Kom Software, Inc. v. Netapp, Inc. ( 2021 )


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  • Case: 21-1075    Document: 51    Page: 1   Filed: 12/17/2021
    NOTE: This disposition is nonprecedential.
    United States Court of Appeals
    for the Federal Circuit
    ______________________
    KOM SOFTWARE, INC.,
    Appellant
    v.
    NETAPP, INC.,
    Cross-Appellant
    ______________________
    2021-1075, 2021-1076
    ______________________
    Appeals from the United States Patent and Trademark
    Office, Patent Trial and Appeal Board in No. IPR2019-
    00594.
    ______________________
    Decided: December 17, 2021
    ______________________
    DAVID FARNUM, Anova Law Group, PLLC, Sterling,
    VA, argued for appellant. Also represented by WENYE TAN.
    SYDNEY KESTLE, Finnegan, Henderson, Farabow, Gar-
    rett & Dunner, LLP, Washington, DC, argued for cross-ap-
    pellant.  Also represented by ERIKA ARNER, JOSHUA
    GOLDBERG, SONJA SAHLSTEN; CORY C. BELL, Boston, MA;
    JACOB ADAM SCHROEDER, Palo Alto, CA; JASON E. STACH,
    Atlanta, GA.
    ______________________
    Case: 21-1075     Document: 51      Page: 2    Filed: 12/17/2021
    2                          KOM SOFTWARE, INC.   v. NETAPP, INC.
    Before PROST, TARANTO, and CHEN, Circuit Judges.
    PER CURIAM.
    KOM Software, Inc. owns U.S. Patent No. 6,654,864.
    NetApp, Inc. filed a petition for inter partes review of
    claims 1–3, 5, 6, and 9. The Patent Trial and Appeal Board
    (Board) determined that claims 1–3 were anticipated by
    U.S. Patent No. 6,185,661 (Ofek) but upheld claims 5, 6,
    and 9. KOM appeals with respect to the claims the Board
    found to be unpatentable and NetApp cross-appeals with
    respect to the claims the Board upheld. We affirm.
    KOM first challenges the Board’s construction of “re-
    striction to alteration of a same portion of each file,” focus-
    ing on the word “portion.” KOM argues that “portion” must
    mean “less than the entirety of each file.” In other words,
    KOM reads “portion” to mean “only a portion.” We see no
    error in the Board’s treatment of this limitation. While the
    Board did not expressly construe “portion,” the Board con-
    cluded that Ofek’s disclosure satisfied the limitation be-
    cause Ofek’s restriction to alteration of entire files
    “encompasses every portion of that file.” NetApp, Inc. v.
    KOM Software, Inc., IPR2019-00594, 
    2020 WL 4814234
    , at
    *7 (P.T.A.B. Aug. 17, 2020) (Final Written Decision).
    Therefore, the Board found, regardless of whether the term
    “portion” includes or excludes the whole file, Ofek discloses
    the limitation. The Board’s reasoning aligns with this
    court’s decision in Hewlett-Packard Co. v. Mustek Systems,
    Inc., 
    340 F.3d 1314
     (Fed. Cir. 2003). In Hewlett-Packard,
    we affirmed a district court’s finding that a prior art refer-
    ence that scanned an entire image disclosed scanning a se-
    lected portion of the image. 
    Id. at 1324
    . We held that
    “[w]hen an entire picture is scanned, any previously se-
    lected portion will also necessarily be scanned” and de-
    clined to require “that no more than the selected portion
    [be] scanned.” 
    Id.
    Case: 21-1075     Document: 51      Page: 3   Filed: 12/17/2021
    KOM SOFTWARE, INC.   v. NETAPP, INC.                        3
    This court’s decision in Dippin’ Dots, Inc. v. Mosey, 
    476 F.3d 1337
     (Fed. Cir. 2007), is distinguishable. KOM relies
    on Dippin’ Dots for the premise that “comprising” in the
    preamble does not broaden the individual steps of a method
    claim. See 
    id. at 1343
    . While we agree, the Board did not
    violate that principle here. In Dippin’ Dots, the relevant
    claim term was already “narrowly defined” during claim
    construction to exclude specific processes and appellant
    sought to rely on “comprising” to bring those same explic-
    itly excluded processes back within the scope of the claim.
    
    Id.
     (“The presumption raised by the term ‘comprising’ does
    not reach into each of the six steps to render every word
    and phrase therein opened-ended—especially where, as
    here, the patentee has narrowly defined the claim term it
    now seeks to have broadened.”). Here, in contrast, the
    Board’s conclusion is consistent with the scope of the claim
    language.
    Accordingly, we reject KOM’s narrowing construction
    and hold that substantial evidence supports the Board’s
    conclusion that Ofek discloses “restriction of alteration of a
    same portion of each file.”
    KOM also challenges the Board’s finding that Ofek re-
    stricts “file access” because Ofek describes restricting ac-
    cess to “tracks.” We reject this challenge. As the Board
    explained, while “files” and “tracks” do not have a one-to-
    one correspondence (i.e., “a file may comprise the entirety
    of one or more tracks or portions of one or more tracks” and
    vice versa), Ofek discloses at least one mode of operation
    that restricts access to files by making entire tracks on
    which they are stored read-only. Final Written Decision, at
    *7. Substantial evidence therefore supports the Board’s
    conclusion that Ofek discloses this limitation.
    KOM’s third ground for appeal is that the Board did
    not clearly identify whether it relied on anticipation or ob-
    viousness in finding claims 1–3 unpatentable. But, “we
    will uphold a decision of less than ideal clarity if the
    Case: 21-1075     Document: 51     Page: 4     Filed: 12/17/2021
    4                         KOM SOFTWARE, INC.   v. NETAPP, INC.
    agency’s path may reasonably be discerned.” Yeda Rsch. &
    Dev. Co. v. Mylan Pharms., Inc., 
    906 F.3d 1031
    , 1047 (Fed.
    Cir. 2018) (quoting In re NuVasive, Inc., 
    842 F.3d 1376
    ,
    1383 (Fed. Cir. 2016)). It is reasonably clear from the
    Board’s reliance on the Ofek reference alone that the Board
    found claims 1–3 to be unpatentable as anticipated under
    35 U.S.C. § 102.
    NetApp cross-appeals the Board’s finding that NetApp
    failed to demonstrate that the prior art discloses “allowing
    access to free space portions of the same logical storage me-
    dium.” NetApp argues that it “articulated two alternative
    mappings” for this limitation and the Board improperly
    considered only one. We review the Board’s judgments con-
    cerning what arguments are fairly presented in a petition
    and other pleadings for abuse of discretion. See, e.g., Erics-
    son Inc. v. Intellectual Ventures I LLC, 
    901 F.3d 1374
    , 1379
    (Fed. Cir. 2018); Altaire Pharms., Inc. v. Paragon Bioteck,
    Inc., 
    889 F.3d 1274
    , 1284 (Fed. Cir. 2018), remand order
    modified by stipulation, 738 F. App’x 1017 (Fed. Cir. 2018).
    The statement NetApp identifies in its petition as an alter-
    native mapping is not clearly a distinct argument, and we
    thus discern no error in the Board’s conclusion that the pe-
    tition set forth a single mapping only. Final Written Deci-
    sion, at *9.
    We have considered the parties’ remaining arguments
    and find them unpersuasive. For the foregoing reasons, we
    affirm.
    The parties shall bear their own costs.
    AFFIRMED
    

Document Info

Docket Number: 21-1075

Filed Date: 12/17/2021

Precedential Status: Non-Precedential

Modified Date: 12/21/2021