KOM Software, Inc.

Patent Trials and Appeals Board

Jul 28, 2020

IPR2019-00601 (P.T.A.B. Jul. 28, 2020)

Trials@uspto.gov Paper No. 29
571-272-7822 Date: July 28, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

NETAPP, INC.,
Petitioner,

v.

KOM SOFTWARE, INC.,
Patent Owner.
____________

IPR2019-00601
Patent 7,392,234 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)
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I. INTRODUCTION
A. Background
NetApp, Inc. (“Petitioner”)1 filed a Petition to institute an inter partes
review of claims 1–7, 45–57, and 59 (the “challenged claims”) of U.S.
Patent No. 7,392,234 B2 (“the ’234 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 19, “Sur-Reply”). An oral hearing was held on May 6, 2020, and a
copy of the transcript was entered into the record. Paper 28 (“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 the
challenged claims of the ’234 patent are unpatentable.
B. Related Proceedings
Concurrent with the instant Petition, Petitioner filed another petition
for inter partes review of the ’234 patent in IPR2019-00603. Pet. 68; Paper
8, 2.
The parties state that the ’234 patent is involved in (1) KOM Software
Inc. v. Hitachi Vantara Corp., Case No. 1-18-cv-00158 (D. Del.); (2) KOM

1 Hewlett Packard Enterprise Co. settled with Patent Owner and is no longer
a part of this proceeding. See Paper 25.
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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. 68; Paper 5, 3; Paper 8, 2. The parties also state there
are a number of related proceedings including: IPR2019-00591, IPR2019-
00592, IPR2019-00594, IPR2019-00597, IPR2019-00598, IPR2019-00600,
IPR2019-00603, IPR2019-00604, IPR2019-00605, IPR2019-00606,
IPR2019-00607, and IPR2019-00608. Pet. 68; Paper 5, 2–3; Paper 8, 3.
C. The ’234 Patent
The ’234 patent, titled “Method and system for electronic file
lifecycle management,” relates generally to methods that associate a set of
policies with each electronic file or storage used for each electronic file,
where the policies control the lifecycle of the associated electronic files
stored on the system. Ex. 1001, code (57), 2:44–53, 4:66–5:11, 5:33–6:60.
As shown in Figure 2, reproduced below, a virtual filing cabinet can be used
to manage the lifecycle of a file.
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Figure 2 above illustrates a virtual filing cabinet. Id. at 3:65. Files can
be automatically moved between virtual drawers of the filing cabinet based
on managing policies “and as such, a file’s lifecycle is managed from file
creation to file deletion in an automated fashion.” Id. at code (57). The
virtual cabinet and drawers can span multiple storage media and can be
indefinite in size. Id. at 4:29–34.
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D. Illustrative Claim
Of the challenged claims, claims 1, 45, and 51 are independent. Each
of dependent claims 2–7, 46–50, 52–57, and 59 depends directly or
indirectly from its respective independent claim 1, 45, or 51. Illustrative
claim 1, with bracketed material added, is reproduced below.
1. [a] A computer-implemented method of managing a file
lifecycle, the method comprising the steps of storing data on a
storage medium comprising:
[b] associating a set of lifecycle policies with a file in a file
system, wherein said lifecycle policies relate to aspects of file
classification and file disposition including at least one of: file
creation, file retention, file reference, file non-use, file security,
file protection, file preservation, file storage locations within a
storage medium, cost effective storage of a file, or file expiration;
[c] storing said file on said storage medium accessible by
a computer according to said set of lifecycle policies;
[d] automatically determining from the associated
lifecycle policies whenever said file is to be moved;
[e] automatically moving said file according to the
associated lifecycle policies to another storage location within
said storage medium or within a different storage medium
whenever the associated lifecycle policies determine that said file
is to be moved; and
[f] receiving an access request for said file from an
application;
[g] providing transparent access to said requested file
based on said associated set of lifecycle policies, regardless of
where said file is located, and independently of said application
requesting access to said file.
Ex. 1001, 14:1–28.
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E. Instituted Ground
Petitioner contends that the challenged claims are unpatentable on the
following ground:2
Claims Challenged 35 U.S.C. §3 References
1–7, 45–57, 59 103(a) Sitka,4 Cannon5
a. Sitka
Sitka “relates to data storage and, more particularly, to systems and
methods for hierarchical storage management [(HSM)].” Ex. 1005, 1:9–11.
“The system and method are especially useful in managing the storage of
larger files that include graphic imagery.” Id. at 1:65–67. The system can be
used to group multiple images for storage and to apply processes to multiple
images in a batch. Id. at 2:4–13, 2:33–53.
Sitka describes its system as a “directed storage management (‘DSM’)
system” that “allows a system administrator to introduce, on a selective and
reconfigurable basis, significant direction concerning storage management
policies including migration.” Id. at 8:13–17. Sitka explains that its system
differs from a “simple” HSM system because clients and an administrator
“have the ability to direct a file to a particular location” and the system
“provides a much broader set of data-movement policies than a typical
HSM.” Id. at 8:17–26.

2 Petitioner supports its challenge with a Declaration of Darrell Long, Ph.D.
(Ex. 1002) (“Long Decl.”).
3 The Leahy-Smith America Invents Act (“AIA”) included revisions to
35 U.S.C. §§ 102 and 103 that became effective after the filing of the
application for the ’234 patent. Therefore, we apply the pre-AIA versions of
these sections.
4 Ex. 1005, U.S. Pat. 6,330,572 B1 (Dec. 11, 2001) (“Sitka”).
5 Ex. 1006, U.S. Pat. 6,021,415 (Feb. 1, 2000) (“Cannon”).
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Figure 1 of Sitka, reproduced below, illustrates the architecture of the
DSM system.

As shown in Figure 1, DSM system 10 is implemented as a software
system having a collection of logical software components. Id. at 8:50–52.
The DSM server works in conjunction with DSM Agents 22 to implement
policies set up by the administrator, including migrating files from one DSM
storage location to another or deleting files of a certain age. Id. at 16:66–
17:14. The DSM server is also connected to a database server that maintains
information including “file metadata, including the security attributes and
media locations of each file [and] . . . policy parameters used by the DSM
server and DSM agents.” Id. at 17:15–30.
Sitka teaches numerous policies for maintaining copies of files in
stores and dealing with media and volumes. Id. at 17:32–43. Exemplary
policies include: (1) a migration policy (id. at 17:44–53), (2) a deletion
policy (id. at 17:54–18:1), (3) a chunking policy (id. at 18:4–10), (4) a
volume selection policy (id. at 18:10–19), (5) a drive selection policy (id. at
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18:20–22), (6) a shelf management policy (id. at 18:23–38), (7) an inventory
policy (id. at 18:39–42), and (8) various miscellaneous policies (id. at
18:42–45).
For example, Sitka’s migration policy is used to migrate files from
one DSM store to another, “e.g., from a RAID disk to a magneto optical
(MO) drive and/or to a tape drive.” Id. at 17:2–6. Sitka discloses that a
migration policy may consider factors such as (1) remaining free space,
(2) target stores (e.g., collecting like media in one place), (3) ranking criteria
such as age and recent use, and (4) a migration time window. Id. at 17:44–
53, 8:31–32.
b. Cannon
Cannon “relates to the storage of digital data signals.” Ex. 1006, 1:9–
10. “[T]he subsystem creates a contiguous managed file by aggregating
selected received user files in accordance with certain predetermined
criteria.” Id. at 2:20–24. The system manages storage space by reclaiming
space when certain criteria are met, after files have been deleted from the
storage. Id. at code (57); see also id. at 2:48–62.

II. ANALYSIS
A. Legal Standards for Obviousness
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
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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. 9 (citing Long Decl. ¶¶ 33–36). Patent
Owner provides a similar definition, stating a POSA “should have a
bachelor’s degree in electrical engineering, computer science, or equivalent
with two years or more of experience in computing systems development; a
master’s degree in electrical engineering, computer science, or equivalent; or
comparable computing systems work experience.” PO Resp. 6–7 (citing
Declaration of Dr. Jose Luis Melendez ¶ 33, (Ex. 2001) (“Melendez
Decl.”)); see Melendez Decl. ¶ 33 (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.
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Based on the record before us, including the types of problems and
solutions described in the ’234 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.
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)).
For purposes of this Decision, we only find it necessary to provide
some construction of the term “transparent access,” as discussed below. See,
e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
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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))).
a. Transparent Access
Petitioner asserts that no claim constructions are required to resolve
the disputes in the present action. See Pet. 9–10. However, Patent Owner
asserts that Petitioner has implicitly provided an incorrect claim construction
of the term “transparent access,” which is present in each of challenged
independent claims 1, 45, and 51. PO Resp. 8. Patent Owner asserts that
Petitioner’s definition is: “access [to] the file regardless of the file’s new
location and without having to know where the file is physically located.”
Id. (quoting Dec. 11 and citing Pet. 35).
In contrast, Patent Owner argues that the term “transparent access”
should be construed to mean: “[a]s far as the user is concerned the file is
stored in a particular directory on a particular drive,” but it actually resides
elsewhere. PO Resp. 8 (quoting Ex. 1001, 5:63–64); see also id. at 8–9
(stating because the ’234 patent operates at the file system level, the user is
“provided by the file system the fiction that a file resides and resided on a
particular directory on a particular drive”).
There are two differences between these claim constructions. Whether
or not “transparent access” requires “access [to] the file regardless of the
file’s new location” and whether or not “transparent access” requires a user
to know or believe that the file is located in a particular location.
The first difference is not actually an issue in the sense that it is
explicitly required by the claims. Each of independent claims 1, 45, and 51
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requires “providing transparent access to said requested file . . . regardless of
where said file is located.” Ex. 1001, 14:25–27, 18:48–50, 19:36–38. Thus,
“regardless of where said file is located” does provide insight into the
meaning of “transparent access,”6 but it does not differentiate Patent Owner
and Petitioner’s positions as to what the claims require.
Thus, the actual dispute centers around whether or not transparent
access requires a user to know or believe that the file is located in a
particular location. For the reasons discussed below, we determine that
though transparent access allows for the user to falsely believe the file is
located in a particular location, it does not require such belief.
The ’234 patent does not use the term “transparent access.” When
discussing “a method of file lifecycle management” (Ex. 1001, 5:32–33), it
describes a transparent use of a virtual storage cabinet, stating:
The use of storage cabinet or drawer is completely transparent to
the user. As far as the user is concerned the file is stored in a
particular directory on a particular drive. Internally to the system
the file may redirected to an entirely different location and may
even be split across different devices across the network.
Id. at 5:61–67.
Patent Owner argues that this discussion “requires that ‘[a]s far as the
user is concerned the file is stored in a particular directory on a particular
drive.’” PO Resp. 8 (quoting Ex. 1001, 5:63–64) (alteration in original); see
also Melendez Decl. ¶¶ 28, 38. Patent Owner further argues that “transparent
access” also requires that the system provide the user with “the fiction that a

6 Patent Owner’s argument at pages 12–13 of the Patent Owner Response
incorrectly implies that this is the only distinction between its and
Petitioner’s claim construction.
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file resides and resided on a particular directory on a particular drive.” PO
Resp. 8–9.
We disagree with Patent Owner’s arguments. Though, the
Specification is describing an embodiment of the invention, there is nothing
in the cited paragraph that requires transparent access to mean that the user
believe the file is stored in a particular directory on a particular drive when it
is not. See Ex. 1001, 5:61–67. Still further, we see no reason to read an
additional limitation into the claims of providing the user with a false
location of a file on a particular drive as implied by Patent Owner. Rather,
we determine that the specification is describing a particular embodiment
that is encompassed within the definition of “transparent access,” but does
not limit the term “transparent access” to this particular embodiment.7 See E-
Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003)
(“[I]n determining whether a statement by a patentee was intended to be
lexicographic, it is important to determine whether the statement was
designed to define the claim term or to describe a preferred embodiment.”);
see also Reply 4–5. Also, this embodiment states that a file “may [be]
redirected” to a location different from that conveyed to the user; it does not
say the file must be moved. Ex. 1001, 5:61–67. Therefore, even if the claims
were limited to this embodiment, it would not compel the construction
Patent Owner proposes.

7 We note that Patent Owner’s position surrounding “belief” would appear to
prevent the inventor of the ’234 patent from practicing the invention, as
anyone who knows how the system works would be unlikely to have a false
belief as to where a file is located, though they may not know where the file
is stored.
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Turning to the prosecution history, in response to an Office Action
dated May 3, 2007, all three of the independent claims were amended to
include, inter alia, “providing transparent access to said file regardless of
where the file is created, located, or moved to, independently of an
application or a user.” Ex. 1004, 44, 46, 52. The claims were later revised by
Examiner’s amendment to the current language. Id. at 29–30. In
summarizing an Examiner interview at the time of the response, the
applicant stated “that some amendment is needed to clarify” that “when a
file is moved according to the policies, the move is transparent to the user,
who does not need to know where the new file location is in order to access
it.” Id. at 56. When discussing the prior art, the applicant also explained:
When a file is moved according to the file lifecycle policies, the
user may still access the file regardless of the file’s new location
and without having to know where the file is physically located.
Thus, accessing the file . . . is transparent to the user.
Ex. 1004, 58 (citing Spec. as Filed, 8, ll. 2–7 (corresponding to Ex. 1001,
5:64–6:2) (internal citation omitted)).
The applicant’s two statements that to be “transparent to the user” the
user “does not need to know where the new file location is in order to access
it” support Petitioner’s position that “transparent access” does not require
the user “to know where the file is physically located.” See Pet. 35; Reply 3.
Further, nothing in these statements would require the user to have a
misplaced belief as to the location of the file as per Patent Owner’s
construction.
Patent Owner acknowledges the prosecution history and states that
“[t]he user/client may have no actual knowledge of the file’s location as
discussed in the prosecution history but believe the file is stored in a
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particular directory on a particular drive when it is indeed not stored there.”
Sur-Reply 3. Though it is true that a user may have such a belief, the
statement does not provide any persuasive evidence as to why “transparent
access” requires the user to have an incorrect belief of the location of the
file.
Patent Owner also points to other statements in the prosecution history
to argue that its
meaning of “transparent access” is entirely consistent with the
prosecution history Petitioners cite because the prosecution
history also explicitly states that “because embodiments of the
invention may operate at the file system level, no separate
application or middleware is required.” It would have been
readily understood by a [POSA] that by operating at the file
system level the user would be provided by the file system the
fiction that a file resides and resided on a particular directory on
a particular drive as required for transparent access of the ‘234
Patent.
PO Resp. 8–9 (quoting Ex. 1004, 58; citing id. at 56–58; Melendez Decl.
¶ 28; Ex. 1001, 5:63–64) (internal citation omitted).
We first note that this argument in the prosecution history appears to
be directed primarily to the transparent access being provided
“independently of an application or a user.” Ex. 1004, 58 (emphasis
omitted). It is also consistent with our determination that “transparent
access” includes, but does not require, that a user have a misplaced belief
about the location of the file. Patent Owner does not provide any reason why
this example requires more.
Patent Owner also points to a publication by the National Institute of
Standards & Technology (NIST) in support of its definition of “transparent
access.” PO Resp. 13 (citing Ex. 2003, 5). Patent Owner quotes the
publication as stating: “However, there is no standard way for [an]
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application to be able to transparently access files on several file systems
whose access characteristics may differ from the access characteristics of the
local file system. Transparent file access means that remote files are
accessed as though they were local.” Id. (quoting Ex. 2003, 5 (Patent
Owner’s emphasis and alteration)).
Patent Owner argues that ‘“the access characteristics of the local file
system’ implies knowledge by the local client, in the case of NIST, that the
file is stored in a particular directory on a particular drive of the local file
system when in fact it is stored as a remote file.” Id. (citing Melendez Decl.
¶ 39, which includes the same sentence). However, neither Patent Owner nor
its expert adequately explain why this would require the user to falsely
believe the file is located in a particular location. See Reply 6–7. The fact
that a user does not have to separately access a remote server to retrieve a
file, but rather can transparently access the file from the user’s computer as
though the file was local, says nothing about where the user believes the file
to be located. Again, it is possible that the user does believe the file is
located locally, but there is no requirement that the user have such a belief.
In view of the above, we determine that “transparent access” includes
that access is provided without the user having to know where the file is
physically located, but does not require that a user have a misplaced belief
about the location of the file.
D. Claims 1–7, 45–57, and 59 — Alleged Obviousness over Sitka and
Cannon
Petitioner asserts that claims 1–7, 45–57, and 59 would have been
obvious over Sitka and Cannon. See Pet. 19–68. Patent Owner opposes. See
PO Resp. 9–24. For the reasons set forth below, we find that Petitioner has
shown that the combination of Sitka and Cannon teaches the limitations of
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claims 1–7, 45–57, and 59. We additionally find that Petitioner has
demonstrated that one of ordinary skill in the art would have had reason with
rational underpinning to combine the teachings of the references in the
manner proposed by Petitioner with a reasonable expectation of success. Pet.
19–68; Long Decl. ¶¶ 57–157. Thus, we determine Petitioner has
sufficiently shown that claims 1–7, 45–57, and 59 would have been obvious
over Sitka and Cannon.
a. Independent Claim 1
Petitioner asserts that the combination of Sitka and Cannon would
have rendered obvious independent claim 1. Pet. 19–38. In general,
Petitioner asserts that Sitka8 teaches the computer-implemented method of
managing a file lifecycle as required by independent claim 1 (id. at 23
(citing Ex. 1005, 1:15–30, 8:50–52, 3:64–4:8, 10:17–31; Long Decl. ¶ 65)),
as well as all of the other limitations of claim 1 (id. at 23–38). Petitioner
relies on Cannon primarily in the case that “Sitka [is] deemed not to provide
an explicit example of associating policies with individual files.” Id. at 20.
Petitioner asserts that “[i]t would have been obvious to one of ordinary skill
to associate Sitka’s policies with individual files in view of Cannon” as a

8 Sitka claims priority to U.S. provisional application 60/092,853, filed on
July 15, 1998 (Ex. 1007) (“’853 provisional”). Ex. 1005, code (60).
Petitioner’s discussion of Sitka cites to Sitka as well as to the priority
application (’853 provisional). Because Patent Owner does not assert that the
challenged claims of the ’234 patent are entitled to the benefit of a filing
date earlier than Sitka’s filing date, we do not include Petitioner’s cites to
the ’853 provisional herein. See Tech. Licensing Corp. v. Videotek, Inc., 545
F.3d 1316, 1326–28 (Fed. Cir. 2008) (discussing parties’ respective burdens
of production in the context of prior art and priority); see also Dynamic
Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378–1380 (Fed.
Cir. 2015) (discussing burdens of production in inter partes review).
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matter of design choice and, inter alia, to provide additional control over file
management. Id. at 19–23 (citing Long Decl. ¶¶ 57–64); see also id. at 25–
26.
For the reasons discussed below, we determine that Petitioner has
shown that the combination of Sitka and Cannon teaches the subject matter
recited in claim 1. We further determine that Petitioner has demonstrated
that one of ordinary skill in the art would have had reason to combine the
teachings of the references in the manner proposed by Petitioner. Pet. 19–38;
Long Decl. ¶¶ 57–92.
i. Uncontested Limitations of Claim 1
Patent Owner does not contest Petitioner’s position that Sitka or the
combination of Sitka and Cannon teach or suggest the following of claim 1
(i.e., claim elements 1[a-f]):
1. [a] A computer-implemented method of managing a file
lifecycle, the method comprising the steps of storing data on a
storage medium comprising:
[b] associating a set of lifecycle policies with a file in a file
system, wherein said lifecycle policies relate to aspects of file
classification and file disposition including at least one of: file
creation, file retention, file reference, file non-use, file security,
file protection, file preservation, file storage locations within a
storage medium, cost effective storage of a file, or file expiration;
[c] storing said file on said storage medium accessible by
a computer according to said set of lifecycle policies;
[d] automatically determining from the associated
lifecycle policies whenever said file is to be moved;
[e] automatically moving said file according to the
associated lifecycle policies to another storage location within
said storage medium or within a different storage medium
whenever the associated lifecycle policies determine that said file
is to be moved; and
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[f] receiving an access request for said file from an
application.
See generally PO Resp.; Sur-Reply.
Petitioner argues and we agree that Sitka’s directed storage
management (“DSM”) system teaches a computer-implemented method of
managing a file lifecycle as required by independent claim 1 [a]. See Pet. 23
(citing Ex. 1005, 1:15–30, 8:50–52, 3:64–4:8, 10:17–31; Long Decl. ¶ 65).
We are persuaded by Petitioner that the DSM system “manages all aspects
of a file’s lifecycle, including where the files are stored, when they are
moved between media, and when files are deleted.” Id. (citing Ex. 1005,
3:64–4:8, 10:17–31). We find that the DSM system expressly teaches storing
data on a storage medium, as also argued by Petitioner. Ex. 1005, 8:58–61;
see Pet. 24.
Concerning element [b] of claim 1, Petitioner argues and we find that
Sitka teaches lifecycle policies relating to file creation, file retention, file
reference, file non-use, file security, file protection, file preservation, file
storage locations within a storage medium, cost effective storage of a file,
and file expiration. Pet. 24–33. This is because, for example, Sitka teaches a
migration policy (Ex. 1005, 17:44–53; Pet. 24, 28–30) (i.e. file retention,
preservation, file non-use, and expiration policies), a deletion policy (Ex.
1005, 17:48–18:1; Pet. 24, 27–29) (i.e., file non-use, reference and
expiration policies), security management features (Ex. 1005, 11:41–12:14;
Pet. 25, 30) (file security and protection policies). Further, Petitioner argues,
and we agree, that when discussing migration, Sitka teaches that it is
designed for the cost effective storage of a file as required by the claim
stating ‘“[b]y migrating the high resolution image, however, storage costs
for RAID are dramatically reduced,’ which results in storing files ‘as
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economically and efficiently as possible.”’ Pet. 32 (quoting Ex. 1005, 5:66–
6:3) (citing Ex. 1005, 28:60–29:4).
Claim 1 element [b] also requires that the lifecycle policies be
associated with individual files. Petitioner argues that this is taught by both
Sitka and Cannon. Pet. 19–23, 24–26. Sitka teaches security management
features or policies that relate to individual files (Ex. 1005, 14:10–18) and
that the lifecycle policies “have the ability to direct a file to a particular
location” (id. at 8:17–19). See also Pet. 19–20, 25; Long Decl. ¶ 60. Among
other things, Cannon teaches an “inventory table contains information
specific to each user file stored in the subsystem 102.” Ex. 1006, 7:44–47;
see also Pet. 20. This information, as shown in Cannon table 1, includes the
retention time for each file. Ex. 1006, 8:11–35; see also Pet. 20, 25–26.
Thus, we find that both Sitka and Cannon teach associating lifecycle policies
with individual files as argued by Petitioner.
Petitioner provides various reasons why a person of ordinary skill in
the art would have combined Sitka’s teachings of file policies with Cannon’s
teachings of associating policies with individual files, including that doing
so would “provide additional control over file management.” Pet. 21 (citing
Long Decl. ¶ 62); see id. at 19–23, 25–26 (discussing rationale to combine).
We determine that Petitioner provides sufficient explanation and articulated
reasoning with rational underpinning supporting its assertion of obviousness.
See Pet. 19–23, 25–26.
Concerning elements [c], [d], and [e] of claim 1, we have previously
noted that Sitka teaches storing files on a storage medium (Ex. 1005, 8:58–
61; Pet. 24) and migrating files according to a lifecycle policy (Ex. 1005,
5:66–6:3, 8:40–45, 28:60–29:4; Pet. 25, 32). We further find that, as argued
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by Petitioner, the stored files are accessible by a computer according to said
set of lifecycle policies and that they are moved automatically according to
the lifecycle policies. See e.g., Ex. 1005, 8:40–49, 8:58–61; Pet. 25, 32–34.
In particular concerning element [e], Sitka teaches that “[a] File may exist in
more than one Store at any given time, and will be moved or copied between
Stores according to the policies that an administrator has put in place and
specific user requests.” Ex. 1005, 8:40–43; see also id. at 43–49; Pet. 33–34.
Thus, we find that Sitka teaches elements [c], [d], and [e] of claim 1.
Claim 1, element [f] requires “receiving an access request for said file
from an application.” This is taught by Sitka because, as Petitioner
persuasively argues, Sitka’s “DSM system may receive ‘requests from its
various clients, i.e., user applications [etc.],’ and that the DSM server
process ‘handle[s] concurrent client requests to a given file by providing
simultaneous or sequential access depending on the nature of the requests.’”
Pet. 34 (alterations added by Petitioner) (quoting Ex. 1005, 9:37–56).
Based on the foregoing, we are persuaded that Petitioner establishes
that Sitka teaches or suggests these undisputed limitations by a
preponderance of the evidence. We are also persuaded that Petitioner
establishes that the combination of Sitka and Cannon suggests these
limitations by a preponderance of the evidence. See Pet. 19–34; Long Decl.
¶¶ 57–88.
ii. Providing Transparent Access
Claim 1 also requires:
[g] providing transparent access to said requested file
based on said associated set of lifecycle policies, regardless of
where said file is located, and independently of said application
requesting access to said file.
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Petitioner asserts that the limitations of claim element 1[g] are
disclosed by both Sitka and Cannon. See Pet. 34–38. Petitioner asserts that
Sitka teaches transparent access because, among other things, Sitka teaches
that “data can be stored on particular volumes without knowledge of the
media type of the volume” (id. at 35 (quoting Ex. 1005, 2:54–56)) and “that
the DSM server process ‘translate[s] requests for files into requests for data
transfer to or from specific media/volume locations’” (id. (quoting Ex. 1005,
9:44–46)). Petitioner asserts that, “because Sitka’s DSM server translates file
requests into requests from media/volume locations, the server requires only
a request for a ‘file,’ and not a request tied to a specific location,” thus
teaching that transparent access is provided “regardless of where said file is
located.” Id. at 35–36.
Petitioner also asserts that even if Sitka did not disclose providing
transparent access, this is taught by Cannon. Id. at 37 (citing Ex. 1006, 2:24–
25, 6:56–58). Petitioner contends it would have been “obvious to provide
access to Sitka’s files in a ‘transparent’ manner based on Cannon’s teachings
to simplify user and application access to files and because of Cannon’s
teaching that such transparency is ‘[e]specially advantageous.’” Id. at 37
(quoting Ex. 1006, 3:34–35, Long Decl. ¶ 91).
Petitioner asserts that Sitka teaches lifecycle policies (as discussed
above) and that “a person skilled in the art would have understood the
system to provide access to those files based on those lifecycle policies.” Id.
at 37–38. Petitioner provides an example of Sitka providing access to a file
based on a migration policy and another example of Sitka providing access
to a file based on “aspects of security and file protection.” Id. at 38.
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Petitioner asserts that “because Sitka’s DSM server translates file
requests into requests from media/volume locations, the server requires only
a request for a ‘file,’ and not a request tied to a specific location,” thereby
teaching that transparent access is provided “regardless of where said file is
located.” Id. at 35–36.
Petitioner argues that Sitka “provides access independently of the
application requesting access because it utilizes an API that translates
requests into DSM server requests by way of the DSM client library.” Id.
at 36 (citing Long Decl. ¶ 90; Ex. 1005, 9:24–36). Petitioner further explains
“any user application may interface with the DSM server through the DSM
client library, and, from the perspective of the server, the requests appear
identical, having been translated by the client API in the DSM client
library.” Id. at 36–37.
Patent Owner argues that two aspects of this claim element are not
taught or suggested by the prior art. PO Resp. 12–21. We address each in
turn.
1. Transparent Access
Patent Owner argues that neither Sitka nor Cannon teach “providing
transparent access to said requested file based on said associated set of
lifecycle policies” as required by claim 1. PO Resp. 14–19. At the same
time, Patent Owner does not contest that Sitka teaches providing “access to
said requested file based on said associated set of lifecycle policies.” See
generally, id. Rather, Patent Owner’s position centers on its claim
construction of “transparent access,” arguing that Sitka and Cannon do not
teach “transparent access” generally. Id.
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Patent Owner argues that “transparent access” is not present because
“Sitka’s application users are not informed that a ‘file is stored in a
particular directory on a particular drive.’” Id. at 14. However, claim 1 does
not include a step of informing a user that a “file is stored in a particular
directory on a particular drive,” and we have previously determined that this
is not required by the term “transparent access.” See supra § II.C.a. Patent
Owner’s arguments surrounding Sitka’s teachings of “media independence”
also fail for the same reason because the claims do not require “providing
access to a file that appears to be in a particular directory on a particular
drive but is not.” PO Resp. 16.
Patent Owner admits that “Sitka discloses transparency” but argues
that it is transparency to the server rather than the client. PO Resp. 15. Patent
Owner states that in Sitka “files are simply requested of the server as a
service and not directly accessed by the client by indicating a particular
directory on a particular drive.” Id.; see also Pet. 3 (relying on these
teachings to show transparent access).
Rather than distinguish the claims, Patent Owner’s argument further
shows how Sitka discloses transparent access. The file access provided in
Sitka is transparent to the user, i.e., “is provided without the user having to
know where the file is physically located.” See supra § II.C.a. It is not
required that the user know or believe to know where the file is located
when accessing the file in order for the access to be transparent. Pet. 35.
Patent Owner similarly argues Cannon does not teach “transparent
access” because “Cannon’s application users are not informed that a ‘file is
stored in a particular directory on a particular drive.’” PO Resp. 16.
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Patent Owner admits that “Cannon discloses that “creation and use of
the managed files is transparent to the client stations” but argues that
“Cannon’s transparency is a different type of transparency” because
“Cannon provides access simply on the basis of satisfying the client request,
and not by having a client application believe that it is requesting a file
located in a particular directory of a particular drive.” PO Resp. 16–17; Sur-
Reply 3–4, n.1. As this difference is not required by the claims it cannot
differentiate the claims from the prior art.
Based on Petitioner’s persuasive evidence and argument and in view
of the foregoing discussion, we find the combination of Sitka and Cannon
teaches “providing transparent access,” as recited in claim 1.
2. Providing Access Independently of the
Application Requesting Access
Patent Owner argues that “Sitka’s system and methods do not access
files ‘independently of said application requesting access to said file’” as
required by claim 1. PO Resp. 19.
As noted above, Petitioner argues that Sitka “provides access
independently of the application requesting access because it utilizes an API
[(application programming interface)] that translates requests into DSM
server requests by way of the DSM client library.” Pet. 36 (citing Long Decl.
¶ 90; Ex. 1005, 9:24–36). Petitioner further explains “any user application
may interface with the DSM server through the DSM client library, and,
from the perspective of the server, the requests appear identical, having been
translated by the client API in the DSM client library.” Id. at 36–37.
Patent Owner argues that in Sitka an API is part of the application that
utilizes the API. PO Resp. 20 (“[A]pplications wishing to interact with a
particular third party subsystem can readily customize their applications
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programming to include the APIs.”); see also Sur-Reply 11 (“[T]he APIs of
Sitka become part of the customized applications when they are used by
them.”). Patent Owner further argues that “Sitka does not provide access
independently of the application requesting access because the application
must be customized to incorporate custom APIs that translate requests into
requests to the DSM server by way of the DSM client library.” Sur-Reply
10; see also PO Resp. 20–21.
We find Sitka discloses that its APIs are separate from the user
applications that can utilize the APIs. See e.g., Ex. 1005, 9:24–36 (disclosing
“a set of client API (application programming interface) functions that are
available to user applications 28”); Reply 13; see also Ex. 1015, 4 (the IEEE
dictionary defining API as the “interface between the application software
and the application platform, across which all services are provided”). Sitka
discloses that its APIs can be utilized by different programs by describing
that APIs “are available to user applications 28,” which “are software
applications for manipulation of files stored by DSM system 10.” Ex. 1005,
9:24–36. This disclosure further shows separation from the user applications.
Further, we agree with Petitioner that Sitka discloses providing transparent
access independent of the application requesting access because it utilizes
the APIs as the interface with the server and storage system. Reply 13–14.
Because the API is separate from the user application, the API provides the
independence required by claim 1.
Patent Owner also argues that the ’234 Patent excludes APIs because
“the [’]234 Patent operates at the file system level and hence does not
require customized application software for file access.” PO Resp. 21 (citing
Ex. 1004, 31, 58; Melendez Decl. ¶ 52). We do not agree that “not
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requir[ing] customized application software for file access” is the same as
excluding customized application software for file access. Nowhere do the
’234 patent, the claims, or the prosecution history require such an exclusion
as suggested by Patent Owner. See Reply 11–13.
iii. 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 would have
been obvious based on the combined teachings of Sitka and Cannon. Pet.
19–38; Long Decl. ¶¶ 57–92.
b. Independent Claims 45 and 51
Petitioner asserts that the combination of Sitka and Cannon would
have rendered obvious independent claims 45 and 51. Pet. 23–38, 51–64.
As noted by Patent Owner “[i]ndependent claims 45 and 51 recite similar
limitations to independent claim 1.” PO Resp. 11. Petitioner’s analysis of
these claims is similar to the analysis of claim 1. Compare Pet. 51–59 and
60–64, with id. at 23–38. Similarly, Patent Owner largely argues the
patentability of claims 1, 45, and 51 together. See e.g., id. at 11 (“Sitka and
Cannon do not disclose these independent claim limitations . . . .”). Thus,
where claims 1, 45, and 51 are argued together, we are not persuaded by
Patent Owner’s arguments for the same reasons discussed above with
respect to claim 1.
Claims 45 and 51 also require “providing a virtual storage medium
having a plurality of storage media associated therewith,” which is not
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present in claim 1. Ex. 1001, 18:28–29, 19:14–15. Patent Owner argues that
this limitation is not taught by Sitka. PO Resp. 22.
Petitioner argues that Sitka teaches “manag[ing] the storage of data
files among a variety of ‘media’” “‘from various data storage devices’”
‘“without knowledge of the media type of the volume.’” Pet. 51–52 (quoting
Ex. 1005, 1:15–19, 8:58–61, 2:54–56). Petitioner reasons: “[g]iven that Sitka
discloses that storage and retrieval of files from devices can be done without
knowledge of the underlying media types, one skilled in the art would have
understood that Sitka discloses a plurality of storage media associated with
‘a virtual storage medium.’” Id. at 52 (citing Long Decl. ¶ 115).
Patent Owner argues that the ’234 patent requires virtual storage “to
be comprised of a shared memory space of a network of computers.” PO
Resp. 22 (citing Melendez Decl. ¶¶ 55–56). Petitioner disagrees, arguing that
this construction is not required by the ’234 patent and is inconsistent with
the definition of a number of technical dictionaries. Reply 14–16. In
particular, Petitioner argues that virtual storage does not require a network.
Id. at 15 (citing e.g. Ex. 1015 (The Authoritative Dictionary of IEEE
Standards Terms), 6 (defining “virtual storage” as “A storage allocation
technique in which auxiliary storage can be addressed as though it were part
of main storage”)).
Patent Owner does not address Petitioner’s dictionary evidence. At the
same time, it is unnecessary for us to construe “virtual storage” as it is taught
or suggested by Sitka under either party’s position. This is because Sitka’s
system discloses that the storage can be either networked storage or storage
in a single computer. For example, as Petitioner points out, Sitka teaches that
the “servers ‘can reside on a single host machine, or can be distributed
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across many hosts.’” Reply 17 (quoting Ex. 1005, 9:5–23). Sitka explains
that “Volume Server process 18 executes on each host having drives that
handle DSM volumes.” Ex. 1005, 16:26–27, quoted in Pet. 52. Thus, the
drives that make up the DSM storage are on different “hosts.” Petitioner also
notes that Sitka discloses “networkable interfaces” in Figure 1. Reply 17
(quoting Ex. 1005, 9:9–12). Sitka discloses that “system 10 may further
include a feature whereby volume metadata is stored on each physical
volume to track the volume across within a local server or across a
network.” Ex. 1005, 28:15–19 (emphasis added), cited in Reply 17.
Therefore, Sitka discloses that volumes that make up the DSM storage are
on different host computers connected by a network, satisfying Patent
Owner’s understanding of “virtual storage.” See PO Resp. 24 (“The ‘234
Patent discloses the virtual storage medium whereby two or more computers
contribute at least a portion of their individual drive(s) in creating the virtual
storage medium within a computer network.”).
In conclusion, we are persuaded that Petitioner establishes by a
preponderance of the evidence that the subject matter of claims 45 and 51
would have been obvious based on the combined teachings of Sitka and
Cannon. Pet. 23–38, 51–64; Long Decl. ¶¶ 113–129, 135–148.
c. Dependent Claims 3–5, 46–48, and 52–54
Petitioner contends that the combination of Sitka and Cannon would
have rendered obvious dependent claims 3–5, 46–48, and 52–54. Pet. 42–49,
59, and 64.
Claims 3 and 4 state, with lettering in brackets added:
3. A method of managing a file lifecycle according to claim 2 [a]
wherein a first storage medium is associated with active files and
a last storage medium is associated with archived files and [b]
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wherein the file is transferred from the first storage medium to
the last storage medium in successive stages.
4. A method of managing a file lifecycle according to claim 3,
wherein a file is automatically transferred to a storage medium
most appropriate for its stage of lifecycle determined in
accordance with the lifecycle policies.
5. A method of managing a file lifecycle according to claim 4
wherein the lifecycle policies relate to at least some of: the
associated storage medium, the file name, the file extension, the
file creation date, the file access date, the file last access date, the
file creator, and/or the current file owner.
Ex. 1001, 15:8–21.
Claims 46 and 52 are substantially similar to claim 3, except for their
dependency. Claims 47 and 53 are substantially similar to claim 4, except
for their dependency. Claims 48 and 54 are substantially similar to claim 5,
except for their dependency.
Patent Owner argues that Sitka does not teach the limitations added by
claim 3, and thus does not teach dependent claims 3–5, 46–48, and 52–54.
PO Resp. 25.
Petitioner argues that Sitka teaches claim 3 element [a]
because it teaches that “HSM systems typically are configured
such that files that are accessed more frequently or created more
recently are stored on ‘short-term’ media having the shortest
access time [and] [f]iles that are accessed less frequently, created
less recently, or have larger sizes are stored on ‘long-term’ media
having longer access times and larger storage capacities.
Pet. 42–43 (alterations added by Petitioner) (quoting Ex. 1005, 1:15-30)
(citing Long Decl. ¶ 98). Relying on its expert, Petitioner then asserts that
“one skilled in the art would have understood Sitka to disclose a first storage
medium associated with active files (i.e., the short term media having the
shortest access time) and a last storage medium associated with archived
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files (i.e., the long term media having longer access times).” Id. at 43 (citing
Long Decl. ¶ 98). Petitioner also argues that Sitka’s teaching of a migration
policy “in which case lowest level stores would not enable migration” (id.
(quoting Ex. 1005, 17:44-46)), “would have conveyed to a skilled artisan
that Sitka discloses a ‘last storage medium associated with archived files’
(i.e., the lowest level stores).” Id. (citing Long Decl. ¶ 98).
Turning to claim 3 element [b], Petitioner asserts that this is also
taught by Sitka. Petitioner relies on the same portion of Sitka’s background
discussing typical HSM systems for the teaching that Sitka’s “DSM system
is a form of hierarchical storage management, which would have conveyed
to a person of ordinary skill that files are transferred in stages.” Pet. 44
(citing Ex. 1005, 1:15–30; Long Decl. ¶¶ 99–102.) Petitioner also cites “an
example [in Sitka] where a file is successively migrated from store 0, to
store 1, to store 2.” Id. (citing Ex. 1005, 26:39–51, 1:43–50).
Patent Owner argues that “Sitka discloses a hierarchical storage
system where files are not transferred from a first medium to a last medium
in successive stages” because files are saved to the store 0 and store 3 at the
same time. PO Resp. 25 (citing Melendez Decl. ¶ 64). However, as asserted
by Petitioner, Sitka does disclose successive migration from store 0 to store
2.9 Ex. 1005, 26:39–51; see also Pet. 44; Reply 18. Sitka teaches that in this
example, store 3 is back-up storage. Id. at 26:57–59. Further “Store 2 and
Store 3 are both at the lowest level.” Id. at 26:56. Thus, Patent Owner is
incorrect to say that “Sitka discloses a hierarchical storage system where

9 Patent Owner argues that Petitioner is making a new argument in stating
the store 2 is the last storage medium. Sur-Reply 14. However, the Petition
clearly relies on store 2 as the last storage medium when it states “a file is
successively migrated from store 0, to store 1, to store 2.” Pet. 44.
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files are not transferred from a first medium to a last medium in successive
stages” (PO Resp. 25) as this is satisfied by successively migrating a file
from store 0 to store 1 to store 2 (“the last storage medium”) (Reply 18–19).
As required by claim 3, this example teaches a file being “transferred
from the first storage medium to the last storage medium in successive
stages.” Nowhere does claim 3 exclude the possibility of backing-up the
storage as well. Reply 19–20.
For the foregoing reasons and based on Petitioner’s persuasive
evidence and argument, we determine that Petitioner establishes, by a
preponderance of the evidence, that the subject matter of claims 3–5, 46–48,
and 52–54 would have been obvious based on the combined teachings of
Sitka and Cannon. Pet. 42–49, 59, and 64; Long Decl. ¶¶ 98–110, 130–132,
149–151.
d. Dependent Claims 2, 6, 7, 49, 50, 55–57, and 59
Petitioner contends that the combination of Sitka and Cannon would
have rendered obvious dependent claims 2, 6, 7, 49, 50, 55–57, and 59. Pet.
39–42, 49–51, 60, and 65–68. Patent Owner relies exclusively on its
arguments over independent claims 1, 45, and 51 for the patentability of
these dependent claims. PO Resp. 27.
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 the combination of Sitka and Cannon
suggests each limitation of claims 2, 6, 7, 49, 50, 55–57, and 59. We
additionally find that Petitioner has demonstrated sufficiently that one of
ordinary skill in the art would have had reason with rational underpinning to
combine the teachings of the references in the manner proposed by
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Petitioner with a reasonable expectation of success. Therefore, Petitioner
establishes by a preponderance of the evidence that the subject matter of
claims 2, 6, 7, 49, 50, 55–57, and 59 would have been obvious based on the
combined teachings of Sitka and Cannon. Pet. 39–42, 49–51, 60, 65–68;
Long Decl. ¶¶ 93–97, 111–112, 133–134, 152–157.

III. CONCLUSION10
For the reasons discussed above, we determine Petitioner has proven,
by a preponderance of the evidence, that the challenged claims are
unpatentable, as summarized in the following table:
Claims 35 U.S.C. § References Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
1–7, 45–57,
59
103(a) Sitka,
Cannon
1–7, 45–57,
59

10 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).
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IV. ORDER
For the reasons given, it is
ORDERED that claims 1–7, 45–57, and 59 of the ’234 patent have
been shown to be unpatentable; and
FURTHERED ORDERED that, because this is a Final Written
Decision, parties to the proceeding seeking judicial review of the Decision
must comply with the notice and service requirements of 37 C.F.R. § 90.2.

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PETITIONER:

Erika Arner
Joshua Goldberg
Jason Stach
Cory Bell
Guang-Yu Zhu
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER LLP
Erikia.arner@finnegan.com
Joshua.goldberg@finnegan.com
Jason.stach@finnegan.com
Cory.bell@finnegan.com
Guang-yu.zhu@finnegan.com

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

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

PATENT OWNER:

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