Recently, the U.S. Court of Appeals for the Federal Circuit issued an opinion in KOM Software Inc. v. Netapp, Inc., No. 21-1181 (Dec. 17, 2021), affirming the Patent Trial and Appeal Board’s inter partes review (IPR) decisions finding certain claims of KOM’s patents unpatentable.
In 2019, Netapp, Inc. initiated five IPRs against KOM Software Inc. In these IPRs, Netapp challenged the patentability of the claims of various KOM patents. In a final written decision, the Board found several claims of the KOM patents unpatentable as obvious over the prior art cited by Netapp and upheld the patentability of other challenged claims. In conducting its obviousness analysis, the Board construed the term “associating” as “requiring either ‘combining or joining the access privilege with the storage medium’ or ‘saving or storing the access privilege in the physical socage medium.’” The Board reached this construction based on application of the ordinary and customary meaning of the word “associating.” Applying this construction, the Board found that two prior art references disclosed “associating an access privilege with at least a portion of the storage medium.” KOM appealed with respect to claims of the KOM patents held unpatentable and Netapp appealed with respect to claims of the KOM patents the Board upheld.
The Federal Circuit affirmed. First, the Court rejected KOM’s challenge to whether one of the cited references disclosed certain elements of one of the challenged claims, finding that substantial evidence supported the Board’s finding. The Court also rejected KOM’s assertion that one skilled in the art would not have been motivated to combine the references relied on by the Board in its unpatentability determination, explaining that KOM failed to challenge Netapp’s motivation arguments before the Board. The Court further noted that the Board’s findings of unpatentability as to another challenged claim were supported by substantial evidence. Finally, the Board rejected NetApp’s cross appeal challenging the Board’s decision upholding the patentability of the remaining challenged claims.