Veeam Software Corporationv.Symantec Corporation

Patent Trial and Appeal Board

Apr 23, 2015

10623384 (P.T.A.B. Apr. 23, 2015)

Trials@uspto.gov Paper 37
Tel: 571-272-7822 Entered: April 23, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
VEEAM SOFTWARE CORPORATION,
Petitioner,
v.
SYMANTEC CORPORATION,
Patent Owner.
_______________

Case IPR2014-00090
Patent 7,024,527 B1
_______________

Before WILLIAM V. SAINDON, THOMAS L. GIANNETTI, and
TRENTON A. WARD, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION
Final Written Decision
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
Denying Motion to Amend
37 C.F.R. § 42.121

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I. INTRODUCTION
We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
With respect to the grounds asserted in this trial, we have considered
the papers submitted by the parties and the evidence cited therein. For the
reasons discussed below, we determine that claims 1, 6, 8, 20, and 24 of
U.S. Patent No. 7,024,527 B1 (Ex. 1001, “the ’527 patent”) are
unpatentable. In addition, we deny the Motion to Amend for failing to
discuss adequately how the proposed substitute claims are patentable in view
of the prior art.
A. Procedural History
Veeam Software Corporation (“Petitioner”) filed a Petition requesting
an inter partes review of claims 1, 6, 8, 20, and 24 of the ’527 patent. Paper
1 (“Pet.”). Petitioner included a Declaration of Dr. Ahmed Amer. Ex. 1007.
Symantec Corporation (“Patent Owner”) filed a Preliminary Response to the
Petition. Paper 8 (“Prelim. Resp.”).
In our Decision Instituting Inter Partes Review, we granted review as
to all of the challenged claims. Paper 9 (“Dec. on Inst.”). Patent Owner
filed a Response to the Petition (Paper 18, “PO Resp.”), which included a
Declaration of Dr. John J. Levy (Ex. 2006). Petitioner filed a Reply to the
Response (Paper 23, “Pet. Reply”), which included a Reply Declaration of
Dr. Amer (Ex. 1011).
On December 18, 2014, all parties were present for an oral hearing.
Paper 36 (“Tr.”).
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This Decision includes our decision on Patent Owner’s Motion to
Amend (Paper 19, “Mot. Amend”), which was filed with a Declaration of
Dr. Levy in support of the motion (Ex. 2010). Petitioner filed an opposition
to Patent Owner’s motion (Paper 24, “Opp. Mot. Amend”) and Patent
Owner filed its reply (Paper 29, “Reply Mot. Amend”) and a Declaration of
Dr. Levy in reply to the opposition (Ex. 2012).
B. Related Matters
Petitioner identifies the ’527 patent as involved in concurrent
litigation styled Symantec Corporation v. Veeam Software Corporation, No.
3:12-cv-5443-SI (N.D. Cal.) (consolidated with 3:12-cv-00700-SI) (N.D.
Cal.). Pet. 1.
In addition to this Petition, Petitioner previously filed petitions
challenging the patentability of certain claims of Patent Owner’s U.S. Patent
Nos. 6,931,558 B1 (IPR2013-00141, IPR2013-00142), 7,254,682 B1
(IPR2013-00144, IPR2013-00145), 7,191,299 B1 (IPR2013-00143,
IPR2013-00151). In three of those proceedings, we denied institution on
August 7, 2013. See IPR2013-00144, Paper 11; IPR2013-00145, Paper 12;
IPR2013-00151, Paper 7. We entered final decisions in the remaining
proceedings on July 29, 2014. See IPR2013-00141, Paper 50; IPR2013-
00142, Paper 51; IPR2013-00143, Paper 48. Additionally, on October 22,
2013, Petitioner filed petitions challenging the patentability of certain claims
of Patent Owner’s U.S. Patent Nos. 7,480,822 B1 (IPR2014-00088),
7,831,861 B1 (IPR2014-00089), and 8,117,168 (IPR2014-00091). On
March 20, 2015, we entered a final decision in IPR2015-00088 (Paper 45)
and shall enter final decisions in the other cases concurrently with this
decision.
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C. Technology Background
A “file” is a logical abstraction; a name used to identify a collection of
data. Ex. 2006 ¶ 34; Ex. 1007 ¶ 28. A data storage device (e.g., a hard disk)
is divided into small storage containers called blocks. Ex. 2006 ¶ 35; Ex.
1007 ¶¶ 27–28. A file is essentially a named collection of blocks, those
blocks containing all of the data of the file. A file system keeps track of
which blocks have been allocated to which files. Ex. 2006 ¶ 36; Ex. 1007
¶ 28. If a program requests a file, the file system looks up which blocks hold
the data of the file and sends the requestor the data in those blocks. Ex.
2006 ¶ 36; Ex. 1007 ¶ 28. This is called file-level access, with the file
system acting as a translator between the logical file name and the physical
collection of blocks. Ex. 1001, 1:41–48. Alternatively, if a program already
knows which block has the data it needs, it is possible simply to ask for the
data in that block, without consulting the file system. Id. at 1:41–42, 1:49–
52. This is called block-level access. See id.
D. The ’527 Patent
The ’527 patent is titled “DATA RESTORE MECHANISM” and
generally relates to a system and method for performing restoration from
backups, while applications are active and accessing the data being restored.
Ex. 1001, Abstr. More particularly, the patent relates to determining if data
blocks requested by an application have been restored, and if not, restoring
those requested data blocks immediately. Id. at 3:40–45.
The ’527 patent explains the benefits of using on-demand restoration
that operates at the block level. According to the patent, prior art file-level
restoration required an application to wait until an entire file was fully
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restored before the application could access the data of that file. Id. at 3:57–
60. By instead operating at the block level, the particular block requested by
the application is restored immediately and the application does not have to
wait until the entire file is restored. Id. at 3:38–45, 60–64. The patent
explains that block-level restoration, versus file-level, is beneficial because a
significant amount of time may be needed to restore an entire file. Id. at
1:66 to 2:8. With this benefit in mind, the patent describes a system for
allowing an application to access blocks of data during a restoration.
Figure 2 of the ’527 patent is illustrative, and is reproduced below:
Figure 2 above illustrates file system 110 that checks map 120 to determine
whether a requested data block has been restored on primary storage 114.
Id. at 7:33–35. If not, file system 110 sends a request to restore application
112, which in turn gets the block from backup storage 116 and restores that
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block on primary storage 114. Id. at 7:37–44. Restore application 112 or
file system 110 subsequently updates map 120 to indicate that the block has
been restored on primary storage 114. Id. at 7:48–54.
E. Illustrative Claims
Claims 1 and 20 are independent. They are reproduced below:
1. A system, comprising:
a primary storage;
a backup storage;
a restore application configured to restore a set of
files from the backup storage to the primary
storage; and
a file server configured to, during said restore:
determine that one or more blocks of data of a
file in the set of files needed by an
application have not been restored; and
direct the restore application to restore the
determined one or more blocks of data in
response to said determination that the one
or more blocks of data have not been
restored;
wherein the restored one or more blocks of data
are accessible by the application while said
restore is in progress.

20. A computer-accessible medium comprising
program instructions, wherein the program
instructions are configured to implement:
a restore application starting a restore of a set of
files from a backup storage to a primary
storage;
during said restore:
a file server determining that one or more
blocks of data of a file in the set of files
needed by an application have not been
restored; and
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the file server directed the restore application to
restore the determined one or more blocks of
data in response to said determining that the
one or more blocks of data have not been
restored; and
the restore application restoring the determined
one or more blocks of data;
wherein the restored one or more blocks of data
are accessible by the application while said
restore is in progress.

F. Instituted Grounds and Prior Art
We instituted an inter partes review on the following grounds:
(1) Obviousness of claims 1, 6, 20, and 24 in view
of Ohran1 and WinNT;2 and
(2) Obviousness of claim 8 in view of Ohran,
WinNT, and Curran.3 Dec. on Inst. 19.
II. ANALYSIS
A. Claim Construction
We interpret the claims of an unexpired patent using the broadest
reasonable interpretation in light of the specification of the patent. 37 C.F.R.
§ 42.100(b); In re Cuozzo Speed Techs., LLC, 778 F.3d 1271, 1279–83 (Fed.
Cir. 2015). Under the broadest reasonable interpretation standard, claim

1 US Pub. 2002/0083366 A1, published June 27, 2002 (Ex. 1003).
2 Rajeev Nagar, Windows NT File System Internals—A Developer’s Guide,
3–774 (1997) (hereinafter, “WinNT”) (Ex. 1006).
3 US Patent No. 7,234,077 B2, issued June 19, 2007, filed June 24, 2003
(Ex. 1002).
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terms are given their ordinary and customary meaning, as would be
understood by one of ordinary skill in the art in the context of the entire
disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007). Any special definition for a claim term must be set forth with
reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
1475, 1480 (Fed. Cir. 1994).
In our Decision to Institute this trial, we construed the following terms
or phrases: “file server,” “restore application,” “restore,” “block of data of a
file,” and “determine that one or more blocks of a file . . . have not been
restored.” Dec. on Inst. 7–10. Patent Owner does not object to these
constructions. PO Resp. 17. Likewise, Petitioner does not object
specifically to these constructions. See generally Pet. Reply. These
constructions are not at issue in this Decision. Accordingly, we do not
discuss them further.
Patent Owner proposes a construction for “during said restore.” PO
Resp. 17. In addition, one issue in the parties’ dispute over the prior art
turns on the construction of “set of files.” PO Resp. 33–39; Pet. Reply 8–10.
We address these terms below.
1. “during said restore”
Patent Owner proposes a construction for the term “during said
restore” (independent claims 1, 20): “while the set of files are in the process
of being restored from the backup storage to the primary storage (i.e., after
some, but not all, of the data blocks in the set of files have been copied to
primary storage).” PO Resp. 17; see also id. at 17–23 (setting forth Patent
Owner’s analysis); Ex. 2006 ¶¶ 54–59 (Dr. Levy testifying in support of
Patent Owner’s construction). Petitioner disagrees with this construction,
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and instead proposes: “at some point in the entire time of; in the course of.”
Pet. Reply 2–3; see also Ex. 1010 (listing a dictionary definition of “during”
consistent with Petitioner’s proffered construction); Ex. 1011 ¶¶ 6–9
(Dr. Amer testifying for Petitioner’s construction). We note that the
proposed constructions are similar, except that the qualification expressed in
the parenthetical of Patent Owner’s construction effectively precludes at
least the first two blocks restored from being “during said restore.” See Pet.
Reply 2.
We conclude that Patent Owner’s construction is overly narrow.
Patent Owner proposes to limit “during said restore” based on an example in
the specification wherein several blocks have been restored before the file
server determines that an unrestored block has been requested. PO Resp. 20
(citing Ex. 2006 ¶¶ 57–58). Patent Owner’s analysis here is contrary to the
well-settled principle of claim construction that, “[a]bsent claim language
carrying a narrow meaning, the PTO should only limit the claim based on
the specification or prosecution history when those sources expressly
disclaim the broader definition.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir.
2004). The example provided in the specification upon which Patent Owner
relies is nothing more than an example; it provides no basis to limit the
claim to that exact situation. See also SuperGuide Corp. v. DirecTV Enter.,
Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (a particular embodiment appearing
in the written description may not be read into a claim when the claim
language is broader than the embodiment.); Liebel-Flarsheim Co. v. Medrad,
Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (discussing cases wherein the court
expressly rejected the contention that even if a patent describes only a single
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embodiment, the claims of the patent are not construed as being limited to
that embodiment).
In view of the above, we determine that the broadest reasonable
interpretation of “during said restore” consistent with the specification is “at
some point in the entire time of; in the course of.”
2. “set of files”
Independent claim 1 requires a “restore application configured to
restore a set of files” and a “file server configured to . . . determine that one
or more blocks of data of a file in the set of files . . . have not been restored”
(emphasis added). Independent claim 20 has similar limitations. Patent
Owner does not offer explicitly a definition of the term but instead makes
several arguments that implicitly convey Patent Owner’s proposed
construction of the term. In general, Patent Owner argues that the presence
of the term “set of files” means that those files must be selected, defined, or
specified in advance, and must be selected from a larger whole. PO
Resp. 38.
Patent Owner first argues that, “until a set of files has been specified
or identified, the restore application would not know which files to start
restoring from the backup storage.” Id. Patent Owner’s argument presumes
that the claims require additional implicit steps—that “the files in the ‘set of
files’ have been selected or defined prior to beginning the restore process.”
Id.
We are not persuaded that the claims include a step of selecting or
defining files to be restored. Ex. 1011 ¶ 16 (Petitioner’s declarant, Dr.
Amer, testifying that “[t]here is no requirement that these files must first be
selected”); Ex. 1009, 43 (Patent Owner’s declarant, Dr. Levy, testifying that
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“claim [1] doesn’t discuss passing information to the restore application”).
If an entire disk volume were being restored, for example, that disk would
define the set of files being restored. Ex. 1011 ¶ 17 (Dr. Amer testifying that
“the entirety of a storage medium would include the files stored [thereon]”);
PO Resp. 37 (admitting that “it may be true in certain cases that restoring
every block could result in files being restored”). In other words, there is no
need to individually select or define files in order to perform a restore of a
set of files.
Patent Owner offers no persuasive reason why the claims would
include such a step, given that the claims do not recite such a step. Indeed,
the ’527 patent is directed to a “disk-based backup” using a “block-level
restore” (Ex. 1001, 3:34–40), and Patent Owner characterizes the ’527 patent
as having a process wherein, “during the restore, an application . . . may
request access to a particular data block within a file (i.e., ‘an on-demand
request’).” PO Resp. 14 (citing Ex. 1001, 3:40–42); see also Prelim. Resp. 5
(setting forth the same argument). Accordingly, as Patent Owner
acknowledges, we conclude that the specification describes a disk-level
backup done at a block level, which requires no identification of files to be
included in the set of files. See also PO Resp. 15 (“unlike prior backup-
restore systems, applications are able to access data ‘on-demand’ at the
block-level . . ., rather than having to wait until the entire file is restored”)
(citing Ex. 1001, 7:33-47); Prelim. Resp. 2-3 (the ’527 patent “enables data
to be restored and accessed ‘on demand’ at a data block-level” and the prior
art “did not allow applications to request access to the individual data
blocks”).
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Patent Owner lastly argues that a “set of files” implies something less
than all files available, such that restoring all of the blocks of a disk teaches
“restoring everything,” whereas the claim requires restoring a “set of files.”
PO Resp. 37–38. Patent Owner’s argument is unconvincing; the claims do
not recite a “subset of files” or include language that precludes all files. We
are persuaded that a “set of files” includes a set of all files. Ex. 1011 ¶ 17;
see Ex. 1009, 15:8–10 (Patent Owner’s declarant, Dr. Levy, testifies that
“[a] set is one or more of something”).
For the reasons set forth above, no limitation in claims 1 and 20, read
in light of the specification, requires that the “set of files” be identified or
specified, nor is such an identification required from a technical standpoint.
Instead, a “set of files” is simply those files that are restored by the restore
application. We construe “set of files,” consistent with the broadest
reasonable interpretation in light of the specification, to be “one or more
files.”
B. The Declaration of Dr. Amer
Patent Owner argues that we should give little or no weight to the
declarations of Petitioner’s declarant, Dr. Amer. PO Resp. 44–47. Patent
Owner argues that: (1) his testimony is “conclusory” (id. at 44); (2) he did
not author his own declarations (id. at 44–45); (3) he used the word
“obvious” in a manner inconsistent with the legal term (id. at 45–46); (4) he
“refused to provide straightforward responses” (id. at 46); (5) he “provided
very lengthy responses” with “qualifi[cations]” (id.); and (6) he only had
experience with a “specific type of storage technology that was different
from the traditional data backup and restore systems, such as those used in
the ‘527 Patent” (id. at 46–47).
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In reply, Petitioner states that Dr. Amer was involved with the
creation of his testimony and was available for cross-examination. Pet.
Reply 12. Petitioner states that Dr. Amer’s use of the term “obvious” in its
technical context rather than its legal context is appropriate. Id. Petitioner
states that Dr. Amer was prepared for deposition and provided testimony
commensurate in scope with the questions asked and the context of the
documents about which he was asked. Id. at 13–14. Lastly, Petitioner states
that Dr. Amer’s work is on the “cutting-edge” of the relevant technology,
but that does not mean he could not testify as to the well-known and
traditional areas of the relevant technology. Id. at 14.
We have reviewed the testimony of Dr. Amer, and find his testimony
supported by the evidence and his experience and, therefore, relevant and
useful. In view of the above, we give due weight to his testimony in each
instance as befits his expertise, the nature and content of his testimony, and
the degree of evidentiary support for his testimony. 37 C.F.R. § 42.65; Fed.
R. Evid. 705.
C. Obviousness of Claims 1, 6, 20, and 24 in View of Ohran and WinNT
For the reasons set forth below, we are persuaded that Petitioner has
shown, by a preponderance of the evidence, that the subject matter of claims
1, 6, 20, and 24 is obvious in view of Ohran and WinNT. We first provide a
brief overview of Ohran and WinNT. We then discuss Petitioner’s asserted
ground and Patent Owner’s arguments against.
1. Ohran
Ohran describes a system that allows on-demand access to lost data
blocks while lost data blocks are being restored. Ex. 1003 ¶ 20. When an
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application requests a data block that has not yet been restored on the
primary storage, the system retrieves the data block from the backup storage
and writes that block to the primary storage. Id. ¶ 39. From a user’s
perspective, this first restoration channel provides for on-demand
restoration, as if the primary storage had no lost data. See id. ¶ 41.
While this is on-demand channel is available, a second restoration
channel acts to restore all lost data (e.g., the entire volume, not just the data
requested). Id. ¶ 45. This second channel utilizes a snapshot copy of the
primary storage, held in backup storage and taken prior to the data being
lost. Id. This snapshot copy is transferred, typically physically, from the
geographic location of the backup storage to the geographic location of the
primary storage. Id. ¶¶ 44–45. In order to prevent updated blocks written to
the primary storage using the first channel from being overwritten by old
blocks from the restoration using the second channel (e.g., due to on-demand
restores occurring during the time it takes for the snapshot to be driven to the
primary storage location), an overwrite map is used to track the status of the
blocks during the restoration. Id. ¶ 42 (describing the overwrite map); see
also id. ¶¶ 63–64 (describing an example of the overwrite map in use).
Figure 1 of the ’527 patent (reproduced below) provides an exemplary
configuration:
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Figure 1 of the ’527 patent depicts a system as described above.
2. WinNT
WinNT discusses the Windows NT file system, and the interaction of
the file system with other core operating system components. Ex. 1006, 3.
The file system uses a logical disk, which is “a linear sequence of fixed-
size . . . blocks of storage.” Id. at 22. Applications can access file data
residing in shared logical volumes/disks. Id. at 27. Implementation of file
system operations is through the use of drivers. These file system drivers
provide for, among other things, the ability to share files and information, as
well as to identify the files by symbolic/logical name rather than physical
name. Id. at 21.4 A particular type of driver is a filter driver, which can

4 Symbolic/logical name is analogous to “file-level” and physical name is
analogous to “block-level.” See, e.g., Ex. 1007 ¶¶ 25–28.
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intercept and modify existing file system requests. Id. at 33. This allows for
the re-routing and modification of requests, to provide additional
functionality without necessitating alteration of the software that generated
the original request. See id. at 618.
3. Petitioner’s Ground
Petitioner asserts that the subject matter of claims 1, 6, 20, and 24 is
obvious in view of Ohran and WinNT. Pet. 18–29. As to independent
claims 1 and 20, Petitioner asserts that the claimed restore application
restoring a set of files from secondary to primary storage reads on Ohran’s
second channel, which restores a snapshot of the entire backup (secondary)
data set to the primary storage device. Id. at 18–19, 21–22. Petitioner
asserts that the claimed file server, determining that a requested block has
not been restored and directing the restore application to restore that block
from backup storage, reads on Ohran’s first channel, which restores an
unrestored data block to primary storage from backup storage upon request.
Id. at 18, 22–27. Petitioner asserts that this first, on-demand restoration
channel operates during the time when the second restoration channel is
being operated. Id. at 25–27. Petitioner acknowledges that the claims
require that the restoration is of “a set of files” and that Ohran does not
describe the blocks it restores as part of a “set of files” explicitly. Id. at 24.
Petitioner reasons, however, that it would have been obvious to a person of
ordinary skill in the art that a restoration of blocks generally will be a
restoration of files, because a person of ordinary skill in the art knows that
files are made of blocks and the typical use of blocks is to store the
information of files. Id. at 20, 24–25.
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As to dependent claims 6 and 24, Petitioner asserts that the claimed
filer system and driver for access to the file system read on those same items
found in WinNT. Id. at 27–29. Petitioner asserts that it would have been
obvious to include in Ohran’s system these known ways to implement file
servers. Id.
The ’527 patent characterizes itself as directed to block-level
restoration, and discusses the shortfalls of file-level restoration. Section I.D,
above. Patent Owner represented during prosecution of the application
leading to the ’527 patent that it was directed to block-level restoration.5
Patent Owner represented in its Preliminary Response that the ’527 patent
was directed to block-level restoration, and successfully argued that certain
of Petitioner’s grounds were unlikely to succeed because they relied on prior
art that performed file-level restorations.6 Dec. on Inst. 11–12 (determining
Patent Owner’s arguments that the prior art was directed to file-level
restoration, not block-level, was persuasive). Notwithstanding, Patent
Owner now characterizes the ’527 patent as directed to both file-level and

5 Prosecution History of US 7,024,527, Response to Office Action of August
11, 2005 at 11 (“In contrast, in [the prior art cited], restoration appears to be
performed at the granularity of files, rather than at the granularity of
individual data blocks of files.”) (Sept. 23, 2005) (Ex. 3001).
6 See, e.g., Prelim. Resp. 15 (“The claimed restoration mechanisms require
data restoration and access at the block-level.”); id. at 55 (“As explained
above, the specification and claims of the ‘527 Patent, as well as its
prosecution history, make clear that claimed restore mechanisms are
performed at a data block level, which is significantly different from data
restoration and access at a file level. In particular, the claimed functionality
requires block-level determinations, restorations, and access during the
restore process”).
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block-level restorations. See, e.g., PO Resp. 36 (“the challenged claims
require both block-level and file-level access and restoration”). Specifically,
Patent Owner’s first principal argument is that Ohran does not teach file-
level restoration and thus does not teach restoring a “set of files.” Patent
Owner’s second principal argument is that Ohran’s two restoration channels
do not operate at the same time and thus do not teach an on-demand
restoration during a general restoration. Patent Owner’s third principal
argument is that the teachings of Ohran and WinNT cannot be combined in
the manner proposed. We now address these arguments.
a. “Set of Files”
Independent claims 1 and 20 both require “a restore application” to
“restore a set of files” from the backup storage to the primary storage.
Patent Owner’s argument is, essentially, that Ohran is concerned only with
block-level restoration, not file-level restoration, such that it does not restore
a “set of files” but rather a set of blocks. PO Resp. 34–39.
Patent Owner’s argument is predicated on the claims requiring a file
server to determine which blocks correspond to a requested file. See PO
Resp. 38 (“determining whether or not certain data blocks of a file . . . have
already been restored requires . . . knowing which files are being restored . . .
and what data blocks make up those files.”). As we determined above in our
construction of “set of files,” however, the claims are broad enough to
encompass the case wherein the application specifically requests a particular
block from the file server.
Patent Owner’s argument also is predicated on the claims requiring a
set of files to be selected or defined prior to the restoration process. See id.
(“until a set of files has been specified or identified, the restore application
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would not know which files to start restoring”). As we determined above in
our construction of “set of files,” however, the file server handles the on-
demand restoration by directing the restore application to restore one or
more blocks and by doing so, the restore application restores a set of files.
In view of the above, we are not persuaded by Patent Owner’s
argument that the claim requires “file-level” restoration. See PO Resp. 38.
Patent Owner conflates restoration of files with file-level restoration; they
are not the same. The ’527 patent specification (and Patent Owner, in its
Preliminary Response) differentiate the block-level restoration of the ’527
patent with the file-level restoration techniques of the prior art. See, e.g., Ex.
1001, 1:66–2:8 (disparaging file-level restorations as slow); n.6, supra.
Accordingly, we determine that, although the claims require a restoration of
files, Patent Owner is incorrect that that means file-level restoration.
b. “Determining” / “Directing” During a Restore
Independent claim 1 requires a file server configured to “determine
that one or more blocks . . . have not been restored,” and if not, to “direct the
restore application to restore the . . . blocks.” Independent claim 20 has
similar limitations. Patent Owner points out that these “steps” occur during
a restore of a set of files (the “general” restore). PO Resp. 39. Patent Owner
argues that, if the second restoration channel in Ohran corresponds to the
general restore, and the first restoration channel in Ohran corresponds to the
on-demand restore, then Ohran does not satisfy the “during” limitation
because, according to Patent Owner, the first restoration channel does not
operate during the second restoration channel, but rather before it. Id. at 39–
42.
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Patent Owner’s argument is unpersuasive because it misapprehends
the Ohran reference. Patent Owner relies on the testimony of Dr. Levy,
Ex. 2006 ¶¶ 65–76, but that testimony is refuted by the disclosure of Ohran
and the testimony of Petitioner’s declarant, Dr. Amer. We first turn to the
relevant portions of Ohran and then explain why we credit the testimony of
Dr.Amer over that of Dr. Levy.
As we explained above, Ohran discloses two restoration channels.
The first, on-demand channel pulls data into the primary system from the
backup system over the network. Ex. 1003 ¶ 21. The second channel takes
the data in the backup system and places it directly into the primary system.
Id. ¶ 22. Because the first channel pulls data over a network, it is slower
than if the data were physically already at the primary system. Id. ¶ 41, 43.
Thus, the second channel is used to transport a large amount of data. Id.
¶¶ 42–43. A difficulty with the second channel is that it typically requires
physically transporting a copy of the backup system data to the location of
the primary system (e.g., by vehicle), which can be in a geographically
distinct location. Id. ¶¶ 22, 27, 44–45.
Patent Owner’s argument hinges on its assertion that when the second
channel is used, the first channel is no longer used (thus, purportedly failing
to meet the “during” requirement of the claims). PO Resp. 42; Ex. 2006
¶¶ 72–76, 78–86. This assertion is without support in the evidence.
We are not convinced that Ohran’s first channel would stop working
when the second channel is activated. The goal of Ohran is to “allow[] for
computer operations to continue even though data blocks are lost.” Ex. 1003
¶ 20. If the first channel were to shut down while waiting for the second
channel to finish, computer operations would not be able to continue. Patent
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Owner cites to no portion of Ohran for support of its assertion. PO Resp. 42.
Instead, Patent Owner relies solely on the testimony of Dr. Levy. Id. (citing
Ex. 2006 ¶¶ 72–76, 78–86); Pet. Reply 6 (pointing out that Patent Owner
“provides no . . . explanation” aside from the Levy declaration). Dr. Levy
supports his assertion by providing his analysis of Figures 2 and 3 of Ohran,
as well as his analysis that, if the two channels operated simultaneously, a
“race condition” might exist. Ex. 2006 ¶¶ 72–76, 78–86. This analysis is
unpersuasive; we address each portion in turn.
(1) Figure 2 of Ohran
Dr. Levy concludes that, in Figure 2 of Ohran, “it is clear that any
subsequent read requests will wait until the completion of the ‘second
channel’ restore.” Ex. 2006 ¶ 73. Dr. Levy cites only to Figure 2 itself and
paragraph 42 of Ohran for support. Figure 2 is reproduced below:
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Figure 2 of Ohran depicts a flow chart explaining the two-channel
restoration process of Ohran. If an application program generates a data
request, that request triggers decision block 202, which establishes whether
the request is of a block that is lost from the primary mass storage. Ex. 1003
¶¶ 37–38. If the block is lost, then the first channel (blocks 204 and 206)
restores the block by accessing the backup over the network. Id. ¶¶ 39–43.
Figure 2 also shows the second channel (blocks 208, 210, 212, and 214), in
which a snapshot of the backup is physically transported to the primary
storage and all blocks are updated. Id. ¶¶ 44–46.
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Paragraph 42, the only paragraph Dr. Levy cites to, merely describes
how the first channel updates an overwrite map after data is restored over the
first channel, so that the second channel does not overwrite the more recent
data provided through the first channel. Nothing in this paragraph
sufficiently supports Dr. Levy’s position that the first channel pauses once
the second channel is activated.
The only other disclosure Dr. Levy relies on is Figure 2 itself, but Dr.
Levy’s explanation is given without discussion of the textual portions of
Ohran. Dr. Levy testifies that Figure 2 shows that the steps in the first
channel (blocks 204, 206) only occur once, because no arrow takes the
flowchart operation back to the top. Ex. 2006 ¶ 73. However, Dr. Levy fails
to discuss the passage in Ohran that explains how step 202 triggers when an
application requests data. Ex. 1003 ¶¶ 39, 41; see also Ex. 1011 ¶¶ 10–13
(Dr. Amer testifying that one of ordinary skill would understand that the two
channels occur simultaneously). Thus, each time an application requests
data, the Figure 2 flowchart goes back to the top and on-demand restorations
will occur using the first channel, in the midst of the general restoration
using the second channel.
In view of the above, we are persuaded that Dr. Levy’s interpretation
of Figure 2 of Ohran is unsupported by the evidence, and we therefore give
his testimony on this matter little weight. Instead, we credit the testimony of
Dr. Amer (Ex. 1011 ¶¶ 10–13), whose position that the two channels occur
simultaneously is consistent with the disclosure in Ohran outlined above.
(2) Figure 3 of Ohran
Figures 3A and 3B of Ohran depict an exemplary method of Ohran.
Ex. 1003 ¶ 19. Dr. Levy testifies that this example does not show an on-
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demand read operation being performed during the snapshot restore
procedure. Ex. 2006 ¶ 74. Although this is true, it is immaterial. There is
no requirement that claims may only read on exemplary embodiments of
prior art references. The focus of Figures 3A and 3B merely is to depict an
example of how the system works. See Ex. 1003 ¶ 19. As we discussed
above, Figure 2 of Ohran, when read in the proper context with its written
description, explains that the first channel remains open while the second
channel is running. Accordingly, Dr. Levy’s testimony with respect to
Figures 3A and 3B is unpersuasive in showing that Ohran’s first channel
does not operate while the second channel is running.
(3) “Race Condition”
Dr. Levy testifies that the two channels in Ohran could not operate
simultaneously because it may result in a race condition. Ex. 2006 ¶ 76. We
do not find this testimony persuasive. Instead, we credit the testimony of
Dr. Amer on this point, who testifies that Ohran’s overwrite map is designed
to alleviate such a problem (Ex. 1011 ¶¶ 12, 14; see also Ex. 1003 ¶¶ 45–46
(describing the overwrite map)), and that preventing race conditions in
computer systems is within the level of ordinary skill in the art (Ex. 1011
¶ 15). Dr. Amer’s testimony accounts for the disclosure of Ohran (e.g., the
overwrite map) and the level of ordinary skill in the art, whereas we find Dr.
Levy’s testimony to be speculative and without adequate consideration of
Ohran’s map or the level of skill in the art.
(4) Conclusion Regarding “Determining” /
“Directing” During a Restore
In view of the above, we determine that Petitioner has shown that
Ohran’s two-channel restoration system meets the “determining” and
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“directing” steps because the first restoration channel operates “during” the
operation of the second restoration channel, as required by the claims.
c. Proposed Combination of Ohran and WinNT
Petitioner asserts that, although Ohran does not state explicitly that the
blocks it is restoring are “of a file,” that:
[a] person of ordinary skill in the art would have
recognized that Ohran’s restoration process of data
blocks needed by an application could also be used
to restore data blocks of a file needed by an
application since the file is composed of data
blocks and files are commonly accessed by
applications.
Pet. 24–25 (citing Ex. 1007 ¶¶ 58–59).
Patent Owner argues that the claimed invention requires file-level and
block-level restoration, and that, because Ohran only describes block-level
restoration, Petitioner’s proposed combination “would have required, at a
minimum, a major overhaul of Ohran’s block-level mirroring systems” in
order to “track what files are stored on the system.” PO Resp. 42–43. As
we explain above in Section II.C.a, however, claims 1 and 20 do not require
file-level knowledge or a file-level restoration. Accordingly, Patent Owner’s
arguments are unpersuasive.
Moreover, Petitioner’s obviousness analysis states that it would have
been obvious that the blocks in Ohran were part of files, such that when
Ohran’s block-level restore process was running, the result is the restoration
of files. Thus, the evidence Petitioner offers suggests that a person of
ordinary skill in the art would understand that, in many instances, Ohran’s
two-channel block-level restoration process will result in a restoration of a
set of files. Considering this evidence, we are persuaded that it would have
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been obvious to a person of ordinary skill in the art to operate Ohran’s
restoration process to restore a set of files.
4. Conclusion Regarding Claims 1, 6, 20, and 24
In view of the above, we are persuaded that Petitioner has
demonstrated, by a preponderance of the evidence, that the subject matter of
claims 1 and 20 would have been obvious in view of the teachings of Ohran
and WinNT.
Claims 6 and 24 add limitations directed to the file server further
comprising a file system and a driver. Petitioner explains that WinNT
discloses file systems and drivers as claimed and how it would have been
obvious to include these features in Ohran’s system. Pet. 27–29;
Ex. 1006, 3, 21, 33, 618, 621; Ex. 1007 ¶¶ 68–69. Patent Owner does not
challenge explicitly the factual assertions by Petitioner. Reviewing the prior
art and the relevant testimony of Dr. Amer, we are persuaded that Petitioner
has shown, by a preponderance of the evidence, that the subject matter of
claims 6 and 24 would have been obvious in view of the teachings of Ohran
and WinNT.
D. Obviousness of Claim 8 in View of Ohran, WinNT, and Curran
Claim 8 depends from claim 1 and states that the system in claim 1 is
a Storage Area Network (SAN) system. Petitioner asserts that Curran
discloses a SAN restoring system. Pet. 29–31. Petitioner reasons that it
would have been obvious to deploy Ohran as a SAN because Ohran already
contemplates using multiple storage devices, and simply re-deploying them
in the form of a SAN is a substitution of one known element for another.
Pet. 30 (citing Ex. 1007 ¶ 70). Patent Owner does not challenge explicitly
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either the factual assertions or the rationale offered by Petitioner in this
obviousness ground. Reviewing the prior art and the relevant testimony of
Dr. Amer, we are persuaded that Petitioner has shown, by a preponderance
of the evidence, that the subject matter of claim 8 would have been obvious
in view of the teachings of Ohran, WinNT, and Curran.
III. MOTION TO AMEND
Patent Owner’s Motion to Amend is contingent upon a determination
that claims 1 and/or 20 are unpatentable. Mot. Amend 1. We now consider
the Motion because we determined that those claims are unpatentable in
Section II.
Patent Owner in its Motion to Amend bears the burden of proof to
establish it is entitled to the relief requested. 37 C.F.R. § 42.20(c).
Although a patent owner’s discussion does not have to be exhaustive, we
consistently have reminded patent owners that, to meet their burden of proof,
they must discuss the features added to the claim. Toyota Motor Corp. v.
American Vehicular Sciences LLC, IPR2013-00419, slip op. at 4–5 (Paper
32) (PTAB March 7, 2014); Idle Free Systems, Inc. v. Bergstrom, Inc.,
IPR2012-00027, slip op. at 6–8 (Paper 26) (PTAB June 11, 2013). This is
because exploring the differences between the scope and content of the prior
art (represented by the claim found unpatentable7) and the claimed invention
(represented by the proposed substitute claim) is fundamental to any
obviousness analysis, and thus, fundamental to any motion to amend. See

7 We only reach a contingent Motion to Amend if a claim is shown to be
unpatentable, i.e., within the level of ordinary skill of the art.
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Graham v. John Deere Co., 383 US 1, 17 (1966). For example, the motion
should discuss, to the extent Patent Owner is aware, “whether the feature
was previously known anywhere, in whatever setting, and whether or not the
feature was known in combination with any of the other elements in the
claim.” Toyota, IPR2013-00419, Paper 32 at 4.
Patent Owner offers no discussion of whether the newly added
features were known in the art. “A mere conclusory statement by counsel, in
the motion to amend, to the effect that one or more added features are not
described in any prior art, and would not have been suggested or rendered
obvious by prior art, is on its face inadequate.” Idle Free Sys. Inc.,
IPR2012-00027, Paper 26 at 8. Here, Patent Owner provides one sentence
that states that the newly added feature in combination with other known
features was not in the prior art:
None of these prior art systems disclose any
restoration process that restores a particular subset
of files and, during the restore, determines whether
a requested file is in this set of files before
checking whether needed blocks in the file have
been restored.
Mot. Amend 14.
None of these prior art systems disclose any
mechanisms for a restore process that passes
various information back and forth between a
restore application and a file server prior to starting
a restore of a set of files and, during this file
restoration provides on-demand restorations of
requested blocks by restoring them ahead of a
standard order in which the blocks that make up
the files are being restored.
Id. at 14–15.
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Patent Owner’s declarant, Dr. Levy, makes the same type of
assertion—that the prior art does not describe something having many of the
claimed features in combination. Ex. 2010 ¶¶ 92, 95. Patent Owner and its
declarant do not discuss whether the newly added features were known (in
the art or otherwise). Accordingly, Patent Owner has failed to meet its
burden of showing that it is entitled to an award of a patent on a system
having those features.
In view of the above, Patent Owner’s Motion to Amend is denied.
IV. CONCLUSION
A. Petitioner has shown by a preponderance of the evidence that claims
1, 6, 20, and 24 of the ’527 patent are obvious in view of Ohran and
WinNT.
B. Petitioner has shown by a preponderance of the evidence that claim 8
of the ’527 patent is obvious in view of Ohran, WinNT, and Curran.
C. Patent Owner has not met its burden of proof in its Motion to Amend.

V. ORDER
In view of the foregoing, it is hereby:
ORDERED that claims 1, 6, 8, 20, and 24 of U.S. Patent No.
7,024,527 B1 are unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Amend is
denied; and
FURTHER ORDERED that this is a final written decision and that
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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PETITONER:

Lori Gordon
Michael Q. Lee
Jonathan Strang
Daniel Block
STERNE, KESSLER, GOLDSTEIN & FOX
Lgordon-PTAB@skgf.com
Mlee-PTAB@skgf.com
Jstrang-PTAB@skgf.com
Dblock-PTAB@skgf.com

PATENT OWNER:

Joseph Richetti
Daniel Crowe
Alexander Walden
BRYAN CAVE LLP
Joe.richetti@bryancave.com
dacrowe@bryancave.com
alexander.walden@bryancave.com