NetApp Inc v. KOM Software Inc

1. Case Identification

• Case #: IPR2019-00592
• Patent #: 6,438,642
• Filed: January 24, 2019
• Petitioner(s): NetApp, Inc. and Hewlett Packard Enterprise Co.
• Patent Owner(s): KOM Software, Inc.
• Challenged Claims: 1-7, 10, 12-17, and 20

2. Patent Overview

• Title: Automated File Management for Virtual Storage
• Brief Description: The ’642 patent addresses problems associated with traditional computer storage upgrades, which can be costly and require system downtime. It discloses systems and methods for storing data across multiple physical storage media that are presented to users or applications as a single, seamless "virtual file-based non-volatile storage medium," allowing for dynamic upgrades without service disruption. The invention relies on a file-based indexing system to manage and map virtual file locations to their corresponding physical storage locations across the different media.

3. Grounds for Unpatentability

Ground 1: Obviousness over Dibble - Claims 1-6, 12-14, and 16 are obvious over Dibble.

• Prior Art Relied Upon: Dibble (a 1990 thesis titled "A Parallel Interleaved File System").
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Dibble teaches a "parallel interleaved file system" (PIFS) that inherently embodies the claimed "virtual file-based non-volatile storage medium." Dibble's PIFS aggregates multiple physical disk drives, each with its own Local File System (LFS), into what appears as a single storage system with a standard file system interface, thus concealing the underlying parallel hardware. Petitioner contended that Dibble's PIF Server performs automated file management by distributing data across the LFSs using a "straightforward interleaving" algorithm and tracking free space via bit maps within each LFS. The petition mapped Dibble's "Bridge Directory"—which contains file names and a list of the LFS files that compose each virtual file—to the claimed "index information" used for mapping and retrieval.
  • Key Aspects: Petitioner emphasized that Dibble's disclosure of a file-based virtualization system was particularly relevant. This was a key distinction the patent owner had used during original prosecution to argue patentability over prior art that performed virtualization at the lower, non-file-aware block level.

Ground 2: Obviousness over Dibble in view of Cannon - Claims 7, 10, 15, 17, and 20 are obvious over Dibble in view of Cannon.

• Prior Art Relied Upon: Dibble (a 1990 thesis) and Cannon (Patent 5,983,239).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that while Dibble provides the foundational virtual file system, Cannon supplies the missing teachings for automated data archiving and migration based on access frequency. Cannon discloses a hierarchical data storage system that performs "automatic data migration" to move files between different storage tiers. This migration is based on criteria like "data age" and "level of use," which directly teaches the claimed step of "monitoring access to stored data." Cannon further describes moving files "downward" to less expensive, long-term archival storage, teaching the "archiving" limitation. Finally, Cannon teaches updating its central database to reflect the new file locations, corresponding to the claimed step of updating index data.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Cannon's automated archiving logic with Dibble's virtual file system to achieve the well-understood benefits of improved performance and cost-efficiency. By migrating infrequently used data to slower, cheaper media as taught by Cannon, the faster, more expensive primary storage in the Dibble system would be freed for frequently accessed data. Petitioner also argued that Dibble provides an explicit motivation, as it suggests its system could be enhanced by adding "tools," specifically mentioning a "backup tool," for which Cannon's archiving system is a directly analogous and suitable technology.
  • Expectation of Success: A POSITA would have a high expectation of success in this combination, as it would primarily require software modifications. Dibble's system already provided the necessary hardware (multiple storage drives) and foundational software for data migration and index management. Implementing Cannon's access-based archiving rules would be an incremental software enhancement to these existing functions.

4. Key Claim Construction Positions

• Petitioner argued that claims 12-15 contain means-plus-function limitations under 35 U.S.C. § 112(f) and proposed constructions tying the claimed functions to specific structures disclosed in the ’642 patent. These constructions were presented as crucial for demonstrating how the prior art discloses corresponding structures performing the identical functions.
• "Means for Storing Data...": The corresponding structure was identified as a data storage area comprised of one or more hard disk drives or portions thereof.
• "Means for Storing Index Data": The corresponding structure was identified as an index area of one or more hard disk drives or portions thereof.
• "Means for Updating Index Data": The corresponding structure was identified as one or more computers executing an algorithm for receiving location data and updating the index to reflect a file's new location.
• "Means for Archiving Data...": The corresponding structure was identified as optical media or hard disk drives, combined with an algorithm to move files to that media if they have not been accessed for a predetermined period of non-access.

5. Relief Requested

• Petitioner requests that the Board institute an inter partes review (IPR) and cancel claims 1-7, 10, 12-17, and 20 of Patent 6,438,642 as unpatentable under 35 U.S.C. §103.