KOM Software, Inc.

Patent Trials and Appeals Board

Aug 17, 2020

IPR2019-00594 (P.T.A.B. Aug. 17, 2020)

Trials@uspto.gov Paper 37
571-272-7822 Date: August 17, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

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

IPR2019-00594
Patent 6,654,864 B2

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

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

IPR2019-00594
Patent 6,654,864 B2
2
I. INTRODUCTION
A. Background
NetApp, Inc. (“Petitioner”)1 filed a Petition to institute an inter partes
review of claims 1–3, 5, 6, and 9 (the “challenged claims”) of U.S. Patent
No. 6,654,864 B2 (“the ’864 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 12, “PO Resp.”), Petitioner
filed a Reply (Paper 18, “Reply”), and Patent Owner filed a Sur-Reply
(Paper 23, “Sur-Reply”). An oral hearing was held on May 27, 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 1–3 of
the ’864 patent are unpatentable, but has not shown, by a preponderance of
the evidence, that claims 5, 6, and 9 are unpatentable.
B. Related Matters
Petitioner identifies the following pending litigation involving the
’864 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

1 Hewlett Packard Enterprise Co. settled with Patent Owner and is no longer
a part of this proceeding. See Paper 31.
IPR2019-00594
Patent 6,654,864 B2
3
Inc. v. NetApp, Inc., Case No. 1-18-cv-00160 (D. Del.). Pet. 50. Petitioner
filed another petition for inter partes review of the ’864 patent, but trial was
not instituted on that petition. See IPR2019-00597. Additionally, Petitioner
indicates that it filed numerous other inter partes review petitions relating to
patents owned by Patent Owner. Pet. 50–51.
C. The ’864 Patent
The ’864 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, code
(54), 1:11–12. The ’864 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 1:28–30. 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 2:12–
13. 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 2:16–19. To solve this problem, the ’864 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 7:35–
37. Figure 3 illustrates a block diagram of an operating system that includes
a trap layer and is reproduced below.
IPR2019-00594
Patent 6,654,864 B2
4

As shown in Figure 3 above, 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 7:37–40. Some access requests are blocked and error
messages are returned to the application layer. Id. at 7:41–42. Some access
requests may be modified and passed on to the file system in modified form.
Id. at 7:42–44.
D. Illustrative Claims
Of the challenged claims, claims 1, 5, and 9 are independent. Each of
dependent claims 2, 3, and 6 depends from respective independent claims 1
and 5. Claim 1 illustrates the claimed subject matter and is reproduced
below:
1. A method of restricting access by a computer to a logical
storage medium other than a write once medium in
communication with the computer, the method comprising the
steps of:
providing an indication of a data write access privilege for
the entire logical storage medium, the data write access privilege
IPR2019-00594
Patent 6,654,864 B2
5
indicative of a restriction to alteration of a same portion of each
file stored on the logical storage medium; and
restricting file access to the logical storage medium in
accordance with the indication while allowing access to free
space portions of the same logical storage medium.
Ex. 1001, 10:22–33.
E. Instituted Grounds and Prior Art
Petitioner contends that the challenged claims would have been
unpatentable on the following grounds:2
Claim(s) Challenged 35 U.S.C. §3 References/Basis
1–3, 5, 6, 9 102, 103 Ofek4
1, 2, 5 103 Vossen5
1, 2, 5 103 Vossen, Willman6
2, 3, 5, 6, 9 103 Vossen, Bsaibes7
2, 3, 5, 6, 9 103 Vossen, Willman, Bsaibes
1. Ofek
Ofek is titled “WORM magnetic storage device” and describes a
“method for operating a magnetic disk storage device in read/write and read-
only modes.” Ex. 1004, Abstract. In particular, Ofek is directed to “a method
for enabling read-write storage media to operate with a write once, read

2 Petitioner supports its challenge with a Declaration of Jon B. Weissman,
Ph.D. (“Weissman Declaration”) (Ex. 1003).
3 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(September 16, 2011) (“AIA”), included revisions to 35 U.S.C. §103 that
became effective on March 16, 2013. Because the ’864 patent issued from
an application filed before March 16, 2013, we apply the pre-AIA version of
the statutory basis for unpatentability.
4 Ex. 1004, Ofek, U.S. 6,185,661 B1, issued Feb. 6, 2001.
5 Ex. 1005, Vossen, U.S. 6,026,402, issued Feb. 15, 2000.
6 Ex. 1006, Willman, U.S. 5,363,487, issued Nov. 8, 1994.
7 Ex. 1007, Bsaibes, U.S. 5,701,458, issued Dec. 23, 1997.
IPR2019-00594
Patent 6,654,864 B2
6
many times characteristic.” Id. at 1:7–9. Figure 1 of Ofek, below, is a block
diagram of a data processing system.

Ofek Figure 1 illustrates a data processing system 10 that includes a
host processor 11, main memory 12, and application program 13, disk
subsystem or controller 15, and host adapter 16. Id. at 3:45–54. Application
program 13 includes a “WORM” (write once, read many) program 14. Id. at
3:54–56. Ofek teaches that when the host processor issues a write request,
data is transferred to a write request buffer 34 in system cache memory 21.
Id. at 4:41–42. Ofek further teaches that “[d]uring an initial configuration
process, a configuration program 33 in the system manager 30 configures
one or more logical volumes to have a capability by which individual tracks
can be switched between read/write and read-only operating modes.” Id. at
4:53–57. System manager 30 identifies a controller 15 as a WORM
controller. Id. at 4:57–58. Data processing system 10 addresses logical
IPR2019-00594
Patent 6,654,864 B2
7
volumes and identifies logical volumes that will serve as WORM volumes.
Id. at 4:62–63. Logical volume buffer 38 identifies each logical volume
which has the capability of operating in a WORM mode. Id. at 5:2–4.
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
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 that Vossen calls 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 drive is a
process restriction filter driver, such as that shown below in Vossen Figure
6. Id. at 4:64–67.
IPR2019-00594
Patent 6,654,864 B2
8

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
IPR2019-00594
Patent 6,654,864 B2
9
(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. 1003 ¶ 37). Patent Owner
provides a similar definition, stating a POSA “should have a bachelor’s
IPR2019-00594
Patent 6,654,864 B2
10
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. 9 (citing
Declaration of Dr. Jose Luis Melendez ¶ 32, (Ex. 2002) (“Melendez
Declaration”)); see Ex. 2002 ¶ 32 (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 ’864 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 parties’ definition.
IPR2019-00594
Patent 6,654,864 B2
11
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)).
Petitioner offers constructions for the terms, “same portion of each
file” and “portion of each file” in independent claims 1 and 5, respectively.
Pet. 7–8 (emphasis omitted). According to Petitioner, both of these phrases
should be interpreted to mean “a portion, including the entirety of each file.”
Id. at 7. Thus, Petitioner’s position is that a “portion of each file” includes
everything from something less than the entire file to the entire file. See
Reply 1 (“The entirety of each file is one example that satisfies the recitation
of a ‘portion of each file’ in claims 1 and 5.”); id. at 3 (“Petitioner does not
dispute that a ‘portion of each file’ can include a subset of a file’s data.”).
Patent Owner does not provide an express construction for these terms
but argues generally that a “portion” must be something less than the entire
file. PO Resp. 10–13. Based on our discussion below in § II.D.1.c, we need
not resolve this dispute between the parties to resolve the patentability issues
before us.
IPR2019-00594
Patent 6,654,864 B2
12
We decline to provide an express construction for any terms in the
’864 patent because we determine that no such construction is required for
the purposes of this Decision. 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 1–3, 5, 6, 9 — Alleged anticipation or obviousness by Ofek
Petitioner asserts that Ofek anticipates or renders obvious claims 1–3,
5, 6, and 9. Pet. 8, 15–29. Patent Owner opposes. See PO Resp. 17–23. For
the reasons set forth below, we determine Petitioner has shown that Ofek
teaches or suggests the limitations of claims 1–3. Pet. 8, 15–24; Ex. 1003
¶¶ 52–68.
In addition, for the reasons set forth below, we determine Petitioner
has not shown that Ofek teaches or suggests the limitations of claims 5, 6,
and 9.
1. Claim 1
Petitioner asserts that Ofek discloses every claim recitation of
independent claim 1. Pet. 15–21. For example, the preamble of claim 1
states “[a] method of restricting access by a computer to a logical storage
medium other than a write once medium in communication with the
computer.” Petitioner asserts that Ofek discloses a logical volume that is part
of a magnetic disk storage device having read/write and read only modes. Id.
at 16–17 (citing Ex. 1004, code (57), 4:9–18, 6:9–12, Fig. 1; Ex. 1003 ¶ 54).
Petitioner asserts that this logical volume is consistent with the logical
storage medium (other than a write once medium) taught by the ’864 patent
and as required by the claim. Id. (citing Ex. 1001, 10:11–15; Ex. 1003 ¶ 54).
IPR2019-00594
Patent 6,654,864 B2
13
Petitioner further asserts that Ofek discloses, teaches, and suggests the
computer-implemented methods of restricting access to the logical storage
medium using the process described in the additional elements of the claim,
which we address below. Id. at 18–21.
a) Providing an Indication
Claim 1 also requires “providing an indication of a data write access
privilege for the entire logical storage medium, the data write access
privilege indicative of a restriction to alteration of a same portion of each file
stored on the logical storage medium.”
Petitioner asserts that Ofek discloses such an indication
because it discloses a control program for managing read/write
and read-only access to data using a bit map that (1) accounts for
each track in each logical volume (i.e., singularly or collectively
the entire logical storage medium) and (2) allows for an
indication of the data write access privilege for each track (i.e.,
providing an indication of a data write access privilege for it).
Pet. 18 (citing Ex. 1003 ¶ 56); see also id. (quoting Ex. 1004, 5:5–15)
(discussing Ofek’s bitmap which “contain[s] one bit position for each logical
track in the volume”).
Petitioner asserts that the indication is indicative of the claimed
restriction (“a restriction to alteration of a same portion of each file stored on
the logical storage medium”) because Ofek’s “bit map restricts the ability to
alter files that are marked as read only” and because “restrict[ing] alteration
of data at a track level . . . prevents alteration to any and all particular parts
of data for each file stored on the medium, and further restricts access to the
same portion of each file, namely the entirety of the file.” Id. at 19.
IPR2019-00594
Patent 6,654,864 B2
14
b) Restricting File Access
Claim 1 concludes with “restricting file access to the logical storage
medium in accordance with the indication while allowing access to free
space portions of the same logical storage medium.”
Petitioner asserts that Ofek restricts file access “because it discloses a
control program for preventing the ability to write data (i.e., restricting file
access to the logical storage medium) based on the data’s attributes in a bit
map (i.e., in accordance with the indication).” Pet. 20 (citing Ex. 1003 ¶ 59);
see also id. (discussing Ex. 1004, 5:43–51).
Petitioner asserts that Ofek allows access to free space portions for
two reasons. Id. at 20–21. First, Petitioner cites Ofek’s teaching of “allowing
standard write operations to occur for tracks in read/write mode.” Id. at 20
(citing Ex. 1004, 5:47–48). Second, Petitioner cites Ofek’s teaching that,
upon writing to the storage medium, the written data is immediately
transferred to a read-only state by making any track that is written to read
only. Id. at 20–21 (citing Ex. 1004, 8:26–39). Petitioner argues that a POSA
“would have understood that a transfer from read/write state to a read-only
state ‘upon a first write operation’ would require that the data be written to
previously unwritten storage space on the logical storage medium” as
required by claim 1. Id. at 21 (citing Ex. 1003 ¶ 61).
c) Analysis
Patent Owner argues that, although Ofek’s bit map indicates data
write access privileges for each logical track, it does not provide “an
indication of a data write access privilege to files stored in the entire logical
storage medium” as claimed. PO Resp. 18. In other words, Patent Owner
argues that the claim requires an indication of a single data write access
privilege that applies to every file in the storage medium, not just a way to
IPR2019-00594
Patent 6,654,864 B2
15
identify all of the data write access privileges for each logical track.
However, as discussed below, Ofek’s bit map provides such an indication.
Patent Owner further argues that Ofek teaches away from applying a
single data write access privilege that applies to every file in the storage
medium because it initially sets each track to a read/write mode. Id. at 18–19
(citing Ex. 1004, 5:15–18). We do not agree that this teaching in Ofek
amounts to a teaching away.
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994). However, what Patent Owner describes is the initial state
for any storage media that is not merely a write once read many times (i.e. a
CD-ROM) medium. This does not prevent or teach away from providing
access protections on the storage medium, or from providing access
protections that apply across the board on the storage medium.
This is evidenced by the fact that Ofek explicitly teaches a mode
where “upon a first write operation” the initial read/write state is changed to
a read-only state. Ex. 1004, 8:33–35 (emphasis added); see also Pet 20–21
(citing Ex. 1004, 8:26–39). Ofek teaches that this mode can be applied to the
entire storage medium. Ex. 1004, 8:26–39. Thus, the data write access
privileges are applied to any data or file stored on any track across the entire
logical storage medium.
Ofek acknowledges that changing to this read-only state can be an
inefficient use of space on the storage medium, resulting in partially-filled
tracks, but states that it has the advantage of preventing deletion of data,
such as files, saved to those same tracks. Id. at 8:33–39. Under this mode, all
IPR2019-00594
Patent 6,654,864 B2
16
tracks containing data, such as files, would be marked as read-only in Ofek’s
bit map thereby providing “an indication of a data write access privilege to
files stored in the entire logical storage medium” as required under either of
Patent Owner’s or Petitioner’s reading of the claim.
Patent Owner also attacks Ofek’s inefficient use of storage as not
“allowing access to free space portions of the same logical storage medium”
as required by claim 1. PO Resp. 22–23. Patent Owner implies that the claim
requires access be provided to all free space portions. Id. at 23 (“Ofek . . .
fails to take advantage of free space portions of a track set to a ‘read-only’
setting”). However the claim refers in an open ended manner to “free space
portions of the same logical storage medium.” The claim on its face does not
require access to all free space portions. See Reply 18–19. Patent Owner
does not identify any language in the claim that would require such a narrow
construction. See generally PO Resp. 22–23. As discussed above, Ofek
teaches providing access to free space portions of the storage medium which
can be written to and then the tracks which have been modified can be
converted to read-only. Pet. 21; Ex. 1003 ¶ 61. Thus, we agree with
Petitioner that Ofek teaches restricting file access while also allowing access
to free space portions on the logical storage medium.
Patent Owner further argues that Ofek does not teach “a restriction to
alteration of a same portion of each file” as required by claim 1. PO Resp.
19–20. Patent Owner argues that Ofek’s focus on tracks does not implicate
what happens to a file or how a file relates to a track. Id. The Decision on
Institution stated that
a person of skill in the art would understand that restricting
alteration of a track is not the same as restricting alteration of a
file. For example, a file may comprise the entirety of one or more
tracks or portions of one or more tracks. Conversely, a track may
IPR2019-00594
Patent 6,654,864 B2
17
encompass the entirety of one or more files or portions of one or
more files.
Dec. 14. Thus, we agree with Patent Owner that where Petitioner merely
relies on Ofek’s teaching of “allowing standard write operations to occur for
tracks in read/write mode,” (Pet. 20), this is insufficient to show “a
restriction to alteration of a same portion of each file.” “[N]ot making tracks
completely read-only until the entire track is filled” does not restrict
alteration of a same portion of each file on the storage medium, nor does it
show how files are treated on the storage medium. PO Resp. 20; Sur-Reply
15–16.
At the same time, as discussed above, Petitioner also relies on Ofek’s
teaching whereupon writing to the storage medium the written data is
immediately transferred to a read-only state. Pet. 20–21 (citing Ex. 1004,
8:26–39). In this mode all files would be treated identically, independent of
how they are written to a track, because any track that contains a file or a
portion of a file would be converted to read-only.
Further, by restricting access (read-only) to data or a file that has been
written to the storage medium, “a restriction to alteration of a same portion
of each file” is applied as required by claim 1. Patent Owner’s argument that
a whole file is not the same as a portion of the file (see PO Resp. 10–13)
misses the mark because claim 1 recites restricting “a same portion of each
file,” but it does not require that the remainder of the file remain
unrestricted. Thus, Ofek’s disclosures of restricting access to entire tracks
and the files stored on those tracks describes “a restriction to alteration of a
same portion of each file” because the whole file encompasses every portion
of that file.
IPR2019-00594
Patent 6,654,864 B2
18
d) Conclusion
In conclusion, we are persuaded by Petitioner’s contentions and the
underlying evidence cited in support regarding the limitations of claim 1
individually and as a whole. We determine that Petitioner establishes by a
preponderance of the evidence that the subject matter of claim 1 is
anticipated by or obvious over Ofek. Pet. 15–21; Ex. 1003 ¶¶ 52–61.
2. Claims 2 and 3
Petitioner contends that Ofek discloses, teaches, or suggest all of the
limitations of claims 2 and 3 which depend from claim 1. Pet. 21–24;
Ex. 1003 ¶¶ 62–68. Patent Owner does not separately argue the patentability
of these dependent claims over Ofek. 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 and 3 are anticipated by or
obvious over Ofek.
3. Claims 5, 6, and 9
Petitioner asserts that Ofek discloses every claim recitation of claims
5, 6, and 9. Pet. 24–28. Claims 5 and 9 are independent, and claim 6 depends
from claim 5. Claims 5 and 9 include limitations similar to claim 1 and
Petitioner’s analysis of these claims is similar to the analysis of claim 1.
Compare Pet. 24–26 and 26–28, with id. at 16–21. However, there are some
differences between the claims. For example, where claim 1 states:
the data write access privilege indicative of a restriction to
alteration of a same portion of each file stored on the logical
storage medium;
claims 5 and 9 define the data write access privilege as, respectively:
IPR2019-00594
Patent 6,654,864 B2
19
indicating a disabled operation relating to alteration of a portion
of each file stored within the logical storage medium, the
indication other than a read only indication;
and
indicating a disabled operation relating to alteration of data
within the logical storage medium, the indication other than a
read only indication, the disabled operations supported by the
storage medium.
Thus, unlike claim 1, claims 5 and 9 also require “an indication of a
data write access privilege . . . indicating a disabled operation . . . other than
a read only indication.”
Petitioner contends Ofek teaches these limitations of claims 5 and 9
by disclosing that “invalid read/write requests (i.e., other than a read only
indication)” are prevented from accessing the local storage medium and that
“an appropriate error message” is generated. See Pet. 25, 27–28 (citing
Ex. 1004, 7:20–24; Ex. 1003 ¶¶ 70, 75).
We are not persuaded by Petitioner’s arguments that the cited portion
of Ofek teaches “an indication of a data write access privilege . . . indicating
a disabled operation . . . other than a read only indication” as required by
claims 5 and 9.
The cited portion of Ofek states:
If the WORM program 14 decodes a read/write request in step
86, control passes to step 87 to test syntax. If any error exists,
control passes to step 90 whereupon the WORM program 14
generates an appropriate message for the system administrator
and terminates the program.
Ex. 1004, 7:20–24. Thus, the cited portion of Ofek relates to testing for
syntax errors and generating a message if there was such a syntax error.
Petitioner has not persuasively explained how Ofek’s disclosure of testing
for a syntax error teaches “an indication of a data write access privilege . . .
IPR2019-00594
Patent 6,654,864 B2
20
indicating a disabled operation . . . other than a read only indication” as
required by claims 5 and 9. Dr. Weissman does not provide any further
explanation as to how Ofek’s testing for a syntax error teaches the claim
limitations. See Ex. 1003 ¶¶ 70, 75.
To prevail on its challenge to Patent Owner’s claims, Petitioner must
demonstrate by a preponderance of the evidence that the claims are
unpatentable. 35 U.S.C. § 316(e); 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 13.75, 1378 (Fed. Cir. 2015). For the reasons stated above,
Petitioner has not met its burden of showing by a preponderance of the
evidence that Ofek teaches or suggests:
indicating a disabled operation relating to alteration of a portion
of each file stored within the logical storage medium, the
indication other than a read only indication;
as required by claim 5, or
indicating a disabled operation relating to alteration of data
within the logical storage medium, the indication other than a
read only indication, the disabled operations supported by the
storage medium;
as required by claim 9. Further, Petitioner has not established that Ofek
teaches or suggests all of the limitations of claim 6 at least because of its
dependency from claim 5.
E. Claims 1, 2, 5 — Alleged obviousness over Vossen, or Vossen and
Willman
Petitioner asserts that Vossen alone or in combination with Willman
renders obvious claims 1, 2, and 5. Pet. 8, 29–40. Patent Owner opposes. See
PO Resp. 24–39. For the reasons set forth below, we determine Petitioner
has not demonstrated that claims 1, 2, and 5 are unpatentable over Vossen
alone or in combination with Willman.
IPR2019-00594
Patent 6,654,864 B2
21
Independent claim 1 requires, inter alia:
restricting file access to the logical storage medium in
accordance with the indication while allowing access to free
space portions of the same logical storage medium.
Claim 5 similarly requires, inter alia:
restricting file access to each file within the logical storage
medium in accordance with the same indication while allowing
access to free space portions of the same logical storage medium.
Petitioner argues that Vossen teaches “restricting a process or process
hierarchy to a subset of a computer host’s file system(s).” Pet. 32 (quoting
Ex. 1005, 2:3–6). Petitioner further argues that Vossen teaches “assigning
process restrictions to file systems” and that the restricted file systems
represent “the ‘entire logical storage medium.’” Id. at 34. Petitioner then
turns to Vossen’s “additional, unrestricted file systems” that are “outside of
the restriction hierarchy” to teach “allowing access to free space portions.”
Id. at 35.
However, both claims 1 and 5 require “allowing access to free space
portions of the same logical storage medium.” Contrary to this requirement,
Petitioner identifies the free space portions in Vossen as being additional file
systems “outside of the restriction hierarchy” where the restricted file
systems represent “the ‘entire logical storage medium.’” Pet. 34, 35; see
also PO Resp. 34. Thus, the Petition does not address the “same” storage
medium as required by the claims.
For this reason, Petitioner has not established that Vossen teaches or
suggests all of the limitations of claims 1 and 5. Further, Petitioner has not
established that Vossen teaches or suggests all of the limitations of claim 2
at least because of its dependency from claim 1.
IPR2019-00594
Patent 6,654,864 B2
22
The Petition’s combination of Vossen and Willman relies on this same
deficient position. Pet. 35. Thus, Petitioner has not established that the
combination of Vossen and Willman teaches all of the limitations of claims
1, 2, and 5.
F. Claims 2, 3, 5, 6, and 9 — Alleged obviousness over Vossen and
Bsaibes, or Vossen, Willman, and Bsaibes
Petitioner asserts that Vossen and Bsaibes, or Vossen, Willman, and
Bsaibes renders obvious claims 2, 3, 5, 6, and 9. Pet. 8, 40–50. Patent Owner
opposes for the same reasons as previously discussed with respect to
Vossen. See PO Resp. 24–39.
The Petition’s combinations of Vossen and Bsaibes, and Vossen,
Willman, and Bsaibes rely on the same deficient position discussed with
respect to claims 1 and 5. See, e.g., Pet. 46 (“As discussed above, Vossen
discloses element 5[C].”). Thus, Petitioner has not established that either of
the combinations of Vossen and Bsaibes, or Vossen, Willman, and Bsaibes
teaches all of the limitations of claims 2, 3, 5, 6, and 9.
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.
39.
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
IPR2019-00594
Patent 6,654,864 B2
23
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 22.
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.

III. CONCLUSION8
For the reasons discussed above, we determine Petitioner has proven,
by a preponderance of the evidence, that some of the challenged claims are
unpatentable, as summarized in the following table:

8 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
Claims

35
U.S.C.
§
Reference(s)/Basis Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1–3, 5, 6, 9 102,
103
Ofek 1–3 5, 6, 9
1, 2, 5 103 Vossen 1, 2, 5
1, 2, 5 103 Vossen, Willman 1, 2, 5
2, 3, 5, 6, 9 103 Vossen, Bsaibes 2, 3, 5, 6, 9
2, 3, 5, 6, 9 103 Vossen, Willman,
Bsaibes
2, 3, 5, 6, 9
Overall
Outcome
1–3 5, 6, 9
IPR2019-00594
Patent 6,654,864 B2
24

IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–3 of the ’864 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.

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).
IPR2019-00594
Patent 6,654,864 B2
25
FOR PETITIONER:
Erika Arner
erika.arner@finnegan.com

Joshua Goldberg
joshua.goldberg@finnegan.com

Jason Stach
jason.stach@finnegan.com

Cory Bell
cory.bell@finnegan.com

Nicholas Petrella
nicholas.petrella@finnegan.com

Andrew Devkar
andrew.devkar@morganlewis.com

Diek Van Nort
dvannort@mofo.com

FOR PATENT OWNER:
Gregory S. Donahue
gdonahue@dpelaw.com

Andrew DiNovo
adinovo@dpelaw.com