DCT

1:18-cv-00160

KOM Software Inc v. NetApp Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:18-cv-00160, D. Del., 03/23/2018
  • Venue Allegations: Venue is based on allegations that Defendants are incorporated in Delaware, transact business in the district, and have committed or induced acts of infringement within the district.
  • Core Dispute: Plaintiff alleges that Defendant NetApp’s data storage management products, including its ONTAP and StorageGRID platforms, infringe seven patents related to virtual storage systems, automated file lifecycle management, and methods for providing restricted, software-enforced write-once-read-many (WORM) access to storage media.
  • Technical Context: The technologies at issue concern the management of large-scale, enterprise-class data storage, a foundational component of modern IT infrastructure, data centers, and cloud computing services.
  • Key Procedural History: The operative complaint is a First Amended Complaint. Subsequent to its filing, Inter Partes Review (IPR) proceedings were initiated against all seven patents-in-suit. According to the IPR certificates issued by the Patent Trial and Appeal Board in 2022, all independent claims asserted in the complaint across all seven patents have been cancelled. This development presents a significant threshold issue regarding the viability of the infringement counts as currently pleaded.

Case Timeline

Date Event
1998-07-31 Earliest Priority Date for ’864, ’624, ’524, ’477, ’243 Patents
1999-05-18 Earliest Priority Date for ’642, ’234 Patents
2002-08-20 U.S. Patent No. 6,438,642 Issued
2003-11-25 U.S. Patent No. 6,654,864 Issued
2006-07-11 U.S. Patent No. 7,076,624 Issued
2008-06-24 U.S. Patent No. 7,392,234 Issued
2009-05-19 U.S. Patent No. 7,536,524 Issued
2012-07-31 U.S. Patent No. 8,234,477 Issued
2016-06-07 U.S. Patent No. 9,361,243 Issued
2018-03-23 First Amended Complaint Filed
2019-01-24 Inter Partes Review Proceedings Initiated
2022-05-10 IPR Certificate Issued for U.S. Patent No. 7,392,234
2022-08-04 IPR Certificates Issued for Multiple Patents-in-Suit
2022-08-09 IPR Certificate Issued for U.S. Patent No. 6,654,864

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 of computer systems, particularly in a network, becoming quickly outdated due to insufficient storage capacity. Upgrading individual hard drives is described as costly, time-consuming, and disruptive to network users (’642 Patent, col. 1:12-64).
  • The Patented Solution: The invention proposes a "virtual storage device" that abstracts and aggregates multiple physical storage media (e.g., hard drives on different networked computers) into a single, logical file system (’642 Patent, col. 2:6-15). Data for a single file can be stored in portions across different physical devices, with an index managing the location of the data, allowing for dynamic and non-disruptive expansion of the total storage pool (’642 Patent, Abstract; Fig. 2).
  • Technical Importance: This technology describes an early approach to distributed storage, enabling the creation of flexible and scalable storage pools from heterogeneous hardware, a foundational concept for modern software-defined storage and cloud infrastructure (’642 Patent, col. 2:1-4).

Key Claims at a Glance

  • The complaint asserts independent claims 1 and 12 (Compl. ¶¶46-47). Both claims were subsequently cancelled in IPR2019-00591 and IPR2019-00592.
  • Claim 12 (Device): The claim recites a virtual storage device comprising:
    • An automated file management file system.
    • A plurality of computers with physical non-volatile storage media corresponding to locations within the virtual device.
    • Means for storing portions of data across at least a first and a second physical medium.
    • Means for storing index data to locate and retrieve the stored data.
  • Claim 1 (Method): The claim recites a method for automated file management comprising:
    • Providing a virtual non-volatile storage medium with an automated file management system that interfaces with multiple physical storage partitions.
    • Providing data for storage.
    • Determining free space within the virtual medium.
    • Storing the data in the determined free space.
    • Storing index information for the data.

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

The Invention Explained

  • Problem Addressed: The patent identifies the difficulty of managing the lifecycle of electronic files—from creation and use to archiving and destruction. This process is often manual and poorly organized, making it difficult to retrieve archived data and manage storage resources efficiently (’234 Patent, col. 1:53-col. 2:4).
  • The Patented Solution: The invention discloses a system of "virtual cabinets" containing "virtual drawers," where each drawer is associated with a different class of storage (e.g., high-speed cache, online disk, offline optical media) (’234 Patent, col. 3:13-27; Fig. 2). Files are automatically moved between these drawers based on a set of "lifecycle policies," such as rules based on file age or access frequency, thereby automating the entire data tiering and archiving process (’234 Patent, col. 6:12-40).
  • Technical Importance: The patent describes a policy-driven hierarchical storage management (HSM) system. This automates data tiering, a critical function for balancing performance, cost, and compliance requirements in large-scale enterprise storage environments (’234 Patent, col. 2:25-29).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶¶51-52). This claim was subsequently cancelled in IPR2019-00601.
  • Claim 1 (Method): The claim recites a method of managing a file lifecycle comprising:
    • Associating a set of lifecycle policies with a file.
    • Storing the file on a storage medium according to the policies.
    • Automatically determining from the policies when the file is to be moved.
    • Automatically moving the file to another storage location based on the policies.
    • Providing transparent access to the requested file regardless of its location.

U.S. Patent No. 6,654,864 - Method and system for providing restricted access to a storage medium

  • Technology Synopsis: This patent, and its family members below, describe a method for providing software-based Write-Once-Read-Many (WORM) functionality. The system uses a "trap layer," or filter driver, logically positioned above the file system driver to intercept I/O commands. This layer can block or modify specific commands, such as delete or overwrite, based on rules stored on the medium itself, thereby enforcing immutability without specialized hardware (’864 Patent, Abstract; col. 2:34-54).
  • Asserted Claims: Independent claim 1 (Compl. ¶¶56-57), which was subsequently cancelled in IPR2019-00594.
  • Accused Features: The complaint alleges that NetApp’s "SnapLock" feature, which provides for the storage of read-only WORM data, infringes this patent (Compl. ¶¶32, 57).

U.S. Patent No. 7,076,624 - Method and system for providing restricted access to a storage medium

  • Technology Synopsis: As a member of the same family as the ’864 Patent, this patent relates to using a software "trap layer" to intercept file system commands and enforce WORM-like data immutability (’624 Patent, Abstract).
  • Asserted Claims: Independent claims 1 and 12 (Compl. ¶¶61-62), which were subsequently cancelled in IPR2019-00598.
  • Accused Features: The complaint accuses NetApp’s "SnapLock" WORM feature (Compl. ¶¶32, 62).

U.S. Patent No. 7,536,524 - Method and system for providing restricted access to a storage medium

  • Technology Synopsis: As a member of the same family as the ’864 Patent, this patent relates to using a software "trap layer" to intercept file system commands and enforce WORM-like data immutability (’524 Patent, Abstract).
  • Asserted Claims: Independent claims 1 and 29 (Compl. ¶¶66-67), which were subsequently cancelled in IPR2019-00604.
  • Accused Features: The complaint accuses NetApp’s "SnapLock" WORM feature (Compl. ¶¶32, 67).

U.S. Patent No. 8,234,477 - Method and system for providing restricted access to a storage medium

  • Technology Synopsis: As a member of the same family as the ’864 Patent, this patent relates to using a software "trap layer" to intercept file system commands and enforce WORM-like data immutability (’477 Patent, Abstract).
  • Asserted Claims: Independent claim 1 (Compl. ¶¶71-72), which was subsequently cancelled in IPR2019-00606.
  • Accused Features: The complaint accuses NetApp’s "SnapLock" WORM feature (Compl. ¶¶32, 72).

U.S. Patent No. 9,361,243 - Method and system for providing restricted access to a storage medium

  • Technology Synopsis: As a member of the same family as the ’864 Patent, this patent relates to using a software "trap layer" to intercept file system commands and enforce WORM-like data immutability (’243 Patent, Abstract).
  • Asserted Claims: Independent claim 1 (Compl. ¶¶76-77), which was subsequently cancelled in IPR2019-00607 and IPR2019-00608.
  • Accused Features: The complaint accuses NetApp’s "SnapLock" WORM feature (Compl. ¶¶32, 77).

III. The Accused Instrumentality

Product Identification

  • The complaint identifies NetApp’s ONTAP Data Management Software (versions 8 and 9), ONTAP Select, ONTAP Cloud, and StorageGRID Webscale software and appliances as the accused instrumentalities (Compl. ¶¶46, 51, 56).

Functionality and Market Context

  • The complaint describes the ONTAP platform as a "software-defined storage infrastructure" used in enterprise data centers and hybrid clouds to automate storage processes (Compl. ¶¶27-28). A key accused feature within ONTAP is "SnapLock," which is used for the storage of immutable WORM (Write-Once-Read-Many) data by preventing alteration or deletion of files until a set retention date is reached (Compl. ¶32). Another feature identified is "Infinite Volumes," described as a means for storing data within a virtual file-based storage device (Compl. ¶47).
  • StorageGRID Webscale is described as a system for managing unstructured object storage at scale (Compl. ¶34). It employs "information lifecycle management (ILM)" policies and rules to automatically manage and distribute object data over time, a functionality accused of infringing the file lifecycle management patents (Compl. ¶¶35, 52).
  • The complaint alleges that Defendants Apache and ON Semiconductor are customers using the accused ONTAP software for mission-critical applications, suggesting the products' significance in the enterprise market (Compl. ¶¶38-41).
  • No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

'642 Patent Infringement Allegations

Claim Element (from Independent Claim 12) Alleged Infringing Functionality Complaint Citation Patent Citation
an automated file management file system ONTAP 9 Data Management Software includes the OnCommand platform to help automate storage processes. ¶27, 46 col. 12:7-13
a plurality of computers each comprising one or more file system partitions on a physical non-volatile storage medium... ONTAP can be integrated into customers' data centers and can convert a server's internal disk drives into a flexible storage platform. ¶28, 31 col. 13:26-34
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...within a second... ONTAP utilizes "Infinite Volumes" as a means for storing data at locations within a "virtual file-based non-volatile storage device." ¶47 col. 13:37-49
means for storing index data, the index data for locating and retrieving data stored within said virtual file-based non-volatile storage device. The complaint does not provide sufficient detail for analysis of this element, but implies its presence through the description of managing virtual volumes. ¶47 col. 13:50-54
  • Identified Points of Contention:
    • Technical Questions: A primary question may be whether NetApp's "Infinite Volumes" architecture functions in a manner equivalent to the claimed "means for storing data" across distinct physical devices. The complaint alleges this functionality but does not detail the underlying mechanism for data distribution or the specific structure of the "index data" used for retrieval.
    • Scope Questions: It may be disputed whether a modern, software-defined storage platform like ONTAP falls within the scope of the claimed "virtual...storage device," which is described in the context of aggregating storage from distinct networked computers.

'234 Patent 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 NetApp Management Console provides a policy-based management tool, and StorageGRID uses information lifecycle management (ILM) policies and rules. ¶29, 35, 52 col. 10:55-59
storing said file on said storage medium accessible by a computer according to said set of lifecycle policies Accused products provide software and services for monitoring data flow and storage in a data network. ¶26 col. 10:55-59
automatically determining from the associated lifecycle policies whenever said file is to be moved In StorageGRID, every ingested object is evaluated against the active ILM policy and its ILM rules. ¶36 col. 10:60-63
automatically moving said file according to the associated lifecycle policies to another storage location... The StorageGRID system employs ILM rules to automatically move files after a period of time, and ONTAP supports automated data tiering. ¶52 col. 10:64-67
providing transparent access to said requested file based on said associated set of lifecycle policies, regardless of where said file is located... The function of the ONTAP and StorageGRID platforms is to manage and provide access to data across a storage infrastructure. ¶27-28, 34 col. 11:1-6
  • Identified Points of Contention:
    • Technical Questions: A key question is whether the "policy-based management" of ONTAP or the "ILM rules" of StorageGRID operate in a manner that corresponds to the patent's claimed system, which is heavily described using a "virtual cabinet" and "virtual drawer" framework for file movement.
    • Scope Questions: A central dispute may be whether the term "lifecycle policies" as used in the patent can be construed to read on the functionality of NetApp's modern data tiering and ILM systems, or if the claim is limited to the specific hierarchical storage metaphor described in the specification.

V. Key Claim Terms for Construction

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

  • Context and Importance: This term defines the core inventive concept of the ’642 Patent. Its construction will be critical in determining whether NetApp's modern software-defined storage architecture, such as its "Infinite Volumes" feature, falls within the claim's scope.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes the object of the invention as providing "a virtual storage device that can be upgraded dynamically without affecting users of the computer network," suggesting a functional definition focused on transparent scalability (’642 Patent, col. 2:1-4).
    • Evidence for a Narrower Interpretation: The detailed description and figures primarily illustrate an embodiment where the virtual device is formed from "a plurality of computers" on a network, each contributing hard disk space (’642 Patent, col. 2:8-10; Fig. 3). This could support a narrower construction limited to that client-server aggregation architecture.

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

  • Context and Importance: This term is central to the infringement theory against NetApp's automated data tiering and ILM features. The dispute will likely focus on whether NetApp's rule-based systems are equivalent to the "policies" described in the patent.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent states a goal is "To control a file from its inception, throughout all the stages of its life, to the end of its useful existence," which could support construing "lifecycle policies" to cover any automated, rule-based file management over time (’234 Patent, col. 5:37-40).
    • Evidence for a Narrower Interpretation: The specification extensively uses a "virtual cabinet" and "virtual drawers" metaphor (e.g., Cache Drawer, Online One, MO One, Recycle Bin) to explain the operation of the policies, where files are explicitly moved between these drawers (’234 Patent, Fig. 2; col. 6:31-40). This may support a narrower construction limited to a system implementing this specific hierarchical storage structure.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges active inducement for all seven patents. The stated basis is that NetApp provides product documentation and specifications that allegedly instruct customers, including Apache and ON Semiconductor, to operate the accused products in an infringing manner (Compl. ¶¶47, 52, 57, 62, 67, 72, 77).
  • Willful Infringement: The complaint alleges willful infringement of the ’864 and ’624 patents. The basis for pre-suit knowledge is an allegation that NetApp was aware of these patents from the prosecution of its own patent applications, which cited them (Compl. ¶79). Post-suit willfulness is also alleged based on knowledge gained after the filing of the original complaint (Compl. ¶¶57, 62).

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

  • Viability of Asserted Claims: The central and dispositive threshold question is the legal effect of the post-filing cancellation of all asserted independent claims in IPR proceedings. The case will depend on whether the plaintiff can amend its complaint to assert any surviving dependent claims and, if so, whether a viable infringement theory can be constructed around them.
  • Architectural Equivalence: Should any claims from the ’642 or ’234 patents survive, a key technical question will be one of architectural equivalence: does NetApp’s modern software-defined storage, with features like "Infinite Volumes" and "ILM," operate in substantially the same way as the systems described in the patents, which are rooted in earlier client-server and hierarchical storage paradigms?
  • Functional Scope: For the patents related to restricted access (the ’864 patent family), a core issue, should any claims survive, will be one of functional scope: does NetApp’s "SnapLock" feature meet the specific limitations of the claims describing a "trap layer" that intercepts and modifies file system commands to enforce WORM functionality?