Actifio, Inc.v.DELPHIX CORP.

Patent Trial and Appeal Board

Apr 13, 2016

12603541 (P.T.A.B. Apr. 13, 2016)

Trials@uspto.gov Paper 70
571-272-7822 Entered: April 13, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

ACTIFIO, INC.,
Petitioner,

v.

DELPHIX CORP.,
Patent Owner.
____________

Case IPR2015-00014
Patent 8,150,808 B2

Before HOWARD B. BLANKENSHIP, KARL D. EASTHOM, and
MINN CHUNG, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. INTRODUCTION
In this inter partes review trial, instituted pursuant to 35 U.S.C. § 314,
Petitioner Actifio, Inc. (“Petitioner”) challenges the patentability of claims 1,
4–9, 15, 35, 46, 50, and 57 (the “challenged claims”) of U.S. Patent No.
8,150,808 B2 (Ex. 1001, “the ’808 patent”), owned by Delphix Corp.
(“Patent Owner”). The Board has jurisdiction under 35 U.S.C. § 6(c). This
Final Written Decision is entered pursuant to 35 U.S.C. § 318(a) and
37 C.F.R. § 42.73. With respect to the grounds instituted in this trial, we
have considered the papers submitted by the parties and the evidence cited
therein. For the reasons discussed below, we determine Petitioner has
shown by a preponderance of the evidence that claims 1, 4–9, 15, 35, 46, 50,
and 57 of the ’808 patent are unpatentable.
A. Procedural History
On October 3, 2014, Petitioner filed a Petition (Paper 1, “Pet.”)
requesting an inter partes review of claims 1, 4–9, 15, 35, 45, 46, 50, and 57
of the ’808 patent. Patent Owner filed a Preliminary Response (Paper 10,
“Prelim. Resp.”). On April 16, 2015, we instituted an inter partes review of
claims 1, 4–9, 15, 35, 46, 50, and 57 based on the following grounds of
unpatentability (Paper 13, “Inst. Dec.”):
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Claim(s) Challenged Statutory Basis Ground
1, 4–9, 35, 46, 50,
and 57
§ 103(a) Edwards,1 Patterson,2 and Sanders3
15 § 103(a) Edwards, Patterson, Sanders, and
CaraDonna4
After institution of trial, Patent Owner filed a Patent Owner Response
(Paper 24, “PO Resp.”), to which Petitioner filed a Reply (Paper 33, “Pet.
Reply”).5 Subsequently, Patent Owner moved to exclude (Paper 47, “PO
Mot. to Exclude”) Exhibits 1034–1048, 1050, 1051, 1053, 1056, 1058–1061,
and 1064; Petitioner opposed (Paper 54, “Pet. Exclude Opp.”); and Patent
Owner replied (Paper 57, “PO Exclude Reply”). Patent Owner also filed
Motions for Observation on certain cross-examination testimony of Dr. Erez
Zadok (Paper 50, “Obs. Zadok”) and Louis Hernandez (Paper 48, “Obs.
Hernandez”), to which Petitioner filed Responses (Paper 58 (“Obs. Resp.

1 Edwards et al., FlexVol: Flexible, Efficient File Volume Virtualization in
WAFL, PROCEEDINGS OF THE ANNUAL TECHNICAL USENIX CONFERENCE
129–142 (June 22–27, 2008) (“Edwards”) (Ex. 1003).
2 Patterson et al., SnapMirror®: File System Based Asynchronous Mirroring
for Disaster Recovery, PROCEEDINGS OF THE CONFERENCE ON FILE AND
STORAGE TECHNOLOGIES, USENIX ASSOCIATION (January 28-30, 2002)
(“Patterson”) (Ex. 1004).
3 Jawahar Lal & Roger Sanders, DB2: Cloning a Database using NetApp
FlexClone™ Technology, Network Appliance Inc., IBM Toronto Lab, TR-
3460 (Apr. 30, 2006) (“Sanders”) (Ex. 1005).
4 U.S. Patent No. 8,532,973 B1 (Sept. 10, 2013) (“CaraDonna”) (Ex. 1012).
5 Unless otherwise indicated, we refer to public (including redacted) Papers
and Exhibits.
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Zadok”) and Paper 56 (“Obs. Resp. Hernandez”), respectively). Patent
Owner also filed a Paper identifying allegedly untimely evidence and
evidence and arguments beyond the scope of Petitioner’s Reply. Paper 59
(“Exclude Pet. Reply Evid.”).
A combined oral hearing in this proceeding and related Cases
IPR2015-00016, IPR2015-00019, IPR2015-00034, IPR2015-00025,
IPR2015-00026, IPR2015-00050, IPR2015-00052, and IPR2015-00128 was
held on January 14, 2016. A transcript of the hearing is included in the
record as Paper 69 (“Tr.”).
B. Related Proceedings
According to Petitioner, the ’808 patent is the subject of the following
pending patent infringement case: Delphix Corp. v. Actifio, Inc., No. 5:13-
cv-04613-BLF (N.D. Cal.). Pet. 2. In related proceedings before the Board,
we instituted inter partes reviews of various claims of the ’808 patent in
Cases IPR2015-00016, IPR2015-00019, and IPR2015-00034. Additionally,
we instituted inter partes reviews of claims of U.S. Patent No. 8,161,077 B2
in Cases IPR2015-00025 and IPR2015-00026; claims of U.S. Patent No.
8,548,944 B2 in Cases IPR2015-00050 and IPR2015-00052; claims of U.S.
Patent No. 8,566,361 B2 in Cases IPR2015-00100 and IPR2015-00108; and
claims of U.S. Patent No. 8,468,174 B1 in Case IPR2015-00128.6

6 Case IPR2015-00136 has been consolidated with IPR2015-00128.
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II. THE ’808 PATENT
A. Described Invention
The ’808 patent describes a system and method to create a virtual
database, which involves obtaining multiple “point-in-time” (“PIT”) copies
of the database to be virtualized. See Ex. 1001, Abstract. In one virtual
database embodiment represented by Figure 2a, “production database system
110 . . . is the source of the database being virtualized” to create virtual
database 220 using virtual database files stored in database storage system
100. Id. at col. 6, ll. 59–65. Figure 2a of the ’808 patent is reproduced
below.

Figure 2a depicts production database system 110, virtual database DB1 220
stored in database storage system 100, and virtual database system 130,
which accesses virtual database 220.
To virtualize a production database, the system of the ’808 patent
makes a first PIT copy of the production database and stores an entire set of
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database blocks representing the production database at that time in database
storage system 100. See Ex. 1001, col. 18, ll. 27–36; Fig. 10. Subsequent
PIT copies involve incremental changes and copy “only the blocks that
changed since the last PIT copy and may copy much less data compared to
the first PIT copy.” Id. at col. 18, ll. 38–41. A virtual database (VDB) is
created by creating VDB file structures comprising VDB blocks that point to
different PIT database blocks. See id. at col. 18, ll. 27–55. Each time an
updated PIT copy is received at database storage system 100 reflecting
changes in the production database, the system updates the appropriate VDB
blocks in a VDB file which are “implemented as pointers to the actual
database block that stores the [updated] data.” See id. at col. 18, ll. 44–55.
Figure 10 from the ’808 patent is reproduced below.

Figure 10 shows “VDB Files for Time T2” in database storage system 100.
Figure 10 further shows that “VDB file structures 1050” includes blocks
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V11, V12, V13, and V14 which point to database blocks F11 . . . F34 that
represent different PIT (i.e., at times T0, T1, and T2) copies of production
database blocks F1, F2, F3, and F4 at production database system 110.
Initially, all the production database blocks are copied to create “[t]he first
PIT copy 1030 made at time T0,” as represented by database blocks F11,
F12, F13, and F14 in database storage system 100. Id. at col. 18, ll. 35–38.
Later, when the PIT copy made at time T2 is received and the VDB blocks
are updated, block V13 points to the updated data at block F33, which
represents a change existing at T2 to the data in block F3 in the production
database (see id. at col. 18, ll. 53–55), whereas VDB block V11 still points
to the data in block F11 “since the [production database] block F1 was never
updated during copies made at time T1 and T2” (id. at col. 18, ll. 49–51).
B. Illustrative Claim
Of the challenged claims, claims 1, 50, and 57 are independent.
Claims 4–7, 15, 35, and 46 depend directly from claim 1. Claim 8 depends
directly from claim 7, and claim 9 depends directly from claim 8. Claim 1 is
illustrative of the challenged claims and is reproduced below:
1. A method for creating a virtual database system, the
method comprising:
receiving different point-in-time copies of a source
database, the source database comprising a plurality of database
blocks;
storing on a storage system, database blocks for a
plurality of different point-in-time copies of the source
database, wherein at least some of the stored database blocks
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are associated with multiple point-in-time copies of the source
database;
creating a set of files for a virtual database, each file in
the set of files is linked to the database blocks on the storage
system associated with a point-in-time copy of the source
database; and
mounting the set of files associated with the virtual
database on a database server allowing the database server to
read from and write to the set of files.
III. CLAIM CONSTRUCTION
In an inter partes review, claim terms in an unexpired patent are given
their broadest reasonable construction in light of the specification of the
patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo
Speed Techs., LLC, 793 F.3d 1268, 1277–79 (Fed. Cir. 2015) (“Congress
implicitly approved the broadest reasonable interpretation standard in
enacting the AIA,” and “the standard was properly adopted by PTO
regulation.”), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 136
S. Ct. 890 (mem.) (2016). In general, claim terms are given their ordinary
and customary meaning in view of the specification, as would be understood
by one of ordinary skill in the art at the time of the invention. In re
Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007); Phillips v.
AWH Corp., 415 F.3d 1303, 1312–13, 1315 (Fed. Cir. 2005) (en banc). A
patentee may rebut that presumption by providing a definition for the term in
the specification with reasonable clarity, deliberateness, and precision. In re
Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). A particular embodiment
appearing in the written description generally is not incorporated into a
claim if the claim language is broader than the embodiment. SuperGuide
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Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004); In re
Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993); see also Phillips, 415
F.3d at 1323 (“[A]lthough the specification often describes very specific
embodiments of the invention, we have repeatedly warned against confining
the claims to those embodiments.”).
During trial, the parties disputed the claim construction of the terms
“database block” and “virtual database,” which we address below. No other
claim terms require express construction to resolve the issues raised in this
inter partes review. See, e.g., Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms that are in controversy
need to be construed, and only to the extent necessary to resolve the
controversy).
A. Database Block
1. Whether a Database Block Requires Metadata
The main claim construction dispute between the parties with respect
to the term “database block” centers on whether a database block must
necessarily include metadata. Patent Owner asserts the term “database
block” should be interpreted to require metadata, i.e., as “a unit of data used
by a database which comprises a specific number of bytes stored in the
storage, a portion of which stores metadata associated with the unit of data”
(PO Resp. 16), whereas Petitioner argues the correct interpretation of the
term is not so limited, i.e., “a unit of data used by a database” (Pet. 10). For
the reasons discussed below, we conclude the disputed term is not limited as
Patent Owner contends.
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a. Claim Language
We begin our claim construction analysis by considering the language
of the claims themselves. Phillips, 415 F.3d at 1314. First, we note that the
term “metadata” is not recited in any of the challenged claims. Nor do the
claims expressly require inclusion of metadata in database blocks. The only
claims of the ’808 patent that recite “metadata” are dependent claims 32 and
33, which are not challenged in this case or any other related cases currently
before the Board. These claims depend indirectly from claim 1 and
expressly recite “metadata of database blocks.” Thus, had the patentees
intended to limit “database blocks” recited in claim 1 or any other
challenged claims to require metadata, it could have done so by explicitly
modifying the disputed term with “metadata,” but did not.
Therefore, to show the disputed term is limiting, Patent Owner must
demonstrate “a clear indication in the intrinsic record that the patentee
intended the claims to be so limited.” Liebel–Flarsheim Co. v. Medrad, Inc.,
358 F.3d 898, 913 (Fed. Cir. 2004); see also Aventis Pharma S.A. v.
Hospira, Inc., 675 F.3d 1324, 1330–32 (Fed. Cir. 2012) (“perfusion” not
limited to having at least eight hours of stability because the patentee did not
“clearly express an intent” to redefine the term in the specification or during
prosecution).
b. Written Description
Turning to the written description, Patent Owner asserts that the
following passage in the Summary section of the Specification defines the
term “database block”:
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A database block is a unit of data used by a database and
comprises a specific number of bytes stored in the storage. A
database block can also be referred to as a page. A portion of
the database block stores metadata associated with the database
block.
PO Resp. 16 (quoting Ex. 1001, col. 2, ll. 7–12). The first sentence in the
cited passage above explicitly defines the term, by stating “[a] database
block is a unit of data used by a database.”7 Ex. 1001, col. 2, ll. 7–9.
Although the second next sentence states that a database block “stores
metadata,” that sentence by itself is insufficient to limit the disputed term by
requiring the unrecited “metadata” feature because it does not state
unambiguously that all “database blocks” must include metadata. See
Liebel-Flarsheim, 358 F.3d at 906 (construing a claim term broadly because
“[n]o statement in the written description [ ] constitute[d] a limitation on the
scope of the invention”) (quoting Brookhill-Wilk 1, LLC v. Intuitive
Surgical, Inc., 334 F.3d 1294, 1301 (Fed. Cir. 2003)). Further, the cited
passage does not exclude the possibility of some database blocks not having
any metadata. See id. at 908 (passages in the Summary of the Invention
section of a patent did not limit the scope of the invention because the
passages, “although focusing on the use of the invention in conjunction with
pressure jackets, do not disclaim the use of the invention in the absence of a
pressure jacket”). Nonetheless, if the rest of the Specification, e.g., the

7 The first sentence also states a database block comprises “a specific
number of bytes stored in the storage.” For the reasons discussed in Section
III.A.3 below, we find this addition is not part of the explicit definition but,
rather, represents embodiments within the defined term.
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Detailed Description section, clearly and consistently describes the claimed
invention as requiring metadata in database blocks, such a limiting
description together with the sentences cited above may support a limiting
construction of the disputed term. Compare Am. Piledriving Equip., Inc. v.
Geoquip, Inc., 637 F.3d 1324, 1333–34 (Fed. Cir. 2011) (citing C.R. Bard,
Inc. v. U.S. Surgical Corp., 388 F.3d 858, 865–66 (Fed. Cir. 2004)) (holding
that a limiting description in the specification supports a limiting
construction of a claim term when the limiting feature is referenced
“throughout the specification,” and “other statements and illustrations in the
patent are consistent with the limiting description”), with MEMS Tech.
Berhad v. Int’l Trade Comm’n, 447 F. App’x 142, 151 (Fed. Cir. 2011)
(nonprecedential) (distinguishing C.R. Bard and finding the statements in the
abstract and summary sections to be non-limiting because, in C.R. Bard, the
specification universally describes a limiting feature of the invention
whereas in MEMS, “the general language in the abstract and summary
sections does not represent the full scope of the embodiments in the
specification”). In this case, as discussed below, our review of the
Specification, including the portions identified by Patent Owner, does not
reveal a limiting description sufficient to support a limiting construction.
Patent Owner asserts, citing certain portions of the Specification and
the Declaration of Prashant Shenoy, Ph.D. (Ex. 2012, “Shenoy Decl.”), that
if a database block does not include metadata, the system disclosed in the
’808 patent would not work as described. PO Resp. 17–18. For example,
Patent Owner argues that a database block must include metadata because
the disclosed system analyzes the metadata of each block to store only the
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incremental changes made to the production database (id. (citing Ex. 1001,
col. 13, ll. 34–46, 46–51)), which is “one of the main functions” of the
claimed system (id. at 17 (citing Ex. 1001, col. 6, ll. 34–46, 43–46, col. 7,
ll. 49–57; Ex. 2012 ¶¶ 76, 79–80)) essential to achieving “a main purpose”
of the invention—“to efficiently provide virtual database . . . without
proliferating redundant copies of database data” (id. (citing Ex. 2012 ¶¶ 63–
67)). Patent Owner also asserts that metadata is required in each database
block in order to map the block to a database file and a location within that
file. Id. at 18 (citing Ex. 1001, col. 14, ll. 27–31; Ex. 2012 ¶¶ 76, 81).
Patent Owner’s argument is unpersuasive because the argued
advantages or purposes are not recited features of the claims. Moreover, a
claim is not required to encompass all of the advantages or purposes of the
invention. See Howmedica Osteonics Corp. v. Wright Med. Tech., Inc., 540
F.3d 1337, 1345 (Fed. Cir. 2008) (“An invention may possess a number of
advantages or purposes, and there is no requirement that every claim
directed to that invention be limited to encompass all of them.”) (citations
omitted).
Furthermore, the disclosure in the passages cited by Patent Owner
above is not limiting because the passages describe a particular embodiment
of making a point-in-time copy of the production database by streaming data
to the database storage system, where the data stream is formatted to include
metadata in each transmitted database block. As noted by Petitioner (Pet.
Reply 8), the ’808 patent discloses an alternative embodiment where the
transfer of production database data is achieved by “using a file sharing
system similar to the file sharing system 120” (Ex. 1001, col. 7, ll. 57–64),
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such as a network file system (NFS) (id. at col. 10, ll. 35–37). As discussed
below, there is no disclosure in the written description that requires metadata
in each database block used in the file sharing embodiment.
In “the streaming embodiment,” which is depicted in Figures 4 and 5
and described in column 12, line 14 to column 14, line 67 of the ’808 patent
(see id. at col. 3, ll. 28–37 (describing Figures 4 and 5 as “an embodiment of
the invention”)), the production database system, upon receiving a request
for data from the point-in-time copy manager of the database storage system
(id. at col. 12, ll. 19–23), packages the production database data “into a
format that can be processed by the point-in-time copy manager” (id. at
col. 12, ll. 58–62) and builds the appropriately formatted data into a data
stream that is sent to the point-in-time copy manager. Id. at col. 12, l. 62–
col. 13, l. 3. Upon receiving the data stream, the point-in-time copy
manager processes the data stream to identify database blocks contained in
it. Id. at col. 13, ll. 27–33. In the data stream, “[e]ach database block
includes metadata” (id. at col. 13, ll. 33–34), which is used, for example, to
“identify database block boundaries in the stream of data” (id. at col. 14,
ll. 22–25). When saving a retrieved database block into a transferred or
copied database file on the database storage system, the point-in-time copy
manager “analyzes the database block metadata to map [] the database block
to [the] database file and a location within the file.” Id. at col. 14, ll. 29–31.
We find nothing in this disclosure regarding the streaming
embodiment that limits the claimed invention as Patent Owner contends.
For example, it may be necessary to include metadata in each database block
transmitted on a data stream in order to identify and unpack database blocks
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from a continuous stream of data that has no apparent structure or
boundaries. But this does not show that the same approach is necessary in a
file sharing embodiment where the database files to be copied have defined
boundaries and known structures, and the database blocks stored in the files
can be accessed directly. See, e.g., id. at col. 13, ll. 10–12 (“the production
system library [] includes code to analyze the structures of the files of the
database stored in the data store and also includes code to process metadata
associated with database blocks stored in the data store”) (emphasis added);8
col. 6, ll. 11–17 (“FIG. 1 illustrates one embodiment for how information
may be copied from a production database to a database storage system . . .
using a file sharing system. . . . In some embodiments information may be
copied from storage level snapshots of production databases.”) (emphases
added). Further, the fact that the streaming embodiment uses metadata to
map the database blocks unpacked from a data stream to a copied database
file for storage does not require database blocks used in the file sharing
embodiment to have metadata because, when file sharing is used, the
database file on the production system can be accessed and copied directly
by “mounting the production DB data store” on the database storage system
(id. at col. 7, ll. 57–64) without packing and unpacking the database blocks
of the database file into and out of data streams.
Furthermore, contrary to Patent Owner’s argument, analyzing the
metadata of each database block in the data stream is not necessary to
achieve incremental updates because the passages cited by Patent Owner

8 The phrase “metadata associated with database blocks” implies any
metadata need not be in the database blocks.
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describe only one of the two embodiments disclosed in the ’808 patent for
achieving the incremental copy function. In the embodiment relied upon by
Patent Owner, the data stream may include unnecessary database blocks,
such as the blocks that did not change since the last point-in-time copy was
transmitted, which are eliminated after the data stream is received at the
database storage system by analyzing metadata for each database block. Id.
at col. 13, ll. 43–64. In an alternative embodiment, which is not addressed
by Patent Owner, the unchanged blocks are eliminated at the production
system and never sent to the database storage system. Id. at col. 13, l. 64–
col. 14, l. 3 (“In other [sic] embodiment, some or all of the unnecessary
blocks may be eliminated while the data stream is built by the production
system library []. In this embodiment, the data stream . . . is reduced in size
resulting in efficient communication between [the production system and the
database storage system].”) (emphases added). Patent Owner does not
explain why metadata must be included in each database block to achieve
the incremental update function in this embodiment. Hence, packing
metadata within database blocks may be involved in some streaming
embodiments, but nothing in the Specification indicates it is required for the
incremental update function. Therefore, there is nothing in the Specification
that indicates that copying database files by streaming data is the essence of
the claimed invention rather than a preferred embodiment, which may not be
read into the claims “absent clear disclaimer in the specification.” In re Am.
Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004).
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c. Other Intrinsic Evidence
Considering “the context of the surrounding words” to the term
“database block” in the claims, which “must be considered in determining
the ordinary and customary meaning” of the disputed term, ACTV, Inc. v.
Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003), independent claims
1, 50, and 57 recite receiving point-in-time copies of a source database and
storing database blocks associated with the received point-in-time copies on
a storage system. But the claims do not say anything about a particular
method of transferring point-in-time copies, whether by streaming or by file
sharing. Hence, the claims cannot be limited to either embodiment, and,
therefore, the streaming embodiment cited by Patent Owner does not limit
the claims.
In addition, consideration of differences among the claims of the ’808
patent supports the conclusion that the passages Patent Owner cited are not
limiting. Claim 29, which depends from claim 1, recites “receiving point-in-
time copies” by “receiving data streams” which comprise “data from
database blocks.” Claims 32, 33, and 34 each depend from claim 29 and
additionally recite “identify[ing] database blocks” in the data streams,
“analyzing the metadata of database blocks to determine the length of the
database blocks” (claim 32), “analyzing the metadata of database blocks to
determine whether the database block needs to be stored” (claim 33), and
“determining not to store the database blocks that . . . did not change since a
previous retrieval of point-in-time copy” (claim 34). Hence, the subject
matter specifically claimed in these dependent claims correspond to the
written description in the Specification relating to the streaming embodiment
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discussed above. See Shenoy Decl. (Ex. 2012) ¶ 80; PO Resp. 17 (citing
Shenoy Decl. ¶ 80).
Claim 1, from which these claims depend, is presumed to be broader
and not limited by the additional limitations relating to streaming recited in
these dependent claims. “[I]n a situation where dependent claims have no
meaningful difference other than an added limitation, the independent claim
is not restricted by the added limitation in the dependent claim.” Trustees of
Columbia Univ. v. Symantec Corp., 811 F.3d 1359, 1370 (Fed. Cir. 2016)
(citing Phillips, 415 F.3d at 1314–15; Acumed LLC v. Stryker Corp., 483
F.3d 800, 806 (Fed. Cir. 2007)). Therefore, claim 1 cannot be read, absent
other evidence, to be limited to the streaming embodiment, and, accordingly,
the passages cited by Patent Owner relating to the streaming embodiment do
not limit claim 1 to require a “database block” to have “metadata.” See
Columbia Univ., 811 F.3d at 1370 (holding that, in the absence of rebutting
evidence, a disputed term recited in claim 1 cannot be read to be limited to
use only the type of data recited in dependent claims because the dependent
claims are presumed to be narrower than the independent claims on which
they depend); see also Toshiba Corp. v. Imation Corp., 681 F.3d 1358,
1368–69 (Fed. Cir. 2012) (construing claim 1 to read on both single-sided
and double-sided discs when the plain language of the claim is broad and a
dependent claim added a requirement specifically reciting the number of
disc sides).
Patent Owner’s argument is deficient in another aspect—namely, its
failure to address database blocks outside the context of data streams. The
database blocks transmitted in a data stream described in the passages cited
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by Patent Owner are in transit between the production system and the
database storage system. But, as discussed above, the challenged
independent claims recite, in addition to receiving point-in-time copies of a
database, storing database blocks on a storage system. Patent Owner does
not cite, nor do we discern, anything in the Detailed Description section of
the Specification that requires metadata in database blocks that are stored in
storage—that is, database blocks stored in the production database system
before being packaged and formatted into the data stream or stored in the
database storage system after being unpacked from the received data stream.
Contrary to Patent Owner’s contention, the written description in fact
suggests metadata need not be included in stored database blocks. For
example, the ’808 patent describes storing database blocks unpacked from
data stream as follows: “The file in which the database block is saved
comprises a file header including metadata associated with the file and a
sequence of database blocks.” Ex. 1001, col. 14, ll. 44–47. This passage
suggests that the metadata can be stored in the file header separately from
the series of database blocks stored in the body of the file. In sum, we find
no disclosure in the Detailed Description section of the Specification that
clearly and consistently describes the claimed invention as requiring
metadata in all database blocks.
Therefore, in view of the entire disclosure of the ’808 patent and the
plain language of the claims, we find, notwithstanding the statement in the
Summary section relied upon by Patent Owner—“[a] portion of the database
block stores metadata associated with the database block” (id. at col. 2,
ll. 10–12)—that the intrinsic record does not justify limiting the term
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“database block” by reading in the “metadata” limitation not found in the
claims. See Liebel-Flarsheim, 358 F.3d at 908; MEMS, 447 F. App’x at 151.
d. Extrinsic Evidence
Patent Owner also argues additional evidence supports a limiting
construction. For example, citing the testimony of Dr. Shenoy and the
testimony of Petitioner’s expert, Dr. Zadok (Ex. 1019, “Zadok Decl.”),
Patent Owner asserts that all database management systems mentioned in the
’808 patent, such as Oracle and IBM DB2 (Ex. 1001, col. 5, ll. 4–8), require
metadata in database blocks. PO Resp. 20–21 (citing Ex. 2012 ¶¶ 41–46;
Ex. 1019, 58 n.11). In the paragraphs cited by Patent Owner, Dr. Shenoy
discusses various documents describing the database systems listed in the
’808 patent, including Oracle, Sybase, Microsoft SQL Server, and IBM
DB2, and testifies that these database systems all require metadata in
database blocks.9 Ex. 2012 ¶¶ 43–46. The evidence presented by Patent
Owner in support of its argument—i.e., testimony of experts and documents
describing the commercially available database systems listed in the ’808
patent—is more properly characterized as extrinsic evidence. Such extrinsic
evidence is “less significant than the intrinsic record in determining the
legally operative meaning of claim language.” Phillips, 415 F.3d at 1317
(citations omitted) (internal quotation marks omitted). Even if the external
documents discussed by Dr. Shenoy are deemed to describe embodiments of
the ’808 patent, the evidence would be insufficient to limit the term

9 However, neither Patent Owner’s brief nor Dr. Shenoy discusses the
MYSQL database system mentioned in the ’808 patent.
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“database block” because reading in the “metadata” limitation not found in
the claims from preferred embodiments is improper. See Cadence Pharm.
Inc. v. Exela PharmSci Inc., 780 F.3d 1364, 1369 (Fed. Cir. 2015) (“[E]ven
if all of the embodiments discussed in the patent included a specific
limitation, it would not be proper to import from the patent’s written
description limitations that are not found in the claims themselves.”)
(emphasis added) (citations omitted) (internal quotation marks omitted); see
also Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1322 (Fed. Cir. 2012) (“The
disclosure of multiple examples does not necessarily mean that such list is
exhaustive or that non-enumerated examples should be excluded.”).
Moreover, Petitioner points to testimony from Dr. Zadok contradicting Dr.
Shenoy’s testimony. Pet. Reply 9–10 (citing Ex. 1065 ¶¶ 13–20). Dr.
Zadok explains that at least Oracle and IBM DB2 databases also include
database blocks without metadata and concludes that “[t]he ordinary
meaning of the term ‘database block’ does not include metadata.” Ex. 1065
¶ 13.
Relying upon the testimony of Dr. Shenoy, Patent Owner also asserts
that “it is well known to one skilled in the art that a database block
necessarily includes metadata.” PO Resp. 21 (citing Ex. 2012 ¶¶ 41–46);
see also id. at 17 (“[T]hat database blocks include metadata is consistent
with the ordinary meaning of the term in the database field and comports
with how the term is used by every major database system provider.”) (citing
Ex. 2012 ¶¶ 41–46, 74). In his Declaration, in addition to the documents
describing various commercially available database systems, Dr. Shenoy
also discusses a treatise on database systems (Ex. 2009, “Molina”) and
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testifies that it is generally understood that a database block or a page will
include metadata. Ex. 2012 ¶ 41–42 (citing Ex. 2009, 29, 31). The portion
of the Molina treatise cited by Dr. Shenoy, however, appears to describe
features of a relational database system, not characteristics common to all
databases in general. See, e.g., Ex. 2009, 29 (“Collections such as relations
are usually represented by placing the records that represent their data
elements in one or more blocks.”) (emphasis added), 31 (“Records
representing tuples of a relation are stored in blocks of the disk . . . there is a
block header holding information such as: . . . Information about which
relation the tuples of this block belong to.”) (first and last emphases added).
In fact, Petitioner argues that Patent Owner does not provide any
evidence that database blocks require metadata in database systems other
than relational database systems. See Pet. Reply 10. Petitioner correctly
points out that the ’808 patent Specification states that the disclosed
invention “can be used for any database.” Id. (quoting Ex. 1001, col. 5,
ll. 13–15) (emphasis by Petitioner). Indeed, the ’808 patent states that “[a]
database may be implemented using a database model, for example, a
relational mode, object model, hierarchical mode or network model” and
goes on to state that “the techniques disclosed can be used for any database.”
Ex. 1001, col. 5, ll. 8–15. Thus, we agree with Petitioner that the ’808
patent does not limit its disclosed invention to relational database
technology.
Relying on the testimony of Dr. Zadok submitted with its Reply
(Ex. 1065, “Supp. Zadok Decl.”), Petitioner asserts that, in other types of
database systems, such as Google’s BigTable database, metadata is stored
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separately from the database blocks.10 Pet. Reply 10–11 (citing Ex. 1051, 4;
Ex. 1065 ¶ 22). Petitioner also argues, citing the testimony of Dr. Zadok and
another treatise on database systems (Ex. 1052, “Elmasri”), that a “flat file
database,” such as a comma separated value (CSV) file used by spreadsheet
applications, does not have metadata in its blocks. Pet. Reply 11 (citing
Ex. 1065 ¶¶ 23–24, Ex. 1052, 431). Therefore, Petitioner asserts that the
ordinary meaning of database block does not require including metadata.
See id., Ex. 1065 ¶ 25.
We agree with Petitioner that all extrinsic evidence Patent Owner
relies upon to argue for a limited ordinary meaning appears to be directed to
relational databases. Because the challenged claims plainly recite
“database,” and, therefore, are not limited to relational databases, Patent
Owner’s evidence, even assuming it shows relational databases all have
database blocks that require metadata, does not establish an ordinary and
customary meaning of “database blocks” recited in the claims. Therefore,
we find Patent Owner’s extrinsic evidence regarding ordinary meaning does
not overcome the intrinsic record of this case. See Phillips, 415 F.3d at 1318

10 Petitioner argues the definition of a “database” proposed by Patent
Owner’s expert, “a collection of data that is organized so that it can be easily
accessed, managed or updated,” encompasses many types of databases other
than the relational databases. See Pet. Reply 10–11 (citing Ex. 2012
(Shenoy Decl.) ¶ 33). In addition, the ’808 patent describes broadly that “[a]
database comprises data stored in a computer for use by computer
implemented applications.” Ex. 1001, col. 4, l. 67–col. 5, l. 1. Under either
the ’808 patent’s description or Dr. Shenoy’s testimony, we agree with
Petitioner that a “database” encompasses many types of databases other than
the relational databases, including Google’s BigTable, spreadsheet
databases, and flat files.
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(“[A] court should discount any expert testimony that is clearly at odds with
the claim construction mandated by the claims themselves, the written
description, and the prosecution history, in other words, with the written
record of the patent.”) (citation omitted) (internal quotation marks omitted).
Furthermore, we are persuaded by Petitioner’s evidence that certain well-
known databases, such as Google’s BigTable database, do not require
metadata in database blocks, and, therefore, find that the evidence in this
case does not establish a widely accepted meaning of “database block” in the
field of database systems that requires metadata to be necessarily included in
a database block.
Moreover, notwithstanding the competing extrinsic evidence
regarding ordinary meaning from the parties, our focus in claim construction
must properly remain with the written description and the language of the
claims. See Kara Tech. Inc. v. Stamps.com Inc., 582 F.3d 1341, 1348 (Fed.
Cir. 2009) (“It is not uncommon in patent cases to have [] dueling experts.
When construing claims, however, the intrinsic evidence and particularly the
claim language are the primary resources.”). Upon weighing the competing
extrinsic evidence regarding ordinary meaning from the parties and in view
of our analysis of the written description and claim language discussed
above, we find Patent Owner’s extrinsic evidence is not sufficient to
overcome the plain language of the claims and, therefore, decline to read the
“metadata” limitation into the term “database block.” See id. (finding the
testimony of an expert cannot overcome the plain language of the claims and
rejecting a proposed construction that limits a claim term by reading in a
limitation not recited in the claims); see also Phillips, 415 F.3d at 1321
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(“Properly viewed, the ‘ordinary meaning’ of a claim term is its meaning to
the ordinary artisan after reading the entire patent.”).
2. “Application Level” vs. “Storage Level” Distinction
Patent Owner next argues that a “database block” must include
metadata because “the ’808 patent describes an application level system that
understands database blocks and uses metadata in those database blocks to
determine whether to store database blocks and where to store them.” PO
Resp. 27 (emphasis added); see also id. at 14 (making the same argument).
Patent Owner asserts, therefore, a “database block” cannot be a “storage
level unit of data.” Id. at 23, 27 (emphasis added). Patent Owner cites
passages in the ’808 patent in support of its argument. Id. at 14 (citing
Ex. 1001, col. 13, ll. 27–41, 43–60). The cited passages, however, describe
processing of database blocks in a stream of data in the streaming
embodiment and, therefore, do not limit the challenged claims as discussed
above. Furthermore, the cited passages relate to a particular method, i.e.,
data streaming, of transferring or copying the production database data to the
storage database system—an alternative method being data transfer by file
sharing—and do not relate to whether a “database block” is an “application
level” or “storage level” entity or concept. Therefore, Patent Owner’s
argument is unpersuasive.
Patent Owner also asserts that the system of the ’808 patent “operates
at the application level” because the system uses APIs (application program
interfaces) to copy database blocks. Id. at 14 (citing Ex. 1001, col. 7, ll. 41–
52). Petitioner argues that Patent Owner’s argument is contrary to disclosed
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embodiments of the ’808 patent because the patent teaches the system “may
retrieve the necessary database blocks from storage level snapshots of
production databases.” Pet. Reply 13 (citing Ex. 1001, col. 8, ll. 33–37)
(emphasis by Petitioner). We agree with Petitioner’s argument and further
note that the ’808 patent also discloses copying of database blocks from
storage level snapshots of a database. See Ex. 1001, col. 6, ll. 11–17
(“FIG. 1 illustrates one embodiment for how information may be copied
from a production database to a database storage system . . . using a file
sharing system. . . . In some embodiments information may be copied from
storage level snapshots of production databases.”) (emphases added). More
importantly, Patent Owner does not explain why the fact that the system of
the ’808 patent uses APIs to access database blocks necessarily requires the
database blocks to include metadata. For example, Patent Owner does not
identify, nor do we discern, anything in the written description that explains
why the APIs cannot access and process metadata that is stored separately
from database blocks.
Patent Owner further relies upon the testimony of Dr. Shenoy and
external documents to argue that a “database block” is an “application level”
entity, which is different from a “file system block,” an “operating system
block,” or a “storage level” unit of data. PO Resp. 23–27 (citing Ex. 2012
¶¶ 47, 122–35). In particular, Patent Owner asserts that an Oracle document
(Ex. 2002, “Oracle Manual”) explains this “well-known distinction.” Id. at
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23–24 (citing Ex. 2002, 250, Fig. 12-5).11 Patent Owner further argues
“neither are file system blocks accessible to a database nor are database
blocks accessible to the file system.” Id. at 26 (citing Ex. 2012 ¶¶ 122–35).
Therefore, Patent Owner argues a construction of the term “database block”
that encompasses a storage unit block is incorrect. Id. at 27.
As a threshold matter, we note that the Oracle Manual document is
dated May, 2014, which is several years later than the filing date of the ’808
patent. Hence, the Oracle document is not probative of what was known to
one of ordinary skill in the art at the time of the invention. More
importantly, as discussed above, we find the written description of the ’808
patent does not support a limiting construction of the term “database block”
based on the purported “application level” versus “storage level” distinction.
Further, we do not find any disclosure in the Specification that describes or
discusses whether a “database block” is an “application level” entity or
construct. Hence, we find the testimony of Dr. Shenoy and the external
documents discussed by Patent Owner regarding the “application level”
versus “storage level” distinction to be largely divorced from the written
description, and, therefore, insufficient to overcome the plain language of
the claims. See Kara Tech., 582 F.3d at 1348; Phillips, 415 F.3d at 1318.
3. Database Blocks, Blocks of Data, and Data Blocks
Citing the testimony of Dr. Zadok, Petitioner asserts that, while the
’808 patent never mentions the term “application level,” the “database

11 The page numbers for Exhibit 2002 refer to the page numbers inserted by
Patent Owner at the bottom of each page.
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blocks” recited in the challenged claims in fact encompass storage level
“data blocks,” contrary to Patent Owner’s contention. Pet. Reply 7–8 (citing
Ex. 1065 ¶ 8). In support of its argument, Petitioner cites the passages in the
’808 patent showing the patent uses “database block” interchangeably with a
“block of data.” Id. at 11 (citing Ex. 1001, col. 10, ll. 13–23). Citing the
testimony of Dr. Zadok, Petitioner asserts that a “block of data” is a broad
term that refers to any block, including a storage level disk block. Id. (citing
Ex. 1065 ¶ 26). Petitioner also points to Patent Owner’s patents that
“repeatedly use [the terms ‘database blocks’ and ‘data blocks’]
interchangeably.” Id. at 7–8 (citing Ex. 1042, col. 15, l. 66–col. 16, l. 18;
Ex. 1058 ¶ 52).12
Patent Owner asserts that the ’808 patent Specification does not use
the terms “database blocks” and “blocks”—that is, “data blocks” or “blocks
of data”—interchangeably. See PO Resp. 19. Patent Owner argues that the
’808 patent uses “blocks” in the context of “blocks of virtual database files
that point to database blocks” or uses the term “database block” and “then
uses the word ‘block’ as shorthand to refer to these database blocks.” Id. at
19–20.
The record supports Petitioner and does not support Patent Owner.
Patent Owner’s argument does not account for the complete disclosure of the
’808 patent, which provides multiple examples of using “blocks” or “blocks
of data” interchangeably with “database blocks.” For example, the ’808
patent states “[t]he database blocks retrieved by a point in time copy

12 Exhibit 1042 is U.S. Patent No. 8,468,174 B1, which is the subject of a
related proceeding IPR2015-00128.
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manager 310 . . . can be used to reconstruct a copy of a database in the
production system 110.” Ex. 1001, col. 10, ll. 6–10 (emphasis added). In
the very next paragraph, the ’808 patent continues this discussion by stating
that “the point-in-time copy manager 310 may call APIs of storage
allocation manager to save blocks of data retrieved from the production
database system 110” and that “[t]he storage allocation manager 365 keeps
track of the various versions of each block of data that may be obtained from
the production database system 110.” Id. at col. 10, ll. 14–19 (emphases
added). The rest of the paragraph describes managing point-in-time copies
of “blocks of data” obtained from the production database system as well as
copying, reading, and writing to the “blocks of data.” Id. at col. 10, ll. 19–
30. The disclosure in this paragraph parallels the disclosure in another part
of the ’808 patent Specification that describes saving and managing of
“database blocks” by point-in-time copy manager 310 and storage allocation
manager 365. See id. at col. 14, ll. 32–44 (“The point-in-time copy manager
310 sends 435 a request to the storage allocation manager 365 to save 535
the database block. . . . The storage allocation manager 365 may keep
several different versions of the database block in the storage system data
store 390 . . . if it is updated at different points in time.”) (emphases added).
Hence, the ’808 patent uses the terms “block of data” and “database blocks”
interchangeably.
Patent Owner admits that “‘data blocks’ refer to blocks of data stored
on a disk and manipulated by the file system.” PO Resp. 24 n.7 (emphasis
added). Therefore, the ’808 patent Specification does not distinguish
between data blocks, blocks of data, and database blocks. This implies that
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the terms have similar meanings in the context of the ’808 patent. Based on
the foregoing, we are persuaded that the “database blocks” recited in the
challenged claims do not exclude storage level data blocks, and, therefore,
need not include metadata.
4. Whether a Database Block Must Have a Specific Number of Bytes
In the Institution Decision, we found that database blocks of the ’808
patent need not store metadata or have a specific number of bytes stored in
storage because an empty database block would not have metadata or “a
specific number of bytes stored in storage.” Inst. Dec. 9. Citing the
testimony of Dr. Shenoy and the passages in the ’808 patent describing the
streaming embodiment, Patent Owner continues to argue that this is a
requirement of the proper construction of “database blocks.” PO Resp. 18–
19 (citing Ex. 1001, col. 13, ll. 43–50, 53–56; Ex. 2012 ¶¶ 77, 79, 80).
Patent Owner’s argument is unpersuasive because, as discussed
above, the streaming embodiment cited by Patent Owner does not limit the
claims to require metadata in database blocks. Furthermore, Patent Owner
does not explain how to interpret “a specific number of bytes stored in
storage.” For example, it is not clear if “a specific number” is a constant. In
another argument, Patent Owner states that “[d]atabase blocks may be
implemented as any number of different sizes independently of the size of
the file system data blocks which may ultimately store the database data.”
Id. at 29 (emphasis added) (citing Ex. 2012 ¶¶ 122–35). Patent Owner also
states that “an IBM DB2 database page can be up to 32KB in size, spanning
8 WAFL data blocks, most of which will not contain any metadata for the
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database page.” Id. at 25 (citing Ex. 2012 ¶ 129). Hence, according to
Patent Owner’s arguments, a database block may be of “any number of
different sizes.” Id. at 26. Therefore, database blocks of the ’808 patent
need not store metadata or have a constant specific number of bytes stored in
storage.
5. “Database Block” vs. “File” Distinction
Next, Patent Owner argues that the construction proposed by
Petitioner (Pet. 10) and preliminarily adopted in our Institution Decision
(Inst. Dec. 11)—“a unit of data used by a database”—is improper because it
would equate a “database block” with a “file.” PO Resp. 22–23. Citing
dictionaries, Patent Owner argues that the ordinary meaning of “file” is “a
unit of data.” Id. at 23 (citing Ex. 2014, 3; Ex. 2015, 3). Patent Owner
further asserts that our preliminary construction incorrectly encompasses a
log file described in the Specification because a log file is also “a unit of
data used by database.” Id.
Petitioner argues, citing the deposition testimony of Patent Owner’s
expert, Dr. Shenoy, Patent Owner is incorrect because a file has a name
associated with it but a database block, as construed by Petitioner, would
not. Pet. Reply 13 (citing Ex. 1033, 261:19–20, 262:8–9). We agree with
Petitioner that defining a database block as “a unit of data used by a
database” does not equate a database block with a file.
First, a file is not necessarily “a unit of data used by a database”
because not all files are used by a database. Conversely, the phrase “a unit
of data used by a database” is not sufficient to describe a file because a file
has additional properties or characteristics, such as a unique file name. In
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fact, the full definitions of a “file” provided in the Patent Owner cited
dictionaries, including the portions Patent Owner had omitted when quoting
the sources in the Patent Owner Response, show that a file name is a
required attribute of a file. See Ex. 2014, 3 (defining “file” as “[a] document
or other collection of information stored on a disk and identified as a unit by
a unique name”), Ex. 2015, 3 (defining “file” as “[a] collection of data or
information that is stored as a unit in the computer under a single name,
called the file name”) (the portions omitted by Patent Owner indicated with
bold emphasis). Hence, the fact that a definition of a “database block” reads
on some “files,” such as a log file used by a database, does not mean the
definition equates the two terms because a file has additional properties or
characteristics, such as a file name.
6. Conclusion
In summary, we find nothing in the intrinsic record, including the
written description and the language of the claims, that justifies limiting the
term “database block” by reading in the “metadata” or “specific number of
bytes” limitations not found in the claims. Furthermore, no extrinsic
evidence, including the testimony of experts, presented in this case is
sufficient to overcome the plain claim language of the term “database
block.” Therefore, on this record, consistent with the term as defined in the
Specification, we construe “database block” to mean “a unit of data used by
a database.” See Phillips, 415 F.3d at 1316 (“The construction that stays
true to the claim language and most naturally aligns with the patent’s
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description of the invention will be, in the end, the correct construction.”)
(citation omitted).
B. Virtual Database
In the Institution Decision, we preliminarily construed the term
“virtual database” to mean “a set of database files capable of being read
from and written to, and capable of being mapped to physical addresses for
stored database blocks.” Inst. Dec. 17. Petitioner agrees with this
construction. Pet. Reply 14. Patent Owner, on the other hand, asserts that
this definition reads out the “virtual” requirement. PO Resp. 30. Patent
Owner proposes that the term, instead, should be interpreted to mean “a set
of files to which a database server can read and write such that the physical
implementation of the database files is decoupled from the logical use of the
database files by the database server.” Id. at 27.
To unpack the language of Patent Owner’s proposed construction for
further analysis, Patent Owner defines a virtual database as “a set of files”
and modifies the definition with two phrases, each expressing a concept
involving a database server: (1) “a database server can read and write” to the
set of files, and (2) referring to the set of files as “database files,” “the
physical implementation of the database files is decoupled from the logical
use of the database files by the database server.” We address each proposed
modifying phrase in turn.
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1. Whether Reading and Writing by “a Database Server” Is Necessary
Patent Owner argues that the point of the first proposed modifying
phrase is to “require[] something of the files . . . that they are of a form
readable and writable by a database server.” PO Resp. 31. In other words,
the main thrust of Patent Owner’s proposed phrase is that a database server
can read from and write to a set of files.
Challenged independent claims 1, 50, and 57 specifically recite
“allowing the database server to read from and write to the set of files
[associated with the virtual database],” which encompasses essentially the
same concept as Patent Owner’s proposed phrase. Hence, including the
phrase “a database server can read and write [to a set of files]” in the
definition of the stand-alone term “virtual database” as an inherent attribute
of the term would render the recited limitation superfluous. Such a
construction is presumed improper. See Digital-Vending Servs. Int’l, LLC v.
Univ. of Phoenix, Inc., 672 F.3d 1270, 1274–75 (Fed. Cir. 2012) (rejecting
the district court’s construction narrowing a term by a superfluous limitation
when the claims explicitly recited the narrowing limitation, and discussing
the “well-established rule that claims are interpreted with an eye toward
giving effect to all terms in the claim”) (quoting Bicon, Inc. v. Straumann
Co., 441 F.3d 945, 950 (Fed. Cir. 2006)) (internal quotation marks omitted);
LSI Indus., Inc. v. ImagePoint, Inc., 279 F. App’x 964, 972 (Fed. Cir. 2008)
(nonprecedential) (rejecting the district court’s construction of “display
device” as necessarily including the superfluous limitation of “internal
illumination” because other claim terms specifically recited an “illuminated
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display device”); but cf. ERBE Elektromedizin GmbH v. Canady Tech. LLC,
629 F.3d 1278, 1286 (Fed. Cir. 2010) (“no canon of [claim] construction is
absolute in its application”) (citation omitted).
Patent Owner also argues that requiring a “database server” to be able
to read “a set of files” is necessary to clarify that “a set of files” in its
proposed definition must be “database files.” PO Resp. 31. Patent Owner’s
argument is unpersuasive because our construction already requires a virtual
database to include “a set of database files.” The ’808 patent tracks our
construction and describes that a virtual database comprises “database files.”
See, e.g., Ex. 1001, col. 5, ll. 18–21 (“The virtual databases are ‘virtual’ in
the sense that the physical implementation of the database files is decoupled
from the logical use of the database files by a database server.”), 39–40 (“A
virtual database may be created on a database server by creating the
database files . . . .”) (emphases added).
Patent Owner further argues that “[t]o be a database file, a database
server must be able to read, write and understand its contents.” PO Resp. 31
(citing Ex. 2012 ¶ 96). As noted above, claim 1 specifies that a database
server can read from and write to the set of files for a virtual database. To
the extent Patent Owner is arguing only database servers can use database
files (see id. 42 (“only the database server has knowledge of and manipulates
the database block”) (emphasis added); Ex. 2012 ¶ 125 (“The database
blocks [are] used only by the database server at the application level.”)
(emphasis added)), Patent Owner’s argument does not comport with the
written description of the ’808 patent. The ’808 patent provides a
description of a “database” as follows: “[a] database comprises data stored
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in a computer for use by computer implemented applications.” Ex. 1001,
col. 4, l. 67–col. 5, l. 1 (emphasis added). During the hearing, Patent Owner
clarified that that a database server in its proposed construction “is used
synonymously . . . with database application.” Tr. 184:1–185:12. In line
with Patent Owner’s acknowledgement at the oral hearing, the ’808 patent,
and the meaning of a database, a database file may be used by any
application or program, not just a “database server.” To the extent Patent
Owner argues “database files” are limited to data files used in relational
database systems, such as the Oracle database system, that can be
understood only by a relational database server, such as the Oracle database
server, see, e.g., Ex. 2012 ¶ 125 (quoted above) (citing an Oracle technical
document (Ex. 2001) describing the features of “the Oracle database server,
an object-relational database management system” (Ex. 2001, 25) (emphasis
added)),13 Patent Owner’s argument is unpersuasive because “database”
recited in the challenged claims is not limited to a relational database for the
reasons discussed above in Section III.A.1.d.
The Specification makes clear that the readable and writable
characteristics are inherent attributes of a virtual database. See, e.g., Ex.
1001, col. 18, ll. 27–28 (“FIG. 10 indicates how storage efficient copies are
made to create a read/write file structure representing a VDB.”); col. 17,
ll. 57–63 (“The virtual database manager [] identifies [] the recent most PIT
copy associated with time Tj . . . The read/write file structure [] is created []
by making storage efficient copies of the database blocks in the identified

13 The page numbers for Exhibits 2001 refer to the page numbers inserted by
Patent Owner at the bottom of each page.
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PIT copy.”); col. 18, ll. 12–15 (“The virtual database manager [] sends . . .
handles to the read/write file structure to the associated virtual database
system 130.”) (emphases added). Thus, a virtual database must comprise
readable and writable database files. However, the phrase “database files”
need not be further modified to indicate that the files are intended for use by
a computer program because the concept is already included in the
description of “database” provided in the Specification, as discussed above.
Therefore, the term “virtual database” is properly construed, to have as the
base phrase of its definition, “a set of readable and writable database files.”
2. The Meaning of the Phrase
“the Physical Implementation of the Database Files is Decoupled from
the Logical Use of the Database Files by the Database Server”
Patent Owner relies on the following sentence in the ’808 patent to
support the second proposed modifying phrase, i.e., the “decoupled” aspect,
of its proposed construction: “virtual databases are ‘virtual’ in the sense that
the physical implementation of the database files is decoupled from the
logical use of the database files by a database server.” PO Resp. 28 (quoting
Ex. 1001, col. 5, ll. 18–21). Patent Owner asserts this sentence explicitly
defines the use of the word “virtual” in the term “virtual database.” Id.
However, the ’808 patent does not describe expressly what it means for “the
physical implementation of the database files [to be] decoupled from the
logical use of the database files by a database server.” Citing the testimony
of Dr. Shenoy, Patent Owner asserts the cited sentence describes one of the
key features of the invention of the ’808 patent, which is applying the
general concept of virtualization—“the decoupling of a computing process
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from the platform on which it operates”—to databases. Id. (emphases
added) (citing Ex. 2012 ¶¶ 23–26, 63–70, 87–90). Petitioner asserts Patent
Owner confuses “platform virtualization” with “database virtualization” or
“virtualizing data.” See Pet. Reply 15–16. We agree with Petitioner that
“platform virtualization” is unrelated to the concept of “virtual database” as
claimed and described in the ’808 patent.
In his Declaration, Dr. Shenoy testifies that the Java programming
language running on a Java Virtual Machine as described in an Oracle
document explains the general concept of platform virtualization. See
Ex. 2012 ¶¶ 23, 24 (citing Ex. 2001, 451–452, Fig. 24-7). Patent Owner’s
discussion of the Java Virtual Machine illustrates the basic problem with
Patent Owner’s argument—that it is directed to the features or functions of
software, not a database. For example, Dr. Shenoy explains that the
“decoupling [of] a computing process from the platform on which it
operates” is achieved by the Java Virtual Machine, which “is software that
emulates the operation and interface of a physical processor.” See Ex. 2012
¶¶ 23–24 (emphasis added). The ’808 patent also describes that a “virtual
machine” is “provided by platform virtualization software” or “server
virtualization software.” Ex. 1001, col. 7, ll. 16–19 (emphases added).
Further, the ’808 patent describes a Java Virtual Machine as part of
production database system 110 (Ex. 1001, col. 8, ll. 12–14), which is
separate from virtual database 220 stored on database storage system 100, as
discussed above in Section II.A. Hence, Patent Owner’s discussion of the
Java Virtual Machine may relate to database servers or other software of the
disclosed system, but it is not directed to a virtual database, which is a set of
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files as expressly recited in the claims and described in the Specification
(see, e.g., Ex. 1001, col. 6, ll. 49–51; Fig. 2a) and, therefore, is not
persuasive even as an analogy.
Other examples of “decoupling” Dr. Shenoy discusses similarly relate
to the function or operation of various software or programs, not database
files. For instance, Dr. Shenoy testifies that, because the system of the ’808
patent operates at the “application level” using APIs, the database storage
system of the invention does not depend on and need not concern itself with
the underlying details of the physical storage system. Ex. 2012 ¶¶ 69, 70
(quoting Ex. 1001, col. 7, ll. 47–52). The cited portion of the ’808 patent
describes, however, that the APIs are provided by “production system
library 385” and “vendor interface module 335,” which are programs or
software code modules residing at the production system. See, e.g., Ex.
1001, col. 7, ll. 52–55 (“An example of a vendor interface module is the
program code of a database server provided by vendor ORACLE that
implements RMAN APIs.”), col. 13, ll. 10–12 (“the production system
library 385 includes code to analyze the structures of the files of the database
stored in the data store 350”) (emphases added). In another instance, Patent
Owner cites the operation of file sharing manager 370, which is a program
or software module running at database storage system 100 (see Ex. 1001,
col. 9, ll. 38–42; col. 10, ll. 32–54; Fig. 3), as an example that “[t]he physical
implementation of the files that are created to implement the virtual database
is thereby decoupled from the logical use of the database files by a database
server.” See PO Resp. 15–16 (citing Ex. 1001, col. 10, ll. 50–54; Ex. 2012
¶¶ 70–71).
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In addition, Patent Owner relies upon the testimony of Dr. Shenoy
that “each database (130c)” depicted in Figure 1 of the ’808 patent is
“virtual” (Ex. 2012 ¶ 89). PO Resp. 28 (citing Ex. 2012 ¶ 89)). However,
Figure 1 shows 130c as the “Virtual Database System 130(c),” instead of the
disclosed virtual database, which is stored in a different system, namely,
Database Storage System 100. See Ex. 1001, Figs. 1, 2a, 2b. That is, virtual
database system 130 is separate from and external to virtual database 220.
Id. Further, the ’808 patent describes that virtual database system 130
includes no database or database files but, rather, comprises a database
server and a VDB system library, both of which are software modules or
programs. See Ex. 1001, col. 12, ll. 3–13 (“A virtual database system 130
includes a database server 360 and a VDB system library 380. . . . The VDB
system library 380 contains program code for processing requests sent by
the database storage system 100.”) (emphasis added); Fig. 3. Hence, Patent
Owner appears to conflate the function of the software of a virtual database
system with the meaning of “a virtual database,” which is a set of files that
resides in a database storage system that is separate from the virtual database
system.
Petitioner argues that Patent Owner’s platform virtualization argument
is misguided because it conflates the meaning of a “virtual database” with
the disclosed embodiments of production database system and the virtual
database system. Pet. Reply 16–17. We agree with Petitioner as discussed
above. Patent Owner’s arguments are directed to the software part of the
disclosed system that is separate from and external to a virtual database. As
described in the ’808 patent, a database system generally comprises a
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database, which is data stored in storage, and database software, such as a
database servers or other program that accesses the database. See Ex. 1001,
col. 4, l. 67–col. 5, l. 4; col. 7, ll. 35–57. Dr. Shenoy similarly describes a
database system as comprising a database and database software:
A database system is typically a computer that includes the
stored data itself, i.e. the database, as well as database
management software, often shortened to DBMS. A DBMS
includes software for accessing the data in the database and
modifying that data to add, remove or change stored data. A
DBMS may run as or include an autonomous program which
handles client requests to the database and which is often called
a database server.
Ex. 2012 ¶ 34 (emphases added). Hence, the platform virtualization or the
storage virtualization or abstraction argued by Patent Owner as
demonstrating what is meant by the phrase “the physical implementation of
the database files is decoupled from the logical use of the database files by a
database server” is a function or feature of the software part of a database
system—be it Java Virtual Machine, a database server, or various software
modules providing APIs—which is separate from and external to a database,
i.e., the data part of a database system. Therefore, contrary to Patent
Owner’s argument, virtualization of a computing platform or storage by
software is unrelated to and cannot be equated to virtualization of data, i.e.,
the subject matter claimed by the term “virtual database.”
In effect, Patent Owner’s platform virtualization argument calls for
improperly injecting the functional features of the software of the disclosed
system into the meaning of a virtual database, which is a set of files separate
from and external to the software part. A proper definition of the term
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“virtual database” must focus on the characteristics of the database file itself,
e.g., the structure of the database file, not the function of any particular
software embodied in the program instructions of the software program that
accesses the database file. If the patentee intended to claim the function or
the operation of the software of the disclosed system, it could have done so
by explicitly claiming the subject matter. Not having done so, Patent Owner
may not import the array of functions and intelligence embodied in the
described software into a single term “virtual database” to impart a very
different meaning to the claims from what is indicated by the plain language
of the claims and the written description of the patent. Patent Owner asserts
that, by discounting Patent Owner’s platform virtualization argument, the
preliminary construction reads out the “virtual” requirement from the term
“virtual database.” PO Resp. 30 (citing Inst. Dec. 17). Patent Owner’s
argument is unpersuasive because our refusal to read the functional features
of the software modules into the meaning of “virtual database” does not
equate reading out the word “virtual” from the term. On the contrary, as
discussed below, the preliminary construction is consistent with the
language of the claims and the written description of the ’808 patent.
Turning to the claim language and the written description pertaining
to the structure of virtual database files, the challenged independent claims
recite, with emphasis added, creating “a set of files for a virtual database,
each file in the set of files [is] linked to the database blocks on the storage
system associated with a point-in-time copy of the source database.”
Tracking the language of the claims, the Specification describes as follows:
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A set of files are created for a virtual database. Each file in the
set of files created for a VDB is linked to the database blocks on
the storage system associated with a point-in-time copy of the
source database.
Ex. 1001, col. 2, ll. 24–27 (emphasis added); see also id., Abstract (making
essentially the same statement). Hence, the database files of a virtual
database are linked or mapped to the database blocks associated with the
database being virtualized.
Looking to the Specification for further clarification, Figure 10 of the
’808 patent depicts “how . . . to create a read/write file structure representing
a VDB.” Id. at col. 18, ll. 27–28. When the VDB file structures are created,
“the blocks V11, V12, . . . , V25 may be implemented as pointers to the
actual database block that stores the data.” Id. at col. 18, ll. 47–49 (emphasis
added). The ’808 patent further describes:
For example, V11 represents the information in block F1 and
since the block F1 was never updated during copies made at
time T1 and T2, V11 points at F11. V12 represents the
information in block F2 and since F2 was updated at time T1,
V12 points at the block F22. Similarly, V13 corresponds to
block F3 that was updated at time T2 and points at the block
F33.
Id. at col. 18, ll. 49–55 (emphases added). Hence, blocks V11, V12, etc. of a
virtual database do not contain ordinary data, but, instead, point to the
location or address of the actual database blocks stored in a physical storage
device. Another example implies that writing to a pointing block in a
database file, such as V11, which is stored at one location, actually results in
writing to another physical block location such as F11: “For example, if the
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virtual database system 130 writes to the block V11, space is allocated and
block F11 copied to the allocated block.” Id. at col. 19, ll. 51–53. The ’808
patent further describes “[s]ince the [virtual database file] structure 1050
illustrated in FIG. 10, structure 1150 illustrated in FIG. 11, or structure 1350
illustrated in FIG. 13 are read/write structures, the virtual database system
130 is allowed to read from these structures as well as write to them.” Id. at
col. 19, ll. 44–48. Thus, the ’808 patent indicates that the database files are
“virtual” in the sense that they create the illusion of allowing data to be
written to pointing blocks in the virtual database files, but the system
actually writes the data elsewhere to another physical location specified by
the pointing blocks such as V11 and V12. See id. at col. 19, ll. 44–53,
Figs. 10–12.
Based on the disclosure in the ’808 patent describing the structure of
virtual database files, “the logical use of database files” can be understood as
reading from or writing to database blocks by reading from or writing to
virtual database file structures that point to the actual database blocks.
Hence, as described in the ’808 patent, decoupling of physical
implementation of the database files, i.e., actual database blocks stored on a
physical storage device, from the logical use of the database files, i.e.,
accessing the database blocks through virtual database files, is accomplished
by using pointers to map blocks in virtual database files to physical
addresses for database blocks stored in physical storage devices.
In fact, although not discussed in the Patent Owner Response, Dr.
Shenoy acknowledges that Figure 10 illustrates the “decoupling of the
physical storage of the database from its logical use” (Ex. 2012 ¶ 63) and
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that “the physical storage for the virtual database is decoupled from the
logical view of the database . . . by mapping blocks captured at various
points in time to [virtual database files]” (id. ¶ 94) (emphasis added).
Nonetheless, Patent Owner argues that the preliminary construction is
erroneous because database files of any database, including a non-virtual
database, such as a source database, can be “mapped to physical addresses
for stored database blocks.” PO Resp. 30 (citing Ex. 2012 ¶ 97).
Patent Owner’s argument is partially persuasive.14 Accordingly, we
modify our preliminary construction. To the extent that Patent Owner is
arguing the preliminary construction does not distinguish a non-virtual
source database from a virtual database, the concern can be addressed by
expressly indicating that the stored database blocks are associated with
another database. As Patent Owner’s arguments imply, an ordinary (i.e., a
non-virtual) database consists of its own database blocks and would not be
created by mapping or pointing to stored blocks associated with another
database. Therefore, based on the foregoing discussion, the term “virtual
database” is construed as “a set of readable and writable database files
capable of being mapped to physical addresses for stored database blocks
associated with another database.” The claim construction tracks the
language of the challenged claims, the written description, Dr. Zadok’s
testimony, and Dr. Shenoy’s testimony, all of which show how to create a

14 Patent Owner’s argument is partially unpersuasive because the ’808 patent
expressly claims and describes that a source database can be a virtual
database. See Ex. 1001, col. 2, ll. 30–32; col. 19, ll. 17–18; claim 6.
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virtual database (i.e., using a set of files), as discussed above. See Ex. 2012
¶ 95; Ex. 1001, Abstract.
IV. PRINTED PUBLICATION
Patent Owner in its Response contests that Sanders is a prior art
“printed publication” in accordance with 35 U.S.C. §§ 102 and 311(b). PO
Resp. 1‒4. We look to the underlying facts to make a legal determination as
to whether a document is a printed publication. Suffolk Techs., LLC v. AOL
Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014). The determination of whether a
document is a “printed publication” under 35 U.S.C. § 102(b) involves a
case-by-case inquiry into the facts and circumstances surrounding its
disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345,
1350 (Fed. Cir. 2004). A key inquiry is whether the reference was made
“sufficiently accessible to the public interested in the art” before the critical
date. In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009) (quoting In re
Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989)).
Initially, we note our disagreement with Patent Owner’s contention
that Petitioner cannot rely upon evidence not submitted with the Petition to
show that Sanders is prior art. PO Resp. 2‒4. In Patent Owner’s view,
Petitioner must make out a prima facie case of unpatentability in its Petition,
which includes the substantive element of Sanders being publicly accessible
and prior art. Id. at 3–4. That position, however, does not account for the
difference between the threshold for instituting a trial (35 U.S.C. § 314(a))
and proving unpatentability of a claim in trial (35 U.S.C. § 316(e)). As
noted by our reviewing court, “there is a significant difference between a
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petitioner’s burden to establish a ‘reasonable likelihood of success’ at
institution, and actually proving invalidity by a preponderance of the
evidence at trial.” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed.
Cir. 2016) (quoting 35 U.S.C. § 314(a) and comparing § 316(e)).
Based on the information presented in the Petition and Patent Owner’s
Preliminary Response, we determined there was a reasonable likelihood that
Petitioner would prevail in its challenges that included Sanders. Inst. Dec.
45; see 35 U.S.C. § 314(a) (threshold for instituting inter partes review); see
also 37 C.F.R. § 42.108(c) (“The Board’s decision [on Institution] will take
into account a patent owner preliminary response where such a response is
filed.”). Patent Owner did not challenge the prior art status of any of the
applied patents or publications in its Preliminary Response. Patent Owner,
in fact, stated that it had “disclosed to the Patent Office every NetApp
feature that Petitioner now cites in the Petition” and that the NetApp
references including Sanders “were published over a span of five years.”
Prelim. Resp. 48, 51 (emphasis added). We do not mean to suggest that a
patent owner must raise any “printed publication” issues in a preliminary
response in order for the Board to consider such issues in the preliminary
proceeding phase. In this case, however, based in part on the information in
Patent Owner’s Preliminary Response and in part on the printed dates and
the lack of indicia of confidentiality or internal, non-public distribution in
Sanders, we determined that Petitioner had met its burden for a threshold
showing to proceed to trial.
Patent Owner also argues that Petitioner cannot rely on declarations
filed after the Petition. These declarations include two declarations provided
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by Louis Hernandez (Ex. 1022) and Joseph Ortiz (Ex. 1030) in response to
objections by Patent Owner15 and a Supplemental Declaration by Mr.
Hernandez (Ex. 1050) filed with its Reply. PO Resp. 2–4. Our rules
authorize serving supplemental evidence in response to an objection. 37
C.F.R. § 42.64(b)(2). Patent Owner lacks a basis to complain that evidence
has been produced in response to its objections. Petitioner also relies,
properly, on the supplemental evidence in its Reply, as evidence in reply to
Patent Owner’s arguments in its Response that Sanders is not a printed
publication.
Turning to the substance of Exhibit 1022, Mr. Hernandez testifies that
he is currently employed by Petitioner, was employed by NetApp from 2004
to 2009, and was a NetApp customer from 2000 to 2004. Ex. 1022 ¶¶ 1, 2,
4. Mr. Hernandez testifies further that for most of his time at NetApp, as a
Systems Engineer, he was responsible for marketing NetApp’s products and
services to numerous customers, prospective customers, business partners,
and/or alliances. Id. ¶ 3. Mr. Hernandez further testifies: “During the 2000-
2009 time-frame, to support its marketing efforts, it was NetApp’s standard
practice to publish technical reports, white papers, and product manuals or
guides to customers, potential customers, business partners, and alliances.”
Id. ¶ 6. He also testifies: “These documents were published, according to
standard practice, as of the month and year that appeared on the face of the
documents.” Id. Mr. Hernandez testifies that he has personal knowledge of
and recognizes Sanders, and that it was published during his tenure at

15 Exhibit 1030 is expunged at Petitioner’s request. We do not further
discuss the Exhibit.
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NetApp or his subsequent tenure at Midwave, a certified distributor and
reseller of NetApp. Id. ¶¶ 7, 11, 14, 17.
Patent Owner argues Mr. Hernandez does not declare that Sanders
was “publicly accessible.” PO Resp. 2‒3. Patent Owner submits as follows:
Even if it was NetApp’s “standard practice” to provide its
documents to its “customers, potential customers, business
partners and alliances,” that does not establish that these
documents were available to the public, but instead shows at
most that they were only available to a subset of entities
affiliated with NetApp.
Id.
Petitioner replies with a Supplemental Declaration from Mr.
Hernandez. Pet. Reply 7 (citing Ex. 1050 ¶¶ 3–13). Mr. Hernandez testifies
that he uses the term “publish” or “published” as referring to documents
being publicly distributed to customers, potential customers, business
partners, and alliances as of the month and year that appeared on the face of
the documents, non-confidentially. Ex. 1050 ¶ 5. According to Declarant,
NetApp had more than two hundred Systems Engineers and other sales
personnel during the relevant timeframe (id. ¶ 4) and that technical reports,
white papers, product manuals, and product guides were freely distributed to
support its marketing efforts (id. ¶ 7). Mr. Hernandez testifies further that it
was important for NetApp to date the documents accurately so that
customers and potential customers could understand if a specific document
accurately reflects features for specific versions of NetApp’s products or if a
document was outdated or updated to reflect more current features. Id. ¶ 10.
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As part of routine discovery (37 C.F.R. § 42.51(b)(1)(ii)), Patent
Owner had the opportunity to cross-examine Mr. Hernandez during Patent
Owner’s first discovery period but elected not to. Patent Owner cross-
examined Mr. Hernandez in its second discovery period regarding the
testimony in his Supplemental Declaration. We have considered Patent
Owner’s Motion for Observation on Cross-Examination Testimony of Mr.
Hernandez (Paper 48) and Petitioner’s Response (Paper 56), insofar as they
relate to public accessibility of Sanders.16 We acknowledge the potential for
bias in Mr. Hernandez’s testimony as a present employee of Petitioner. We
find, however, the testimony in Mr. Hernandez’s Declarations as to public
accessibility of Sanders to be credible. As an earlier panel of the Board has
found, in a proceeding involving a different patent and different parties,
documents such as Sanders are dated technical documents or whitepapers,
having no indication of being mere drafts or internal papers, each of which is
“a type of document whose very purpose is public disclosure.” Veeam Sw.
Corp. v. Symantec Corp., Case IPR2014-00089, slip op. at 14 (PTAB Apr.
25, 2014) (Paper 9). Moreover, in that case, at the preliminary proceeding
phase, the panel found that Sanders, on its face, was sufficient to qualify as a
printed publication. Id. at 2, 13‒14.
Finally, Petitioner also submits a declaration it says was produced in
response to Patent Owner’s evidentiary objections. Pet. Reply 4. Petitioner

16 During the Hearing, Patent Owner asked for, and we granted, additional
time to consider its oral Hearing arguments regarding alleged new issues
(regarding publication) raised in Petitioner’s Reply in lieu of filing a Sur-
Reply. See Tr. 211:16–212:18; 224:13–21; 237:1–25.
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provided the declaration from the office manager of the Internet Archive
(Wayback Machine). Id. (citing Ex. 1025). Sanders is dated April 30, 2006
and is designated “TR-3460” (or Technical Report 3460). Ex. 1005, 1.
According to the testimony regarding how the Internet Archive works
(Ex. 1025 ¶¶ 3‒5), we find the evidence indicates that Sanders was available
on NetApp’s commercial website on, or at least as early as, November 22,
2006. Id. at 231, 232.17 Exhibit 1025 indicates that Sanders was, thus,
“sufficiently accessible to the public interested in the art.” See Lister, 583
F.3d at 1311.
“A given reference is ‘publicly accessible’ upon a satisfactory
showing that such document has been disseminated or otherwise made
available to the extent that persons interested and ordinarily skilled in the
subject matter or art exercising reasonable diligence, can locate it.” SRI
Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008)
(quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed.
Cir. 2006)). In view of the foregoing considerations, we find that Petitioner
has established, by a preponderance of the evidence, that Sanders (dated
Apr. 30, 2006) was available to the interested public at least more than one
year before October 21, 2009, the earliest possible priority date of the ʼ808
patent. See Ex. 1001, at (22). Therefore, on this record, Sanders is a printed
publication under 35 U.S.C. § 102(b).

17 The page numbers for Exhibit 1025 refer to the page numbers inserted by
Petitioner in the bottom, right-hand corner of each page.
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V. ANALYSIS OF PETITIONER’S PRIOR ART CHALLENGES
A. Obviousness Based on the Combination of
Edwards, Patterson, and Sanders
Petitioner asserts claims 1, 4–9, 35, 46, 50, and 57 are unpatentable
under 35 U.S.C. § 103(a) over the combination of Edwards, Patterson, and
Sanders. Pet. 36–59. Upon review of all of the parties’ papers and
supporting evidence discussed in those papers, we are persuaded that
Petitioner has demonstrated, by a preponderance of evidence, that claims 1,
4–9, 35, 46, 50, and 57 are unpatentable under 35 U.S.C. § 103(a) over the
combination of Edwards, Patterson, and Sanders.
1. Principles of Law
A claim is unpatentable under § 103(a) if the differences between the
claimed subject matter and the prior art are such that the subject matter, as a
whole, would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations,
including: (1) the scope and content of the prior art; (2) any differences
between the claimed subject matter and the prior art; (3) the level of skill in
the art; and (4) where in evidence, so-called secondary considerations.
Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We analyze this
asserted ground based on obviousness with the principles identified above in
mind.
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2. Sanders
Sanders describes a system “to clone a DB2 database quickly and
easily.” Ex. 1005, 1. “Database cloning is [a] process by which you can
create an exact copy of a DB2 database.” Id. at 3. The disclosed NetApp
system uses FlexClone and SnapMirror technologies in a combined manner.
Id. at 8. This combined technology allows administrators to clone a
production FlexVol database system as a writable FlexClone database on
another storage system. Id. at 8–9. Specifically, FlexClone provides point-
in-time copies of the production database. Id. at 3. Further, “[a] FlexClone
volume is a writable point-in-time image of a FlexVol volume or another
FlexClone volume.” Id. Stated differently, “[t]he clone database is a frozen
image of the database file system at the time of the clone creation. If
necessary, the primary database can be restored from the snaphsot created
for the clone; or applications can point directly to the clone database.”
Ex. 1005, 6.
A FlexClone volume “uses space very efficiently, allowing both the
original FlexVol volume and the FlexClone volume to share common data,
storing only the data that changes between the original volume and the
clone.” Id. at 3. Clones can be created on the same or different storage
systems. Id. at 6. The SnapMirror technology provides FlexClone volumes
to be produced at different destinations: “A SnapMirror source and its
corresponding destination can reside on the same storage system or on two
separate storage systems that are miles apart.” Id. at 3. Figure 3 of Sanders
is reproduced below:
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Figure 3 depicts using the combined SnapMirror and FlexClone technology
to transmit point-in-time clone copies of a production database to a
destination storage system. See id. at 8.
Sanders also describes mounting a clone database on a database
server. See id. at 14 (“In order to access the clone database, you need to
mount the clone volumes to a database server. . . . [Y]ou can mount the
clone volume by executing the following command on the database server:
mount [MountPoint].”).
3. Edwards
Edwards describes the same NetApp system as Sanders, and provides
additional explanations regarding the virtualization of volumes and files
used to clone DB2 databases in Sanders. A volume essentially comprises a
file system that points to underlying data storage on storage disks:
[A] FlexVol volume is a file system created within a file on an
underlying file system. A hidden file system spans a pool of
storage, and we create externally visible volumes inside files on
this file system. This introduces a level of indirection, or
virtualization between the logical storage space used by a
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volume and the physical storage space provided by the RAID
subsystem.
Ex. 1003, 1118 (second emphasis added). Edwards describes the same
SnapMirror and FlexCone systems that Sanders describes, as forming a
virtualized system: “[W]e virtualize the allocation of volumes on physical
storage, allowing multiple, independently managed file volumes, along with
their Snapshot copies, to share the same storage.” Id. at 10 (emphasis
added). “Virtualization is a well-known method of abstracting physical
resources and of separating the manipulation and use of logical resources
from their underlying implementation.” Id. at 9 (Abstract) (emphasis
added). “The resulting virtual file volumes, or FlexVol® volumes, are
managed independent of lower storage layers.” Id. (emphasis added).
Edwards also describes mapping virtual blocks to the addresses of physical
blocks: “Mapping between virtual block addresses used by FlexVols and
physical block addresses . . . .” Id. at 10 (emphases added).
Edwards further explains this virtualization technology is used “to
implement writable Snapshot copies (called FlexClone volumes).” Id. at 10.
A clone volume “inherits pointers to the complete file system image stored
in the original Snapshot copy” of an original FlexVol volume. Id. at 15.
The Snapshot copies are point-in-time copies: “The only differences
between a Snapshot copy and the live file system are the blocks that have
been modified since the Snapshot copy was created (and the metadata that
points to them).” Id. at 11. “WAFL Snapshot copies provide consistent

18 The page numbers for Edwards refer to the page numbers inserted by
Petitioner in the bottom, right-hand corner of each page.
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point-in-time copies of a volume.” Id. at 14. Although a Snapshot copy is
read-only, combining Snapshot and FlexClone technologies provides
writable Snapshot copies since “[i]n database environments . . . it is often
desirable to make writable copies of a production database for development
or test purposes.” Id.
Edwards explains that “[c]reating a clone volume is a simple process.”
Ex. 1003, 15. A container file for the new clone volume (or FlexClone
volume) is created and seeded “with a vol_info block that is a copy of the
vol_info block of the snapshot copy on which the clone is based.” Id.
Because vol_info block is the root of the “tree of blocks that form the
snapshot copy, the clone inherits pointers to the complete file system image
stored in the original snapshot copy.” Id. Petitioner provides an annotated
version of Edwards’s Figure 1, to demonstrate this step in cloning, as
follows:

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Pet. 20. Figure 1 as annotated by Petitioner depicts WAFL data structures of
a Snapshot copy and a clone volume based on the Snapshot copy.
The system uses the above WAFL structures to translate a given file
offset in a volume to find a physical block (and to copy blocks), by
employing a related system of pointers (VVBN and PVBN). See Ex. 1003,
11–13. The file’s offset translates to VVBN (virtual volume block number),
“a block address within the FlexVol volume’s virtual block address space”
that “specifies the block’s offset within the container file.” Id. at 11. The
VVBN represents a logical address, which points to a PVBN (physical
volume block number). See id. at 11–12. The PVBN specifies the block’s
physical location within the aggregate of disks. Id. at 11. The RAID
subsystem of WAFL ultimately translates the PVBN pointer to a DBN (disk
block number), in order to store or retrieve a block. See id. at 12, Fig. 2.
Petitioner provides an annotated version of Figure 2 of Edwards, to illustrate
the “VVBN-to-PVBN mapping,” as follows:

Pet. 18. Figure 2 depicts translating or mapping a VVBN to a PVBN using
the structures in the container file. See Ex. 1003, 12.
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Edwards also describes SnapMirror, which mirrors the contents of a
volume from a source system to a destination storage system. Id. at 13. The
VVBN remains constant when SnapMirror transfers data blocks from a
source FlexVol volume to a destination FlexVol volume. Id. at 14. On the
other hand, the destination system, which may be physically different than
the source system, may assign a different destination PVBN (i.e., which
differs from the source PVBN). Id. at 14, Fig. 4. In other words, “flexible
volume transfers are VVBN-based.” Id. at 14. Thus, the “VVBN-to-PVBN
mapping at the destination is different from that at the source.” Id. “This
removes geometry restrictions from Volume SnapMirror because the source
and destination make physical allocation decision independently. As a
result, volumes can be mirrored between aggregates with different sizes
and/or disk configurations.” Id.
4. Patterson
Patterson describes NetApp’s SnapMirror technology and provides
additional explanations regarding creating multiple point-in-time copies
using SnapMirror. For example, Figure 1 of Patterson illustrates a situation
where two different snapshots of a volume at different times are transferred
(mirrored) to a destination storage system. Figure 1 is reproduced below
with annotation added.
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Figure 1 shows creating Base Reference Snapshot and Incremental
Reference Snapshot at different times. In the initial mirror transfer, a base
snapshot (Base Reference Snapshot) of the active file system (which
represents the source volume’s file system in its current state) is taken. See
Ex. 1004, 11.19 Both the snapshot and the active file system point to the
same data blocks A, B, C, and D. Figure 1 further shows subsequent
changes in the active file system, which “cause the base snapshot and the
active file system to diverge (C is overwritten with C', A is deleted, E is
added).” Id. In the next SnapMirror transfer (called “update transfer”) from
the source volume to the destination storage, “SnapMirror takes a new

19 The page numbers for Patterson refer to the page numbers inserted by
Petitioner in the bottom, right-hand corner of each page.
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incremental reference snapshot.” Id. The incremental reference snapshot is
compared with the base reference snapshot to determine which blocks have
changed so that only those changed blocks, namely, blocks C' and E, are
transferred to the destination. Id. Thus, blocks B and D stored in the
SnapMirror destination would be associated with at least two point-in-time
copies, i.e., Base Reference Snapshot and Incremental Reference Snapshot,
of the source file system.
5. Claim 1
a. Whether the Combination of Edwards, Patterson, and Sanders
Teaches Every Limitation of Claim 1
(1) Petitioner’s Contentions
Petitioner has shown that the combination of Edwards, Patterson, and
Sanders teaches every limitation of claim 1. Pet. 36–45. Petitioner points to
specific disclosures in the prior art that are deemed to describe or teach all
claim limitations. Id. In addition, Petitioner relies upon the Declaration of
Dr. Zadok (Ex. 1019) to support its positions. Id.
Addressing the preamble of claim 1, which recites a method for
“creating a virtual database system,” Petitioner asserts that it is not limiting
because it is duplicative of the limitations in the claim’s body and does not
recite any essential structure or steps that are not found in the body of claim
1. Pet. 37. Petitioner further argues that the preamble is not necessary to
give life, meaning, and vitality to claim 1. Id. Patent Owner does not
dispute Petitioner’s contentions or argue the preamble is limiting. On this
record, we find the preamble of claim 1 is not a limitation because the claim
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body describes a structurally complete invention such that “deletion of the
preamble phrase [would not] affect the structure or steps of the claimed
invention.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d
801, 809 (Fed. Cir. 2002).
The first step of claim 1 recites “receiving different point-in-time
copies of a source database, the source database comprising a plurality of
database blocks.” Petitioner asserts that the Snapshot copies of a WAFL or
FlexVol volume described in Edwards teach multiple point-in-time copies of
a source volume. Pet. 37–38 (citing Ex. 1003, 10, 11). Petitioner further
asserts that Edwards teaches receiving multiple point-in-time copies of a
source database because Edwards describes that, using SnapMirror, multiple
snapshots of a volume are created at different points in time at a source
system and transferred to and received by a destination storage system. Id.
at 38, 40 (citing Ex. 1003, 11, 13, 14, Fig. 4). In addition, Petitioner asserts
that Sanders teaches receiving at a SnapMirror destination a point-in-time
copy of a production database used as a source database. Id. at 45–46 (citing
Ex. 1005, 27, 28; Ex. 1019 ¶ 174). Petitioner argues the source database in
Sanders is a DB2 database. See id. at 33.
Petitioner asserts Edwards also teaches that a source volume
comprises a plurality of data blocks (id. at 38 (citing Ex. 1003, 10)) and the
source volume can include a database. Id. (citing Ex. 1003, 15 (“a 400GB
database table is created on a 1TB FlexVol volume”) (emphasis by
Petitioner)). Citing the testimony of Dr. Zadok, Petitioner argues these
WAFL or FlexVol data blocks are “database blocks” because they are “units
of data . . . used by . . . a database.” Id. at 38–39 (citing Ex. 1003, 15, 21;
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Ex. 1019 ¶ 157 (“When the source volume consists of a database (as
Edwards teaches), a ‘data block’ is a unit of data used by a database.”)).
Petitioner asserts, therefore, Edwards teaches a “source database comprising
a plurality of database blocks” as recited in claim 1. Id.
The next step requires storing database blocks for different point-in-
time copies of the source database: “storing on a storage system, database
blocks for a plurality of different point-in-time copies of the source database,
wherein at least some of the stored database blocks are associated with
multiple point-in-time copies of the source database.” Petitioner
acknowledges Edwards does not disclose explicitly the SnapMirror
destination storing multiple snapshots or point-in-time copies received from
the source system. Id. at 40. To satisfy this limitation, Petitioner asserts,
citing the testimony of Dr. Zadok, Patterson discloses a storage system that
receives and stores a plurality of snapshots or point-in-time copies of a
source volume. Id. (citing Ex. 1004, 7, 10; Ex. 1019 ¶ 160). Petitioner also
acknowledges Edwards does not disclose explicitly “multiple point-in-time
copies [that] share (point to) common data blocks—i.e., that a data block is
associated with multiple point-in-time copies.” Id. Petitioner asserts that
Patterson discloses “the SnapMirror destination stores data blocks of
multiple snapshots, wherein some of the data blocks are associated with a
plurality of snapshots” because Patterson describes “an example where two
different point-in-time snapshots of a volume are mirrored to a destination
storage system, and those point-in-time copies share at least some of the
same stored data blocks.” Id. at 40–41 (citing Ex. 1004, 11, Fig. 1). Relying
on the Declaration of Dr. Zadok, Petitioner argues this disclosure in
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Patterson teaches “storing multiple data blocks on a storage system, wherein
at least some of the stored data blocks are associated with multiple point-in-
time copies.” Id. at 41 (citing Ex. 1019 ¶ 161). Specifically, similar to our
discussion of Patterson above, Petitioner argues that Patterson describes,
after an update transfer subsequent to a file system change, blocks B and D
stored in the SnapMirror destination would be associated with at least two
point-in-time copies, i.e., Base Reference Snapshot and Incremental
Reference Snapshot, of the source file system. Id. at 25–26 (citing Ex. 1004,
11, Fig. 1). An excerpt of Figure 1 of Patterson provided by the Petitioner is
reproduced below.

Id. at 26. The excerpt of Figure 1 above shows that, upon Update Transfer,
blocks B and D stored in the SnapMirror destination are associated with two
point-in-time copies—the Base Ref Snapshot and Inc Ref Snapshot. See id.
Quoting Patterson, Petitioner argues “SnapMirror transfers the blocks for all
existing snapshots that were created between the base and incremental
reference snapshots. . . . Thus, the destination has a copy of all of the
source’s snapshots.” Id. (emphasis by Petitioner) (quoting Ex. 1004, 10)
(internal quotation marks omitted).
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The next step requires creating a set of files for a virtual database.
Petitioner asserts Edwards teaches “creating a set of files for a virtual
database, each file in the set of files is linked to the database blocks on the
storage system,” as recited in claim 1, because Edwards describes creating a
clone, called a FlexClone volume, from a snapshot, including a snapshot
stored on a destination storage. Id. at 41. A FlexClone volume is essentially
a writable version of a FlexVol volume. See id. at 23–24, 42 (citing
Ex. 1003, 9, 15). According to Petitioner, Edwards explains that, to create a
clone volume, WAFL creates the files required for a new FlexVol volume.
Id. (citing Ex. 1003, 15). A FlexVol volume is an “instantiation” of
NetApp’s file system described in Edwards. Id. at 18–19 (citing Ex. 1003,
10). In general, each file in a FlexVol volume comprises an inode, which
contains pointers to the data blocks for the file. Id. at 19 (citing Ex. 1003,
10). According to Petitioner, these data structures form a tree with a root
block called the “vol_info” block, which contains the inodes for all other
files in the file system. Id. When creating a clone, a container file for the
new clone volume is created and seeded “with a vol_info block that is a
copy of the vol_info block of the snapshot copy on which the clone is
based.” Id. at 41 (quoting Ex. 1003, 15) (internal quotation marks omitted).
The new vol_info block, like all other vol_info blocks, “contains the inodes
for all of the other files in the file system, including the other metadata
files.” Id at. 23 (citing Ex. 1003, 10). Hence, Petitioner argues, the cloned
volume inherits all the pointers or links of the snapshot copy that point to the
underlying data blocks. Id. at 41–42. Relying upon the testimony of Dr.
Zadok, Petitioner asserts that Edwards, therefore, describes creating a new
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vol_info block that points or links to the tree of blocks of the snapshot (i.e.,
point-in-time) copy, which teaches creating a new, cloned volume (i.e., a
new file system (id. at 23)) comprising a set of database files linked to or
pointing to already-stored database blocks associated with a point-in-time
copy of the source database. Id. at 42 (citing Ex. 1019 ¶ 163).
Citing the testimony of Dr. Zadok, Petitioner asserts “[t]his is the
same way that the ‘808 patent creates files for a virtual database, by
implementing them ‘as pointers to the actual database block that stores the
data.’” Id. at 23 (citing Ex. 1001, col. 18, ll. 47–49; Ex. 1019 ¶ 76).
According to Petitioner, a FlexClone volume described in Edwards is a
“full-fledged FlexVol volume with all the features and capabilities of a
normal WAFL volume.” Id. at 24 (emphasis by Petitioner) (quoting Ex.
1003, 15). However, unlike the traditional FlexVol or WAFL volumes, the
files in a FlexClone volume are writable files. Id. at 23–24 (citing Ex. 1003,
9).
Relying further upon the testimony of Dr. Zadok, Petitioner asserts
that “the virtual database disclosed by Edwards is virtual in that the physical
implementation of the database files is decoupled from their logical use” (id.
at 43 (citing Ex. 1019 ¶ 168)) because a FlexClone volume features “a level
of indirection, or virtualization, between the logical storage space used by a
volume and the physical storage space provided by the RAID subsystem”
(id. (emphasis by Petitioner) (quoting Ex. 1003, 11)). Petitioner argues the
FlexVol container file includes a “container map” that provides VVBN-to-
PVBN mappings that “implement[s] a level of indirection between physical
storage containers (called aggregates) and logical volumes (FlexVol
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volumes).” Id. at 21 (quoting Ex. 1003, 10) (internal quotation marks
omitted); see also Ex. 1003, 12 (“We refer to the VVBN-to-PVBN mapping
provided by this first level of indirect data in the container file as the
container map.”). Relying upon the Declaration of Dr. Zadok, Petitioner
asserts this virtualization by VVBN-to-PVBN mapping achieves the same
decoupling of the physical implementation of the database files from the
logical use of the database files described in the ’808 patent. Id. (citing
Ex. 1019 ¶ 71; Ex. 1001, col. 5, ll. 18–21).
The next and the last step of claim 1 recites “mounting the set of files
associated with the virtual database on a database server allowing the
database server to read from and write to the set of files.” Petitioner
acknowledges Edwards does not explicitly disclose the steps for mounting of
a virtual database to a database server. Id. at 43. Petitioner asserts Sanders
teaches this limitation because Sanders describes that access to a clone
database—which comprises a set of files for a virtual database as discussed
above—can be provided by mounting the clone volume to a database server.
Id. at 44 (citing Ex. 1005, 14, 28). The record supports, and we adopt,
Petitioner’s contentions as summarized above.
(2) Patent Owner’s Response
Patent Owner in its Response argues that several limitations of claim
1 are not rendered obvious by the proposed combination of Edwards,
Patterson, and Sanders. We consider each of those arguments in turn.
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(i) Database Blocks
Citing the testimony of Dr. Shenoy, Patent Owner asserts that
Edwards and Sanders do not teach the “database blocks” recited in the
challenged claims because “database blocks” are used only by database
servers at the application level and the WAFL or FlexVol data blocks
described in the prior art are not used by a database server. PO Resp. 40–41
(citing Ex. 2012 ¶¶ 47, 122, 123 (“Database blocks are data structures used
by database management systems at the application level . . . . A database
server knows nothing about file system data blocks because it only interacts
with database blocks and does not directly manipulate file system data
blocks.”), 125 (“The database blocks [are] used only by the database server
at the application level.”), 126–35) (emphases added). Patent Owner further
relies upon the testimony of Dr. Shenoy to assert that the WAFL file system
data blocks are not “database blocks” because “[a] file system does not
operate at the application level” and “does not . . . use database blocks.” PO
Resp. 42 (emphasis added) (citing Ex. 2012 ¶ 124). Dr. Shenoy cites Oracle
technical documents (Ex. 2012 ¶¶ 123–124 (citing Ex. 2002), 125 (citing
Ex. 2001)) describing the features of “the Oracle database server, an object-
relational database management system” (Ex. 2001, 25; Ex. 2002, 19)
(emphasis added) in support of his testimony. Patent Owner further argues
that “database blocks” are used at the application level because the ’808
patent “repeatedly describes” that database blocks are accessed through
APIs. PO Resp. 43 (citing Ex. 1001, col. 7, ll. 41–64; col. 10, ll. 15–17).
Patent Owner’s arguments primarily turn on the claim construction of
the term “database block” and do not persuasively refute Petitioner’s
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contentions. As discussed above in Section III.A, we construe the term
“database block” to mean “a unit of data used by a database.” As discussed
in Section III.B.1 in the context of our claim construction analysis, a
database may be used by any application or program, not just a database
server application. Hence, Patent Owner’s argument limiting “database
blocks” to those that can be used only by database servers is unpersuasive.
Similarly, Patent Owner’s “application level” arguments are not persuasive
because they essentially rehash Patent Owner’s unpersuasive claim
construction arguments that “database blocks” are application-level
constructs. As discussed above in Section III.A.2, those arguments by
Patent Owner do not comport with the claim language and the written
description of the ’808 patent. Furthermore, as discussed in Section III.A.3,
the “database blocks” recited in the challenged claims encompass storage
level “data blocks.” Patent Owner admits that the terms “file system block”
or “data blocks” refer to blocks of data stored on a disk and manipulated by
the file system. PO Resp. 24 n.7. Hence, the recited “database blocks” do
not exclude file system data blocks, such as the WAFL data blocks. In
addition, to the extent Patent Owner argues that the “database blocks”
recited in the challenged claims are limited to database blocks used in
relational database systems, such as the Oracle systems relied upon by Dr.
Shenoy, Patent Owner’s argument is unpersuasive for the reasons discussed
above in Sections III.A.1.d and III.B.1.
Next, Patent Owner argues the WAFL file system data blocks are not
database blocks because a file system is not a database. Id. at 42 (citing
Ex. 2012 ¶¶ 131–32). Patent Owner’s argument is not persuasive in view of
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Patent Owner’s proposed definition of a “database.” In related Case
IPR2015-00128, Patent Owner proposed that a plain and ordinary meaning
of the term “database” is “a collection of data that is organized so that it can
be easily accessed, managed or updated.” Actifio, Inc. v. Delphix, Corp.,
Case IPR2015-00128, slip op. at 33 (PTAB July 28, 2015) (Paper 17) (“’128
PO Resp.”). In this case, Patent Owner’s expert, Dr. Shenoy, proposes the
same definition. Ex. 2012 ¶ 33. However, a file system may also be “a
collection of data that is organized so that it can be easily accessed, managed
or updated.” In fact, Dr. Shenoy acknowledges file systems also “manage
data” but in a “less-structured way.” Id. We find such differences cannot
support any patentable distinction in this case. In addition, the ’808 patent
describes broadly that “[a] database comprises data stored in a computer for
use by computer implemented applications.” Ex. 1001, col. 4, l. 67–col. 5,
l. 1. We do not find any meaningful distinction between a “database” and a
“file system” under this description, either. Therefore, we find, in the
context of this case, the term “database” encompasses file systems.
Patent Owner also asserts that Petitioner “does not even identify any
description of a database using WAFL data blocks.” PO Resp. 43. Patent
Owner’s argument is not persuasive for the reasons discussed above.
Furthermore, Petitioner relies on a WAFL or FlexVol volume that stores or
consists of a database, such as IBM’s DB2 database. See Pet. 33, 38–39
(citing Ex. 1019 ¶ 157). Patent Owner further argues that Edwards does not
disclose receiving units of data used by a database. PO Resp. at 41. Patent
Owner’s argument is unpersuasive because Petitioner relies on the
combination of Edwards and Sanders to teach receiving DB2 data blocks at
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a destination. See Pet. 33 (“a [person of ordinary skill in the art] would have
readily referred to Sanders to apply the cloning technique described in
Edwards to clone DB2 databases”). Nonobviousness cannot be established
by attacking the references individually when the unpatentability challenge
is based on a combination of prior art disclosures. See In re Merck & Co.
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Lastly, Patent Owner’s arguments based on its proposed claim
construction that a “database block” must necessarily include metadata (PO
Resp. 44–46) are unpersuasive because we decline to adopt Patent Owner’s
interpretation for the reasons discussed above in Section III.A.
In view of the forgoing and based on the record before us, we credit
the testimony of Dr. Zadok (e.g., Ex. 1019 ¶ 157) and find that data blocks
of a WAFL or FlexVol volume that stores or consists of a database, such as
IBM’s DB2 database, are units of data used by a database. Therefore, the
proposed combination of Edwards and Sanders teaches “database blocks.”
(ii) Receiving and Storing Different Point-In-Time Copies
of a Source Database
Patent Owner argues Edwards does not teach receiving point-in-time
copies of a source database comprising database blocks because the
Snapshot copies received at a destination include file system data blocks, not
database blocks. PO Resp. 47. Again, Patent Owner’s argument turns on
claim construction and does not persuasively refute Petitioner’s showing
because, as discussed above, the disclosure in Edwards or the combination
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of Edwards and Sanders of data blocks of a WAFL or FlexVol volume that
stores or consists of a database teaches “database blocks.”
Next, Patent Owner asserts that the proposed combination does not
teach receiving “different point-in-time copies of a source database.” Id. at
46–47. According to Patent Owner, SnapMirror is a mirroring method for
disaster recovery, where the source file system and backup “mirror” are
always maintained in the identical current state. Id. at 47–48. Patent Owner
argues that the SnapMirror “does not create or load a plurality of point-in-
time copies of the FlexVol volume it is cloning, it is merely cloning the
current state of the data that is within the volume.” Id. at 48.
Patent Owner’s argument is unpersuasive because Petitioner relies on
SnapMirror’s update transfer function described in Patterson to teach
receiving and storing a plurality of snapshots or point-in-time copies of a
source volume. Pet. 40 (citing Ex. 1004, 7, 10; Ex. 1019 ¶ 160), 25–26
(citing Ex. 1004, 10–11, Fig. 1). Nonetheless, Patent Owner argues
Patterson does not teach the limitations at issue because the base reference
and incremental reference snapshots described in Patterson do not teach
receiving point-in-time copies or storing database blocks for the point-in-
time copies because “[t]hese temporary snapshots are created at the source
. . . and are not transferred to or stored at the destination.” PO Resp. at 49.
According to Patent Owner, the incremental snapshot of Patterson is a
snapshot of the entire source system that is “never received by or stored at
the destination” but, rather, is compared to a base reference snapshot to
determine “the correct set of data blocks to transfer to the destination.” Id.
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Patent Owner does not dispute, however, those “correct sets of data
blocks” received and stored at the destination teach receiving point-in-time
copies of a source database and storing database blocks for the point-in-time
copies recited in the challenged claims. As discussed in the Petition,
Petitioner relies upon Patterson’s incremental update function of transferring
to the destination the set of blocks changed since the last update to teach
these limitations at issue. Pet. 25–26 (citing Ex. 1004, 10–11, Fig. 1), 40;
see also Pet. Reply 21 (“[A]fter a SnapMirror update, ‘the destination has a
copy of all of the source’s snapshots.’”) (first emphasis added) (citing
Ex. 1004, 10). In fact, the ’808 patent describes a similar process of copying
only the blocks changed since the last update as making point-in-time copies
of a production database. See Ex. 1001, col. 18, ll. 35–43. Therefore, the
record supports Petitioner’s showing, and Patent Owner’s argument does not
persuasively refute Petitioner’s contentions. Based on the forgoing, we find
the proposed combination teaches “receiving different point-in-time copies
of a source database” and “storing . . . database blocks for a plurality of
different point-in-time copies of the source database” as recited in the
challenged claims.
(iii) Virtual Database
Patent Owner asserts that the vol_info block of the FlexClone volume
relied upon by Petitioner to teach a virtual database is not a set of database
files because the inodes contained in the vol_info block do not point to
database blocks, but, rather, point to WAFL file system data blocks. PO
Resp. 51–52, 56. Patent Owner’s argument again turns on claim
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construction and does not persuasively refute Petitioner’s showing because,
as discussed above, the prior art’s disclosure of data blocks of a WAFL,
FlexVol, or FlexClone volume that stores or consists of a database teaches
“database blocks.”
Patent Owner next asserts that neither FlexClone nor FlexVol
virtualize databases because they, instead, virtualize disk volumes. Id. at 53.
Patent Owner argues the FlexVol volumes do not virtualize databases
because they do not decouple “the physical implementation of the database
files . . . from the logical use of the database files.” Id. at 54. Patent Owner
also argues that the FlexVol volumes operate at the physical storage level,
not the application level, and, therefore, have no knowledge of database
blocks. Id.
Patent Owner’s arguments largely turn on the claim construction and
do not persuasively refute Petitioner’s showing. Patent Owner’s arguments
regarding virtualization turn in part on the claim construction of the terms
“database blocks” and “database.” These arguments are unpersuasive for the
reasons discussed above in Sections III (Claim Construction) and
V.A.5(2)(i) (addressing Patent Owner’s arguments regarding “database
blocks”).
As discussed in Section III.B.2, based on the disclosure in the ’808
patent describing the structure of virtual database files, “decoupling of
physical implementation of the database files” from “the logical use of
database files” can be understood as reading from or writing to database
blocks by reading from or writing to virtual database file structures that
point to the actual database blocks. Thus, we agree with Petitioner that the
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“virtualization” described in Edwards using a vol_info block and a container
map of VVBN-to-PVBN mappings that point to WAFL data blocks achieves
the same decoupling of the physical implementation of the database files
from the logical use of the database files described in the ’808 patent. See
Pet. 21 (citing Ex. 1019 ¶ 71; Ex. 1001, col. 5, ll. 18–21).
Patent Owner further argues that our preliminary construction of
“virtual database” is so broad as to encompass a “source database.” PO
Resp. 50–51. As discussed above in Section III.B.2, we address Patent
Owner’s argument by expressly requiring “database blocks” in our
construction of the term “virtual database” to be associated with another
database. That is, we construe “virtual database” to mean “a set of readable
and writable database files capable of being mapped to physical addresses
for stored database blocks associated with another database.”
The term “database files” used in our claim construction does not
need further interpretation because our discussion in Section III.B shows that
we used “database file” as “a file used by a database or a database
application.” For example, we discussed that a “database file” may be used
by any application or program. As also discussed in the same section, Patent
Owner acknowledged at the Oral Hearing that “a database server” in its
proposed construction “is used synonymously . . . with database
application.” Tr. 184:1–185:12; see also Ex. 1001, col. 5, ll. 1–4 (“database
server is a computer program that can interact with the database”).
Furthermore, as discussed above in Section V.A.5(2)(i), we find, in this case,
the term “database” encompasses file systems. Therefore, we find the
vol_info block, the inodes, and the container file of a FlexClone or FlexVol
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volume (which is a file system, as discussed above) relied upon by Petitioner
constitute “database files,” that is, files used by a database or a database
application, at least in the cases where the file system stores a database.
Accordingly, we find the new vol_info block of the FlexClone volume that
points to the tree of blocks of a point-in-time snapshot copy of a FlexVol
volume storing a DB2 source database relied upon by Petitioner teaches a
“virtual database,” i.e., “a set of readable and writable database files capable
of being mapped to physical addresses for stored database blocks associated
with another database.” The data blocks of the point-in-time snapshot copy
of the FlexVol volume storing a DB2 source database are “associated with
another database,” i.e., the DB2 source database.
(iv) Creating a Set of Files for a Virtual Database
Patent Owner argues creating a “clone vol_info block” is not “creating
a set of files” because the new vol_info block is “merely a copy” of the
vol_info block of the volume to be cloned. PO Resp. 55. Patent Owner’s
argument is unpersuasive because the challenged claims recite “creating a
set of files” and do not require “creating a new set of files.” In fact, the ’808
patent describes creating a virtual database from a copy of another virtual
database. Ex. 1001, col. 19, ll. 22–25 (“Point-in-time copies of VDB1 are
also made based on a predefined schedule. This allows a user to create a
second virtual database VDB2 based on a point-in-time copy of VDB1.”)
(emphases added).
Next, Patent Owner argues that the “clone vol_info block” is not a set
of files because it “merely points to the existing files” in the vol_info block
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of the volume being cloned. PO Resp. 55 (citing Ex. 2012 ¶ 156). Patent
Owner explains that according to a dictionary source, an applicable meaning
of “set” is “[a] group of things of the same kind that belong together and are
so used.” See id. at 55–56 (citing Ex. 2020, 3–4).
Contrary to Patent Owner’s arguments, creating a new “clone vol_info
block” creates a new set of files even under Patent Owner’s proffered
definition of “set” because creating a new member, “clone vol_info block,”
which points to the tree of blocks of the point-in-time snapshot copy,
constitutes creating a new “group of things of the same kind that belong
together and are so used.” By analogy, the set of numbers (1, 5, 6) is a
different set than the set of numbers (2, 1, 5, 6), even though the sets
overlap.
In addition, Petitioner argues FlexClone creates a new FlexVol
volume: “[A] FlexVol volume is a file system created within a file on an
underlying file system.” Pet. Reply 21 (quoting Ex. 1003, 14) (citing Ex.
1003, 11); Ex. 1033, 257:4–6 (“[A] FlexVol is based on the WAFL file
system. So in this case, there is a file system associated with the volume.”)).
According to Petitioner, the clone vol_info block represents a “file structure”
similar to the “‘read/write file structure representing a VDB’ created in the
patent.” Pet. Reply 22 (quoting Ex. 1001, col. 18, ll. 27–28). Therefore,
Petitioner argues, “the creation of a new vol_info block creates a new file
system with new files.” Id. (citing Ex. 1019 ¶¶ 74–76, Ex. 1065 ¶¶ 59–60).
As described above in the summary of Petitioner’s contentions and the
summary of Edwards, the record supports Petitioner. For example, Edwards
discloses that
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[c]reating a clone volume is a simple process. WAFL creates
the files required for a new FlexVol volume. But rather than
creating and writing a new file system inside the volume,
WAFL seeds the container file of the clone with a vol_info
block that is a copy of the vol_info block of the Snapshot copy
on which the clone is based.
Ex. 1003, 15 (emphases added). In other words, according to Edwards,
WAFL “creates the files” for a new file system during cloning, as Petitioner
and Dr. Zadok argue, even if it does not write a new file system inside the
volume. See id.
Petitioner further argues the files of a FlexClone are writable and,
therefore, different than the files of a snapshot’s read-only files. Pet. Reply
23 (citing Ex. 1065 ¶¶ 60–61). According to Petitioner, Dr. Shenoy agrees
that the files of a FlexClone are writable and the files of a snapshot are read-
only. Id. (citing Ex. 1033, 268:9–10). Therefore, Petitioner argues creating
a FlexClone creates a “new, independent set of files.” Id. We agree with
and adopt Petitioner’s contentions.
Based on the forgoing and the record before us, we find creating the
new vol_info block of the FlexClone volume that points to the tree of blocks
of a point-in-time snapshot copy of a FlexVol volume storing a DB2 source
database relied upon by Petitioner teaches “creating a set of files for a virtual
database” recited in the challenged claims.
(3) Conclusion
Accordingly, on this record, we find that Petitioner has demonstrated,
by a preponderance of evidence, that the proposed combination of Edwards,
Patterson, and Sanders teaches every limitation of claim 1.
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b. Reasons for Combining Edwards, Patterson, and Sanders
If all elements of a claim are found in the prior art, as is the case here,
the factfinder must further consider the factual questions of whether a person
of ordinary skill in the art would be motivated to combine those references,
and whether in making that combination, a person of ordinary skill would
have had a reasonable expectation of success. Dome Patent L.P. v. Lee, 799
F.3d 1372, 1380 (Fed. Cir. 2015). Although “there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness,” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006)), “[t]he obviousness analysis cannot be confined by a
formalistic conception of the words teaching, suggestion, and motivation, or
by overemphasis on the importance of published articles and the explicit
content of issued patents.” Id. at 419. Rather, courts must take an
“expansive and flexible approach” to the question of obviousness. Dome
Patent L.P., 799 F.3d at 1380 (quoting KSR, 550 U.S. at 415).
We find that the Petition provides ample reasons why one of ordinary
skill in the art would have combined the teachings of Sanders, Edwards, and
Patterson. Pet. 29–34, 41, 44–45. For example, all of the references address
the same problem addressed by the ’808 patent.
According to Patent Owner, “a main purpose of the invention” of the
’808 patent is “to efficiently provide virtual databases at arbitrary points in
time without proliferating redundant copies of database data and storage
infrastructure.” PO Resp. 17 (citing Ex. 2012 ¶¶ 63–67). The ’808 patent
also describes the problems in the existing database solutions as “[m]aking
copies of the production databases” for each stage of workflows, which
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“requires redundant and expensive hardware infrastructure as well as the
time overhead required to copy the data” in the BACKGROUND section
(Ex. 1001, col. 1, ll. 35–39) and states in the SUMMARY section “[t]o
address the needs unmet by existing database technologies, embodiments of
the invention enable virtual databases that efficiently use storage and other
computing resources.” Id. at col. 1, ll. 63–65. The ’808 patent further states
as follows:
Making copies of large databases by conventional means can be
a slow process. Furthermore, running different copies of
databases on different machines results in inefficient usage of
the hardware. Various workflow scenarios associated with
databases can be simplified and made highly efficient by
creating virtual databases instead of making physical copies of
the databases. Multiple virtual databases can be stored in a
database storage system 100 and the available resources of the
system can be utilized efficiently.
Id. at col. 20, ll. 7–17. Hence, a central problem addressed by the ’808
patent is to avoid making redundant physical copies of data and provide
efficient use of storage and other computing resources. The solution
described in the ’808 patent is to “creat[e] virtual databases instead of
making physical copies of the databases.” Id.
Petitioner submits that Edwards, Patterson, and Sanders all solve the
same problem—i.e., “the costs and complexities involved in making
additional physical copies of databases for experimental, test,
developmental, and other purposes”—with the same solution, i.e., virtual
databases using FlexClone technology. Pet. 32 (citing Ex. 1019 ¶¶ 107–
109). The record supports Petitioner’s contentions. See Ex. 1003, 9–11, 14;
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Ex. 1004, 10; Ex. 1005, 1, 3, 5. Our reviewing court has made clear that “a
court . . . may find a motivation to combine prior art references in the nature
of the problem to be solved.” ABT Sys., LLC v. Emerson Elec. Co., 797 F.3d
1350, 1360 (Fed. Cir. 2015) (quoting Ruiz v. A.B. Chance Co., 357 F.3d
1270, 1276 (Fed. Cir. 2004)); see also id. at 1360–61 (finding motivation to
combine because the nature of the problem to be solved is the same in each
of the cited references).
Petitioner provides other and similar reasons for combining the
various aspects of the NetApp technologies at various places in the Petition.
See Pet. 29–34, 41, 44–45.
Patent Owner asserts that Edwards, Patterson, and Sanders do not
address the problem addressed by the ’808 patent, which is to “run a
different version of the database server and/or a different operating system
compared to the production database system 110 that is the source of the
database being virtualized.” PO Resp. 32 (citing Ex. 1001, col. 6, ll. 59–62).
Patent Owner argues one of ordinary skill in the art would not, after reading
Edwards, Patterson, and Sanders, know how to put together a system where
a virtual database can run on a different database server and operating
system than the production database. Id. Patent Owner’s argument is
unpersuasive because the described features are recited only in dependent
claims 22 and 23, which are not challenged in this case. Claim 1, from
which these claims depend, is presumed to be broader and not limited by the
additional limitations recited in these dependent claims relating to running a
virtual database on a different database server and operating system than the
production database. Columbia Univ., 811 F.3d at 1370. Moreover, a claim
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is not required to encompass all of the advantages or purposes of the
invention. See Howmedica Osteonics, 540 F.3d at 1345. Therefore, the
features argued by Patent Owner cannot be the basis for rejecting the
proposed combination of Edwards, Patterson, and Sanders for purposes of
obviousness analysis for the challenged claims.
Patent Owner argues that Edwards, Sanders, and Patterson do not
describe the “same” technology, and that “Petitioner’s sole argument as to
why the documents render a claim limitation obvious is because, Petitioner
maintains, they describe ‘the same’ technology.” PO Resp. 5. Patent
Owner asserts that “FlexVol, FlexClone and SnapMirror are NetApp
trademarks . . . associated with products and technologies that changed over
time,” showing that the documents describe different embodiments. Id.
As Petitioner argues, the references focus on describing the same
basic NetApp system, including FlexVol, FlexClone, and SnapMirror, all to
provide database cloning, eliminating the need for physical copying, and
providing savings in storage space, cost, data recovery, etc. See Pet. 30–32.
Even if the products did change over time, as Patent Owner contends,
understanding the evolution of the underlying related systems reasonably
would have been beneficial to better understand the products and apply them
for cloning solutions, data back-up, etc. See, e.g., Ex. 1019 ¶ 116
(“Patterson, Edwards, and Sanders all describe the natural evolution of
technologies at NetApp”) ¶ 113 (starting with Edwards for cloning virtual
databases, “the most obvious place to start would be with other NetApp
publications”) ¶¶ 107–110 (Edwards, Sanders, and Patterson address the
same problem and solution and provide motivation for combining––e.g.,
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creating multiple virtual databases copies, and providing writable virtual
copies, in order to avoid the cost and complexity in making physical copies
and to provide data for experimental, test, developmental purposes).
In view of the forgoing, we find the record supports, and Patent
Owner’s arguments do not persuasively refute, Petitioner’s showing, which
provides ample motivation and reasons to combine Edwards, Sanders, and
Patterson.
c. Conclusion
Upon considering all of the evidence of record, we determine that
Petitioner has demonstrated, by a preponderance of evidence, the subject
matter of claim 1 would have been obvious under 35 U.S.C. § 103(a) based
on the combination of Edwards, Patterson, and Sanders.
6. Claims 50 and 57
Claim 50 recites a computer processor and a computer-readable
storage medium storing computer program modules including: (a) a point-
in-time copy manager module configured to: receive different point-in-time
copies of a source database, the source database comprising a plurality of
database blocks; (b) a storage allocation manager module configured to:
store on a storage system, database blocks for a plurality of different point-
in-time copies of the source database, wherein at least some of the stored
database blocks are associated with multiple point-in-time copies of the
source database; (c) a virtual database manager module configured to:
create a set of files for a virtual database, each file in the set of files linked to
the database blocks on the storage system associated with a point-in-time
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copy of the source database; and (d) a file sharing manager module
configured to: mount the set of files associated with the virtual database on
a database server allowing the database server to read from and write to the
set of files. Petitioner notes that the steps to be performed by the four
claimed modules recited by claim 50 (i.e., “point-in-time copy manager
module,” “storage allocation manager module,” “virtual database manager
module,” and “file sharing manager module”) are essentially the same as the
steps required by claim 1. Pet. 55–56. Thus, Petitioner asserts that the
combination of Edwards, Sanders, and Patterson renders these four “module
limitations” of claim 50 obvious for the same reasons that the same
combination of prior art references renders obvious the corresponding
limitations of claim 1. Id. at 56 (citing Ex. 1019 ¶ 207).
Petitioner further asserts that the computer program modules recited
in the claim represent software code embodied on a machine-readable
medium. Id. (citing Ex. 1001, col. 31, ll. 50–53; Ex. 1019 ¶ 209). Relying
upon the testimony of Dr. Zadok, Petitioner argues the snapshot,
SnapMirror, FlexVol, and FlexClone features of the NetApp technology as
described in Edwards, Patterson, and Sanders are all features implemented in
code that was programmed to perform these NetApp features. Pet. 57 (citing
Ex. 1019 ¶¶ 209–210). Thus, Petitioner asserts the computer program
module limitations of claim 50 are obvious over the combination of
Edwards, Sanders, and Patterson for the same reasons that the same
combination of prior art references renders obvious the corresponding
limitations of claim 1. Id.
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With respect to claim 57, Petitioner notes claim 57 is essentially the
same as claim 50 except that claim 57 omits the “computer processor”
limitation of claim 50. Pet. 59. Thus, Petitioner asserts that claim 57 is
obvious over the combination of Edwards, Sanders, and Patterson for the
same reasons that the same combination of prior art references renders claim
50 obvious. Id.
Patent Owner argues claims 1, 50, and 57 together and does not
respond specifically to Petitioner’s showing regarding claims 50 and 57
beyond Patent Owner’s arguments advanced with respect to claim 1
discussed above. See PO Resp. 40–57.
In our Scheduling Order, we cautioned Patent Owner that any
arguments for patentability not raised in the response will be deemed
waived. See Paper 12, 3. Patent Owner has elected not to respond
separately, with specificity, to the ground of unpatentability asserted against
claims 50 and 57. Upon considering all of the evidence of record, for the
reasons explained above with respect to claim 1, we determine that
Petitioner has demonstrated, by a preponderance of evidence, the subject
matter of claims 50 and 57 would have been obvious under 35 U.S.C. §
103(a) based on the combination of Edwards, Patterson, and Sanders.
7. Dependent Claims 4–9, 35, and 46
Claims 4–7, 35, and 46 depend directly from claim 1. Claim 8
depends directly from claim 7; and claim 9 depends directly from claim 8.
Relying upon the testimony of Dr. Zadok, Petitioner asserts that Sanders
teaches the additionally recited limitations of claims 4, 5, 6, 35, and 46; and
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that Patterson teaches the additionally recited limitations of claims 7, 8, and
9. Pet. 45–54 (citing Ex. 1004, 7, 12–13; Ex. 1005, 3, 6, 27, 28, 36, 50;
Ex. 1019 ¶¶ 174, 178, 180, 187, 188, 199, 200). Petitioner provides detailed
explanations supported by the testimony of Dr. Zadok and specific citations
to Sanders and Patterson indicating where in the references the claimed
features are taught. Relying further upon the Declaration of Dr. Zadok,
Petitioner also contends a person of ordinary skill would have been
motivated to combine Edwards, Patterson, and Sanders to teach these
additional limitations and provides rationales for the combination which are
similar to the rationales discussed above with respect to claim 1. Id. at 46,
47, 49, 51–52, 53 (citing Ex. 1019 ¶¶ 175, 183, 195, 201).
Patent Owner does not respond separately, with specificity, to
Petitioner’s challenge to dependent claims 4–9, 35, and 46 beyond Patent
Owner’s arguments advanced with respect to claim 1 discussed above.
Upon considering all of the evidence of record, we determine that
Petitioner has demonstrated, by a preponderance of evidence, the subject
matter of claims 4–7, 35, and 46 would have been obvious under 35 U.S.C. §
103(a) based on the combination of Edwards, Patterson, and Sanders.
B. Obviousness Based on the Combination of
Edwards, Patterson, Sanders, and CaraDonna
Petitioner asserts claim 15 is unpatentable under 35 U.S.C. § 103(a)
over the combination of Edwards, Patterson, Sanders, and CaraDonna.
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1. CaraDonna
CaraDonna describes a system and method that “allows the entire
storage operating system to be simulated by executing it within a guest
operating system of a virtual machine operating on a host computer.”
Ex. 1012, col. 3, ll. 19–21. CaraDonna discloses that the storage operating
system being simulated on a virtual machine “is preferably the NETAPP®
DATA ONTAP® storage operating system, available from NetApp, Inc.,
which implements a Write Anywhere File Layout (WAFL®) file system.”
Id. at col. 8, ll. 12–16. CaraDonna further describes that its “system and
method can be configured to allow a snapshot to be generated of the state of
the virtualized computer environment [] at a certain point-in-time, for use in
managing the creation and restoration of database backups” and that “[t]he
term SNAPSHOTTM, which is a trademark of NetApp, Inc., generally refers
to a rapid generation of an image of data at a certain point-in-time.” Id. at
col. 14, ll. 41–47.
2. Analysis
Claim 15 depends from claim 1 and further recites “the storage system
is running on a virtual machine.” Petitioner asserts CaraDonna teaches the
additionally recited limitation of claim 15 because CaraDonna discloses
“storage system that is running on a virtual machine – i.e., software that
allows multiple operating systems to run on a host computer concurrently.”
Pet. 59 (citing id. at 27–29, which discusses Ex. 1012, col. 1, ll. 15–18;
col. 3, ll. 18–22, 60–64; col. 8, ll. 12–16; col. 13, ll. 6–7; Fig. 5). Petitioner
also relies on the Declaration of Dr. Zadok to support its contentions. Pet.
29 (citing Ex. 1019 ¶ 98). Relying further upon the testimony of Dr. Zadok,
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Petitioner also asserts that a person of ordinary skill would have been
motivated to combine Edwards, Patterson, Sanders, and CaraDonna because
the references discuss the same NetApp technology and because the
technology is combined in the references. Id. at 34 (citing Ex. 1019 ¶ 118).
Petitioner further provides additional rationales for the combination citing to
the Declaration of Dr. Zadok. Id. at 34–36, 59–60 (citing Ex. 1019 ¶¶ 118–
122).
Patent Owner does not respond separately, with specificity, to
Petitioner’s challenge to claim 15 based on the combination of Edwards,
Patterson, Sanders, and CaraDonna beyond Patent Owner’s arguments
advanced with respect to claim 1 discussed above.
Upon considering all of the evidence of record, we determine that
Petitioner has demonstrated, by a preponderance of evidence, the subject
matter of claim 15 would have been obvious under 35 U.S.C. § 103(a) based
on the combination of Edwards, Patterson, Sanders, and CaraDonna.
VI. PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
Patent Owner moves to exclude Petitioner’s Exhibits 1034–1048,
1050, 1051, 1053, 1056, 1058–1061, and 1064. PO Mot. to Exclude (Paper
47), 1. In inter partes reviews, documents are admitted into evidence
subject to an opposing party asserting objections to the evidence and moving
to exclude the evidence. 37 C.F.R. § 42.64. As movant, Patent Owner has
the burden of showing that an Exhibit is not admissible. 37 C.F.R.
§ 42.20(c).
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Patent Owner contends that Petitioner does not rely on Exhibits 1034,
1035, 1036, 1037, 1038, 1040, 1041, 1043, and 1047. PO Mot. to Exclude,
1 n.1. Except for Exhibit 1038, Petitioner does not dispute this contention.
See Pet. Exclude Opp. (Paper 54). We, therefore, grant Patent Owner’s
motion as it pertains to Exhibits 1034–1037, 1040, 1041, 1043, and 1047.
Further, Petitioner has moved, unopposed, to expunge Exhibit 1030 (see
Paper 44), which motion we hereby grant.
Of the objected-to Exhibits, except for Exhibits 1042, 1050, and 1051,
we do not, and need not, consider such evidence. We have determined, as
discussed above, that Petitioner has demonstrated by a preponderance of the
evidence that the challenged claims are unpatentable, without need for
Petitioner’s additional arguments or evidence in relation to those additional
Exhibits. Accordingly, Patent Owner’s motion to exclude Exhibits 1038,
1039, 1044–1046, 1048, 1053, 1056, 1058–1061, and 1064 is dismissed as
moot. We consider Patent Owner’s motion to exclude with respect to each
of the remaining exhibits below.
A. Exhibit 1042
Exhibit 1042 is U.S. Patent No. 8,468,174 B1 (“the ’174 patent”),
which is the subject of related proceeding IPR2015-00128. Patent Owner’s
motion does not specify the basis for any evidentiary objection to the
Exhibit. Therefore, Patent Owner’s motion to exclude Exhibit 1042 is
denied.
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B. Exhibit 1050
Exhibit 1050 is the Supplemental Declaration of Louis Hernandez.
Patent Owner argues that the Exhibit is “inadmissible hearsay.” PO Mot. to
Exclude 8‒11. The Supplemental Declaration, however, consists of
statements made by Mr. Hernandez while testifying in this proceeding—not
“hearsay” (Fed. R. Evid. 801(c)), but sworn testimony that is subject to
cross-examination. Indeed, Patent Owner cross-examined Mr. Hernandez
with respect to that testimony.20
Patent Owner also argues that Mr. Hernandez lacks personal
knowledge to testify. Mr. Hernandez’s personal knowledge of practices
about NetApp document publications comes from his review and recognition
of documents published before and during his tenure as an employee of
NetApp. See Ex. 1022 ¶¶ 1–6; Ex. 1050 ¶¶ 3–11. On this record, ample
basis exists for him to testify with personal knowledge of the facts under
Rule 602. We are not persuaded otherwise by Patent Owner’s
characterization of Mr. Hernandez’s direct and cross-examination testimony.
See PO Mot. to Exclude 9–11.
Patent Owner’s motion to exclude Exhibit 1050 is denied.

20 Patent Owner’s allegation of “double hearsay” is not persuasive. PO Mot.
to Exclude 9; PO Exclude Reply 5. Patent Owner does not argue that it
objected to any NetApp documents that Mr. Hernandez relied upon as
hearsay. See Pet. Exclude Opp. 13–14; PO Exclude Reply 5 (replying to
Petitioner’s contention but not disputing a lack of an objection). In addition,
as discussed herein and further below, Mr. Hernandez relies on document
dates, other indicia, and his knowledge of NetApp’s standard practices about
dated NetApp documents, not merely dates on documents. See Pet. Reply 5
(citing Ex. 1022 ¶ 6; Ex. 1030 ¶¶ 1–5); Pet. Exclude Opp. 7–13.
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C. Exhibit 1051
The only reason Patent Owner gives for excluding Exhibit 1051 is that
it is “untimely under 37 C.F.R. § 42.23(b) and 37 C.F.R. § 42.123.” PO
Mot. to Exclude, 1 n.1. Contrary to this argument, Petitioner cites this
document as rebuttal evidence in response to Patent Owner’s claim
construction (i.e., to show that a well-known database does not use metadata
in database blocks and uses metadata external to the block). See Pet. Reply
8–9 (arguing that Patent Owner’s preliminary database block construction
before a district court did not include metadata, and that the alleged metadata
requirement only occurred after Petitioner filed “the last of its IPR
petitions,” citing Ex. 1024, 6 (database block construction after e-mail chain
of Oct. 23, 2014)); PO Resp. 22 n.4 (citing Ex. 2019, 4 (joint district court
claim construction, Oct. 27, 2014), n.5).
Patent Owner’s motion to exclude Exhibit 1051 is denied.
VII. CONCLUSION
Petitioner has met its burden of proof, by a preponderance of the
evidence, in showing that claims 1, 4–9, 15, 35, 46, 50, and 57 of the ʼ808
patent are unpatentable based on the following grounds of unpatentability:
A. Claims 1, 4–9, 35, 46, 50, and 57 under 35 U.S.C. § 103(a) as
obvious over the combination of Edwards, Patterson, and Sanders; and
B. Claim 15 under 35 U.S.C. § 103(a) as obvious over the
combination of Edwards, Patterson, Sanders, and CaraDonna.

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VIII. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1, 4–9, 15, 35, 46, 50, and 57 of the ʼ808
patent are unpatentable;
FURTHER ORDERED that Petitioner’s motion to expunge Exhibit
1030 is granted;
FURTHER ORDERED that Patent Owner’s Motion to Exclude
Evidence is granted-in-part with respect to Exhibits 1034–1037, 1040, 1041,
1043, and 1047; dismissed-in-part with respect to Exhibits 1038, 1039,
1044–1046, 1048, 1053, 1056, 1058–1061, and 1064; and denied-in-part
with respect to Exhibits 1042, 1050, and 1051;
FURTHER ORDERED that Exhibits 1034–1037, 1040, 1041, 1043,
and 1047 shall be expunged; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.
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PETITIONER:
Bob Steinberg
Bob.steinberg@lw.com

Jonathan Link
Jonathan.link@lw.com

Giri Pathmanaban
Giri.pathmanaban@lw.com

PATENT OWNER:

David Hadden
Dhadden-ptab@fenwick.com

Saina Shamilov
Sshamilov-ptab@fenwick.com