DCT

1:18-cv-00159

KOM Software Inc v. Hewlett Packard Enterprises Co

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:18-cv-00159, D. Del., 01/29/2018
  • Venue Allegations: Venue is alleged to be proper in the District of Delaware because both Defendants are incorporated in the state, transact business in the district, and have allegedly committed or induced acts of patent infringement within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s network storage systems and data management software infringe seven U.S. patents related to virtual file systems, automated file lifecycle management, and software-based restricted data access (WORM).
  • Technical Context: The technology at issue addresses enterprise-level data storage challenges by creating unified virtual storage pools from disparate physical devices and by automating data migration and retention policies for security and regulatory compliance.
  • Key Procedural History: The complaint alleges that Defendant HPE was aware of several of the patents-in-suit due to knowledge gained during its own patent prosecution activities. Subsequent to the filing of this complaint, inter partes review (IPR) proceedings were initiated against the patents-in-suit, resulting in the cancellation of numerous claims, including all independent claims from the two lead patents that were explicitly asserted for infringement in the original complaint.

Case Timeline

Date Event
1999-03-15 Priority Date for ’864, ’624, ’524, ’477, and ’243 Patents
1999-05-18 Priority Date for ’642 and ’234 Patents
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
2013-01-01 Date of Accused Product User Guide (HP StoreAll)
2016-06-07 U.S. Patent No. 9,361,243 Issues
2016-11-01 Date of Accused Product Data Sheet (HPE Installation)
2018-01-29 Complaint Filed
2022-05-10 IPR Certificate Issues Cancelling Asserted Claims of ’234 Patent
2022-08-04 IPR Certificates Issue Cancelling Asserted Claims of ’642, ’624, ’524 Patents
2022-08-09 IPR Certificate Issues Cancelling Asserted Claims of ’864 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," issued August 20, 2002

The Invention Explained

  • Problem Addressed: The patent’s background section describes the technical problems associated with the rapid obsolescence of computer storage, noting that upgrading individual hard drives or network servers is costly, time-consuming, and results in system downtime (’642 Patent, col. 1:12-58).
  • The Patented Solution: The invention proposes a “virtual non-volatile storage medium” that logically combines the physical storage space from a plurality of networked computers into a single, unified storage pool. An index system tracks the location of data portions across the various physical devices, presenting a large, seamless storage device to the user and allowing for dynamic expansion without disrupting network operations (’642 Patent, Abstract; col. 2:21-41).
  • Technical Importance: This virtualized approach provided a method for creating scalable and flexible network storage architectures that could be expanded incrementally without the significant capital expense and operational disruption of traditional server upgrades.

Key Claims at a Glance

  • The complaint asserts independent claim 12 for direct infringement and independent claim 1 for induced infringement (Compl. ¶¶40-41).
  • Independent Claim 12 (device) includes these essential elements:
    • An automated file management file system.
    • A plurality of computers each with a physical non-volatile storage medium.
    • Means for storing data portions at locations within the virtual device, where portions of a single data file are stored across at least two different physical storage media.
    • Means for storing index data for locating and retrieving the stored data.
  • Independent Claim 1 (method) includes these essential elements:
    • Providing a virtual file-based non-volatile storage medium interfacing with a plurality of physical storage media.
    • Determining free space within the virtual medium.
    • Storing the provided data at locations corresponding to the free space.
    • Storing index information for the stored data.

U.S. Patent No. 7,392,234 - "Method and system for electronic file lifecycle management," issued June 24, 2008

The Invention Explained

  • Problem Addressed: The patent addresses the challenge of managing electronic files throughout their useful existence, from creation to archival and eventual deletion, a process complicated by the massive growth in data and the inefficiencies of manual organization (’234 Patent, col. 2:1-14).
  • The Patented Solution: The invention describes an automated file lifecycle management system using the metaphor of a “virtual file cabinet” containing multiple “virtual drawers.” Each drawer corresponds to a different storage tier or state (e.g., active cache, online storage, archival media, recycle bin). Files are automatically moved between these drawers based on a set of policies, such as access frequency or age, thereby managing the file’s entire lifecycle without manual intervention (’234 Patent, Abstract; Fig. 2; col. 4:13-50).
  • Technical Importance: This system automated hierarchical storage management (HSM), allowing organizations to optimize storage costs by moving infrequently accessed data to less expensive media while keeping frequently used data on high-performance tiers.

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶45).
  • Independent Claim 1 (method) includes these essential elements:
    • Associating a set of lifecycle policies with a file.
    • Storing the file on a storage medium.
    • Automatically determining from the policies when the file is to be moved.
    • Automatically moving the file to another storage location when determined.
    • Providing transparent access to the file regardless of its location.

Multi-Patent Capsule: U.S. Patent No. 6,654,864 - "Method and system for providing restricted access to a storage medium," issued November 25, 2003

  • Technology Synopsis: This patent describes a method for restricting write access to a storage medium using a software “trap layer.” This layer is logically positioned above the file system driver to intercept file system commands, compare them against a set of disabled commands (e.g., delete, overwrite), and either block the command or pass it through, effectively creating software-enforced WORM functionality (’864 Patent, Abstract; col. 2:35-54).
  • Asserted Claims: At least independent claim 1 (Compl. ¶50).
  • Accused Features: The complaint accuses HPE’s StoreAll products of infringement by implementing features to support data retention policies and WORM functionality (Compl. ¶51).

Multi-Patent Capsule: U.S. Patent No. 7,076,624 - "Method and system for providing restricted access to a storage medium," issued July 11, 2006

  • Technology Synopsis: As a continuation of the ’864 Patent, this patent further elaborates on the software-based trap layer for restricting file access. It details how the system can enforce specific write restrictions, such as "write access without delete," allowing data to be appended or modified but not erased, thereby providing granular control over data immutability (’624 Patent, col. 3:20-44).
  • Asserted Claims: At least independent claim 12 (Compl. ¶55).
  • Accused Features: The complaint accuses HPE’s StoreAll products of implementing data retention policies and WORM functionality that allegedly infringes the patent (Compl. ¶56).

Multi-Patent Capsule: U.S. Patent No. 7,536,524 - "Method and system for providing restricted access to a storage medium," issued May 19, 2009

  • Technology Synopsis: This patent, also in the same family, continues to build on the concept of a software trap layer for enforcing data access policies. It describes applying an "operation access privilege" to logical portions of a storage medium, allowing for fine-grained control over operations like renaming, moving, and overwriting files within specific directories or volumes (’524 Patent, col. 9:1-12).
  • Asserted Claims: At least independent claim 29 (Compl. ¶60).
  • Accused Features: The complaint accuses HPE’s StoreAll products of implementing data retention policies and WORM functionality that allegedly infringes the patent (Compl. ¶61).

The complaint also asserts U.S. Patent Nos. 8,234,477 and 9,361,243, which are part of the same family as the ’864, ’624, and ’524 patents and relate to similar technology for providing restricted access to storage media (Compl. ¶¶23, 63-72).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities include the HPE X9000 Network Storage System, which utilizes HPE StoreAll software, and other related products such as the 9300 Storage Gateway, 9320 Storage, X9720 Storage, 9730 Storage, and HPE StoreAll 8000 Storage (Compl. ¶¶26, 31, 50).

Functionality and Market Context

  • The complaint alleges the accused systems provide several functions relevant to the patents-in-suit. First, they employ a file system that "separates segments of files to organize data for faster access," where a directory may be on one storage segment while the files it contains reside on others (Compl. ¶28). The complaint includes a diagram from an HPE user guide illustrating how the system organizes data, separating metadata from file data across a storage area network (SAN) (Compl. ¶27).
  • Second, the systems offer "Data tiering," which involves creating a "tiering policy to move files from initial storage, based on attributes such as modification time, access time, file size or file type" (Compl. ¶30).
  • Third, the StoreAll software provides a "WORM/Data Retention" feature, which "archives read-only files, ensuring that the files cannot be modified or deleted for a specific period of time" (Compl. ¶32). A screenshot from the StoreAll user guide depicts the user interface for enabling and configuring these data retention settings (Compl. ¶32).
  • The complaint positions the accused products as enterprise-grade solutions used by sophisticated customers like DreamWorks Animation to manage large-scale data storage, increase cost efficiency, and raise computational capacity (Compl. ¶¶34-35).

IV. Analysis of Infringement Allegations

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 HPE X9000 system utilizes HPE StoreAll software for automated file system management, including file allocation and data tiering. ¶26 col. 2:23-26
a plurality of computers each comprising one or more file system partitions on a physical non-volatile storage medium... The accused instrumentality is a network storage system that interfaces with a "plurality of file system storage partitions." ¶28 col. 2:8-10
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... stored at locations within a second other physical non-volatile storage medium... The accused HP X9000 file system "separates segments of files," such that a directory can be located on one segment while the files contained in that directory are resident on other segments. ¶28 col. 3:34-40
means for storing index data, the index data for locating and retrieving data stored within said virtual file-based non-volatile storage device. The accused system organizes data via metadata, which allows the file system to locate and access file segments that are physically separate from their corresponding directories. ¶27 col. 2:16-20

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 accused HP X9000 system provides for the creation of a "tiering policy" based on file attributes such as modification time, access time, or file type. ¶30 col. 2:55-57
storing said file on said storage medium accessible by a computer... The accused systems provide network storage for files. ¶26 col. 2:58-60
automatically determining from the associated lifecycle policies whenever said file is to be moved; The accused system implements "automated policy-based tiering for initial placement and automated movement between tiers." ¶41, ¶46 col. 2:60-63
automatically moving said file according to the associated lifecycle policies to another storage location... The accused system is alleged to "move files from initial storage, based on attributes" defined in the tiering policy. ¶30 col. 2:60-63
providing transparent access to said requested file based on said associated set of lifecycle policies, regardless of where said file is located... The accused system provides a "Single namespace," allowing data access independently of its physical location on the underlying storage segments. ¶27, ¶29 col. 2:45-48

Identified Points of Contention

  • Scope Questions: A potential dispute for the ’642 Patent is whether the accused system's separation of "metadata" from file data (Compl. ¶27) constitutes storing "portions" of a data file across different physical media as claimed. For the ’234 Patent, a key question may be whether the accused product’s "data tiering" based on simple file attributes (Compl. ¶30) is equivalent to the patent’s more structured "file lifecycle management" system, described using a "virtual cabinet" and "drawers" metaphor (’234 Patent, Fig. 2).
  • Technical Questions: For the Family 2 patents (’864, ’624, etc.), the analysis may focus on whether the software mechanism that implements HPE’s "WORM/Data Retention" (Compl. ¶32) functions as a "trap layer" that intercepts file system commands, as described in the patents (’864 Patent, col. 2:40-45). The evidence provided in the complaint does not detail the specific software architecture of this feature.

V. Key Claim Terms for Construction

Term from ’642 Patent: "virtual file-based non-volatile storage device"

  • Context and Importance: This term defines the core structure of the invention. Its construction is critical because the infringement case depends on whether the accused HPE X9000 system, which separates metadata and data across a network, embodies this specific type of "virtual" device.
  • Intrinsic Evidence for a Broader Interpretation: The specification describes the invention in general terms as providing a "virtual storage device that can be upgraded dynamically without affecting users" by pooling resources from a "plurality of computers" (’642 Patent, col. 2:1-10), which could support a construction covering various distributed storage architectures.
  • Intrinsic Evidence for a Narrower Interpretation: The detailed description and Figure 2 illustrate that physical hard disk drives "correspond to different portions of memory of the virtual storage device," suggesting a direct mapping of physical storage blocks into a logical, virtual address space, which might support a narrower construction than a file system that merely separates metadata from file content (’642 Patent, col. 3:34-40).

Term from ’234 Patent: "managing a file lifecycle"

  • Context and Importance: This term is central to the method claimed in the ’234 Patent. The dispute may turn on whether the accused "data tiering" functionality (Compl. ¶30) rises to the level of "managing a file lifecycle," or if that term requires a more comprehensive, multi-stage process.
  • Intrinsic Evidence for a Broader Interpretation: The abstract describes the method broadly as moving files "from drawer to drawer throughout their lifecycle in accordance with policies," which could be argued to cover any policy-based data movement (’234 Patent, Abstract).
  • Intrinsic Evidence for a Narrower Interpretation: The specification details a "Virtual Cabinet Scheme" with specific "drawers" representing distinct stages, such as "CACHE DRAWER," "ONLINE ONE," "MO ONE," and "RECYCLE BIN" (’234 Patent, Fig. 2). This detailed structure may support a narrower construction that requires more than simple movement between two storage tiers based on access time.

VI. Other Allegations

Indirect Infringement

  • The complaint alleges induced infringement for all seven patents-in-suit. The allegations are based on Defendant HPE providing product documentation, user guides, and technical support that instruct customers, including DreamWorks, on how to configure and use the accused features, such as automated policy-based tiering and WORM/data retention (Compl. ¶¶33, 41, 46, 51).

Willful Infringement

  • The complaint alleges willful infringement based on pre-suit knowledge. It asserts that Defendant HPE and its predecessors were made aware of at least five of the patents-in-suit (’642, ’234, ’864, ’624, and ’524) through knowledge gained "in connection with its own prosecution activities" (Compl. ¶73).

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

  • Impact of Post-Filing Claim Cancellation: Given that the asserted independent claims of the lead patents (’642 Claim 12 and ’234 Claim 1) were cancelled in inter partes reviews subsequent to the filing of the complaint, a threshold question for the litigation is what claims, if any, remain viable for the Plaintiff to assert and whether the complaint can be amended to proceed on different infringement theories.
  • Definitional Scope: Assuming viable claims remain, a central dispute will likely be one of definitional scope: does the accused system's architecture—a distributed file system with metadata separation and policy-based data tiering—fall within the scope of the patents' more specific claims for a "virtual file-based non-volatile storage device" and a "file lifecycle management" system structured around "virtual cabinets" and "drawers"?
  • Mechanism of Operation: For the patents related to restricted data access, a key evidentiary question will be one of technical operation: does the accused HPE StoreAll software implement its WORM functionality through a mechanism equivalent to the "trap layer" described in the patents, which intercepts and selectively blocks native file system commands?