Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 69
`Entered: April 12, 2016
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ACTIFIO, INC.,
`Petitioner,
`
`v.
`
`DELPHIX CORP.,
`Patent Owner.
`____________
`
`Case IPR2015-00025 & IPR2015-000261
`Patent 8,161,077 B2
`
`
`
`
`
`
`
`
`Before HOWARD B. BLANKENSHIP, KARL D. EASTHOM, and
`MINN CHUNG, Administrative Patent Judges.
`
`EASTHOM, 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.
`
`

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`IPR2015-00025 & IPR2015-00026
`Patent 8,161,077 B2
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`
`I. INTRODUCTION
`Petitioner, Actifio, Inc., filed a request for an inter partes review of
`claims 1–7, 9, 10, 18–23, 25, and 26 of U.S. Patent No. 8,161,077 B2 (Ex.
`1001, the “’077 patent”) under 35 U.S.C. §§ 311–319. Paper 1 (“Petition”
`or “Pet.”). The Board instituted an inter partes review of these claims on
`asserted grounds of unpatentability for obviousness. Paper 11 (“Dec. on
`Inst.”). In related Case IPR2015-00026 involving the same parties, pursuant
`to Petitioner’s inter partes request, the Board also instituted inter partes
`reviews of claims 8, 11–13, 17, 24, 27–29, and 33 of the ’077 patent in
`IPR2015-00026 (“’026 IPR”) on asserted grounds of unpatentability for
`obviousness. See ’026 Paper 11 (“’026 Dec. on Inst.”). 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.
`For the reasons discussed below, we determine Petitioner has shown by a
`preponderance of the evidence that claims 1–13, 17–29, and 33 of the ’077
`patent are unpatentable.
`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”). 2 Subsequently, Patent Owner moved to exclude (Paper 46, “PO
`
`
`2 Unless otherwise indicated, we refer to public (including redacted) Papers
`and Exhibits filed in IPR2015-00025.
`2
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`IPR2015-00025 & IPR2015-00026
`Patent 8,161,077 B2
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`Mot. to Exclude”) certain Exhibits, Petitioner opposed (Paper 53, “Pet.
`Exclude Opp.”), and Patent Owner replied (Paper 56, “PO Exclude Reply”).
`Patent Owner also filed Motions for Observation on certain cross-
`examination testimony of Petitioner’s declarant, Dr. Erez Zadok (Paper 49,
`“Obs. Zadok”), to which Petitioner filed Responses (Paper 57 (“Obs. Resp.
`Zadok”) and Paper 55. 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 ’026 IPR (to be designated, as indicated
`above, with the “’026” prefix: for example, “’026 Paper” and “’026
`Exhibit”).
`A combined oral Hearing in this proceeding and related Cases
`IPR2015-00014, IPR2015-00016, IPR2015-00019, IPR2015-00034,
`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.”).
`A. Related Proceedings
`The ’077 patent is the subject of Delphix Corp. v. Actifio, Inc., No.
`5:13-cv-04613-BLF (N.D. Cal.). In proceedings involving the same parties,
`the Board instituted inter partes reviews of U.S. Patent No. 8,150,808 B2 in
`Cases IPR2015-00014, IPR2015-00016, IPR2015-00019, and IPR2015-
`00034; U.S. Patent No. 8,548,944 B2 in Cases IPR2015-00050 and
`IPR2015-00052; U.S. Patent No. 8,566,361 B2 in Cases IPR2015-00100 and
`
`3
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`IPR2015-00025 & IPR2015-00026
`Patent 8,161,077 B2
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`IPR2015-00108; and U.S. Patent No. 8,468,174 B1 in Case IPR2015-
`00128.3
`
`B. Asserted Grounds of Unpatentability
`We instituted inter partes review on the following grounds of
`unpatentability under 35 U.S.C. § 103(a):
`
`Claims Challenged
`
`References
`
`1, 3, 5–7, 9, 10, 18, 20–23,
`25, and 26
`
`Sanders4 and Edwards5
`
`2, 4, and 19
`
`Sanders, Edwards, and Patel6
`
`8, 11–13, 24, and 27–29
`
`17 and 33
`
`Sanders, Edwards, and Data ONTAP
`Guide 7
`
`Sanders, Edwards, Data ONTAP
`Guide, and Sarma8
`
`
`3 Case IPR2015-00136 has been consolidated with IPR2015-00128.
`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. 1013).
`5 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. 1014).
`6 Dipesh Patel and Generosa Litton, Rapid Database Development and
`Deployment, Network Appliance, Inc., WP-7014-0307 (Mar. 2007) (“Patel”)
`(Ex. 1016).
`7 Data ONTAP® 7.1 Data Protection, ONLINE BACKUP AND RECOVERY
`GUIDE, Network Appliance, Inc. (Jan. 12, 2007) (“Data ONTAP Guide”)
`(’026 Ex. 1117).
`8 Sarma et al., U.S. Patent No. 7,631,021 B2 (Dec. 8, 2009) (“Sarma”) (’026
`Ex. 1118).
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`IPR2015-00025 & IPR2015-00026
`Patent 8,161,077 B2
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`C. The ’077 Patent
`The ’077 patent describes a system and method to create a virtual
`
`database, which involves obtaining multiple “point-in-time” (“PIT”) copies
`of the database to be virtualized. See Ex. 1001, Abstract. In one virtual
`database embodiment represented by Figure 2a, “production database system
`110 . . . is the source of the database being virtualized” to create virtual
`database 220 using virtual database files stored in database storage system
`100. Id. at 7:52–54. A reproduction of Figure 2a of the ’077 patent follows:
`
`
`Figure 2a depicts production database system 110, virtual database DB1
`220, and virtual database system 130, which accesses virtual database 220.
`To virtualize a production database, the system of the ’077 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. 1001, 19:23–24, Figs. 10–13. Subsequent PIT
`copies involve incremental changes and copy “only the blocks that changed
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`since the last PIT copy and may copy much less data compared to the first
`PIT copy.” Id. at 19:27–29.
`The system creates a virtual database (VDB) by creating VDB file
`structures comprising VDB blocks that point to different PIT database
`blocks. See id. at 19:15–50. For example, the system creates VDB file
`structures 1050 that point to different PIT database blocks F11, G11, F22,
`etc. See id. at 19:15–50; Fig. 10. Each time database storage system 100
`receives an updated PIT copy reflecting database block changes in the
`production database, the system updates the appropriate VDB blocks in a
`VDB file to be “implemented as pointers to the actual database block that
`stores the [updated] data.” See id. at 19:34–37.
`A reproduction of Figure 10 from the ’707 patent follows:
`
`
`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
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`IPR2015-00025 & IPR2015-00026
`Patent 8,161,077 B2
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`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. See
`Ex. 1001, 19:33–34. 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, F14, G11, G12 . . . G15 in database storage
`system 100. Id. at 19:23–24. Later, when database storage system 100
`receives the PIT copy at time T2 and updates the VDB blocks, 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 19:41–43),
`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 19:38–39).
`D. Illustrative Claim
`Of the challenged claims, clams 2–7, 9, and 10 depend directly or
`indirectly from independent claim 1. Claims 19–23, 25, and 26 depend
`directly or indirectly from independent claim 18, which closely tracks
`independent claim 1, with claim 18 reciting a “computer program product”
`instead of a method. See Ex. 1001, 46–47 (Certificate of Correction).
`Illustrative claim 1 follows:
`E. Challenged Claim 1
`1. A method for test and development of databases and
`database applications using a virtual database system, the
`method comprising:
`
`
`
`linking a source database, wherein linking the source
`database comprises receiving information identifying the source
`database;
`
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`loading a plurality of point-in-time copies of the source
`
`database, wherein the loading comprises:
`
`
`
`
`receiving database blocks for the point-in-time
`
`copies of the source database, and
`
`
`
`storing the database blocks on a storage system;
`
`
`and
`
`
`
`provisioning a development virtual database to a
`
`
`development system and a test virtual database to a test
`system, wherein provisioning each of the virtual databases
`to a system comprises:
`
`
`
`
`
`
`creating a set of files linked to the
`stored database blocks on the storage system, and
`
`mounting the set of files to the system
`
`
`to allow a database server running on the system to
`access the set of files.
`
`
`II. ANALYSIS
`A. Patent Owner’s Motion to Exclude Evidence
`In inter partes reviews, documents are admitted into evidence subject
`to an opposing party asserting objections to the evidence and moving to
`exclude the evidence. 37 C.F.R. § 42.64. As the moving party, Patent
`Owner has the burden of showing that an Exhibit is not admissible. 37
`C.F.R. § 42.20(c).
`
`1. The ’025 IPR
`Patent Owner moves to exclude Petitioner’s Exhibits 1029, 1030,
`1032, 1033, 1035–1146, 1048, 1049, 1054, and 1062. PO Mot. to Exclude
`1. As Patent Owner notes, however, Petitioner does not rely on Exhibits
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`1030, 1032, 1033, 1035–1137, 1040, 1041, and 1045. Id. at 1 n.1. Of the
`other objected-to Exhibits, except for Exhibits 1048 and 1049, we do not,
`and need not, consider such evidence. We determine, for reasons set forth
`below, that Petitioner has demonstrated by a preponderance of the evidence
`that the challenged claims are unpatentable, without need for Petitioner’s
`additional arguments or evidence that rely on those additional Exhibits.
`Accordingly, Patent Owner’s Motion to Exclude Exhibits 1029, 1030, 1032,
`1033, 1035–1146, 1054, and 1062 is dismissed as moot.
`Exhibit 1048 is the Supplemental Declaration of Louis Hernandez.
`Patent Owner argues that the Exhibit is “inadmissible hearsay.” PO Mot. to
`Exclude 8‒9. The Supplemental Declaration, however, consists of
`statements made by the Declarant while testifying in this proceeding—not
`“hearsay” (Fed. R. Evid. 801(c))—but sworn testimony that is subject to
`cross-examination. Indeed, Patent Owner cross-examined Mr. Hernandez
`with respect to that testimony.9
`
`
`9 Patent Owner’s allegation of “double hearsay” is not persuasive. PO Mot.
`to Exclude 8; PO Exclude Reply 4–5. Patent Owner does not argue that it
`objected to any NetApp documents that Mr. Hernandez relied upon as
`hearsay. See Pet. Exclude Opp. 13; ’026 Pet. Exclude Opp. 13 (Paper 12
`(contending no hearsay objection by Patent Owner to the NetApp documents
`at issue: i.e., Sanders, Patel, and Data ONTAP Guide)); PO Exclude Reply
`4–5 (replying to Petitioner’s contention but not disputing a lack of an
`objection). In addition, as discussed herein and further below, Mr.
`Hernandez relies on document dates, other indicia, and his knowledge of
`NetApp’s standard practices about dated NetApp documents, not merely
`dates on documents. See Pet. Reply 4–5 (citing Ex. 1020 ¶ 17; 1048 ¶ 7);
`Pet. Exclude Opp. 7–13 (citing Ex. 1020 ¶ 6; Ex. 1048 ¶¶ 7, 10; Ex. 2028,
`42:24–37, 47:5–11, 94:12–95:3, 101:17–102:9 (Hernandez Deposition
`testimony)).
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`Patent Owner also argues that Mr. Hernandez lacks personal
`knowledge to testify. Mr. Hernandez’s personal knowledge of practices
`about NetApp document publications comes from his review and recognition
`of documents published before and during his tenure as an employee of
`NetApp. See Ex. 1020 ¶¶ 1–6; Ex. 1048 ¶¶ 3–11. On this record, ample
`basis exists for him to testify with personal knowledge of the facts under
`FRE 602. We are not persuaded otherwise by Patent Owner’s
`characterization of Mr. Hernandez’s direct and cross-examination testimony.
`See PO Mot. to Exclude 9–11.
`Patent Owner moves to exclude Exhibit 1049 as untimely. Mot. to
`Exclude 1, n.1 (citing 37 C.F.R §§ 42.23 (b), 42.123). Contrary to this
`argument, Petitioner cites this document as rebuttal evidence in response to
`Patent Owner’s claim construction (i.e., to show that a well-known database
`does not use metadata in database blocks and uses metadata external to the
`block). See Pet. Reply 9–10 (arguing that Patent Owner’s preliminary
`database block construction at a district court did not include metadata, and
`that the alleged metadata requirement only occurred after Petitioner filed
`“the last of its IPR petition[s],” citing Ex. 1022, 6 (database block
`construction after e-mail chain of Oct. 24, 2014)); PO Resp. 24, nn.6–7
`(citing Ex. 2025, 4 (joint district court claim construction, Oct. 27, 2014)).
`Patent Owner’s Motion to Exclude Exhibits 1048 and 1049 is denied.
`2. The ’026 IPR
`Patent Owner moves to exclude Petitioner’s ’026 Exhibits 1117,
`1134–1136, 1138–1148, 1150, 1151, 1153, 1156, and 1164. ’026 Paper 45
`(“Motion to Exclude”), 1. As Patent Owner notes, however, Petitioner does
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`not rely on ’026 Exhibits 1134–1136, 1138–1142, and 1147. Id. at 1 n.1. Of
`the other objected-to Exhibits, except for ’026 Exhibits 1117 and 1150, we
`do not, and need not, consider such evidence. We determine, for reasons set
`forth below, that Petitioner has demonstrated by a preponderance of the
`evidence that the challenged claims are unpatentable, without need for
`Petitioner’s additional arguments or evidence that rely on those additional
`Exhibits. Accordingly, Patent Owner’s motion to exclude ’026 Exhibits
`1134–1136, 1138–1148, 1150, 1151, 1153, and 1156 is dismissed as moot.
`Patent Owner argues that ’026 Exhibit 1150 (Supplemental
`Declaration of Louis Hernandez) is “inadmissible hearsay,” and that Mr.
`Hernandez lacks personal knowledge to testify regarding publication. See
`’026 Paper 45, 1. Based on the determination above, ’026 Exhibit 1150,
`which is a copy of Exhibit 1048 discussed above, is admissible.
`According to Patent Owner, ’026 “Exhibit 1117 is allegedly a user
`manual for a NetApp product which Petitioner relies upon for its prima facie
`case of obviousness.” ’026 Paper 45, 1‒2. Patent Owner moves to exclude
`the Exhibit (Data ONTAP Guide) as not being authenticated pursuant to
`Federal Fed. R. Evid 901. Id.
`Petitioner provides reasons why it contends Data ONTAP Guide is
`self-authenticating under Fed. R. Evid 902 (7). ’026 Paper 51, 13–14. A
`document may be authenticated by “the appearance, contents, substance,
`internal patterns, or other distinctive characteristics of the item, taken
`together with all the circumstances.” Fed. R. Evid. 901(b)(4). In addition to
`relying on NetApp trademark symbols, copyright notices, and other indicia
`(id. at 13), Petitioner submits the following:
`
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`The cover page includes NetApp’s company address, telephone
`number, website, and email address for providing comments to
`NetApp about the documents. Indeed, the website and email
`address on Ex. 1117 are hyperlinked, and clicking on them
`directly links a user to NetApp’s website or opens an email
`addressed to NetApp respectively. Further, the Data ONTAP
`Guide contents include repeated references to NetApp and
`various NetApp technologies. These distinctive characteristics
`are more than sufficient for authentication.
`
`Id. at 14. Moreover, Petitioner, relying on the testimony of Mr. Hernandez,
`points out evidence and testimony that is sufficient to authenticate the
`document pursuant to Rule 901(b)(1). See ’026 Paper 45, 13–14. Contrary
`to Patent Owner’s argument, Mr. Hernandez has sufficient knowledge to
`authenticate Data ONTAP Guide. See ’026 Paper 45, 13–14; ’026 Paper 51,
`2; ’026 Ex. 1122 ¶¶ 1–6, 10 (Data ONTAP Guide); ’026 Ex. 1150.
`We, therefore, are not persuaded that Data ONTAP Guide is not
`authenticated at least under Federal Rules of Evidence 901(a), (b)(1), (b) (4),
`and 902 (7). On this record, we accept ’026 Exhibit 1117 for what it
`purports and is alleged to be: A “Data Protection Online Backup and
`Recovery Guide” for a NetApp product, published by NetApp, for the
`purpose of providing detailed instructions to its customers and potential
`customers. See ’026 Paper 45, 13; ’026 Ex. 1117, 1 (emphasis omitted).
`Patent Owner’s Motion to Exclude ’026 Exhibits 1117 and 1150 is
`denied.
`B. Printed Publication—Sanders, Patel, and Data ONTAP Guide
`Patent Owner contends that of Sanders, Patel, and Data ONTAP
`Guide are not a prior art printed publications in accordance with 35 U.S.C.
`§§ 102 and 311(b). PO Resp. 1; ’026 PO Resp. 1. Underlying facts inform
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`the legal determination as to whether a document is a printed publication.
`Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014). The
`determination of whether a document is a “printed publication” under 35
`U.S.C. § 102(b) involves a case-by-case inquiry into the facts and
`circumstances surrounding its disclosure to members of the public. In re
`Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). Public accessibility is a
`key question in determining whether a document is a printed publication and
`is determined on a case-by-case basis. Suffolk Techs., 752 F.3d at 1364. To
`qualify as a printed publication, a document “must have been sufficiently
`accessible to the public interested in the art.” In re Lister, 583 F.3d 1307,
`1311 (Fed. Cir. 2009).
`Initially, Patent Owner’s contention that Petitioner cannot rely upon
`evidence not submitted with the Petition to show that the documents are not
`prior art is not supported. PO Resp. 3–5; Paper 58; ’026 PO Resp. 3–5. In
`Patent Owner’s view, Petitioner must make out a prima facie case of
`unpatentability in its Petition, which includes the substantive element of the
`documents being publicly accessible and prior art. PO Resp. 4; Paper 58, 1;
`’026 PO Resp. 4. That position, correct as stated, fails to account for the
`difference between the threshold for instituting a trial, 35 U.S.C. § 314(a),
`and proving unpatentability of a claim in trial, 35 U.S.C. § 316(e). As noted
`by our reviewing court, “there is a significant difference between a
`petitioner’s burden to establish a ‘reasonable likelihood of success’ at
`institution, and actually proving invalidity by a preponderance of the
`evidence at trial.” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed.
`Cir. 2016) (quoting 35 U.S.C. § 314(a) and comparing § 316(e)).
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`Based on the information presented in the Petitions and Patent
`Owner’s Preliminary Responses, we determined there was a reasonable
`likelihood that Petitioner would prevail in its challenges that included the
`three publications. See 35 U.S.C. § 314(a) (threshold for instituting inter
`partes review); see also 37 C.F.R. § 42.108(c) (“The Board’s decision [on
`Institution] will take into account a patent owner preliminary response where
`such a response is filed.”). Patent Owner did not challenge the prior art
`status of any of the applied patents or publications in its Preliminary
`Responses. Patent Owner, in fact, stated that “the relevant NetApp features
`were disclosed to the Patent Office during the prosecution of the challenged
`claims.” Paper 10, 2, 54 (characterizing references as “redundant references
`describing those same NetApp features” disclosed during prosecution and
`stating that Patent Owner “disclosed to the Patent Office every NetApp
`feature that Petitioner now cites in the Petition”); ’026 Paper 10, 2, 54
`(same). We do not suggest that a patent owner must raise any “printed
`publication” issues in a preliminary response in order for the Board to
`consider such issues in the preliminary proceeding phase. In this case,
`however, based in part on the information in Patent Owner’s Preliminary
`Response and in part on the printed dates and the lack of indicia of
`confidentiality or internal, non-public distribution in the three challenged
`prior art disclosures, we determined that Petitioner had met its burden for a
`threshold showing to proceed to trial.
`Patent Owner also argues that Petitioner cannot rely on two specific
`Declarations in each Reply. PO Resp. 2–3 (citing Ex. 1020; Ex. 1028); ’026
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`PO Resp. 23 (citing Ex. 11[2]2; Ex. 1130).10 Exhibit 1028 and ’026 Ex.
`1130 are no longer relevant.11 In the relevant set of Declarations, Louis
`Hernandez provides the same “Hernandez Declaration” in each case: i.e.,
`Ex. 1020 and ’026 IPR, Ex. 1122.
`Patent Owner submits that Petitioner provided Patent Owner with the
`Hernandez Declaration in response to Patent Owner’s objections to evidence
`(although Patent Owner does not tell us its basis for the objections). PO
`Resp. 2; ’026 PO Resp. 2. Board rules authorize serving supplemental
`evidence in response to an objection. 37 C.F.R. § 42.64(b)(2). Accordingly,
`Patent Owner lacks a basis to complain that evidence has been produced and
`served in response to its objections. See Pet. Reply iv (stating Ex. 1020 was
`served on May 12, 2015). Petitioner also relies, properly, on the
`supplemental evidence in its Replies (i.e., as evidence in reply to Patent
`Owner’s arguments in its Response that the three references are not printed
`publications).
`Turning to the substance of the Hernandez Declaration, Mr.
`Hernandez testifies that he is currently employed by Petitioner, was
`employed by NetApp from 2004 to 2009, and was a NetApp customer from
`2000 to 2004. Ex. 1020 ¶¶ 1, 2, 4. Mr. Hernandez testifies further that for
`most of his time at NetApp, as a Systems Engineer, he was responsible for
`marketing NetApp’s products and services to numerous customers,
`prospective customers, business partners, and/or alliances. Id. ¶ 3. “During
`
`
`10 Patent Owner cites Exhibit 1112 instead of Exhibit 1122––an apparent
`typographical error. See ’026 IPR, PO Resp. 3.
`11 These Exhibits (Declarations of Joseph Ortiz) are expunged at Petitioner’s
`request. Paper 43; ’026 Paper 42.
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`the 2000–2009 time-frame, to support its marketing efforts, it was NetApp’s
`standard practice to publish technical reports, white papers, and product
`manuals or guides to customers, potential customers, business partners, and
`alliances.” Id. ¶ 6. “These documents were published, according to standard
`practice, as of the month and year that appeared on the face of the
`documents.” Id. Mr. Hernandez testifies that he has personal knowledge of
`and recognizes all three documents, and that there were published during his
`tenure at NetApp. Id. ¶¶ 7, 10 (Data ONTAP Guide), 11 (Sanders), 12
`(Patel).
`Patent Owner argues Mr. Hernandez does not declare that Sanders,
`Patel, and Data ONTAP Guide, and were “publicly accessible.” PO Resp. 2;
`’026 IPR, PO Resp. 2. Patent Owner submits the following: Even if it was
`NetApp’s “standard practice” to provide its documents to its “customers,
`potential customers, business partners and alliances,” that does not establish
`that these documents were available to the public, but instead shows at most
`that they were only available to a subset of entities affiliated with NetApp.
`PO Resp. 2–3; ’026 PO Resp. 2–3.
`Petitioner replies with a Supplemental Declaration from Mr.
`Hernandez. Pet. Reply 6‒7 (citing Ex. 1048); ’026 Pet. Reply 6–7 (citing
`’026 Ex. 1150).12 Mr. Hernandez testifies that he uses the term “publish” or
`“published” as referring to documents being publicly distributed to
`customers, potential customers, business partners, and alliances as of the
`month and year that appeared on the face of the documents, non-
`
`
`12 As indicated above, Exhibit 1048 and ’026 Ex. 1150 appear to be identical
`in testimony.
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`confidentially. Ex. 1048 ¶ 5. According to Mr. Hernandez, NetApp had
`more than two hundred systems engineers and other sales personnel during
`the relevant timeframe (id. ¶ 4) and that technical reports, white papers,
`product manuals, and product guides were freely distributed to support its
`marketing efforts (id. ¶ 7). Mr. Hernandez testifies further that it was
`important for NetApp to date the documents accurately so that customers
`and potential customers could understand if a specific document accurately
`reflects features for specific versions of NetApp’s products or if a document
`was outdated or updated to reflect more current features. Id. ¶ 10. Further,
`Petitioner provides evidence that by 2007 there were more than 94,000
`NetApp systems deployed and the company had thousands of customers in
`138 countries. Pet. Reply 6; Ex. 1058, 3; ’026 Pet. Reply 6; ’026 Ex. 1163,
`3.13
`
`As part of routine discovery (37 C.F.R. § 42.51(b)(1)(ii)), Patent
`Owner had the opportunity to cross-examine Mr. Hernandez during Patent
`Owner’s first discovery period but elected not to. Patent Owner cross-
`examined Mr. Hernandez in its second discovery period regarding the
`testimony in his Supplemental Declaration. We have considered the Hearing
`Transcript (“Tr.”), Patent Owner’s Motion for Observation on Cross-
`Examination Testimony of Mr. Hernandez (Paper 47; ’026 Paper 46) and
`Petitioner’s Response to Owner’s Motion for Observation on Cross-
`Examination Testimony of Mr. Hernandez (Paper 57; ’026 Paper 52),
`insofar as they relate to public accessibility of Sanders, Patel, and Data
`
`13 We find that Exhibit 1058 (and corresponding ’026 Ex. 1163), a NetApp
`Form 10-K SEC filing, was properly submitted by Petitioner as evidence in
`rebuttal to Patent Owner’s public accessibility challenge in its Response.
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`ONTAP Guide.14 We acknowledge the potential for bias in Mr.
`Hernandez’s testimony as a present employee of Petitioner.
`We find, however, the testimony in Mr. Hernandez’s Declarations as
`to public accessibility of the three NetApp documents to be credible.
`Sanders purports to be a technical report (“TR-3460 . . . April 30, 2006”)
`showing how to use “NetApp FlexCloneTM Technology” so that “you can
`create an exact copy of a DB2 database,” using a NetApp solution “that
`helps database and system administrators” “to create an instant clone.” Ex.
`1013, 1, 3 (emphasis omitted). Patel purports to be a “March 2007”
`“NetApp White Paper” (“WP-7014-0307”) and describes similar NetApp
`product “solutions” for “midsize businesses to global corporations” that
`[d]atabase administrators and applications developers can use” as “simple
`but powerful tools to quickly and easily create local or remote database
`clones in seconds, using little additional storage.” Ex. 1016, 1, 3. Data
`ONTAP Guide purports to be a NetApp “Data Protection Online Backup and
`Recovery Guide,” with “Part number 210-02020_A0 Updated for Data
`ONTAP 7.1.2 on 12 January 2007,” and includes Data ONTAP 7.1
`nomenclature. ’026 Ex. 1117, 1 (emphasis omitted). Dr. Zadok points out
`that Sanders expressly refers to Data ONTAP Guide. See Ex. 1013, 50; ’026
`Ex. 1109 ¶ 109. Sanders lists a website for it. Ex. 1013, 50.
`As an earlier panel of the Board has found, a dated technical
`document, having no indication of being a mere draft or an internal paper, is
`
`
`14 During the Hearing, Patent Owner asked for, and we granted, additional
`time to consider its oral Hearing arguments regarding alleged new issues
`(regarding publication) raised in Petitioner’s Reply in lieu of filing a Sur-
`Reply. See Tr. 211:16–212:18; 224:13–21; 237:1–25.
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`“a type of document whose very purpose is public disclosure.” Veeam Sw.
`Corp. v. Symantec Corp., Case IPR2014-00089, slip op. at 14 (PTAB Apr.
`25, 2014) (Paper 9).
`Further regarding Sanders, according to Petitioner, in response to
`Patent Owner’s objections,
`Petitioner timely provided a declaration from the office
`manager of the Internet Archive (Wayback Machine). Ex. 1023,
`Affidavit of C. Butler at ¶¶ 1–6, pp. 0231-292. Based on the
`recorded dates, Sanders was publicly archived by Wayback
`from NetApp’s website by November 22, 2006. See Ex. id. at
`p. 0231 (showing date of “20061122”); id. 1023 ¶ 5 (explaining
`[yyyy][mm][dd] format of dates in archived URLs). An
`affidavit from the Internet Archive is sufficient to show public
`availability as of recorded dates listed in the URLs. Par
`Pharma v. Jazz Pharma, IPR2015-00546, Paper 25 at 25.
`
`Pet. Reply 4. Exhibit 1023, Affidavit of Cristopher Butler, supports
`Petitioner regarding Wayback’s archival of Sanders. Ex. 1023 ¶¶ 1–6,
`pp. 231–92, 223 (listing “TR-3460 DB2: Cloning a Database using
`NetApp FlexClone Technology (PDF)” (emphasis deleted)).
`“A given reference is ‘publicly accessible’ upon a satisfactory
`showing that such document has been disseminated or otherwise made
`available to the extent that persons interested and ordinarily skilled in the
`subject matter or art exercising reasonable diligence, can locate it.” SRI
`Int’l, Inc. v. Internet Sec. Sys., Inc. 511 F.3d 1186, 1194 (Fed. Cir. 2008)
`(quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed.
`Cir. 2006)). In view of the foregoing considerations, we find that Petitioner
`has established, by a preponderance of the evidence, that Sanders (April 30,
`2006), Patel (March, 2007) and Data ONTAP Guide (Jan. 12, 2007) were
`
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`available to the interested public at least more than one year before October
`21, 2009, the earliest possible priority date of the ʼ077 patent. Therefore, on
`this record, Sanders, Patel, and Data ONTAP Guide are printed publications
`under 35 U.S.C. §§ 102 and 311(b).
`C. 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 presumptively carry 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