Friday, December 17, 2021

KOM loses at the CAFC, Consequences of not arguing the assertions.

The outcome

KOM Software, Inc. owns four related patents claiming systems and methods for restricting access to a storage medium: U.S. Patent Nos. 7,076,624, 7,536,524, 8,234,477, and 9,361,243. On petitions from NetApp, Inc., the Patent Trial and Appeal Board conducted five inter partes reviews of numerous claims of those patents: IPR Nos. 2019- 00598, -00604, -00606, -00607, and -00608. The Board determined that NetApp had shown most of the challenged claims to be unpatentable for obviousness over the prior art (Vossen, Nagar, Denning, McGovern, and Kung). KOM appeals with respect to the claims ruled unpatentable; NetApp cross-appeals with respect to the claims upheld. We affirm.

Of waiver

Contrary to KOM’s contention, substantial evidence also supports the Board’s findings in IPRs 2019- 00604, -00606, and -00607 that the Kung reference discloses “forcing a secure erasure for a delete operation,” as required by claim 16 of the ’477 patent (and other claims). The Kung reference teaches overwriting content as a form of secure erasure, which is performed (forced) by the computer system. See, e.g., IPR 606 Final Written Decision, at *14–15. KOM argues to us that permitting the user to select secure erasure means that there is no “forcing,” but that contention is missing from KOM’s IPR responses and is therefore forfeited. See In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1333 (Fed. Cir. 2016)
KOM also challenges the Board’s findings that a relevant artisan had a motivation to combine the various prior art references on which the Board relied in its unpatentability determinations. But NetApp’s petitions identified motivations to combine for each combination put forward, and KOM did not challenge them before the Board. Thus, KOM’s arguments are again forfeited. See id.; In re Watts, 354 F.3d 1362, 1367–68 (Fed. Cir. 2004). That KOM styles its arguments as challenges to the sufficiency of the Board’s explanation, rather than substantive challenges to the merits of the findings, does not excuse KOM’s failure to raise its arguments before the Board. Cf. In re Nuvasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016) (“Our precedent dictates that the PTAB must make a finding of a motivation to combine when it is disputed.” (emphasis added)).


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