Case 1:18-cv-00160-WCB Document 217 Filed 10/04/23 Page 1 of 21 PageID #: 6318
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`MEMORANDUM OPINION AND ORDER
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`Civil Action No. 18-160-WCB
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`KOM SOFTWARE INC.,
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`Plaintiff,
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`NETAPP, INC.,
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`v.
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`Defendant.
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`In this patent infringement action, defendant NetApp, Inc., has moved for judgment on the
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`pleadings under Federal Rule of Civil Procedure 12(c). Dkt. No. 145. NetApp argues that the
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`patent claims asserted by plaintiff KOM Software Inc. are invalid under 35 U.S.C. § 101 for being
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`directed to patent-ineligible subject matter. For the reasons set forth below, the motion is
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`GRANTED IN PART and DENIED IN PART.
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`I.
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`Background
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`In its first amended complaint, KOM originally asserted claims from seven patents against
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`NetApp and two other defendants who have since been dismissed from the case. Five of those
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`seven patents are no longer asserted in this case. The remaining asserted claims are claims 5, 6,
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`and 9 of U.S. Patent No. 6,654,864 (“the ’864 patent”) and claims 4, 34, 69, and 103 of U.S. Patent
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`No. 9,361,243 (“the ’243 patent”). Both patents are generally directed to restricting access to files
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`contained within a computer data storage medium.
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`As explained in the specification of the ’864 patent, a software application may seek to
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`access and modify various files stored in a storage medium, such as a hard drive or CD-ROM,
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`1
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`while the medium is running. ’864 patent, col. 1, ll. 15–41. In many operating systems, including
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`“Windows NT,” the drivers for the storage devices are “hidden from applications by a protected
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`subsystem.” Id. at col. 1, ll. 30–34. That is, the applications and the storage devices do not
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`communicate directly with one another; instead, “[e]ach communicates with the operating system
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`independently.” Id. at col. 1, ll. 43–47.
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`In a typical operating system, a software application will submit a request to open a file
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`through the application’s protected subsystem. The request is sent to the “IO [input/output] system
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`services,” which in turn direct the “IO Manager” to communicate with the device drivers. Id. at
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`col. 4, ll. 25–42. As the specification of the ’864 patent notes, prior art systems would require the
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`device drivers to “deal[] with file system commands which cannot be completed,” because all
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`access requests were sent through the IO manager to the device drivers. See id. at col. 7, line 53,
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`through col. 8, line 5.
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`The ’864 and ’243 patents disclose implementing a “trap layer” between the application
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`layer and the file system layer of the computer system. See ’864 patent, col. 7, ll. 53–58. The trap
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`layer prevents invalid requests from being passed to the device drivers. Based on the capabilities
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`of the storage device that is being accessed, the trap layer can block some requests and modify
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`other requests. Id. at col. 7, ll. 60–64. For example, a particular storage device may permit files
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`to be read and written but not deleted. Id. at col. 8, ll. 8–10. In such a device, the trap layer that
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`is disclosed in the asserted patents would “intercept” a request to delete a file and would return an
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`error message to the application that was trying to access the device. Id. at col. 8, ll. 14–21.
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`Similarly, if the device supports “read access” but not “write access,” the trap layer could modify
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`a request to open a file with “read/write access” by converting that request into one seeking “read-
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`only access.” See id. at col. 7, ll. 44–46.
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`2
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`Claim 5 of the ’864 patent is generally representative of the asserted claims of the ’864
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`patent for purposes of the present motion. That claim recites as follows:
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`5. A method of restricting access by a computer to a storage medium other than a
`write once medium in communication with the computer, the method comprising
`the steps of:
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`providing an indication of a data write access privilege for the entire logical storage
`medium indicating a disabled operation relating to alteration of a portion of each
`file stored within the logical storage medium, the indication other than a read only
`indication; and
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`restricting file access to each file within the logical storage medium in accordance
`with the same indication while allowing access to free space portions of the same
`logical storage medium.
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`’864 patent, cl. 5.
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`Claim 66 of the ’243 patent, from which asserted claims 69 and 103 depend, is generally
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`representative of the asserted claims of the ’243 patent for purposes of the present motion. That
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`claim recites as follows:
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`66. A data processing system configured to apply a computer file system operation
`access privilege to a computer storage medium, comprises:
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`at least one computer processor configured to associate the computer file system
`operation access privilege with at least a portion of the computer storage medium;
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`said at least one computer processor configured to intercept, by at least one
`computer file system trap layer or at least one computer file system filter layer, an
`attempted operation on said at least a portion of the computer storage medium,
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`wherein said interception occurs regardless of an identity of a user
`that attempts the attempted operation;
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`said at least one computer processor configured to compare the
`attempted operation to the computer file system operation access
`privilege; and
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`said at least one computer processor configured to allow, or deny
`the attempted operation based on the comparison of the attempted
`operation to the computer file system operation access privilege.
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`’243 patent, cl. 66.
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`3
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`NetApp contends that all the asserted claims of the ’864 and ’243 patents are invalid under
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`35 U.S.C. § 101 because, in NetApp’s view, they are directed to an abstract idea and do not contain
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`an inventive concept sufficient to render the claims patent-eligible.
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`II.
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`Legal Standard
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`Under Federal Rule of Civil Procedure 12(c), “[a]fter the pleadings are closed—but early
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`enough not to delay trial—a party may move for judgment on the pleadings.” A Rule 12(c) motion
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`“will not be granted unless the movant clearly establishes that no material issue of fact remains to
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`be resolved and that [it] is entitled to judgment as a matter of law.” Jablonski v. Pan Am. World
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`Airways, Inc., 863 F.2d 289, 290 (3d Cir. 1988) (internal quotation marks and citation omitted).
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`The standard that applies to a Rule 12(b)(6) motion to dismiss for failure to state a claim also
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`applies to motions brought under Rule 12(c); that is, in the common situation in which the
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`defendant moves to dismiss the complaint, the court “must accept the truth of all factual allegations
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`in the complaint and must draw all reasonable inferences in favor of the non-movant.” Revell v.
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`Port Auth. of New York & New Jersey, 598 F.3d 128, 134 (3d Cir. 2010). More generally, “[t]he
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`purpose of judgment on the pleadings is to dispose of claims where the material facts are
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`undisputed and judgment can be entered on the competing pleadings and exhibits thereto, and
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`documents incorporated by reference.” Venetec Int’l, Inc. v. Nexus Med., LLC, 541 F. Supp. 2d
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`612, 617 (D. Del. 2008).
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`Patent eligibility under 35 U.S.C. § 101 is a question of law, based on underlying facts.
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`See Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121, 1125 (Fed. Cir. 2018);
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`Berkheimer v. HP Inc., 881 F.3d 1360, 1364–65 (Fed. Cir. 2018). Disputes over eligibility can be,
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`and frequently are, resolved on a Rule 12(b)(6) or Rule 12(c) motion “where the undisputed facts,
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`considered under the standards required by that Rule, require a holding of ineligibility under the
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`4
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`substantive standards of law.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1166 (Fed. Cir.
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`2018) (citing cases).
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`III.
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`Patent Eligibility Under 35 U.S.C § 101
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`A. Principles
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`Section 101 of the Patent Act defines patent-eligible subject matter. It states: “Whoever
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`invents or discovers any new and useful process, machine, manufacture or composition of matter,
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`or any new and useful improvement thereof, may obtain a patent therefore, subject to the
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`conditions and requirements of this title.” 35 U.S.C. § 101. The Supreme Court has interpreted
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`that provision to carve out exceptions to that broad characterization of patentable subject matter
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`for “[l]aws of nature, natural phenomena, and abstract ideas.” Alice Corp. Pty. v. CLS Bank Int’l,
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`573 U.S. 208, 216 (2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569
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`U.S. 576, 589 (2013)).
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`The framework for determining whether a patent is directed to an unpatentable abstract
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`idea is well settled. The Supreme Court’s decision in Alice established the now-familiar two-step
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`test for patentability in that context. The first step entails determining whether the claim at issue
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`is directed to an “abstract idea.” The second step entails determining whether the claim contains
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`an “inventive concept” that removes the claimed subject matter from the realm of abstraction.
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`Alice, 573 U.S. at 217–18; see also Mayo Collaborative Servs. v. Prometheus Lab’ys, Inc., 566
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`U.S. 66, 72–73 (2012).
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`1. Abstract Idea
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`Neither the Supreme Court nor the Federal Circuit has ventured a single, comprehensive
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`definition of an “abstract idea.” See id. at 221 (“[W]e need not labor to delimit the precise contours
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`of the ‘abstract ideas’ category in this case.”); Bilski v. Kappos, 561 U.S. 593, 621 (Stevens, J.,
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`5
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`concurring in the judgment) (“The Court . . . never provides a satisfying account of what constitutes
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`an abstract idea.”); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2018)
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`(“We need not define the outer limits of ‘abstract idea . . . .’”); Enfish, LLC v. Microsoft Corp.,
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`822 F.3d 1337, 1334 (Fed. Cir. 2018) (“The Supreme Court has not established a definitive rule to
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`determine what constitutes an ‘abstract idea’ sufficient to satisfy the first step of the Mayo/Alice
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`inquiry . . . .”). Rather than a unitary test, what has emerged from the cases applying section 101
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`is a group of related principles that can be applied in gauging whether a patent claim is directed to
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`an abstract idea. Those general principles that most directly apply to this case are the following:
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`First, the courts have characterized “method[s] of organizing human activity” as abstract.
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`See Alice, 573 U.S. at 220; BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1285 (Fed. Cir.
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`2018). For example, the courts have identified fundamental economic and business practices as
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`abstract ideas. See SAP Am., 898 F.3d at 1166; Intell. Ventures I LLC v. Symantec Corp., 838 F.3d
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`1307, 1313 (Fed. Cir. 2016). Such business practices can include relatively specific functions such
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`as disseminating regionally broadcasted content to users outside the region, see Affinity Labs of
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`Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1261–62 (Fed. Cir. 2016); classifying an image and
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`storing the image based on its classification, see In re TLI Commc’ns LLC Pat. Litig., 823 F.3d
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`607, 611 (Fed. Cir. 2016); or managing a bingo game, see Planet Bingo, LLC v. VKGS LLC, 576
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`F. App’x 1005, 1008 (Fed. Cir. 2014).
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`Applying that principle to patents that claim the use of computers in performing particular
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`activities, courts have held that simply implementing particular economic practices on a computer
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`does not make those practices patent-eligible. See BSG Tech, 899 F.3d at 1285 (“If a claimed
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`invention only performs an abstract idea on a generic computer, the invention is directed to an
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`6
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`abstract idea at step one” of Alice.”); Fair Warning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089,
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`1093 (Fed. Cir. 2016); TLI, 823 F.3d at 612; Enfish, 822 F.3d at 1338.
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`Second, as applied to computer-related applications, the courts have looked to whether the
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`claim in question is directed to an improvement in computer technology as opposed to simply
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`providing for the use of a computer to perform “economic or other tasks for which a computer is
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`used in its ordinary capacity.” Enfish, 822 F.3d at 1336; see also Universal Secure Registry LLC
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`v. Apple Inc., 10 F.4th 1342, 1357 (Fed. Cir. 2021); Yu v. Apple Inc., 1 F.4th 1040, 1044 (Fed. Cir.
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`2021); McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016).
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`Where the claims at issue provide for an improvement in the operation of a computer, such as a
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`new memory system, a new type of virus scan, or a new type of interface that makes a computer
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`function more accessible, the Federal Circuit has found the claims patent-eligible. See Data
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`Engine Techs. LLC v. Google LLC, 906 F.3d 999, 1007–11 (Fed. Cir. 2018) (methods for making
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`electronic spreadsheets more accessible); Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880
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`F.3d 1356, 1361–63 (Fed. Cir. 2018) (improved display devices); Finjan, Inc. v. Blue Coat Sys.,
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`Inc., 879 F.3d 1299, 1303–06 (Fed. Cir. 2018) (novel method of virus scanning); Visual Memory
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`LLC v. NVIDIA Corp., 867 F.3d 1253, 1258–60 (Fed. Cir. 2017) (improved computer memory
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`system).
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`Third, again in the field of computer-related applications, the Federal Circuit has held that
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`claims are directed to an abstract idea if they are “directed to collection of information,
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`comprehending the meaning of that collected information, and indication of the results, all on a
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`generic computer network operating in its normal, expected manner.” Int’l Bus. Machines Corp.
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`v. Zillow Grp., Inc., 50 F.4th 1371, 1378 (Fed. Cir. 2022) (quoting In re Killian, 45 F.4th 1373,
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`1380 (Fed. Cir. 2022)); see also SAP Am., 898 F.3d at 1167 (“[C]laims focused on ‘collecting
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`information, analyzing it, and displaying certain results of the collection and analysis’ are directed
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`to an abstract idea.”) (quoting Elec. Power Grp., 830 F.3d at 1353–54); Trading Techs. Int’l, Inc.
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`v. IBG, LLC, 921 F.3d 1378, 1385 (Fed. Cir. 2019); Interval Licensing LLC v. AOL, Inc., 896 F.3d
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`1335, 1345 (Fed. Cir. 2018); Fair Warning IP, 839 F.3d at 1093.
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`Fourth, and more generally, in determining whether a method claim is directed to an
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`abstract idea, the Federal Circuit has focused on whether the claim is purely functional in nature
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`or is sufficiently concrete or specific to be directed to a patent-eligible process rather than a patent-
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`ineligible result. For example, in SAP America, 898 F.3d at 1167, the court asked whether the
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`claim had “the specificity required to transform [it] from one claiming only a result to one claiming
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`a way of achieving it.” To answer that question, the Federal Circuit has directed courts to “look
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`to whether the claims focus on a specific means or method, or are instead directed to a result or
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`effect that itself is the abstract idea and merely invokes generic processes and machinery.” See
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`also Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1337 (Fed. Cir.
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`2017); McRO, 837 F.3d at 1314 (“We . . . look to whether the claims in these patents focus on a
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`specific means or method that improves the relevant technology or are instead directed to a result
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`or effect that itself is the abstract idea and merely invoke generic processes and machinery.”);
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`Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1244 (Fed. Cir. 2016) (claim that “calls for the
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`desired result of associating a customer’s order with said customer, and does not attempt to claim
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`any method for achieving that result,” is abstract, and thus ineligible for patenting); see generally
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`Diamond v. Diehr, 450 U.S. 175, 182 n.7 (1981) (A patent may issue “for the means or method of
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`producing a certain result or effect, and not for the result or effect produced.” (citation omitted));
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`Le Roy v. Tatham, 55 U.S. 156, 175 (1853) (“A patent is not good for an effect, or the result of a
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`8
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`certain process” because such patents “would prohibit all other persons from making the same
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`thing by any means whatsoever.”).
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`Fifth, and relatedly, “the concern that drives” the judicial exceptions to patentability is “one
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`of preemption.” Alice, 573 U.S. at 216; see also ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d
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`759, 766 (Fed. Cir. 2019); Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed.
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`Cir. 2015). In determining whether a particular invention is directed to an abstract idea, it is
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`therefore important to ask whether according patent protection to the claimed subject matter would
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`have a broad preemptive effect on future innovation in the same field. See Accenture Glob. Servs.,
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`GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1341 (Fed. Cir. 2013).
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`2. Inventive Concept
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`If the court determines that a claim is directed to an abstract idea, the court proceeds to
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`Alice step two. That step requires the court “to examine the elements of the claim to determine
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`whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into
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`a patent-eligible application.” Alice, 573 U.S. at 221 (quoting Mayo, 566 U.S. at 72, 78–79).
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`The “inventive concept” is “an element or combination of elements that is ‘sufficient to
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`ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible
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`concept] itself.’” Alice, 573 U.S. at 217–18 (quoting Mayo, 566 U.S. at 72). That step serves to
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`ensure that the claim is directed to more than merely implementing an abstract idea using “well-
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`understood, routine, [and] conventional activities previously known in the industry.” Coop. Ent.,
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`Inc. v. Kollective Tech., Inc., 50 F.4th 127, 130 (Fed. Cir. 2022) (quoting Alice, 573 U.S. at 225).
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`That is, Alice step two requires the claimed invention to do more than combine known techniques
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`that “yield[] only expected results,” Universal Secure Registry, 10 F.4th at 1353; instead, it must
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`“focus on a specific means or method that improves the relevant technology,” Weisner v. Google
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`LLC, 51 F.4th 1073, 1083 (Fed. Cir. 2022) (citation omitted). In particular, the Federal Circuit has
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`asked whether the claim or claims at issue are “directed to a technological solution to a
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`technological problem.” cxLoyalty, Inc. v. Maritz Holdings Inc., 986 F.3d 1367, 1378 (Fed. Cir.
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`2021); see also BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350–
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`51 (Fed. Cir. 2016); DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257–58 (Fed. Cir.
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`2014).1
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`The preemptive effect of the asserted claims is also a relevant consideration at Alice step
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`two. In a recent case, the Federal Circuit explained the relationship between preemption and the
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`existence of an inventive concept:
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`We have explained that claims for methods that “improve[] an existing
`technological process” include an inventive concept at step two. BASCOM, 827
`F.3d at 1350–51 (quoting Alice, 573 U.S. at 221, 223). And claims that “recite a
`specific, discrete implementation of the abstract idea” rather than “preempt[ing] all
`ways of” achieving an abstract idea using a computer may include an inventive
`concept. Id. at 1350. But claims to “an abstract idea implemented on generic
`computer components, without providing a specific technical solution beyond
`simply using generic computer concepts in a conventional way” do not pass muster
`at step two. Id. at 1352.
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`Killian, 45 F.4th at 1382 (cleaned up). Thus, whether the claims recite “a specific, discrete
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`implementation of the abstract idea” rather than preempting all implementations of that idea is an
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`appropriate consideration in the step two inquiry. See id.
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`1 The question whether the claims recite a “technological solution to a technological
`problem” may also be considered at step one of the Alice test. See, e.g., Packet Intel. LLC v.
`NetScout Sys., Inc., 965 F.3d 1299, 1309 (Fed. Cir. 2020); Universal Secure Registry, 10 F.4th at
`1352; CosmoKey Sols. GmbH & Co. KG v. Duo Sec. LLC, 15 F.4th 1091, 1100 (Fed. Cir. 2021)
`(Reyna, J., concurring). Other cases, such as cxLoyalty, BASCOM, and DDR Holdings, make clear
`that the existence of a technological solution to a technological problem is also an appropriate
`consideration at step two of Alice. The dual role of that factor is not anomalous, as the Federal
`Circuit has recognized that there is some doctrinal overlap between the two steps. See CareDx,
`Inc. v. Natera, Inc., 40 F.4th 1371, 1379 (Fed. Cir. 2022) (citing Elec. Power Grp., 830 F.3d at
`1353).
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`10
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`B. Application
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`1. Alice Step One
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`The Alice step one inquiry considers “what the patent asserts to be the focus of the claimed
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`advance over the prior art.” Yu, 1 F.4th at 1043 (citation omitted). NetApp argues that the claims
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`are directed to the abstract idea of “restricting access to a storage medium” or “controlling access
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`to a storage medium.” Dkt. No. 146 at 4, 12. KOM asserts that the claims are not directed to an
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`abstract idea, but are directed to patent-eligible improvements in computer technology.
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`As noted above, in cases involving computer technology, the Federal Circuit has frequently
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`framed the inquiry at Alice step one as asking “whether the focus of the claims is on the specific
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`asserted improvement in computer capabilities . . . or, instead, on a process that qualifies as an
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`‘abstract idea’ for which computers are invoked merely as a tool.” Enfish, 822 F.3d at 1335–36;
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`see also TecSec, Inc. v. Adobe Inc., 978 F.3d 1278, 1293 (Fed. Cir. 2020); Uniloc USA, Inc. v. LG
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`Elecs. USA, Inc., 957 F.3d 1303, 1306–07 (Fed. Cir. 2020); Customedia Techs., LLC v. Dish
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`Network Corp., 951 F.3d 1359, 1364–65 (Fed. Cir. 2020); McRO, Inc. v. Bandai Namco Games
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`Am. Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016); DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
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`1245, 1257–58 (Fed. Cir. 2014).
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`The Federal Circuit’s decision in Visual Memory is instructive in this regard. There, the
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`Federal Circuit held that patent claims directed to an improved computer memory system were
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`patent-eligible and not directed to an abstract idea. The memory system disclosed in the patent at
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`issue in that case contained three separate caches, each of which was “programmable based on the
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`type of processor connected to the memory system.” 867 F.3d at 1256. The patented system
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`“separat[ed] the functionality for the caches and defin[ed] those functions based on the type of
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`processor” being used with the memory system. Id. For that reason, the court held that the claims
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`11
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`were directed to “a technological improvement.” The court noted that the concrete nature of the
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`claimed innovation was confirmed by the specification, which “discusse[d] the advantages offered
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`by the technological improvement.” Id. at 1259–60.
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`In this case, the specifications of the ’864 and ’243 patents explain that the inventions are
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`directed to improving various shortcomings in prior art storage devices. For example, the
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`specifications explain that in certain prior art systems, errors may occur when an application
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`attempts to write to a storage device but the device is “unavailable or fails to support write
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`operations.” ’864 patent, col. 1, ll. 53–54; ’243 patent, col. 2, ll. 7–8. In some instances, “[a]n error
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`message may result, but will not be directed to the application since it is not known to the device
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`driver or inaccessible.” ’864 patent, col. 1, ll. 55–57; ’243 patent, col. 2, ll. 8–11. In other instances,
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`“no error message results” when the error occurs, and the data is lost “when the buffer is flushed or
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`when the system is rebooted.” ’864 patent, col. 1, ll. 58–60; ’243 patent, col. 2, ll. 13–15. As the
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`specifications explain, “[n]either of those results is acceptable in normal computer use.” ’864
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`patent, col. 1, ll. 60–61; ’243 patent, col. 2, ll. 15–16.
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`To take another example, the specifications explain that many operating systems update
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`certain information relating to a file, such as the “last access date,” when that file is accessed. ’864
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`patent, col. 2, ll. 2–4; ’243 patent, col. 2, ll. 24–26. That action is referred to by the patents as
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`“journaling.” However, when the storage device being accessed is an “archive data store,” the
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`specifications explain that “it is often desirable that [the archive data store] not be written to,” i.e.,
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`“journaling is not performed.” ’864 patent, col. 2, ll. 11–15; ’243 patent, col. 2, ll. 32–36. When
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`accessing an archive data store, the specifications note, prior art systems often altered the data store
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`by performing journaling “even when this [was] not desired.” ’864 patent, col. 2, ll. 19–20; ’243
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`patent, col. 2, ll. 39–40. The inventors observed that in the prior art there was “no adequate solution
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`to overcome this problem.” ’864 patent, col. 2, ll. 25–26; ’243 patent, col. 2, ll. 45–46.
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`
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`The patent specifications explain that “an object of the present invention” is to “provide a
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`method of limiting access privileges for a storage medium” in order to “overcome these and other
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`limitations of the prior art.” ’864 patent, col. 2, ll. 27–30; ’243 patent, ll. 47–50. As discussed
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`above, the principal advance disclosed in the asserted patents is to use a “trap layer” to block certain
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`requests from reaching a storage device and to modify other requests before they are sent to the
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`storage device.
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`i. The ’243 Patent Claims
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`
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`The trap layer is expressly recited in the asserted claims of the ’243 patent. For example,
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`the system recited in claim 69 requires, inter alia, a “computer processor configured to intercept,
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`by at least one computer file system trap layer . . . an attempted operation on said at least a portion
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`of the computer storage medium.” ’243 patent, cl. 66 (from which asserted system claim 69
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`depends). The asserted method claims of the ’243 patent are similar, as they require the method
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`step of “intercepting by at least one trap layer an attempted operation on said at least a portion of
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`the storage medium.” ’243 patent, cl. 1 (from which asserted method claims 4 and 34 depend).
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`
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`Put simply, the claims of the ’243 patent recite the use of a trap layer, which the specification
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`of that patent discloses as the principal means for solving the problems associated with prior art
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`storage devices. Thus, the claims are plainly “directed to an improvement in the functioning of a
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`computer,” Enfish, 822 F.3d at 1338, and not to an “independently abstract” process that merely
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`invokes computers as a tool, Elec. Power Grp., 830 F.3d at 1354.
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`
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`In support of its position that the claims of the ’243 patent are directed to an abstract idea,
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`NetApp relies on the Federal Circuit’s decisions in Ericsson Inc. v. TCL Communication
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`Case 1:18-cv-00160-WCB Document 217 Filed 10/04/23 Page 14 of 21 PageID #: 6331
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`Technology Holdings Ltd., 955 F.3d 1317 (Fed. Cir. 2020), and Prism Technologies LLC v. T-
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`Mobile USA, Inc., 696 F. App’x 1014 (Fed. Cir. 2017), both of which dealt with systems for
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`controlling access to a computer component. Neither case, however, supports NetApp’s argument.
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`The asserted claims of the ’243 patent are directed to specific mechanisms for performing the
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`recited function (employing a trap layer to intercept an attempted operation and doing so regardless
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`of the identity of a user attempting the operation). The claims at issue in Prism and Ericsson, by
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`contrast, did not recite the mechanics of an authentication process.
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`
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`Ericsson involved a system “for controlling access to a platform,” consisting of (1) a
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`platform having an interface for providing access to the platform’s software services component,
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`(2) an “access controller for controlling access’ to the software services component, (3) an
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`interception module for receiving a request for access to the software services component; and a
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`“decision entity” for determining if the request should be granted. After analyzing the language of
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`the asserted claims, the Federal Circuit determined that the four recited computer components
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`“collapse into simply ‘an access controller for controlling access’ by ‘receiving a request’ and then
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`‘determining if the request should be granted.’” 955 F.3d at 1326. Neither that function nor either
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`of the remaining limitations altered the court’s conclusion that the claims were directed to “the
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`abstract idea of controlling access to resources,” using “standard components that are put to use via
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`the ‘access controller’ limitation.” Id. The claims were essentially functional in nature, the court
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`ruled, lacking “the specificity required to transform a claim from one claiming only a result to one
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`claiming a way of achieving it.” Id. at 1328.
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`
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`Prism similarly claimed a method for controlling access to protected computer resources.
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`The representative asserted claim in Prism recited a method consisting of an authentication server
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`(1) receiving identity data from a client computer making a request for resources, (2) authenticating
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`Case 1:18-cv-00160-WCB Document 217 Filed 10/04/23 Page 15 of 21 PageID #: 6332
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`that identity data, (3) authorizing the requested access and (4) then permitting access to the protected
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`computer resources. That is to say, Prism claimed the function of a computer permitting access to
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`resources by any means that determined that the request for resources was permitted. The court
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`unsurprisingly concluded that the asserted claims were directed to the abstract idea of “control[ling]
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`access to protected computer resources by authenticating identity data,” id. at 1016, in which
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`computers were “invoked merely as a tool.” See Enfish, 822 F.3d at 1335–36.
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`
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`A case that presents a useful contrast to Ericsson and Prism is TecSec, Inc. v. Adobe, Inc.,
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`978 F.3d 1278 (Fed. Cir. 2020). In that case, the Federal Circuit held that claims directed to methods
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`for providing multi-level security in a data network were not directed to an abstract idea. TecSec,
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`978 F.3d at 1296. The court noted that in prior cases involving software innovations, the Federal
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`Circuit asked two questions: whether the focus of the claimed advance was on a solution “to a
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`problem specifically arising in the realm of computer networks or computers,” and whether the
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`claim was “properly characterized as identifying a specific improvement in computer capabilities
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`or network functionality, rather than only claiming a desirable result or function.” Id. at 1293
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`(cleaned up). The TecSec court answered both of those questions in the affirmative with regard to
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`the claims before it.
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`
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`As the court in TecSec explained, the patents at issue in that case described and claimed a
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`method in which a digital object “is assigned a level of security that corresponds to a certain
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`combination of access controls and encryption.” Id. at 1282. “The encrypted object can then be
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`embedded or ‘nested’ within a ‘container object,’ which, if itself encrypted and access-controlled,
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`provides a second layer of security.” Id. (citation omitted). The invention in TecSec provided a
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`software-based mechanism for enhancing the security of information sent over a network, while
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`Case 1:18-cv-00160-WCB Document 217 Filed 10/04/23 Page 16 of 21 PageID #: 6333
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`providing