Trials@uspto.gov
`571-272-7822
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`Paper 63
`Entered: April 26, 2016
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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 IPR2015-00034
`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
`
`
`571-272-7822
`
`
`
`
`Paper 63
`Entered: April 26, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ACTIFIO, INC.,
`Petitioner,
`
`v.
`
`DELPHIX CORP.,
`Patent Owner.
`____________
`
`Case IPR2015-00034
`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
`
`
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`IPR2015-00034
`Patent 8,150,808 B2
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`I. INTRODUCTION
`In this inter partes review trial, instituted pursuant to 35 U.S.C. § 314,
`Petitioner Actifio, Inc. (“Petitioner”) challenges the patentability of claims 1,
`7–14, 17–19, 22, 23, 28, 40, 41, and 47–49 (the “challenged claims”) of
`U.S. Patent No. 8,150,808 B2 (Ex. 1301, “the ’808 patent”), owned by
`Delphix Corp. (“Patent Owner”). 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 1, 7–
`14, 17–19, 22, 23, 28, 40, 41, and 47–49 of the ’808 patent are unpatentable.
`
`A. Procedural History
`On October 7, 2014, Petitioner filed a Petition (Paper 1, “Pet.”)
`requesting an inter partes review of claims 1, 7–14, 17–19, 22, 23, 28, 40,
`41, and 47–49 of the ’808 patent. Patent Owner filed a Preliminary
`Response (Paper 7, “Prelim. Resp.”). On April 28, 2015, we instituted an
`inter partes review of claims 1, 7–14, 17–19, 22, 23, 28, 40, 41, and 47–49
`on the ground that the challenged claims are unpatentable under § 103(a)
`over the combination of Edwards,1 Patterson,2 and SnapManager Guide.3
`Paper 8 (“Inst. Dec.”).
`
`
`1 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. 1303).
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`After institution of trial, Patent Owner filed a Patent Owner Response
`(Paper 20, “PO Resp.”), to which Petitioner filed a Reply (Paper 28, “Pet.
`Reply”).4 Subsequently, Patent Owner moved to exclude (Paper 42, “PO
`Mot. to Exclude”) Exhibits 1305, 1322, 1332–1346, 1348, 1349, 1354, 1357,
`1361, 1369, and 1372; Petitioner opposed (Paper 48, “Pet. Exclude Opp.”);
`and Patent Owner replied (Paper 50, “PO Exclude Reply”). Patent Owner
`also filed Motions for Observation on certain cross-examination testimony
`of Dr. Erez Zadok (Paper 45, “Obs. Zadok”) and Louis Hernandez (Paper
`43, “Obs. Hernandez”), to which Petitioner filed Responses (Paper 51 (“Obs.
`Resp. Zadok”) and Paper 49 (“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 52
`(“Exclude Pet. Reply Evid.”).
`A combined oral hearing in this proceeding and related Cases
`IPR2015-00014, IPR2015-00016, IPR2015-00019, 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
`
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` 2
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` 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. 1304).
`3 NetApp Inc., SnapManager® 5.0 for Microsoft® SQL Server® Installation
`and Administration Guide (October 6, 2008) (“SnapManager Guide”)
`(Ex. 1305).
`4 Unless otherwise indicated, we refer to public (including redacted) Papers
`and Exhibits.
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`record as Paper 62 (“Tr.”).
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`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, IPR2015-00016, and IPR2015-00019. 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. 8,566,361 B2 in Cases IPR2015-00100 and IPR2015-00108; and
`claims of U.S. Patent No. 8,468,174 B1 in Case IPR2015-00128.5
`
`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. 1301, 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.
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`5 Case IPR2015-00136 has been consolidated with IPR2015-00128.
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`Figure 2a depicts production database system 110, virtual database DB1 220
`stored in database storage system 100, and virtual database system 130,
`which accesses virtual database 220.
`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. 1301, 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
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`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.
`
`
`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
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`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
`
`Of the challenged claims, claim 1 is the only independent claim. All
`other challenged claims depend directly or indirectly from claim 1. Claim 1
`is illustrative of the challenged claims and is reproduced below:
`1.
`A method for creating a virtual database system, the
`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
`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
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`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
`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
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`need to be construed, and only to the extent necessary to resolve the
`controversy).
`
`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
`storage, a portion of which stores metadata associated with the unit of data”
`(PO Resp. 15), whereas Petitioner argues the correct interpretation of the
`term is not so limited, i.e., “a unit of data used by a database” (Pet. 9). 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 patentees
`intended to limit “database blocks” recited in claim 1 or any other
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`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
`prosecution).
`
`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. 15 (quoting Ex. 1301, 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.”6 Ex. 1301, col. 2, ll. 7–9.
`
`
`6 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.
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`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
`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)
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`(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. 2313, “Shenoy Decl.”), that
`if a database block does not include metadata, the system disclosed in the
`’808 patent would not work as described. PO Resp. 16. 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. at 16–17 (citing
`Ex. 1301, col. 13, ll. 34–46, 46–51)), which is “one of the main functions” of
`the claimed system (id. at 16 (citing Ex. 1301, col. 6, ll. 34–46, 43–46,
`col. 7, ll. 49–57; Ex. 2313 ¶¶ 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. 2313
`¶¶ 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 17 (citing Ex. 1301, col. 14, ll. 27–31; Ex. 2313 ¶¶ 76,
`81).
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`Patent Owner’s argument is unpersuasive because the argued
`advantages or purposes are not recited features of the challenged 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
`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. 1301, 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
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`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.
`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
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`associated with database blocks stored in the data store”) (emphasis added);7
`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 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
`
`7 The phrase “metadata associated with database blocks” implies any
`metadata need not be in the database blocks.
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`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
`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), claim 1 recites
`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 claim does not say anything about a particular method of transferring
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`point-in-time copies, whether by streaming or by file sharing. Hence, claim
`1 cannot be limited to either embodiment, and, therefore, the streaming
`embodiment cited by Patent Owner does not limit claim 1.
`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
`“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 corresponds to the
`written description in the Specification relating to the streaming embodiment
`discussed above. See Shenoy Decl. (Ex. 2313) ¶ 80; PO Resp. 16 (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
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`IPR2015-00034
`Patent 8,150,808 B2
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`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
`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, claim 1 recites, 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
`18
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`IPR2015-00034
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`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. 1301, 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.
`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” (id. at col. 2,
`ll. 10–12)—that 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
`construction. For example, citing the testimony of Dr. Shenoy and the
`testimony of Petitioner’s expert, Dr. Zadok (Ex. 1306, “Zadok Decl.”),
`Patent Owner asserts that all database management systems mentioned in the
`’808 patent, such as Oracle and IBM DB2 (Ex. 1301, col. 5, ll. 4–8), require
`
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`metadata in database blocks. PO Resp. 19–20 (citing Ex. 2313 ¶¶ 41–46;
`’014 Ex. 1019, 58 n.11).8 In the paragraphs cited by Patent Owner, Dr.
`Shenoy discusses various documents describing the database systems listed
`in the ’808 patent, including Oracle, Sybase, Microsoft SQL Server, and
`IBM DB2, and testifies that these database systems all require metadata in
`database blocks.9 Ex. 2313 ¶¶ 43–46. The evidence presented by Patent
`Owner in support of its argument—i.e., testimony of experts and documents
`describing the commercially available database systems listed in the ’808
`patent—is more properly characterized as extrinsic evidence. Such extrinsic
`evidence is “less significant than the intrinsic record in determining the
`legally operative meaning of claim language.” Phillips, 415 F.3d at 1317
`(citations omitted) (internal quotation marks omitted). Even if the external
`documents discussed by Dr. Shenoy are deemed to describe embodiments of
`the ’808 patent, the evidence would be insufficient to limit the term
`“database block” because reading in the “metadata” limitation not found in
`the claims from preferred embodiments is improper. See Cadence Pharm.
`Inc. v. Exela PharmSci Inc., 780 F.3d 1364, 1369 (Fed. Cir. 2015) (“[E]ven
`if all of the embodiments discussed in the patent included a specific
`
`8 Patent Owner cites Exhibit 2314, which is a copy of Exhibit 1019, a
`Declaration submitted by Dr. Zadok in support of the Petition in Case
`IPR2015-00014. Because exhibits have been assigned unique numbers
`across the relat
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