NOTE: This disposition is nonprecedential.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 Nos. IPR2019-

00601, IPR2019-00603.

______________________ 

Decided: December 16, 2021

______________________ 

DAVID FARNUM, Anova Law Group, PLLC, Sterling, 

VA, argued for appellant. Also represented by WENYE TAN. 

 ERIKA ARNER, Finnegan, Henderson, Farabow, Garrett 

& Dunner, LLP, Washington, DC, argued for cross-appellant. Also represented by JOSHUA GOLDBERG, SYDNEY 

KESTLE; CORY C. BELL, Boston, MA; JACOB ADAM 

SCHROEDER, Palo Alto, CA; JASON E. STACH, Atlanta, GA. 

 ______________________ 

Case: 21-1005 Document: 56 Page: 1 Filed: 12/16/2021
2 KOM SOFTWARE, INC. v. NETAPP, INC. 

Before PROST, TARANTO, and CHEN, Circuit Judges.

PER CURIAM.

This case involves two inter partes review final written 

decisions, one from IPR2019-00601 (“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 considered 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 file 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 misplaced user belief as to the 

location 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 describes (at most) an embodiment wherein the user may

Case: 21-1005 Document: 56 Page: 2 Filed: 12/16/2021
KOM 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 arguing

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 the 

final storage medium to which a file is transferred. Instead, the last storage medium is an archival storage medium.” Appellant’s Br. 37. But we 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,” see, 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 find 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

COSTS

The parties shall bear their own costs. 

Case: 21-1005 Document: 56 Page: 3 Filed: 12/16/2021