Veeam Software Corporationv.Symantec Corporation

Patent Trial and Appeal Board

Apr 23, 2015

12415278 (P.T.A.B. Apr. 23, 2015)

Trials@uspto.gov Paper 29
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 IPR2014-00091
Patent 8,117,168 B1
_______________

Before THOMAS L. GIANNETTI, TRENTON A. WARD, and
JEREMY M. PLENZLER, Administrative Patent Judges.

WARD, Administrative Patent Judge.

DECISION
Final Written Decision
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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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 Petitioner has shown by a
preponderance of the evidence that claims 1–4, 9–12, and 14 of U.S. Patent
No. 8,117,168 B1 (Ex. 1001 (“the ’168 patent”)) are unpatentable.
A. Procedural History
Veeam Software Corporation (“Petitioner”) filed a Petition requesting
an inter partes review of claims 1–4, 9–12, and 14 of the ’168 patent.
Paper 4 (“Pet.”). Petitioner included a Declaration of Dr. Prashant Shenoy.
Ex. 1002. 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. Inst.”). Patent Owner filed a
Response to the Petition (Paper 18, “PO Resp.”), which included a
Declaration of Matthew Green (Ex. 2002). Petitioner filed a Reply to the
Response. Paper 21 (“Pet. Reply”). On December 18, 2014, all parties were
present for an oral hearing. Paper 28 (“Tr.”).
B. Related Matters
Petitioner indicates that the ’168 patent is the subject of the following
co-pending federal district court case: Symantec Corp. v. Veeam Software
Corp., No. 3:12-cv-5443-SI (N.D. Ca.) (consolidated with No. 3:12-cv-
00700-SI (N.D. Ca.)). Pet. 1. In addition to this Petition, Petitioner
previously filed petitions challenging the patentability of certain claims of
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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 a final decision 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 7,024,527 B1 (IPR2014-
00090). On March 20, 2015, we entered a final decision in IPR2015-00088
(Paper 45) and shall enter a final decision in the other cases concurrently
with this decision.
C. The ’168 Patent
The ’168 patent is titled “Methods and Systems for Creating and
Managing Backups Using Virtual Disks” and generally relates to managing
multiple virtual-disk backup files at different points in time. Ex. 1001,
Abstr. The patent describes a computer system that backs up data to a first
virtual disk file, captures subsequent incremental changes to a second virtual
disk file, and rolls the incremental changes into the first virtual disk file to
create a synthetic full backup. Id. at 1:51–67. The patent further describes
creating an empty virtual-disk file that enables a virtual machine to boot
from the first virtual disk. Id. at 2:9–16. Figure 4 of the ’168 patent,
reproduced below, illustrates a timeline for the backup process of a data
storage entity:
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As shown above in Figure 4, the ’168 patent discloses, at point in time 410,
creating backup virtual-disk file 124 of data-storage entity 122 (not shown).
Id. at 7:40–43. Empty virtual-disk file 126 is created and associated with
backup virtual-disk file 124 so that a virtual machine may boot from backup
virtual-disk file 124 without modifying backup virtual-disk file 124. Id. at
7:43–49. At point in time 412, backup virtual-disk file 128 is created that
contains at least one change made to data-storage entity 122 after creation of
backup virtual-disk file 124. Id. at 7:50–52. A parent-child relationship
between backup virtual-disk file 124 and backup virtual-disk file 128 is
created, such that backup virtual-disk file 124 is the parent to backup virtual-
disk file 128. Id. at 7:52–55. Empty virtual-disk file 130 is created and
associated with backup virtual-disk file 128 to allow a virtual machine to
boot similar to the functionality of empty virtual-disk file 126. Id. at 7:55–
61. Any number of additional backup virtual-disk files and empty virtual-
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disk files may be created as illustrated by backup virtual-disk file 132 and
empty virtual-disk file 134 at point in time 414. Id. at 7:62–8:11.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A computer-implemented method for backing up data, at
least a portion of the method being performed by a computing
system comprising at least one processor, the method
comprising:

at a first point in time, backing up at least a portion of a
data-storage entity to a first virtual-disk file;

capturing, in a second virtual-disk file, at least one
change made to data in the data-storage entity after the
first point in time;

creating a parent-child relationship between the first
virtual-disk file and the second virtual-disk file, the first
virtual-disk file being a parent of the second virtual-disk
file;

copying data stored in the second virtual-disk file to the
first virtual-disk file so that the first virtual-disk file
comprises a synthetic backup that includes the at least
one change made to data in the data-storage entity after
the first point in time;

storing the first virtual-disk file that comprises the
synthetic backup in a manner that enables at least one
virtual machine to boot from the stored first virtual-disk
file;

creating a first empty virtual-disk file;

creating a parent-child relationship between the first
virtual-disk file and the first empty virtual-disk file, the
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first virtual-disk file being a parent of the first empty
virtual-disk file;

retargeting the first empty virtual-disk file to provide a
first retargeted virtual-disk file and to enable the at least
one virtual machine to boot from the first virtual-disk
file.

D. Instituted Grounds and Prior Art
We instituted an inter partes review on the following grounds under
35 U.S.C. § 103:
References Claims Challenged
Colbert1 and Lim2 1–4, 9–12, and 14
Liu3 and HVR4 1–4, 9–12, and 14
Dec. Inst. 24.

II. ANALYSIS
A. Claim Construction
Consistent with the statute and the legislative history of the Leahy-
Smith America Invents Act,5 the Board will interpret claims of an unexpired
patent using the broadest reasonable construction in light of the specification
of the patent. See 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC,
778 F.3d 1271, 1279–83 (Fed. Cir. 2015). There is a “heavy presumption”
that a claim term carries its ordinary and customary meaning. CCS Fitness,
Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).

1 U.S. Patent No. 8,239,646 B2 (Ex. 1004 (“Colbert”)).
2 U.S. Patent No. 6,795,966 B1 (Ex. 1005 (“Lim”)).
3 WO Publication No. 2007/002398 A2 (Ex. 1006 (“Liu”)).
4 U.S. Patent No. 7,093,086 B1 (Ex. 1007 (“HVR”)).
5 Pub. L. No. 112–29 (2011).
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“creating a parent-child relationship”
Petitioner alleges that the term “creating a parent-child relationship”
means “logically connecting two virtual-disk files so that changes intended
for the parent virtual-disk file are instead stored in the child virtual-disk
file.” Pet. 8. Patent Owner does not expressly provide an alternate
construction, but notes that Petitioner’s proposed constructions were not
adopted by the Northern District of California in the related District Court
matter, Symantec Corp. v. Veeam Software Corp., No. 3:12-cv-5443-SI
(N.D. Ca.). Prelim. Resp. 13 n.3 (citing Ex. 2001, 6–7).
We note that independent claims 1, 12, and 14 require “creating a
parent-child relationship between the first virtual-disk file and the second
virtual-disk file, the first virtual-disk file being a parent of the second
virtual-disk file.” The ’168 Specification discloses, “[a] parent-child
relationship between two virtual-disk files may indicate that the child
virtual-disk file holds incremental changes made to data since the parent
virtual-disk file was created.” Ex. 1001, 5:67–6:3.
In the related District Court matter between the parties, the Court
adopted a similar construction as advanced by Petitioner with respect to the
first limitation, albeit modifying Petitioner’s “instead stored” to “first
stored.” Ex. 2001, 7 (construing the first limitation as “logically connecting
two virtual-disk files so that changes intended for the parent virtual-disk file
are first stored in the child virtual-disk file”). Although the District Court
only construed the first limitation, we agree with the District Court’s
underlying rationale that the purpose of both parent-child relationships of the
’168 patent is initially to direct changes intended for a parent file to a child
file. See id. at 6–7. Therefore, we agree with the District Court’s
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construction and construe “creating a parent-child relationship” as “logically
connecting two virtual-disk files so that changes intended for the parent
virtual-disk file are first stored in the child virtual-disk file.”
B. Asserted Obviousness Ground Based on Colbert and Lim
1. Overview of Colbert
Colbert is titled “Online Virtual Machine Disk Migration” and
describes migrating a first virtual machine disk to a second virtual machine
disk while the virtual machine is running. Ex. 1004, 1:60–62. The
migration allows virtual machine disks to be relocated to different physical
storage devices. Id. at 2:44–46. Figure 5A of Colbert illustrates one
embodiment of the migration process and is reproduced below:

As shown above in Figure 5A, Colbert discloses migrating first parent
virtual machine (VM) disk 501 to second parent VM disk 502 by first
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creating, at snapshot step 41, child VM disk 511 of first parent VM disk 501.
Id. at 4:17–18. After child VM disk 511 is created, first parent VM disk 501
is made read-only such that all writes intended for parent VM disk 501 are
redirected to child VM disk 511, thus allowing the system to begin copy
step 42 of first parent VM disk 501 to second parent VM disk 502. Id. at
4:35–39; 5:16–18. After copy step 42 is complete, child VM disk 511 is
reparented in step 43 from first parent VM disk 501 to second parent VM
disk 502. Id. at 5:29–32. Child VM disk 511 is next consolidated in step 44
with second parent VM disk 502 such that changes written into child VM
disk 511 are incorporated into parent VM disk 502. Id. at 5:45–48.
Colbert Figure 5B discloses a multi-child VM disk migration embodiment
and is reproduced below:

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As shown above in Figure 5B, Colbert discloses, similar to Figure 5A,
creating first child VM disk 511 of first parent VM disk 501 at snapshot step
41. Id. at 4:17–18. Figure 5B further discloses second snapshot step 61,
which creates second child VM disk 512 of first child VM disk 511. Id. at
6:11–18. First child VM disk 511 is made read-only, and writes directed to
first parent VM disk 501 are redirected to second child VM disk 512. Id. at
6:27–31. First child VM disk 511 is then reparented in step 43 and
consolidated in step 44 with second parent VM disk 502. Id. at 6:37–42.
After reparenting step 43 and consolidation step 44, second child VM disk
512 also is reparented in step 62 and consolidated in step 63 with second
parent VM disk 502 to incorporate any changes written to second child VM
disk 512. Id. at 6:44–51.
2. Overview of Lim
Lim is titled “Mechanism for Restoring, Porting, Replicating and
Checkpointing Computer Systems Using State Extraction” and discloses a
virtual machine monitor on which multiple virtual computer systems are
installed whose states can be checkpointed under control of the virtual
machine monitor. Ex. 1005, Abstr. The checkpointed virtual machine may
be restored into the system at a later time. Id. Figure 2 of Lim is reproduced
below:

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As shown above in Figure 2, Lim discloses virtual machine (“VM1”) 200,
including virtual operation system (“VOS”) 202, virtual processor
(“VPROC”) 204, virtual disk that is virtual memory (“VMEM”) 206, and
virtual peripheral devices 208, “all of which are implemented in software to
emulate the corresponding components of an actual computer.” Id. at
14:27–32. Additionally, as shown in Figure 2, Lim discloses virtual
machine monitor (“VMM”) 250 between virtual machines 200 to 200n and
the system hardware. Id. at 15:26–31. To enable computer system
restoration, Lim discloses capturing the “total machine state” of a computer
system, which is “the entire collection of all information that is necessary
and sufficient to uniquely determine the status of all hardware and software
components at the completion of any given processor instruction.” Id. at
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10:26–30. Therefore, if the processor’s execution is interrupted, Lim
discloses that:
the total machine state is then the set of data that, when loaded
at any time into the appropriate memory positions (both internal
and external to the processor), will cause the processor, and all
connected hardware and software components, to continue
executing in exactly the same way as if there had been no
interruption at all.
Id. at 10:32–38.
3. Analysis of Asserted Ground of Obviousness In View of Colbert
and Lim
Petitioner argues that claims 1–4, 9–12, and 14 would have been
obvious in view of Colbert and Lim. Pet. 11–32. Petitioner argues Colbert
discloses many of the limitations of claim 1, including that Colbert’s second
parent VM disk 502 corresponds to the “first virtual disk file,” Colbert’s first
child VM disk 511 corresponds to the “second virtual disk file,” and
Colbert’s second child VM disk 512 corresponds to the “first empty virtual
disk file.” Id. at 11–21. Petitioner argues that Colbert discloses retargeting
second child VM disk 512 (“empty virtual-disk file”) to receive writes
intended for parent VM disk 502 (“first virtual-disk file”), thus allowing
Virtual Machine 200 to continue executing, including restarting or booting,
by reading information stored on the second parent VM disk 502 or second
child VM disk 512. Id. at 21 (citing Ex. 1002 ¶ 55). Furthermore, Petitioner
argues that, to the extent that Colbert does not disclose allowing a virtual
machine to boot, Lim discloses that booting is an alternative to running from
a virtual machine’s snapshot, and thus Lim discloses enabling the “virtual
machine to boot from the first virtual-disk file,” as required by claim 1. Id.
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(citing Ex. 1005, 28:15-20). Patent Owner argues that Petitioner’s proposed
challenge does not render the challenged claims obvious.
a. Migration Versus Backup
Patent Owner argues that Colbert’s data migration may not be
characterized as a “backup,” because Colbert discloses that certain VM disks
can be deleted and such deletion is inconsistent with the notion of a backup.
PO Resp. 17 (citing Ex. 1004, 5:16–18, 6:51–53). In response, Petitioner
argues that Colbert discloses that the original “can be deleted” not that it
must. Pet. Reply 1 (citing Ex. 1004, 5:55–56, 6:51–53). Additionally,
Petitioner’s declarant Dr. Shenoy states that one of ordinary skill in the art
would understand that parent VM disk 501 and child VM disk 511 disclosed
in Colbert need not be deleted and may have use in the template deployment
described in Colbert. Ex. 1002 ¶ 40 (citing Ex. 1004, 8:37–47). Based on
this record, we are not persuaded by Patent Owner’s arguments that
Colbert’s teaching of a possible deletion of the VM disks is inconsistent with
“backing up data,” as recited in the claims.
b. Capturing a Change Made to the Data
Patent Owner argues that Colbert does not teach or suggest the claim
limitation “captur[ing], in a second virtual-disk file, at least one change
made to data in the data-storage entity,” as recited in each of the challenged
independent claims 1, 12, and 14. PO Resp. 20. Specifically, Patent Owner
argues that Petitioner alleges that Colbert’s VM disk 501 corresponds to the
claimed “data storage entity” being backed up, but Colbert teaches that VM
disk 501 remains static after it is copied. Id. at 20–21 (citing Ex. 1002 ¶ 33;
Ex. 2004, 54:17–55:25; Ex. 1004, 4:35–43, 7:14–21). Thus, Patent Owner
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argues that Colbert does not teach capturing “a change made to the data-
storage entity.” Id. at 21 (citing Ex. 2002 ¶ 56).
In response, Petitioner argues that the broadest reasonable
interpretation of the capturing step in claim 1 encompasses capturing
changes to the data using a copy-on-write method as taught in Colbert and
the ’168 patent. Pet. Reply 2. First, Petitioner argues that the plain meaning
of capturing includes catching and holding. Id. (citing Ex. 1009; Ex. 1010;
Ex. 1008 ¶¶ 8–9; Ex. 2002 ¶ 62). Second, Petitioner argues that the
Specification of the ’168 patent discloses a copy-on-write embodiment,
which describes “capturing” by catching and holding changes intended for
the data storage entity. Id. at 2–3 (citing Ex. 1004, 5:47–51, 1:54–55, 4:33–
35). The Specification states that “[i]n at least one embodiment, backup
module 112 may monitor data-storage entity 122 and use a copy-on-write
method to capture the at least one change by capturing every write made to
data-storage entity 122.” Ex. 1004, 5:47–51 (emphasis added). Petitioner
argues that in accordance with copy-on-write techniques, a person of
ordinary skill in the art would understand the phrase “capturing every write
made to data-storage entity 122” to refer to writes that are sent to the data
storage entity, but caught and held using the copy-on-write method.
PO Resp. 3. Dr. Shenoy states that the claim 1 language reciting “capturing
. . . at least one change made to data-storage entity after the first point in
time” does not require that the change must be stored in the data-storage
entity, but rather that the change is made only to the data and captured. Ex.
1008 ¶ 9.
We are not persuaded by Patent Owner’s argument and determine that
the ’168 patent Specification discloses embodiments that do not change the
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data in the original data-storage entity. For example, the ’168 patent
discloses that “[i]n some embodiments, data-storage entity 122 may
comprise . . . an optical disk (e.g., DVD-ROM [Read Only Memory], CD-
ROM [Read Only Memory], etc.).” Ex. 1004, 4:59–63. Thus, if “data-
storage entity 122” is a read only DVD-ROM or CD-ROM, then data in the
“data-storage entity 122” cannot be changed. Accordingly, we determine
that the broadest reasonable interpretation of the “capturing” step recited in
claim 1 encompasses the copy-on-write method disclosed in the ’168 patent
Specification and in Colbert.
c. First Empty Virtual-Disk File
Patent Owner argues that the proposed combination does not teach
“creat[ing] a first empty virtual-disk file” or “creating a parent-child
relationship between the first virtual-disk file and the first empty virtual-disk
file,” as recited in each of challenged independent clams 1, 12, and 14.
PO Resp. 22. Petitioner alleges that Colbert’s second child VM disk 512
corresponds to the claimed “first empty virtual-disk file,” and Petitioner
quotes Colbert’s disclosure that “second child VM disk 512 initially starts
out empty.” Pet. 19 (quoting Ex. 1004, 6:17–19).
Patent Owner argues that Colbert’s VM disk 512 fails to meet the
claimed “first empty virtual-disk file” because VM disk 512 does not remain
empty before it is reparented to VM disk 502 but captures changes that
ordinarily would have been directed to first child VM disk 511 or first parent
VM disk 501. PO Resp. 22–23. Petitioner responds by arguing that the
claims and the ’168 patent Specification use the term “empty” in “first
empty virtual-disk file” as nomenclature rather than an unalterable condition
of the file. Pet. Reply 5. More particularly, Petitioner argues that the
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’168 patent Specification refers to the “empty virtual-disk file” as an empty
virtual-disk file even after it has received writes. Pet. Reply 5 (citing
Ex. 1001 6:66–7:1, 7:24–27, 7:32–34). For example, the ’168 patent
Specification states that “[t]he virtual machine may redirect future writes to
empty virtual-disk file 126, allowing backup virtual-disk file 124 to remain
unchanged.” Ex. 1001, 6:66–71. Furthermore, the ’168 patent Specification
states that “backup module 112 may create empty virtual-disk file 126,
which may be an incremental virtual-disk file,” and that “[a]n incremental
virtual-disk file may include any file that stores incremental changes.” Id. at
4:29–31. Dr. Shenoy testifies that claim 5 in the ’168 patent recites creating
a second empty virtual-disk file that is reparented to a first virtual disk file
after it has received data. Ex. 1008 ¶ 24 (“reparenting the second empty disk
file to the first virtual disk file because the second empty disk includes
data.”).
In view of the disclosures in the ’168 patent, we are not persuaded that
Patent Owner’s proposal that the independent claims require that the “first
empty virtual-disk file” must remain empty before creating a parent-child
relationship. Further, in view of this evidence, we are persuaded that
Petitioner sufficiently establishes that Colbert teaches or suggests the
claimed “first empty virtual-disk file.”
d. Retargeting the First Empty Virtual-Disk File
Patent Owner argues that the proposed combination does not teach
that the first empty virtual-disk file be “retarget[ed]” such that the virtual
machine can boot from the virtual-disk file, as recited in independent claims
1, 12, and 14. PO Resp. 25. Patent Owner argues that the claimed
“retargeting” may involve “‘replacing, reconfiguring, and/or installing one
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or more of a Hardware Abstraction Layer (‘HAL’), kernel, mass storage
driver, and/or any other device drivers.’” PO Resp. 25 (quoting Ex. 1001,
6:58–63).
Petitioner responds that the ’168 patent broadly defines the retargeting
of empty virtual-disk files. Pet. Reply 5–6 (citing Ex. 1004, 6:58–40). The
’168 patent Specification states in the sentence immediately preceding the
examples of retargeting (i.e., replacing, reconfiguring, etc.) cited by Patent
Owner that “[r]etargeting empty virtual-disk file 126 may include any action
that enables a virtual machine to boot from backup virtual-disk file 124.”
Ex. 1001, 6:58–60 (emphasis added). 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). We determine Patent
Owner’s statement in the Specification to provide clarity, deliberateness, and
precision about the meaning of “retargeting an empty virtual-disk file.”
Accordingly, we determine that the claim limitation “retargeting the first
empty virtual-disk file” must include any action that enables a virtual
machine to boot from a virtual-disk file.
Additionally, Patent Owner argues that Petitioner’s challenge fails
because it points to the same disclosure in Colbert to demonstrate two
separate limitations, namely, “creat[ing] a parent-child relationship” and
“retargeting.” PO Resp. 26. Petitioner responds that unless the claim
requires otherwise, separately recited elements may be mapped to a single
component or step. Pet. Reply 6 (citing Powell v. Home Depot USA Inc.,
663 F.3d 1221, 1231–32 (Fed. Cir. 2011)). Furthermore, Petitioner argues
that the cited Colbert combination teaches or suggests creating a parent-child
relationship and retargeting. Pet. Reply 8. First, Petitioner argues that
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Colbert’s disclosure that the “second child VM disk 512 is re-parented to
second parent VM disk 502” corresponds to the claimed “creating a parent-
child relationship between the first virtual-disk file and the first empty
virtual-disk file.” Pet. 20 (quoting Ex. 1004, 6:45–46). Second, Patent
Owner argues that second child VM disk 512 (“first empty virtual-disk file”)
is retargeted to receive writes intended for parent VM disk 502 (“first
virtual-disk file”); thus, allowing Virtual Machine 200 to continue executing,
including being able to shutdown, restart, or boot by reading information
stored on second parent VM disk 502 or second child VM disk 512. Pet. 21
(citing Ex. 1002 ¶ 55). Furthermore, Petitioner argues that Lim teaches
“enabling at least one virtual machine to boot,” and, therefore, Colbert in
view of Lim discloses the claimed “retargeting the first empty virtual-disk
file to provide a first retargeted virtual-disk file and to enable the at least one
virtual machine to boot from the first virtual-disk file.” Pet. 21 (citing
Ex. 1005, 28:15–20). As the claimed “retargeting the first empty virtual-
disk file” may “include any action that enables a virtual machine to boot
from backup virtual-disk file” (Ex. 1001, 6:58–60 (emphasis added)), we are
persuaded that Petitioner sufficiently establishes by a preponderance of the
evidence that this claim element would have been obvious in view of
Colbert’s disclosure regarding the retargeting of VM disk 512 in
combination with enabling a virtual machine to boot taught in Lim.
Therefore, we are persuaded that Petitioner sufficiently establishes that
Colbert in view of Lim teaches or suggests the claimed retargeting of the
first empty virtual-disk file.
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e. Combinability of Colbert with Lim
Patent Owner argues that the combination of Colbert and Lim would
frustrate Colbert’s purpose of migrating a virtual machine in a manner that
avoids interruption and allows it to continue executing, because Lim’s
checkpointing process requires interrupting the virtual machine in order to
capture and extract its state vector information. PO Resp. 31 (citing,
Ex. 1004, 1:32–62, 3:55–62, 7:49–54; Ex. 1005, 29:53–58, 6:45–52, 8:15–
19, 18:2–10; Ex. 2002 ¶ 84). More particularly, Patent Owner argues that
using Lim’s checkpointing techniques for capturing and copying the
contents of the original VM disk in Colbert would contradict Colbert’s
intended goal, and render superfluous Colbert’s children VM disks. Id. at
32.
Nonobviousness cannot be established by attacking the references
individually when a challenge is predicated upon a combination of prior art
disclosures. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986). Patent Owner’s arguments attack Colbert and Lim individually, but
fail to account for the combination as proposed by the Petitioner. The
Petitioner’s challenge does not use “Lim’s checkpointing technique for
capturing and copying the contents of the original VM disk in Colbert,” as
argued by Patent Owner (PO Resp. 32), but rather Petitioner’s proposed
combination simply provides that “to the extent that Colbert does not
explicity teach ‘enabling at least one virtual machine to boot,’ Lim discloses
this limitation” (Pet. 19). Therefore, Patent Owner’s arguments about Lim’s
checkpointing process frustrating the teachings of Colbert are unpersuasive
with respect to challenged independent claims.
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We have reviewed the combination of Colbert and Lim proposed by
the Petitioner and the supporting evidence relied upon by Petitioner.
Pet. 11–13 (citing Ex. 1002 ¶¶ 28–29). With respect to this combination, we
are persuaded that Petitioner sufficiently establishes an “articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
f. Dependent Claim 3
Dependent claim 3 requires that the “first virtual-disk file comprises a
first incremental backup of the data-storage entity” and the “second virtual-
disk file comprises a second incremental backup of the data-storage entity.”
Petitioner alleges that Colbert’s child VM disk 511 corresponds to the
claimed incremental backup first virtual-disk file and child VM disk 512
corresponds to the claimed incremental backup second virtual-disk file.
Pet. 23–24 (citing Ex. 1004, 4:17–18, 20–22, 6:1–2). Additionally,
Petitioner argues that it would have been obvious to one of ordinary skill in
the art to combine the disclosure in Lim regarding rolling incremental
backups into another incremental backup. Pet. 24 (citing Ex. 1005, 24:14–
16; Ex. 1002 ¶ 58). Dr. Shenoy states that a person of ordinary skill would
have found it obvious to copy the changes of one child VM disk into another
child VM disk to reduce the amount of disk space used. Ex. 1002 ¶ 58.
Patent Owner argues that Petitioner’s challenge is deficient because
Petitioner fails to show that a portion of the data storage entity is backed up
to a first virtual-disk file as required by the challenged independent claims.
PO Resp. 35. Contrary to Patent Owner’s arguments, however, Petitioner
identifies that Colbert’s child VM disk 511 serves as incremental backup to
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the data storage entity. See Pet. 23–24 (citing Ex. 1004, 4:17–18, 20–22,
6:1–2).
Patent Owner argues that “child VM disk 511 is made read-only
during consolidation with VM disk 502”; thus, the contents of child VM disk
512 cannot be copied to child VM disk 511. PO Resp. 37 (emphasis added).
Patent Owner’s argument overlooks the specifics of Petitioner’s challenge.
With respect to claim 1, Petitioner argues that VM disk 502 corresponds to
the “first virtual-disk file,” but for claim 3, Petitioner argues that Colbert’s
child VM disk 511 corresponds to the claimed “first virtual-disk file [that]
comprises a first incremental backup of the data-storage entity.” Pet. 23–24
(citing Ex. 1004, 4:17–18, 20–22, 6:1–2). Accordingly, Patent Owner’s
arguments regarding Colbert’s VM disk 502 are not relevant to the challenge
against dependent claim 3. Based on the record before us, we are persuaded
that Petitioner sufficiently establishes that Colbert in view of Lim teaches or
suggests the elements of claim 3.
g. Conclusion With Respect the Asserted Ground of
Obviousness In View of Colbert and Lim
With respect to the Petitioner’s challenge that claims 1–4, 9–12, and
14 of the ’168 patent would have been obvious in view of Colbert and Lim,
we have considered the papers submitted by the parties and the evidence
cited therein. For the foregoing reasons, we determine that Petitioner has
demonstrated by a preponderance of the evidence that claims 1–4, 9–12, and
14 of the ’168 patent would have been obvious in view Colbert and Lim.
C. Asserted Obviousness Ground Based on Liu and HVR
1. Overview of Liu
Liu is titled “System and Method for Virtualizing Backup Images”
and discloses recreating a computer at a point in time from a backup image.
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Ex. 1006, 2:20–23. The backup mechanism of Liu includes creating a first
backup image followed by capturing subsequent changes separately. Id. at
4:26–30. Figure 1 of Liu, illustrating the backup mechanism, is reproduced
below:

As shown above in Figure 1, Liu discloses backing up primary system 100
to read/write logical unit number (LUN) 111 on secondary storage server
107. Id. at 5:6–8. LUN 111 includes a read-only backup image 161 and
additional space 162 for changed data. Id. Figure 2 of Liu, illustrating the
virtualization process using the backup image, is reproduced below:

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As shown above in Figure 2, Liu describes configuring virtual machine 200
to run from LUN 111 by virtualization server 220. Id. at 6:4–12. Virtual
machine 200 operates from LUN 111 using pseudo file 202, which
transforms backup image 161 into a LUN and further maintains the integrity
of backup image 161 by writing changes to separate space 162. Id. at 6:10–
16. Virtual machine 200 may then be launched using boot records
appropriate for the desired operating system. Id. at 7:1–3, 13–14.
2. Overview of HVR
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HVR is titled “Disaster Recovery and Backup Using Virtual
Machines” and describes backing up a virtual machine by capturing a state
of the virtual machine at a point in time and copying the state to a storage
device. Ex. 1007, Abstr. Figure 1 of HVR is reproduced below:

As shown above in Figure 1, HVR describes computer system 10 including
virtual machines 16A-16C controlled by VM kernel 18, backup program 42,
and backup medium 24. Id. at 3:30–33, 42–61. Virtual machines 16A-16C
mimic hardware used during execution of an application and are “any
combination of software, one or more data structures in memory, and/or one
or more files stored on a storage device (such as the storage device 22).” Id.
at 3:45–49. Backup program 42 of computer system 10 temporarily
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suspends one of virtual machines 16A-16C to create and store backup image
40 of the suspended virtual machine on backup medium 24. Id. at 4:53–61.
Figure 2 of HVR describes one embodiment of the backup process and is
reproduced below:

As shown above in Figure 2, HVR first suspends virtual machine at step 50
and determines if the suspended virtual machine includes a non-persistent
virtual disk at step 52. Id. at 6:45–51, 7:10–11. HVR describes a non-
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persistent virtual disk as including a virtual disk file and a separate copy-on-
write (“COW”) file, of which
[t]he virtual disk file may be organized as a set of disk blocks,
in a fashion similar to physical disk drives. The COW file
stores updated copies of disk blocks in a log form. Thus, the
virtual disk file may contain the disk blocks prior to any
uncommitted updates being made.
Id. at 6:63–7:1. To commit changes from the COW file in step 54 of
Figure 2,
the blocks from the COW file may be written to the
corresponding block locations in the virtual disk file, beginning
at the start of the COW file and proceeding, in order, to the end.
Both the virtual disk files and the corresponding COW files
may be included in the virtual machine image 40.
Id. at 7:3–14.
3. Analysis of Asserted Obviousness Ground Over Liu and HVR
Petitioner argues that claims 1–4, 9–12, and 14 would have been
obvious in view of Liu and HVR. Pet. 32–56. With respect to claim 1,
Petitioner argues Liu’s backup image 111 discloses a first virtual-disk file.
Id. at 37. Petitioner argues that Liu discloses capturing subsequent changes
to the image separately, but to the extent that Liu does not disclose a
separate virtual file, Petitioner argues that HVR discloses virtual COW files
may be used to capture changes, and thus Liu in view of HVR teaches a
second virtual-disk file. Id. at 37–38. Petitioner argues that Liu’s storage
backup 162 teaches an empty file that captures changes and allows a virtual
machine to boot, but to the extent that Liu does not disclose explicitly that it
is a virtual file, Petitioner argues that HVR discloses that virtual COW files
are used to capture and apply changes. Id. at 41–45.
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a. Data Storage Techniques of Liu Versus HVR
Patent Owner argues that Petitioner fails to reconcile the contrasting
data storage techniques between Liu, which Patent Owner argues is directed
to physical machines, and HVR, which Patent Owner argues is directed to
virtual machines. PO Resp. 44–46. More particularly, Patent Owner argues
that it would not have been obvious to implement HVR’s COW file
structure, which is used in non-persistent virtual disks, in a physical machine
such as Liu’s where disk blocks change as data is written. PO Resp. (citing
Ex. 1006, 5:26–27, 12:21–23, Ex. 2002 ¶¶ 106, 108, 110). Petitioner
responds that it does not propose physically incorporating HVR’s features
into Liu, but rather what the combined features would have suggested to a
person of ordinary skill in the art. Pet Reply 10–11.
An obviousness analysis “need not seek out precise teachings directed
to the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” KSR, 550 U.S. at 418; see also In re Translogic
Tech, 504 F.3d 1249, 1259 (Fed. Cir. 2007). A prima facie case of
obviousness is established when the prior art itself would appear to have
suggested the claimed subject matter to a person of ordinary skill in the art.
In re Rinehart, 531 F.2d 1048, 1051 (CCPA 1976). Petitioner argues that
implementing HVR’s COW file in Liu would have been obvious to a person
of ordinary skill in the art. Pet. 37–38. Additionally, Petitioner argues that
Patent Owner concedes that HVR’s “COW files are well-known structure”
used to capture changes for a virtual-disk file. Pet Reply 11 (quoting PO
Resp. 45, 49). Furthermore, Dr. Shenoy states that both Liu and HVR relate
to backup and disaster recovery using virtual machines, and that although
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Liu relates to physical machines, Liu discloses creating a virtual machine
backup from physical machines. Ex. 1002 ¶¶ 69–70. Furthermore, Dr.
Shenoy states that substituting the COW file of HVR, which HVR describes
using for incremental backups, with Liu’s incremental backup procedure
would be merely a simple substitution for a person or ordinary skill in the
art. Id. at ¶ 71. We are persuaded that Petitioner sufficiently provides an
articulated reasoning with a rational underpinning to combine the teachings
of Liu and HVR.
b. Creating a Parent-Child Relationship
Patent Owner argues that Petitioner fails to point to any disclosure in
Liu or HVR that satisfies the claim limitation regarding “creating a parent-
child relationship between the first virtual-disk file and the second virtual-
disk file.” PO Resp. 50–51. As discussed above, we construe “creating a
parent-child relationship” as “logically connecting two virtual-disk files so
that changes intended for the parent virtual-disk file are first stored in the
child virtual-disk file.” Patent Owner argues that Petitioner merely points to
an association, not a “relationship,” between an already captured set of
changes for a volume and the proper backup image to which these changes
ought to be applied subsequently. PO Resp. 51 (citing Pet. 39; Ex. 1002
¶ 84). Contrary to Patent Owner’s argument, Petitioner alleges that Liu
discloses that “[a]fter the first backup, only changes since the last backups
are captured and applied to the existing secondary image.” Pet. 39 (citing
Ex. 1006, 4:29–30). Furthermore, Petitioner alleges that because each
volume has its own associated stored backup image, the system must
determine which volume a particular set of changes is to be applied and
create a relationship between the backup image of that volume (first virtual-
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disk file) and its change file (second virtual-disk file). Id. (citing Ex. 1002
¶ 84 (quoting Ex. 1006, 4:32–33 (“[a] separate image exists for each volume
of the backed up machine”))). Dr. Shenoy states that a parent-child
relationship exists because Liu’s changed data stores changes intended for
its associated backup image. Ex. 1002 ¶ 84. In view of this evidence, we
are persuaded that Petitioner sufficiently establishes that Liu teaches or
suggests the claimed “creating a parent-child relationship.”
c. Storing the First Virtual-Disk File
Patent Owner argues that Petitioner’s proposed combination of Liu in
view of HVR fails to teach “storing the first virtual-disk file that comprises
the synthetic backup in a manner that enables at least one virtual machine to
boot from the stored first virtual-disk file,” as recited in the challenged
independent claims. PO Resp. 52. Specifically, Patent Owner argues that
Petitioner’s proposed challenge fails because the backup image disclosed in
Liu “is not made bootable until other steps are taken in the virtualization
phase.” PO Resp. 53 (citing Ex. 1002 ¶ 84). “Moreover, Liu requires other
actions in order to allow the virtual machine to boot.” Id.
Patent Owner’s arguments are not commensurate with the scope of the
challenged claims, because we are not persuaded that the recited limitation
regarding “storing the first virtual-disk file that comprises the synthetic
backup in a manner that enables at least one virtual machine to boot from the
stored first virtual-disk file” prohibits further steps to allow the virtual
machine to boot. In fact, Petitioner argues that the later claim recitation
regarding “retargeting the first empty virtual-disk file to provide a first
retargeted virtual-disk file and to enable the at least one virtual machine to
boot from the first virtual-disk file” identifies one additional step that allows
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the virtual machine to boot. Pet. Reply 13. In view of this evidence, we are
persuaded that Petitioner sufficiently establishes that Liu in view of HVR
teaches or suggests “storing the first virtual-disk file that comprises the
synthetic backup in a manner that enables at least one virtual machine to
boot from the stored first virtual-disk file.”
d. Creating a First Empty Virtual-Disk File
Patent Owner argues that Petitioner fails to point to any disclosure in
Liu or HVR that satisfies “creat[ing] a parent-child relationship between the
first virtual-disk file and the first empty virtual-disk file.” PO Resp. 54.
Patent Owner argues that Liu’s persistent storage 162 (“first empty virtual-
disk file”), is not empty when the parent child relationship is created. PO
Resp. 55 (citing Ex. 1006, 7:10–12). As discussed above with respect to
Patent Owner’s arguments against the combination of Colbert and Lim, in
view the disclosures in the ’168 patent, we are not persuaded by Patent
Owner’s proposal that the independent claims require that the “first empty
virtual-disk file” must remain empty before creating a parent-child
relationship. Accordingly, we are persuaded that Petitioner sufficiently
establishes that Liu teaches or suggests the claimed “first empty virtual-disk
file.”
e. Retargeting the First Empty Virtual-Disk File
Patent Owner argues that Petitioner fails to point to any disclosure in
Liu or HVR that satisfies “retargeting the first empty virtual-disk file to
provide a first retargeted virtual-disk file and to enable the at least one
virtual machine to boot from the first virtual-disk file,” as recited in the
challenged independent claims. PO Resp. 55. Patent Owner argues that
“retargeting” requires taking an action that enables the virtual machine to
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boot from the virtual-disk file. Id. at 56. Subsequently Patent Owner
argues, however, that “Liu requires a series of actions to enable booting the
virtual machine.” Id. at 57. It is these additional actions that Petitioner
relies upon as teaching the claimed retargeting step. Pet. 45; Pet. Reply 14.
Petitioner alleges that Liu discloses that virtual machines boot from
the backup image 161, but any modifications to the backup image are stored
in an empty disk, the persistent storage 162. Pet. 45 (citing Ex. 1006, 6:10–
16). Petitioner argues that Liu describes reconfiguring the empty disk to
enable a virtual machine to boot by disclosing that “[i]n order that these
virtual machines may boot, the boot and system drives are impregnated with
boot records appropriate for the Operating System.” Id. (citing Ex. 1006,
7:1–2). Accordingly, we are persuaded that Petitioner sufficiently
establishes that Liu teaches or suggests the claimed “retargeting.”
f. Dependent Claim 3
Dependent claim 3 requires that the “first virtual-disk file comprises a
first incremental backup of the data-storage entity” and the “second virtual-
disk file comprises a second incremental backup of the data-storage entity.”
Petitioner alleges that Liu’s “secondary image” corresponds to the claimed
incremental backup first virtual-disk file. Pet. 47 (citing Ex. 1006, 4:29–30).
Specifically, Petitioner cites to the disclosure in Liu that: “[a]fter the first
backup, only changes since the last backups are captured and applied to the
existing secondary image.” Id. Petitioner argues that because the changes
constitute an incremental backup and are applied to the secondary image
after they are captured, the secondary image includes the changes after they
have been applied. Id. Petitioner further alleges that although Liu does not
disclose explicitly a virtual-disk file, HVR teaches such files. Id. at 48.
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Patent Owner argues that the secondary image 161 is Liu is a full
backup, not the incremental backup required by claim 3. PO Resp. 58.
Furthermore, Patent Owner argues that Petitioner relies upon the secondary
image 161 in its challenge to claim 2 to meet the claimed “first virtual-disk
file comprises a full backup of the data-storage entity.” Id. (citing Pet. 46).
We agree that the secondary image 161 disclosed in Liu is a full backup, not
an incremental backup.
In its reply, Petitioner states that it “did not ‘state that the secondary
image 161 . . . comprises an incremental backup’” but rather stated that “‘the
changes constitute and incremental backup file,’ and further relied on H[V]R
to teach the second incremental backup.” Pet. Reply 15 (citing Pet. 47–48)
(emphasis added). Contrary to Petitioner arguments, the only allegations in
Petitioner’s challenge to claim 3 regarding HVR are with respect to the
claimed “second virtual-disk file,” in which Petitioner argues that HVR
teaches that “changes are stored in a virtual-disk file.” See Pet. 48.
Petitioner fails to provide any arguments that HVR teaches the “first virtual-
disk file comprises a first incremental backup of the data-storage entity,” as
recited in claim 3. Accordingly, we are not persuaded that Petitioner has
established sufficiently by a preponderance of the evidence that claim 3
would have been obvious in view of Liu and HVR.
g. Conclusion With Respect the Asserted Ground of
Obviousness In View of Liu and HVR against Claims 1, 2, 4,
9–12, and 14
With respect to the Petitioner’s challenge that claims 1, 2, 4, 9–12,
and 14 would have been obvious in view of Liu and HVR, we have
considered the papers submitted by the parties and the evidence cited
therein. For the foregoing reasons, we determine that Petitioner has
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demonstrated by a preponderance of the evidence that claims 1, 2, 4, 9–12,
and 14 of the ’168 patent would have been obvious in view of Liu and HVR.

III. CONCLUSION
Petitioner has shown by a preponderance of the evidence that claims
1–4, 9–12, and 14 of the ʼ168 patent would have been obvious in view of
Colbert and Lim; and Petitioner has shown by a preponderance of the
evidence that claims 1, 2, 4, 9–12, and 14 of the ʼ168 patent would have
been obvious in view of Liu and HVR.

IV. ORDER
For the reasons given, it is
ORDERED that, based on Petitioner’s showing by a
preponderance of the evidence, claims 1–4, 9–12, and 14 of the ʼ168 patent
are unpatentable;
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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For PETITIONER:

Lori A. Gordon
Michael Q. Lee
Jonathan M. Strang
Daniel S. Block
STERNE, KESSLER, GOLDSTEIN
& FOX PLLC
lgordon-PTAB@skgf.com
mlee-PTAB@skgf.com
jstrang-PTAB@skgf.com
dblock-PTAB@skgf.com

For PATENT OWNER:

Joseph J. Richetti
Lawrence G. Kurland
Daniel A. Crowe
BRYAN CAVE LLP
joe.richetti@bryancave.com
lgkurland@bryancave.com
dacrowe@bryancave.com