Actifio, Inc.v.Delphix Corp.

Patent Trial and Appeal Board

Apr 27, 2016

13301448 (P.T.A.B. Apr. 27, 2016)

Trials@uspto.gov Paper 61
Tel: 571-272-7822 Entered: April 27, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

ACTIFIO, INC.,
Petitioner,
v.
DELPHIX CORP.,
Patent Owner.

Case IPR2015-001281
Patent 8,468,174 B1

Before JENNIFER S. BISK, PATRICK R. SCANLON, and
MINN CHUNG, Administrative Patent Judges.
BISK, Administrative Patent Judge.

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

1 Case IPR2015-00136 has been consolidated with this proceeding.
Case IPR2015-00128
Patent 8,468,174 B1
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INTRODUCTION
A. Background
Petitioner, Actifio, Inc., filed two Petitions requesting inter partes
review of claims 1, 4, 5, 27–29, and 34 (the “challenged claims”) of U.S.
Patent No. 8,468,174 B1 (Ex. 1001, “the ’174 patent”). IPR2015-00128,
Paper 1 (“Pet.”); IPR2015-00136, Paper 1 (“’136 Pet.”).2 On April 29,
2015, we consolidated the two proceedings and instituted an inter partes
review based on the following grounds of unpatentability (Paper 7, “Inst.
Dec.”):
References Challenged
Claims
Edwards, 3 Edwards II,4 Neto,5 and Klivansky6 1, 27, and 28
Edwards, Edwards II, Neto, Klivansky, and
Hart7
4, 5, 29, and 34
This is a Final Written Decision under 35 U.S.C. § 318(a) and 37
C.F.R. § 42.73. For the reasons set forth below, Petitioner has shown by a

2 Because of the substantial overlap in the two Petitions, we will cite only to
the Petition of IPR2015-00128 unless otherwise noted.
3 John K. Edwards et al., FlexVol: Flexible, Efficient File Volume
Virtualization in WAFL, 2008 PROC. OF THE 2008 USENIX ANNUAL
TECHNICAL CONF. 129. Ex. 1003 (“Edwards”).
4 U.S. Patent No. 7,409,511 B2 issued Aug. 5, 2008. Ex. 1005 (“Edwards
II”).
5 ANAND RANGANTHAN & ANTONIO JOSE RODRIGUES NETO, TECHNICAL
REPORT, SNAPMANAGER 3.0 FOR ORACLE BEST PRACTICES, TR-3761 (2009).
Ex. 1004 (“Neto”).
6 MIROSLAV KLIVANSKY, TECHNICAL WHITE PAPER, A THOROUGH
INTRODUCTION TO FLEXCLONE™ VOLUMES, TR3347 (2004). Ex. 1006
(“Klivansky”).
7 U.S. Patent Application Pub. No. 2008/0307345 A1 published Dec. 11,
2008. Ex. 1007 (“Hart”).
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preponderance of the evidence that claims 1, 4, 5, 27–29, and 34 are
unpatentable.
B. Related Matters
The parties indicate that the ’174 patent is involved in the lawsuit
Delphix Corp. v. Actifio, Inc., Case No. 5:13-cv-04613-BLF (N.D. Cal.).
Pet. 2; Paper 58, 1.
C. The ’174 Patent
The ’174 patent describes computer systems and methods for
efficiently managing multiple copies of databases. Ex. 1001, 1:14–16.
Specifically, the ’174 patent recognizes the growing importance of databases
to an organization’s information technology infrastructure and the increasing
amount of resources required to manage these databases. Id. at 1:16–31. A
typical information technology infrastructure includes production database
servers that run applications managing the daily transactions of the
organization. Id. at 1:32–34. Routine changes and upgrades to a production
database or the applications that work with that database typically require
the use of copies of the production databases in order to protect the
production environment. Id. at 1:34–37. Depending on the process used for
making the change or upgrade at issue, this may involve several copies of
the production database—one for each stage of development such as testing,
certification, and training. Id. at 1:37–44. Because production databases are
typically large and complex, the practice of making multiple full copies of
these databases is expensive and inefficient. Id. at 1:44–52.

8 Because of the substantial overlap in the two proceedings, unless otherwise
noted, all citations of Papers and Exhibits are from IPR2015-00128.
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The ’174 patent recognizes these problems and proposes creating “virtual
databases” that share information so that multiple copies of database
information are made only if necessary. Id. at 2:67–3:32. “Systems and
methods for creating and using virtual databases are disclosed in [U.S.
Patent No. 8,150,808 (“the ’808 patent”)], which is incorporated by
reference in its entirety.” Id. at 4:6–9.
The ’808 patent describes 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. Ex. 2002, 6:59–65.
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. Id. at 6:59–7:20.
To virtualize a production database, the system of the ’808 patent
makes a first “point-in-time” (“PIT”) copy of the production database and
stores an entire set of database blocks representing the production database
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at that time in database storage system 100. See id. at 18:27–36, 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 18:38–41. A virtual database (VDB)
is created by creating virtual database (VDB) file structures comprising
VDB blocks that point to different PIT database blocks. See id. at 18:27–55.
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 18:44–
55.
The ’808 patent discloses several embodiments for making PIT copies
of the production database including, by streaming data to the database
storage system and, alternatively, using file sharing. 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 3:29–37
(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 12:19–23),
packages the production database data “into a format that can be processed
by the point-in-time copy manager” (id. at 12:58–62) and builds the
appropriately formatted data into a data stream that is sent to the point-in-
time copy manager. Id. at 12:62–13:3. In some embodiments, “the
production system library 385 includes code” in this stream for analyzing the
structures of the files of the database or process metadata “associated with
database blocks.” Id. at 13:11–16.
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Upon receiving the data stream, the point-in-time copy manager
processes the data stream to identify database blocks contained in it. Id. at
13:27–33. In the data stream, “[e]ach database block includes metadata” (id.
at 13:33–34), which is used, for example, to “identify database block
boundaries in the stream of data” (id. at 14:22–25). 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 14:29–31.
In the “file sharing embodiment” for making PIT copies of a
production database, transfer of production database data is achieved by
“using a file sharing system similar to the file sharing system 120” (id. at
7:57–64), such as a network file system (NFS) (id. at 10:35–37). Figure 1,
which is identical in both the ’174 and the ’808 patents, is reproduced below.

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Figure 1 illustrates the file sharing embodiment for copying
information from a production database to a database storage system to
create a VDB. Ex. 1001, 4:11–14. Database storage system 100
periodically sends request 150 for data to a production database system 110.
Id. at 4:26–35. Production database system 110 responds by sending
information representing changes of data stored in the production database
since the last response 160 sent by the production database system 110. Id.
Database storage system 100 receives and stores the data and “may analyze
the data 160 to determine whether to store the information or skip the
information if the information is not useful for reconstructing the database at
previous time points.” Id. at 4:35–41. “In some embodiments information
may be copied from storage level snapshots of production databases or
clones of production databases instead of a live production database.” Id. at
4:16–19.
Figure 10 from the ’808 patent is reproduced below.

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Figure 10 shows “VDB Files for Time T2” in database storage system 100.
Figure 10 further shows that “VDB file structures 1050” include blocks 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. Ex. 2002, 18:35–38.
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 18:53–55), 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 18:49–51).
Figure 9 of the ’174 patent illustrates how database blocks may be
shared by file structured created for different VDBs. Figure 9 of the ’174
patent is reproduced below.
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Figure 9 of the ’174 patent illustrates how database blocks stored on the
storage system data store may be shared by file structures created for
different virtual databases. Ex. 1001, 2:28–31, 14:1–3. Blocks V13 and
V14 of the file structure 950(a) point at the latest copy of the blocks F33 and
F34 that are not shared with the VDB files 950(b). Id. at 14:4–6. However,
Block V11 of file structure 950(a) shares database block F11 with block U11
of file structure 950(b). Id. at 14:6–8. Similarly, Block V12 of file structure
950(a) shares database block F22 with block U12 of file structure 950(b).
Id. at 14:8–9.
As mentioned above, the ’174 patent incorporates by reference the
entirety of the ’808 patent for describing the creation and use of virtual
databases, but the focus of the ’174 patent is on interfacing and interacting
with these systems. Ex. 1001, Title, 1:14–16, 4:6–9. To this end, the ’174
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patent discloses a user interface which “allows a database administrator to
perform various actions supported by the database storage system.” Id. at
4:22–25. Figure 4 of the ’174 patent is reproduced below.

Figure 4 of the ’174 patent illustrates an interface for allowing a user
to select a source database to create a virtual database. Id. at 2:10–11. In the
user interface, production database systems 110 are displayed as data
sources 420 and “[e]ach data source [420] may display one or more source
databases 410.” Id. at 11:21–26. “In response to the user selecting a
particular source database 410, the user interface provides information
describing the source database including its status, size, name etc. as well as
information describing the various point-in-time copies 430 stored on the
database storage system 100.” Id. at 11:35–39. For each point-time-copy
430, the information provided includes the time at which it was made, the
source database from which it was made—which “can be a virtual database
associated with the database source”—as well as information describing the
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production database system 110 hosting the source database. Id. at 11:39–
46. Figure 5 of the ’174 patent is reproduced below.

Figure 5 of the ’174 patent illustrates the interface for allowing a user to
select a particular point in time associated with the source database for
creating a virtual database based on the selected point in time. Id. at 2:13–
16. In this example, the user selects a point-in-time copy 510 based on
source database 540 for creation of a virtual database. Id. at 12:12–14. User
interface 520, shown by a timeline, allows the user to select a time point,
using slider 530, in between the time of copying of two point-in-time copies.
Id. at 12:14–35.
D. Illustrative Claim
Of the challenged claims in the ’174 patent, claims 1, 27, and 28 are
independent. Claim 1 is illustrative and recites:
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1. A method of creating a virtual database system, the method
comprising:
receiving information identifying a source database for
providing data for storage in a first virtual database and a
second virtual database being created;
receiving information identifying a first point in time, such
that the source database comprises information stored
prior to the first point in time;
receiving information identifying a first destination database
server for accessing the first virtual database being
created; and
creating the first virtual database on a storage system storing
a plurality of point-in-time copies of the source database,
the point-in-time copies comprising database blocks such
that at least some of the database blocks are associated
with multiple point-in-time copies of the source database,
the creating of the first virtual database comprising;
creating a first set of files for the first virtual database,
each file in the first set of files linked with a first set of
database blocks comprising information stored in the
source database prior to the first point in time; and
mounting the first set of files on the first destination
database server allowing the first destination database
server to read from and write to the first set of files;
receiving information identifying a second point in time,
such that the source database comprises information
stored prior to the second point in time;
receiving information identifying a second destination
database server for accessing the second virtual database
being created; and
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creating the second virtual database on the storage system,
the creating of the second virtual database comprising;
creating a second set of files for the second virtual
database, each file in the second set of files linked with a
second set of database blocks comprising information
stored in the source database prior to the second point in
time; and
mounting the second set of files on the second destination
database server allowing the second destination database
server to read from and write to the second set of files.
Ex. 1001, 18:57–19:31.
ANALYSIS
A. Printed Publication—Neto and Klivansky
Patent Owner contests that Neto and Klivansky are prior art “printed
publications” in accordance with 35 U.S.C. §§ 102 and 311(b). Paper 17
(“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). Public accessibility is a
key question in determining whether a document is a printed publication and
is determined on a case-by-case basis. Suffolk Techs., 752 F.3d at 1364. To
qualify as a printed publication, a document “must have been sufficiently
accessible to the public interested in the art.” In re Lister, 583 F.3d 1307,
1311 (Fed. Cir. 2009).
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Initially, we note our disagreement with Patent Owner’s contention
that Petitioner cannot rely upon evidence not submitted with the Petition to
show that Neto and Klivansky are 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
Neto and Klivansky being publicly accessible and prior art. Id. at 3–4. That
position, however, is not informed by 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 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 (Paper 6) we determined there was a reasonable
likelihood that Petitioner would prevail in its challenges that included Neto
and Klivansky. Inst. Dec. 31; 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 Edwards, Edwards II, Neto, and Klivansky
“were published over a span of five years.” Paper 6, 45, 47 (emphasis
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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 Neto and Klivansky, 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
by Louis Hernandez (Ex. 1020) and Joseph Ortiz (Ex. 1028) in response to
objections by Patent Owner9 and a Supplemental Declaration by Mr.
Hernandez (Ex. 1048) 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 foundation 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 Neto and Klivansky
are not printed publications.
Turning to the substance of Exhibit 1020, 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. 1020 ¶¶ 1, 2,
4. Mr. Hernandez testifies further that for most of his time at NetApp, as a

9 Exhibit 1028 is expunged at Petitioner’s request. We do not further discuss
the Exhibit. We address Patent Owner’s motions to exclude these
documents in a separate section, below.
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Systems Engineer, he was responsible for marketing NetApp’s products and
services to numerous customers, prospective customers, business partners,
and/or alliances. Id. ¶ 3. “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. “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 Neto and Klivansky, and that they
were published during his tenure at NetApp or his subsequent tenure at
Midwave, a certified distributor and reseller of NetApp. Id. ¶¶ 7, 8, 14–17.
Patent Owner argues Mr. Hernandez does not declare that Neto or
Klivansky was “publicly accessible.” PO Resp. 2‒3. Patent Owner submits:
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. at 3.
Petitioner replies with a Supplemental Declaration from Mr.
Hernandez. Paper 24 (“Reply”) 7‒8 (citing Ex. 1048). 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. 1048 ¶ 5. According to
Mr. Hernandez, NetApp had more than two hundred Systems Engineers and
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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 reflected features for specific versions of
NetApp’s products or if a document was outdated or updated to reflect more
current features. Id. ¶ 10. Further, Petitioner provides evidence that by
2007 there were more than 94,000 NetApp systems deployed and the
company had thousands of customers in 138 countries. Reply 6; Ex. 1058,
3.10
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 38) and Petitioner’s Response (Paper 44), insofar as they
relate to public accessibility of Neto and Klivansky.11 We acknowledge the
potential for bias in Mr. Hernandez’s testimony as a present employee of

10 We find that Exhibit 1058, a NetApp Form 10-K SEC filing, was properly
submitted by Petitioner as evidence in rebuttal to Patent Owner’s public
accessibility challenge in its Response.
11 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 Paper 60, 211:16–212:18; 224:13–21; 237:1–25.
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Petitioner. We find, however, the testimony in Mr. Hernandez’s
Declarations as to public accessibility of Neto and Klivansky 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 Neto and Klivansky
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).
Finally, Petitioner also submits a declaration it says was produced in
response to Patent Owner’s evidentiary objections. Reply 5. Petitioner
provided the declaration from the office manager of the Internet Archive
(Wayback Machine). Id. (citing Ex. 1023). Klivansky is dated October
2004 and is designated “TR3347” (or Technical Report 3347). Ex. 1006, 1.
According to the testimony regarding how the Internet Archive works (Ex.
1023 ¶¶ 3‒5), we find the evidence indicates that Klivansky was available
on NetApp’s commercial website on, or at least as early as, November 17,
2004. Ex. 1023, 38. Exhibit 1023 indicates that Klivansky was, thus,
“sufficiently accessible to the public interested in the art.” See In re 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)). Petitioner asserts that the level of ordinary skill is not disputed
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in this case and that “[t]here is no difference between customers and
potential customers of NetApp and a [person of ordinary skill in the art].”
Reply 6–7. Mr. Hernandez testifies that NetApp’s customers and potential
customers were entities or individuals who were “interested in data storage
technology, data management technology, database storage and management
technology, and related technologies.” Ex. 1048 ¶ 3. As discussed above,
Mr. Hernandez also testifies NetApp had more than two hundred Systems
Engineers and other sales personnel during the period of 2004–2009 who
distributed NetApp’s technical documents (including Neto) to “thousands”
of customers and potential customers. Id. ¶ 4. Hence, the record supports
Petitioner’s contention that Neto was distributed to persons interested and
ordinarily skilled in the subject matter of database technology at the time of
its publication. See Reply 6–7. In view of the foregoing considerations, we
find that Petitioner has established, by a preponderance of the evidence, that
Neto (dated April 2009) was sufficiently disseminated to persons of ordinary
skill interested in database technology to be deemed “publicly accessible” at
least more than one year before November 30, 2010, the earliest possible
priority date of the ʼ174 patent. See Ex. 1001, (60). Petitioner has also
established, by a preponderance of the evidence, that Klivansky (dated
October 2004) was available to the interested public at least more than one
year before the critical date. Therefore, on this record, we determine Neto
and Klivansky qualify as prior art printed publications under 35 U.S.C.
§ 102(b).
B. Claim Construction
We interpret claims of an unexpired patent using the broadest
reasonable construction in light of the specification of the patent in which
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they appear. See 37 C.F.R. § 42.100(b). On this record and for purposes of
this Decision, we determine that only the claim terms addressed below
require express construction.
1. “database block”
In the Institution Decision, we preliminarily construed the term
“database block,” as “a unit of data used by a database.” Inst. Dec. 14. In
its Response (Paper 17, “PO Resp.”), Patent Owner asserts that this
definition is impermissibly broad. PO Resp. 18–28. Patent Owner’s
proposed construction is “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.” Id. at 18 (emphasis added).
Petitioner, on the other hand, agrees with our conclusion in the Decision to
Institute. Paper 25 (“Reply”) 11–15.
a. Metadata Associated with the Database Block
The main dispute between the parties centers on whether a database
block must necessarily include metadata. Patent Owner asserts that it does
(PO Resp. 18), and Petitioner disagrees (Pet. 11). We agree with Petitioner.
We begin our analysis by considering the language of the claims
themselves. Phillips v. AWH Corp., 415 F.3d 1303, 1314, 1315 (Fed. Cir.
2005) (en banc). The term “metadata” is not recited in any of the claims of
the ’174 patent. The ’808 patent, however, includes two claims that recite
“metadata”—dependent claims 32 and 33, which are not challenged in any
proceeding, of which we are aware, currently before the Board. These
claims depend indirectly from claim 1 of the ’808 patent and expressly recite
“metadata of database blocks.” Thus, had the patentees intended to limit
“database blocks” recited in the claims of the ’174 patent to require
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metadata, they demonstratively could have done so by explicitly modifying
the disputed term with “metadata,” but did not.
Moving to the specification, Patent Owner asserts that the following
passage in the Summary section of the ’808 patent defines the term
“database block.”
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. 18–19 (quoting Ex. 2002, 2:7–12).
The first phrase in the cited passage above explicitly defines the term, by
stating “[a] database block is a unit of data used by a database.”12 Ex. 2002,
2:7–9. Although the sentence following shortly thereafter states that a
database block “stores metadata,” that sentence by itself is insufficient to
limit the disputed term by requiring the unclaimed “metadata” feature
because it does not state unambiguously that all “database blocks” must
include metadata. See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898,
906 (Fed. Cir. 2004) (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 also does

12 The first sentence also states a database block comprises “a specific
number of bytes stored in the storage.” For the reasons discussed below, we
find this addition is not part of the explicit definition but, rather, represents
embodiments within the defined term. Patent Owner also fails to explain
how to interpret this particular phrase or how it presents a material issue
related to the prior art.
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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”).
More importantly, the rest of the ’174 patent is consistent with a definition
of database blocks that does not require metadata in all database blocks.
Patent Owner asserts, citing certain portions of the ’808 patent and the
Declaration of Prashant Shenoy, Ph.D. (Ex. 2030, “Shenoy Decl.”), that if a
database block does not include metadata, the disclosed system would not
work as described. PO Resp. 19–20. 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 incremental changes
made to the production database (id. (citing Ex. 2002, 13:34–36, 46–51)),
which is “one of the main functions” of the claimed system (id. at 19 (citing
Ex. 2002, 6:30–34, 40–43, 7:49–57; Ex. 2030 ¶¶ 85–86)) essential to
achieving “a main purpose” of the invention—“to efficiently provide virtual
databases . . . without proliferating redundant copies of database data” (id.
(citing Ex. 2030 ¶ 86)). 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 20 (citing Ex. 2002, 14:27–31).
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
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advantages or purposes, and there is no requirement that every claim
directed to that invention be limited to encompass all of them.”) (citations
omitted).
Moreover, Patent Owner focuses its arguments on the streaming
embodiment, however, Patent Owner does not show that the file sharing
embodiment requires this approach, 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., Ex. 2002, 13:10–12
(“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”)
(emphases added),13 6:11–17 (“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). When file sharing, as opposed to streaming,
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 without packing and unpacking the database blocks of the
database file into and out of data streams. Ex. 1001, 5:29–36.
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.

13 The phrase “metadata associated with database blocks” implies any
metadata need not be in the database blocks.
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Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003), independent claims
1, 27, and 28 recite creating a virtual database on a storage system storing a
plurality of point-in-time copies of the source database. 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 are not
limited to either embodiment, and, therefore, the streaming embodiment
cited by Patent Owner does not limit the claims.
Further, even looking at the streaming embodiment, we are not
persuaded that metadata is required by database blocks. Patent Owner
points only to a single streaming embodiment (PO Resp. 19–20), in which
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. Ex. 2002, 13:43–64.
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 13:64–14:3 (“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
second 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,
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nothing in the specification 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).
Therefore, in view of the entire disclosure of the ’174 patent and the
plain language of the claims, we find that the intrinsic record before us does
not justify limiting the term “database block” by reading in the “metadata”
limitation not found in the claims. See Liebel-Flarsheim Co., 358 F.3d at
908.
Patent Owner also argues additional evidence supports its proposed
construction requiring data blocks to include metadata. For example, citing
the testimony of Dr. Shenoy, Patent Owner asserts that all database
management systems mentioned in the ’174 patent, such as Oracle and IBM
DB2 (Ex. 1001, 3:11–15), require metadata in database blocks. PO Resp.
21–22 (citing Ex. 2030 ¶¶ 41–46, 83–84). In the paragraphs cited by Patent
Owner, Dr. Shenoy discusses various documents describing the database
systems listed in the ’174 patent, including Oracle, Sybase, Microsoft SQL
Server, and IBM DB2, and testifies that these database systems all require
metadata in database blocks.14 Ex. 2030 ¶¶ 43–46, 83–84 (citing testimony
from Petitioner’s declarant, Dr. Zadok in another related case). Relying
upon the testimony of Dr. Shenoy, Patent Owner also asserts that “[i]t is well
known to one skilled in the art that a database block necessarily includes

14 However, neither Patent Owner’s brief nor Dr. Shenoy’s testimony
discuss the MYSQL database system mentioned in the ’174 patent.
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metadata.” PO Resp. 21 (citing Ex. 2030 ¶¶ 83–84); see also id. at 19
(“[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. 2030 ¶¶ 41–46,
83). In his Declaration, Dr. Shenoy discusses a treatise on database systems
(Ex. 2015, “Molina”) and testifies that it is generally understood that a
database block or a page will include metadata. Ex. 2030 ¶ 41–42 (citing
Ex. 2015, 29, 31).
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 ’174 patent—is 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).
Petitioner argues that Patent Owner does not provide any evidence
that database blocks require metadata in database systems other than
relational database systems. See Reply 13. Petitioner correctly points out
that the ’174 patent specification states that the disclosed invention “can be
used for any database.” Id. (quoting Ex. 1001, 3:15–19) (emphasis by
Petitioner). Further, 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. 2002, 5:8–15.
Thus, we agree with Petitioner that the ’174 patent does not limit its
disclosed invention to relational database technology.
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Similarly, the portion of the Molina treatise relied upon by Dr. Shenoy
appears to describe features of a relational database system, not
characteristics common to all databases in general. See, e.g., Ex. 2015, 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).
Relying on the testimony of Dr. Zadok submitted with its Reply
(Ex. 1064), Petitioner asserts that, in other type of database systems, such as
Google’s BigTable database, metadata is stored separately from the database
blocks.15 Reply 13 (citing Ex. 1049, 4; Ex. 1064 ¶ 25). Petitioner also
argues, citing the testimony of Dr. Zadok and another treatise on database
systems (Ex. 1050, “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. Reply 13 (citing Ex. 1064 ¶¶ 26–29; Ex. 1050, 431;

15 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 Reply 13 (citing Ex. 2030 ¶ 33). In
addition to disclosing that “the techniques disclosed can be used for any
database,” (Ex. 1001, 5:15–19) the ’808 patent provides another broad
description—“[a] database comprises data stored in a computer for use by
computer implemented applications” (Ex. 2002, 4:67–5:1). Under either
description or Mr. Shenoy’s testimony, we agree with Petitioner that a
“database” encompasses many types of databases other than the relational
databases, including Google’s BigTable, flatfiles, and spreadsheet databases,
and “any database.”
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Ex. 1053 (flat file database “is unlike a relational database” according to
techopedia.com); Ex. 1055, 15 (examples of flat files or ordinary text files)).
Therefore, Petitioner asserts that the ordinary meaning of database block
does not require including metadata. See id., Ex. 1064 ¶ 22.
We agree with Petitioner that all extrinsic evidence Patent Owner
relies upon to argue 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 (“[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.”) (citations and 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.
b. “Application Level” v. “Storage Level”
Patent Owner also argues, citing the passages in the ’808 patent
describing the streaming embodiment, that a “database block” must include
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metadata because “the ’174 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. 28 (emphasis added); see also id. at 16–18 (making the same
argument) (citing Ex. 1001, 4:37–41; Ex. 2002, 13:43–60, 14:27–41).
Patent Owner asserts, therefore, a “database block” cannot be a “storage
level unit of data.” Id. at 25 (emphasis added). The passages of the ’808
patent cited by Patent Owner, however, describe solely the streaming
embodiment and, therefore, do not limit the challenged claims as discussed
above.16
Patent Owner also asserts that the system of the ’174 patent “operates
at the application level” because the system uses APIs (application program
interfaces) to copy database blocks. Id. at 16–17 (citing Ex. 1001, 5:19–24;
Ex. 2030 ¶ 72). Petitioner argues that Patent Owner’s argument is contrary
to disclosed embodiments of the ’174 patent because the patent teaches the
system “may retrieve the necessary database blocks from storage level
snapshots of production databases.” Reply 14 (citing Ex. 1001, 6:4–8)
(emphasis added by Petitioner). We agree with Petitioner’s argument and
further note that the ’174 patent also discloses copying of database blocks
from storage level snapshots of a database. See Ex. 1001, 4:11–19 (“FIG. 1

16 Patent Owner also cites the ’174 patent’s statement (PO Resp. 17) that
“[t]he database storage system 100 may analyze the data 160 received to
determine whether to store the information or skip the information if the
information is not useful for reconstructing the database at previous time
points.” Ex. 1001, 4:37–41 (emphasis added). This statement, however,
uses permissive language and does not limit the claims as asserted by Patent
Owner.
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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 ’174 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. 25–28 (citing Ex. 2030
¶¶ 27–33). In particular, Patent Owner asserts that an Oracle document (Ex.
2004, “Oracle Database Concepts 11g Release 2 (11.2)”) explains this “well-
known distinction.” Id. at 25–26 (citing Ex. 2004, 250, Fig. 12-5). Patent
Owner further argues “neither are file system blocks accessible to a database
nor are database blocks accessible to the file system.” Id. at 27 (citing Ex.
2030 ¶¶ 94–98). Therefore, Patent Owner argues a construction of the term
“database block” that encompasses a storage unit block is incorrect. Id. at
28.
As a threshold matter, we note that the Oracle document is dated May,
2014, which is several years later than the filing date of the ’174 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
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discussed above, we find the written description of the ’174 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” or a “storage 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., Inc. v. Stamps.com, Inc., 582 F.3d
1341, 1348 (Fed. Cir. 2009); Phillips, 415 F.3d at 1318.
c. A Specific Number of Bytes Stored in the Storage
In the Institution Decision, we found that database blocks of the ’174
patent need not 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 the storage.” Inst. Dec. 13–14. Patent Owner continues to
argue that this is a requirement of the proper construction of “database
blocks.” PO Resp. 18.
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 any number of different sizes independent of the size of the
file system data blocks which may ultimately store the database data.” PO
Resp. 27 (citing Ex. 2030 ¶ 95). Patent Owner also states that an IBM DB2
database page can be up to 32KB in size, spanning 8 WAFL data blocks,
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most of which will not contain any metadata for the database page. Id. at 28
(citing Ex. 2017 at 128).
According to Patent Owner’s arguments, a database block may be
“any number of different sizes.” Therefore, the database blocks of the ’077
patent need not have a constant specific number of bytes stored in storage.
d. “Database Block” v. “File”
Next, Patent Owner argues that the construction proposed by
Petitioner (Pet. 9) and preliminarily adopted in our Institution Decision (Inst.
Dec. 14)—“a unit of data used by a database”—is improper because it would
equate a “database block” with a “file.” PO Resp. 23–25. Citing
dictionaries, Patent Owner argues that the ordinary meaning of “file” is “a
unit of data.” Id. at 24 (citing Ex. 2022, 3; Ex. 2023, 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. Reply 14–15 (citing Ex. 1031, 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
fact, the full definitions of a “file” provided in the Patent Owner cited
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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. 2022, 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. 2023, 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.
e. 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, 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 description of the invention will be, in the end, the correct
construction.”) (citation omitted).
2. “virtual database”
In the Institution Decision, we preliminarily construed the term
“virtual database,” to mean “a set of database files capable of being read
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from and written to, and capable of being mapped to physical addresses for
stored database blocks.” Inst. Dec. 20. Petitioner agrees with this
construction. Reply 15–18. Patent Owner, on the other hand, asserts that
this definition reads out the “virtual” requirement. PO Resp. 31. Patent
Owner, instead proposes that the term 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 28.
To analyze Patent Owner’s proposed construction, Patent Owner
defines a virtual database as “a set of files” or “database 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) “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.
a. Database Server Can Read and Write
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. 32. 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, 27, and 28 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
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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)
(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 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. 31–32. Patent
Owner’s argument is unpersuasive because the same objective can be
accomplished without inserting the extraneous term by directly stating a
virtual database must be “a set of database files.” In fact, the ’174 patent
describes that a virtual database comprises “database files.” See, e.g., Ex.
1001, 3:19–22 (“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.”), 41–42 (“A virtual database
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may be created on a database server by creating the database files . . . .”)
(emphases added). Patent Owner appears to argue this is insufficient
because “[t]o be a database file, a database server must be able to read, write
and understand its contents.” PO Resp. 32 (citing Ex. 2030 ¶ 108). We are
not persuaded by this argument because it does not comport with the written
description of the ’174 patent.
First, the ’174 patent provides a description of a “database” as
follows: “[a] database comprises data stored in a computer for use by
computer implemented applications.” Ex. 1001, 2:63–64 (emphasis added).
Furthermore, the ’174 patent announces that the disclosed invention “can be
used for any database.” Id. at 3:15–18. Hence, a database file may be used
by an application or a program but not necessarily a “database server,”
which is a server-side program in a client-server system or network. See id.
at 2:64–67, 17:13–16; see also Paper 60 (“Tr.”) 184:1–185:12 (Patent
Owner acknowledges that a client-server architecture is not necessary to
give meaning to “virtual database” and that “a database server” in its
proposed construction “is used synonymously . . . with database
application.”).
Furthermore, the ’174 patent describes that various programs that are
not a database server can read and write to a database or database file and
understand its content. For example, the virtual database manager program
at the database storage system can create, read, and write to read/write files
representing a virtual database. See Ex. 1001, 3:64–66; Ex. 2002, 17:57–63,
18:27–31. Other programs of the database storage system, such as the point-
in-time copy manager and the storage allocation manager, can create, read,
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and write to database files based on database blocks received from the
production system. See Ex. 1001, 7:18–35, 7:52–8:3.
Therefore, contrary to Patent Owner’s contention, the written
description of the ’174 patent shows that a database does not require a
database server reading and writing to the database. Patent Owner’s
proposed construction would improperly import a particular embodiment
from the specification by reading in the operation of a database server to
impermissibly narrow the meaning of the term “virtual database.” As
discussed above, features of particular embodiments may not be read into
the claims “absent clear disclaimer in the specification.” Am. Acad. of Sci.
Tech Ctr., 367 F.3d at 1369.
On the other hand, the specification shows that the readable and
writable characteristics are inherent attributes of a virtual database. See,
e.g., Ex. 1001, 2:59–62 (“the virtual databases can then be individually
accessed and modified as desired”); Ex. 2002, 18:27–28 (“FIG. 10 indicates
how storage efficient copies are made to create a read/write file structure
representing a VDB.”), 17:57–63 (“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 PIT copy.”), 18:12–15 (“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 definition of “database” provided in the specification, as
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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.”
b. 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 ’174 patent to
support the second proposed modifying phrase—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. 28–29 (quoting Ex.
1001, 3:19–22). Patent Owner asserts this sentence explicitly defines the use
of the word “virtual” in the term “virtual database.” Id. However, the ’174
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 ’174 patent, which is applying the general
concept of virtualization—“the decoupling of a computing process from the
platform on which it operates”—to databases. Id. (emphases added) (citing
Ex. 2030 ¶¶ 23–26, 100). Petitioner asserts Patent Owner confuses
“platform virtualization” with “database virtualization” or “virtualizing
data.” See Reply 16–17. We agree with Petitioner that “platform
virtualization” is unrelated to the concept of “virtual database” as claimed
and described in the ’174 patent.
In his Declaration, Dr. Shenoy testifies that the Java programming
language running on a Java Virtual Machine as described in an Oracle
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document explains the general concept of platform virtualization. See
Ex. 2030 ¶¶ 24–25 (citing Ex. 2003, 451–452, Fig. 24-7). Patent Owner’s
discussion of 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. 2030
¶¶ 23–24 (emphasis added). The ’808 patent also describes that a “virtual
machine” is “provided by platform virtualization software” or “server
virtualization software.” Ex. 2002, 7:16–19 (emphases added). Further, the
’174 patent describes a Java Virtual Machine as part of production database
system 110 (Ex. 1001, 5:51–53), which is separate from virtual database 220
stored on database storage system 100, as discussed above. Hence, Patent
Owner’s discussion of the Java Virtual Machine (PO Resp. 32 n.9) 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 files as expressly recited
in the claims and described in the specification (see, e.g., Ex. 2002, 6: 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. 2030 ¶ 72
(quoting Ex. 1001, 5:19–24). The cited portion of the ’174 patent describes,
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however, the APIs are provided by “production system library 285” and
“vendor interface module 235,” which are programs or software code
modules residing at the production system. See, e.g., Ex. 1001, col. 5:24–27
(“An example of a vendor interface module is the program code of a
database server provided by vendor ORACLE that implements RMAN
APIs.”) (emphasis added); Ex. 2002, 13:10–12 (“the production system
library 385 includes code to analyze the structures of the files of the database
stored in the data store 350”) (emphasis added).
Dr. Shenoy similarly testifies that “each database (130c)” depicted in
Figure 1 of the ’174 patent is “virtual” (Ex. 2030 ¶ 101; see also PO Resp.
29 (citing Ex. 2030 ¶ 101)) when, in fact, Figure 1 shows the part identified
by Patent Owner is Virtual Database System 130(c), not the virtual database,
which is stored in a different system, namely, Database Storage System 100.
As described in Figure 2a of the ’808 patent reproduced above, virtual
database system 130 is separate from and external to virtual database 220
stored on database storage system 100. 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. 2002, 12:3–13 (“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.
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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. Reply 16–17. We agree with Petitioner, but our analysis
underscores a related salient point, which is that 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 ’174 patent, a
database system generally comprises a 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, 2:63–67; 5:7–36. 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. 2030 ¶ 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
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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 importing the function or operation 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. If patentee intended to
claim the function or 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. 31 (citing
Inst. Dec. 20). Patent Owner’s argument is unpersuasive because our refusal
to read the functions and 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
’174 patent.
Turning to the claim language and the written description, the
challenged independent claims recite, with emphasis added, creating “a . . .
set of files for the . . . virtual database, each file in the . . . set of files [is]
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linked with . . . database blocks.” Similarly, the Specification describes as
follows:
A virtual database may be created on a database server by
creating the database files for the production database
corresponding to the state of the production database at a
previous point in time, as required for the database server. The
files corresponding to the virtual database are made available to
the database server using a file sharing mechanism, which links
the virtual database to the appropriate database blocks stored on
the storage system.
Ex. 1001, 3:41–48 (emphasis added); see also Ex. 2002, 2:24–27 (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.” Ex. 2002, 18:27–28. 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 18:47–49 (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 18:49–55 (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,
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such as V11, which is stored at one location, actually results in writing to a
copy of the original block of data F11 at another physical location:
For example, if the virtual database system 130 writes to the
block V11, space is allocated and block F11 copied to the
allocated block. Hence, the original copy of the block F11 is
maintained as a read only copy and the virtual database system
130 is allowed to write to a copy of the appropriate database
block created specifically for the virtual database system 130.

Id. at 19:51–57. 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 19:44–48. In addition, “[a] database block that
is not written to by virtual database systems 130 may be shared by several
virtual database systems without being copied for a specific virtual database
systems 130.” Ex. 1001, 14:50–53.
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. Ex. 2002,19:44–53, Figs. 10–12.
Figure 9 also shows how database blocks may be shared by file
structures created for several virtual databases. Ex. 1001, 14:1–3. File
Structures 950(a) and 950(b) include blocks V11–V14 and U11–U14
respectively. Id. at 14:3–8. Each of these blocks is implemented as a
pointer to the actual database block storing the relevant data. Id. Thus,
several blocks in the virtual database may share the same database blocks—
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V11 and U11 both point to the same copy of F11. Thus, the ’174 patent
indicates that the database files are “virtual” in the sense that they create the
illusion of storing data, but the system actually stores the data elsewhere in
another physical location (F11) specified by the pointing blocks such as V11
and U11. The ’174 patent also describes the procedure for writing to a
shared database block, such as V11: “For example, if the virtual database
system 130 writes to the block V11, space is allocated and block F11 copied
to the allocated block.” Id. at 14:37–39.
Based on the disclosure in the ’174 patent discussed above, “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 ’174
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” in part, because
“common database blocks are shared between different point-in-time copies.
This is imperceptible to the . . . user.” Ex. 2030 ¶ 67. Similarly, Dr Shenoy
testifies 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. ¶ 106) (emphasis added).
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Nonetheless, Patent Owner argues that the preliminary construction is
erroneous because database files of any database, including a source
database, can be “mapped to physical addresses for stored database blocks.”
PO Resp. 31 (citing Ex. 2030 ¶ 108–109). Apparent inconsistencies in Dr.
Shenoy’s testimony aside, Patent Owner’s argument is unpersuasive because
the ’174 patent expressly claims and describes that a source database can be
a virtual database. See Ex. 1001, 14:20–21; 15:20–22; claim 13. 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 since an ordinary, non-virtual
database consists of its own database blocks and would not be created by
mapping or pointing to stored blocks of a different database. This tracks the
claim language of the challenged claims, which define how to create a VDB,
which in turn, tracks Dr. Shenoy’s testimony. See Ex. 2030 ¶¶ 63, 106.
Furthermore, although not argued by the parties, it is not necessary to
require that the mapped database blocks are associated with a point-in-time
copy of a database because the challenged independent claims expressly
recite virtual database files wherein “at least some of the database blocks are
associated with multiple point-in-time copies of the source database.” See
Digital-Vending Servs. Int’l, 672 F.3d at 1274–75. 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.”
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C. Obviousness Grounds
Petitioner asserts that the challenged independent claims—1, 27, and
28—are obvious over a combination of Edwards, Edwards II, Neto, and
Klivansky (collectively, the “NetApp References”) and the challenged
dependent claims—4, 5, 29, and 34—are obvious over the NetApp
References combined with Hart.
1. Overview of the NetApp References
The NetApp References relate to a system created by Network
Appliance, Inc. (“NetApp”). See generally, Exs. 1003 (“Edwards”), 1004
(“Neto”), 1005 (“Edwards II”), 1006 (“Klivansky”). Edwards II is a patent
assigned to Network Appliance, Inc. and each of Edwards, Neto, and
Klivansky are articles that refer to NetApp, NetApp, Inc., or Network
Appliance, Inc. on their cover page. See Ex. 1003; 1004; 1006. NetApp’s
products include the Data ONTAP operating system, which includes a
proprietary file system called Write Anywhere File Layout (“WAFL”). Ex.
1003, 10; Ex. 1004, 1, 9; Ex. 1005, 2:19–22; Ex. 1006, 3–4; PO Resp. 35
(citing Ex. 2030 ¶ 116).17 All of the NetApp References discuss using the
WAFL file system to create copies of instances of file systems, otherwise
known as volumes. See, e.g., Ex. 1003, 10 (“A volume is an instantiation of
the file system. . . . The WAFL file system implements these volumes”); Ex.
1004, 9, 13; Ex. 1005, 3:31–35; Ex. 1006, 4–6.
Patent Owner argues that Petitioner has not properly shown that the
NetApp References describe “exactly the same NetApp” technology because

17 When referencing Edwards, Exhibit 1003, we refer to the pagination
inserted by Petitioner in the bottom, right-hand corner of each page.
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the four documents “do not reference each other,” “describe different
embodiments of technology,” and “bear dates years apart.” PO Resp. 4–7.
According to Patent Owner, the common terms used throughout the
documents, such as FlexVol and FlexClone are NetApp trademarks
associated with products and technologies that have changed over time. Id.
at 5. Specifically, Patent Owner asserts that Edwards and Neto are dated
several years after Klivansky and describe “new features” establishing that
they do not describe the same embodiment addressed in the older
documents. Id. at 5–6.
We are persuaded that a preponderance of evidence demonstrates that
the four NetApp References are sufficiently related for purposes of this
obviousness analysis. Patent Owner does not dispute that all four documents
refer to NetApp products and technologies that include FlexVol, FlexClone,
Snapshots, and the ONTAP operating system. See Ex. 1018 ¶¶ 35–43; PO
Resp. 35–39. Even if the documents refer to various versions of those
products and technologies, we are persuaded that a person of ordinary skill
in the art would have been motivated to look to the teachings of the four
references based on express disclosures in the references themselves.
For example, the basics of NetApp storage and cloning are described
by Edwards and Edwards II. Pet. 30–31 (citing Ex. 1018 ¶¶ 102–103).
Although the patent discussing this cloning technology (Ex. 1005, filed
April 30, 2004) was filed prior to the publication of an article (Ex. 1003,
dated June 22–27, 2008) on the same topic, we are not persuaded that this
time difference would deter a person of ordinary skill from combining the
teachings of the two references. This is true even if the Edwards article
describes updates to the cloning technology not discussed by Edwards II.
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And Edwards explicitly discusses the use of writable Snapshot copies in
database environments to make “copies of a production database for
development or test purposes.” Ex. 1003, 14. A person of ordinary skill in
the art looking to implement such a solution would have looked to other
NetApp publications such as Neto, which explicitly states that it “is intended
for use by ‘Oracle database administrators, storage administrators, and
architects implementing a backup, recovery, and cloning solution for Oracle
databases running on NetApp storage’” (Pet. 30 (quoting Ex. 1004, 4)) and
Klivansky, which describes its contents as being useful as “a way of
understanding the full landscape of FlexClone benefits, as a refresher of
specific FlexClone operations, or as a guided tutorial that filer administrators
can try” (Pet. 31 (quoting Ex. 1006, 25)). Given these explicit statements,
we are persuaded that a person of ordinary skill would look to combine the
teachings of Klivansky with the teachings of the other references even if
Klivansky, published in 2004 (Ex. 1006), discussed an older version of the
cloning technology.
a. Overview of Edwards
Edwards describes “virtualization,” “a well-known method of
abstracting physical resources and of separating the manipulation and use of
logical resources from their underlying implementation.” Ex. 1003, Abs.
Specifically, Edwards discusses “virtualiz[ing] file volumes in the WAFL
file system” to create FlexVol volumes. Id. These FlexVol volumes
essentially comprise 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
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this file system. This introduces 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.
Ex. 1003, 11 (second emphasis added). The FlexVol volumes “are managed
independent of lower storage layers.” Id. Abs.
Edwards further explains this virtualization technology is used “to
implement writable Snapshot copies (called [clones or] 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 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
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version of Edwards’s Figure 1, to demonstrate this step in cloning, as
follows:

Pet. 16. Figure 1, as annotated by Petitioner, depicts WAFL data structures
of a Snapshot copy and a clone volume based on the Snapshot copy. The
new vol_info block, “contains the inode describing the inode file, which in
turn contains the inodes for all of the other files in the file system, including
the other metadata files.” Ex. 1003, 10. Edwards further discloses that
multiple clones of a volume may be created: “[v]olume clones also present a
natural case for thin provisioning, since users will often want many clones of
a given volume.” Id. at 15.
b. Overview of Edwards II
Like Edwards, Edwards II discusses the WAFL file system and
describes creating writable copies of virtual volumes by using snapshots of
FlexVol volumes. Ex. 1005, Abs., 3:31–57, 6:49–53. It specifically
discusses that multiple snapshot copies of a database may be created on a
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regular schedule that share the same file system blocks. Id. at 3:44–49,
4:26–38. Extra storage blocks are required only for any differences between
the copies. Id. at 4:38–39.
c. Overview of Neto
Neto describes a NetApp product called SnapManager for Oracle. Ex.
1004, 1. SnapManager uses other NetApp products, including Snapshot and
FlexClone, to provide “quick, space-efficient cloning of Oracle databases.”
Id. SnapManager has a GUI that allows a user to create these copies. Id. at
42. Neto shows an example of an administrator creating two virtual
databases based on two snapshots. Id.; Ex. 1018 ¶¶ 72–73. The figure from
page 42 of Neto is partially reproduced below.

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Ex. 1004, 42. “To clone a database from an existing backup using the
SnapManager GUI, right-click on the backup and then select ‘Clone…’.”
Id. After creating a copy, Neto discloses mounting it on a database host. Id.
at 50.
Neto also describes using SnapManager’s GUI to restore a database to
a selected, prior point in time based on a corresponding backup. Id. at 35.
The figure from page 36 of Neto is partially reproduced below.

Id. at 36. “To restore and recover from a backup using the SnapManager
GUI, right-click on the backup and select ‘Restore/Recover…’.” Id.
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d. Overview of Klivansky
Klivansky is “a thorough introduction to FlexClone volumes.” Ex.
1006, Title. In one of several hypothetical scenarios, Klivansky describes
creating multiple FlexClone volumes of a source volume and mounting each
volume to different servers. Ex. 1006, 18–19. In another example,
Klivansky maps a clone volume to a testing server “via iSCSI.” Id. at 25.
2. Overview of Hart
Hart is a patent assigned to Apple relating to a “user interface for
electronic backup.” Ex. 1007, Title. According to Petitioner, the subject
matter of Hart has been commercialized as a backup feature in Apple’s Mac
computers. Pet. 26 (citing Ex. 1018 ¶ 96). Hart discloses allowing a user to
select one of any stored backups of their computer files in order to restore
their computer to a particular time. Ex. 1007, ¶¶ 30, 50. Hart discloses an
implementation of the GUI for this process uses a timeline—“a vertical
column of tick marks.” Id. at ¶¶ 8, 81. Figure 16 of Hart is reproduced
below.
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Figure 16 “shows an implementation of timeline 1402 where the cursor has
moved to particular tick mark near the top”—between January and February
2003.” Id. at ¶ 90.
3. Claims 1, 27, and 28
Petitioner asserts that independent claims 1, 27, and 28 are
unpatentable as obvious over all four NetApp References combined. Pet.
37–57; ’136 Pet. 54–58. Claim 27 differs from claim 1 only slightly in that
it claims a “computer-implemented system for creating a virtual database”
with several “manager modules” that are configured to perform the steps
recited by the method of claim 1. Similarly, claim 28 differs from claim 1
only in that it claims a “computer program product” with several “manager
modules” that are configured to perform the steps recited by the method of
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claim 1. Except where specifically noted, we do not differentiate between
the independent claims in our discussion below.
a. “receiv[ing] information identifying a source
database for providing data for storage in a first
virtual database and a second virtual database
being created” and “recei[ing] information
identifying a first/second point in time”
Patent Owner argues that Petitioner does not sufficiently show
“receiv[ing] information identifying a source database for providing data for
storage in a first virtual database and a second virtual database being
created” and “receiv[ing] a first/second point in time” (“the receiving
limitations”) recited by all the challenged claims.
When discussing the receiving limitations, the Petition discusses both
Edwards and Neto. First, the Petitioner discusses Edwards’ disclosure of
“creating multiple virtual (clone) databases based on a source ‘parent
volume’ containing a database.” Pet. 37–38, 39, 48–49 (citing Ex. 1003,
14–15). Petitioner explains that based on this disclosure, “Edwards
discloses creating a first virtual (clone) database and a second virtual (clone)
database.” Id. (citing Ex. 1018 ¶¶ 141, 148). Petitioner then concedes that
Edwards does not explicitly disclose the receiving of information identifying
the source database for these two databases, but states that it is inherent—
“the only way to clone a source database is to identify it for cloning.” Id.
Second, the Petition points to Neto as disclosing the receiving
limitations. Id. at 37–40, 48–49 (citing Ex. 1018 ¶ 142, 149, 174).
Specifically, Petitioner points to Neto’s disclosure of the SnapManager GUI
receiving information identifying a source database when the user selects the
source database in the GUI, and then selecting to clone that database. Id.
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(citing Ex. 1018 ¶¶ 143–144, 149–150, 174–175). Petitioner points to
Neto’s statement that “each developer or QA engineer can be provided with
his or her own personal copy of the database” as evidence that Neto
discloses that multiple clones of a source database can be created and notes
that these copies may be made at different points in time. Id. at 39 (quoting
Ex. 1004, 42) (citing Ex. 1004, 27; Ex. 1018 ¶ 145). Petitioner then argues,
and provides testimony from Dr. Zadok, that a person of ordinary skill in the
art would have combined these teachings of Neto with those of Edwards
because Neto provides “a step-by-step user guide to implement the same
FlexClone technology-based cloning technique.” Pet. 39 (citing Ex. 1018
¶ 146).
Patent Owner asserts that Petitioner does not identify anything in the
prior art references that it relies on for disclosing “for providing data for
storage in a first virtual database and a second virtual database being
created.” PO Resp. 40 (citing Pet. 37–39; ’136 Pet. 37–39). Patent Owner
argues that the disclosure of Neto described above is not sufficient because
the “backup snapshot” selected by the user as a source for cloning is
“already stored; it is not selected by a user to provide data for storage in a
first virtual database and a second virtual database being created, as required
by the claims.” PO Resp. 40 (citing Ex. 2030 ¶¶ 139–14218). Patent Owner
asserts that “the three independent claims require identification of a source
database for providing data for storage in a first virtual database and a
second virtual database and a storage system which stores the data provided
by the source database.” Id. at 40–41 (citing Ex. 2030 ¶¶ 139–142). In

18 The relevant testimony appears to be located at Ex. 2030 ¶¶ 142–143.
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other words, Patent Owner argues that this claim limitation excludes
situations in which the source database is already stored on the same
database storage system on which the two point-in-time virtual databases are
going to reside. Instead, according to Patent Owner, this limitation only
encompasses situations where the chosen source database is stored
somewhere else and, thus, the database blocks from the source database
must be received for the point-in-time copies.
Patent Owner also argues that Petitioner maps all three of the
receiving limitations to a single action—a user selecting a backup of a
database to be cloned on a GUI—but that Petitioner does not point to any
disclosure that “explains what information, identifiers or variables
SnapManager in fact receives when the user selects a backup on the [GUI].”
PO Resp. 41. Thus, according to Patent Owner, Petitioner does not identify
of identification of “a source database” or “a point in time” as required by
the receiving limitations. Id. at 41–42 (citing Ex. 2030 ¶¶ 140–41).
We find a preponderance of the evidence demonstrates that a person
of ordinary skill would have found the receiving limitations obvious. We
are not persuaded that, as Patent Owner argues, these limitations require
“identification of a source database for providing data for storage” in the
two point-in-time virtual databases or “a storage system which stores the
data provided by the source database.” PO Resp. 40–41. The plain
language of the claims requires only the receipt of “information identifying a
source database for providing data for storage [the two virtual databases]
being created.” Nothing in these words demands that the data in the source
database be stored in any particular location. Nor does it call for moving or
receiving data from one storage system to another. This reading of the
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receiving limitations is also consistent with the Specification, which states
that the “source database presented to the user for selection” may include
databases “for which the database storage system 100 has stored point-in-
time copies and transaction logs” indicating that the data in some source
database already resides on the same system as the virtual databases to be
created. Ex. 1001, 10:1–5; Reply 9–10, 19 (citing Ex. 1064 ¶ 49); see also
Ex. 1001, 11:35–39 (“In response to the user selecting a particular source
database 410, the user interface provides . . . information describing the
various point-in-time copies 430 stored on the database storage system
100.”), Figs. 3, 4. Moreover, claim 13 explicitly recites “[t]he method of
claim 1, wherein the source database is a previously created virtual
database,” which means claim 1 is at least broad enough to include this
circumstance. See Reply 10 (citing Ex. 1064 ¶ 10).
We also credit Dr. Zadok’s testimony that a person of ordinary skill in
the art would understand Neto as teaching that by selecting an existing
backup database in the GUI, both a source database and a point-in-time are
simultaneously selected and identified. Ex. 1018 ¶¶ 174–75; Ex. 1064
¶¶ 51–53. And we agree with Petitioner that the claim does not require the
information identifying the source database and the point-in-time to be
implemented as separate and distinct variables. See Reply 19–20. Thus, we
are not persuaded by Patent Owner’s argument that Petitioner does not
identify of identification of “a source database” or “a point in time” as
required by the receiving limitations.
b. “creating a first/second set of files for the
first/second virtual database, each file in the
first/second set of files linked with a first/second set
of database blocks comprising information stored in
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the source database prior to the first/second point in
time”
Each of the challenged claims recited “creating a first set of files for
the first virtual database, each file in the first set of files linked with a first
set of database blocks comprising information stored in the source database
prior to the first point in time” and an identical limitation with all
occurrences of the word “first” replaced with the word “second” (“the
creating a set of files limitations”). Patent Owner argues that Petitioner does
not sufficiently show these limitations disclosed by the prior art references.
PO Resp. 42–45; 51–52 (citing Pet. 45; ’136 Pet. 45).
The Petition points to Edwards’s creation of FlexClone volumes as
teaching the creating a set of files limitations. Pet. 45–47 (citing Ex. 1003,
9–15; Ex. 1018 ¶¶ 162–63, 166, 168). According to Petitioner, cloning a
volume containing a database by creating a new vol_info block “creates a
new file system comprising a new set of database files.” Reply 22 (citing
Pet. 13–17).
Patent Owner argues that Edwards’s creation of FlexClone volume of
a stored snapshot is not “a newly created set of files,” but is “merely a copy
of the ‘vol_info’ block of the volume to be cloned with pointers to existing
files.” PO Resp. 43. Patent Owner also argues that the inode files, to which
Edwards’s new vol_info block points, do not point to stored database blocks,
but instead point to inodes, which are not database blocks. Id. at 44.
Patent Owner concedes that “[t]o create a set of files means to
generate a set of files that did not exist before.” PO Resp. 42 (citing various
dictionary definition of “create”). But Patent Owner goes on to construe this
to mean that every file in the set of files must be new. Id. at 43. We read the
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plain language of the creating limitation to require simply that a new set of
files be created—with no additional requirement that every file within that
set be new.
We also find that Edwards discloses the new vol_info block itself is a
new file and when included with other inodes, themselves files, this creates a
new set of files. See, e.g., Ex. 1003, 15 (“WAFL creates the files required
for a new FlexVol volume . . . [and] 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.”); Pet. 13–17; Reply 22–23; Ex. 1018
¶¶ 48–64, 161–168, 180; Ex. 1064 ¶¶ 58–62. And, based on our
interpretation of the term “database blocks,” we find by a preponderance of
evidence that the inodes in the new set of files point to database blocks
comprising information stored in the source database prior to the first/second
point in time. See, e.g., Ex. 1003, 15 (“[T]he clone inherits pointers to the
complete file system image stored in the original Snapshot copy.”); Pet. 13–
17; Reply 22–23; Ex. 1018 ¶¶ 48–64, 161–168, 180; Ex. 1064 ¶¶ 58–62.
We conclude that a preponderance of the evidence demonstrates that a
person of ordinary skill would have found the creating a set of files
limitations obvious.
c. “database blocks”
Patent Owner argues that the proposed combination of references does
not render obvious the “database blocks” limitations even under Petitioner’s
proposed construction, which, as discussed above, we adopt. PO Resp. 45–
48. Specifically, Patent Owner argues that Edwards’s WAFL data blocks
are not equivalent to database blocks because they are not “used by a
database.” Instead, Patent Owner asserts that no database has knowledge of
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the WAFL data blocks “existence, where they are located, or how to interact
with them.” PO Resp. 46 (citing Ex. 2030 ¶ 162).
Patent Owner’s argument, however, is premised on the previously
discussed “application level” versus “storage level” distinction—the
assumption that “[d]atabase servers only use database blocks which are data
structures that can be accessed or used at the application level” and “only the
database server,” but not the WAFL file system, “has knowledge of and
manipulates the database block as an independent unit of data.” Id. at 46–47
(citing Ex. 2030 ¶¶ 153–55). As discussed above, we reject this premise as
divorced from the written description of the ’174 patent.
We conclude that a preponderance of the evidence demonstrates that a
person of ordinary skill would have found the claimed database blocks
obvious over WAFL data blocks disclosed by the NetApp References.
d. “receiv[ing] information identifying a first/second
destination database server” and “mount[ing] the
first/second set of files on the first/second
destination database server”
Patent Owner argues that the proposed combination of references does
not render obvious “receiv[ing] information identifying a first/second
destination database server for accessing the first/second database being
created” and “mount[ing] the first/second set of files on the first/second
destination database server” (“the mounting limitations”). PO Resp. 51–54.
When discussing the mounting limitations, the Petition discusses both
Edwards and Klivansky. First, Petitioner concedes that Edwards does not
explicitly disclose making a virtual database accessible to a destination
database server, but “strongly suggests this mounting step” to a person of
ordinary skill “because a NetApp storage appliance’s main purpose is to be
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accessible as a file/storage server using file-server or storage protocols to
other computers, including database servers.” Pet. 40–41 (citing Ex. 1018
¶ 151).
Second, the Petition points to Klivansky as disclosing the mounting
limitations. Id. at 41–42, (citing Ex. 1018 ¶¶ 152, 153). Specifically,
Petitioner points to Klivansky’s disclosure of examples in which users input
commands containing identifying information of a destination database
server for accessing the virtual database being created. Id. at 41. Petitioner
specifically describes one example (“the Dave’s example”), in which a
cloned Oracle database is stored in a storage server and is mounted to a
database server for testing purposes. Id. at 41–42 (citing Ex. 1006, 21–25;
Ex. 1018 ¶ 152). The command “lun map /vol/NEWfiles/lun0 Testing 10”
makes a clone volume named “NEWfiles” accessible to a testing server
named Testing 10, which has on it a cloned volume containing a database.
Id. at 42 (citing Ex. 1018 ¶ 153). Later, Petitioner discusses another
example (“the Alice example”), in which a clone of an Oracle database is
made accessible to a testing server via SCSI. Pet. 47–48 (citing Ex. 1006,
18; Ex. 1018 ¶¶ 170–71). Given these disclosures, Petitioner concludes, and
provides testimony from Dr. Zadok, that a person of ordinary skill “using
Edwards to create a virtual database system would have looked to Klivansky
because it is a NetApp user guide that provides step-by-step instructions to
clone and mount virtual databases for test and development purposes, and
mounting a clone was an important purpose of Edwards’s cloning
technology.” Pet. 42, 48, 50–51, 54; Ex. 1018 ¶ 172; see also Ex. 1018
¶ 154:
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A POSITA would have combined the disclosure of Edwards with
Klivansky because the fundamental purpose of creating a clone
database is to make it accessible to a database server and
Klivansky is a NetApp publication that teaches how to mount the
clone databases described in Edwards to a database server.

Patent Owner argues that the Dave and Alice examples are different
embodiments and that the Alice example “has nothing to do with the Dave
example,” “does not involve data from an Oracle database and it does not
mention, use or refer to the testing server Testing 10, which Petitioner maps
to the first destination server.” PO Resp. 52. Thus, Patent Owner
concludes that Petitioner improperly combines two separate and distinct
embodiments “to establish anticipation.” Id. at 53–54 (citing Ex. 2030
¶¶ 149–50).
We find a preponderance of the evidence demonstrates that a person
of ordinary skill would have found the mounting limitations obvious. We
are not persuaded by Patent Owner’s arguments to the contrary for several
reasons. First, Patent Owner attempts to hold Petitioner to a showing of
anticipation for the mounting limitations because the Petitioner argues that
“Klivansky discloses” these limitations. Id. Patent Owner, however,
provides no authority to support this theory. In fact, when read in context,
this portion of the Petition and the testimony proffered in support clearly
propose that a person of ordinary skill would find the mounting limitations
obvious in view of the teachings of Edwards and Klivansky combined.
Second, we find that the Dave and Alice examples are not separate
embodiments, but instead are two examples of how to use FlexClone
technology. Ex. 1006, 25; Reply 21–22.
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We conclude that a preponderance of the evidence demonstrates that a
person of ordinary skill would have found the claimed mounting limitations
obvious over the combination of Edwards and Klivansky.
e. “virtual database”
Patent Owner argues that the proposed combination of references does
not render obvious “creating the first/second virtual database” even under
Petitioner’s proposed construction, which, as discussed above, we adopt.
PO Resp. 54–57. Specifically, Patent Owner argues that Edwards’s
FlexClone volumes are not equivalent to virtual databases because they are
not “a set of database files.” Patent Owner asserts that inodes are not
database files because “they are not capable of being mapped to physical
addresses for stored database blocks,” but instead are “collections of inodes
which may point to file system data blocks.” PO Resp. 56 (citing Ex. 2030
¶ 170).
Patent Owner’s argument, however, is premised on the previously
discussed definition of “database block.” As discussed above, we reject
Patent Owner’s proposed construction.
We conclude that a preponderance of the evidence demonstrates that a
person of ordinary skill would have found the claimed “creating the
first/second virtual database” obvious over FlexClone volumes disclosed by
the NetApp References.
f. “module”
Challenged claims 27 and 28 require several “managers” and
“manager modules,” including “a user interface manager,” “a storage
allocation manager module,” “a virtual database manager module,” and “a
file share manager module” (“the module limitations”). Patent Owner
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argues that Petitioner does not sufficiently identify these limitations in the
prior art references. PO Resp. 59–60 (citing Pet. 56; ’136 Pet. 55–56).
The Petition asserts that “[t]he computer program modules recited in
[claims 27 and 28] represent software code embodied on a machine-readable
medium.” Pet. 56 (citing Ex. 1001, 18:22–24 (“The described operations
and their associated modules may be embodied in software, firmware,
hardware or any combinations thereof.”). Petitioner then explains that
“NetApp’s Data ONTAB system comprising of its snapshot, FlexVol, and
FlexClone technologies described in Edwards, Edwards II, Neto, and
Klivansky are computer features implemented in code loaded onto a
physical medium programmed to perform each of the stated functions of
Claim 1.” Id. (citing Ex. 1018 ¶ 193).
According to Patent Owner, it is not enough for Petitioner to rely on
the fact that the NetApp references describe “computer features
implemented in code.” PO Resp. 59. Instead, “Petitioner must show where
each and every module is disclosed in the documents” in order to show that
the claimed functions are performed by “separate modules.” Id. (citing Ex.
2030 ¶ 181). We do not agree with Patent Owner’s narrow reading of the
module limitations. The ’174 patent explicitly notes that the use of these
terms is not meant to be restrictive, stating:
Some portions of this description describe the embodiments
of the invention in terms of algorithms and symbolic
representations of operations on information. These algorithmic
descriptions and representations are commonly used by those
skilled in the data processing arts to convey the substance of their
work effectively to others skilled in the art. These operations,
while described functionally, computationally, or logically, are
understood to be implemented by computer programs or
equivalent electrical circuits, microcode, or the like.
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Furthermore, it has also proven convenient at times, to refer to
these arrangements of operations as modules, without loss of
generality. The described operations and their associated
modules may be embodied in software, firmware, hardware, or
any combinations thereof.
Any of the steps, operations, or processes described herein
may be performed or implemented with one or more hardware or
software modules, alone or in combination with other devices.
Ex. 1001, 18:11–28 (emphasis added). Based on this disclosure and the
language of the claims, we find that the terms “manager” and “manager
module” in claims 27 and 28 do not require separate or exclusive modules
for each articulated function.
Patent Owner also argues that Petitioner does not identify any module
in the prior art references that corresponds specifically to “a storage
allocation manager module” because this module “stores database blocks
retrieved from a production database system.” PO Resp. 60 (citing Ex. 2030
¶ 181). We are unclear, however, where the requirement of “production
database” in Patent Owner’s argument comes from. Patent Owner does not
explain it further, and it is not used in the claim language, which refers only
to a “source database” and not a “production database.” To the extent this is
an extension of Patent Owner’s argument that the claims exclude situations
in which the source database is an already created virtual database, we are
unpersuaded for the reasons discussed above.
We conclude that a preponderance of the evidence demonstrates that a
person of ordinary skill would have found the module limitations obvious
over the combination of the NetApp references and Klivansky.
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g. Conclusion
In the Decision to Institute, we determined that Petitioner had shown a
reasonable likelihood of prevailing on this proposed ground of
unpatentability. Inst. Dec. 25–28. We have reviewed both parties’
arguments and supporting evidence, including the disclosure of all four
references and the testimony of both Dr. Zadok and Dr. Shenoy. Despite the
counter-arguments in Patent Owner’s Response, and the evidence cited
therein, for the reasons discussed above, Petitioner has shown, by a
preponderance of the evidence, that each of claims 1, 27, and 28 is
unpatentable under 35 U.S.C. § 103 as directed to subject matter obvious
over the combination of Edwards, Edwards II, Neto, and Klivansky.
4. Claims 4, 5, 29, and 34
Claim 4 depends from claim 1, claim 29 depends from claim 27, and
claim 34 depends from 28 and further recites “presenting a geometric shape,
wherein a position in the geometric shape corresponds to a time value;
receiving a selection of a position in the geometric shape; and mapping the
selection of the position in the geometric shape to the point in time
selected.” Claim 5 depends from claim 4 and further adds “wherein the
geometric shape is a line.” Petitioner contends that these claims are
rendered obvious by the combination of Edwards, Edwards II, Neto,
Klivansky, and Hart. Pet. 57–60 (citing Ex. 1018 ¶¶ 190–199); ’136 Pet.
59–60 (citing Ex. 1018 ¶¶ 197–199). Patent Owner does not separately
argue these claims, but relies on the same arguments as those advanced with
respect to the independent claims. PO Resp. 40–60.
In the Decision to Institute, we determined that Petitioner had shown a
reasonable likelihood of prevailing on this proposed ground of
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unpatentability. Inst. Dec. 28–30. We now find that a preponderance of
evidence demonstrates that the subject matter of dependent claims 4, 5, 29,
and 34 would have been obvious to a person of ordinary skill
notwithstanding the additional limitations recited by those claims. In
particular, Hart discloses a geometric shape—a timeline in the form of a
line—for selecting a point in time and a corresponding snapshot. Ex. 1007
¶¶ 8, 79, Figs. 5–11, 13–23; Ex. 1018 ¶¶ 97–100.
The Petition further explains that a person of ordinary skill would
have found it obvious to modify NetApp’s existing SnapManager GUI (as
disclosed in Neto) for Hart’s timeline GUI because they provide similar
functionality of managing multiple point-in-time databases and both allow
restoring files to their prior stated based on a selected point-in-time. Pet.
34–35 (citing Ex. 1018 ¶ 117–120). We find a preponderance of the
evidence supports this assertion. We find persuasive Dr. Zadok’s testimony
that the difference between the two references is that “Hart’s GUI used a
timeline structure to display stored snapshots, whereas Neto used a list
structure to display backups (snapshots), one of which could be selected for
restoration by right-clicking it.” Ex. 1018 ¶ 120. And we agree that
“[s]ubstituting Hart’s timeline-based GUI for selecting (typically by clicking
a mouse) a point-in-time copy for Neto’s right-click based method of
selection was nothing more than a simple substitution of one known method
of selection with another.” Pet. at 35; see also Ex. 1007 ¶ 25 (“[I]t should be
apparent that the disclosed implementations can be incorporated in, or
integrated with, any electronic device that has a user interface.”). Moreover,
we credit Dr. Zadok’s testimony that “Neto’s examples name the point-in-
time copies based on the time they were taken and can list them
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alphabetically; thus, they were typically arranged in a timeline” and
concludes that “[g]iven the similarities . . . it would have been obvious for a
POSITA to substitute Neto’s GUI with Hart’s GUI to perform the snapshot
backup, restore, and clone functions described in Neto, Edwards, Edwards
II, and Klivansky.” Ex. 1018 ¶ 120. We, therefore, find a preponderance of
the evidence demonstrates that a person of ordinary skill would have had
reason to combine the teachings of the Edwards, Edwards II, Neto, and
Klivansky with Hart.
In sum, as with the independent claims, we have reviewed both
parties’ arguments and supporting evidence, including the disclosure of all
four references and the testimony of both Dr. Zadok and Dr. Shenoy.
Despite the counter-arguments in Patent Owner’s Response, and the
evidence cited therein, for the reasons discussed above, Petitioner has
shown, by a preponderance of the evidence, that each of claims 4, 5, 29, and
34 is unpatentable under 35 U.S.C. § 103 as directed to subject matter
obvious over the combination of Edwards, Edwards II, Neto, Klivansky, and
Hart.
PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
Patent Owner moves to exclude Petitioner’s Exhibits 1004, 1020,
1028, 1032, 1033, 1035, 1036, 1037, 1039–1044, 1046, 1048, 1049, 1051,
1054, 1056, 1057, 1059, 1061, and 1062. Paper 37 (“PO Mot. to Exclude”),
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 1032,
1033, 1035–1037, 1039, 1041, 1051, 1056, 1057, 1059, and 1061. Id. at 1
n.2. Petitioner does not dispute this contention. See Paper 47 (“Opp. Mot.
to Exclude”). We, therefore, grant Patent Owner’s motion as it pertains to
these Exhibits. Further, Petitioner has moved, unopposed, to expunge
Exhibit 1028 (see Paper 35), which motion we hereby grant.
Of the remaining objected-to Exhibits, our Final Written Decision
discusses and relies only on Exhibits 1004, 1020, 1048, and 1049. We
determine, for reasons set forth 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
the remaining additional Exhibits. Accordingly, Patent Owner’s motion to
exclude Exhibits 1040, 1042–1044, 1046, 1054, and 1062 is dismissed as
moot.
According to Patent Owner, “Exhibit 1004 is allegedly a technical
report by NetApp which Petitioner relies upon for its prima facie case of
obviousness.” Mot. to Exclude, 2. Patent Owner moves to exclude the
Exhibit (Neto) as not being authenticated pursuant to Federal Rule of
Evidence 901. Id.
Petitioner contends testimony by Louis Hernandez is sufficient to
authenticate the document pursuant to Rule 901(b)(1). Opp. Mot. to
Exclude, 14 (citing Exs. 1020, 1048). Patent Owner, however, argues that
Mr. Hernandez lacks personal knowledge to testify regarding this issue
rendering his statements hearsay. Mot. to Exclude, 8–12 (referring to Exs.
1020, 1048); Paper 50, 5. We note that Mr. Hernandez’s personal
knowledge of Neto comes from his review and recognition of that document
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as being published during his tenure as an employee of Midwave, a certified
distributor and reseller of NetApp. Ex. 1020 ¶¶ 14–18; Ex. 1048 ¶ 3, 6, 11.
This is ample basis for him to testify with personal knowledge of the facts
under FRE 602. We are not persuaded otherwise by Patent Owner’s
characterization of Mr. Hernandez’s cross-examination testimony. See PO
Mot. to Exclude, 9–10 (citing Ex. 2031); Paper 38 (citing Ex. 2031)). As to
the hearsay objection, Mr. Hernandez’s testimony consists of statements
made by the Declarant while testifying in this proceeding — not “hearsay”
(Fed. R. Evid. 801(c)) — but sworn testimony that is subject to cross-
examination. Indeed, as noted above, Patent Owner cross-examined Mr.
Hernandez with respect to that testimony. We, therefore, deny Patent
Owner’s motion to exclude Exhibits 1020 and 1048.
Petitioner also contends Neto is self-authenticating. Opp. Mot. to
Exclude, 12–14 (citing Rules 901(b)(4), 902(7)). Specifically, Petitioner
refers to the “NetApp trade inscriptions such as unique NetApp logos,”
“trademark symbols,” and “NetApp trade copyright notices.” Id. at 13.
Further, Petitioner points to Neto’s contents, which “include repeated
references to NetApp and various NetApp technologies.” Id.at 14.
We are persuaded that Neto is authenticated at least under Federal
Rules of Evidence 901(b)(1) and 901(b)(4). On this record, we accept
Exhibit 1004 for what it purports and is alleged to be: A “Technical Report”
describing a NetApp product, published by NetApp, for the purpose of
providing detailed instructions to its customers and potential customers. Ex.
1004.
The only reason Patent Owner gives for excluding Exhibit 1049 is that
it is “untimely under 37 C.F.R. § 42.23(b) and 37 C.F.R. § 42.123.” PO
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Mot. to Exclude, 1 n.2. We find that Exhibit 1049, an article titled
“Bigtable: A Distributed Storage System for Structured Data,” was properly
submitted by Petitioner as evidence in rebuttal to Patent Owner’s claim
construction argument for the term “database block” asserting that it must
necessarily include metadata. In particular, Petitioner argues this article is
relevant to Patent Owner’s assertion that “it is well known to one skilled in
the art that a database block necessarily includes metadata.” See PO Resp.
19–23; Reply 11–15 (citing Ex. 1049).
ORDER
Accordingly, it is
ORDERED that claims 1, 4, 5, 27–29, and 34 of the ’174 patent have
been shown to be unpatentable;
FURTHER ORDERED that Petitioner’s motion to expunge Exhibit
1027 is granted;
FURTHER ORDERED that Patent Owner’s motion to exclude
evidence is granted-in-part, dismissed-in-part and denied-in-part;
FURTHER ORDERED that Exhibits 1032, 1033, 1035–1037, 1039,
1041, 1051, 1056, 1057, 1059, and 1061 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:

Robert Steinberg
Jonathan Link
Giri Pathmanaban
Latham & Watkins LLP
bob.steinberg@lw.com
jonathan.link@lw.com
giri.pathmanaban@lw.com

PATENT OWNER:

J. David Hadden
Saina Shamilov
Fenwick & West LLP
dhadden-ptab@fenwick.com
sshamilov-ptab@fenwick.com