Senior Circuit Judge Issues Split Decision On Patent Eligibility Of Claims Directed To Restricting Access To Computer Files

• Jurisdiction: United States,Federal
• Law Firm: Akin Gump Strauss Hauer & Feld LLP
• Subject Matter: Intellectual Property, Patent
• Author: Mr C. Brandon Rash and Sunny Akarapu
• Published date: 30 October 2023

Senior Circuit Judge Bryson of the Federal Circuit, sitting by designation in the District of Delaware, recently granted-in-part and denied-in-part a Rule 12(c) motion for judgment based on patent eligibility under 35 U.S.C. ' 101. The patents are directed to restricting access to computer files. The court found certain claims eligible because they are directed to a problem arising in the realm of computers and they identify a specific improvement in computer capabilities. The court found other claims ineligible because they broadly recite generic steps and results and they were not limited to the technical advancement disclosed in the specification.

KOM Software Inc. v. NetApp, Inc., No. 18-cv-160-WCB (D. Del.).

KOM Software sued NetApp for infringing U.S. Patent Nos. 6,654,864 and 9,361,243. The patents are directed to restricting access to files contained within a computer data storage medium. Specifically, the patents disclose the implementation of a "trap layer" between the application layer and the file system layer of the computer system, which prevents a software application from passing invalid requests to the device drivers and returns an error message. Representative claim 5 of the ʼ864 patent recites a method of (1) providing an indication that one or more file operations is not permitted on a storage medium and (2) restricting access to each file based on that indication, while still allowing access to free space on the storage medium. The court construed representative claim 66 of the ʼ243 patent more narrowly because it expressly recited the use of the disclosed "trap layer" to intercept an attempted operation on the storage medium.

The court analyzed eligibility using the Supreme Court's two-step Alice framework. In step one, a court determines whether the claims are "directed to a patent-ineligible concept," such as an abstract idea. Alice Corp. v. CLS Bank Int'l, 573 U.S. 208, 217 (2014). If they are, the court proceeds to step two'the search for an "inventive concept"'and considers "the elements of each claim both individually and 'as an ordered combination' to determine whether the additional elements 'transform the nature of the claim' into a patent-eligible application." Id. (citing Mayo Collaborative Servs. v. Prometheus Lab'ys, Inc., 566 U.S. 66, 78-79 (2012)).

Judge Bryson identified the following principles for determining whether claims are directed to an abstract idea that most directly apply to the computer-related application...