DCT

1:18-cv-00158

KOM Software Inc v. Hitachi Vantara Corp

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:18-cv-00158, D. Del., 01/29/2018
  • Venue Allegations: Plaintiff alleges venue is proper in the District of Delaware because Defendants are incorporated in the state, have transacted business in the district, and have allegedly committed or induced acts of patent infringement within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s enterprise data storage products, including the Virtual Storage Platform and Content Platform, infringe seven U.S. patents related to virtual storage systems, electronic file lifecycle management, and methods for providing restricted access to storage media.
  • Technical Context: The dispute centers on enterprise-level data storage technologies that manage large volumes of information by virtualizing physical storage hardware and applying automated, policy-based rules for data retention and tiering.
  • Key Procedural History: Subsequent to the filing of this complaint, Inter Partes Review (IPR) proceedings were initiated against all seven patents-in-suit. The U.S. Patent and Trademark Office issued certificates in August 2022 confirming the cancellation of numerous claims, including every independent claim explicitly identified as infringed in the original complaint. This development presents a significant procedural hurdle for the continuation of the case as originally pleaded.

Case Timeline

Date Event
1998-07-31 Earliest Priority Date for U.S. Patents 6,654,864; 7,076,624; 7,536,524; 8,234,477; and 9,361,243
1999-05-18 Earliest Priority Date for U.S. Patents 6,438,642 and 7,392,234
2002-08-20 U.S. Patent No. 6,438,642 Issues
2003-11-25 U.S. Patent No. 6,654,864 Issues
2006-07-11 U.S. Patent No. 7,076,624 Issues
2008-06-24 U.S. Patent No. 7,392,234 Issues
2009-05-19 U.S. Patent No. 7,536,524 Issues
2012-07-31 U.S. Patent No. 8,234,477 Issues
2016-06-07 U.S. Patent No. 9,361,243 Issues
2018-01-29 Complaint Filed
2019-01-24 IPR proceedings initiated against the '642 and '234 Patents
2019-01-25 IPR proceedings initiated against the '864 and '477 Patents
2019-01-28 IPR proceedings initiated against the '624, '524, and '243 Patents
2022-08-04 IPR Certificates issue for the '642, '624, '524, '477, and '243 Patents
2022-08-09 IPR Certificate issues for the '864 Patent
2022-05-10 IPR Certificate issues for the '234 Patent

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 6,438,642 - “File-based virtual storage file system, method and computer program product for automated file management on multiple file system storage devices”

The Invention Explained

  • Problem Addressed: The patent addresses the problem that computer systems quickly become outdated due to insufficient storage capacity, and that traditional methods of upgrading physical hard drives or relying on a central server are costly, disruptive, and inefficient, especially in a network environment (ʼ642 Patent, col. 1:12-64).
  • The Patented Solution: The invention proposes a virtual storage device that aggregates the physical storage media from multiple computers across a network into a single, unified virtual storage medium. Data files can be stored in portions across these different physical devices, with an index system tracking the location of each portion. This allows storage capacity to be expanded dynamically by adding new devices to the network without interrupting user access or requiring system-wide shutdowns (’642 Patent, col. 2:6-21; Fig. 2).
  • Technical Importance: This software-based approach to storage virtualization allowed for more flexible and scalable network storage architectures, moving away from the limitations of single, monolithic storage devices (’642 Patent, col. 2:1-4).

Key Claims at a Glance

  • The complaint asserts at least independent claim 12 for direct infringement (Compl. ¶45).
  • The essential elements of independent claim 12 include:
    • An automated file management file system.
    • A plurality of computers with physical non-volatile storage media that form parts of two different computer systems, with locations on the physical media corresponding to locations within a virtual storage device.
    • Means for storing portions of data across a first physical medium and a second physical medium.
    • Means for storing index data to locate and retrieve the stored data portions.
  • The complaint also alleges inducement of at least claim 1 and reserves the right to assert other claims (Compl. ¶46).

U.S. Patent No. 7,392,234 - “Method and system for electronic file lifecycle management”

The Invention Explained

  • Problem Addressed: The patent describes the difficulty and error-prone nature of manually managing the lifecycle of electronic files, from creation to archival and destruction. This lack of automated management leads to poor organization and difficulty in retrieving files once they have been moved or archived (ʼ234 Patent, col. 1:53–2:4).
  • The Patented Solution: The invention provides a method for automated file lifecycle management where a file is associated with a set of policies that dictate its storage location and movement over time. The system automatically moves the file to different storage media (e.g., from high-speed cache to slower archival storage) based on these policies, while maintaining transparent access for the user. The system is conceptualized as a "virtual cabinet" with different "drawers" representing different storage tiers or policies (’234 Patent, col. 2:55–64; Fig. 2).
  • Technical Importance: This technology provides a framework for policy-driven Information Lifecycle Management (ILM), enabling organizations to automate data handling based on business rules, compliance requirements, and access frequency rather than manual processes (’234 Patent, col. 2:26-31).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶¶50-51).
  • The essential elements of independent claim 1 include:
    • Associating a set of lifecycle policies with a file in a file system.
    • Storing the file on a storage medium according to said policies.
    • Automatically determining from the policies when the file is to be moved.
    • Automatically moving the file to another storage location as determined by the policies.
    • Receiving an access request for the file and providing transparent access regardless of its physical location.
  • The complaint reserves the right to assert other claims.

Multi-Patent Capsule: The ‘Restricted Access’ Patents (Family 2)

  • Patent Identification:
    • U.S. Patent No. 6,654,864, issued Nov. 25, 2003
    • U.S. Patent No. 7,076,624, issued Jul. 11, 2006
    • U.S. Patent No. 7,536,524, issued May 19, 2009
    • U.S. Patent No. 8,234,477, issued Jul. 31, 2012
    • U.S. Patent No. 9,361,243, issued Jun. 7, 2016
  • Technology Synopsis: These related patents, identified as "Family 2" in the complaint, describe a software method for enforcing restricted write access on a storage medium, effectively creating Write-Once-Read-Many (WORM) functionality on standard read/write hardware (Compl. ¶23). The invention uses a "trap layer" or "filter" that intercepts file system commands sent from an application. This layer compares the command against a set of disabled commands (e.g., "delete," "overwrite") and can block or modify the request before it reaches the device driver, thereby enforcing data immutability and retention policies (’864 Patent, col. 2:35-54).
  • Asserted Claims: The complaint asserts at least claim 1 of the ’864 patent, claim 12 of the ’624 patent, claim 29 of the ’524 patent, claim 1 of the ’477 patent, and claim 1 of the ’243 patent (Compl. ¶¶55, 60, 65, 70, 75).
  • Accused Features: The complaint alleges that the Hitachi Content Platform (HCP) infringes these patents through its "retention settings," which can specify a "deletion prohibited" state for an object, and its "hold setting," which allegedly "prevents an object’s deletion through any mechanism under any circumstances" (Compl. ¶¶34-36, 55).

III. The Accused Instrumentality

Product Identification

  • The complaint names two primary product families: the Hitachi Vantara Virtual Storage Platform (VSP) F and G Series, and the Hitachi Content Platform (HCP) (Compl. ¶¶45, 55).

Functionality and Market Context

  • The Hitachi VSP is described as a high-performance data storage system that provides an "enterprise-class virtualization layer" (Compl. ¶¶27, 45). Its key accused functionalities include storage virtualization, dynamic provisioning, dynamic tiering, and the ability to combine internal and external storage from heterogeneous systems into a single logical pool (Compl. ¶¶26-27).
  • The Hitachi HCP is described as a platform providing "comprehensive storage-tiering capabilities" to support Information Lifecycle Management (ILM) (Compl. ¶28). The complaint alleges that HCP groups storage components into "storage pools" and manages data objects using "object life-cycle policies" defined in service plans (Compl. ¶¶29-30). The complaint highlights features that allegedly provide WORM-like functionality, including "retention settings" that specify a period during which an object cannot be deleted, a "deletion prohibited" setting, and a "hold setting" that prevents deletion under any circumstances (Compl. ¶¶34-36). The complaint provides a diagram illustrating the HCP's tiered architecture, which combines private and public cloud storage (Compl. p. 7).

IV. Analysis of Infringement Allegations

U.S. Patent No. 6,438,642 Infringement Allegations

Claim Element (from Independent Claim 12) Alleged Infringing Functionality Complaint Citation Patent Citation
an automated file management file system; The Hitachi Storage Virtualization Operating System (SVOS) allegedly provides system management and advanced storage functions for the VSP. ¶26 col. 8:6-10
a plurality of computers each comprising one or more file system partitions on a physical non-volatile storage medium, locations within a plurality of said physical non-volatile storage media corresponding to locations within the virtual file-based non-volatile storage device... The VSP is alleged to offer "simplified and unified data replication across heterogeneous storage systems," delivering "virtualization of internal and external storage into one pool." ¶¶27, 45 col. 2:6-12
means for storing data... portions less than the whole of the data stored at locations within a first physical non-volatile storage medium... and other portions less than the whole of the data stored at locations within a second other physical non-volatile storage medium... The VSP allegedly provides an "enterprise-class virtualization layer" that pools storage, which suggests the capability to distribute and store data across multiple underlying physical storage devices. ¶¶27, 45 col. 4:18-22
means for storing index data, the index data for locating and retrieving data stored within said virtual file-based non-volatile storage device. This functionality is inherent in any system providing a "virtualization layer" that manages data across multiple physical devices, as the system must track the physical location of virtualized data. ¶¶27, 45 col. 2:18-21
  • Identified Points of Contention:
    • Scope Questions: A central question may be whether the term "computer", as used in the patent’s context of networked general-purpose machines, can be construed to read on the integrated, dedicated hardware components of an enterprise storage array like the VSP.
    • Technical Questions: The complaint alleges the VSP creates a "pool" of storage, but it does not specify whether this pooling operates by storing "portions less than the whole of the data" across distinct physical media from "two different computer systems," as required by the claim. The analysis will depend on the specific technical implementation of the VSP's virtualization layer.

U.S. Patent No. 7,392,234 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
associating a set of lifecycle policies with a file in a file system... The HCP allegedly stores objects that are "managed by object life-cycle policies, which are defined in service plans." ¶30 col. 2:58-60
automatically determining from the associated lifecycle policies whenever said file is to be moved; The HCP's service plans allegedly "determine content life cycle from ingest to obsolescence or disposition," suggesting an automated process for deciding when to move data. ¶30 col. 2:60-62
automatically moving said file according to the associated lifecycle policies to another storage location... The HCP is alleged to provide "comprehensive storage-tiering capabilities." The complaint's diagram shows movement between Primary, Extended, and Public Cloud storage tiers. ¶¶28, 30, p. 7 col. 2:62-64
receiving an access request for said file... and providing transparent access to said requested file... regardless of where said file is located... The HCP is alleged to "virtualize access to one or more logically grouped storage components," which suggests that access is abstracted from the physical location of the data object. ¶29 col. 2:45-54
  • Identified Points of Contention:
    • Scope Questions: The dispute may turn on whether HCP’s "object life-cycle policies" and "service plans" are equivalent in structure and function to the "lifecycle policies" claimed in the patent.
    • Technical Questions: The complaint alleges HCP has storage-tiering capabilities, but does not provide specific evidence that this tiering is "automatically" performed based on pre-set policies in a manner that maps directly to the claim language, as opposed to being manually configured or triggered by other system events.

V. Key Claim Terms for Construction

The Term: "virtual file-based non-volatile storage device" (from '642 Patent, Claim 12)

  • Context and Importance: This term defines the core architecture of the claimed invention. Its construction will be critical in determining whether a modern, integrated storage array like the accused VSP falls within the scope of a patent whose specification primarily describes aggregating storage from separate, networked general-purpose computers.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes the problem as overcoming the limitations of both individual computer hard drives and network servers, suggesting the invention is broadly applicable to any system that virtualizes storage across a network (’642 Patent, col. 1:12-64). The claim language itself refers generally to "physical non-volatile storage media" without limiting them to a specific type of hardware.
    • Evidence for a Narrower Interpretation: The primary embodiment illustrated shows three distinct computers (10a, 10b, 10c), each with its own hard drive, connected via a network (’642 Patent, Fig. 3). This could support an argument that the term requires the aggregation of storage from physically separate, general-purpose computer systems, not from blades or nodes within a single enterprise array chassis.

The Term: "lifecycle policies" (from '234 Patent, Claim 1)

  • Context and Importance: The infringement theory hinges on whether the accused HCP’s "object life-cycle policies" and "service plans" meet the definition of this term. The outcome will depend on the required functionality and level of automation for a policy to qualify as a "lifecycle policy."
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent describes the policies in general terms as governing a file's lifecycle "from file creation to file deletion" and provides a non-exhaustive list of examples including "version control of files, security access, deletion, file archiving, and so forth" (’234 Patent, col. 5:16-19). This may support a broad definition covering any rule-based data management.
    • Evidence for a Narrower Interpretation: The detailed examples of policies involve specific, automated, time-based movements between storage tiers, such as "If file is not accessed for 30 days transfer to MO One" (’234 Patent, col. 6:38-39). This may support a narrower construction requiring policies to include automated, time- or access-based triggers for data migration.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that Defendant Hitachi Vantara actively induces infringement by its customers, including co-defendant Spin Master. The basis for this allegation is the provision of "product documentation and support" that allegedly instructs customers on how to use the accused products in an infringing manner (Compl. ¶¶37, 46, 51).
  • Willful Infringement: Plaintiff alleges that Defendant Hitachi Vantara’s infringement has been willful. This allegation is based on the assertion that Hitachi Vantara and its affiliates were aware of at least the ’642, ’234, and ’624 patents as a result of "knowledge it gained in connection with its own prosecution activities" (Compl. ¶78).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A dispositive threshold issue will be the impact of the Inter Partes Review proceedings. Given that the IPRs resulted in the cancellation of every independent claim asserted in the complaint, the case as currently pleaded may not be viable. A central question is whether Plaintiff can amend its complaint to assert surviving dependent claims and plausibly allege that those narrower claims are infringed by the accused products.
  • A core technical issue, should the case proceed, will be one of definitional and technological scope. The dispute will likely focus on whether the terminology and embodiments in patents from the late 1990s and early 2000s—describing systems that virtualize storage across separate computers or apply software filters—can be construed to cover the architecture and functionality of modern, highly integrated enterprise storage platforms like the Hitachi VSP and HCP.
  • A key evidentiary question will be one of automated operation. For the file lifecycle management patents, the analysis will turn on evidence of how the accused HCP actually operates. The court will need to determine whether its "object life-cycle policies" function automatically to move data between tiers based on predefined rules (as claimed), or if they function primarily as configurable settings that require manual setup or other external triggers.