PTAB

IPR2019-00608

NetApp Inc v. KOM Software Inc

Case #: IPR2019-00608
Patent #: 9,361,243
Filed: January 28, 2019
Petitioner(s): NetApp, Inc. and Hewlett Packard Enterprise Co.
Patent Owner(s): KOM Software Inc.
Challenged Claims: 1, 5-8, 10-12, 14, 17-21, 27, 62, 64-66, 70-73, 75-77, 79, 82-86, and 96

Title: Computer Implemented Method for Applying Operation Access Privilege to a Computer Storage Medium
Brief Description: The ’243 patent discloses methods for providing restricted access to data on a storage medium. The system associates an "access privilege" with a portion of the medium and utilizes a "trap layer" or "filter layer" to intercept attempted operations, compare them against the privilege, and subsequently allow or deny the operation.

Prior Art Relied Upon: Nagar ("Windows NT File System Internals," 1997).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Nagar, a developer's guide for the Windows NT operating system, discloses every element of the independent claims. Nagar’s description of a virus-detecting "filter driver" that intercepts all I/O requests to a logical volume constitutes the claimed method. This filter driver applies an "operation access privilege" by checking for virus signatures in write requests, comparing the attempted operation to a privilege (e.g., permission to write non-viral data), and allowing or denying the operation based on that comparison (e.g., rejecting a write request containing a virus). Petitioner asserted this interception occurs at a low level, regardless of the identity of the user initiating the operation.
- Motivation to Combine (for §103 grounds): For the alternative obviousness ground, Petitioner argued a person of ordinary skill in the art (POSITA) would have been motivated to implement the various file system and filter driver techniques taught by Nagar for their intended and known purposes, such as enhancing system security.
- Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success as Nagar provides a detailed guide for implementing these very functions within the Windows NT environment.

Prior Art Relied Upon: Nagar and McGovern (Application # 2005/0097260).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner contended that McGovern teaches a write-once-read-many (WORM) storage system that supplies the specific retention-related features recited in the dependent claims, which are absent from Nagar. McGovern discloses enforcing a "retention access privilege" by preventing modification of a file during an unexpired retention period (claim 6), using a "secure compliance clock" to ensure the retention period is observed (claim 21), and creating digital file signatures when retention is triggered (claim 27).
- Motivation to Combine: A POSITA developing a file system based on Nagar would combine McGovern's retention features to provide additional data security and integrity, a recognized need for business and regulatory compliance. The fact that both references are directed to the Windows NT environment made them a natural and compatible match.
- Expectation of Success: The combination involved applying a known technique (McGovern's WORM access controls) to a known system ready for improvement (Nagar's filter driver architecture), which would have yielded the predictable result of a storage system with enhanced retention capabilities.

Prior Art Relied Upon: Nagar and Vossen (Patent 6,026,402).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued Vossen teaches a process-restriction mechanism that addresses the claim limitations related to allowing or denying operations based on the identity of an application or process. Vossen discloses a "file system filter driver" for Windows NT that uses credentials associated with a process to restrict its access to only certain sub-hierarchies of the file system.
- Motivation to Combine: A POSITA would combine Vossen's teachings with Nagar's filter driver to mitigate the known security risk of unauthorized data disclosure or modification in Windows NT. Vossen expressly touts the "considerable advantage" of its restriction mechanism. Because both references use a filter driver approach, a POSITA would have found it logical to integrate Vossen's process-level controls into Nagar's foundational system.
- Expectation of Success: Given the similar architectural approaches of Nagar and Vossen, a POSITA would have expected to succeed in combining them with only minor software modifications to achieve enhanced, process-specific access control.
Additional Grounds: Petitioner asserted additional obviousness challenges against claims 5, 20, 64, 70, and 85 based on Nagar in view of Denning ("Cryptography and Data Security," 1982), which teaches access control models and authorization lists.

"Trap Layer" (claims 1, 27, 62, 66): Petitioner argued this term should be construed according to its plain and ordinary meaning, consistent with the specification's description of it as a "filter layer" disposed between the application layer and the file system layer. Petitioner contested the Patent Owner's proposed narrower construction that would functionally limit the term to a layer that "limits operations... to those supported by the read/write device," asserting that neither the specification nor the prosecution history provides a basis for such a specific functional limitation.

Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate because the primary reference, Nagar, was not substantively considered during prosecution. Petitioner stated that Nagar was merely cited on a large Information Disclosure Statement (IDS), and the examiner was not provided with all relevant portions of the reference. Specifically, the key teachings relied upon in the petition—such as the filter driver's ability to intercept operations regardless of user identity—were not before the examiner, meaning the current arguments and prior art combination were not previously considered.

Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1, 5-8, 10-12, 14, 17-21, 27, 62, 64-66, 70-73, 75-77, 79, 82-86, and 96 of the ’243 patent as unpatentable under 35 U.S.C. § 102 and/or § 103.