Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 69
`Entered: April 13, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ACTIFIO, INC.,
`Petitioner,
`
`v.
`
`DELPHIX CORP.,
`Patent Owner.
`____________
`
`Case IPR2015-00016 & IPR2015-000191
`Patent 8,150,808 B2
`
`
`
`
`
`Before HOWARD B. BLANKENSHIP, KARL D. EASTHOM, and
`MINN CHUNG, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`
`1 As explained below, we hereby consolidate the two trials for purposes of
`issuing this Final Written Decision.
`
`
`571-272-7822
`
`
`
`
`Paper 69
`Entered: April 13, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ACTIFIO, INC.,
`Petitioner,
`
`v.
`
`DELPHIX CORP.,
`Patent Owner.
`____________
`
`Case IPR2015-00016 & IPR2015-000191
`Patent 8,150,808 B2
`
`
`
`
`
`Before HOWARD B. BLANKENSHIP, KARL D. EASTHOM, and
`MINN CHUNG, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`
`1 As explained below, we hereby consolidate the two trials for purposes of
`issuing this Final Written Decision.
`
`
`
`IPR2015-00016 & IPR2015-00019
`Patent 8,150,808 B2
`
`
`
`I. INTRODUCTION
`
`In these inter partes review trials, instituted pursuant to 35 U.S.C.
`
`§ 314, Petitioner Actifio, Inc. (“Petitioner”) challenges the patentability of
`
`certain claims of U.S. Patent No. 8,150,808 B2 (Ex. 1101, “the ’808
`
`patent”), owned by Delphix Corp. (“Patent Owner”), as follows: claims 3,
`
`29, 31, 36, 53, 54, and 56 in Case IPR2015-00016 (“’016 IPR”); and claims
`
`2, 24–27, 35, 51, and 52 in Case IPR2015-00019 (“’019 IPR”). Based on a
`
`substantial overlap of arguments and evidence presented in the two cases, to
`
`administer the proceedings more efficiently, we exercise our authority under
`
`35 U.S.C. § 315(d) to consolidate the two proceedings for purposes of
`
`issuing one final written decision.
`
`The Board has jurisdiction under 35 U.S.C. § 6(c). This Final Written
`
`Decision is entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`
`With respect to the grounds instituted in this trial, we have considered the
`
`papers submitted by the parties and the evidence cited therein. For the
`
`reasons discussed below, we determine Petitioner has shown by a
`
`preponderance of the evidence that claims 2, 3, 24–26, 29, 31, 35, 36, 51, 53,
`
`54, and 56 of the ’808 patent are unpatentable, but has not shown by a
`
`preponderance of the evidence that claims 27 and 52 are unpatentable.
`
`A. Procedural History
`
`Based on Petitions (Paper 1 (“Pet.”) in the ’016 IPR; ’019 Paper 1
`
`(“’019 Pet.”) in the ’019 IPR) filed by Petitioner, we instituted inter partes
`
`reviews of claims 2, 3, 24–27, 29, 31, 35, 36, 51–54, and 56 based on the
`
`2
`
`
`
`
`
`IPR2015-00016 & IPR2015-00019
`Patent 8,150,808 B2
`
`
`
`following grounds of unpatentability (Paper 11 (“Inst. Dec.”); ’019 Paper 11
`
`(“’019 Inst. Dec.”)):
`
`Claim(s) Challenged Statutory Basis
`
`Ground
`
`2, 3, 24–26, 29, 31,
`51, 53, 54, and 56
`
`§ 103(a)
`
`Edwards,2 Patterson,3 and Sanders4
`
`36
`
`§ 103(a)
`
`2, 27, 35, 51, and 52 § 103(a)
`
`Edwards, Patterson, Sanders, and
`Singh5
`
`Edwards, Patterson, Sanders, and
`Fair6
`
`After institution of trial, Patent Owner filed a Patent Owner Response
`
`(Paper 23, “PO Resp.”), to which Petitioner filed a Reply (Paper 32, “Pet.
`
`Reply”).7 Subsequently, Patent Owner moved to exclude (Paper 46, “PO
`
`Mot. to Exclude”) certain Exhibits; Petitioner opposed (Paper 53, “Pet.
`
`
`2 Edwards et al., FlexVol: Flexible, Efficient File Volume Virtualization in
`WAFL, PROCEEDINGS OF THE ANNUAL TECHNICAL USENIX CONFERENCE
`129–142 (June 22–27, 2008) (“Edwards”) (Ex. 1103).
`
`3 Patterson et al., SnapMirror®: File System Based Asynchronous Mirroring
`for Disaster Recovery, PROCEEDINGS OF THE CONFERENCE ON FILE AND
`STORAGE TECHNOLOGIES, USENIX ASSOCIATION (January 28–30, 2002)
`(“Patterson”) (Ex. 1104).
`
`4 Jawahar Lal & Roger Sanders, DB2: Cloning a Database using NetApp
`FlexClone™ Technology, Network Appliance Inc., IBM Toronto Lab, TR-
`3460 (Apr. 30, 2006) (“Sanders”) (Ex. 1105).
`
`5 U.S. Patent No. 8,775,663 B1 (July 8, 2014) (“Singh”) (Ex. 1106).
`
`6 U.S. Patent No. 7,334,095 B1 (Feb. 19, 2008) (“Fair”) (Ex. 1206).
`
`7 Unless otherwise indicated, we refer to public (including redacted) Papers
`and Exhibits filed in IPR2015-00016.
`3
`
`
`
`
`
`IPR2015-00016 & IPR2015-00019
`Patent 8,150,808 B2
`
`
`
`Exclude Opp.”); and Patent Owner replied (Paper 56, “PO Exclude Reply”).
`
`Patent Owner also filed Motions for Observation on certain cross-
`
`examination testimony of Dr. Erez Zadok (Paper 49, “Obs. Zadok”) and
`
`Louis Hernandez (Paper 47, “Obs. Hernandez”), to which Petitioner filed
`
`Responses (Paper 57 (“Obs. Resp. Zadok”) and Paper 55 (“Obs. Resp.
`
`Hernandez”), respectively). Patent Owner also filed a Paper identifying
`
`allegedly untimely evidence and evidence and arguments beyond the scope
`
`of Petitioner’s Reply. Paper 58 (“Exclude Pet. Reply Evid.”). The parties
`
`filed similar Papers and Exhibits in the ’019 IPR (to be designated, as
`
`indicated above, with the “’019” prefix: for example, “’019 Paper”).
`
`A combined oral hearing in these proceedings and related Cases
`
`IPR2015-00014, IPR2015-00034, IPR2015-00025, IPR2015-00026,
`
`IPR2015-00050, IPR2015-00052, and IPR2015-00128 was held on January
`
`14, 2016. A transcript of the hearing is included in the record as Paper 68
`
`(“Tr.”).
`
`B. Related Proceedings
`
`According to Petitioner, the ’808 patent is the subject of the following
`
`pending patent infringement case: Delphix Corp. v. Actifio, Inc., No. 5:13-
`
`cv-04613-BLF (N.D. Cal.). Pet. 2. In related proceedings before the Board,
`
`we instituted inter partes reviews of various claims of the ’808 patent in
`
`Cases IPR2015-00014 and IPR2015-00034. Additionally, we instituted
`
`inter partes reviews of claims of U.S. Patent No. 8,161,077 B2 in Cases
`
`IPR2015-00025 and IPR2015-00026; claims of U.S. Patent No. 8,548,944
`
`B2 in Cases IPR2015-00050 and IPR2015-00052; claims of U.S. Patent No.
`
`4
`
`
`
`
`
`IPR2015-00016 & IPR2015-00019
`Patent 8,150,808 B2
`
`
`
`8,566,361 B2 in Cases IPR2015-00100 and IPR2015-00108; and claims of
`
`U.S. Patent No. 8,468,174 B1 in Case IPR2015-00128.8
`
`II. THE ’808 PATENT
`
`A. Described Invention
`
`
`
`The ’808 patent describes a system and method to create a virtual
`
`database, which involves obtaining multiple “point-in-time” (“PIT”) copies
`
`of the database to be virtualized. See Ex. 1101, Abstract. In one virtual
`
`database embodiment represented by Figure 2a, “production database system
`
`110 . . . is the source of the database being virtualized” to create virtual
`
`database 220 using virtual database files stored in database storage system
`
`100. Id. at col. 6, ll. 59–65. Figure 2a of the ’808 patent is reproduced
`
`below.
`
`
`
`Figure 2a depicts production database system 110, virtual database DB1 220
`
`stored in database storage system 100, and virtual database system 130,
`
`
`8 Case IPR2015-00136 has been consolidated with IPR2015-00128.
`5
`
`
`
`
`
`IPR2015-00016 & IPR2015-00019
`Patent 8,150,808 B2
`
`
`
`which accesses virtual database 220.
`
`To virtualize a production database, the system of the ’808 patent
`
`makes a first PIT copy of the production database and stores an entire set of
`
`database blocks representing the production database at that time in database
`
`storage system 100. See Ex. 1101, col. 18, ll. 27–36; Fig. 10. Subsequent
`
`PIT copies involve incremental changes and copy “only the blocks that
`
`changed since the last PIT copy and may copy much less data compared to
`
`the first PIT copy.” Id. at col. 18, ll. 38–41. A virtual database (VDB) is
`
`created by creating VDB file structures comprising VDB blocks that point to
`
`different PIT database blocks. See id. at col. 18, ll. 27–55. Each time an
`
`updated PIT copy is received at database storage system 100 reflecting
`
`changes in the production database, the system updates the appropriate VDB
`
`blocks in a VDB file which are “implemented as pointers to the actual
`
`database block that stores the [updated] data.” See id. at col. 18, ll. 44–55.
`
`Figure 10 from the ’808 patent is reproduced below.
`
`6
`
`
`
`
`
`
`
`IPR2015-00016 & IPR2015-00019
`Patent 8,150,808 B2
`
`
`
`Figure 10 shows “VDB Files for Time T2” in database storage system 100.
`
`Figure 10 further shows that “VDB file structures 1050” includes blocks
`
`V11, V12, V13, and V14 which point to database blocks F11 . . . F34 that
`
`represent different PIT (i.e., at times T0, T1, and T2) copies of production
`
`database blocks F1, F2, F3, and F4 at production database system 110.
`
`Initially, all the production database blocks are copied to create “[t]he first
`
`PIT copy 1030 made at time T0,” as represented by database blocks F11,
`
`F12, F13, and F14 in database storage system 100. Id. at col. 18, ll. 35–38.
`
`Later, when the PIT copy made at time T2 is received and the VDB blocks
`
`are updated, block V13 points to the updated data at block F33, which
`
`represents a change existing at T2 to the data in block F3 in the production
`
`database (see id. at col. 18, ll. 53–55), whereas VDB block V11 still points
`
`to the data in block F11 “since the [production database] block F1 was never
`
`updated during copies made at time T1 and T2” (id. at col. 18, ll. 49–51).
`
`B. Illustrative Claim
`
`The challenged claims depend from claim 1 or 50.9 Claim 1 is
`
`illustrative of the challenged claims and is reproduced below:
`
`A method for creating a virtual database system, the
`1.
`method comprising:
`
`receiving different point-in-time copies of a source
`database, the source database comprising a plurality of database
`blocks;
`
`storing on a storage system, database blocks for a
`plurality of different point-in-time copies of the source
`database, wherein at least some of the stored database blocks
`
`
`9 Petitioner challenges claims 1 and 50 in IPR2015-00014.
`7
`
`
`
`
`
`IPR2015-00016 & IPR2015-00019
`Patent 8,150,808 B2
`
`
`
`are associated with multiple point-in-time copies of the source
`database;
`
`creating a set of files for a virtual database, each file in
`the set of files is linked to the database blocks on the storage
`system associated with a point-in-time copy of the source
`database; and
`
`mounting the set of files associated with the virtual
`database on a database server allowing the database server to
`read from and write to the set of files.
`
`III. CLAIM CONSTRUCTION
`
`In an inter partes review, claim terms in an unexpired patent are given
`
`their broadest reasonable construction in light of the specification of the
`
`patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo
`
`Speed Techs., LLC, 793 F.3d 1268, 1277–79 (Fed. Cir. 2015) (“Congress
`
`implicitly approved the broadest reasonable interpretation standard in
`
`enacting the AIA,” and “the standard was properly adopted by PTO
`
`regulation.”), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 136
`
`S. Ct. 890 (mem.) (2016). In general, claim terms are given their ordinary
`
`and customary meaning in view of the specification, as would be understood
`
`by one of ordinary skill in the art at the time of the invention. In re
`
`Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007); Phillips v.
`
`AWH Corp., 415 F.3d 1303, 1312–13, 1315 (Fed. Cir. 2005) (en banc). A
`
`patentee may rebut that presumption by providing a definition for the term in
`
`the specification with reasonable clarity, deliberateness, and precision. In re
`
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). A particular embodiment
`
`appearing in the written description generally is not incorporated into a
`
`claim if the claim language is broader than the embodiment. SuperGuide
`
`8
`
`
`
`
`
`IPR2015-00016 & IPR2015-00019
`Patent 8,150,808 B2
`
`
`
`Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004); In re
`
`Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993); see also Phillips, 415
`
`F.3d at 1323 (“[A]lthough the specification often describes very specific
`
`embodiments of the invention, we have repeatedly warned against confining
`
`the claims to those embodiments.”).
`
`During trial, the parties disputed the claim construction of the terms
`
`“database block” and “virtual database,” which we address below. No other
`
`claim terms require express construction to resolve the issues raised in this
`
`inter partes review. See, e.g., Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`
`200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms that are in controversy
`
`need to be construed, and only to the extent necessary to resolve the
`
`controversy).
`
`The parties’ claim construction arguments advanced in Case IPR2015-
`
`00016 are essentially identical to their arguments presented in Case
`
`IPR2015-00019. Hence, although our discussion below focuses on the ’016
`
`IPR, our findings and conclusions apply equally to the ’016 IPR and the
`
`’019 IPR cases unless indicated otherwise.
`
`A. Database Block
`
`1. Whether a Database Block Requires Metadata
`
`The main claim construction dispute between the parties with respect
`
`to the term “database block” centers on whether a database block must
`
`necessarily include metadata. Patent Owner asserts the term “database
`
`block” should be interpreted to require metadata, i.e., as “a unit of data used
`
`by a database which comprises a specific number of bytes stored in the
`
`9
`
`
`
`
`
`IPR2015-00016 & IPR2015-00019
`Patent 8,150,808 B2
`
`
`
`storage, a portion of which stores metadata associated with the unit of data”
`
`(PO Resp. 16), whereas Petitioner argues the correct interpretation of the
`
`term is not so limited, i.e., “a unit of data used by a database” (Pet. 10). For
`
`the reasons discussed below, we conclude the disputed term is not limited as
`
`Patent Owner contends.
`
`a. Claim Language
`
`We begin our claim construction analysis by considering the language
`
`of the claims themselves. Phillips, 415 F.3d at 1314. First, we note that the
`
`term “metadata” is not recited in any of the challenged claims. Nor do the
`
`claims expressly require inclusion of metadata in database blocks. The only
`
`claims of the ’808 patent that recite “metadata” are dependent claims 32 and
`
`33, which are not challenged in this case or any other related cases currently
`
`before the Board. These claims depend indirectly from claim 1 and
`
`expressly recite “metadata of database blocks.” Thus, had the patentee
`
`intended to limit “database blocks” recited in claim 1 or any other
`
`challenged claims to require metadata, it could have done so by explicitly
`
`modifying the disputed term with “metadata,” but did not.
`
`Therefore, to show the disputed term is limiting, Patent Owner must
`
`demonstrate “a clear indication in the intrinsic record that the patentee
`
`intended the claims to be so limited.” Liebel–Flarsheim Co. v. Medrad, Inc.,
`
`358 F.3d 898, 913 (Fed. Cir. 2004); see also Aventis Pharma S.A. v.
`
`Hospira, Inc., 675 F.3d 1324, 1330–32 (Fed. Cir. 2012) (“perfusion” not
`
`limited to having at least eight hours of stability because the patentee did not
`
`“clearly express an intent” to redefine the term in the specification or during
`
`10
`
`prosecution).
`
`
`
`
`
`IPR2015-00016 & IPR2015-00019
`Patent 8,150,808 B2
`
`
`
`b. Written Description
`
`Turning to the written description, Patent Owner asserts that the
`
`following passage in the Summary section of the Specification defines the
`
`term “database block”:
`
`A database block is a unit of data used by a database and
`comprises a specific number of bytes stored in the storage. A
`database block can also be referred to as a page. A portion of
`the database block stores metadata associated with the database
`block.
`
`PO Resp. 16 (quoting Ex. 1101, col. 2, ll. 7–12). The first sentence in the
`
`cited passage above explicitly defines the term, by stating “[a] database
`
`block is a unit of data used by a database.”10 Ex. 1101, col. 2, ll. 7–9.
`
`Although the second next sentence states that a database block “stores
`
`metadata,” that sentence by itself is insufficient to limit the disputed term by
`
`requiring the unrecited “metadata” feature because it does not state
`
`unambiguously that all “database blocks” must include metadata. See
`
`Liebel-Flarsheim, 358 F.3d at 906 (construing a claim term broadly because
`
`“[n]o statement in the written description [ ] constitute[d] a limitation on the
`
`scope of the invention”) (quoting Brookhill-Wilk 1, LLC v. Intuitive
`
`Surgical, Inc., 334 F.3d 1294, 1301 (Fed. Cir. 2003)). Further, the cited
`
`passage does not exclude the possibility of some database blocks not having
`
`any metadata. See id. at 908 (passages in the Summary of the Invention
`
`
`10 The first sentence also states a database block comprises “a specific
`number of bytes stored in the storage.” For the reasons discussed in Section
`III.A.4 below, we find this addition is not part of the explicit definition but,
`rather, represents embodiments within the defined term.
`11
`
`
`
`
`
`IPR2015-00016 & IPR2015-00019
`Patent 8,150,808 B2
`
`
`
`section of a patent did not limit the scope of the invention because the
`
`passages, “although focusing on the use of the invention in conjunction with
`
`pressure jackets, do not disclaim the use of the invention in the absence of a
`
`pressure jacket”). Nonetheless, if the rest of the Specification, e.g., the
`
`Detailed Description section, clearly and consistently describes the claimed
`
`invention as requiring metadata in database blocks, such a limiting
`
`description together with the sentences cited above may support a limiting
`
`construction of the disputed term. Compare Am. Piledriving Equip., Inc. v.
`
`Geoquip, Inc., 637 F.3d 1324, 1333–34 (Fed. Cir. 2011) (citing C.R. Bard,
`
`Inc. v. U.S. Surgical Corp., 388 F.3d 858, 865–66 (Fed. Cir. 2004)) (holding
`
`that a limiting description in the specification supports a limiting
`
`construction of a claim term when the limiting feature is referenced
`
`“throughout the specification,” and “other statements and illustrations in the
`
`patent are consistent with the limiting description”), with MEMS Tech.
`
`Berhad v. Int’l Trade Comm’n, 447 F. App’x 142, 151 (Fed. Cir. 2011)
`
`(nonprecedential) (distinguishing C.R. Bard and finding the statements in the
`
`abstract and summary sections to be non-limiting because, in C.R. Bard, the
`
`specification universally describes a limiting feature of the invention
`
`whereas in MEMS, “the general language in the abstract and summary
`
`sections does not represent the full scope of the embodiments in the
`
`specification”). In this case, as discussed below, our review of the
`
`Specification, including the portions identified by Patent Owner, does not
`
`reveal a limiting description sufficient to support a limiting construction.
`
`Patent Owner asserts, citing certain portions of the Specification and
`
`the Declaration of Prashant Shenoy, Ph.D. (Ex. 2111, “Shenoy Decl.”), that
`
`12
`
`
`
`
`
`IPR2015-00016 & IPR2015-00019
`Patent 8,150,808 B2
`
`
`
`if a database block does not include metadata, the system disclosed in the
`
`’808 patent would not work as described. PO Resp. 16–18. For example,
`
`Patent Owner argues that a database block must include metadata because
`
`the disclosed system analyzes the metadata of each block to store only the
`
`incremental changes made to the production database (id. (citing Ex. 1101,
`
`col. 13, ll. 34–46, 46–51)), which is “one of the main functions” of the
`
`claimed system (id. at 17 (citing Ex. 1101, col. 6, ll. 34–46, 43–46, col. 7,
`
`ll. 49–57; Ex. 2111 ¶¶ 76, 79–80)) essential to achieving “a main purpose”
`
`of the invention—“to efficiently provide virtual database . . . without
`
`proliferating redundant copies of database data” (id. (citing Ex. 2111 ¶¶ 63–
`
`67)). Patent Owner also asserts that metadata is required in each database
`
`block in order to map the block to a database file and a location within that
`
`file. Id. at 18 (citing Ex. 1101, col. 14, ll. 27–31; Ex. 2111 ¶¶ 76, 81).
`
`Patent Owner’s argument is unpersuasive because the argued
`
`advantages or purposes are not recited features of the claims. Moreover, a
`
`claim is not required to encompass all of the advantages or purposes of the
`
`invention. See Howmedica Osteonics Corp. v. Wright Med. Tech., Inc., 540
`
`F.3d 1337, 1345 (Fed. Cir. 2008) (“An invention may possess a number of
`
`advantages or purposes, and there is no requirement that every claim
`
`directed to that invention be limited to encompass all of them.”) (citations
`
`omitted).
`
`Furthermore, the disclosure in the passages cited by Patent Owner
`
`above is not limiting because the passages describe a particular embodiment
`
`of making a point-in-time copy of the production database by streaming data
`
`to the database storage system, where the data stream is formatted to include
`
`13
`
`
`
`
`
`IPR2015-00016 & IPR2015-00019
`Patent 8,150,808 B2
`
`
`
`metadata in each transmitted database block. As noted by Petitioner (Pet.
`
`Reply 8), the ’808 patent discloses an alternative embodiment where the
`
`transfer of production database data is achieved by “using a file sharing
`
`system similar to the file sharing system 120” (Ex. 1101, col. 7, ll. 57–64),
`
`such as a network file system (NFS) (id. at col. 10, ll. 35–37). As discussed
`
`below, there is no disclosure in the written description that requires metadata
`
`in each database block used in the file sharing embodiment.
`
`In “the streaming embodiment,” which is depicted in Figures 4 and 5
`
`and described in column 12, line 14 to column 14, line 67 of the ’808 patent
`
`(see id. at col. 3, ll. 28–37 (describing Figures 4 and 5 as “an embodiment of
`
`the invention”)), the production database system, upon receiving a request
`
`for data from the point-in-time copy manager of the database storage system
`
`(id. at col. 12, ll. 19–23), packages the production database data “into a
`
`format that can be processed by the point-in-time copy manager” (id. at
`
`col. 12, ll. 58–62) and builds the appropriately formatted data into a data
`
`stream that is sent to the point-in-time copy manager. Id. at col. 12, l. 62–
`
`col. 13, l. 3. Upon receiving the data stream, the point-in-time copy
`
`manager processes the data stream to identify database blocks contained in
`
`it. Id. at col. 13, ll. 27–33. In the data stream, “[e]ach database block
`
`includes metadata” (id. at col. 13, ll. 33–34), which is used, for example, to
`
`“identify database block boundaries in the stream of data” (id. at col. 14,
`
`ll. 22–25). When saving a retrieved database block into a transferred or
`
`copied database file on the database storage system, the point-in-time copy
`
`manager “analyzes the database block metadata to map [] the database block
`
`to [the] database file and a location within the file.” Id. at col. 14, ll. 29–31.
`
`14
`
`
`
`
`
`IPR2015-00016 & IPR2015-00019
`Patent 8,150,808 B2
`
`
`
`We find nothing in this disclosure regarding the streaming
`
`embodiment that limits the claimed invention as Patent Owner contends.
`
`For example, it may be necessary to include metadata in each database block
`
`transmitted on a data stream in order to identify and unpack database blocks
`
`from a continuous stream of data that has no apparent structure or
`
`boundaries. But this does not show that the same approach is necessary in a
`
`file sharing embodiment where the database files to be copied have defined
`
`boundaries and known structures, and the database blocks stored in the files
`
`can be accessed directly. See, e.g., id. at col. 13, ll. 10–12 (“the production
`
`system library [] includes code to analyze the structures of the files of the
`
`database stored in the data store and also includes code to process metadata
`
`associated with database blocks stored in the data store”) (emphasis
`
`added);11 col. 6, ll. 11–17 (“FIG. 1 illustrates one embodiment for how
`
`information may be copied from a production database to a database storage
`
`system . . . using a file sharing system. . . . In some embodiments
`
`information may be copied from storage level snapshots of production
`
`databases.”) (emphases added). Further, the fact that the streaming
`
`embodiment uses metadata to map the database blocks unpacked from a data
`
`stream to a copied database file for storage does not require database blocks
`
`used in the file sharing embodiment to have metadata because, when file
`
`sharing is used, the database file on the production system can be accessed
`
`and copied directly by “mounting the production DB data store” on the
`
`database storage system (id. at col. 7, ll. 57–64) without packing and
`
`
`11 The phrase “metadata associated with database blocks” implies any
`metadata need not be in the database blocks.
`15
`
`
`
`
`
`IPR2015-00016 & IPR2015-00019
`Patent 8,150,808 B2
`
`
`
`unpacking the database blocks of the database file into and out of data
`
`streams.
`
`Furthermore, contrary to Patent Owner’s argument, analyzing the
`
`metadata of each database block in the data stream is not necessary to
`
`achieve incremental updates because the passages cited by Patent Owner
`
`describe only one of the two embodiments disclosed in the ’808 patent for
`
`achieving the incremental copy function. In the embodiment relied upon by
`
`Patent Owner, the data stream may include unnecessary database blocks,
`
`such as the blocks that did not change since the last point-in-time copy was
`
`transmitted, which are eliminated after the data stream is received at the
`
`database storage system by analyzing metadata for each database block. Id.
`
`at col. 13, ll. 43–64. In an alternative embodiment, which is not addressed
`
`by Patent Owner, the unchanged blocks are eliminated at the production
`
`system and never sent to the database storage system. Id. at col. 13, l. 64–
`
`col. 14, l. 3 (“In other [sic] embodiment, some or all of the unnecessary
`
`blocks may be eliminated while the data stream is built by the production
`
`system library []. In this embodiment, the data stream . . . is reduced in size
`
`resulting in efficient communication between [the production system and the
`
`database storage system].”) (emphases added). Patent Owner does not
`
`explain why metadata must be included in each database block to achieve
`
`the incremental update function in this embodiment. Hence, packing
`
`metadata within database blocks may be involved in some streaming
`
`embodiments, but nothing in the Specification indicates it is required for the
`
`incremental update function. Therefore, there is nothing in the Specification
`
`that indicates that copying database files by streaming data is the essence of
`
`16
`
`
`
`
`
`IPR2015-00016 & IPR2015-00019
`Patent 8,150,808 B2
`
`
`
`the claimed invention rather than a preferred embodiment, which may not be
`
`read into the claims “absent clear disclaimer in the specification.” In re Am.
`
`Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004).
`
`c. Other Intrinsic Evidence
`
`Considering “the context of the surrounding words” to the term
`
`“database block” in the claims, which “must be considered in determining
`
`the ordinary and customary meaning” of the disputed term, ACTV, Inc. v.
`
`Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003), independent claims
`
`1, 50, and 57 recite receiving point-in-time copies of a source database and
`
`storing database blocks associated with the received point-in-time copies on
`
`a storage system. But the claims do not say anything about a particular
`
`method of transferring point-in-time copies, whether by streaming or by file
`
`sharing. Hence, the claims cannot be limited to either embodiment, and,
`
`therefore, the streaming embodiment cited by Patent Owner does not limit
`
`the claims.
`
`In addition, consideration of differences among the claims of the ’808
`
`patent supports the conclusion that the passages Patent Owner cited are not
`
`limiting. Claim 29, which depends from claim 1, recites “receiving point-in-
`
`time copies” by “receiving data streams” which comprise “data from
`
`database blocks.” Claims 32, 33, and 34 each depend from claim 29 and
`
`additionally recite “identify[ing] database blocks” in the data streams,
`
`“analyzing the metadata of database blocks to determine the length of the
`
`database blocks” (claim 32), “analyzing the metadata of database blocks to
`
`determine whether the database block needs to be stored” (claim 33), and
`
`17
`
`
`
`
`
`IPR2015-00016 & IPR2015-00019
`Patent 8,150,808 B2
`
`
`
`“determining not to store the database blocks that . . . did not change since a
`
`previous retrieval of point-in-time copy” (claim 34). Hence, the subject
`
`matter specifically claimed in these dependent claims correspond to the
`
`written description in the Specification relating to the streaming embodiment
`
`discussed above. See Shenoy Decl. (Ex. 2111) ¶ 80; PO Resp. 17 (citing
`
`Shenoy Decl. ¶ 80).
`
`Claim 1, from which these claims depend, is presumed to be broader
`
`and not limited by the additional limitations relating to streaming recited in
`
`these dependent claims. “[I]n a situation where dependent claims have no
`
`meaningful difference other than an added limitation, the independent claim
`
`is not restricted by the added limitation in the dependent claim.” Trustees of
`
`Columbia Univ. v. Symantec Corp., 811 F.3d 1359, 1370 (Fed. Cir. 2016)
`
`(citing Phillips, 415 F.3d at 1314–15; Acumed LLC v. Stryker Corp., 483
`
`F.3d 800, 806 (Fed. Cir. 2007)). Therefore, claim 1 cannot be read, absent
`
`other evidence, to be limited to the streaming embodiment, and, accordingly,
`
`the passages cited by Patent Owner relating to the streaming embodiment do
`
`not limit claim 1 to require a “database block” to have “metadata.” See
`
`Columbia Univ., 811 F.3d at 1370 (holding that, in the absence of rebutting
`
`evidence, a disputed term recited in claim 1 cannot be read to be limited to
`
`use only the type of data recited in dependent claims because the dependent
`
`claims are presumed to be narrower than the independent claims on which
`
`they depend); see also Toshiba Corp. v. Imation Corp., 681 F.3d 1358,
`
`1368–69 (Fed. Cir. 2012) (construing claim 1 to read on both single-sided
`
`and double-sided discs when the plain language of the claim is broad and a
`
`18
`
`
`
`
`
`IPR2015-00016 & IPR2015-00019
`Patent 8,150,808 B2
`
`
`
`dependent claim added a requirement specifically reciting the number of
`
`disc sides).
`
`Patent Owner’s argument is deficient in another aspect—namely, its
`
`failure to address database blocks outside the context of data streams. The
`
`database blocks transmitted in a data stream described in the passages cited
`
`by Patent Owner are in transit between the production system and the
`
`database storage system. But, as discussed above, the challenged
`
`independent claims recite, in addition to receiving point-in-time copies of a
`
`database, storing database blocks on a storage system. Patent Owner does
`
`not cite, nor do we discern, anything in the Detailed Description section of
`
`the Specification that requires metadata in database blocks that are stored in
`
`storage—that is, database blocks stored in the production database system
`
`before being packaged and formatted into the data stream or stored in the
`
`database storage system after being unpacked from the received data stream.
`
`Contrary to Patent Owner’s contention, the written description in fact
`
`suggests metadata need not be included in stored database blocks. For
`
`example, the ’808 patent describes storing database blocks unpacked from
`
`data stream as follows: “The file in which the database block is saved
`
`comprises a file header including metadata associated with the file and a
`
`sequence of database blocks.” Ex. 1101, col. 14, ll. 44–47. This passage
`
`suggests that the metadata can be stored in the file header separately from
`
`the series of database blocks stored in the body of the file. In sum, we find
`
`no disclosure in the Detailed Description section of the Specification that
`
`clearly and consistently describes the claimed invention as requiring
`
`metadata in all database blocks.
`
`19
`
`
`
`
`
`IPR2015-00016 & IPR2015-00019
`Patent 8,150,808 B2
`
`
`
`Therefore, in view of the entire disclosure of the ’808 patent and the
`
`plain language of the claims, we find, notwithstanding the statement in the
`
`Summary section relied upon by Patent Owner—“[a] portion of the database
`
`block stores metadata associated with the database block”—the intrinsic
`
`record does not justify limiting the term “database block” by reading in the
`
`“metadata” limitation not found in the claims. See Liebel-Flarsheim, 358
`
`F.3d at 908; MEMS, 447 F. App’x at 151.
`
`d. Extrinsic Evidence
`
`Patent Owner also argues additional evidence supports a limiting
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
