N OTE : This disposition is nonprecedential. 

# United States **Court of Appeals**  **for the Federal Circuit**

______________________ KOM SOFTWARE, INC., Appellant

v.
NETAPP, INC., Cross

- Appellant

______________________
2021

- 1005, 2021

- 1006, 2021

- 1100

______________________ Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No s . IPR2019

- 00601, IPR2019

- 00603.

______________________
Decided: December 16, 2021

______________________
D AVID F ARNUM , Anova Law Group, PLLC, Sterling, VA, argued for appellant. Also represented by W ENYE T AN

.

E RIKA A RNER , Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC, argued for cross

- appellant. Also re presented by J OSHUA G OLDBERG , S YDNEY K ESTLE ; C ORY C. B ELL , Boston, MA; J ACOB A DAM S CHROEDER , Palo Alto, CA ; J ASON E. S TACH , Atlanta, GA.

______________________ Case: 21-1005 Document: 56 Page: 1 Filed: 12/16/2021KOM SOFTWARE , INC

. v. NETAPP , INC

. 2

Before P ROST , T ARANTO , and C HEN , Circuit Judges

. P ER C URIAM

. This case involves two inter partes review final written decisions
, one from IPR 2019

- 00601 (“ the Sitka IPR”) and the other from IPR2019

- 00603 (“ the Blickenstaff IPR”). In the Sitka IPR, the Patent Trial and Appeal Board (“Board”) determined that claims 1– 7, 45

– 57, and 59 of U.S. Patent No. 7,392,234 (“the ’234 patent”) were unpatentable as obvious over two prior

- art references, Sitka and Cannon. In the Blickenstaff IPR, the Board c onsidered precisely the

same claims as in the Sitka IPR and determined that , in view of other prior

- art references, some claims were unpatentable and that some were not. KOM Software, Inc. (“KOM”) appeals the Board’s unpatentability determinations in each IPR. NetApp , Inc. (“NetApp”) cross

- appeals the Board’s determination in the Blickenstaff IPR that certain claims were not shown to be unpatentable. Concerning the Sitka IPR, the Board construed the “transparent access” limitation of claim 1 (and other claims) to “not require that a user have a misplaced belief about the location of the file.” J.A. 16. KOM argues here
, as it did before the Board, that “transparent access is provided to the requested file without a user’s awareness of any fi le lifecycle management structure [;] as far as the user is concerned the file is stored in a particular directory on a particular drive ,” Appellant’s Br. 27, i.e., that “the user would be provided .

. . the fiction that a file resides .

. . on a particular directory,” J.A. 977

– 78 (Patent Owner’s Response) (emphasis added) ; see Appellant’s Reply Br. 44.
We conclude that the Board’s construction of “transparent access” to not require mis placed user belief as to the l ocation of the file is consistent with the plain claim language (which is agnostic as to user knowledge )
, and the specification and the prosecution history , neither of which narrows the claim as KOM suggests but rather merely describe s (at most) an embodiment wherein the user may Case: 21-1005 Document: 56 Page: 2 Filed: 12/16/2021KOM SOFTWARE , INC

. v. NETAPP , INC

. 3

have such misplaced belief
, see, e.g. , ’234 patent col. 5 ll. 61

– 67; J.A. 369. Also concerning the Sitka IPR, KOM attempts to raise a claim

- construction issue by argu ing that the Board improperly found that Sitka discloses the

“ last storage medium” limitation of claim 3 (and other claims) because “the ‘last storage medium’ is not simply thefinal storage medium to which a file is transferred. Instead, the last storage me dium is an archival storage medium.” Appellant’s Br. 37. But w e agree with NetApp that this is not properly an issue of claim construction and further that substantial evidence supports the Board’s finding that Sitka teaches the claimed “last storage medium

. . . associated with archived files ” limitation via its “lowest level stores
, ” s ee, e.g. , J.A. 230

– 31 (Long Decl. ¶ 98); J.A. 761 ( Sitka col. 26 ll. 39

– 63)

. We have considered KOM’s remaining arguments with respect to the Sitka IPR but fi nd them unpersuasive. Because we affirm the Board’s unpatentability determinations in the Sitka IPR, the issues raised with respect to the Blickenstaff IPR are moot. Accordingly, we affirm in KOM’s appeal and dismiss NetApp’s cross

- appeal.
AFFIRMED

- IN

- PART, DISMISSED

- IN

- PART
C OSTS The parties shall bear their own costs. Case: 21-1005 Document: 56 Page: 3 Filed: 12/16/2021