KOM Software, Inc.

Patent Trials and Appeals Board

Sep 23, 2020

IPR2019-00606 (P.T.A.B. Sep. 23, 2020)

Trials@uspto.gov Paper 37
571-272-7822 Date: September 23, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

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

IPR2019-00606
Patent 8,234,477 B2

Before KIMBERLY McGRAW, DANIEL J. GALLIGAN, and
BRENT M. DOUGAL, Administrative Patent Judges.
Opinion for the Board filed per curiam.

Opinion Dissenting-in-Part by Administrative Patent Judge DOUGAL.

PER CURIAM.

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

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I. INTRODUCTION
A. Background
NetApp, Inc. (“Petitioner”)1 filed a Petition to institute an inter partes
review of claims 1–8, 10–12, 14, 16–27, 31, 32, 35–39, 43–46, 48, 50, and
54–57 (the “challenged claims”) of U.S. Patent No. 8,234,477 B2 (“the ’477
patent”). Paper 3 (“Pet.”). KOM Software, Inc. (“Patent Owner”) filed a
Preliminary Response. Paper 9 (“Prelim. Resp.”). Applying the standard set
forth in 35 U.S.C. § 314(a), we instituted an inter partes review of all
challenged claims. Paper 10 (“Dec.”).
Patent Owner filed a Response (Paper 14, “PO Resp.”), Petitioner
filed a Reply (Paper 25, “Reply”), and Patent Owner filed a Sur-Reply
(Paper 32, “Sur-Reply”). An oral hearing was held on June 18, 2020, and a
copy of the transcript was entered into the record. Paper 36 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This Decision is a Final
Written Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 as to the
patentability of the claims on which we instituted trial. Having reviewed the
arguments of the parties and the supporting evidence, we determine that
Petitioner has shown, by a preponderance of the evidence, that claims 1–8,
10–12, 14, 16–27, 31, 32, 35–39, 43–46, 48, 50, 54–57 are unpatentable.
B. Related Matters
Petitioner identifies the following pending litigation involving the
’477 patent: (1) KOM Software Inc. v. Hitachi Vantara Corp., No. 1-18-cv-
00158 (D. Del.); (2) KOM Software Inc. v. Hewlett Packard Enterprise Co.,
No. 1-18-cv-00159 (D. Del.); and (3) KOM Software Inc. v. NetApp, Inc.,

1 Hewlett Packard Enterprise Co. settled with Patent Owner and is no longer
a part of this proceeding. See Paper 29.
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No. 1-18-cv-00160 (D. Del.). Pet. 74. Petitioner filed numerous inter partes
review proceedings relating to patents owned by Patent Owner. Id.
C. The ’477 Patent
The ’477 patent (Ex. 1001), 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, 1:25–
26. The ’477 patent discloses 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 1:40–42.
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 2:24–25. 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 2:27–31. To solve this problem, the ’477 patent discloses an operating
system that includes a “trap layer” or “filter layer” disposed between the
application layer and the file system layer. Id. at 13:14–16. Figure 3
illustrates a block diagram of an operating system that includes a trap layer
and is reproduced below.
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As shown in Figure 3 above, each file system access request that is
transmitted from the application layer to the file system layer may be
intercepted by the trap layer, where restrictions relating to access privileges
are implemented. Id. at 13:17–21. Some access requests are blocked and
error messages are returned to the application layer. Id. at 13:22–24. Some
access requests may be modified and passed on to the file system in
modified form. Id. at 13:26–29.
D. Illustrative Claims
Of the challenged claims, claims 1, 22, and 54 are independent. Each
of dependent claims 2–8, 10–12, 14, 16–21, 23–27, 31, 32, 35–39, 43–46,
48, 50, and 55–57 depends directly or indirectly from respective independent
claims 1, 22, and 54. Claims 1 and 22 illustrate the claimed subject matter
and are reproduced below:
1. A method of applying an operation access privilege to a
storage medium comprises:
associating an access privilege with at least a portion of
the storage medium;
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intercepting an attempted operation on said at least a
portion of the storage medium,
wherein said intercepting occurs regardless of an
identity of a user attempting the attempted operation;
comparing the attempted operation to the access privilege;
and
allowing, or denying the attempted operation based on
comparing the attempted operation to the access privilege
wherein at least one of: said associating, said allowing, or
said denying is based on enforcing a policy.
22. A method for intercepting attempted access to at least a
portion of a storage medium, comprises:
receiving at least one of an attempted access operation to
gain access to or from, or an attempted write operation to write
data to, the at least a portion of the storage medium;
intercepting at least one of said attempted access operation
or said attempted write operation, prior to permitting or not
permitting said operation on the at least a portion of the storage
medium,
wherein said intercepting occurs regardless of an
identity of a user attempting the attempted operation;
determining whether the attempted operation is permitted
based upon at least one of a privilege, a policy, a rule, or a
determination; and
permitting, or not permitting the attempted operation
based on said determining whether the attempted operation is
permitted
wherein said at least one permitting or not
permitting is based on enforcing said at least one privilege,
policy, rule or determination.
Ex. 1001, 28:46–60, 31:22–41.
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E. Instituted Grounds and Prior Art
Petitioner contends that the challenged claims are unpatentable on the
following grounds:2
Claims Challenged 35 U.S.C. §3 References/Basis
1–5, 18–20, 22–25,
31, 32, 35–39, 43, 44
103 Vossen4, Denning5
6–8, 10–12, 14, 17,
21, 45, 48, 50
103 Vossen, Denning, McGovern6
16, 46 103 Vossen, Denning, Kung7
26, 27, 54–578 103 Vossen, Denning, Nagar9
1. Vossen
Vossen is 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 environment
where all file systems are simultaneously available to an application.”
Ex. 1003, Abstract. Vossen teaches “modify[ing] the usual operation of the
host computer’s operating system interface such that any file system access

2 Petitioner supports its challenge with a Declaration of Jon B. Weissman,
Ph.D. (“Weissman Declaration”) (Ex. 1002).
3 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(2011) (“AIA”), amended 35 U.S.C. § 103. Because the challenged claims
of the ’477 patent have an effective filing date before the effective date of
the applicable AIA amendments, we refer to the pre-AIA version of § 103.
4 Ex. 1003, Vossen, U.S. 6,026,402, issued Feb. 15, 2000.
5 Ex. 1004, Denning, Cryptography and Data Security, 1982.
6 Ex. 1006, McGovern, U.S. 2005/0097260 A1, published May 5, 2005.
7 Ex. 1007, Kung, U.S. 5,265,159, issued Nov. 23, 1993.
8 The Petition’s listing of claims 54–57 separately under Vossen in view of
Nagar appears to be a typographical error. See Pet. 12, 67. Aspects of the
discussion of claim 54 rely on Denning (id. at 69), as well as on the prior
discussion of claims 26 and 27 (id. at 68, 69), which also rely on Denning.
9 Ex. 1005, Nagar, Windows NT File System Internals, A Developer’s Guide,
1997.
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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.
2. Denning
Denning is non-patent literature (a book) intended for graduate level
computer science courses concerning cryptography and data security.
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Ex. 1004, 5–6.10 Chapter 4 of Denning deals with access control 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.” Id. at 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.
3. McGovern
McGovern is 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, Abstract, ¶ 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. Kung
Kung is directed to “methods of deleting (erasing) files stored on
permanent storage media of a computer system that eliminates the

10 Exhibit 1004 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
1004.
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possibility of recovery of the data as a readable file by unauthorized
persons.” Ex. 1007, 1:6–10. Kung discloses known techniques for such a
secure erasure in which 0s and 1s 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.
5. Nagar
Nagar is non-patent literature (a book) intended as a tutorial or
reference for computer software engineers regarding internal structures of
the Windows NT operating system. Ex. 1005, 12.11 Nagar discloses filter
drivers as an aspect of the Windows NT architecture. Id. at 51. A filter driver
in Nagar intercepts requests from a first layer of a device interface before the
request reaches its intended target layer interfacing to an I/O device and may
“extend, or simply replace, the functionality provided by the original
recipient of the request.” Id. Nagar Figure 2-6 is reproduced below.

11 Exhibit 1005 includes original page and sequential exhibit page numbers
added by Petitioner. This Decision refers to the sequential exhibit page
numbers.
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Figure 2-6 illustrates two locations in the Windows NT operating
system (“kernel”) architecture at which a filter driver may be inserted to
intercept requests—for example, between the Windows NT I/O Manager
layer and the file system (“NTFS or FAT or CDFS, etc.”) or between the file
system and the disk driver. Id. at 52–53. Nagar discloses that one exemplary
filter driver may provide virus scanning capabilities for data to be written to
the disk drive. Id. at 498–99.
Figure 12-2 of Nagar is reproduced below.

Figure 12-2 illustrates a filter driver inserted as a layer between the
I/O Manager layer and the File System Driver, wherein the filter driver
intercepts file system requests and processes data to check for known virus
signatures. Id.
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II. ANALYSIS
A. Legal Standards
In Graham v. John Deere Co., 383 U.S. 1 (1966), the Supreme Court
set out a framework for assessing obviousness under 35 U.S.C. § 103 that
requires consideration of four factors: (1) the “level of ordinary skill in the
pertinent art,” (2) the “scope and content of the prior art,” (3) the
“differences between the prior art and the claims at issue,” and (4)
“secondary considerations” of non-obviousness such as “commercial
success, long felt but unsolved needs, failure of others, etc.” Id. at 17–18.
Neither party has presented evidence or argument directed to secondary
considerations. The other Graham factors are addressed below.
B. Level of Ordinary Skill
Petitioner contends a person of ordinary skill in the art (a “POSA”)
“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. 6 (citing Ex. 1002 ¶ 41). Patent Owner
provides a similar definition, stating a POSA “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. 13 (citing
Declaration of Dr. Jose Luis Melendez ¶ 38, (Ex. 2001)); see Ex. 2001 ¶ 38
(Dr. Melendez testifying that a POSA may also have a degree in electronics
engineering or applied mathematics).
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Thus, the parties dispute whether a POSA must have a degree in
computer science/engineering or whether a POSA could instead have a
degree in electrical engineering as well as whether the POSA’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 POSA,
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.
Based on the record before us, including the types of problems and
solutions described in the ’477 patent and the cited prior art, we determine
that a person of ordinary skill in the art would have had a bachelor’s degree
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 party’s definition.
C. Claim Construction
In an inter partes review, a claim “shall be construed 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).” 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. In re
Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). If the
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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.” Phillips v. AWH Corp., 415 F.3d 1303,
1316 (Fed. Cir. 2005) (en banc) (citing CCS Fitness, Inc. v. Brunswick
Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)).
1. Associating
Although both parties assert that none of the claims needs to be
construed expressly (Pet. 7; PO Resp. 14), the parties dispute the meaning of
the phrase “associating an access privilege with at least a portion of the
storage medium,” as recited in claim 1. Patent Owner argues that this means
“the claimed method combines or joins the access privilege with the storage
medium.” PO Resp. 19 (citing Ex. 2001 ¶ 44). During oral argument, Patent
Owner stated that the claimed “associating” language requires that the
access privilege be “saved or stored in the physical storage medium.”
Tr. 36:21–24. Petitioner argues that construing the “associating” phrase as
Patent Owner proposes would improperly import an unclaimed embodiment
from the specification into the claims. Reply 2–6. For the reasons explained
below, we agree with Petitioner.
We begin our analysis with the claim language. In re Power
Integrations, Inc., 884 F.3d 1370, 1376 (Fed. Cir. 2018) (“Claim
construction must begin with the words of the claims themselves.” (brackets
and citation omitted)). The disputed phrase recites “associating an access
privilege with at least a portion of the storage medium.” Claim 1 does not
recite “combine,” “join,” “saved” or “stored” as proposed by Patent Owner.
Neither “combine” nor “join” appears anywhere in the ’477 patent. Nor does
the ’477 patent state that the access privilege must be stored in the storage
medium. See, e.g., Ex. 1001, 15:51–16:3, Fig. 6 (describing a preferred
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embodiment). It makes some sense to consider data stored in a storage
medium to be associated with that storage medium simply by virtue of being
stored there. But the converse—that associating with a storage medium
requires storing in the storage medium—does not follow from a plain and
ordinary reading of the claim language. The record does not contain
persuasive evidence or argument showing that the plain and ordinary
meaning of “associating” means “storing.”
Therefore, we turn to the Specification, which “is always highly
relevant to the claim construction analysis. Usually, it is dispositive; it is the
single best guide to the meaning of a disputed term.” Phillips, 415 F.3d at
1315 (internal quotation and citation omitted). Patent Owner does not fully
explain its argument in its Response but cites to the disclosure of the ’477
patent pertaining to Figure 6, which is reproduced below. See, e.g., PO
Resp. 20; Sur-Reply 3.

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Figure 6 of the ’477 patent, reproduced above, is “a simplified flow diagram
of a method of providing software settable access privileges within
Windows NT®.” Ex. 1001, 8:51–52. Referring to Figure 6, the ’477 patent
explains the following:
In exemplary step 602, a storage medium is mounted within a
computer system. In exemplary step 604, the storage medium
may have stored thereon data relating to access privileges for the
storage medium. 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. The
limitations are recognized by the system software. In exemplary
step 608, upon mounting the storage medium, the data relating to
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access privileges for the storage medium may be loaded into the
trap layer 304.
Id. at 15:51–62.
Citing the ’477 patent’s disclosure pertaining to Figure 6, Patent
Owner argues that “the storage medium itself maintains access privileges
associated with the storage medium, independent of the computer.” PO
Resp. 20 (citing Ex. 1001, 15:51–16:3, Fig. 6; Ex. 2001 ¶¶ 45–46).
Although the method of Figure 6 clearly involves reading access
privilege data that are stored on the storage medium (Ex. 1001, 15:51–62),
claim 1 does not recite “reading access privilege data from the storage
medium” any more than it recites “storing access privilege data on the
storage medium.” Patent Owner’s proposed construction in effect would
rewrite the claim to require reading the privileges from the storage medium.
In the particular embodiment of Figure 6, it can be assumed that the
access privileges are associated with the storage medium by being stored
there, but the ’477 patent’s description of Figure 6 does not show that
associating privileges with a storage medium can only be accomplished by
storing the privileges on the storage medium. The claims recite
“associating,” and the Specification of the ’477 patent does not equate
“associating” and “storing.” Indeed, another claim of the ’477 patent uses
the word “storing.” See Ex. 1001, claim 13 (“storing user identification for
the user retaining said at least a portion of the storage medium;” “storing the
retention policy retaining said at least a portion of the storage medium;”
“storing the digital signature;” and “storing the hash keys”). The applicant’s
use of “associating” as opposed to “storing” in claim 1, absent some
lexicography equating the two terms, indicates that claim 1 is not as limited
as Patent Owner proposes.
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Moreover, the cited passage of the ’477 patent relates to a preferred
embodiment of the invention. See Ex. 1001, 15:49–51 (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 does not identify, nor do we
see, any language in the specification that expresses an intention to limit the
scope of the claims to the disclosed embodiments.
For these reasons, we do not agree with Patent Owner’s proposed
interpretation of “associating an access privilege with at least a portion of
the storage medium.” No further construction of this phrase or any other
claim term 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 address the meaning of any
other claim terms, we do so in the context of our unpatentability analysis.
D. Claims 1–5, 18–20, 22–25, 31, 32, 35–39, 43, and 44 — Obviousness
by Vossen and Denning
Petitioner asserts that the combination of Vossen and Denning renders
obvious claims 1–5, 18–20, 22–25, 31, 32, 35–39, 43, and 44. See Pet. 12–
48. Patent Owner opposes with respect to claims 1–5 and 18–20. See PO
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Resp. 1. Patent Owner provides no response with respect to claims 22–25,
31, 32, 35–39, 43, and 44. See generally PO Resp. For the reasons set forth
below, we determine Petitioner has shown that the combination of Vossen
and Denning renders obvious claims 1–5, 18–20, 22–25, 31, 32, 35–39, 43,
and 44. Pet. 12–48; Ex. 1002 (Declaration of Dr. Weissman) ¶¶ 51–147.
1. Claim 1
Petitioner asserts that the combination of Vossen and Denning teaches
or suggests each claim recitation of independent claim 1. See Pet. 19–30. In
general, Petitioner relies on Vossen’s filter driver that intercepts I/O requests
to check operations against set data structures as teaching most features of
independent claims 1 and 22. See, e.g., Pet. 16, 21–23. However, Petitioner
acknowledges that Vossen does not teach associating, allowing, or denying
an attempted operation based on enforcing a policy. Id. at 27. Petitioner
relies on the access control policies of Denning for this and provides a
number of reasons that a POSA “would have found it obvious to implement
Denning’s access controls in Vossen’s filter driver.” Id. at 28.
In particular, claim 1 requires a “method for applying an operation
access privilege to a storage medium,” as well as, “associating an access
privilege with at least a portion of the storage medium.” Petitioner argues
that this is taught by Vossen’s discussion of “providing a ‘restriction
mechanism that limits the portion of each file system that is accessible to
each process,” the file system being on a storage medium such as a hard
disk. Pet. 19–20 (quoting Ex. 1003 1:42–48).
Claim 1 also requires:
intercepting an attempted operation on said at least a portion of
the storage medium, wherein said intercepting occurs regardless
of an identity of a user attempting the attempted operation;
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comparing the attempted operation to the access privilege; and
allowing, or denying the attempted operation based on
comparing the attempted operation to the access privilege.
Petitioner argues that the filter driver, such as the Process Restriction Filter
Driver shown in Vossen’s Figure 6 (reproduced below), teaches these steps.
Id. at 22–27.

Figure 6 of Vossen, above, depicts an NT system configuration
including a process restriction filter driver. Ex. 1003, 2:59–60. Petitioner
argues that the filter driver intercepts all IRPs, i.e. I/O requests (attempted
operations), regardless of the identity of the user, which are then compared
against restrictions on accessing the file system. Pet. 22–26 (citing e.g., Ex.
1003, 4:22–30, 4:57–64, 8:25–27, 8:45–49, 9:55–56, 10:20–21, Fig. 6).
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Petitioner further argues that “[a]fter intercepting the IRP (“attempted
operation”), if the filter driver finds a match between the requested
operation on the file system and an entry in the data structure, the operation
is allowed” and that “if there is no corresponding entry in the data structures,
the operation is denied.” Id. at 27 (citing Ex. 1003, 8:45–48, 10:5–28).
Claim 1 concludes with “wherein at least one of: said associating, said
allowing, or said denying is based on enforcing a policy.” Petitioner argues
that this limitation is suggested by the combination of Vossen and Denning.
Id. at 27–30. Petitioner cites Denning’s teaching of access control policies
and enforcement methods for the claim’s requirement of “enforcing a
policy.” Id. at 27–28 (citing Ex. 1004, 69, 85, 87). As previously noted,
Petitioner provides a number of reasons that a POSA “would have found it
obvious to implement Denning’s access controls in Vossen’s filter driver,”
such as to provide “a more finely-grained system for controlling access to
files.” Id. at 28.
Patent Owner argues that Vossen does not describe claim 1’s
requirement of “associating an access privilege with at least a portion of the
storage medium.” PO Resp. 17. Patent Owner argues that “Vossen’s access
credentials are for use by the requesting processes and Vossen’s security
descriptors assign access permissions to users,” thereby rendering Vossen
“user-centric and process-centric” with the restrictions being “associated
with each [restricting] process” Id. at 18, 19 (emphases omitted). Patent
Owner argues that this is in contrast to the requirement of claim 1 where
“the claimed method combines or joins the access privilege with the storage
medium.” Id. at 19 (citing Ex. 2001 ¶ 44).
We are persuaded, and we find, that Vossen’s restrictions (i.e. access
privileges) are associated with at least a portion of the storage medium. As
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discussed above in our claim construction section (§ II.C.1), we do not agree
with Patent Owner’s assertions that “associating an access privilege with at
least a portion of the storage medium” means to “combine[] or join[] the
access privilege with the storage medium.” PO Resp. 19. Vossen discloses
“restricting a process or process hierarchy to a subset of a computer host’s
file system(s)” by using a SetProcessRootDirectories() function call to
“provide[] the path name of a file system hierarchy within which the calling
process should be restricted for one or more file systems.” Ex. 1003, 2:3–6,
8:25–31; see Pet. 21–22. Vossen also discloses that every hard disk has a
certain number of partitions and that “[e]ach partition has the potential to
contain a file system.” Ex. 1003, 6:22–25; see Pet. 21. Because each file
system to which restrictions are applied exists on a portion of a storage
medium, namely a hard disk partition, we are persuaded, and we find, that
Vossen’s disclosure of restricting access to a file system describes
“associating” the restriction with a portion of a storage medium, as asserted
by Petitioner. See Pet. 19–22.
Our findings in this regard are consistent with Patent Owner’s
characterization of Vossen’s disclosure as follows:
Vossen limits the ability of executing processes associated with
application programs and running within a computer from
accessing portions of storage that the processes are not
authorized to access. A [POSA] understands this means that
Vossen allows access by executing processes to only certain
portions of a logical storage medium.
PO Resp. 17 (emphasis added) (citing Ex. 1003, Abstract, 1:5–8, 1:11–14,
1:63–67, 2:3–6, 2:65–3:1; Ex. 2001 ¶ 41). Thus, even under Patent Owner’s
understanding, Vossen describes applying restrictions to a storage medium,
even if those restrictions further specify user and process restrictions. That
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Vossen’s restrictions may further be limited to particular users or processes
does not negate Vossen’s disclosure that the restrictions are associated with
the storage medium.
Based on the foregoing discussion and Petitioner’s persuasive
contentions, we find the Petition has identified how the combination of
Vossen and Denning teaches or suggests each element of independent
claim 1. Pet. 19–30; Ex. 1002 ¶¶ 51, 65–89. Further, we determine Petitioner
has demonstrated that one of ordinary skill in the art would have had reason
to combine the teachings of the references in the manner proposed by
Petitioner, including to “provide[] a more finely-grained system for
controlling access to files.” Pet. 28–30; Ex. 1002 ¶¶ 86–89.
2. Dependent Claim 4
Claim 4 depends from claim 1 and includes:
wherein said allowing, or said denying the attempted operation
comprises:
[a] allowing a create file operation to create a file
associated with said at least a portion of the storage medium;
[b] evaluating a content of the file; and
[c] at least one of allowing or deleting the file based on
said evaluating.
Relying on Denning’s disclosure of creating a new file, Petitioner
contends that the combination of Vossen and Denning teaches “allowing a
create file operation to create a file associated with said at least a portion of
the storage medium,” as recited in claim element 4[a]. Pet. 31 (citing
Ex. 1004, 74–75). Patent Owner does not dispute this contention. We are
persuaded, and we find, that Denning teaches this subject matter.
Ex. 1004, 74 (“Any process may create a new file.”).
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Petitioner further contends that the combination of Vossen and
Denning teaches allowing a user to alter a file based on a data dependent
condition, thereby teaching “evaluating a content of the file” and
“allowing . . . the file based on said evaluating” as recited in claim elements
4[b] and [c]. Pet. 32 (citing Ex. 1002 ¶¶ 94–95). In particular, Petitioner
relies on a specific example in Denning: “permitting a user to alter the
contents of only those student records for which the Department field is
Physics is an example of a data-dependent condition.” Ex. 1004, 72, cited in
Pet. 32.
Patent Owner argues that Petitioner has not shown Denning teaches
these limitations because “there is no file that is ‘allowed’ in Denning, nor
with respect to Vossen in view of Denning, based on ‘evaluating a content of
the file.’” PO Resp. 21 (citing Ex. 2001 ¶ 51); see generally id. at 20–22.
We disagree with this argument. Petitioner has shown that Denning
teaches evaluating the content of the file, and then not deleting the file after
evaluation, but rather allowing the file so that a user can alter it based on a
data dependent condition. Pet. 32; Ex. 1004, 72; Ex. 1009 ¶ 95. During oral
argument, Patent Owner explained that allowing a file “means to not delete
it after the evaluating. So, you’ve made this choice that, okay, we’re not
going to delete this thing; we’re going to allow it.” Tr. 43:6–9; see also Tr.
42:19–44:23 (discussion of what it means to allow a file). We agree with
Petitioner that Denning teaches this subject matter because the file must
exist, i.e., must not be deleted, to allow it to be altered. Petitioner’s assertion
fits squarely within Patent Owner’s understanding of the scope of
“allowing.”
During oral argument, Patent Owner stated that, “even if an altered
file is created based on the evaluated data from the database, there’s no
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indication that this created new file’s contents are evaluated.” Tr. 46:10–18.
This argument is not persuasive because the content of the file was already
evaluated. Ex. 1004, 72. Claim 4 does not require a second evaluating step.
Rather, claim 4 requires “evaluating the content of the file” and “at least one
of allowing, or deleting the file based on said evaluating.” We agree with
Petitioner’s contention that Denning’s disclosure of data-dependent
conditions teaches evaluating a content of a file and allowing the file based
on the evaluation, so that the user can alter the file, for example. Pet. 32. In
Denning, the file is evaluated, and if it meets certain conditions, a user may
alter it. Thus, the file is allowed, and not deleted, so that the user can alter it.
Patent Owner also argues that, “[u]nder Denning, all that is ‘allowed’
is the new version of a file with its new, altered content.” PO Sur-Reply 7.
Denning, however, does not disclose that a new version of the file is created
after alteration of the contents; rather, it discloses that a user may “alter the
contents” of the existing file, which is not deleted and is thus allowed.
Ex. 1004, 72. In any event, whether or not a new, altered file is created does
not negate Denning’s teaching of allowing the file that was evaluated, and
not deleting it, so that the file can be altered. Furthermore, Patent Owner’s
suggestion that claim 4 prohibits altering the contents of the file after the
recited evaluating and allowing steps has no basis in the claim language. See
PO Sur-Reply 6–7.
Patent Owner also argues that Denning teaches evaluating fields in
records, not the content of a file. PO Resp. 21. Denning actually discloses
accessing data objects based on data-dependent conditions, and Denning
explains that objects include “files, relations, records, or fields within
records.” Ex. 1004, 72. Dr. Weissman testifies that a person of ordinary skill
in the art “would understand that the discussion of ‘data-dependent
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conditions’ in Denning are not limited to records alone but can be applied to
files generally (as ‘files’ and ‘records’ are both referred to broadly as
‘objects’ that contain data and metadata (e.g., fields or attributes)).”
Ex. 1002 ¶ 90. Claim 2 recites “wherein said allowing or said denying
comprises at least one of allowing, or denying the attempted operation based
on a content of a logical file associated with said at least a portion of the
storage medium.” For that claim, Petitioner also relies on Denning’s
disclosure of permitting the user to alter contents of records for which the
department is physics. Pet. 30 (citing Ex. 1004, 72; Ex. 1002 ¶ 90). As
discussed in § II.D.3 (analyzing dependent claims 2, 3, 5, and 18–20), we are
persuaded that Petitioner has met its burden of proof for claim 2, including
that Denning’s disclosure of basing a decision on the content of a record,
which requires some evaluation of that record, renders obvious basing a
decision on the content of a logical file. Thus, as with claim 2, we also are
persuaded by Petitioner’s contention that Denning’s disclosure of evaluating
the content of a record renders obvious evaluating the content of a file.
Indeed, Denning’s specific example of evaluating the content of a record is
in the broader context of data-dependent conditions for objects, which
include files. Ex. 1004, 72. Thus, we disagree with Patent Owner’s
attempted distinction based on Denning’s specific example using a record as
an object.
Based on the foregoing, we find the combination of Vossen and
Denning teaches the subject matter recited in claim 4, and for the reasons
discussed with respect to claim 1, we are persuaded that one of ordinary skill
in the art would have had reason to combine the teachings of the references.
Petitioner, therefore, has proven, by a preponderance of the evidence, that
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claim 4 is unpatentable as obvious over the combination of Vossen and
Denning.
3. Dependent Claims 2, 3, 5, and 18–20
Petitioner contends that the combination of Vossen and Denning
teaches or suggests all of the limitations of dependent claims 2, 3, 5, and 18–
20, which depend from claim 1. Pet. 30–36. Patent Owner does not
separately argue the patentability of these claims. See generally PO Resp.
We have reviewed Petitioner’s undisputed arguments and supporting
evidence regarding these claims and determine that the Petition has proven
that each element of dependent claims 2, 3, 5, and 18–20 is taught or
suggested by the teachings of Vossen and Denning or their combination. Pet.
30–36; Ex. 1002 ¶¶ 90–91, 96–107. Further, we determine Petitioner has
demonstrated sufficiently that one of ordinary skill in the art would have had
reason to combine the teachings of the references in the manner proposed by
Petitioner. Pet. 30–36; Ex. 1002 ¶¶ 90–91, 96–107.
4. Claims 22–25, 31, 32, 35–39, 43 and 44
Petitioner asserts that the combination of Vossen and Denning teaches
or suggests all of the limitations of independent claim 22 and claims 23–25,
31, 32, 35–39, 43 and 44, which depend therefrom. Pet. 13–19, 36–48.
Patent Owner does not argue the patentability of these claims. See generally
PO Resp.; see also Tr. 52:24–53:10 (Counsel for Patent Owner stating “the
board still needs to consider if the evidence petitioner cited meets their
burden to invalidate even if patent owner doesn’t challenge particular
claims.”); 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d); Dynamic Drinkware, 800
F.3d at 1378).
Independent claim 22 is similar to claim 1 but does not include any of
the aspects of claim 1 argued by Patent Owner, such as “associating an
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access privilege with at least a portion of the storage medium.” For the
similar aspects, Petitioner relies on the same teachings of Vossen and
Denning discussed above. See, e.g., Pet. 36 (“Vossen discloses [22.p] as
explained in [1.p] . . . .”).
Claim 22 also includes differences. For example, where claim 1 states:
“intercepting an attempted operation on said at least a portion of the storage
medium,” claim 22 states “intercepting at least one of said attempted access
operation or said attempted write operation, prior to permitting or not
permitting said operation on the at least a portion of the storage medium.”
Like in claim 1, Petitioner relies on Vossen’s filter driver for teaching
intercepting the claimed operations. Compare Pet. 37, with id. at 22–24.
Petitioner argues that Vossen’s filter driver reviews the intercepted operation
prior to permitting or denying the operation. Id. at 37–38 (citing Ex. 1003,
10:5–28; Ex. 1002 ¶ 110).
We have reviewed Petitioner’s arguments and supporting evidence
regarding claim 22 and determine that Petitioner has shown by a
preponderance of the evidence that claim 22 is rendered obvious by the
combination of Vossen and Denning. Pet. 13, 36–40; Ex. 1002 ¶¶ 108–122.
Further, we determine Petitioner has demonstrated sufficiently that one of
ordinary skill in the art would have had reason to combine the teachings of
the references in the manner proposed by Petitioner. Pet. 28–30; Ex. 1002 ¶¶
86–89.
Further, we are persuaded that the Petition has proven that each
element of dependent claims 23–25, 31, 32, 35–39, 43 and 44 is taught or
suggested by the teachings of Vossen and Denning or their combination.
Pet. 41–48; Ex. 1002 ¶¶ 123–147. Further, we determine Petitioner has
demonstrated sufficiently that one of ordinary skill in the art would have had
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reason to combine the teachings of the references in the manner proposed by
Petitioner. Pet. 28–30, 44; Ex. 1002 ¶¶ 86–89, 134.
E. Claims 6–8, 10–12, 14, 17, 21, 45, 48, and 50 — Obviousness over
Vossen, Denning, and McGovern
Petitioner asserts that the combination of Vossen, Denning, and
McGovern renders obvious dependent claims 6–8, 10–12, 14, 17, 21, 45, 48,
and 50. Pet. 48–61. We have reviewed Petitioner’s arguments and
supporting evidence regarding these claims and determine that Petitioner has
shown by a preponderance of the evidence that claims 6–8, 10–12, 14, 17,
21, 45, 48, and 50 would have been obvious over the combination of
Vossen, Denning, and McGovern. Pet. 48–61; Ex. 1002 ¶¶ 148–177.
1. Dependent Claims 6, 10, and 11
Claim 6 depends from claim 1 and requires:
wherein said enforcing the policy comprises enforcing a
retention policy comprising preventing said a least a portion of
the storage medium in a retained state from being modified while
a retention period of said at least a portion of the storage medium
is unexpired.
Claim 10 depends from claim 6 and requires:
wherein said associating the access privilege comprises holding
the retained state.
Claim 11 depends from claim 10 and requires:
wherein said holding the retained state comprises at least one of:
suspending expiration of a retained state portion of the
storage medium;
suspending an unexpired retained state portion of the
storage medium from entering an expired retained state;
. . . or
suspending deletion of an expired retained state portion of
the storage medium.
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Petitioner cites McGovern as teaching a “retention date” for a file that
“causes the system to observe . . . WORM properties . . . (no deletion, no
modification, etc.) for the WORM file during the applicable retention
period.” Pet. 52 (quoting Ex. 1006 ¶ 119) (citing Ex. 1006 ¶¶ 20, 125).
Petitioner argues that “[b]ecause the system prevents modification of the file
. . . until after ‘expiry of the retention date,’” McGovern teaches the
limitations of claims 6 and 10. Id. at 52–53, 54–55 (quoting Ex. 1006 ¶ 20)
(citing Ex. 1002 ¶¶ 157, 163).
For claim 11, the Petition cites McGovern as teaching “a procedure
for extending a retention date/time in a committed WORM file.” Id. at 55
(quoting Ex. 1006 ¶ 36) (citing Ex. 1006 ¶ 127, Fig. 12). Petitioner argues
that McGovern teaches that “[t]he retention period may be set to any date so
long as it is ‘further in the future than the existing date.’” Id. at 56 (quoting
Ex. 1006 ¶ 128). Petitioner argues that McGovern’s system of “[e]xtending
the retention date infinitely suspends the expiration of the file, which
suspends the file from being deleted,” as required by claim 11. Id. (citing
Ex. 1002 ¶ 164).
Petitioner provides a number of different reasons why it would have
been obvious to have combined McGovern’s teachings with Vossen and
Denning, for example, to “provide[] additional functionality for controlling
access to files,” and to “provide the advantage of ‘enhanced data integrity.’”
Id. at 51 (quoting Ex. 1006 ¶ 2) (citing Ex. 1002 ¶ 153).
Patent Owner does not separately contest the patentability of claims 6
and 10. See generally PO Resp. Concerning the patentability of claim 11,
Patent Owner focuses on the term “suspending” and the asserted differences
between the teachings of the ’477 patent and McGovern. Id. at 22–25. Patent
Owner argues that in contrast to McGovern, “[t]he ’477 Patent does not
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change the retention date/time.” Id. at 23–24. Patent Owner continues, the
“‘477 Patent approach is superior to the one disclosed in McGovern
[changing the date] because once the suspension is lifted in the ‘477 Patent,
the system is able to revert back to normal immediately, allowing the
previous, still existing expiration dates to be applied.” Id. at 24 (citing Ex.
2001 ¶ 55). Thus, Patent Owner argues that McGovern’s “changing” the
date is not the same as “suspending” in the ’477 patent.
Patent Owner also argues that a POSA “would understand
‘suspending’ to mean temporarily setting aside or making inoperative the
‘enforcing a retention policy’ of claim 6 of the ‘477 Patent, from which
claim 11 indirectly depends, until such time as the suspension is lifted.” Id.
at 25 (citing Ex. 2001 ¶ 55).
In support of its position, Patent Owner cites the language of the
claims and column 21, lines 54–61 of the ’477 patent. See id. at 23–25.
Noticeably absent in Patent Owner’s Response, however, is a discussion of
either as to why “suspending” in claim 11 cannot include changing or
extending the expiration date to a later date.
We determine that the term “suspending” in claim 11 does not
exclude changing or extending the expiration date to a later date as argued
by Patent Owner. Starting with the claims, nowhere does claim 11 explicitly
or implicitly require that the term “suspending” exclude changing or
extending the expiration date to a later date. As noted above, Patent Owner’s
Response does not directly discuss how the term “suspending” is used in
claim 11. Claim 11 requires that “holding the retained state comprises at
least one of” four different “suspending” steps. One of these is simply
“suspending expiration of a retained state portion of the storage medium.”
There is nothing in this limitation that would exclude changing or extending
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the expiration date to a later date from being included in “suspending
expiration.”
Patent Owner does argue that the alternative step in claim 11 of
“suspending deletion of an expired retained state” cannot include extending
the expiration date and therefore “suspending” also cannot include
extending. Sur-Reply 10. However, the step of “suspending expiration”
discussed above does not include reference to the “expired retained state”
and thus is not limited by the absent language.
The portion of the ’477 patent Specification relied on Patent Owner
lists a number of examples, the first of which is: “[a]ccording 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.” Ex. 1001, 21:54–58. Similarly, Petitioner relies on McGovern’s
system of “[e]xtending the retention date infinitely [to] suspend[] the
expiration of the file, which suspends the file from being deleted,” for the
teachings of claim 11. Pet. 56 (citing Ex. 1002 ¶ 164). Patent Owner does
not address why McGovern’s teaching of “[e]xtending the retention date
infinitely” is different from the ’477 patent’s teaching of “the retention
policy expiry [being] . . . suspended indefinitely.”12 Further, this
embodiment relied upon by Patent Owner gives no indication that the term
“suspension” in the ’477 patent excludes changing or extending the
expiration date to a later date. See Reply 13.

12 Patent Owner does state that indefinitely “does not mean forever, but
rather lasting for an undefined time,” but does not address how McGovern’s
indefinite suspension of expiration of a file is different from that taught in
the ’477 patent or required by claim 11. See Sur-Reply 10–11.
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Similar to the “suspending deletion of an expired retained state”
limitation in claim 11, the ’477 patent Specification also includes
discussions of this situation, including at least impliedly in a later
embodiment of the section relied on by Patent Owner. See Ex. 1001, 21:59–
61 (“In an exemplary embodiment, the legal hold may prohibit and/or inhibit
the deletion of files even if their retention period is expired.”); see also Sur-
Reply 10. But this embodiment does not support Patent Owner’s position
that the ’477 patent and claims require the term “suspending” to exclude
changing or extending the expiration date to a later date.
In view of the above and Petitioner’s arguments and supporting
evidence, we determine that the Petition has proven that each element of
dependent claims 6, 10, and 11 is taught or suggested by the teachings of
Vossen, Denning, and McGovern or their combination. Pet. 48–56; Ex. 1002
¶¶ 148–165. Further, we determine Petitioner has demonstrated that one of
ordinary skill in the art would have had reason to combine the teachings of
the references in the manner proposed by Petitioner. Pet. 51–52; Ex. 1002
¶¶ 153–154.
2. Dependent Claims 7, 8, 12, 14, 17, 21, 45, 48, and 50
Petitioner asserts that the combination of Vossen, Denning, and
McGovern renders obvious dependent claims 7, 8, 12, 14, 17, 21, 45, 48, and
50. Pet. 48–54, 56–61. Claims 7, 8, 12, 14, 17, and 21 depend from claim 1.
Claims 45, 48, and 50 depend from claim 22. Patent Owner does not
separately argue the patentability of these claims. See generally PO Resp.
We have reviewed Petitioner’s undisputed arguments and supporting
evidence regarding these claims and determine that the Petition has proven
that each element of dependent claims 7, 8, 12, 14, 17, 21, 45, 48, and 50 is
taught or suggested by the teachings of Vossen, Denning, and McGovern or
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their combination. Pet. 48–54, 56–61; Ex. 1002 ¶¶ 148–162, 166–177.
Further, we determine Petitioner has demonstrated sufficiently that one of
ordinary skill in the art would have had reason to combine the teachings of
the references in the manner proposed by Petitioner. Pet. 51–52; Ex. 1002
¶¶ 153–154.
F. Claims 16 and 46 — Obviousness over Vossen, Denning, and Kung
Petitioner asserts that the combination of Vossen, Denning, and Kung
renders obvious dependent claims 16 and 46. Pet. 61–64. Patent Owner
opposes. PO Resp. 25–34. We have reviewed Petitioner’s arguments and
supporting evidence regarding these claims and determine that Petitioner has
shown by a preponderance of the evidence that claims 16 and 46 would have
been obvious over the combination of Vossen, Denning, and Kung. Pet. 61–
64; Ex. 1002 ¶¶ 178–183.
1. Dependent Claim 16
Claim 16 depends from claim 1 and further recites:
wherein said allowing, or said denying the attempted operation
comprises forcing a secure erasure for a delete operation on said
at least a portion of the storage medium, wherein the secure
erasure comprises at least one of overwriting the content of said
at least a portion of the storage medium . . . .
Petitioner focuses on the secure erasure being overwriting content.
Pet. 63. In particular, Petitioner relies on Kung to teach “[o]ne ‘conventional
method of file deletion requires a user to overwrite 0’s and 1’s over the
entire data file.’” Id. (quoting Ex. 1007, 1:24-27). Petitioner argues that a
POSA would have found it obvious to modify Vossen and Denning because
“Kung discusses the need to delete files to ‘eliminate[] the possibility of
recovery of the data as a readable file by unauthorized persons.’” Id. at 62
(quoting Ex. 1007, 1:7–10).
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Patent Owner first argues that Kung teaches away from overwriting
data. PO Resp. 26. Patent Owner argues that a POSA “upon reading Kung,
would be discouraged from overwriting content in the limited way disclosed
in the background section [i.e. the conventional method] of Kung because
the specific method discussed is slow and Kung’s invention ‘eliminates the
weaknesses mentioned with regard to the conventional file erasure
methods.’” Id. (quoting Ex. 1007, 1:46-52) (citing Ex. 1007, 1:27–29; Ex.
2001 ¶ 58).
Although Kung describes the conventional method 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. 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”). 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, both lost
and gained, should be weighed against one another.” Id. Kung itself
discloses that a benefit to the conventional method is that it “ensure[s] that
the stored information cannot be recovered.” Ex. 1007, 1:27–29. Thus,
Kung’s express disclosure supports Petitioner’s proposed motivation to
combine—to enhance security. See Pet. 62 (citing Ex. 1002 ¶ 179). 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.
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Furthermore, we do not agree that Petitioner’s contention based on
Kung’s disclosure of overwriting data with 0s and 1s is “based on an identity
of a user,” as asserted by Patent Owner. See PO Resp. 29–30. Patent
Owner’s argument appears to be based on Kung’s disclosure that this
method “requires a user to overwrite 0’s and 1’s over the entire data file as
to remove any magnetic remnants of the removed information.” Ex. 1007,
1:24–27, quoted in PO Resp. 29. In the next sentence, however, Kung states
that “the system must write 0’s and 1’s many times to ensure that the stored
information cannot be recovered.” Ex. 1007, 1:27–29. Thus, this is a process
performed by the system.
Patent Owner also disputes “Petitioners’ second theory.” PO Resp. 30
(“that the one-way encryption methods taught in Kung that involve key
destruction disclose the ‘secure erasure’”). However, the Petition does not
include any discussion of a second theory. See generally, Pet. 61–63.13
In conclusion, we are persuaded by Petitioner’s contentions and the
underlying evidence cited in support regarding the limitations of claim 16
individually and as a whole, and we are persuaded that Petitioner has
sufficiently articulated reasoning with some rational underpinning that one
of ordinary skill in the art would have had reason to combine the teachings
of Vossen, Denning, and Kung. Pet. 61–63; Ex. 1002 ¶¶ 178–182. We, thus,
determine that Petitioner establishes by a preponderance of the evidence that
the subject matter of claim 16 would have been obvious over the
combination of Vossen, Denning, and Kung.

13 Even though Petitioner discusses the “second theory” and Patent Owner’s
arguments in its Reply, its counsel acknowledged that the Petition does not
rely on this theory. See Tr. 65:17–66:15.
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2. Dependent Claim 46
Claim 46 depends from claim 22 and further recites:
wherein said intercepting is performed by a trap layer further
comprising:
triggering by said trap layer initiating other actions
comprising at least one of:
. . .
determining when to actually erase contents with a
specific pattern,
wherein, at least one of:
. . .
an erasure is triggered immediately . . . .
Petitioner asserts that the combination of Vossen, Denning, and Kung
renders obvious dependent claim 46. Pet. 61–64. Petitioner relies on the
teachings of Kung (overwriting data with 1s and 0s), discussed above with
respect to claim 16, to teach the erasure by overwriting in claim 46. Id.
Petitioner also argues that “Kung teaches methods for ‘deleting
(erasing) files on permanent storage media’ (‘triggering by said trap layer
initiating other actions comprising at least one of: . . . determining when to
actually erase contents with a specific pattern’).” Id. at 63–64 (emphases
omitted) (quoting Ex. 1007, 1:5–10). Petitioner continues, “because of how
computers operate, Kung’s teaching of overwriting a file with 0s and 1s
teaches the claimed ‘erasure is triggered immediately,’ that is, as soon as the
command to do so is sent to a processor.” Id. at 64. It is also asserted that
Kung teaches overwriting with a specific pattern (0s and then 1s). Id. (citing
Ex. 1002 ¶ 183).
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Patent Owner argues that Kung teaches away from overwriting data,
which argument we have already rejected as discussed above with respect to
claim 16. PO Resp. 31–32.
Patent Owner admits that Kung teaches “writing over entire data files
uniformly with 0’s and then overwriting the same again uniformly with 1’s,”
but argues that this is not a specific pattern as required. Id. Patent Owner
also distinguishes the disclosure of the ’477 patent as only requiring a single
overwrite instead of the many passes required by Kung. Id. at 32. Though
the ’477 patent may disclose a single overwrite, this is not required by the
claims. See Reply 19–20. Indeed, one option in claim 46 recites overwriting
“more than once with a predetermined pattern.” Further, we determine that
overwriting with 0s and then overwriting with 1s teaches specific patterns.
See Ex. 1002 ¶ 183.
Patent Owner argues that the Petition fails to address “triggering by a
trap layer.” Id. at 33. However, the claim defines that the triggering can
comprise “determining when to actually erase contents with a specific
pattern” which Petitioner addresses as discussed above. Thus, Patent Owner
does not identify any missing element from Petitioner’s analysis.
Patent Owner also argues that “Petitioners are silent regarding how
‘determining when to actually erase contents’ wherein ‘an erasure is
triggered immediately’ is allegedly disclosed.” Id. at 33. This assertion is
inaccurate. As identified above, the Petition states that “because of how
computers operate, Kung’s teaching of overwriting a file with 0s and 1s
teaches the claimed ‘erasure is triggered immediately,’ that is, as soon as the
command to do so is sent to a processor.” Pet. at 64. Other than to again
assert that Kung teaches away from overwriting data, Patent Owner does
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39
address this discussion from the Petition, which we determine shows that
Kung teaches this element of the claim.
In conclusion, we are persuaded by Petitioner’s contentions and the
underlying evidence cited in support regarding the limitations of claim 46
individually and as a whole, and we are persuaded that Petitioner has
sufficiently articulated reasoning with some rational underpinning that one
of ordinary skill in the art would have had reason to combine the teachings
of Vossen, Denning, and Kung. Pet. 61–64; Ex. 1002 ¶¶ 178–181, 183. We,
thus, determine that Petitioner establishes by a preponderance of the
evidence that the subject matter of claim 46 would have been obvious over
the combination of Vossen, Denning, and Kung.
G. Claims 26, 27, and 54–57 — Alleged Obviousness by Vossen,
Denning, and Nagar
Petitioner asserts that Vossen, Denning, and Nagar render obvious
claims 26, 27, and 54–57. Pet. 64–74.14 Patent Owner does not argue the
patentability of these claims. See generally PO Resp.
Claims 26 and 27 ultimately depend from independent claim 22.15
Claim 26 recites “wherein said content is analyzed for existence of at least
one of: . . . harmful content.” Claim 27, which depends from claim 26,
further recites “wherein said harmful content comprises at least one of: a
computer virus, . . . a harmful file, or a malicious file.” Claim 54 is
independent, and claims 55–57 depend therefrom. Claim 54 recites
limitations similar to those recited in claims 1 and 22. However, like claim

14 As noted in footnote 8, the Petition’s listing of claims 54–57 under Vossen
in view of Nagar without Denning appears to be a typographical error.
15 Claim 26 depends from claim 25, which depends from claim 23, which
depends from claim 22.
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22, claim 54 does not include the limitations of claim 1. Patent Owner
argues for the patentability of that claim. Claim 54 further recites:
determining whether the at least one attempted operation
is permitted based upon analysis of the content of the data,
wherein the analysis identifies content comprising at least
one of:
. . . harmful content, a computer virus, . . . , a
harmful file, . . . , or a malicious file; and
permitting, or not permitting the attempted operation
based on said determining.
Petitioner focuses on the “harmful content” aspect in claims 26 and 54
and the “computer virus,” “harmful,” or “malicious file” in claims 27 and
54. Pet. 66–67, 69. Petitioner cites Nagar’s virus detection filter driver as
teaching “a filter driver to analyze content to determine whether or not to
permit an operation using that content.” Id. at 66. Specifically, Petitioner
contends Nagar’s use of a virus detection filter driver to check for any virus
signatures in received data teaches “said content is analyzed for existence of
at least one of . . . harmful content” recited in claim 26 and similarly in claim
54. Pet. 66, 69 (citing Ex. 1005 619–620; Ex. 1002 ¶¶ 189–190). Petitioner
further contends that Nagar’s teaching that “viruses in files” are detected
before they are copied to a device, teaches “wherein said harmful content
comprises at least one of: a computer virus, . . . , a harmful file, . . . , or a
malicious file” as recited in claim 27 and similarly in claim 54. Id. at 67, 69
(citing Ex. 1002 ¶¶ 192–193, 200). Petitioner also argues that a POSA
“would have been motivated to use the filter device to provide a virus-
detection module because of the desire to protect computing systems from
being infected by viruses.” Id. at 67 (citing Ex. 1002 ¶ 191).
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We have reviewed Petitioner’s arguments and supporting evidence
regarding claims 26, 27, and 54–57 and determine that Petitioner has shown
by a preponderance of the evidence that they are rendered obvious by the
combination of Vossen, Denning, and Nagar. Pet. 64–74; Ex. 1002 ¶¶ 184–
207. Further, we determine Petitioner has demonstrated sufficiently that one
of ordinary skill in the art would have had reason to combine the teachings
of the references in the manner proposed by Petitioner. Pet. 65–66; Ex. 1002
¶¶ 186–188.
H. Constitutionality of Inter Partes Review Proceedings
Patent Owner asserts that inter partes review proceedings are
“unconstitutional under the Takings Clause . . . and Due Process Clause . . .
of the United States Constitution, as applied retroactively to this patent
which issued before” inter partes review proceedings became law. PO Resp.
34–35.
Petitioner correctly notes that:
Recent Federal Circuit cases foreclose these arguments.
Applying inter partes review to pre-AIA patents is not an
unconstitutional taking. See Celgene Corp. v. Peter, 931 F.3d
1342, 1358-63 (Fed. Cir. 2019). Nor does it upset due process.
See OSI Pharm., LLC v. Apotex, Inc., 939 F.3d 1375, 1385-86
(Fed. Cir. 2019). Petitions to upend these rulings have uniformly
failed. See, e.g., Enzo Life Scis., Inc. v. Becton, Dickinson & Co.,
780 Fed. Appx. 903, 911 (Fed. Cir. 2019).
Reply 23–24.
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. Celgene,
931 F.3d at 1362; Arthrex, Inc. v. Smith & Nephew, Inc., 935 F.3d 1319,
1332 (Fed. Cir. 2019).
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III. CONCLUSION16
For the reasons discussed above, we determine Petitioner has proven,
by a preponderance of the evidence, that all of the challenged claims are
unpatentable, as summarized in the following table:

16 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.
16,654 (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).
Claims

35
U.S.C. §
Reference(s)/
Basis
Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1–5, 18–20,
22–25, 31,
32, 35–39,
43, 44
103 Vossen,
Denning
1–5, 18–20,
22–25, 31, 32,
35–39, 43, 44

6–8, 10–12,
14, 17, 21,
45, 48, 50
102, 103 Vossen,
Denning,
McGovern
6–8, 10–12,
14, 17, 21, 45,
48, 50

16, 46 103 Vossen,
Denning, Kung
16, 46
26, 27, 54–
57
103 Vossen,
Denning, Nagar
26, 27, 54–57
Overall
Outcome
1–8, 10–12,
14, 16–27, 31,
32, 35–39,
43–46, 48, 50,
54–57

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IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–8, 10–12, 14, 16–27, 31, 32, 35–39, 43–46,
48, 50, 54–57 of the ’477 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.

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UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

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

IPR2019-00606
Patent 8,234,477 B2

DOUGAL, Administrative Patent Judge, dissenting-in-part.

I join the majority decision in all respects except for § II.D.2
(analyzing dependent claim 4), from which I respectfully dissent.
I agree with Patent Owner that Petitioner has not shown that Denning
allows a file based on the file’s evaluated content and that “[a]ltering
contents by a user based on a Department field of Physics has nothing to do
with ‘allowing or deleting the file’ based on evaluating.” PO Resp. 21–22
(citing Ex. 2001 ¶ 51).
The extent of Petitioners argument with respect to claim element 4[c]
(“at least one of allowing or deleting the file based on said evaluating”)
reads as follows:
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Vossen in view of Denning teaches [4.c] as explained in
[4.b]. Because Denning teaches enabling a user to alter contents
“for which the Department field is Physics is an example of a
data-dependent condition,” Denning teaches the claimed
“allowing…the file based on said evaluating.”
Pet. 32 (citing Ex. 1004; Ex. 1002 ¶ 95). Dr. Weissman’s testimony
merely repeats what is stated in the Petition. See Ex. 1002 ¶ 95.
It is Petitioner’s burden to demonstrate that the cited art teaches each
limitation of the challenged claims and to show by a preponderance of the
evidence that the claims are unpatentable. See 35 U.S.C. § 316(e) (2018);
37 C.F.R. § 42.1(d). This burden never shifts to Patent Owner. See Dynamic
Drinkware, LLC. v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
2015). The claims require “allowing or deleting the file” based upon
“evaluating the content of the file.” The Petition does not persuasively
explain how enabling a user to alter contents of a file based on a data-
dependent condition and then passively not deleting the file is the same as
allowing or deleting the file based on said evaluating. As the Petition does
not establish that the combination of Vossen and Denning teaches allowing
or deleting the file based on evaluating a content of the file, it has not
established that claim 4 is unpatentable.
The majority states that Petitioner established that Denning teaches
“allowing the file so that a user can alter it based on a data dependent
condition.” Though I agree that Denning teaches allowing an attempted
operation (i.e. altering the file based on a data dependent condition) as
required by claim 2, I feel that the majority ignores the language of the
claim.
In its Reply, Petitioner contends that because enabling a user to alter
contents of a record allows the file to exist, the file was not deleted and is
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46
therefore “allowed.” See Reply 9–10; see also id. at 10 (stating the “file that
was created and whose content was evaluated is not deleted but ‘allow[ed]”);
id. at 11 (stating “the file that was created and evaluated is not deleted, but is
‘allow[ed]’ to persist” (citing Ex. 1004, 72; Ex. 1002 ¶ 95; Pet. 32).
Petitioner further explains, Denning teaches that “any process may create a
new file,” “[t]he file can be modified based on data-dependent conditions,”
and the “created [file] . . . whose content was evaluated is not deleted but
‘allow[ed].’” Reply 10 (citing Ex. 1004, 72). This argument is not present in
the Petition. Though the Petition discusses allowing an “attempted
operation” with respect to claims 2 and 3 (Pet. 30–31), the Petition does not
address why allowing the file as required by claim 4 is the same as allowing
an attempted operation. See Pet. 32.
Not only did Petitioner not establish that Denning teaches allowing
the file to persist in the Petition, I do not agree with the majority that this
“fits squarely within Patent Owner’s understanding of the scope of
‘allowing.’” Patent Owner has consistently argued that allowing or deleting
the file must be based on the evaluation, as explicitly required by the claim
language. As stated during oral argument, Patent Owner explained that
allowing a file “means to not delete it after the evaluating. So, you’ve made
this choice that, okay, we’re not going to delete this thing; we’re going to
allow it.” Tr. 43:6–9; see also Tr. 42:19–44:23 (discussion of what it means
to allow a file). See PO Sur-Reply 6–8; see also Ex. 1001, 18:19–19:30
(discussing allowing or deleting the file based on evaluating the contents of
the file). Petitioner does not establish that Denning teaches making “this
choice,” whether to allow or delete the file based on evaluating the contents
of the file.
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For these reasons I disagree with the majority and would hold that
Petitioner has not established that claim 4 is unpatentable.

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FOR PETITIONER:
Erika H. Arner
Joshua L. Goldberg
Jason E. Stach
Cory Bell
Christopher C. Johns
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, L.L.P.
erika.arner@finnegan.com
joshua.goldberg@finnegan.com
jason.stach@finnegan.com
cory.bell@finnegan.com
christopher.johns@finnegan.com

Andrew V. Devkar
MORGAN, LEWIS & BOCKIUS LLP
andrew.devkar@morganlewis.com

Diek Van Nort
MORRISON & FOERSTER, LLP
dvannort@mofo.com

FOR PATENT OWNER:
Gregory S. Donahue
Andrew G. DiNovo
DINOVO PRICE LLP
gdonahue@dinovoprice.com
adinovo@dinovoprice.com