Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 59
` Entered: May 11, 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 IPR2015-00100
`Patent 8,566,361 B2
`____________
`
`
`
`Before KARL D. EASTHOM, JENNIFER S. BISK, and
`PATRICK R. SCANLON, Administrative Patent Judges.
`
`SCANLON, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`571-272-7822
`
`
`
` Paper 59
` Entered: May 11, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ACTIFIO, INC.,
`Petitioner,
`
`v.
`
`DELPHIX CORP.,
`Patent Owner.
`____________
`
`Case IPR2015-00100
`Patent 8,566,361 B2
`____________
`
`
`
`Before KARL D. EASTHOM, JENNIFER S. BISK, and
`PATRICK R. SCANLON, Administrative Patent Judges.
`
`SCANLON, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`IPR2015-00100
`Patent 8,566,361 B2
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`
`I. INTRODUCTION
`Petitioner, Actifio, Inc., filed a Petition (Paper 1, “Pet.”) requesting an
`inter partes review of claims 1–6, 8, 14, 16–19, 24, and 25 of U.S. Patent No.
`8,566,361 B2 (Ex. 1001, “the ’361 patent”) pursuant to 35 U.S.C. §§ 311–319.
`Patent Owner, Delphix Corp., filed a Preliminary Response (Paper 6, “Prelim.
`Resp.”). On May 14, 2015, we instituted an inter partes review as to all
`challenged claims (Paper 7, “Inst. Dec.”).
`After institution, Patent Owner filed a Patent Owner Response (Paper
`17, “PO Resp.”), and Petitioner filed a Reply (Paper 25, “Reply”). Petitioner
`relies on the Declaration of Erez Zadok (Ex. 1016) and the Supplemental
`Declaration of Erez Zadok (Ex. 1070) in support of its contentions, and Patent
`Owner relies on the Declaration of Prashant Shenoy, Ph.D. (Ex. 2016) in
`support of its contentions.
`An oral hearing was held on February 2, 2016. A transcript of the
`hearing is included in the record. Paper 58 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6(b). 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, 8, 14, 16–19, 24, and 25 of the
`’361 patent are unpatentable.
`
`II. BACKGROUND
`
`Related Matters
`
`A.
`The parties indicate that the ’361 patent is at issue in Delphix Corp. v.
`Actifio, Inc., No. 5:13-cv-04613-BLF (N.D. Cal.). Pet. 2; Paper 4, 2. The
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`IPR2015-00100
`Patent 8,566,361 B2
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`’361 patent is also the subject of another petition for inter partes review filed
`by Petitioner—IPR2015-00108. Pet. 2; Paper 4, 2.
`
`The ’361 Patent (Ex. 1001)
`
`B.
`The ’361 patent describes systems and methods for managing databases
`and lifecycle workflows based on databases. Ex. 1001, 1:12–14. More
`specifically, the ’361 patent involves creating one or more virtual databases
`based on a production database or another virtual database at a particular point
`in time. Id. at 5:64–66. Virtual databases are created “using storage level
`snapshots of production databases or clones of production databases instead of
`a live production database.” Id. at 6:16–19. “A virtual database created for a
`point in time is stored as a set of files that contain the information of the
`database as available at that point in time.” Id. at 6:31–34.
`Figure 1 of the ’361 patent is reproduced below.
`
`
`Figure 1 illustrates how information may be copied from production database
`systems 110 to database storage system 100. Id. at 7:12–15. To create a
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`IPR2015-00100
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`virtual database, database storage system 100 creates files representing the
`corresponding information from a production database system at a given point
`in time. Id. at 7:50–52. More particularly, database storage system 100
`retrieves and stores information from production database systems 110. Id. at
`9:38–39. Database storage system 100 then exposes the files to virtual
`database system 130 using file sharing system 120. Id. at 7:53–55. Virtual
`database system 130 includes database server 230 and operating system 240.
`Id. at 7:60–8:6, Fig 2(a).
`
`Illustrative Claim
`
`C.
`Of the challenged claims in the ’361 patent, claims 1, 14, 17, and 24 are
`independent. Claim 1 is illustrative of the claims at issue:
`1.
`A method for replicating a database, the method
`comprising:
`linking a source database, wherein linking the source
`database comprises receiving information identifying the source
`database;
`loading the source database at multiple points in time,
`wherein the loading comprises:
`receiving database blocks for different point-in-time
`copies of the source database, and
`storing the database blocks in a first storage system;
`replicating the database blocks of the source database from
`the first storage system to a second storage system; and
`provisioning a virtual database (VDB) from the second
`storage system to a system running a database server, wherein
`provisioning comprises:
`creating a set of files linked to the stored database
`blocks on the second storage system, and
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`IPR2015-00100
`Patent 8,566,361 B2
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`mounting the set of files to the system allowing the
`database server running on the system to access the set of
`files.
`Ex. 1001, 35:39–58.
`
`The Prior Art
`
`Instituted Ground of Unpatentability
`
`D.
`Petitioner relies on the following prior art:
`1. JAWAHAR LAL, ROGER SANDERS & JEREMY BRUMER,
`DB2: CLONING A DATABASE USING NETAPP FLEXCLONE™
`TECHNOLOGY, TR-3460 (2006) (“Sanders”) (Ex. 1004);
`2. John K. Edwards et al., FlexVol: Flexible, Efficient File
`Volume Virtualization in WAFL, 2008 PROC. USENIX ANN.
`TECHNICAL CONF. 129 (“Edwards”) (Ex. 1005); and
`3. DARRIN CHAPMAN, MIKE FEDERWISCH, & CHUCK
`DUFRESNE, SNAPMIRROR® BEST PRACTICES GUIDE, TR-3446
`(2006) (“Chapman”) (Ex. 1006).
`E.
`We instituted the instant inter partes review on the following ground of
`unpatentability:
`References
`Sanders, Edwards, and
`Chapman
`
`Basis
`§ 103
`
`Claims Challenged
`1–6, 8, 14, 16–19, 24,
`and 25
`
`
`
`III. ANALYSIS
`
`Printed Publication—Sanders and Chapman
`
`A.
`Patent Owner contests that Sanders and Chapman are prior art “printed
`publications” in accordance with 35 U.S.C. §§ 102 and 311(b). PO Resp. 1‒4.
`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
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`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) (quoting In re Cronyn, 890 F.2d 1158,
`1160 (Fed. Cir. 1989)).
`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 Chapman are prior art. PO Resp. 2‒4. 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 Chapman
`being publicly accessible and prior art. Id. at 3–4. That position, however, is
`not informed by 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)).
`Based on the information presented in the Petition and Patent Owner’s
`Preliminary Response, we determined there was a reasonable likelihood that
`Petitioner would prevail in its challenge that included Sanders and Chapman.
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`Inst. Dec. 28; 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 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 Edwards,
`Sanders, and Chapman “were published years apart.” Prelim. Resp. 56, 58
`(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 Chapman,
`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 declarations
`filed after the Petition. PO Resp. 3–4. These declarations include
`declarations provided by Louis Hernandez (Ex. 1019) and Joseph Ortiz (Ex.
`1027) in response to objections by Patent Owner1 and a Supplemental
`Declaration by Mr. Hernandez (Ex. 1046) filed with its Reply. 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
`
`
`1 Exhibit 1027 is expunged at Petitioner’s request. We do not further discuss
`the Exhibit. We address Patent Owner’s motions to exclude these documents
`in a separate section, below.
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`IPR2015-00100
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`evidence has been produced in response to its objections. Petitioner also
`relies, properly, on the supplemental evidence in its Reply, as evidence in
`reply to Patent Owner’s arguments in its Response that Sanders and Chapman
`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 Chapman, and that
`they were published during his tenure at NetApp. Id. ¶¶ 7, 9, 11, 17.
`Patent Owner argues Mr. Hernandez does not declare that Sanders or
`Chapman was “publicly accessible.” PO Resp. 2. 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.
`Id. at 2–3.
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`Petitioner replies with a Supplemental Declaration from Mr.
`Hernandez. Reply 6‒7 (citing Ex. 1046). Mr. Hernandez testifies that he uses
`the terms “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. 1046 ¶ 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 reflected
`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. Reply 6; Ex. 1055, 3.2
`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. Hernandez (Paper 39)
`
`
`2 We find that Exhibit 1055, 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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`IPR2015-00100
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`and Petitioner’s Response (Paper 45), insofar as they relate to public
`accessibility of Sanders and Chapman. 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 Chapman 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 Chapman 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 Software Corp. v. Symantec Corp., Case IPR2014-
`00089, slip op. at 14 (PTAB Apr. 25, 2014) (Paper 9).
`Finally, Petitioner also submits a declaration it says was produced in
`response to Patent Owner’s evidentiary objections. Reply 4. 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. 1004, 1.
`Chapman is dated April 2006 and is designated “TR-3446” (or Technical
`Report 3446). Ex. 1006, 1. According to the testimony regarding how the
`Internet Archive works (Ex. 1022 ¶¶ 3‒5), we find the evidence indicates that
`Sanders and Chapman were available on NetApp’s commercial website on, or
`at least as early as, November 22, 2006. Ex. 1022, 148, 231. Exhibit 1022
`indicates that Sanders and Chapman were, thus, “sufficiently accessible to the
`public interested in the art.” See In re Lister, 583 F.3d at 1311.
`“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
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`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)). Petitioner
`asserts that the level of ordinary skill is not disputed in this case and that
`“there is no difference between customers and potential customers of NetApp
`and a [person of ordinary skill in the art].” Reply 6. Mr. Hernandez testifies
`that NetApp’s customers and potential customers were entities or individuals
`who were “interested in data storage technology, data management
`technology, database storage and management technology, and related
`technologies.” Ex. 1046 ¶ 3. As discussed above, Mr. Hernandez also
`testifies NetApp had more than two hundred Systems Engineers and other
`sales personnel during the period of 2004–2009 who distributed NetApp’s
`technical documents (including Sanders and Chapman) to “thousands” of
`customers and potential customers. Id. ¶ 4. Hence, the record supports
`Petitioner’s contention that Sanders and Chapman were distributed to persons
`interested and ordinarily skilled in the subject matter of database technology
`at the time of its publication. See Reply 6–7.
`In view of the foregoing considerations, we find that Petitioner has
`established, by a preponderance of the evidence, that Sanders and Chapman
`were sufficiently disseminated to persons of ordinary skill interested in
`database technology to be deemed “publicly accessible” at least more than one
`year before October 21, 2009, the earliest possible priority date of the ʼ361
`patent. See Ex. 1001, at [63]. Therefore, on this record, we determine
`Sanders and Chapman qualify as prior art printed publications under
`35 U.S.C. § 102(b).
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`IPR2015-00100
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`B.
`
`Claim Construction
`
`We interpret claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which they
`appear. See 37 C.F.R. § 42.100(b). On this record and for purposes of this
`Decision, we determine that only the claim terms addressed below require
`express construction.
`
`“database block”
`
`1.
`In the Institution Decision, we preliminarily construed the term
`“database block,” as “a unit of data used by a database.” Inst. Dec. 11. In its
`Response, Patent Owner asserts that this definition is impermissibly broad.
`PO Resp. 18–28. Patent Owner’s proposed construction is “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.”
`Id. at 18 (emphasis added). Petitioner, on the other hand, agrees with our
`conclusion in the Decision to Institute. Reply 9–13.
`
`a) Metadata Associated with the Database Block
`The main dispute between the parties centers on whether a database
`block must necessarily include metadata. Patent Owner asserts that it does
`(PO Resp. 19–23), and Petitioner disagrees (Reply 9–13). We agree with
`Petitioner.
`We begin our analysis by considering the language of the claims
`themselves. Phillips v. AWH Corp., 415 F.3d 1303, 1314, 1315 (Fed. Cir.
`2005) (en banc). The term “metadata” is not recited in any of the claims of
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`the ’361 patent. U.S. Patent No. 8,150,808 B2 (“the ’808 patent”),3 however,
`includes two claims that recite “metadata”—dependent claims 32 and 33,
`which are not challenged in any proceeding, of which we are aware, currently
`before the Board. These claims depend indirectly from claim 1 of the ’808
`patent and expressly recite “metadata of database blocks.” Thus, had the
`patentees intended to limit “database blocks” recited in the claims of the ’361
`patent to require metadata, they demonstratively could have done so by
`explicitly modifying the disputed term with “metadata,” but did not.
`Moving to the specification, Patent Owner asserts that the following
`passage in the Summary section of the ’808 patent 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. 18 (quoting Ex. 2002, 2:7–12).
`The first phrase in the cited passage above explicitly defines the term,
`by stating “[a] database block is a unit of data used by a database.”4 Ex. 2002,
`2:7–8. Although the sentence following shortly thereafter states that a
`database block “stores metadata,” that sentence by itself is insufficient to limit
`the disputed term by requiring the unclaimed “metadata” feature because it
`
`3 Patent Owner describes the ’808 patent as being related to the ’361 patent.
`Prelim. Resp. 28.
`4 The first sentence also states a database block comprises “a specific number
`of bytes stored in the storage.” For the reasons discussed below, we find this
`addition is not part of the explicit definition but, rather, represents
`embodiments within the defined term. Patent Owner also fails to explain how
`to interpret this particular phrase or how it presents a material issue related to
`the prior art.
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`does not state unambiguously that all “database blocks” must include
`metadata. See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed.
`Cir. 2004) (construing a claim term broadly because “[n]o statement in the
`written description [ ] constitute[d] a limitation on the scope of the invention”)
`(alterations in original) (quoting Brookhill-Wilk 1, LLC. v. Intuitive Surgical,
`Inc., 334 F.3d 1294, 1301 (Fed. Cir. 2003)). Further, the cited passage also
`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”). More importantly, the rest of the ’361 patent is consistent with a
`definition of database blocks that does not require metadata in all database
`blocks.
`Patent Owner asserts, citing certain portions of the ’361 patent and the
`Declaration of Prashant Shenoy, Ph.D. (Ex. 2016), that if a database block
`does not include metadata, the disclosed system would not work as described.
`PO Resp. 19–20. 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, which is “one of the main functions” of the claimed system (id. at 19
`(citing Ex. 1001, 7:31–35, 41–44, 14:43–46; Ex. 2016 ¶¶ 86–87)) essential to
`achieving “a main purpose” of the invention—“to efficiently provide virtual
`databases . . . without proliferating redundant copies of database data” (id. at
`19–20 (citing Ex. 2016 ¶ 87)). Patent Owner also asserts that metadata is
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`required in each database block in order to map the block to a database file
`and a location within that file. Id. at 20 (citing Ex. 1001, 15:27–31).
`Patent Owner’s argument is unpersuasive because the argued
`advantages or purposes are not recited features of the claims. Moreover, a
`claim is not required to encompass all of the advantages or purposes of the
`invention. See Howmedica Osteonics Corp. v. Wright Med. Tech., Inc., 540
`F.3d 1337, 1345 (Fed. Cir. 2008) (“An invention may possess a number of
`advantages or purposes, and there is no requirement that every claim directed
`to that invention be limited to encompass all of them.” (quoting E-Pass
`Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1370 (Fed Cir. 2003))).
`Moreover, Patent Owner focuses its arguments on the streaming
`embodiment, however, Patent Owner does not show that the file sharing
`embodiment requires this approach, 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., Ex. 1001, 14:10–14 (“the
`production system library [] includes code to analyze the structures of the files
`of the database stored in the data store [] and also includes code to process
`metadata associated with database blocks stored in the data store” (emphases
`added)),5 7:12–18 (“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)). When file sharing, as opposed to streaming, is used, the database file
`on the production system can be accessed and copied directly by “mount[ing]
`
`
`5 The phrase “metadata associated with database blocks” implies any
`metadata need not be in the database blocks.
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`the production DB data store” on the database storage system without packing
`and unpacking the database blocks of the database file into and out of data
`streams. Id. at 8:58–65.
`Considering “the context of the surrounding words” to the term
`“database block” in the claims, which “must be considered in determining the
`ordinary and customary meaning” of the disputed term, ACTV, Inc. v. Walt
`Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003), independent claims 1, 14,
`17, and 24 recite receiving database blocks for different point-in-time copies
`of the source database and storing the database blocks in a storage system.
`But the claims do not say anything about a particular method of receiving
`point-in-time copies, whether by streaming or by file sharing. Hence, the
`claims are not limited to either embodiment, and, therefore, the streaming
`embodiment cited by Patent Owner does not limit the claims.
`Further, even looking at the streaming embodiment, we are not
`persuaded that metadata is required by database blocks. Patent Owner points
`only to a single streaming embodiment (PO Resp. 20), in which 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. Ex. 1001, 14:43–60. In an
`alternative embodiment, which is not addressed by Patent Owner, the
`unchanged blocks are eliminated at the production system and never sent to
`the database storage system. Id. at 14:64–15:3 (“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
`
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`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 second
`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, nothing
`in the specification 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).
`Therefore, in view of the entire disclosure of the ’361 patent and the
`plain language of the claims, we find that the intrinsic record before us does
`not justify limiting the term “database block” by reading in the “metadata”
`limitation not found in the claims. See Liebel-Flarsheim Co., 358 F.3d at 908.
`Patent Owner also argues additional evidence supports its proposed
`construction requiring data blocks to include metadata. For example, citing
`the testimony of Dr. Shenoy, Patent Owner asserts that all database
`management systems mentioned in the ’361 patent, such as Oracle and IBM
`DB2 (Ex. 1001, 6:5–9), require metadata in database blocks. PO Resp. 21–22
`(citing Ex. 2016 ¶¶ 41–46, 84–85). In the paragraphs cited by Patent Owner,
`Dr. Shenoy discusses various documents describing the database systems
`listed in the ’361 patent, including Oracle, Sybase, Microsoft SQL Server, and
`IBM DB2, and testifies that these database systems all require metadata in
`
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`database blocks.6 Ex. 2016 ¶¶ 43–46, 84–85 (citing testimony from
`Petitioner’s declarant, Dr. Zadok in another related case). Relying upon the
`testimony of Dr. Shenoy, Patent Owner also asserts that “[i]t is well known to
`one skilled in the art that a database block necessarily includes metadata.” PO
`Resp. 21 (citing Ex. 2016 ¶¶ 84–85); see also id. at 19 (“[T]hat database
`blocks include metadata is consistent with the ordinary meaning of the term in
`the database field and comports with how the term is used by every major
`database system provider.” (citing Ex. 2016 ¶¶ 41–46, 84)). In his
`Declaration, Dr. Shenoy discusses a treatise on database systems (Ex. 2019,
`“Database Systems”) and testifies that it is generally understood that a
`database block or a page will include metadata. Ex. 2016 ¶¶ 40–42 (citing Ex.
`2019, 29, 31).
`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 ’361 patent—is 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 (quoting C.R. Bard, Inc. v. U.S.
`Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004) (internal quotation marks
`omitted)).
`Petitioner argues that Patent Owner does not provide any evidence that
`database blocks require metadata in database systems other than relational
`database systems. See Reply 10–11. Petitioner correctly points out that the
`’361 patent specification states that the disclosed invention “can be used for
`
`
`6 However, neither Patent Owner’s brief nor Dr. Shenoy’s testimony discuss
`the MYSQL database system mentioned in the ’361 patent.
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`any database.” Id. at 10 (quoting Ex. 1001, 6:15–16). Further, the ’808
`patent states that “[a] database may be implemented using a database model,
`for example, a relational mode, object model, hierarchical mode or network
`model” and goes on to state that “the techniques disclosed can be used for any
`database.” Ex. 2002, 5:8–15 (emphasis added). Thus, we agree with
`Petitioner that the ’361 patent does not limit its disclosed invention to
`relational database technology.
`Similarly, the portion of the Database Systems treatise relied upon by
`Dr. Shenoy appears to describe features of a relational database system, not
`characteristics common to all databases in general. See, e.g., Ex. 2019, 29
`(“Collections such as relations are usually represented by placing the records
`that represent their data elements in one or more blocks.” (emphasis added)),
`31 (“Records representing tuples of a relation are stored in blocks of the disk
`. . . there is a block header holding information such as: . . . Information about
`which relation the tuples of this block belong to.” (first and last emphases
`added)).
`Relying on the testimony of Dr. Zadok submitted with its Reply
`(Ex. 1070), Petitioner asserts that, in other type of database systems, such as
`Google’s BigTable database, metadata is stored separately from the database
`blocks.7 Reply 11 (citing Ex. 1047, 4; Ex. 1070 ¶ 24). Petitioner also argues,
`
`
`7 Petitioner argues the definition of a “database” proposed by Patent Owner’s
`expert, “a collection of data that is organized so that it can be easily accessed,
`managed or updated,” encompasses many types of databases other than the
`relational databases. See Reply 10–11 (citing Ex. 2016 ¶ 33). In addition to
`the
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