies as prior art under 35 U.S.C. § 102(b).
Chapter 4 of Denning deals with access controls and, in particular,
teaches that “[b]y regulating the reading, changing, and deletion of data and
programs, access controls protect against accidental and malicious threats to
secrecy, authenticity, and system availability.” Ex. 1013, 69. Denning
further teaches the importance of proper user identification and of protecting
“[the] information specifying the access rights of each user or program . . .
from unauthorized modification.” Id. Denning additionally notes the
difference between “policy and mechanism,” explaining that “[a]n access
control policy specifies the authorized accesses of a system; an access
control mechanism implements or enforces the policy.” Id. (emphases
omitted).
E. Independent Claims 1, 62, and 66 – Nagar
Petitioner asserts independent claims 1, 62, and 66 of the ’243 patent
are unpatentable under 35 U.S.C. §§ 102, 103(a) over the teachings of

14 Exhibit 1013 includes the original page numbers of Denning as well as
sequential exhibit page numbers added by Petitioner in a footer of each page.
This Decision refers to the sequential exhibit page numbers added to Exhibit
1013.
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Nagar. See Pet. 16–22, 49–52; IPR6008-Pet. 19–35.15 Patent Owner
opposes. See PO Resp. 16–20. For the reasons set forth below, we
determine Petitioner has shown by a preponderance that claims 1, 62, and 66
are unpatentable under 35 U.S.C. §§ 102, 103(a) over Nagar.
1. Independent Claim 1
a) Preamble and claim element 1[b]
The preamble (claim element 1[a]) and claim element 1[b] recite:
1. [a] A computer implemented method for applying, by at least
one computer processor, a computer file system operation access
privilege to a computer storage medium, comprises:
[b] associating, by the at least one computer processor, the
computer file system operation access privilege with at
least a portion of the computer storage medium;
Ex. 3002, 1.
Petitioner contends Nagar’s disclosure of a “virus-detecting filter
driver” for the Windows NT operating system that distinguishes between
different types of access operations such as “read” or “write” I/O requests
(computer file access privileges) acting on logical volumes (a computer
storage medium) teaches the method of claim 1. Pet. 16–17 (citing
Ex. 1005, 21, 40, 498–499; Ex. 1002 ¶¶ 47–48). Petitioner explains that
when the operation is a “write” request, Nagar’s filter driver checks for
viruses (i.e., “attempts to detect viruses in the request”) and rejects the write
request if a virus is found as “operations containing viruses do not have

15 Petitioner presents the same Nagar based anticipation and obviousness
arguments in both IPR2019-00607 and IPR2019-00608. See IPR2019-
00608, 19 n.3. Although this Decision cites to the parties’ arguments set
forth in IPR2019-00607, similar arguments were made in IPR2019-00608.
See IPR608-Pet. 19–35; IPR608-PO Resp.16–19; IPR608-Reply 1–9;
IPR608-PO Sur-reply 1–10.
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writing privileges to the volume.” Id. (citing Ex. 1005, 499). If the request
is free of virus signatures, however, the filter driver forwards the request to
the file system. Id. (citing Ex. 1005, 499; Ex. 1002 ¶ 48). Petitioner further
contends that Nagar’s virus-detecting filter driver, which comprises the
operation access privilege, associates the claimed access privilege to the
computer storage medium by attaching itself to the logical volumes
(computer storage medium), satisfying the limitations of claim element 1[b].
Pet. 17–18 (citing Ex. 1005, 159).
Patent Owner makes a number of arguments as to why Nagar does not
disclose all of the recitations in claim elements 1[a] and [b].
“Associating” the Access Privilege with a Portion of the Storage Medium
First, Patent Owner contends Nagar does not teach the “associating”
step of claim element 1[b] because the associating step requires the storage
medium itself to maintain its associated operation access privileges––
independent of the computer. See PO Resp. 16–19; PO Sur-reply 3–10.
Patent Owner argues that if Nagar’s logical storage medium were
dismounted or mounted on a different NT system that did not have the virus-
checking software, the logical storage medium would not be subject to virus
checking as the virus checking permissions are always only associated with
the computer and not the medium itself. PO Resp. 18 (citing Ex. 1005, 498–
499; Ex. 1002 ¶ 42).
This argument is not persuasive as it is based upon a construction of
“associating” that we do not adopt. As explained in Section II.C.1 above,
we do not agree with Patent Owner that “associating, by the at least one
computer processor, the computer file system operation access privilege
with at least a portion of the computer storage medium” recited in claim 1
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requires that “the storage medium itself maintains its associated operation
access privileges––independent of the computer” or that “the storage
medium has associated operation access privileges––independent of the
computer mounting the storage medium” or that operation access privileges
are “persistent” so that they necessarily follow the medium from where they
may be loaded when mounted.
We agree with Petitioner that Nagar teaches associating an operation
access privilege with at least a portion of the storage medium by teaching
that Nagar’s virus-checking filter driver, which checks for read/write
requests (i.e., operation access privileges), layers, or attaches, itself to the
device object representing the mounted logical volume (the storage
medium). See Pet. 16–18 (citing Ex. 1005, 159, 498–499, 506; Ex. 1002
¶¶ 47–48). In particular, Nagar discloses that “a filter driver that layers itself
above a mounted logical volume device object managed by a file system
driver can perform the virus detection functionality.” Ex. 1005, 498. Nagar
also explains that filter drivers “intercept I/O requests targeted to certain
device objects by interjecting themselves into the driver hierarchy and by
attaching themselves to the target device objects.” Ex. 1005, 159 (emphasis
added).
Operation Access Privilege
Patent Owner also argues Nagar does not teach the claimed “operation
access privilege” because Nagar’s read and write access privileges are based
on the content of data (content-based access privileges) to be written to the
storage medium, such as whether the data contain viruses, and are not based
on the attempted operation (operation-based access privileges). See PO
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Sur-reply 1–3 (citing PO Resp. 17–19).16 In particular, Patent Owner
contends that Nagar’s virus-detection software checks the content of both
read and write operations for viruses and allows or denies those operations
based on the presence or absence of a virus. Id. at 2. Patent Owner contends
that, in contrast, the ’243 patent applies “the operation access to the storage
medium itself” by “considering whether the storage medium supports the
operation at issue.” Id. at 3 (citing Ex. 1001, 5:12–6:37).
We disagree with Patent Owner. The ’243 patent states that
exemplary “operation access privileges” include: “read, write, execute,
move, rename, append, change permissions, change attributes, overwrite
and/or overwrite zero length.” Ex. 1001, 4:63–67 (emphasis added); see
also id. at 4:54–56 (stating in an “exemplary aspect of the invention, the
method may include where the operation access privilege is a read-only for
the logical storage medium”). Petitioner argues, and we agree that Nagar
expressly discloses two operation access privileges identified in the ’243
patent––read and write. Ex. 1005, 498–499.
Mounted Logical Volume
Patent Owner argues that Nagar does not teach associating an
operation access privilege with a storage medium because Nagar’s virus-
detecting filter driver “has to create a device object that layers (or attaches)
itself to the device object representing the mounted logical volume” and

16 Although Patent Owner cites to pages 17–19 of its Patent Owner
Response for this argument, these pages of the Response relate to Patent
Owner’s argument that the ’243 patent requires the storage medium itself to
maintain the access privileges independent of the computer and not to an
argument that Nagar’s access privileges are not operation based access
privileges.
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therefore “the device object is only a representation of a mounted logical
volume and not the actual storage medium itself.” PO Resp. 19 n.1 (quoting
Ex. 1005, 499; citing Ex. 2001 ¶ 44). Patent Owner contends that a person
of ordinary skill in the art “would not understand a representation of a
mounted logical volume (portion of a storage medium) to be the same as the
actual storage medium.” Id. (citing Ex. 2001 ¶ 44).
We disagree with Patent Owner’s argument because the claims
require “associating . . . the computer file system operation access privilege
with . . . a portion of the computer storage medium” and do not require that
the access privileges be stored on the computer storage medium itself. See
supra Section II.C.1. We agree with Petitioner’s assertion that “associating
with a computer storage medium is achieved by attaching to a device object,
because a computer views the storage medium as a device object.” Reply 8
(citing Ex. 1005, 155–156). Nagar explains that “[d]evice object structures
are created by kernel-mode drivers to represent logical, virtual, or physical
devices. For example, a physical device, such as a disk drive, is represented
in memory by a device object.” Ex. 1005, 155–156. Nagar further explains
that, “if you develop a disk driver and do not create a device object structure
representing this particular disk device, no user process can access this
disk.” Id. at 156. Dr. Weissman persuasively explains that a person skilled
in the art would have appreciated that the privileges for operations on a file
or directory––a portion of the storage medium––are associated with those
target file/directory objects. See Ex. 1002 ¶ 174; see also Reply 8.
Additionally, the ’243 patent states that “a storage medium [is] within
the file system layer 310 of the system” thus indicating that an actual storage
medium is managed via its logical representation in the file system. See
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Ex. 1001, 15:31–32; Reply 8. Thus, we agree with Petitioner’s assertion that
“associating with a computer storage medium is achieved by attaching to a
device object, because a computer views the storage medium as a device
object.” Reply 8 (citing Ex. 1005, 155–156).
In its Sur-reply, Patent Owner also argues that Petitioner’s reliance on
a logical storage medium in Nagar fails because the claim recites a “storage
medium” and a logical storage medium is not a storage medium. See PO
Sur-reply 7–10; see also id. at 9 (stating independent claims 1, 62, and 66 do
not “associate operation access privileges with a ‘logical’ storage medium,
but instead with a ‘storage medium’”). The ’243 patent, however, states
that, “[a]ccording to an exemplary aspect of the present invention, the
method may include wherein the storage medium is a logical storage
medium.” Ex. 1001, 4:26–28. Thus, the specification of the ’243 patent
shows that a logical storage medium is considered a storage medium, and the
claims do not prohibit the use of a logical storage medium. As such, we
disagree with Patent Owner’s argument that Petitioner’s reliance on a logical
storage medium in the prior art fails to show a storage medium.
b) Remaining Undisputed Subject Matter of Claim 1
Petitioner asserts Nagar discloses the remaining limitations of claim 1.
See Pet. 16–22. Other than the arguments already discussed above, Patent
Owner does not separately argue the patentability of claim 1 based on these
remaining limitations. See generally PO Resp.; PO Sur-reply. We have
reviewed Petitioner’s argument and evidence and agree that Nagar discloses
the remaining limitations of claim 1.
For example, Petitioner asserts, and we agree, that Nagar’s disclosure
of a filter driver that intercepts all I/O requests to the logical volume
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discloses the intercepting step of claim element 1[c], which recites
“intercepting . . . by at least one computer file system trap layer or at least
one file system filter layer, an attempted operation on said at least a portion
of the computer storage medium.” Pet. 18–19 (citing Ex. 1005, 496, 498–
499, Fig. 12-2; Ex. 1002 ¶¶ 50–51); Ex. 3001, 1. Petitioner also asserts, and
we agree, that Nagar discloses “wherein said intercepting occurs regardless
of an identity of a user attempting the attempted operation” recited in claim
element 1[d] because Nagar discloses intercepting all I/O requests, including
read and write requests, without regard to the identify of a user attempting a
particular operation. Pet. 20 (citing Ex. 1005, 18, 134, 195, 498–499;
Ex. 1002 ¶¶ 52–56).
Petitioner also asserts, and we agree, that Nagar discloses the
comparing step of claim element 1[e] (“comparing, by the at least one
computer processor, the attempted operation to the computer file system
operation access privilege”) and the allowing or denying step of claim
element [f] (“allowing, or denying, by the at least one computer processor,
the attempted operation based on the comparing the attempted operation to
the computer file system operation access privilege”) by disclosing that the
filter driver checks the access privileges associated with the I/O requests
(i.e., a read or write request) and (1) in the case of a read request, allows the
operation (by forwarding the request to the file system driver), and (2) in the
case of a write request, checks for viruses and either allows the write if no
virus is detected or rejects the write if a virus is detected. See Pet. 20–22
(citing Ex. 1009, 498–499; Ex. 1002 ¶¶ 57–59).
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c) Conclusion
For the reasons discussed above, we find that Nagar describes the
subject matter recited in claim 1, and, therefore, Petitioner has proven by a
preponderance of the evidence that claim 1 of the ’243 patent is unpatentable
under 35 U.S.C. §§ 102, 103 over Nagar. See Realtime Data, LLC v. Iancu,
912 F.3d 1368, 1373 (Fed. Cir. 2019) (“[I]t is well settled that ‘a disclosure
that anticipates under § 102 also renders the claim invalid under § 103, for
‘anticipation is the epitome of obviousness.’”).
2. Independent Claims 62 and 66
Petitioner asserts claims 62 and 66 are substantially similar to claim 1
and that Nagar anticipates or renders obvious claims 62 and 66 for the same
reasons set forth with respect to claim 1. Pet. 49–51, 51–52; Ex. 1001,
46:14–16, 46:63–67; Ex. 3002. Patent Owner relies on the same arguments
for claims 62 or 66 as it does for claim 1. See PO Resp. 16. We have
reviewed Petitioner’s argument and evidence and determine that Petitioner
has sufficiently shown that Nagar discloses or suggests the recitations of 62
and 66.
For example, the preamble of claim 62 recites a “non-transistory
computer accessible storage medium embodied thereon computer program
product, said computer program product for applying a computer file system
operation access privilege to a computer storage medium when executed on
at least one computer processor, performing a method of.” Ex. 1001, 46:7–
13. The preamble of claim 66 recites a “data processing system configured
to apply a computer file system operation access privilege to a computer
storage medium, comprises.” Id. at 46:60–63.
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Petitioner contends, and we agree, that Nagar teaches these preambles
for the same reasons Nagar discloses the preamble of claim 1.17 See Pet. 49,
51. Petitioner persuasively explains that a POSITA would have understood
that Nagar’s virus-detecting filter driver, which is described as a “software
module,” is a “‘computer program product’ that would be embodied on a
‘non-transitory computer accessible storage medium’” as recited in the
preamble of claim 62. See id. at 49–50 (emphases omitted) (citing Ex. 1005,
51, 134–135, 497–499, Ex. 1002 ¶¶ 117–118). Petitioner also asserts that a
POSITA would have understood that Nagar’s methods are computer
implemented by one or more computer processors in a data processing
system containing a computer storage medium, and are applicable to
computer file systems, as recited in the preamble of claim 66. Id. at 51
(citing Ex. 1002 ¶ 130).
We agree with Petitioner that the remaining elements of claims 62 and
66, which are similar to elements recited in claim 1, are taught by Nagar for
the same reasons set forth in connection with claim 1. See Pet. 50–52.
Thus, Petitioner has shown by a preponderance of the evidence that
independent claims 62 and 66 are unpatentable under 35 U.S.C.
§§ 102, 103(a) over Nagar.
F. Claims 2, 3, 63, 67, and 68 – Nagar
Petitioner asserts dependent claims 2, 3, 63, 67, and 68 of the ’243
patent are unpatentable under 35 U.S.C. §§ 102, 103(a) over the teachings of
Nagar. See Pet. 22–26, 51–52; Reply 9–11. Patent Owner opposes. See PO

17 We do not reach the issue of whether the preambles of claims 62 and 66
are limiting as we are persuaded by Petitioner’s arguments that the
recitations in the preambles are satisfied by the prior art.
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Resp. 20–21; PO Sur-reply 11–13. For the reasons set forth below, we
determine Petitioner has shown by a preponderance that claims 2, 3, 63, 67,
and 68 are unpatentable under 35 U.S.C. §§ 102, 103(a) over Nagar.
1. Claims 2, 63, 67
Claim 2 recites:
2. The method according to claim 1 wherein said allowing or
denying, by the at least one computer processor, comprises at
least one of:
[a] allowing, or denying, by the at least one computer
processor, the attempted operation based on a content of
a logical file associated with said at a least a portion of
the computer storage medium.
Ex. 1001, 32:1–7 (bracketed material and formatting added for clarity);
Ex. 3002, 1.
Claim 63 recites:
63. The computer program product according to claim 62,
wherein said allowing or said denying of the attempted
operation of the method comprises at least one of:
[a] allowing, or denying, by the at least one computer
processor, the attempted operation based on a content of
a logical file associated with said at least a portion of the
computer storage medium;
[b] allowing, or cancelling, by the at least one computer
processor, the attempted operation based on the content
of the file; or
[c] allowing, by the at least one computer processor, a
create file operation to create a file on at least a portion
of the computer storage medium, evaluating, by the at
least one computer processor, a content of the file, and at
least one of:
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allowing, by the at least one computer processor, the
attempted operation, or
deleting, by the at least one computer processor, the file
based on said evaluating.
See Ex. 1001, 46:31–48 (bracketed material and formatting added for
clarity). Claim 67 recites similar subject matter similar to limitations recited
by claim element 63[a]. See Ex. 1001, 47:13–18.
Petitioner contends Nagar discloses the limitations of claims 2, 63,
and 67 because Nagar discloses allowing/denying a write request (the
attempted operation) based on a virus evaluation of a file to be copied to
(i.e., associated with) a mounted logical volume. See Pet. 22–25, 51–52;
Ex. 1002 ¶¶ 61–63; Reply 9–10. Petitioner asserts that both (1) the virus
signatures for the filter driver and (2) the data in the files that are being
copied and mounted onto the logical volume are “content of a logical file
associated with said at least a portion of the computer storage medium.”
Pet. 23 (citing Ex. 1005, 498-499; Ex. 1002 ¶ 61). Petitioner contends that
the virus signatures for the filter driver are content of a logical file associated
with the storage medium because the filter driver is a logical file and the
virus signatures are organized data (content) of the filter driver (logical file).
Petitioner further contends that Nagar’s filter drivers are associated with the
storage medium because Nagar teaches that the “filter driver ‘layers (or
attaches) itself to,’ i.e., is associated with, ‘the device object representing the
mounted logical volume.’” Id. (citing Ex. 1005, 159, 499); see also id.
(stating Ex. 1005, 159 describes “how filter drivers attach themselves to
logical volumes”).
Petitioner also asserts that files being copied to the mounted logical
volume are logical files and that the files are associated with storage
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medium because they are being copied to the storage medium. See id. at 23–
24 (citing Ex. 1005, 498; Ex. 1002 ¶ 63).
In response, Patent Owner contends that because Nagar does not write
the content of a file onto the storage medium until after it determines the file
does not contain a virus, Nagar does not teach allowing an operation based
on the content of a logical file associated with the storage medium. See PO
Resp. 20–21 (citing Ex. 2001 ¶ 47); see also id. at 20 (stating “[b]ecause
Nagar does not create a file on the computer storage medium without at least
first evaluating the content, even if such content were in a logical file not on
the storage medium, there is no ‘content of a logical file associated with said
at least a portion of the computer storage medium’ because there is nothing
written in Nagar onto the storage medium unless no virus signature is
detected”). Thus, Patent Owner contends there must be a file created on or
written onto the storage medium for there to be a logical file “associated
with” the storage medium.
For the following reasons, we are not persuaded by Patent Owner’s
argument, and we determine Nagar discloses the limitations of claims 2, 63,
and 67.
First, Patent Owner’s arguments do not address why the virus
signatures of the filter driver that are attached to the storage medium are not
logical files associated with the storage medium. As asserted by Petitioner,
we determine that Nagar teaches allowing or denying an operation based on
evaluating the virus signatures.
Second, we disagree with Patent Owner’s contention that the logical
file must be created on or written onto on the storage medium in order for
the file to be “associated” with the storage medium. See PO Resp. 20–21;
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Sur-reply 11. As explained supra in § II.C.1, in connection with the phrase
of claim element 1[b] which requires associating an operation access
privilege with the storage medium, the plain meaning of the term
“associating” with does not require “written on” or created on. Similarly, a
logical file need not be created on or written onto a storage medium in order
to be associated with a storage medium. We are persuaded by Dr.
Weissman’s testimony that a file that is being copied to a mounted logical
volume is a “logical file associated with said at least a portion of the
computer storage medium.” Ex. 1002 ¶¶ 61–63 (citing Ex. 1005, 498–499);
Pet. 23–24. Thus, Petitioner has persuasively shown that the file that is to be
written to the storage medium is associated with the storage medium.
We also agree that Nagar teaches allowing, or denying, by the at least
one computer processor, the attempted operation based on a content of a
logical file associated with said at least a portion of the computer storage
medium as recited in claim element 2[a], 63[a], and similarly recited in
claim 67. Pet. 22–25 (citing Ex. 1002 ¶¶ 61–63; Ex. 1005, 498, Fig. 12-2).
Petitioner persuasively shows that Nagar teaches allowing or denying a write
request (attempted operation) based on the content of the logical file (the
content of either the filter driver or the content of file being copied to the
storage medium) by allowing or denying the request based on whether it has
a viral signature. Id. at 24–25; see also Ex. 1001, 18:65–19:5 (stating that in
an exemplary embodiment, the trap layer determines if an operation is
eligible to be executed on a file based on the content of the file and may
determine that a file is harmful if the file is a “computer virus, malware” and
may prevent harmful files from being created). Thus, Petitioner has shown
Nagar anticipates claims 2, 63, and 67.
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Patent Owner also contends that Nagar’s failure to teach creating a
file that is associated with the storage medium is “even more glaring in the
context of claim 63, which provides for a ‘create file operation’ in the case
where there is no file already associated with the storage medium the content
of which to evaluate.” PO Sur-reply 13.
We disagree that this argument shows that claim 63 is patentable. The
“create file” operation is only found in claim element 63[c], which is one of
the Markush groups recited in claim elements 63[a]–[c]. As noted above,
Petitioner has shown that Nagar teaches the limitations of claim element
63[a].
Thus, Petitioner has shown by a preponderance of the evidence that
claims 2, 63, and 67 are unpatentable under 35 U.S.C. §§ 102, 103(a) over
Nagar.
2. Claims 3 and 68
Claim 3 depends from claim 2 and further recites:
wherein said allowing, or said denying, by the at least one
computer processor, comprises at least one of: allowing, or
cancelling, by the at least one computer processor, the
attempted operation based on the content of the file.
Ex. 1001, 32:8–13; Ex. 3002, 1. Claim 68 recites similar limitations. See
Ex. 1001, 47:19–22. Petitioner contends Nagar discloses the limitations of
claims 3 and 68 for the same reasons Nagar discloses allowing the attempted
operation based on the content of a logical file as recited in claim 2, namely
because Nagar discloses “allowing” an attempted write request if it does not
detect a virus signature in the data that is being copied to the logical volume.
Pet. 26, 52 (citing Pet. 22–25; Ex. 1002 ¶ 65). Patent Owner does not
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separately address Petitioner’s contentions as to claims 3 and 68. See
generally PO Resp.
We are persuaded by Petitioner’s contentions and evidence that Nagar
discloses the limitations of claims 3 and 68, and we determine that Petitioner
has proven by a preponderance of the evidence that claims 3 and 68 of the
’234 patent are unpatentable under 35 U.S.C. §§ 102 and 103(a) over Nagar.
G. Claims 4, 34, 69 and 103 – Nagar
Petitioner asserts dependent claims 4, 34, 69 and 103 of the ’243
patent are unpatentable under 35 U.S.C. §§ 102, 103(a) over the teachings of
Nagar. See Pet. 26–28, 51–52; Reply 11–14. Patent Owner opposes. See
PO Resp. 21–24; PO Sur-reply 13–15. For the reasons set forth below, we
determine Petitioner has not shown by a preponderance that claims 4, 34, 69
and 103 are unpatentable under 35 U.S.C. §§ 102, 103(a) over Nagar.
Claim 4 depends from claim 1 and further recites:
[a] wherein said allowing, or said denying, by the at least one
computer processor, the attempted operation comprises:
[b] allowing, by the at least one computer processor, a create file
operation to create a file on at least a portion of the computer
storage medium;
[c] evaluating, by the at least one computer processor, a content of
the file; and
[d] at least one of:
allowing, by the at least one computer processor, the
attempted operation, or
deleting, by the at least one computer processor, the file based
on said evaluating.
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Ex. 1001, 32:18–27; Ex. 3002, 2 (brackets and formatting added for clarity).
Dependent claims 34, 69, and 103 each recite similar limitations.18 See id. at
41:46–49, 47:26–30, 54:54–57.
Petitioner contends Nagar teaches these elements by teaching
allowing a write request for copying data or files (an attempted operation) to
a mounted logical volume (computer storage medium). See, e.g., Pet. 26–27
(citing Ex. 1005, 498); Ex. 1002 ¶ 67. Petitioner further contends that
Nagar’s write request allows a “create file operation” as recited in claim
element 4[b] because a file must be created in order to perform the write
operation. See Pet. 27 (citing Ex. 1005, 39, 552; Ex. 1002 ¶ 67). Petitioner
further asserts Nagar teaches the evaluating step of claim element 4[c] by
checking whether the content of the file attempted to be written to the
mounted logical volume contains a computer virus. Id. (citing Ex. 1002
¶ 68). Petitioner also contends that Nagar teaches the allowing limitations of
claim element 4[d] by allowing the attempted write operation if the data
attempted to be written into the file on the logical volume does not contain
any computer virus. Id. at 28 (citing Ex. 1002 ¶ 69).
Patent Owner responds that Nagar does not disclose the steps of
claim 4 in the order required by the claim because Nagar does not first create
a file on the storage medium as required by claim element 4[b] and then
evaluate “the content of the created file” as required by step 4[c]] and then

18 Patent Owner asserts that claim 63 also includes limitations similar to
claim 4. PO Resp. 21. However, as discussed above, the relevant feature of
a “create file” operation is one of the Markush groups recited in claim 63
which does not need to be performed to meet the limitations of the claim.
Having determined that claim 63 is unpatentable for the same reasons as
claim 2, we do not address claim 63 here.
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either allow the attempted operation or delete the file as required by step
4[d]. See PO Resp. 21–23 (citing Ex. 2001 ¶ 50); see also id. at 22 (stating
the “the allowing the attempted operation or deleting the file is based on the
evaluating of the content of the created file”) (emphasis altered). Patent
Owner contends that because Nagar evaluates the content of the file before
allowing the writing of the file to the computer storage medium (i.e.
allowing the attempted operation), Nagar does not disclose allowing the
attempted operation (step 4[d]) based on evaluating content of the file that
has already been created on the computer storage medium (step 4[c]). Id. at
22–23 (citing Pet. 28; Ex. 2001 ¶¶ 50–51; Ex. 1005, 49). Patent Owner
further argues Nagar does not teach the similar limitations recited in claims
34, 69 and 103. PO Resp. 21.
We agree with Patent Owner. The antecedent basis for “the file”
recited in claim element 4[c] is “a file on at least a portion of the storage
medium” as recited in claim element 4[b]. Thus, claim 4[c] requires
“evaluating . . . a content of the file” that is “on at least a portion of the
storage medium.” Petitioner argues that, in Nagar, the filter driver
“evaluates any data content attempted to be written to the file and allows the
attempted write operation if no virus is found in the data.” Reply 14 (citing
Ex. 1005, 498; Pet. 26–28, 34–35) (emphasis added). However, because
Nagar’s evaluation occurs on the data attempted to be written to the file on
the storage medium, the data that is evaluated is not “content of the file” that
is on the storage medium.
Petitioner also argues that a person skilled in the art would have found
it desirable to create a placeholder file without content before the write
request is allowed. See Pet. 58–61; Reply 11 (citing Ex. 1005, 497). This
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argument is not persuasive because, even if a person skilled in the art would
have created a placeholder file on the storage medium before the write
request is allowed, the placeholder file would not contain any content until
after the filter driver determines that the evaluated data is virus free. Thus,
Nagar does not teach evaluating content of a file on a computer storage
medium as required by claim 4.
For the foregoing reasons, Petitioner has not sufficiently shown that
Nagar discloses or suggests all of the limitations of claim 4, or the
limitations similarly recited in claims 34, 69 and 103. Therefore, Petitioner
has not shown by a preponderance of the evidence that claims 4, 34, 69 and
103 are unpatentable under 35 U.S.C. §§ 102, 103(a) over Nagar.
H. Claims 32, 61, 101 – Nagar
Petitioner asserts dependent claims 32, 61, and 101 of the ’243 patent
are unpatentable under 35 U.S.C. §§ 102, 103(a) over the teachings of
Nagar. See Pet. 31–33, 48–49, 52; Reply 14–17. Patent Owner opposes.
See PO Resp. 24–27; PO Sur-reply 15–18. For the reasons set forth below,
we determine Petitioner has shown by a preponderance that claims 32, 61,
and 101 are unpatentable under 35 U.S.C. §§ 102, 103(a) over Nagar.
Claim 32, which depends from claim 1, and claim 101, which depends
from claim 66, each recite “wherein said at least one computer file system
trap layer or said at least one computer file system filter layer is
implemented within a file system layer.” Ex. 1001, 41:34–36, 54:42–45.
Dependent claim 61 recites a similar element. Id. at 46:5–6.
Relying on annotated Figure 2-6 of Nagar, Petitioner contends Nagar
discloses implementing a computer file system trap layer (filter driver)
within a file system layer (annotated box below labeled “File System Layer”
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containing both the file system and disk driver) by teaching that the filter
driver can be stacked anywhere in the driver hierarchy, including below the
NTFS/FAT/CDFS layer and above the disk driver. See Pet 31–33 (citing
Ex. 1005, 53, 134, Fig. 2-6; Ex. 1002 ¶¶ 73–77). Figure 2-6 of Nagar, with
annotations provided by Petitioner, is reproduced below.

Figure 2-6 of Nagar, with color annotations by Petitioner, illustrates that
“[f]ilter drivers can be stacked virtually anywhere in the driver hierarchy.”
Ex. 1005, 53.
Patent Owner contends that because Nagar’s “file system layer”
corresponds to the NTFS/FAT/CDFS layer shown in Nagar’s Figure 2-6,
and because Nagar’s filter driver is inserted either above or below, but not
“within” the NTFS/FAT/CDFS layer, Nagar does not teach inserting its filter
driver within the file system layer of Windows NT. PO Resp. 24–27 (citing
Ex. 1005, 51, 53, Fig. 2–6; Ex. 2001 ¶¶ 54–57); PO Sur-reply 15–18 (citing
Ex. 1001, 13:36–42; 15:31–32 & 61-63; 15:27–16:8, Fig. 6; Ex. 1005, 51–
53; Ex. 2001 ¶¶ 54–57). Patent Owner further contends that the ’243 patent
“discloses that its file system trap layer ‘which may also be referred to as a
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filter layer’ cannot be implemented within the file system layer of Windows
NT but can be implemented within the file system layer of other operating
systems/file systems.” PO Resp. 24–27 (citing, inter alia, Ex. 1001, 13:20–
22, 13:36–42).
We disagree with Patent Owner’s arguments and agree with Petitioner
that the file system layer of the ’243 patent can include a disk driver, even in
a Windows NT environment.
As admitted by Patent Owner, the ’243 patent describes “other
environments” besides Windows NT that “may permit implementing a
trap/filter layer within the file system layer.” PO Resp. 27 (citing Ex. 1001,
8:60–62, 12:18–22, 13:36–42, 15:64–16:7, FIG. 7; Ex. 2001¶ 57). Patent
Owner appears to contend that because the ’243 patent discloses
embodiments that are both related and unrelated to the Windows NT
environment and (1) an exemplary embodiment within a Windows NT
environment shows the trap layer outside of a file system layer and (2)
alternative embodiments that are not within a Windows NT environment
show a trap layer/filter layer within a file system layer, this means that the
’243 patent “make[s] clear that the trap layer cannot be ‘implemented within
a file system layer’ within windows NT.” PO Resp. 25 (citing Ex. 1001,
13:36–42); see also id. at 26–27 (citing Ex. 1001, 8:60–62, 12:18–22,
13:36–42, 15:64–16:7, FIG. 7; Ex. 2001 ¶¶ 54–57); PO Sur-reply 16–17
(citing, inter alia, Ex. 1001, Figs. 5, 6). We disagree that the ’243 patent’s
disclosure of various embodiments means that the claims are limited to any
of the disclosed embodiments such that the claims would exclude a trap
layer implemented within the file system layer of Windows NT but would
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cover a trap layer implemented within the file system layer of other
operating systems/file systems. See PO Resp. 24–27.
As Petitioner persuasively argues, the ’243 patent explains that the
“‘file system layer’ includes both the file system and disk driver.” See
Pet. 32 (citing Ex. 1001, 15:31–32, 15:61–63; Ex. 1002 ¶ 75). In particular,
the ’243 patent discloses the following: “In exemplary step 606, upon
mounting the storage medium, data relating to, for example, physical
limitations of the read/write device may be loaded into the device driver for
that device within the file system layer 310.” Ex. 1001, 15:60–63. This
disclosure is in a discussion of Figure 6, which is “a simplified flow diagram
of an exemplary method of providing software settable access privileges
within Windows NT®.” Ex. 1001, 15:54–56. Thus, in the ’243 patent, the
file system layer includes the file system and the disk driver, even in
Windows NT. We are persuaded, therefore, by Petitioner’s argument, which
relies on this disclosure in the ’243 patent as to the scope of “file system
layer,” that Nagar’s disclosure of a filter driver between the file system and
the disk driver, both of which are encompassed with the claimed “file system
layer,” describes “wherein said at least one computer file system trap layer
or said at least one computer file system filter layer is implemented within a
file system layer.” See Pet. 31–32.
We also disagree with Patent Owner’s argument that because
(1) Nagar’s “file system layer” corresponds to the NTFS/FAT/CDFS layer
shown in Nagar’s Figure 2-6 and (2) Nagar’s filter driver is inserted either
above or below, but not “within” the NTFS/FAT/CDFS layer, this means
Nagar does not teach inserting its filter driver within the file system layer of
Windows NT. See PO Resp. 24–27. As explained above, the scope of the
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claimed “file system layer” in the ’243 patent includes the file system and
the disk driver. Patent Owner argues, and Dr. Melendez testifies, that a
person of ordinary skill in the art would have understood the box in Nagar’s
Figure 2-6 labeled “NTFS or FAT or CDFS, etc.” to be the file system
layer. PO Resp. 26; Ex. 2001 ¶ 56. But this position fails to appreciate the
scope of the claimed “file system layer” as including the file system and the
disk driver, as that term is used in the ’243 patent.
Thus, for the foregoing reasons, Petitioner has shown that Nagar
discloses the limitations of claim 32, and the similar limitations of claims 61
and 101, which Patent Owner does not dispute separately, and therefore has
shown by a preponderance of the evidence that claims 32, 61, and 101 are
unpatentable under 35 U.S.C. §§ 102, 103(a) over Nagar.
I. Claims 24, 25, 32, 33, 35–37, 39, 54–57,
61, 87–89, 93, 94, 101, 10 – Nagar
Petitioner contends that claims 24, 25, 32, 33, 35–37, 39, 54–57, 61,
87–89, 93, 94, 101, and 102 are unpatentable under 35 U.S.C. §§ 102, 103(a)
over Nagar. Pet. 28–49, 52–66. Patent Owner does not respond to these
contentions (see generally PO Resp.), and, based upon a review of the
complete record in each proceeding, we find that Petitioner makes a
persuasive showing. See Paper 12 (Scheduling Order), 7 (stating “any
arguments not raised in the response may be deemed waived”).
We conclude that Petitioner has shown by a preponderance of the
evidence that claims 24, 25, 32, 33, 35–37, 39, 54–57, 61, 87–89, 93, 94,
101, and 102 are unpatentable under 35 U.S.C. §§ 102, 103(a) over Nagar..
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J. Claims 16, 26, 81, and 95 – Nagar and Kung
Petitioner asserts claims 16, 26, 81, and 95 would have been obvious
over the combined teachings of Nagar and Kung. Pet. 66–73; Reply 17–23.
Patent Owner opposes. PO Resp. 27–38; PO Sur-reply 18–20. For the
reasons that follow, we determine claims 16, 26, 81, and 95 would have been
obvious over Nagar and Kung.
1. Claims 16 and 81
Claim 16 depends from claim 1 and further recites:
wherein said allowing, or said denying, by the at least one
computer processor, the attempted operation comprises:
[a] forcing, by the at least one computer processor, a secure
erasure for a delete operation on said at least a portion
of the computer storage medium, wherein the secure
erasure comprises at least one of:
[b] overwriting, by the at least one computer
processor, the content of said at least a portion of
the computer storage medium, or
[c] overwriting, by the at least one computer
processor, an alternate data stream associated with
said at least a portion of the computer storage
medium.
Ex. 1001, 34:44–53 (brackets and formatting added for clarity). Thus, claim
16 requires “forcing . . . a secure erasure for a delete operation” on a storage
medium either by (1) “overwriting . . . the content” of the storage medium as
recited in claim element 16[b] or by (2) “overwriting . . . an alternate data
stream associated” with the computer storage medium as recited in claim
element 16[c]. Claim 81, which depends from claim 66, recites similar
limitations. Id. at 48:63–49:3.
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Petitioner asserts Kung teaches the additional limitations of claims 16
and 81. Pet. 66, 69–70; Reply 17–21. Petitioner contends Kung teaches the
“forcing” step of claim element 16[a] by teaching a method of securely
deleting or erasing a file residing on a storage medium of a computer system
to make the file unreadable or unrecoverable by unauthorized persons.
Pet. 69 (citing Ex. 1008, code (57), 1:24–29). Petitioner asserts, inter alia,
that the “Background” section of Kung teaches a “conventional” method of
file deleting that involves overwriting 0’s and 1’s over an entire file and that
this method teaches the “forcing . . . a secure erasure” by “overwriting . . .
the content” of the storage medium limitations recited in claim elements
16[a] and [b]. Pet. 66, 69–70 (citing Ex. 1008, 1:24–29; Ex. 1002 ¶ 276);
Reply 17–18, 20.
Petitioner also argues that the “Summary of the Invention” and the
“Detailed Description” sections of Kung describe an encryption method that
destroys or overwrites a random external key used for encrypting a deleted
file. Petitioner contends that Kung’s random external key is an “alternative
data stream” associated with the deleted file and that overwriting the random
external key teaches “forcing . . . a secure erasure” by “overwriting . . . an
alternate data steam” as recited in claim elements 16[a] and [c]. See Pet. 66,
70 (citing Ex. 1008, 1:40–45, 3:18–62; Ex. 1002 ¶¶ 268, 277); Reply 19
(citing Ex. 1001, 3:40–45).
Petitioner further asserts a person of ordinary skill in the art would
have combined Kung’s secure file-erasure methods with Nagar’s filter
drivers to provide heightened security to Nagar’s file system and that the
combination applies a known technique (Kung’s secure file-erasure
methods) to a known method ready for improvement (Nagar’s filter drivers)
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to yield predictable results (enhanced security in Nagar’s system). Pet. 66–
69; Ex. 1002 ¶¶ 269–274. Petitioner contends claim 81 would have been
obvious over Nagar and Kung for the same reasons asserted in connection
with claims 66 and 16. Pet. 73; Ex. 2001 ¶ 285.
We have reviewed Petitioner’s arguments and evidence and agree that
Petitioner has shown that Kung discloses the limitations of claims 16 and 81
and has articulated reasoning with some rational underpinning that one of
ordinary skill in the art would have had reason to combine the teachings
Nagar and Kung. See Pet. 66–70, 73; Reply 17–23.
Patent Owner makes a number of arguments in response, none of
which we find persuasive. See PO Resp. 27–33; PO Sur-reply 18–21. First,
Patent Owner argues that Kung teaches away from using the conventional
method of overwriting content with Nagar’s system because Kung describes
the conventional method as “slow” and states the invention disclosed in
Kung as “eliminates the weaknesses” associated with the conventional
methods. See PO Resp. 28 (citing Ex. 1008, 1:27–29, 1:46–52; Ex. 2001
¶ 60).
We are not persuaded by this argument. Although Kung describes
this technique as “slow” and proposes other techniques for secure erasure as
improvements, we do not view this as teaching away from this method of
secure erasure. A reference may be relied upon for all that it would have
reasonably suggested to one having ordinary skill in the art, including non-
preferred embodiments. As the Federal Circuit has stated, “a given course
of action often has simultaneous advantages and disadvantages, and this
does not necessarily obviate motivation to combine.” Medichem, S.A. v.
Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). “Instead, the benefits,
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both lost and gained, should be weighed against one another.” Id. Kung
itself discloses that a benefit to this technique is that it “ensure[s] that the
stored information cannot be recovered.” Ex. 1008, 1:27–29. Thus, Kung’s
express disclosure supports Petitioner’s proposed motivation to combine—to
enhance security. See Pet. 66–68 (citing Ex. 1002 ¶¶ 269–274). We do not
find Kung’s disclosure of a drawback to this approach—slower speed—as
teaching away from the benefits it teaches of secure erasure. See Merck &
Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (stating
“all disclosures of the prior art, including unpreferred embodiments, must be
considered”).
Patent Owner also contends that because Kung’s conventional method
overwrites data with 0’s and 1’s in response to a user action to delete a file,
Kung teaches away from the independent claims that require intercepting an
attempted operation “regardless of the identity of a user.” See PO Resp. 31–
32 (citing Ex. 1008, 1:24–27); PO Sur-reply 19–20 (citing Ex. 2001 ¶ 71).
We disagree. Kung states that “the system must write 0’s and 1’s many
times to ensure that the stored information cannot be recovered.” Ex. 1008,
1:27–29 (emphasis added). We are persuaded by Dr. Weissman’s testimony
that a POSITA would have been motivated to modify the computerized
systems in Nagar to have the system use the conventional process of
overwriting 0’s and 1’s over the entire data file to delete the contents of the
file. Ex. 1002 ¶¶ 276–278; Reply 18. Thus, we are persuaded by
Petitioner’s contentions that Kung’s disclosure of the conventional method
of overwriting data with 0’s and 1’s teaches the limitations set forth in claim
elements 16[a] and [b].
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Patent Owner also contends that because Kung’s encryption method
permits recovery of the encrypted data, Kung’s encryption method teaches
away from “secure erasure” as claimed in the ’243 patent because the ’243
patent “claims a novel method of secure erasure where there is no possibility
that a file may be readable by any person . . . consistent with, for example,
the noted secure erasure requirements of the U.S. Department of Defense in
DOD 5015.2.” PO Resp. 28–29 (citing Ex. 1001, 25:22–28; Ex. 1008, code
(57), 1:24–29, 1:64–66, 2:3–8, 2:36–40, 3:43–45, 3:50–58, 4:3–7, Fig. 1; Ex.
2001 ¶¶ 60–61). Patent Owner also contends that Petitioner’s argument––
that Kung’s encryption method that destroys or overwrites a random external
key used for encrypting a deleted file teaches the limitations of claim
element 16[c]––must fail because in this method, the “data content is
encrypted and not overwritten” and Kung’s deleted files are recoverable by
application of the correct key. See PO Resp. 28–33 (citing, inter alia
Ex. 1008, 1:64–66, 2:3–8, 2:36–40, 3:43–45, 3:50–58, 4:3–7, Figure;
Ex. 2001 ¶¶ 60–65); see also id. at 31 (stating “regardless of whether a key
may be retrieved to read the file, the content remains on the storage medium
and is not overwritten”); id. at 33 (stating destruction of Kung’s encryption
key does not provide “secure erasure for a delete operation”) (citing
Ex. 2001 ¶ 66); see also PO Sur-reply 19 (stating “[e]ncyption is not
equivalent to deletion . . . Secure erasure is intended to destroy the data and
is not reversible and is not related to the actual data”).
We are not persuaded by these arguments. First, we disagree with
Patent Owner that a “secure erasure” excludes encryption or that the ’243
patent teaches away from using encryption to provide a secure erasure. As
noted above, Patent Owner contends that the ’243 patent “claims a novel
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method of secure erasure where there is no possibility that a file may be
readable by any person . . . consistent with, for example, the noted secure
erasure requirements of the U.S. Department of Defense in DOD 5015.2.”
PO Resp. 28–29 (citing Ex. 1001, 25:22–28; Ex. 2001 ¶ 61). Neither the
disputed claims nor the preferred embodiment discussed in the cited portion
of the ’243 patent state that “secure erasure” excludes encryption.
Moreover, Kung itself states that its encryption method is a “secure
deletion method” that prevents any utility program from recovering any
information from a deleted file and therefore, “no information can be
retrieved nor derived from the encrypted, deleted file.” See Ex. 1008, 2:9–
14. Additionally, Kung explains that in its one-way deletion mode, once the
“random external key” is destroyed, “the data cannot be decrypted and is
thus unreadable by anyone.” Id. at 3:34–45. Specifically, Kung explains
that in its one way deletion mode, when the user does not expect to undelete
the data, “the data in . . . file 20 is encrypted using . . . random external key
21, and then . . . key 21 is automatically destroyed 19 and cannot be used to
recover the data. Consequently without . . . key 21, the data cannot be
decrypted and is thus unreadable by anyone.” Ex. 1008, 3:37–45. Thus, we
disagree with Patent Owner’s contention that recovery of the data is still
possible after the key is destroyed internally. See PO Resp. 30–31. Kung
expressly states that, by destroying (overwriting) the random external key,
the data on the file cannot be recovered by anyone. See Ex. 1008, 3:37–45.
Patent Owner also contends that Kung’s encryption key is not an
“alternate data stream” and even if it is, its destruction does not provide
“secure erasure for a delete operation.” PO Resp. 33 (citing Ex. 2001 ¶ 66).
We disagree. The ’243 patent describes the “alternate data stream” as
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including data related to attributes of a file and stored separately from the
file. See, e.g., Ex. 1001, 22:67–23:2 (stating “one or more alternate data
streams or extended attributes to store the legal hold information about the
retained file”), id. at 23:56–58 (stating “creating a number of alternate data
streams or extended attributes to store additional information about the
file”); id. at 24:23–24 (stating “the policy may be stored as an alternate data
stream”), id. at 25:60–64) (stating “the trap layer may obfuscate the user
data by storing it in alternate data streams or alternate locations rendering
the files unreadable and even as far as inaccessible outside the context of the
trap layer”). We agree with Petitioner that Kung’s encryption key is an
alternate data stream because, inter alia, it is the key for encrypting the file
(i.e., related to attributes of a file) and is stored externally (i.e., stored
separately from the file). See Reply 19 (citing Ex. 1008, 2:31–35).
Thus, we are persuaded by Petitioner’s contentions that Kung’s one-
way encryption method teaches the limitations set forth in claim elements
16[a] and [c].
Having considered the full record developed by trial, we are
persuaded by Petitioner’s contentions and evidence that Kung and Nagar
teach all of limitations of claims 16 and 81 and determine that Petitioner has
articulated reasoning with some rational underpinning that one of ordinary
skill in the art would have had reason to combine the teachings Nagar and
Kung. Pet. 66–70, 73; Ex. 1002 ¶¶ 266–278. We, thus, determine that
Petitioner establishes by a preponderance of the evidence that the subject
matter of claims 16 and 81 would have been obvious over the combination
of Nagar and Kung.
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2. Claims 26 and 95
Claim 26 recites:
26. [a] The computer implemented method of claim 1, wherein said
intercepting, by the at least one computer processor, further comprises:
[b] triggering, by the at least one computer processor . . . initiating
other actions comprising at least one of:
[c] intercepting … a delete operation, and
[d] determining … when to actually erase contents, wherein,
at least one of:
[e] an erasure comprises overwriting, by the at least one
computer processor, at least one of content or at least a
portion of a file with a predetermined pattern;
[f] an erasure is triggered immediately, by the at least
one computer processor . . . .

Ex. 1001, 36:39–62 (bracketed material and formatting added for clarity).
Claim 95 recites similar elements. See id. at 50:38–56. Petitioner asserts
Kung teaches these elements. See Pet. 71–73 (citing Ex. 1002 ¶¶ 279–284,
286). Specifically, Petitioner contends Nagar’s disclosure of a filter driver
that intercepts I/O requests and performs “various actions to modify, extend,
or replace the functionality provided by the original recipient of the I/O
request” teaches the “intercepting” including “triggering” other actions
recited in claim elements 26[a] and [b]. See Pet. 71 (citing Ex. 1005, 51,
497–501). Petitioner also assets Kung teaches “determining” when to
actually erase contents as recited in claim element 26[d] because the
program determines which erasure method needs to be performed to erase
the contents of the file. Id. at 72 (citing Ex. 1002 ¶ 281; Ex. 1005, 3:9-32).
Finally, Petitioner contends Kung teaches an “erasure comprising
overwriting” content or a portion of a file with a predetermined pattern by
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disclosing a conventional secure erasure method that overwrites 0s and 1s
over the entire data file many times to ensure that the stored information
cannot be recovered and that a POSITA would have understood the method
could be preset to overwrite the data with a predetermined pattern, such as
with all 0’s or all 1’s, or alternating 0’s and 1’s. Id. (citing Ex. 1002 ¶ 282;
Ex. 1008, 1:24–29). Petitioner contends Kung discloses the limitations of
claim 95 for the same reasons set forth with respect to claim 26.
We have reviewed Petitioner’s arguments and evidence and agree that
Petitioner has shown that Kung discloses the limitations of claims 26 and 95.
Pet. 71–73 (citing Ex. 1002 ¶¶ 279–284, 286).
Patent Owner makes a number of arguments in response, none of
which we find persuasive. See, e.g., PO Resp. 33–38; PO Sur-reply 19–20.
First, Patent Owner contends Kung’s encryption method does not “actually
erase” content as required by the claims because Kung’s encryption method
retains content and merely deletes the file directory pointer and encrypts the
file. See, e.g., PO Resp. 34, 38 (citing Ex. 2001 ¶ 68; Ex. 1008, 3:67–4:7,
Fig. 1). This argument is not persuasive because Petitioner also relies on
Kung’s disclosure of a conventional method of deleting a file by overwriting
the file with 0’s and 1’s. We agree with Petitioner that overwriting a file a
file with 0’s and 1’s “actually erase[s]” the file.
Patent Owner next argues that Kung teaches away from the
conventional method of overwriting a file with 0’s and 1’s for the same
reasons set forth in Section II.J.1 in connection with claims 16 and 81. PO
Resp. 34–35 (citing Ex. 2001 ¶ 69). This argument is not persuasive for the
same reasons stated in Section II.J.1.
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Patent Owner also contends Kung does not teach overwriting a file
with a “predetermined pattern” and that “overwriting the contents multiple
times uniformly alternating between 0’s and 1’s” is inconsistent with the
’243 patent which states a “secure erasure may be executed by overwriting
the contents of a file with random patterns” and that the file may be
overwritten only one time. See PO Resp. 35–36 (citing Ex. 2001 ¶¶ 69–70).
We disagree with this argument and find that overwriting with 0’s and then
overwriting with 1’s is a specific pattern. See Ex. 1002 ¶ 282 (stating that
overwriting a file with 0s and then 1s is a pattern). The claims of the ’243
patent do not require a single overwrite or the pattern to be random. See
also Ex. 1001, 25:51–59 (stating that the “trap layer may allow the file to be
deleted and may . . . repeat the overwrite operation several times, such as,
. . . seven or fifteen times”).
Patent Owner contends Kung does not disclose determining when to
actually erase contents wherein an erasure is triggered immediately because
Kung’s secure deletion only occurs after user interaction and is not triggered
immediately. See PO Resp. 37; Ex. 2001 ¶ 71
This argument is not persuasive. Claim element 26[f], which recites
“an erasure is triggered immediately” is only one of the three “at least one”
erasure options recited in claim 26. We agree with Petitioner that Kung
teaches the erasure option recited in claim element 26[e], which recites “an
erasure compris[ing] overwriting, . . . at least a portion of a file with a
predetermined pattern.” Thus, because Kung teaches the erasure option
recited in claim element 26[e], Petitioner was not required to show that
Kung discloses the erasure option recited in claim element 26[f].
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We agree with Petitioner that Kung teaches determining, by the
computer processor, when to actually erase contents recited in claim element
26[d], because Kung teaches that, after the user selects a secure deletion of
the file (Ex. 1008, 3:9–32), the program, (and thus the processor) determines
that that Kung’s secure erasure method needs to be performed to erase the
content of the file. Pet. 72 (citing Ex. 1002 ¶ 281).
Thus, for the foregoing reasons, Petitioner has shown that Nagar and
Kung teach the limitations of claim 26, and the similar limitations of claim
95, which Patent Owner does not dispute separately. We also determine that
Petitioner has articulated reasoning with some rational underpinning that one
of ordinary skill in the art would have had reason to combine the teachings
Nagar and Kung. Pet. 66–73; Ex. 1002 ¶¶ 266–278. We, thus, determine
that Petitioner establishes by a preponderance of the evidence that the
subject matter of claims 26 and 95 would have been obvious over the
combination of Nagar and Kung.
K. Claims 6–8, 10–12, 14, 17, 21, 27, 65, 71–73,
75–77, 79, 82, 86, and 96 – Nagar and McGovern
Petitioner contends claims 6–8, 10–12, 14, 17, 21, 27, 65, 71–73, 75–
77, 79, 82, 86, and 96 would have been obvious over the combined teachings
of Nagar and McGovern. IPR608-Pet. 35–57; IPR608-Reply 9–15. Patent
Owner responds that Nagar and McGovern do not disclose the limitations of
claims 11 and 76 but does not dispute that the remaining claims (i.e., 6–8,
10–12, 14, 17, 21, 27, 65, 71–73, 75, 77, 79, 82, 86, and 96) would have
been obvious over Nagar and McGovern. IPR608-PO Resp. 19–22;
IPR608-PO Sur-reply 11–14.
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Having considered the full record developed by trial, we are
persuaded by Petitioner’s arguments and evidence that claims 6–8, 10–12,
14, 17, 21, 27, 65, 71–73, 75–77, 79, 82, 86, and 96 would have been
obvious over the Nagar and McGovern.
1. Claims 11 and 76
Claim 11, which depends directly from claim 10 and indirectly from
claims 1 and 6, recites:
[a] wherein said holding, by the at least one computer processor, the
retained state comprises at least one of:
[b] suspending, by the at least one computer processor, expiration
of a retained state portion of the computer storage medium;
[c] suspending, by the at least one computer processor, an
unexpired retained state portion of the computer storage
medium from entering an expired retained state;
[d] suspending, by the at least one computer processor, clearing, by
the at least one computer processor, of a read only attribute of
the retained state portion of the computer storage medium by
setting, by the at least one computer processor, a temporary
attribute of the retained state portion of the computer storage
medium; or
[e] suspending, by the at least one computer processor, deletion, by
the at least one computer processor, of an expired retained
state portion of the computer storage medium.
Ex. 1001, 33:7–25 (bracketed material and formatting added for clarity).
Claim 76, depends directly or indirectly from claims 66, 71, and 75. Claim
76 and its base claims recite limitations similar to those of claim 11 and its
base claims. Compare Ex. 3002, 1; Ex.1001, 32:36–45, Ex.1001, 33:3–6
with. id. at 46:60–47:12, 47:37–45, 47:63–48:11.
Petitioner contends McGovern teaches the limitations of claims 11
and 76 by teaching extending a retention date/time in a committed WORM
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file so as to suspend the expiration or deletion of a file. See IPR608-Reply
10; IPR608-Pet. 41–42, 45–47, 55 (citing, inter alia, Ex. 1006 ¶¶ 36, 127–
128, Fig. 12; Ex. 1002 ¶¶ 222–225). Petitioner argues McGovern teaches a
“write-once-read-many (WORM) system” that stores files with a specified
retention date and allows setting a “retention policy” that can cause the
system to observe “WORM properties (e.g., no deletion, no modifications)
for the WORM file during the applicable retention period.” IPR608-Pet. 35–
36 (citing Ex. 1006 ¶¶ 20, 119; Ex. 1002 ¶ 204). Petitioner further asserts
that retention periods can be set to any date so long as the date is further in
the future than the existing date and that the extended period may be
“‘infinite,’ ‘indefinite or permanent.’” Id. at 46 (quoting Ex. 1006 ¶ 128;
citing Ex. 1002 ¶ 223). Petitioner contends that extending the retention date
suspends the expiration of the file because it “suspends the file from being
deleted.” Id. (citing Ex. 1002 ¶ 223).
Petitioner also contends it would have been obvious to implement
McGovern’s WORM file system in Nagar, both of which are built on top of
Windows NT, to, inter alia, provide additional functionality for controlling
access to files so files could be retained for specified time periods, such as
retaining tax records for a certain number of years after each tax filing. Id.
at 38–40 (citing Ex. 1005 ¶¶ 7, 9–10, 15, 20–21, 79, 89, 120–121; Ex. 2001
¶¶ 207–210).
Patent Owner responds that the cited art does not disclose “holding
. . . the retained state comprises at least one of” the “suspending” steps
recited in claims 11 and 76. See IPR608-PO Resp. 19–22; IPR608-PO Sur-
reply 11–14. Patent Owner contends claims 11 and 76 “do not claim setting
a new, later retention date . . . but instead suspend expiration in holding the
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retained state.” IPR608-PO Resp. 20–21 (citing Ex. 1001, 21:60–67, 33:7–
25, 47:66–11; Ex. 2001 ¶ 51). Patent Owner argues that “[a] POSITA would
understand ‘suspending’ to mean temporarily setting aside or making
inoperative the ‘enforcing … a retention access privilege’ of claims 6 and 71
of the ‘243 Patent, from which claims 11 and 76 indirectly depend, until
such time as the suspension is lifted.” Id. at 22 (citing Ex. 2001 ¶ 52).
Patent Owner contends that the “suspending” of the ’243 patent is
substantively different than merely “changing” a retention date as show in
McGovern because in McGovern’s approach, there is no way to recover the
previous system’s behavior by lifting a suspension as in the ’243 patent. See
id. Patent Owner also argues that the approach claimed in the ’243 patent is
superior to what is shown in McGovern because the ’243 patent’s approach
allows the system to “revert[] back to normal immediately” once the
suspension is lifted, thereby “allowing the previous, still existing expiration
dates to be applied.” Id. at 21 (citing Ex. 2001 ¶ 51).
We disagree with Patent Owner’s arguments because Patent Owner is
relying on limitations that are not found in the claims. We disagree with
Patent Owner that the term “suspending” excludes changing or extending the
expiration date to a later date. The claims do not recite, or require either
explicitly or implicitly, that the term “suspending” excludes changing or
extending the expiration date to a later date. Claim 11 requires that “holding
the retained state comprises at least one of” four different “suspending” steps
(i.e., claim element 11[b]–[d]. For example, claim element 11[b] recites
“suspending . . . expiration of a retained state portion of the computer
storage medium.” We determine that there is nothing in this limitation that
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would exclude changing or extending the expiration date to a later date from
being included in “suspending expiration.”
To support its argument that claims 11 and 76 “do not claim setting a
new, later retention date” but “instead suspend expiration in holding the
retained state,” Patent Owner cites to the specification of the ’243 patent
which states:
According to an exemplary embodiment, the retention policy
expiry may be suspended indefinitely in the event of litigation to
prevent valuable files directories and documents from being
accidentally destroyed while the litigation is still on going.
According to an exemplary embodiment, the suspension may be
a legal hold. In an exemplary embodiment, the legal hold may
prohibit and/or inhibit the deletion of files even if their retention
period is expired.
Ex. 1001, 21:60–67 (cited in IPR608-PO Resp. 21). We disagree that this
exemplary embodiment limits the claims as argued by Patent Owner.
Indeed, this embodiment relied upon by Patent Owner gives no indication
that the term “suspension” in the ’243 patent excludes changing or extending
the expiration date to a later date. Rather, this paragraph describes
suspending retention policy expiry indefinitely, so that the deletion of files is
prohibited or inhibited. Moreover, Patent Owner does not address why
McGovern’s teaching of “[e]xtending the retention date infinitely” is
different from the ’243 patent’s teaching of “the retention policy expiry
[being] . . . suspended indefinitely.”19

19 Patent Owner does state that indefinitely “does not mean forever, but rather
lasting for a period whose end is not established” but does not address how
McGovern’s indefinite suspension of expiration of a file is different from
that taught in the ’243 patent or required by claim 11. See Sur-reply 13.
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The phrase “even if their retention period is expired,” emphasized by
Patent Owner (see IPR608-PO Resp. 22), does not support Patent Owner’s
assertion that “[d]uring the ‘suspending’ in holding the retained state in the
’243 Patent, it does not matter if the retention date is in the past or future
because the deletions will not be allowed.” IPR608-PO Resp. 21–22. The
paragraph does not say that “once the suspension is lifted in the ’243 Patent,
the system is capable of reverting back to normal immediately, allowing the
previous, still existing expiration dates to be applied” or “[w]hen the
suspension is lifted, the retention dates may be compared to the clock date
and deletion allowance proceeds as originally scheduled,” much less
“[l]ifting of the suspension would result in re-enforcing the retention
policy.” Id. The “indefinitely” used in the paragraph actually means
making the suspension unlimited by time, rather than Patent Owner’s
asserted “[l]ifting of the suspension” or “temporarily setting aside or making
inoperative the ‘enforcing … a retention access privilege’ … until such time
as the suspension is lifted.” Id. at 22.
In its Sur-reply, Patent Owner also argue that if “suspending” means
merely changing or extending an expiration date to a later date, then claim
11 “would make no sense.” See IPR608-PO Sur-reply 12. Patent Owner
contends the phrase “suspending deletion of an expired retained state”
recited in claim element 11[e] requires an “expired retained state,” which
would “be impossible if suspending were defined to mean extending.” See
id. at 12–13. However, the step of “suspending expiration” does not include
reference to the “expired retained state” and thus is not limited by the absent
language.
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Patent Owner also contends Petitioner failed to disclose which of the
“suspending” alternatives recited in claim 11 is disclosed by McGovern.
IPR608-PO Sur-reply 11–12. This argument is not persuasive because
Petitioner provided this information on pages 45–47 of its Petition. See
IPR608-Pet. 45 (identifying claim elements 11[b], [c], and [e] in the
heading), id. at 46–47 (stating “McGovern’s teaching of extending an
expiration period for a WORM file constitutes at least one of” the
suspending steps recited in claim elements 11[b], [c], or [e]).
We agree with Petitioner’s argument and supporting evidence that
McGovern teaches “suspending . . . expiration of a retained state” because
McGovern teaches resetting the retention period to any date so long as it is
“further in the future than the existing date.” Pet. 46 (citing Ex. 1006 ¶ 128,
Fig. 12).
Having considered the full record developed by trial, we are
persuaded by Petitioner’s contentions and evidence that Nagar and
McGovern teach all of limitations of claims 11 and 76 and determine that
Petitioner has articulated reasoning with some rational underpinning that one
of ordinary skill in the art would have had reason to combine the teachings
Nagar and McGovern. IPR608-Pet. 35–41, 45–47, 55.
We, thus, determine that Petitioner establishes by a preponderance of
the evidence that the subject matter of claims 11 and 76 would have been
obvious over the combination of Nagar and McGovern.
2. Claims 7, 8, 12, 14, 17, 21, 27, 65, 72, 73, 77, 79, 82, 86, and 96
Petitioner asserts claims 7, 8, 12, 14, 17, 21, 27, 65, 72, 73, 77, 79, 82,
86, and 96 would have been obvious over the combined teachings of Nagar
and McGovern. IPR608-Pet. 35–57. Patent Owner does not separately
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argue the patentability of these claims. See generally IPR608-PO Resp.; see
also IPR608-Paper 12 (Scheduling Order), 7 (stating “any arguments not
raised in the response may be deemed waived”).
Having considered the full record developed by trial, we are
persuaded by Petitioner’s contentions and evidence that Nagar and
McGovern teach all of limitations of claims 7, 8, 12, 14, 17, 21, 27, 65, 72,
73, 77, 79, 82, 86, and 96 and determine that Petitioner has articulated
reasoning with some rational underpinning that one of ordinary skill in the
art would have had reason to combine the teachings Nagar and McGovern.
IPR608-Pet. 35–57; IPR608-Ex. 1002 ¶¶ 266–278.
We, thus, determine that Petitioner establishes by a preponderance of
the evidence that the subject matter of claims 7, 8, 12, 14, 17, 21, 27, 65, 72,
73, 77, 79, 82, 86, and 96 would have been obvious over the combination of
Nagar and McGovern.
L. Claims 18, 19, 83, and 84––Nagar and Vossen
Petitioner asserts claims 18, 19, 83, and 84 would have been obvious
over the combined teachings of Nagar and Vossen. IPR608-Pet. 57–67.
Patent Owner does not separately argue the patentability of these claims.
See generally IPR608-PO Resp.; see also PR608-Paper 12 (Scheduling
Order), 7 (stating “any arguments not raised in the response may be deemed
waived”).
Having considered the full record developed by trial, we are
persuaded by Petitioner’s contentions and evidence that Nagar and Vossen
teach all of limitations of claims 18, 19, 83, 84 and determine that Petitioner
has articulated reasoning with some rational underpinning that one of
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ordinary skill in the art would have had reason to combine the teachings of
Nagar and Vossen. IPR608-Pet. 57–66 (citing Ex. 1002 ¶¶ 260–266).
We, thus, determine that Petitioner establishes by a preponderance of
the evidence that the subject matter of claims 18, 19, 83, and 84 would have
been obvious over the combination of Nagar and Vossen.
M. Claims 5, 50, 64, 70, and 85––Nagar and Denning
Petitioner asserts claims 5, 50, 64, 70, and 85 would have been
obvious over the combined teachings of Nagar and Denning. IPR608-Pet.
67–74 (citing Ex. 1002 ¶¶ 287–291). Patent Owner does not separately
argue the patentability of these claims. See generally IPR608-PO Resp.; see
also PR608-Paper 12 (Scheduling Order), 7 (stating “any arguments not
raised in the response may be deemed waived”).
Having considered the full record developed by trial, we are
persuaded by Petitioner’s contentions and evidence that Nagar and Denning
teach all of limitations of claims 5, 50, 64, 70, and 85 and determine that
Petitioner has articulated reasoning with some rational underpinning that one
of ordinary skill in the art would have had reason to combine the teachings
Nagar and Denning. IPR608-Pet. 67–74 (citing Ex. 1002 ¶¶ 287–291).
We, thus, determine that Petitioner establishes by a preponderance of
the evidence that the subject matter of claims 5, 20, 64, 70, and 85 would
have been obvious over the combination of Nagar and Denning.
N. Constitutionality of Inter Partes Review Proceedings
Patent Owner asserts that both inter partes review proceedings
IPR2019-00607 and IPR2019-00608 are “unconstitutional under the Takings
Clause . . . and Due Process Clause . . . of the United States Constitution, as
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applied retroactively to this patent which issued before” inter partes review
proceedings became law. See, e.g., PO Resp. 22–23.
We decline to consider Patent Owner’s arguments as the Federal
Circuit has determined that inter partes review proceedings are not
unconstitutional under the Takings Clause or Due Process Clause as argued
by Patent Owner. See Celgene Corp. v. Peter, 931 F.3d 1342, 1362 (Fed.
Cir. 2019), cert. denied 2020 WL 3405867 (June 22, 2020); see also
Arthrex, Inc. v. Smith & Nephew, Inc., 935 F.3d 1319, 1331–32 (Fed. Cir.
2019); Sound View Innovations, LLC v. Hulu, LLC, Nos. 2019-1865, 2019-
1867, 2020 WL 3583556, *3 (Fed. Cir. July 2, 2020) (non-precedential).
III. CONCLUSION20
For the reasons discussed above, we determine Petitioner has proven,
by a preponderance of the evidence, that some of the challenged claims of
the ’243 patent are unpatentable, as summarized in the following tables.

20 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
IPR2019-00607 (Patent 9,361,243 B2)
IPR2019-00608 (Patent 9,361,243 B2)

70

IPR2019-00607:
Claims
35
U.S.C.
§
Reference/
Basis
Claims Shown
Unpatentable
Claims Not
Shown
Unpatentable
1–4, 24, 25,
32–37, 39, 54–
57, 61–63, 66–
69, 87–89, 93,
94, 101–103
102(a) Nagar
1–3, 24, 25, 32,
33, 35–37, 39, 54–
57, 61–63, 66–68,
87–89, 93, 94,
101, 102
4, 34, 69, 103
1–4, 24, 25,
32–37, 39, 54–
57, 61–63, 66–
69, 87–89, 93,
94, 101–103
103 Nagar
1–3, 24, 25, 32,
33, 35–37, 39, 54–
57, 61–63, 66–68,
87–89, 93, 94,
101, 102
4, 34, 69, 103
16, 26, 81, 95 103 Nagar, Kung
16, 26, 81, 95
Overall
Outcome
1–3, 24, 25, 32,
33, 35–37, 39, 54–
57, 61–63, 66–68,
87–89, 93, 94,
101, 102
4, 34, 69, 103

IPR2019-00608:
Claims
35
U.S.C.
§
Reference/
Basis
Claims Shown
Unpatentable
Claims Not
Shown
Unpatentable
1, 62, 66 102(a) Nagar 1, 62, 66
6-8, 10–12, 14,
17, 21, 27, 65,
71–73, 75–77,
79, 82, 86, 96
103 Nagar, McGovern
6–8, 10–12, 14,
17, 21, 27, 65, 71–
73, 75–77, 79, 82,
86, 96

18, 19, 83, 84 103 Nagar, Vossen
18, 19, 83, 84
5, 20, 64, 70,
85
103 Nagar,
Denning
5, 20, 64, 70, 85
IPR2019-00607 (Patent 9,361,243 B2)
IPR2019-00608 (Patent 9,361,243 B2)

71

Claims
35
U.S.C.
§
Reference/
Basis
Claims Shown
Unpatentable
Claims Not
Shown
Unpatentable
Overall
Outcome
1, 5–8, 10–12, 14,
17–21, 27, 62, 64–
66, 70–73, 75–77,
79, 82–86, 96

IV. ORDER
Accordingly, it is:
ORDERED that in IPR2019-00607, claims 1–3, 16, 24–26, 32, 33,
35–37, 39, 54–57, 61–63, 66–68, 81, 87–89, 93–95, 101, 102 of the ’243
patent have been shown to be unpatentable;
FURTHER ORDERED that in IPR2019-00607 claims 4, 34, 69, and
103 of the ’243 patent have not been shown to be unpatentable;
FURTHER ORDERED that in IPR2019-00608, claims 1, 5–8, 10–12,
14, 17–21, 27, 62, 64–66, 70–73, 75–77, 79, 82–86, and 96 of the ’243
patent have been shown to be unpatentable; and
FURTHERED ORDERED that, because this is a Final Written
Decision, parties to the proceeding seeking judicial review of the Decision
must comply with the notice and service requirements of 37 C.F.R. § 90.2.
IPR2019-00607 (Patent 9,361,243 B2)
IPR2019-00608 (Patent 9,361,243 B2)

72

For PETITIONER:

Erika Arner
Joshua Goldberg
Jason Stach
Cory Bell
FINNEGAN, HENDERSON,
FARRABOW, GARRETT & DUNNER LLP
Erika.arner@finnegan.com
joshua.goldberg@finnegan.com
Jason.stach@finnegan.com
Cory.bell@finnegan.com

Andrew Devkar
MORGAN LEWIS & BOCKIUS
Andrew.devkar@morganlewis.com

Diek Van Nort
MORRISON & FOERSTER
dvannort@mofo.com
For PATENT OWNER:

Gregory Donahue
Andrew DiNovo
DINOVO PRICE LLP
gdonahue@dpelaw.com
adinovo@dpelaw.com