Trials@uspto.gov Paper 57
`571-272-7822
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`Date Entered: March 31, 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 IPR2015-00050
`Patent 8,548,944 B2
`____________
`
`Before HOWARD B. BLANKENSHIP, KARL D. EASTHOM, and
`MINN CHUNG, Administrative Patent Judges.
`
`BLANKENSHIP, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
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`571-272-7822
`
`Date Entered: March 31, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ACTIFIO, INC.,
`Petitioner,
`
`v.
`
`DELPHIX CORP.,
`Patent Owner.
`____________
`
`Case IPR2015-00050
`Patent 8,548,944 B2
`____________
`
`Before HOWARD B. BLANKENSHIP, KARL D. EASTHOM, and
`MINN CHUNG, Administrative Patent Judges.
`
`BLANKENSHIP, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
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`
`IPR2015-00050
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`I. BACKGROUND
`Petitioner, Actifio, Inc., filed a request for an inter partes review of
`claims 1–6, 9–12, 17–19, and 21 of U.S. Patent No. 8,548,944 B2 (Ex. 1001,
`“the ’944 patent”) under 35 U.S.C. §§ 311–319. Paper 1 (“Petition” or
`“Pet.”). The Board instituted an inter partes review of claims 1–6, 9–12,
`17–19, and 21 on asserted grounds of unpatentability for obviousness. Paper
`8 (“Dec. on Inst.”).
`Subsequent to institution, Patent Owner, Delphix Corp., filed a patent
`owner response. Paper 20 (“PO Resp.”). Petitioner filed a reply. Paper 24
`(“Pet. Reply”).
`Patent Owner filed a Motion to Exclude Evidence (Paper 37; “PO
`Mot. to Exclude”). Petitioner filed an Opposition to the Motion to Exclude
`(Paper 41; “Pet. Exclude Opp.”), and Patent Owner filed a Reply (Paper 43;
`“PO Exclude Reply”).
`An oral hearing concerning this case and several other inter partes
`reviews in which the parties are involved was held on January 14, 2016.
`The record contains a transcript of the hearing (Paper 55).
`The Board has jurisdiction under 35 U.S.C. § 6(c). This final written
`decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons that follow, we determine that Petitioner has shown by
`a preponderance of the evidence that claims 1–6, 9–12, 17‒19, and 21 of the
`’944 patent are unpatentable.
`
`A. Related Proceedings
`According to Petitioner, the ’944 patent is involved in the lawsuit
`Delphix Corp. v. Actifio, Inc., No. 5:13-cv-04613-BLF (N.D. Cal.). Pet. 2.
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`The ’944 patent is also the subject of Case IPR2015-00052 (PTAB Oct. 8,
`2014).
`
`B. The ’944 Patent
`The ’944 patent relates to backing up and restoring file systems. File
`system backups are performed by copying information describing changes in
`the file system since a previous point in time. To restore data, a virtual
`restored file system (VRFS) structure is created corresponding to a snapshot
`of data copied from the file system that is stored in the backup file system.
`Ex. 1001, Abstract. The VRFS structure points at data blocks copied at
`various points in time. Id. at col. 1, ll. 40–42. Upon request, the backup
`system generates a virtual restored file system by linking a set of files to
`stored data blocks of the storage system and mounting the set of files on the
`target system. Id. at col. 1, ll. 57–62.
`
`C. Illustrative Claim
`Claim 1, reproduced below, is illustrative.
`1. A method for performing backup of file systems, the
`method comprising:
`
`receiving data blocks for a plurality of point-in-time
`copies of a source file system, each point-in-time copy of the
`source file-system obtained by extracting data blocks from the
`source file-system that changed since a previous point-in-time
`copy was extracted, the source file system comprising at least a
`source file;
`
`storing the data blocks on a storage system, the stored
`data blocks comprising one or more versions of a data block,
`each version corresponding to a point-in-time copy;
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`receiving a request to restore information obtained from
`the source file system for a target system; and
`
`responsive to receiving the request to restore, creating a
`virtual restored file system comprising a set of files including a
`restored file corresponding to the source file, the creating
`comprising:
`
`
`
`
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`linking the restored file to a plurality of the data
`blocks stored on the storage system, the plurality of data blocks
`comprising at least a first data block associated with a first
`point in time copy and a second data block associated with a
`second point in time copy, and
`
`mounting the set of files to the target system to
`allow the target system to access the set of files, the mounted
`set of files comprising the virtual restored file system.
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`D. Asserted Prior Art
`
`Fair et al., US 7,334,095 B1, issued Feb. 19, 2008 (“Fair”). Exhibit 1006.
`
`Sanders et al., “DB2: Cloning a Database using NetApp FlexClone™
`Technology,” Apr. 30, 2006 (“Sanders”). Exhibit 1003.
`
`Edwards et al., “FlexVol: Flexible, Efficient File Volume Virtualization in
`WAFL,” June 22–27, 2008, PROCEEDINGS OF THE ANNUAL TECHNICAL
`USENIX CONFERENCE (“Edwards”). Exhibit 1004.
`
`Patterson et al., “SnapMirror®: File System Based Asynchronous Mirroring
`for Disaster Recovery,” PROCEEDINGS OF THE FAST 2002 CONFERENCE ON
`FILE AND STORAGE TECHNOLOGIES, Jan. 28–30, 2002 (“Patterson”). Exhibit
`1005.
`
`NetApp, Inc., “Data ONTAP® 7.1 Data Protection Online Backup and
`Recovery Guide,” Jan. 12, 2007 (“ONTAP”). Exhibit 1007.
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`E. Asserted Grounds of Unpatentability
`We instituted inter partes review on the following grounds of
`unpatentability under 35 U.S.C. § 103(a):
`
`
`References
`Sanders, Edwards, and Patterson
`Sanders, Edwards, Patterson, and
`Fair
`Sanders, Edwards, Patterson, and
`ONTAP
`
`
`Claim(s)
`1–4, 10–12, 17, 18, and 21
`5, 6, and 19
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`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 movant, Patent Owner has the
`burden of showing that an Exhibit is not admissible. 37 C.F.R. § 42.20(c).
`Patent Owner moves to exclude Petitioner’s Exhibits 1019, 1027,
`1029, 1032, 1034‒1037, 1039‒1042, 1044, 1045, and 1047, all of which
`were filed with Petitioner’s Reply. PO Mot. to Exclude 1. As Patent Owner
`notes, however, Petitioner does not rely on Exhibits 1034, 1035, 1036, and
`1037. Id. at 1 n.1. Further, Petitioner has moved, unopposed, to expunge
`Exhibit 1027 (see Paper 34), which motion we hereby grant. Of the other
`objected-to Exhibits, except for Exhibits 1019 and 1044, we do not, and
`need not, consider such evidence in connection with the Reply. We
`determine, for reasons set forth below, that Petitioner has demonstrated by a
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`preponderance of the evidence that the challenged claims are unpatentable,
`without need for Petitioner’s additional arguments or evidence in relation to
`those additional Exhibits. Of the objected-to Exhibits, our Final Written
`Decision discusses and relies on only Exhibits 1019 and 1044. Accordingly,
`Patent Owner’s motion to exclude Exhibits 1027, 1029, 1032, 1034‒1037,
`1039‒1042, 1045, and 1047 is dismissed as moot.
`Exhibit 1019 is the Declaration of Mr. Louis Hernandez. Patent
`Owner’s motion does not specify the basis for any evidentiary objection to
`the Exhibit.
`Patent Owner’s motion to exclude Exhibit 1019 is denied.
`Exhibit 1044 is the Supplemental Declaration of Louis Hernandez.
`Patent Owner argues that the Exhibit is “inadmissible hearsay.” PO Mot. to
`Exclude 5‒7. 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.
`Patent Owner’s motion to exclude Exhibit 1044 is denied.
`
`B. Printed Publications — Sanders and ONTAP
`Patent Owner in its Response contests that Sanders and ONTAP are
`prior art “printed publications” in accordance with 35 U.S.C. §§ 102 and
`311(b). We look to the underlying facts to make a 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
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`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, we note our disagreement with Patent Owner’s contention
`that Petitioner cannot rely upon evidence not submitted with the Petition to
`show that Sanders and ONTAP are prior art. PO Resp. 4‒5. In Patent
`Owner’s view, Petitioner must make out a prima facie case of
`unpatentability in its Petition, which includes the substantive element of
`Sanders and ONTAP being publicly accessible and prior art. Id. at 4. That
`position, however, does not account for the difference between the threshold
`for instituting a trial (35 U.S.C. § 314(a)) and that for 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)).
`Based on the information presented in the Petition and Patent Owner’s
`Preliminary Response (Paper 7) we determined there was a reasonable
`likelihood that Petitioner would prevail in its challenges that included
`Sanders and ONTAP. Dec. on Inst. 14; see 35 U.S.C. § 314(a) (threshold
`
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`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 Response. Patent Owner, in fact, stated that it had
`“disclosed to the Patent Office every NetApp feature that Petitioner now
`cites in the Petition” and that Sanders, Edwards, and Patterson “were
`published over a span of six years.” Paper 7, 22 (emphasis added). We do
`not mean to 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 Sanders and ONTAP, 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
`Declarations in its Reply. PO Resp. 2. The Declarations are provided by
`Louis Hernandez (Ex. 1019) and Joseph Ortiz (Ex. 1027).1 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). Our rules
`authorize serving supplemental evidence in response to an objection. 37
`C.F.R. § 42.64(b)(2). Patent Owner lacks a foundation to complain that
`evidence has been produced in response to its objections. Petitioner also
`
`
`1 Exhibit 1027 is expunged at Petitioner’s request. We do not further discuss
`the Exhibit.
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`relies, properly, on the supplemental evidence in its Reply, as evidence in
`reply to Patent Owner’s arguments in its Response that Sanders and ONTAP
`are not printed publications.
`Turning to the substance of Exhibit 1019, 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. 1019 ¶¶ 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 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 Sanders and ONTAP, and that
`they were published during his tenure at NetApp. Id. ¶¶ 7, 10, 11.
`Patent Owner argues Mr. Hernandez does not declare that Sanders or
`ONTAP was “publicly accessible.” PO Resp. 2‒3. Patent Owner submits:
`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.
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`Id. at 3.
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`Petitioner replies with a Supplemental Declaration from Mr.
`Hernandez. Pet. Reply 7‒8. 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-confidentially. Ex. 1044 ¶ 5. According to Declarant,
`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. 1046, 1, 2, 4.2
`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 Patent
`Owner’s Motion for Observation on Cross-Examination Testimony of Mr.
`
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`2 We find that Exhibit 1046, 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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`Hernandez (Paper 38) and Petitioner’s Response (Paper 42), insofar as they
`relate to public accessibility of Sanders and ONTAP. 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 Sanders and ONTAP to be credible.
`As an earlier panel of the Board has found, in a proceeding involving a
`different patent and different parties, documents such as Sanders and
`ONTAP are dated technical documents or whitepapers, having no indication
`of being mere drafts or internal papers, each of which is “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).
`Moreover, in that case, at the preliminary proceeding phase, the panel found
`that Sanders, on its face, was sufficient to qualify as a printed publication.
`Id. at 2, 13‒14.
`Finally, in reply to Patent Owner’s challenge in its Response,
`Petitioner also submits a Declaration it says was produced in response to
`Patent Owner’s evidentiary objections. Pet. Reply 3. Petitioner provided
`the Declaration from the office manager of the Internet Archive (Wayback
`Machine). Id. (citing Ex. 1022). Sanders is dated April 30, 2006 and is
`designated “TR-3460” (or Technical Report 3460). Ex. 1003, 1. According
`to the testimony regarding how the Internet Archive works (Ex. 1022 ¶¶ 3‒
`5), we find the evidence indicates that Sanders was available on NetApp’s
`commercial website on, or at least as early as, November 22, 2006. Id. at
`231, 232. Exhibit 1022 indicates that Sanders was, thus, “sufficiently
`accessible to the public interested in the art.” Lister, 583 F.3d at 1311.
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`“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 (dated
`Apr. 30, 2006) and ONTAP (dated Jan. 12, 2007) were available to the
`interested public at least more than one year before July 15, 2010, the
`earliest possible priority date of the ʼ944 patent. See Ex. 1001, at (60).
`Therefore, on this record, Sanders and ONTAP are printed publications
`under 35 U.S.C. § 102(b).
`
`C. Claim Interpretation
`In an inter partes review, the Board construes claim terms in an
`unexpired patent using their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); In
`re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015),
`cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 890
`(mem.) (2016). There is a presumption that a claim term carries its ordinary
`and customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d
`1359, 1366 (Fed. Cir. 2002). The “ordinary and customary meaning” is that
`which the term would have to a person of ordinary skill in the art in
`question. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007).
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`Only those terms which are in controversy need to be construed, and
`only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v.
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). In reaching our
`determinations in this Decision, we do not find construction of any terms
`necessary.
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`D. Asserted Grounds of Unpatentability
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`1. Section 103(a) — Sanders, Edwards, and Patterson
`Petitioner applies the teachings of Sanders, Edwards, and Patterson in
`an asserted ground of obviousness as to claims 1–4, 10–12, 17, 18, and 21.
`Pet. 27–52.
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`2. Sanders
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`Sanders describes a system “to clone a DB2 database quickly and
`easily.” Ex. 1003, 1. “Database cloning is [a] process by which you can
`create an exact copy of a DB2 database. . . .” Id. at 3. The disclosed system,
`by Network Appliance, Inc. (“NetApp”), uses FlexClone and SnapMirror
`technologies in a combined manner. Id. at 8. This combined technology
`allows administrators to clone a production FlexVol database system as a
`writable FlexClone database on another storage system. Id. “A FlexClone
`volume is a writable point-in-time image of a FlexVol volume or another
`FlexClone volume.” Id. at 3. Stated differently, “[t[he clone database is a
`frozen image of the database file system at the time of the clone creation. If
`necessary, the primary database can be restored from the snapshot created
`for the clone; or applications can point directly to the clone database.” Id. at
`6.
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`A FlexClone volume “uses space very efficiently, allowing both the
`original FlexVol volume and the FlexClone volume to share common data,
`storing only the data that changes between the original volume and the
`clone.” Id. at 3. Clones can be created on the same or remote storage
`systems. Id. at 6. The SnapMirror technology provides FlexCone volumes
`to be produced at different destinations: “A SnapMirror source and its
`corresponding destination can reside on the same storage system or on two
`separate storage systems that are miles apart . . . .” Id. at 3.
`Sanders’s Figure 3, annotated by Petitioner to add source and clone
`database labels, follows:
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`Pet. 11 (annotating Ex. 1003, Fig. 3). Figure 3 represents using the
`combined SnapMirror and FlexClone technology to transmit point-in-time
`clone copies of a production database to a destination storage system. See
`Ex. 1003, 8.
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`3. Edwards
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`Edwards describes the same NetApp system as Sanders, and provides
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`more explanation about the use of volumes and files to manage data. A
`volume essentially comprises a file system that points to and uses underlying
`data storage on storage disks:
`[A] FlexVol volume is a file system created within a file on an
`underlying system. A hidden file system spans a pool of
`storage, and we create externally visible volumes inside files on
`this file system. This introduces a level of indirection, or
`virtualization between the logical storage space used by a
`volume and the physical storage space provided by the RAID
`subsystem.
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`Ex. 1004, 131.3 “Conceptually, we wanted to aggregate many disks into a
`large storage container and allow administrators to create volumes by
`carving out arbitrarily sized logical chunks of this volume.” Id.
`Edwards describes the same SnapMirror and FlexCone systems that
`Sanders describes as forming a virtualized system: “[W]e virtualize the
`allocation of volumes on physical storage, allowing multiple, independently
`managed file volumes, along with their Snapshot copies, to share the same
`storage.” Id. at 130. “Virtualization is a well-known method of abstracting
`physical resources and of separating the manipulation and use of logical
`resources from their underlying implementation.” Id. at 129. “By
`separating the management of file systems from the management of physical
`storage resources, these systems make it easier to create, destroy, and resize
`file systems, as these operations can be performed independent of the
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`3 Page numbers refer to original page numbers.
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`underlying storage.” Id. “The resulting virtual file volumes, or FlexVol®
`volumes, are managed independent of lower storage layers.” Id.
`
`Edwards explains that “writable Snapshot copies [are] []called
`Flexclone volumes.” Id. at 130. A clone volume “inherits pointers to the
`complete file system image stored in the original Snapshot copy” of an
`original FlexVol volume. Id. at 135. “The only differences between a
`Snapshot copy and the live file system are the blocks that have been
`modified since the Snapshot copy was created (and the metadata that points
`to them).” Id. at 131.
`
`“WAFL [Write Anywhere File Layout] Snapshot copies provide
`consistent point-in-time copies of a volume.” Id. at 134. But, a Snapshot
`copy is read-only. Id. Therefore, “[v]olume cloning creates a FlexVol
`volume in which the active file system is a logical replica of a Snapshot
`copy in a different FlexVol volume within the same aggregate.” Id. To
`copy a volume, the system transfers metadata blocks that contain block
`pointers. See id. at 130–31.
`Edwards explains that “[c]reating a clone volume is a simple process.”
`Id. at 135. A container file for the new clone volume (or FlexClone volume)
`is created and seeded “with a vol_nfo block that is a copy of the vol_info
`block of the Snapshot copy on which the clone is based.” Id. Because
`vol_info block is the root of the “tree of blocks that form the Snapshot copy,
`the clone inherits pointers to the complete file system image stored in the
`original Snapshot copy.” Id. at 135. “[T]he clone does not actually own the
`blocks it has inherited from the parent, [and] it does not have those blocks in
`its container files.” Id. at 135. Nevertheless, the system may create new
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`copies of any blocks shared with the parent in order to sever the connection
`between the parent and clone. Id.
`
` E. Asserted Obviousness over Sanders, Edwards, and Patterson
`As we noted, Petitioner applies the teachings of Sanders, Edwards,
`and Patterson in an asserted ground of obviousness as to claims 1–4, 10–12,
`17, 18, and 21. Petitioner points to specific disclosures in the prior art that
`are deemed to describe or teach all claim limitations. Pet. 27–52.
`We find that the Petition provides ample reasons why one of ordinary
`skill in the art would have combined the teachings of Sanders, Edwards, and
`Patterson. Pet. 21‒25. For example, all the references address the problem
`of reducing the time to restore a backup copy of an organization’s file
`system. Pet. 22 (citing Declaration of Erez Zadok, Ex. 1016 ¶¶ 100‒105).
`Sanders, Edwards and Patterson all address the problem using the same
`solution — virtual file systems. Id. Sanders and Edwards teach creating
`virtual file systems use the same underlying NetApp technologies: Snapshot,
`SnapMirror, and FlexClone technologies incorporated into the Data ONTAP
`operating system. Pet. 22‒23 (citing Ex. 1016 ¶ 101). Moreover, Edwards
`expressly refers to the earlier Patterson reference for details relating to how
`to use SnapMirror for replication. Pet. 23, 36; Ex. 1004, 133, 142.
`
`F. Patent Owner’s Response
`Patent Owner in its Response argues that the Petition fails to show
`that several limitations in the claims are found in the applied prior art. We
`consider each of those arguments in turn.
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`1. Receiving of Data Blocks for a Plurality of Point-In-Time
`Copies of a Source File System
`
`Sanders teaches configuring and initializing SnapMirror (Ex. 1003,
`27), which includes creating Snapshot copies of the source database (id.,
`steps (3) and (4)). Petitioner submits that Sanders also teaches creating and
`transferring a second Snapshot copy of the source file system as part of the
`backup and cloning process. Ex. 1016 (Declaration of Dr. Erez Zadok)
`¶ 139. Sanders teaches manually updating the destination volume with
`contents of the source volume, including Snapshot copies. Ex. 1003, 23.
`During this update, only changed blocks are transferred. Id. at 21, § 5.4 (2).
`Petitioner refers to Patterson for further details of the process. Ex. 1016
`¶¶ 140–41.
`Patent Owner argues that the NetApp storage system does not disclose
`or render obvious the claimed receiving of “data blocks for [a] plurality of
`point-in-time copies of a source file system.’” PO Resp. 24. According to
`Patent Owner, NetApp (specifically, SnapMirror) is a mirroring method for
`disaster recovery of physical storage, where the source file system and
`backup “mirror” are always maintained in the identical current state. Id.
`(citing Declaration of Dr. Prashant Shenoy, Ex. 2009 ¶ 70). Patent Owner
`submits further that the SnapMirror “mirror only represents what is
`maintained by the source system and does not store different point-in-time
`copies of the source.” Id. at 25 (citing Ex. 2009 ¶ 70).
`Patent Owner acknowledges, however, that the Petition relies on
`SnapMirror’s base reference and incremental reference snapshots created by
`the source system as the plurality of point-in-time copies of the source. Id.
`at 27. Patent Owner argues that the snapshots are never transferred to or
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`received by a destination, and thus cannot be the received data blocks for a
`plurality of point-in-time copies of a source file system. Id. “[T]hese
`temporary snapshots are created at the source, for use by the source and are
`not transferred to or stored at the destination.” Id. (citing Ex. 2009 ¶¶ 58‒
`61, 73‒74). Patent Owner does not indicate why it refers to the snapshots as
`“temporary,” but states that the snapshots “created and used during the
`SnapMirror processes” are never transferred to or received at the destination.
`Id. Patent Owner refers, apparently, to additional snapshot copies that are
`created automatically for SnapMirror update purposes. Ex. 1003, 23.
`Petitioner does not rely on those snapshot copies as corresponding to the
`claimed “plurality of point-in-time copies of a source file system.” Sanders,
`in fact, warns that “[i]t is recommended not to use these automatically
`created Snapshot copies to create a clone volume.” Id. The Petition,
`instead, relies on the incremental snapshot copies for which, after
`SnapMirror initialization, changed blocks are transferred. Pet. 29‒30; Ex.
`1003, 21 (step (iv), execute command to “update the SnapMirror
`relationship manually”). As Petitioner explains, the record is replete with
`evidence that establishes that baseline and incremental copies are transferred
`to and received at the destination. Pet. Reply 8‒12.
`Patent Owner argues, further, that the claims require that the received
`point-in-time copies are obtained by extracting data blocks from the source
`file-system that changed since a previous point-in-time copy was extracted.
`PO Resp. 28. Patent Owner acknowledges that, after initialization, “in its
`next syncing operation, SnapMirror will send all data blocks that have
`changed since the last update including any newly-created snapshots.” Id. at
`29. According to Patent Owner, “[i]f there are new snapshots they represent
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`the state of the source file system when they were created, not when they are
`mirrored to the destination.” Id. (citing Ex. 2009 ¶¶ 58‒61, 74‒76). “That
`is, they are not a point-in-time copy of the source file system as it exists
`when the data blocks are ‘extracted.’” Id. We agree with Petitioner (Pet.
`Reply 12‒13), however, that although the claims require a “plurality of
`point-in-time copies of a source file system,” nothing in the claims requires
`that the point-in-time copies be with respect to the source file system as it
`exists when the copies are mirrored to the destination or when the data
`blocks are extracted.
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`2. Create a Virtual Restored File System
`Patent Owner argues that the claims require the creation of a set of
`files for a virtual restored file system. PO Resp. 29‒30. Patent Owner
`submits that Petitioner relies on the description in Edwards of creating a
`FlexClone volume of a stored snapshot. Id. at 30. Specifically, Petitioner
`relies on “the step in which a ‘container file for the new clone volume is
`created and seeded “with a vol_info block that is a copy of the vol_info
`block of the snapshot copy on which the clone is based.’” Id. (quoting Pet.
`34). According to Patent Owner, this “container file” is not a newly created
`set of files. Id. at 31. “As illustrated in Edwards, this new ‘container file’ is
`merely a copy of the ‘vol_info’ block of the volume
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