KOM Software, Inc.

Patent Trials and Appeals Board

Sep 2, 2020

IPR2019-00598 (P.T.A.B. Sep. 2, 2020)

Trials@uspto.gov Paper 35
571-272-7822 Date: September 2, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

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

IPR2019-00598
Patent 7,076,624 B2

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

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

IPR2019-00598
Patent 7,076,624 B2
2
I. INTRODUCTION
A. Background
NetApp, Inc. (“Petitioner”)1 filed a Petition to institute an inter partes
review of claims 1–11 and 22–31 (the “challenged claims”) of U.S. Patent
No. 7,076,624 B2 (“the ’624 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 13, “PO Resp.”), Petitioner
filed a Reply (Paper 15, “Reply”), and Patent Owner filed a Sur-Reply
(Paper 24, “Sur-Reply”). An oral hearing was held on May 27, 2020, and a
copy of the transcript was entered into the record. Paper 34 (“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 all of the
challenged claims of the ’624 patent are unpatentable.
B. Related Matters
Petitioner identifies the following pending litigation involving the
’624 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. 72–73.

1 Hewlett Packard Enterprise Co. settled with Patent Owner and is no longer
a part of this proceeding. See Paper 23.
IPR2019-00598
Patent 7,076,624 B2
3
Petitioner also filed another petition for inter partes review of the
’624 patent, which was denied. IPR2019-00600, Paper 10 (PTAB Sept. 5,
2019). Additionally, Petitioner indicates that it filed numerous other inter
partes review proceedings relating to patents owned by Patent Owner. See
Pet. 73.
C. The ’624 Patent
The ’624 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, 1:14–
15. The ’624 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 1:31–33.
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 2:15–16. 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 2:19–22. To solve this problem, the ’624 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 7:38–40. Figure 3 of the
’624 patent is reproduced below.
IPR2019-00598
Patent 7,076,624 B2
4

Figure 3 illustrates a block diagram of an operating system that
includes a trap layer. Id. at 7:30–43. 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 7:40–43. Some access requests are blocked and error
messages are returned to the application layer. Id. at 7:44–45. Some access
requests may be modified and passed on to the file system in modified form.
Id. at 7:45–47.
D. Illustrative Claims
Of the challenged claims, claims 1 and 22 are independent. Each of
dependent claims 2–11 and 23–31 depends directly or indirectly from
respective independent claims 1 and 22. Claim 1 illustrates the claimed
subject matter and is reproduced below:
1. A method of applying an operation access privilege to at least
a logical portion of a logical storage medium in communication
with a computer, the method comprising the steps of:
(a) providing an operation access privilege indicative of at
least one of an enabled operation and/or a restricted operation to
IPR2019-00598
Patent 7,076,624 B2
5
be performed on at least one logical portion of a logical storage
medium;
(b) associating said operation access privilege with at least
one logical portion of said logical storage medium;
(c) intercepting in a trap layer an attempted operation on
said at least one logical portion identified by at least one data
identifier, wherein said intercepting occurs regardless of an
identity of a user attempting said attempted operation, and
transparently to the user and transparently to a computer
application invoking said operation; and
(d) at least one of allowing said attempted operation if
matching said enabled operation, modifying and allowing said
modified attempted operation, and/or denying said attempted
operation if matching said restricted operation.
Ex. 1001, 10:20–43.
E. Instituted Grounds and Prior Art
Petitioner contends that the challenged claims would have been
unpatentable on the following grounds:2
Claims Challenged 35 U.S.C. §3 References/Basis
1–11, 22–31 102, 103 Nagar4
1–11, 22–31 102, 103 Vossen5
10, 31 103 Vossen, Willman6
10, 31 103 Vossen, Nagar

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. §§ 102 and 103. Because the
challenged claims of the ’624 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.
4 Ex. 1005, Nagar, Windows NT File System Internals, A Developer’s
Guide, 1997.
5 Ex. 1007, Vossen, U.S. 6,026,402, issued Feb. 15, 2000.
6 Ex. 1006, Willman, U.S. 5,363,487, issued Nov. 8, 1994.
IPR2019-00598
Patent 7,076,624 B2
6
1. 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, 12.7 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 interfacing 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’s Figure 2-6 is reproduced below.8

Figure 2-6 illustrates two locations in Windows NT operating system
(“kernel”) architecture at which a filter driver may be inserted to intercept
requests—e.g., 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

7 Exhibit 1005 includes original page and sequential exhibit page numbers
added by Petitioner. This Decision refers to the sequential exhibit page
numbers.
8 We note that Nagar’s Figure 2-6 as reproduced in Exhibit 1005 (Ex. 1005,
53) is of poor quality. Thus, we reproduce the version of Figure 2-6 inserted
in the Petition. See Pet. 15.
IPR2019-00598
Patent 7,076,624 B2
7
disk driver. Id. at 52–53. Nagar discloses 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.
2. 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
IPR2019-00598
Patent 7,076,624 B2
8
where all file systems are simultaneously available to an application.”
Ex. 1005, Abstract. 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’s Figure 6. Id. at
4:64–67.

IPR2019-00598
Patent 7,076,624 B2
9

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.

II. ANALYSIS
A. Legal Standards
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 631
IPR2019-00598
Patent 7,076,624 B2
10
(Fed. Cir. 1987). Moreover, “[b]ecause the hallmark of anticipation is prior
invention, the prior art reference—in order to anticipate under 35 U.S.C.
§ 102—must not only disclose all elements of the claim within the four
corners of the document, but must also disclose those elements ‘arranged as
in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369
(Fed. Cir. 2008). Whether a reference anticipates is assessed from the
perspective of an ordinarily skilled artisan. See Dayco Prods., Inc. v. Total
Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003) (“‘[T]he
dispositive question regarding anticipation [i]s whether one skilled in the art
would reasonably understand or infer from the [prior art reference’s]
teaching’ that every claim element was disclosed in that single reference.”).
In Graham v. John Deere Co. of Kansas City, 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 ¶¶ 33–35). Patent Owner
provides a similar definition, stating a POSA “should have a bachelor’s
IPR2019-00598
Patent 7,076,624 B2
11
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
Declaration of Dr. Jose Luis Melendez ¶ 34, (Ex. 2001)); see Ex. 2001 ¶ 34
(Dr. Melendez testifying that a POSA may also have a degree in electronics
engineering or applied mathematics).
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 ’624 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.
IPR2019-00598
Patent 7,076,624 B2
12
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
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. 6; PO Resp. 12), the parties dispute the meaning of
the phrase “associating said operation access privilege with at least one
logical portion of said logical storage medium,” as recited in claims 1
and 22. Patent Owner argues that a POSA “understands that ‘associating
said operation access privilege with at least one logical portion of said
logical storage medium’ means to combine or join the operation access
privileges within at least one logical portion of said logical storage
medium.” PO Resp. 21 (citing Ex. 2001 ¶ 48); see also id. at 25 (stating “the
inventive steps taught within the ’624 Patent” require that “the storage
medium itself maintains its associated operation access privileges
independent of the computer” (citing Ex. 1001, 9:42–64, Fig. 6; Ex. 2001
¶ 54)); Sur-Reply 6–11. During oral argument, Patent Owner clarified that
IPR2019-00598
Patent 7,076,624 B2
13
the claimed “associating” language requires that the access privilege be
“stored in the storage medium.” Tr. 59:12–60:10; see also id. at 60:19–20
(stating that “[i]t has to be stored in whatever storage medium is being
mounted”). Petitioner argues that construing the “associating” phrase as
Patent Owner proposes would improperly import an unclaimed embodiment
from the specification into the claims. Reply 14–16. 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 said
operation access privilege with at least one logical portion of said logical
storage medium.” The independent claims do not recite “combine,” “join,”
or “store” as proposed by Patent Owner. Neither “combine” nor “join”
appear anywhere in the ’624 patent. Nor does the ’624 patent state that the
access privilege must be stored in the storage medium. See, e.g., Ex. 1001,
9:42–64, Fig. 6 (describing a preferred 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’s argument
IPR2019-00598
Patent 7,076,624 B2
14
rests largely on the disclosure of the ’624 patent pertaining to Figure 6,
which is reproduced below. See, e.g., PO Resp. 20–23, 25; Sur-Reply 6.

Figure 6 of the ’624 patent, reproduced above, is “a simplified flow diagram
of a method of providing software settable access privileges within
Windows NT®.” Ex. 1001, 4:23–25. Referring to Figure 6, the ’624 patent
explains the following:
A storage medium is mounted within a computer system. The
storage medium has stored thereon data relating to access
privileges for the storage medium. Upon mounting the storage
medium, data relating to physical limitations of the read/write
IPR2019-00598
Patent 7,076,624 B2
15
device are loaded into the device driver for that device within the
file system layer. The limitations are recognised by the system
software. Also upon mounting the storage medium, the data
relating to access privileges for the storage medium are loaded
into the trap layer.
Id. at 9:44–52.
Citing the ’624 patent’s disclosure pertaining to Figure 6, Patent
Owner argues that “the ‘624 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. 22 (citing
Ex. 1001, Fig. 6; Ex. 2001 ¶ 49). Patent Owner asserts that “the storage
medium itself maintains its associated operation access privileges
independent of the computer.” Id. at 25 (citing Ex. 1001, 9:42–64, Fig. 6;
Ex. 2001 ¶ 54).
Although the method of Figure 6 clearly involves reading access
privilege data that are stored on the storage medium (Ex. 1001, 9:44–52),
claims 1 and 22 do not recite “reading access privilege data from the storage
medium” any more than they recite “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.
Patent Owner stated as much during oral argument: “[I]t’s our position that
the associating step is when you perform the method and the only method of
getting these operation access privileges off of the storage medium, such
that, you know, that the invention can actually be accomplished is through
this methodology.” Tr. 57:2–8.
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 ’624 patent’s description of Figure 6 does not show that
IPR2019-00598
Patent 7,076,624 B2
16
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 ’624 patent does not equate
“associating” and “storing.”
In addition to Figure 6 from the ’624 patent, Patent Owner cites the
Abstract, Figure 5, and portions of column 3 in its discussion of the
“associating” limitation, but Patent Owner provides no substantive
discussion of these passages to show how they support a construction of
“associating” to mean “storing.” See PO Resp. 21. The Abstract of the ’624
patent discloses “restricting file access . . . wherein a set of file write access
commands are determined from data stored within a storage medium.”
Ex. 1001, Abstract. The Abstract, however, does not mention “associating”
or “access privilege,” and Patent Owner provides no persuasive explanation
how this disclosure in the Abstract limits the claimed “associating” to
“storing.” Figure 5 of the ’624 patent is “a flow diagram of a method of
storing data in a storage medium” and describes that “[t]he trap layer
intercepts [a] request [to store data] and the data[,] and determines whether
the storage medium selected supports the operation.” Id. at 9:19–21, 9:27–
29. The description of Figure 5 does not mention “associating,” let alone
limit associating to “storing.” Thus, we do not view Figure 5 as any more
supportive of Patent Owner’s position than Figure 6. The passages from
column 3 of the ’624 patent are directed to methods involving “providing an
indication of a data write access privilege for the entire logical storage
medium,” but the passages do not mention “associating,” nor do they say
that the access privilege is stored on the storage medium. Id. at, 3:18–26,
3:43–55. Thus, we do not view these disclosures from the ’624 patent as
IPR2019-00598
Patent 7,076,624 B2
17
supporting Patent Owner’s attempt to limit the claimed “associating” to
“storing.”
For these reasons, we do not agree with Patent Owner’s proposed
interpretation of “associating said operation access privilege with at least
one logical portion of said logical storage medium.” No further construction
of this phrase or any other claim term is necessary. 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))).
D. Claims 1–11 and 22–31 — Anticipation by and Obviousness by
Nagar
Petitioner asserts that Nagar anticipates and renders obvious claims 1–
11 and 22–31. Pet. 14–36, 55–61. Patent Owner opposes. See PO Resp. 25–
33. For the reasons set forth below, we determine Petitioner has shown that
Nagar discloses or suggests the limitations of claims 1–11 and 22–31.
Pet. 14–36, 55–61; Ex. 1002 (Declaration of Dr. Weissman) ¶¶ 52–83, 117–
128.
1. Independent Claims 1 and 22
Petitioner asserts that Nagar discloses every limitation of independent
claims 1 and 22. Pet. 14–23, 34–36. Petitioner correctly notes that claims 1
and 22 only differ in their preamble.9 Id. at 35. Thus, though we only

9 We do not reach the issue of whether the preambles of claims 1 and 22 are
limiting as we are persuaded by Petitioner’s arguments that the recitations in
the preambles are satisfied by the prior art. See Pet. 14–16 (stating, inter
alia, use of Nagar’s filter driver to intercept requests targeting a logical
volume discloses the preamble of claim 1); see also id. at 34–35 (stating
IPR2019-00598
Patent 7,076,624 B2
18
address claim 1 below for clarity, the analysis for all of the limitations is the
same for claim 22. For its contention that Nagar anticipates or renders
obvious claim 1, Petitioner relies on Nagar’s disclosure of a filter driver
providing virus detection functionality which intercepts requests to a logical
portion of a logical volume. See generally Pet. 14–23, 34–36.
a) Operation Access Privilege
Claim 1 is directed to “[a] method of applying an operation access
privilege to at least a logical portion of a logical storage medium in
communication with a computer,” and recites:
(a) providing an operation access privilege indicative of at least
one of an enabled operation and/or a restricted operation to be
performed on at least one logical portion of a logical storage
medium.
. . .
(c) intercepting in a trap layer an attempted operation on said at
least one logical portion identified by at least one data identifier,
wherein said intercepting occurs regardless of an identity of a
user attempting said attempted operation, and transparently to the
user and transparently to a computer application invoking said
operation; and
(d) at least one of allowing said attempted operation if matching
said enabled operation, modifying and allowing said modified
attempted operation, and/or denying said attempted operation if
matching said restricted operation.
Petitioner asserts that Nagar teaches the “(a) providing” claim element
because the “filter driver forwards all read requests, as well as write requests
not containing viral signatures, . . . to a logical storage medium.” Pet. 16.

Nagar’s filter driver software, which can “sit[] above the file system”
discloses the preamble of claim 22).
IPR2019-00598
Patent 7,076,624 B2
19
Petitioner provides the following annotated version of Nagar’s Figure 12-2
(id. at 17.):

The above annotated version of Figure 12-2 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.” Ex. 1005, 498. Petitioner includes a red box around the text
“Filter driver will forward write requests if no viruses found (typically read
request are immediately forwarded).” Pet. 17. Petitioner argues that the
forwarded requests represent the claimed “enabled operation” and the denied
write requests with a virus represent the claimed “restricted operation.” Id. at
17. Petitioner further argues that forwarding read or write requests is the
same as “allowing said attempted operation if matching said enabled
operation,” as further required by element (d) of claim 1. Id. at 23 (citing Ex.
1002 ¶ 63).
IPR2019-00598
Patent 7,076,624 B2
20
Concerning claim element (c), Petitioner argues that the filter driver is
a trap layer that intercepts all requests, such as read and write, targeted to the
mounted logical volumes. Id. at 19–20 (citing, e.g., Ex. 1005, 498–499,
Fig. 12-2). Petitioner asserts that Nagar uses a pointer to identify a logical
volume (id. at 21 (citing, e.g., Ex. 1005, 499, 502, 506), which a POSA
would understand to be the data identifier required by claim 1 (id. (citing Ex.
1002, ¶ 60)). Further, Petitioner cites Nagar as teaching that “[t]he filter
driver . . . intercepts I/O requests in a way that ‘maintain[s] complete
transparency to the user’” while also intercepting all requests. Id. at 22
(quoting Ex. 1005, 497). Thus, Petitioner asserts that the actions of the filter
driver are both transparent to the user and occur independent of the user. Id.
Petitioner also argues that the filter driver operates transparently to the
computer application sending the request. Id. (citing Ex. 1005, 498–499; Ex.
1002 ¶ 62).
(1) Analysis
Patent Owner argues that Nagar does not teach an “operation access
privilege” as required by the claims. PO Resp. 25–29. Patent Owner argues
that this is because Nagar’s 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 not based on the attempted
operation (operation-based access privileges). Id. at 26–27. According to
Patent Owner, “[a]n ‘operation access privilege’ as recited in the ‘624 Patent
means that the ‘access privilege’ is of the ‘operation’ and not a privilege of
executing processes associated with application programs running within a
computer or the determination of the purity of data [i.e. content] to be
written as in Nagar.” Id. at 26 (citing Ex. 1004, 43; Ex. 1005, 498–499;
Ex. 2001 ¶ 56).
IPR2019-00598
Patent 7,076,624 B2
21
We disagree with Patent Owner’s attempted distinction over Nagar.
Claim 5 of the ’624 patent defines the “operation access privileges” as
follows: “wherein said operations comprise at least one of reading,
executing, appending, creating new objects, deleting, renaming, moving,
overwriting, modifying attributes, and/or modifying data object security.”
Ex. 1001, 10:54–58. Petitioner is correct in asserting that Nagar discloses
“differentiat[ing] between types of access operations acting on logical
volumes (e.g., read and write requests).” Pet. 19. Nagar discloses that
the filter driver module intercepts the I/O before it reaches the
file system. Now, the virus-detection module can check for any
virus signatures in the data being written out to disk. Note that in
most cases, read requests can be immediately forwarded by the
filter driver to the file system.
Ex. 1005, 499. Thus, Nagar expressly discloses two operation access
privileges identified in the ’624 patent—read and write. See Ex. 1005, 498–
499.
In the case of a read, Nagar discloses allowing (forwarding) the
operation because it is a read request. Ex. 1005, 499. Thus, Nagar discloses
comparing the attempted operation to the access privilege and allowing read
requests based on the fact that they are read requests, satisfying even Patent
Owner’s asserted requirement that the access privilege must be dependent
“solely upon the operation itself” (operation-based as opposed to
content-based). See PO Resp. 26–27. Claim 1 recites “at least one of
allowing said attempted operation if matching said enabled operation
allowing . . . , modifying . . . or denying said attempted operation,” and,
Nagar’s disclosure for the read operation alone is sufficient to meet this step.
We further find that Nagar’s disclosure of determining whether a request is a
read request or a write request and forwarding read requests describe “at
IPR2019-00598
Patent 7,076,624 B2
22
least one of allowing said attempted operation if matching said enabled
operation.”
Furthermore, we do not agree that claim 1’s operation must be based
solely on the attempted operation and cannot also take other things into
account, such as content of data, as Patent Owner asserts. See PO Resp. 26.
(citing, inter alia, Ex. 1004 (Prosecution History), 43) (“[T]he access
privilege of Nagar is dependent upon attributes of the analysis of the data by
a virus detection algorithm, not solely upon the operation itself.”). In the
cited prosecution history, the applicant stated that a prior art reference (U.S.
Patent No. 5,163,147 (Orita)) “failed to show that the allowing or denying of
an operation occurred regardless of the identity of the user, while the trap
layer of the present invention allowed or denied an operation based solely on
the operation, and regardless of the user.” Ex. 1004, 43. The applicant’s
arguments were directed to the language of claim 1 reciting that intercepting
an attempted operation “occurs regardless of an identity of a user.” Id. at 34,
36, 39.
Nagar discloses that its “[f]ilter driver will intercept all I/O to logical
volume.” Ex. 1009, 498 (Fig. 12-2), reproduced at Pet. 22. Because Nagar
discloses intercepting all operations, it describes intercepting an attempted
operation “regardless of an identity of a user,” as recited in claim 1.
Contrary to Patent Owner’s argument based on the prosecution history
of the ’624 patent, claim 1 does not prohibit other considerations in
determining whether to allow or deny an attempted operation. Rather,
claim 1 requires “at least one of allowing said attempted operation if
matching said enabled operation, modifying and allowing said modified
attempted operation, and/or denying said attempted operation if matching
said restricted operation.” Nagar discloses rejecting a write request if a virus
IPR2019-00598
Patent 7,076,624 B2
23
is detected and forwarding (allowing) the write request if no virus is
detected. Ex. 1009, 499, cited in Pet. 23. We find, therefore, that Nagar
describes allowing or denying the write request based on comparing the
attempted operation to the access privilege, even if Nagar bases the decision
on other factors as well, such as the presence of a virus.
Based on the foregoing discussion and Petitioner’s persuasive
contentions, we find Nagar describes the preamble and steps (a), (c), and (d)
of claim 1.
b) Associating the Operation Access Privilege
Claim 1 also requires “(b) associating said operation access privilege
with at least one logical portion of said logical storage medium.” Petitioner
asserts that this limitation is taught by Nagar because the “filter driver can
function as a virus-detecting software module” that “sits above the file
system and intercepts operations targeted to a file or ‘mounted logic
volume[].’” Pet. 18 (citing Ex. 1005, 498–499, 506; Ex. 1002 ¶ 56).
Patent Owner argues that “associating an access privilege with at least
a portion of the storage medium,” as required by claim 1, means that “the
storage medium itself maintains its associated operation access privileges—
independent of the computer.” PO Resp. 30–31. As discussed above in
§ II.C.1, we do not agree that the claimed “associating” requires that the
storage medium store the access privileges.
We are persuaded that Nagar describes the claimed “associating.” See
Pet. 18–19 (citing Ex. 1005, 159, 498–499, 506; Ex. 1002 ¶¶ 56–57). 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. 1009, 498. Nagar also
explains that filter drivers “intercept I/O requests targeted to certain device
IPR2019-00598
Patent 7,076,624 B2
24
objects by interjecting themselves into the driver hierarchy and by attaching
themselves to the target device objects.” Id. at 159 (emphasis added).
Patent Owner also argues that Petitioner’s reliance on Nagar’s
disclosure of attaching a filter driver to a device object fails because “the
device object is only a representation of a mounted logical volume and not
the actual storage medium itself” and because a person of ordinary skill in
the art “would not understand a representation of a mounted logical volume
to be the same as the actual logical storage medium.” PO Resp. 31 n.3
(citing Ex. 1005, 499; Ex. 2001 ¶ 61). Patent Owner’s argument and
Dr. Melendez’s testimony, however, ignore Nagar’s disclosure of what a
device object is. See Reply 18 (citing Ex. 1005, 155–156, 159, 502; Ex. 1002
¶¶ 119). 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.
Thus, we agree with Petitioner’s assertion that “associating with a logical
storage medium is achieved by attaching to a device object, because a
computer views the logical storage medium as a device object.” Reply 18
(citing Ex. 1005, 155–156).
Based on the foregoing discussion and Petitioner’s persuasive
contentions, we find Nagar describes “associating said operation access
privilege with at least one logical portion of said logical storage medium.”
c) Conclusion
For the reasons discussed above, we find that Nagar describes the
subject matter recited in claims 1 and 22, and, therefore, Petitioner has
IPR2019-00598
Patent 7,076,624 B2
25
proven by a preponderance of the evidence that claims 1 and 22 of the ’624
patent are unpatentable under 35 U.S.C. § 102(a) as anticipated by Nagar.
Pet. 14–23, 34–36; Ex. 1002 ¶¶ 52–64, 79–82. Because we find Nagar
anticipated claims 1 and 22, we also conclude that the subject matter of
claims 1 and 22 would have been obvious under 35 U.S.C. § 103(a) based on
the teachings of Nagar. Pet. 55–61; Ex. 1002 ¶¶ 117–128.
2. Dependent Claims 2–11 and 23–31
Petitioner contends that Nagar discloses or suggests all of the
limitations of dependent claims 2–11 and 23–31. Pet. 24–34, 36, 57. Patent
Owner does not separately address the patentability of these claims. See
generally, PO Resp. 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 2–11 and 23–31 are
anticipated by and obvious over Nagar. Pet. 24–34, 36, 57; Ex. 1002 ¶¶ 65–
78, 83, 122.
For example, we agree with Petitioner that Nagar’s mounted logical
volume corresponds with the volume required by claims 2 and 23, and that
Nagar’s logical volume is the entire logical storage medium of claims 3 and
24. See Pet. 24, 36 (citing, e.g., Ex. 1005, 618–621); id. at 25, 36 (citing,
e.g., Ex. 1005, 618). As another example, we agree that Nagar’s teaching of
the process going through the filter driver being a read operation teaches the
limitation added by claims 5 and 26 of “wherein said operations comprise at
least one of reading.” See Pet. 27–28, 36 (citing Ex. 1005, 498–499, Fig. 12-
2).
IPR2019-00598
Patent 7,076,624 B2
26
E. Claims 1–11 and 22–31 — Anticipation by and Obviousness over
Vossen
Petitioner asserts that Vossen anticipates and renders obvious claims
1–11 and 22–31. Pet. 37–55, 61–66. Patent Owner opposes. See PO Resp.
15–25. For the reasons set forth below, we determine Petitioner has shown
that Vossen teaches or suggests the limitations of claims 1–11 and 22–31.
Pet. 37–55, 61–66; Ex. 1002 ¶¶ 84–116, 129–139.
1. Independent Claims 1 and 22
Petitioner asserts that Vossen discloses or suggests each claim
recitation of independent claims 1 and 22. See Pet. 37–46, 53–54, 61–66.
Petitioner correctly notes that claims 1 and 22 only differ in their
preamble.10 Id. at 53. Thus, though we only refer to claim 1 below for
clarity, the analysis for all limitations is the same for claim 22.
Petitioner asserts that Vossen teaches “restrict[ing] the access rights
for computer processes to certain file system hierarchies.” Pet. 37 (citing
Ex. 1007, 1:42–48, 8:44–49, 10:5–28). Petitioner further asserts that
Vossen’s controlled access rights include “reading, writing, opening, and
creating operations.” Id. (citing Ex. 1007, 3:59–4:16, 10:29–40; Ex. 1002
¶ 84).
Petitioner contends Vossen’s disclosure of restricting access to certain
file system hierarchies describes “applying an operation access privilege to
at least a logical portion of a logical storage medium in communication with
a computer,” “providing an operation access privilege indicative of at least

10 We do not reach the issue of whether the preambles of claims 1 and 22 are
limiting as we are persuaded by Petitioner’s arguments that the recitations in
the preambles are satisfied by the prior art. See Pet. 37–39 (stating, inter
alia, use of Vossen’s access rights applied to file system hierarchies
discloses the preamble of claim 1), 54.
IPR2019-00598
Patent 7,076,624 B2
27
one of an enabled operation and/or a restricted operation to be performed on
at least one logical portion of a logical storage medium,” and “associating
said operation access privilege with at least one logical portion of said
logical storage medium,” as recited by claim 1. Id. at 37–42 (citing, e.g.,
Ex. 1007, 1:25–41, 1:42–48, 8:44–49, 8:19–49, 10:5–40, Fig. 4; Ex. 1002
¶¶ 84–91). In particular, Petitioner asserts “Vossen maintains data structures
restricting a process’s access to a computer’s file systems.” Id. at 39.
Petitioner contends that “Vossen’s restrictions disclose the claimed
‘operation access privilege’ because they relate to enabling and restricting
access to a file, including reading, writing, opening, and creating
operations.” Id. at 37 (citing Ex. 1002 ¶ 84; Ex. 1007, 3:59–4:16, 10:29–40;
Ex. 1001, 5:51–57).
Petitioner also contends Vossen’s disclosure that a filter driver
receives and examines all Input/Output (I/O) Request Packets (IRPs) that are
directed to the file system driver describes the “intercepting” step of claim 1.
Id. at 42–45 (citing Ex. 1007, 3:59–4:16, 4:23–30, 4:43–67, 6:1–5, 6:54–57,
7:28–31, 8:25–49, 9:55–10:40, 11:1–12, Fig. 6; Ex. 1002 ¶¶ 92–98).
Petitioner argues Vossen describes the “at least one of allowing . . . and/or
denying” steps of claim 1 by its disclosure of determining whether there are
any file system restrictions for each IRP. Id. at. 45–46 (citing Ex. 1007,
8:19–49, 10:5–28, 10:56–67; 11:1–4; Ex. 1002 ¶¶ 99–101).
Patent Owner makes a number of arguments as to why Vossen does
not describe “applying (or providing) an operation access privilege” (PO
Resp. 15–19) or “associating said operation access privilege with at least one
logical portion of said logical storage medium” (PO Resp. 19–25).
Patent Owner argues that Vossen does not describe an “operation
access privilege” because Vossen discloses restrictions that “are user-centric
IPR2019-00598
Patent 7,076,624 B2
28
and process-centric.” PO Resp. 17. As with its arguments against Nagar,
Patent Owner cites the prosecution history of the ’624 patent to argue that
“Vossen’s security descriptors necessarily depend on which users are given
permission and are not ‘based solely on the operation, and regardless of the
user.’” Id. at 16 (quoting Ex. 1004, 43) (citing Ex. 2001 ¶ 39); see also id. at
18 (stating that “[b]asing access right decisions on who may access does not
suggest or render obvious operation access privileges”) (citing Ex. 2001 ¶
41). As discussed above in § II.D.1.a, however, this argument during
prosecution was directed to language of the pending claims reciting that
intercepting an attempted operation “occurs regardless of an identity of a
user.” Ex. 1004, 34, 36, 39. As such, we disagree with Patent Owner’s
argument that these statements limit the meaning of “operation access
privilege.”
The intercepting step of claim 1 does require that the “intercepting
occurs regardless of an identity of a user attempting said attempted
operation.” We agree with Petitioner that Vossen’s filter driver intercepts the
attempted operation by examining the IRP’s from the kernel before passing
them along to the file system driver and that this interception occurs
regardless of the identity of the user attempting the operation. See Pet. 42–
45. Vossen discloses that, “[o]nce the process restriction file system filter is
installed, it receives all I/O requests destined for physical file systems.”
Ex. 1007, 9:55–56 (emphasis added), quoted in Pet. 44. We agree with
Petitioner that Vossen also “determines whether to allow the intercepted
operations based on data structures associated with process initiating the
operation.” Pet. 45 (citing Ex. 1007, 8:25–49). Therefore, because Vossen
discloses intercepting all I/O requests before checking them against the data
IPR2019-00598
Patent 7,076,624 B2
29
structures, it describes intercepting an attempted operation “regardless of an
identity of a user,” as recited in claim 1.
Patent Owner also argues that “a ‘process’ in Vossen is not an
‘operation’ as in the ‘624 Patent” and, therefore, that Petitioner’s reliance on
Vossen’s disclosure of restricting processes does not describe the claimed
subject matter. PO Resp. 18 (citing Ex. 2001 ¶ 42; Ex. 1007, 3:16–19). But
as Petitioner correctly asserts, Vossen’s restrictions relate to particular
operations. See Pet. 37 (citing Ex. 1002 ¶ 84; Ex. 1007, 3:59–4:16, 10:29–
40; Ex. 1001, 5:51–57). For example, Vossen discloses that “[t]he security
descriptor contains attributes describing which users or pseudo-users are
permitted to access the file, and in what ways (obtain file contents, modify
contents, or both).” Ex. 1007, 4:1–4 (emphasis added). We are persuaded by
Petitioner’s contention that “Vossen’s restrictions disclose the claimed
‘operation access privilege’ because they relate to enabling and restricting
operation access to a file, including reading, writing, opening, and creating
operations.” See Pet. 37 (citing Ex. 1002 ¶ 84; Ex. 1007, 3:59–4:16, 10:29–
40; Ex. 1001, 5:51–57). As discussed above in § II.D.1.a.1, claim 5 of the
’624 patent defines the “operation access privileges” as follows: “wherein
said operations comprise at least one of reading, executing, appending,
creating new objects, deleting, renaming, moving, overwriting, modifying
attributes, and/or modifying data object security.” Ex. 1001, 10:54–58.
Vossen discloses restrictions for operations such as “obtain file contents,”
i.e., read, and “modify file contents,” i.e., write. Ex. 1007, 4:1–4; see Ex.
1002 ¶ 84 (Dr. Weissman testifying that Vossen’s restrictions “relate to
enabling (or restricting) access to a subhierarchy, including reading, writing,
opening, and creating access”). Thus, we find Vossen expressly describes
two operation access privileges identified in the ’624 patent—read and write.
IPR2019-00598
Patent 7,076,624 B2
30
We also are persuaded, and we find, that Vossen’s restrictions are
applied to, and associated with, a logical portion of a logical storage
medium. As discussed above in § II.C.1, we do not agree with Patent
Owner’s assertions that “‘associating said operation access privilege with at
least one logical portion of said logical storage medium’ means to combine
or join the operation access privileges within at least one logical portion of
said logical storage medium.” PO Resp. 21. 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. 1005, 2:3–6, 8:25–31; see
Pet. 41–42. 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. 1005, 6:22–25. 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 “applying” the restriction to, and
“associating” / “providing” the restriction with, a logical portion of a logical
storage medium, as asserted by Petitioner. See Pet. 37–42.
Our findings in this regard are consistent with Patent Owner’s
characterization of Vossen’s disclosure as follows:
Vossen is aimed at limiting 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 which a [POSA]
understands as being manifested in the allowance of access by
executing processes to only certain portions of a logical storage.
IPR2019-00598
Patent 7,076,624 B2
31
PO Resp. 16 (emphasis added) (citing Ex. 1007, Abstract, 1:5–8, 1:11–14,
1:63–67, 2:3–6, 2:65–3:1; Ex. 2001 ¶ 40). 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
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.
For the “intercepting” step, as discussed above, Vossen discloses that,
“[o]nce the process restriction file system filter is installed, it receives all I/O
requests destined for physical file systems.” Ex. 1005, 9:55–56, cited in Pet.
44. Thus, because Vossen discloses that all IRPs are received in the filter,
we find that Vossen describes intercepting in a trap layer an attempted
operation on a logical portion of the logical storage medium regardless of
the identity of the user attempting the operation.
Petitioner also argues and we agree that “the subhierarchies and
portions of Vossen’s storage medium are identified by a ‘data identifier,’”
and therefore, the logical portion is identified by at least one data identifier
as required by claim 1. Pet. 44 (citing Ex, 1002 ¶ 96, Ex. 1007, 6:15–31,
8:25–43, 9:12–14). We find that Vossen teaches that intercepting occurs
“transparently to the user and transparently to a computer application
invoking said operation,” as required by claim 1. “Vossen teaches that its
filter driver ‘maintains its transparency to applications by removing the
process restriction hierarchy path from the path name returned to the
application.’” Id. at 45 (quoting Ex. 1007, 11:18–20). We credit Dr.
Weissman’s testimony that a POSA “would have understood that a process
restriction driver that maintains transparency to applications would also
maintain transparency to users.” Ex. 1002 ¶ 98.
IPR2019-00598
Patent 7,076,624 B2
32
For the “allowing . . . and/or denying” step, we agree with Petitioner
that Vossen teaches that the filter driver allows an attempted operation if it
finds a match between the requested operation on the file system and an
entry in the restriction data structure and denies the operation is there is no
corresponding entry in the restriction data structure. Pet. 46 (citing, e.g.,
Ex. 1007, 10:5–28, 11:1–4; Ex. 1002 ¶ 101). As with its arguments against
Nagar, Patent Owner argues that claim 1’s operation must be based solely on
the attempted operation: “Vossen’s security descriptors necessarily depend
on which users are given permission and are not ‘based solely on the
operation.’” PO Resp. 16 (quoting Ex. 1004, 43) (citing Ex. 2001 ¶ 39). As
discussed above, however, claim 1 does not require that allowing or denying
the operation be based “solely on the operation,” as Patent Owner asserts.
Rather, claim 1 requires allowance or denial to be based on “if matching said
enabled operation” or “said restricted operation.” We are persuaded by
Petitioner, and we find, that allowing or denying access based on “what
ways” a user is permitted to access a file, such as “obtain file contents,” i.e.,
read, or “modify contents,” i.e., write, describes “at least one of allowing
said attempted operation if matching said enabled operation, modifying and
allowing said modified attempted operation, and/or denying said attempted
operation if matching said restricted operation,” as recited in claim 1.
Based on the foregoing discussion and Petitioner’s persuasive
contentions, we find that Vossen describes the subject matter recited in
claims 1 and 22, and, therefore, Petitioner has proven by a preponderance of
the evidence that claims 1 and 22 is unpatentable as anticipated by and
obvious over Vossen. Pet. 37–46, 53–54, 61–66; Ex. 1002 ¶¶ 84–101, 113–
115; 129–139.
IPR2019-00598
Patent 7,076,624 B2
33
2. Dependent Claims 2–11 and 23–31
Petitioner contends that Vossen discloses or suggests all of the
limitations of dependent claims 2–11 and 23–31. Pet. 46–55, 64. Patent
Owner does not separately address the patentability of these claims. See
generally, PO Resp. 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 2–11 and 23–31 are
anticipated by and obvious over Vossen. Pet. 46–55, 64; Ex. 1002 ¶¶ 102–
112, 116, 135.
F. Claims 10 and 31 — Alleged Obviousness over Vossen and Willman,
or Vossen and Nagar
Petitioner additionally asserts that Vossen and Willman, or Vossen
and Nagar, render obvious dependent claims 10 and 31. Pet. 67–72. Patent
Owner does not separately address Petitioner’s positions. See generally, PO
Resp.
We have already determined that claims 10 and 31 are unpatentable as
anticipated by and obvious over each of Nagar and Vossen. Thus, this
Decision addresses all claims challenged under multiple grounds. See 35
U.S.C. § 318(a) (“If an inter partes review is instituted and not dismissed
under this chapter, the Patent Trial and Appeal Board shall issue a final
written decision with respect to the patentability of any patent claim
challenged by the petitioner and any new claim added under section
316(d).”). Furthermore, this Decision resolves the disputes between the
parties, which focus entirely on issues relating to the independent claims.
Petitioner’s additional contentions for claims 10 and 31 in these grounds do
not impact the analysis of the parties’ arguments discussed above. Thus,
there is no additional dispute to resolve between the parties regarding
IPR2019-00598
Patent 7,076,624 B2
34
claims 10 and 31, and we decline to assess separately these additional
asserted grounds of unpatentability.
G. 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. 33–34.
Petitioner correctly notes that:
Recent Federal Circuit cases foreclose this argument. Applying
inter partes review to pre-AIA patents is not a constitutional
taking. See Celgene Corp. v. Peter, 931 F.3d 1342, 1358-63 (Fed.
Cir. 2019); see also Genentech, Inc. v. Hospira, Inc., No.
18-1933, slip op. at 15-16 (Fed. Cir. Jan. 10, 2020). Nor does it
upset due process. See OSI Pharm., LLC v. Apotex, Inc., 939 F.3d
1375, 1385-86 (Fed. Cir. 2019); Arthrex, Inc. v. Smith &
Nephew, Inc., 935 F.3d 1319, 1331-32 (Fed. Cir. 2019). Petitions
to upend these rulings have uniformly failed. See, e.g., Enzo Life
Scis., Inc. v. Becton, Dickinson & Co., No. 18-1232 (Fed. Cir.
Dec. 4, 2019) (order denying panel rehearing and rehearing en
banc). Unless the Supreme Court reverses these cases, they
remain controlling law.
Reply 26.
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, 935 F.3d at 1332.

IPR2019-00598
Patent 7,076,624 B2
35
III. CONCLUSION11
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:

11 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).
12 As explained above, because we determined the challenged claims as
unpatentable in light of both Nagar and Vossen, we declined to address this
ground.
13 As explained above, because we determined the challenged claims
unpatentable in light of both Nagar and Vossen, we declined to address this
ground.

Claims

35
U.S.C. §
Reference(s)/Basis Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1–11,
22–31
102, 103 Nagar 1–11, 22–31
1–11,
22–31
102, 103 Vossen 1–11, 22–31
10, 31 10312 Vossen, Willman
10, 31 10313 Vossen, Nagar
Overall
Outcome
1–11, 22–31
IPR2019-00598
Patent 7,076,624 B2
36
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–11 and 22–31 of the ’624 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.
IPR2019-00598
Patent 7,076,624 B2
37
FOR PETITIONER:
Erika H. Arner
Jason E. Stach
Benjamin A. Saidman
Joshua Goldberg
Cory Bell
Finnegan, Henderson, Farabow,
Garrett, & Dunner LLP
erika.arner@finnegan.com
jason.stach@finnegan.com
benjamin.saidman@finnegan.com
joshua.goldberg@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
Gabriel R. Gervey
DiNovo Price LLP
gdonahue@dinovoprice.com
adinovo@dinovoprice.com
ggervey@dinovoprice.com