Actifio, Inc.v.Delphix Corp.

Patent Trial and Appeal Board

Apr 12, 2016

12603545 (P.T.A.B. Apr. 12, 2016)

Trials@uspto.gov Paper 69
571-272-7822 Entered: April 12, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

ACTIFIO, INC.,
Petitioner,

v.

DELPHIX CORP.,
Patent Owner.
____________

Case IPR2015-00025 & IPR2015-000261
Patent 8,161,077 B2

Before HOWARD B. BLANKENSHIP, KARL D. EASTHOM, and
MINN CHUNG, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

1 As explained below, we hereby consolidate the two trials for purposes of
issuing this Final Written Decision.
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

2

I. INTRODUCTION
Petitioner, Actifio, Inc., filed a request for an inter partes review of
claims 1–7, 9, 10, 18–23, 25, and 26 of U.S. Patent No. 8,161,077 B2 (Ex.
1001, the “’077 patent”) under 35 U.S.C. §§ 311–319. Paper 1 (“Petition”
or “Pet.”). The Board instituted an inter partes review of these claims on
asserted grounds of unpatentability for obviousness. Paper 11 (“Dec. on
Inst.”). In related Case IPR2015-00026 involving the same parties, pursuant
to Petitioner’s inter partes request, the Board also instituted inter partes
reviews of claims 8, 11–13, 17, 24, 27–29, and 33 of the ’077 patent in
IPR2015-00026 (“’026 IPR”) on asserted grounds of unpatentability for
obviousness. See ’026 Paper 11 (“’026 Dec. on Inst.”). Based on a
substantial overlap of arguments and evidence presented in the two cases, to
administer the proceedings more efficiently, we exercise our authority under
35 U.S.C. § 315(d) to consolidate the two proceedings for purposes of
issuing one final written decision.
The Board has jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons discussed below, we determine Petitioner has shown by a
preponderance of the evidence that claims 1–13, 17–29, and 33 of the ’077
patent are unpatentable.
After institution of trial, Patent Owner filed a Patent Owner Response
(Paper 23, “PO Resp.”), to which Petitioner filed a Reply (Paper 32, “Pet.
Reply”). 2 Subsequently, Patent Owner moved to exclude (Paper 46, “PO

2 Unless otherwise indicated, we refer to public (including redacted) Papers
and Exhibits filed in IPR2015-00025.
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

3

Mot. to Exclude”) certain Exhibits, Petitioner opposed (Paper 53, “Pet.
Exclude Opp.”), and Patent Owner replied (Paper 56, “PO Exclude Reply”).
Patent Owner also filed Motions for Observation on certain cross-
examination testimony of Petitioner’s declarant, Dr. Erez Zadok (Paper 49,
“Obs. Zadok”), to which Petitioner filed Responses (Paper 57 (“Obs. Resp.
Zadok”) and Paper 55. Patent Owner also filed a Paper identifying allegedly
untimely evidence and evidence and arguments beyond the scope of
Petitioner’s Reply. Paper 58 (“Exclude Pet. Reply Evid.”). The parties filed
similar Papers and Exhibits in the ’026 IPR (to be designated, as indicated
above, with the “’026” prefix: for example, “’026 Paper” and “’026
Exhibit”).
A combined oral Hearing in this proceeding and related Cases
IPR2015-00014, IPR2015-00016, IPR2015-00019, IPR2015-00034,
IPR2015-00026, IPR2015-00050, IPR2015-00052, and IPR2015-00128 was
held on January 14, 2016. A Transcript of the Hearing is included in the
record as Paper 68 (“Tr.”).
A. Related Proceedings
The ’077 patent is the subject of Delphix Corp. v. Actifio, Inc., No.
5:13-cv-04613-BLF (N.D. Cal.). In proceedings involving the same parties,
the Board instituted inter partes reviews of U.S. Patent No. 8,150,808 B2 in
Cases IPR2015-00014, IPR2015-00016, IPR2015-00019, and IPR2015-
00034; U.S. Patent No. 8,548,944 B2 in Cases IPR2015-00050 and
IPR2015-00052; U.S. Patent No. 8,566,361 B2 in Cases IPR2015-00100 and
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

4

IPR2015-00108; and U.S. Patent No. 8,468,174 B1 in Case IPR2015-
00128.3
B. Asserted Grounds of Unpatentability
We instituted inter partes review on the following grounds of
unpatentability under 35 U.S.C. § 103(a):
Claims Challenged References
1, 3, 5–7, 9, 10, 18, 20–23,
25, and 26
Sanders4 and Edwards5
2, 4, and 19 Sanders, Edwards, and Patel6
8, 11–13, 24, and 27–29 Sanders, Edwards, and Data ONTAP
Guide 7
17 and 33 Sanders, Edwards, Data ONTAP
Guide, and Sarma8

3 Case IPR2015-00136 has been consolidated with IPR2015-00128.
4 Jawahar Lal & Roger Sanders, DB2: Cloning a Database using NetApp
FlexClone™ Technology, Network Appliance Inc., IBM Toronto Lab, TR-
3460 (Apr. 30, 2006) (“Sanders”) (Ex. 1013).
5 Edwards et al., FlexVol: Flexible, Efficient File Volume Virtualization in
WAFL, PROCEEDINGS OF THE ANNUAL TECHNICAL USENIX CONFERENCE,
129–142 (June 22–27, 2008) (“Edwards”) (Ex. 1014).
6 Dipesh Patel and Generosa Litton, Rapid Database Development and
Deployment, Network Appliance, Inc., WP-7014-0307 (Mar. 2007) (“Patel”)
(Ex. 1016).
7 Data ONTAP® 7.1 Data Protection, ONLINE BACKUP AND RECOVERY
GUIDE, Network Appliance, Inc. (Jan. 12, 2007) (“Data ONTAP Guide”)
(’026 Ex. 1117).
8 Sarma et al., U.S. Patent No. 7,631,021 B2 (Dec. 8, 2009) (“Sarma”) (’026
Ex. 1118).
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

5

C. The ’077 Patent
The ’077 patent describes a system and method to create a virtual
database, which involves obtaining multiple “point-in-time” (“PIT”) copies
of the database to be virtualized. See Ex. 1001, Abstract. In one virtual
database embodiment represented by Figure 2a, “production database system
110 . . . is the source of the database being virtualized” to create virtual
database 220 using virtual database files stored in database storage system
100. Id. at 7:52–54. A reproduction of Figure 2a of the ’077 patent follows:

Figure 2a depicts production database system 110, virtual database DB1
220, and virtual database system 130, which accesses virtual database 220.
To virtualize a production database, the system of the ’077 patent
makes a first PIT copy of the production database and stores an entire set of
database blocks representing the production database at that time in database
storage system 100. See Ex. 1001, 19:23–24, Figs. 10–13. Subsequent PIT
copies involve incremental changes and copy “only the blocks that changed
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

6

since the last PIT copy and may copy much less data compared to the first
PIT copy.” Id. at 19:27–29.
The system creates a virtual database (VDB) by creating VDB file
structures comprising VDB blocks that point to different PIT database
blocks. See id. at 19:15–50. For example, the system creates VDB file
structures 1050 that point to different PIT database blocks F11, G11, F22,
etc. See id. at 19:15–50; Fig. 10. Each time database storage system 100
receives an updated PIT copy reflecting database block changes in the
production database, the system updates the appropriate VDB blocks in a
VDB file to be “implemented as pointers to the actual database block that
stores the [updated] data.” See id. at 19:34–37.
A reproduction of Figure 10 from the ’707 patent follows:

Figure 10 shows “VDB Files for Time T2” in database storage system 100.
Figure 10 further shows that “VDB file structures 1050” includes blocks
V11, V12, V13, and V14 which point to database blocks F11 . . . F34 that
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

7

represent different PIT (i.e., at times T0, T1, and T2) copies of production
database blocks F1, F2, F3, and F4 at production database system 110. See
Ex. 1001, 19:33–34. Initially, all the production database blocks are copied
to create “[t]he first PIT copy 1030 made at time T0,” as represented by
database blocks F11, F12, F13, F14, G11, G12 . . . G15 in database storage
system 100. Id. at 19:23–24. Later, when database storage system 100
receives the PIT copy at time T2 and updates the VDB blocks, block V13
points to the updated data at block F33, which represents a change existing
at T2 to the data in block F3 in the production database (see id. at 19:41–43),
whereas VDB block V11 still points to the data in block F11 “since the
[production database] block F1 was never updated during copies made at
time T1 and T2” (id. at 19:38–39).
D. Illustrative Claim
Of the challenged claims, clams 2–7, 9, and 10 depend directly or
indirectly from independent claim 1. Claims 19–23, 25, and 26 depend
directly or indirectly from independent claim 18, which closely tracks
independent claim 1, with claim 18 reciting a “computer program product”
instead of a method. See Ex. 1001, 46–47 (Certificate of Correction).
Illustrative claim 1 follows:
E. Challenged Claim 1
1. A method for test and development of databases and
database applications using a virtual database system, the
method comprising:

linking a source database, wherein linking the source
database comprises receiving information identifying the source
database;

IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

8

loading a plurality of point-in-time copies of the source
database, wherein the loading comprises:

receiving database blocks for the point-in-time
copies of the source database, and

storing the database blocks on a storage system;
and

provisioning a development virtual database to a
development system and a test virtual database to a test
system, wherein provisioning each of the virtual databases
to a system comprises:

creating a set of files linked to the
stored database blocks on the storage system, and

mounting the set of files to the system
to allow a database server running on the system to
access the set of files.

II. ANALYSIS
A. Patent Owner’s Motion to Exclude Evidence
In inter partes reviews, documents are admitted into evidence subject
to an opposing party asserting objections to the evidence and moving to
exclude the evidence. 37 C.F.R. § 42.64. As the moving party, Patent
Owner has the burden of showing that an Exhibit is not admissible. 37
C.F.R. § 42.20(c).
1. The ’025 IPR
Patent Owner moves to exclude Petitioner’s Exhibits 1029, 1030,
1032, 1033, 1035–1146, 1048, 1049, 1054, and 1062. PO Mot. to Exclude
1. As Patent Owner notes, however, Petitioner does not rely on Exhibits
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

9

1030, 1032, 1033, 1035–1137, 1040, 1041, and 1045. Id. at 1 n.1. Of the
other objected-to Exhibits, except for Exhibits 1048 and 1049, we do not,
and need not, consider such evidence. We determine, for reasons set forth
below, that Petitioner has demonstrated by a preponderance of the evidence
that the challenged claims are unpatentable, without need for Petitioner’s
additional arguments or evidence that rely on those additional Exhibits.
Accordingly, Patent Owner’s Motion to Exclude Exhibits 1029, 1030, 1032,
1033, 1035–1146, 1054, and 1062 is dismissed as moot.
Exhibit 1048 is the Supplemental Declaration of Louis Hernandez.
Patent Owner argues that the Exhibit is “inadmissible hearsay.” PO Mot. to
Exclude 8‒9. The Supplemental Declaration, however, consists of
statements made by the Declarant while testifying in this proceeding—not
“hearsay” (Fed. R. Evid. 801(c))—but sworn testimony that is subject to
cross-examination. Indeed, Patent Owner cross-examined Mr. Hernandez
with respect to that testimony.9

9 Patent Owner’s allegation of “double hearsay” is not persuasive. PO Mot.
to Exclude 8; PO Exclude Reply 4–5. Patent Owner does not argue that it
objected to any NetApp documents that Mr. Hernandez relied upon as
hearsay. See Pet. Exclude Opp. 13; ’026 Pet. Exclude Opp. 13 (Paper 12
(contending no hearsay objection by Patent Owner to the NetApp documents
at issue: i.e., Sanders, Patel, and Data ONTAP Guide)); PO Exclude Reply
4–5 (replying to Petitioner’s contention but not disputing a lack of an
objection). In addition, as discussed herein and further below, Mr.
Hernandez relies on document dates, other indicia, and his knowledge of
NetApp’s standard practices about dated NetApp documents, not merely
dates on documents. See Pet. Reply 4–5 (citing Ex. 1020 ¶ 17; 1048 ¶ 7);
Pet. Exclude Opp. 7–13 (citing Ex. 1020 ¶ 6; Ex. 1048 ¶¶ 7, 10; Ex. 2028,
42:24–37, 47:5–11, 94:12–95:3, 101:17–102:9 (Hernandez Deposition
testimony)).
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

10

Patent Owner also argues that Mr. Hernandez lacks personal
knowledge to testify. Mr. Hernandez’s personal knowledge of practices
about NetApp document publications comes from his review and recognition
of documents published before and during his tenure as an employee of
NetApp. See Ex. 1020 ¶¶ 1–6; Ex. 1048 ¶¶ 3–11. On this record, ample
basis exists for him to testify with personal knowledge of the facts under
FRE 602. We are not persuaded otherwise by Patent Owner’s
characterization of Mr. Hernandez’s direct and cross-examination testimony.
See PO Mot. to Exclude 9–11.
Patent Owner moves to exclude Exhibit 1049 as untimely. Mot. to
Exclude 1, n.1 (citing 37 C.F.R §§ 42.23 (b), 42.123). Contrary to this
argument, Petitioner cites this document as rebuttal evidence in response to
Patent Owner’s claim construction (i.e., to show that a well-known database
does not use metadata in database blocks and uses metadata external to the
block). See Pet. Reply 9–10 (arguing that Patent Owner’s preliminary
database block construction at a district court did not include metadata, and
that the alleged metadata requirement only occurred after Petitioner filed
“the last of its IPR petition[s],” citing Ex. 1022, 6 (database block
construction after e-mail chain of Oct. 24, 2014)); PO Resp. 24, nn.6–7
(citing Ex. 2025, 4 (joint district court claim construction, Oct. 27, 2014)).
Patent Owner’s Motion to Exclude Exhibits 1048 and 1049 is denied.
2. The ’026 IPR
Patent Owner moves to exclude Petitioner’s ’026 Exhibits 1117,
1134–1136, 1138–1148, 1150, 1151, 1153, 1156, and 1164. ’026 Paper 45
(“Motion to Exclude”), 1. As Patent Owner notes, however, Petitioner does
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

11

not rely on ’026 Exhibits 1134–1136, 1138–1142, and 1147. Id. at 1 n.1. Of
the other objected-to Exhibits, except for ’026 Exhibits 1117 and 1150, we
do not, and need not, consider such evidence. We determine, for reasons set
forth below, that Petitioner has demonstrated by a preponderance of the
evidence that the challenged claims are unpatentable, without need for
Petitioner’s additional arguments or evidence that rely on those additional
Exhibits. Accordingly, Patent Owner’s motion to exclude ’026 Exhibits
1134–1136, 1138–1148, 1150, 1151, 1153, and 1156 is dismissed as moot.
Patent Owner argues that ’026 Exhibit 1150 (Supplemental
Declaration of Louis Hernandez) is “inadmissible hearsay,” and that Mr.
Hernandez lacks personal knowledge to testify regarding publication. See
’026 Paper 45, 1. Based on the determination above, ’026 Exhibit 1150,
which is a copy of Exhibit 1048 discussed above, is admissible.
According to Patent Owner, ’026 “Exhibit 1117 is allegedly a user
manual for a NetApp product which Petitioner relies upon for its prima facie
case of obviousness.” ’026 Paper 45, 1‒2. Patent Owner moves to exclude
the Exhibit (Data ONTAP Guide) as not being authenticated pursuant to
Federal Fed. R. Evid 901. Id.
Petitioner provides reasons why it contends Data ONTAP Guide is
self-authenticating under Fed. R. Evid 902 (7). ’026 Paper 51, 13–14. A
document may be authenticated by “the appearance, contents, substance,
internal patterns, or other distinctive characteristics of the item, taken
together with all the circumstances.” Fed. R. Evid. 901(b)(4). In addition to
relying on NetApp trademark symbols, copyright notices, and other indicia
(id. at 13), Petitioner submits the following:
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

12

The cover page includes NetApp’s company address, telephone
number, website, and email address for providing comments to
NetApp about the documents. Indeed, the website and email
address on Ex. 1117 are hyperlinked, and clicking on them
directly links a user to NetApp’s website or opens an email
addressed to NetApp respectively. Further, the Data ONTAP
Guide contents include repeated references to NetApp and
various NetApp technologies. These distinctive characteristics
are more than sufficient for authentication.

Id. at 14. Moreover, Petitioner, relying on the testimony of Mr. Hernandez,
points out evidence and testimony that is sufficient to authenticate the
document pursuant to Rule 901(b)(1). See ’026 Paper 45, 13–14. Contrary
to Patent Owner’s argument, Mr. Hernandez has sufficient knowledge to
authenticate Data ONTAP Guide. See ’026 Paper 45, 13–14; ’026 Paper 51,
2; ’026 Ex. 1122 ¶¶ 1–6, 10 (Data ONTAP Guide); ’026 Ex. 1150.
We, therefore, are not persuaded that Data ONTAP Guide is not
authenticated at least under Federal Rules of Evidence 901(a), (b)(1), (b) (4),
and 902 (7). On this record, we accept ’026 Exhibit 1117 for what it
purports and is alleged to be: A “Data Protection Online Backup and
Recovery Guide” for a NetApp product, published by NetApp, for the
purpose of providing detailed instructions to its customers and potential
customers. See ’026 Paper 45, 13; ’026 Ex. 1117, 1 (emphasis omitted).
Patent Owner’s Motion to Exclude ’026 Exhibits 1117 and 1150 is
denied.
B. Printed Publication—Sanders, Patel, and Data ONTAP Guide
Patent Owner contends that of Sanders, Patel, and Data ONTAP
Guide are not a prior art printed publications in accordance with 35 U.S.C.
§§ 102 and 311(b). PO Resp. 1; ’026 PO Resp. 1. Underlying facts inform
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

13

the legal determination as to whether a document is a printed publication.
Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014). The
determination of whether a document is a “printed publication” under 35
U.S.C. § 102(b) involves a case-by-case inquiry into the facts and
circumstances surrounding its disclosure to members of the public. In re
Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). Public accessibility is a
key question in determining whether a document is a printed publication and
is determined on a case-by-case basis. Suffolk Techs., 752 F.3d at 1364. To
qualify as a printed publication, a document “must have been sufficiently
accessible to the public interested in the art.” In re Lister, 583 F.3d 1307,
1311 (Fed. Cir. 2009).
Initially, Patent Owner’s contention that Petitioner cannot rely upon
evidence not submitted with the Petition to show that the documents are not
prior art is not supported. PO Resp. 3–5; Paper 58; ’026 PO Resp. 3–5. In
Patent Owner’s view, Petitioner must make out a prima facie case of
unpatentability in its Petition, which includes the substantive element of the
documents being publicly accessible and prior art. PO Resp. 4; Paper 58, 1;
’026 PO Resp. 4. That position, correct as stated, fails to account for the
difference between the threshold for instituting a trial, 35 U.S.C. § 314(a),
and proving unpatentability of a claim in trial, 35 U.S.C. § 316(e). As noted
by our reviewing court, “there is a significant difference between a
petitioner’s burden to establish a ‘reasonable likelihood of success’ at
institution, and actually proving invalidity by a preponderance of the
evidence at trial.” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed.
Cir. 2016) (quoting 35 U.S.C. § 314(a) and comparing § 316(e)).
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

14

Based on the information presented in the Petitions and Patent
Owner’s Preliminary Responses, we determined there was a reasonable
likelihood that Petitioner would prevail in its challenges that included the
three publications. See 35 U.S.C. § 314(a) (threshold for instituting inter
partes review); see also 37 C.F.R. § 42.108(c) (“The Board’s decision [on
Institution] will take into account a patent owner preliminary response where
such a response is filed.”). Patent Owner did not challenge the prior art
status of any of the applied patents or publications in its Preliminary
Responses. Patent Owner, in fact, stated that “the relevant NetApp features
were disclosed to the Patent Office during the prosecution of the challenged
claims.” Paper 10, 2, 54 (characterizing references as “redundant references
describing those same NetApp features” disclosed during prosecution and
stating that Patent Owner “disclosed to the Patent Office every NetApp
feature that Petitioner now cites in the Petition”); ’026 Paper 10, 2, 54
(same). We do not suggest that a patent owner must raise any “printed
publication” issues in a preliminary response in order for the Board to
consider such issues in the preliminary proceeding phase. In this case,
however, based in part on the information in Patent Owner’s Preliminary
Response and in part on the printed dates and the lack of indicia of
confidentiality or internal, non-public distribution in the three challenged
prior art disclosures, we determined that Petitioner had met its burden for a
threshold showing to proceed to trial.
Patent Owner also argues that Petitioner cannot rely on two specific
Declarations in each Reply. PO Resp. 2–3 (citing Ex. 1020; Ex. 1028); ’026
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

15

PO Resp. 23 (citing Ex. 11[2]2; Ex. 1130).10 Exhibit 1028 and ’026 Ex.
1130 are no longer relevant.11 In the relevant set of Declarations, Louis
Hernandez provides the same “Hernandez Declaration” in each case: i.e.,
Ex. 1020 and ’026 IPR, Ex. 1122.
Patent Owner submits that Petitioner provided Patent Owner with the
Hernandez Declaration in response to Patent Owner’s objections to evidence
(although Patent Owner does not tell us its basis for the objections). PO
Resp. 2; ’026 PO Resp. 2. Board rules authorize serving supplemental
evidence in response to an objection. 37 C.F.R. § 42.64(b)(2). Accordingly,
Patent Owner lacks a basis to complain that evidence has been produced and
served in response to its objections. See Pet. Reply iv (stating Ex. 1020 was
served on May 12, 2015). Petitioner also relies, properly, on the
supplemental evidence in its Replies (i.e., as evidence in reply to Patent
Owner’s arguments in its Response that the three references are not printed
publications).
Turning to the substance of the Hernandez Declaration, Mr.
Hernandez testifies that he is currently employed by Petitioner, was
employed by NetApp from 2004 to 2009, and was a NetApp customer from
2000 to 2004. Ex. 1020 ¶¶ 1, 2, 4. Mr. Hernandez testifies further that for
most of his time at NetApp, as a Systems Engineer, he was responsible for
marketing NetApp’s products and services to numerous customers,
prospective customers, business partners, and/or alliances. Id. ¶ 3. “During

10 Patent Owner cites Exhibit 1112 instead of Exhibit 1122––an apparent
typographical error. See ’026 IPR, PO Resp. 3.
11 These Exhibits (Declarations of Joseph Ortiz) are expunged at Petitioner’s
request. Paper 43; ’026 Paper 42.
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

16

the 2000–2009 time-frame, to support its marketing efforts, it was NetApp’s
standard practice to publish technical reports, white papers, and product
manuals or guides to customers, potential customers, business partners, and
alliances.” Id. ¶ 6. “These documents were published, according to standard
practice, as of the month and year that appeared on the face of the
documents.” Id. Mr. Hernandez testifies that he has personal knowledge of
and recognizes all three documents, and that there were published during his
tenure at NetApp. Id. ¶¶ 7, 10 (Data ONTAP Guide), 11 (Sanders), 12
(Patel).
Patent Owner argues Mr. Hernandez does not declare that Sanders,
Patel, and Data ONTAP Guide, and were “publicly accessible.” PO Resp. 2;
’026 IPR, PO Resp. 2. Patent Owner submits the following: Even if it was
NetApp’s “standard practice” to provide its documents to its “customers,
potential customers, business partners and alliances,” that does not establish
that these documents were available to the public, but instead shows at most
that they were only available to a subset of entities affiliated with NetApp.
PO Resp. 2–3; ’026 PO Resp. 2–3.
Petitioner replies with a Supplemental Declaration from Mr.
Hernandez. Pet. Reply 6‒7 (citing Ex. 1048); ’026 Pet. Reply 6–7 (citing
’026 Ex. 1150).12 Mr. Hernandez testifies that he uses the term “publish” or
“published” as referring to documents being publicly distributed to
customers, potential customers, business partners, and alliances as of the
month and year that appeared on the face of the documents, non-

12 As indicated above, Exhibit 1048 and ’026 Ex. 1150 appear to be identical
in testimony.
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

17

confidentially. Ex. 1048 ¶ 5. According to Mr. Hernandez, NetApp had
more than two hundred systems engineers and other sales personnel during
the relevant timeframe (id. ¶ 4) and that technical reports, white papers,
product manuals, and product guides were freely distributed to support its
marketing efforts (id. ¶ 7). Mr. Hernandez testifies further that it was
important for NetApp to date the documents accurately so that customers
and potential customers could understand if a specific document accurately
reflects features for specific versions of NetApp’s products or if a document
was outdated or updated to reflect more current features. Id. ¶ 10. Further,
Petitioner provides evidence that by 2007 there were more than 94,000
NetApp systems deployed and the company had thousands of customers in
138 countries. Pet. Reply 6; Ex. 1058, 3; ’026 Pet. Reply 6; ’026 Ex. 1163,
3.13
As part of routine discovery (37 C.F.R. § 42.51(b)(1)(ii)), Patent
Owner had the opportunity to cross-examine Mr. Hernandez during Patent
Owner’s first discovery period but elected not to. Patent Owner cross-
examined Mr. Hernandez in its second discovery period regarding the
testimony in his Supplemental Declaration. We have considered the Hearing
Transcript (“Tr.”), Patent Owner’s Motion for Observation on Cross-
Examination Testimony of Mr. Hernandez (Paper 47; ’026 Paper 46) and
Petitioner’s Response to Owner’s Motion for Observation on Cross-
Examination Testimony of Mr. Hernandez (Paper 57; ’026 Paper 52),
insofar as they relate to public accessibility of Sanders, Patel, and Data

13 We find that Exhibit 1058 (and corresponding ’026 Ex. 1163), a NetApp
Form 10-K SEC filing, was properly submitted by Petitioner as evidence in
rebuttal to Patent Owner’s public accessibility challenge in its Response.
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

18

ONTAP Guide.14 We acknowledge the potential for bias in Mr.
Hernandez’s testimony as a present employee of Petitioner.
We find, however, the testimony in Mr. Hernandez’s Declarations as
to public accessibility of the three NetApp documents to be credible.
Sanders purports to be a technical report (“TR-3460 . . . April 30, 2006”)
showing how to use “NetApp FlexCloneTM Technology” so that “you can
create an exact copy of a DB2 database,” using a NetApp solution “that
helps database and system administrators” “to create an instant clone.” Ex.
1013, 1, 3 (emphasis omitted). Patel purports to be a “March 2007”
“NetApp White Paper” (“WP-7014-0307”) and describes similar NetApp
product “solutions” for “midsize businesses to global corporations” that
[d]atabase administrators and applications developers can use” as “simple
but powerful tools to quickly and easily create local or remote database
clones in seconds, using little additional storage.” Ex. 1016, 1, 3. Data
ONTAP Guide purports to be a NetApp “Data Protection Online Backup and
Recovery Guide,” with “Part number 210-02020_A0 Updated for Data
ONTAP 7.1.2 on 12 January 2007,” and includes Data ONTAP 7.1
nomenclature. ’026 Ex. 1117, 1 (emphasis omitted). Dr. Zadok points out
that Sanders expressly refers to Data ONTAP Guide. See Ex. 1013, 50; ’026
Ex. 1109 ¶ 109. Sanders lists a website for it. Ex. 1013, 50.
As an earlier panel of the Board has found, a dated technical
document, having no indication of being a mere draft or an internal paper, is

14 During the Hearing, Patent Owner asked for, and we granted, additional
time to consider its oral Hearing arguments regarding alleged new issues
(regarding publication) raised in Petitioner’s Reply in lieu of filing a Sur-
Reply. See Tr. 211:16–212:18; 224:13–21; 237:1–25.
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

19

“a type of document whose very purpose is public disclosure.” Veeam Sw.
Corp. v. Symantec Corp., Case IPR2014-00089, slip op. at 14 (PTAB Apr.
25, 2014) (Paper 9).
Further regarding Sanders, according to Petitioner, in response to
Patent Owner’s objections,
Petitioner timely provided a declaration from the office
manager of the Internet Archive (Wayback Machine). Ex. 1023,
Affidavit of C. Butler at ¶¶ 1–6, pp. 0231-292. Based on the
recorded dates, Sanders was publicly archived by Wayback
from NetApp’s website by November 22, 2006. See Ex. id. at
p. 0231 (showing date of “20061122”); id. 1023 ¶ 5 (explaining
[yyyy][mm][dd] format of dates in archived URLs). An
affidavit from the Internet Archive is sufficient to show public
availability as of recorded dates listed in the URLs. Par
Pharma v. Jazz Pharma, IPR2015-00546, Paper 25 at 25.

Pet. Reply 4. Exhibit 1023, Affidavit of Cristopher Butler, supports
Petitioner regarding Wayback’s archival of Sanders. Ex. 1023 ¶¶ 1–6,
pp. 231–92, 223 (listing “TR-3460 DB2: Cloning a Database using
NetApp FlexClone Technology (PDF)” (emphasis deleted)).
“A given reference is ‘publicly accessible’ upon a satisfactory
showing that such document has been disseminated or otherwise made
available to the extent that persons interested and ordinarily skilled in the
subject matter or art exercising reasonable diligence, can locate it.” SRI
Int’l, Inc. v. Internet Sec. Sys., Inc. 511 F.3d 1186, 1194 (Fed. Cir. 2008)
(quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed.
Cir. 2006)). In view of the foregoing considerations, we find that Petitioner
has established, by a preponderance of the evidence, that Sanders (April 30,
2006), Patel (March, 2007) and Data ONTAP Guide (Jan. 12, 2007) were
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

20

available to the interested public at least more than one year before October
21, 2009, the earliest possible priority date of the ʼ077 patent. Therefore, on
this record, Sanders, Patel, and Data ONTAP Guide are printed publications
under 35 U.S.C. §§ 102 and 311(b).
C. Claim Construction
In an inter partes review, claim terms in an unexpired patent are given
their broadest reasonable construction in light of the specification of the
patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo
Speed Techs., LLC, 793 F.3d 1268, 1277–79 (Fed. Cir. 2015) (“Congress
implicitly approved the broadest reasonable interpretation standard in
enacting the AIA,” and “the standard was properly adopted by PTO
regulation.”), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 136
S. Ct. 890 (mem.) (2016). In general, claim terms presumptively carry their
ordinary and customary meaning in view of the specification, as would be
understood by one of ordinary skill in the art at the time of the invention. In
re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007); Phillips v.
AWH Corp., 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 claim generally does not
incorporate features of a particular embodiment appearing in the written
description if the claim recites broader language or otherwise does not recite
those features. 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); Phillips, 415 F.3d at 1323 (“[A]lthough the specification often
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

21

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,” as addressed below. No other
claim terms require express construction to resolve the issues raised in this
inter partes review. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
200 F.3d 795, 803 (Fed. Cir. 1999) (only disputed claim terms need to be
construed, and only to the extent necessary to resolve a material issue in
dispute).
1. Database Block
i) 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. 17. Petitioner argues the correct interpretation of the term is “a
unit of data used by a database.” Pet. 10 (emphasis omitted). For the
reasons discussed below, we conclude the disputed term is not limited as
Patent Owner contends.
Claim construction analysis begins by considering the language of the
claims themselves. Phillips, 415 F.3d at 1314. None of the challenged
claims recite the term “metadata.” Only relevant claims 32 and 33 of
U.S. Patent No. 8,150,808 B2 (the “’808 patent”) in related Cases IPR2015-
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

22

00014, IPR2015-00016, IPR2015-00019, and IPR2015-00034, recite
“metadata.” See Ex. 2001, 44–45. Claims 32 and 33 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 in the case at hand, or any other challenged claims to require
metadata, they could have done so by explicitly modifying the disputed term
with “metadata,” but did not.
Therefore, to limit the disputed term “database blocks,” 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).
Patent Owner asserts that a definition of “database block” appearing
in the “related ’808 [patent] specification” applies to the case at hand. PO
Resp. 17–18. Patent Owner asserts that the following passage in the
Summary section of the ’808 patent 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.
Id. at 17–18 (quoting Ex. 2001, col. 2:7–12).
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

23

Not employing the passage in the ’077 patent itself implies that there
is no clear intent to limit the claims in the ’077 patent. In any event,
assuming that the passage somehow has written description support in, and
applies to, the ’077 patent, 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.” Ex. 2001, 2:9–11.15 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. As discussed below, other
portions of the Specification indicate that some database blocks do not
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)); see also id. at 908 (passages in the Summary of the Invention section
of a patent do 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”).

15 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 that this addition is not part of an explicit definition, rather, it represents
embodiments within the defined term. Furthermore, Patent Owner fails to
explain how to interpret that phrase or how it presents a material issue
related to the prior art.
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

24

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) (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 Tech. “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, a
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. 2017, “Shenoy
Declaration”), that if a database block does not include metadata, the system
disclosed in the ’077 patent would not work as described. PO Resp. 18–19.
For example, Patent Owner argues that a database block must include
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

25

metadata because the disclosed system analyzes the metadata of each block
to store only the incremental changes made to the production database. Id.
at 19 (citing Ex. 1001, 14:23–24, 32–35). Patent Owner contends that
storing such incremental changes “is one of the main functions” of the
claimed system essential to achieving “a main purpose” of the invention—
“to efficiently provide virtual database . . . without proliferating redundant
copies of database data.” Id. at 19 (citing Ex. 1001, 3:5–7, 7:22–26; 7:32–
35; 8:41–49 Ex. 2017 ¶¶ 63–67, 76, 79, 80). 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 19–20 (citing Ex. 1001,
15:15–19; Ex. 2017 ¶¶ 79, 84).
Patent Owner’s arguments are unpersuasive because the described
system will work without requiring metadata in the claims, and any 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.”).
Moreover, the ’077 patent Specification explicitly makes a distinction
between database blocks and other stored information, including metadata:
“The database storage 100 system retrieves information . . . . The
information retrieved includes databask blocks comprising data stored in the
database, transaction log information, metadata information related to the
database, information related to users of the database and the like.” Ex.
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

26

1001, 9:29–35 (emphasis added). Furthermore, as noted by Petitioner, the
’707 patent (and 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,” such as a network file system
(NFS). Pet. Reply 8 (quoting Ex. 1001, 8:52–56; citing Ex. 1031, 67:18–
68:7, 192:13–19; Ex. 1063 ¶¶ 9–11). As discussed below, the written
description does not show that the file sharing embodiment requires
metadata.
In the streaming embodiment relied upon by Patent Owner, as
represented by Figures 4 and 5 and generally described in column 13, line 7
to column 16, line 8 of the ’707 patent, the production database system,
upon receiving a request for data from the PIT copy manager of the database
storage system (Ex. 1001, 13:19–31), packages the production database data
“into a format that can be processed by the PIT copy manager” (id. at 13:50–
53) and builds the appropriately formatted data into a data stream that is sent
to the PIT copy manager. Id. at 13:55–61; see id. at 4:23–30 (describing
Figs. 4 and 5 as relating to “an embodiment of the invention” “for
processing a stream of data”). Upon receiving the data stream, the PIT copy
manager processes the data stream to identify database blocks contained in
it. Id. at 14:23–31. In this data streaming embodiment, “[e]ach database
block includes metadata,” which is used to “identify database blocks . . . in
the stream of data.” Id. at 14:22–25. When saving a retrieved database
block into a transferred or copied database file on the database storage
system, the PIT copy manager “analyzes the database block metadata to map
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

27

. . . the database block to [the] database file and a location within the file.”
Id. at 15:17–19.
Notwithstanding this embodiment, we find nothing that limits the
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. Nevertheless, the
streaming embodiment does not show that a 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., id. at 13:62 (describing “other
embodiments”); 14:1–5 (“In these embodiments, 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);16 7:3–10(“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).
In the file sharing system, the database file on the production system
can be accessed and copied directly by “mount[ing] the production DB data

16 The phrase “metadata associated with database blocks” implies, like the
passage quoted above, that any metadata, may be, but need not be, in the
database blocks. See Ex. 1001, 9:29–35 (describing database blocks as
separate information from metadata).
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

28

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 8:49–
56. 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 in each embodiment. In the data stream
embodiment, the data stream may include unnecessary database blocks, such
as the blocks that did not change since the last PIT 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 13:32–42;
14:32–53. In an alternative embodiment not addressed by Patent Owner, the
unchanged blocks are eliminated at the production system and never sent to
the database storage system. Id. at 14:53–59 (“In [sic] other 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. Therefore, the Specification does not indicate that copying
database files by streaming data constitutes the essence of the claimed
invention rather than a preferred embodiment. Such a preferred embodiment
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).
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

29

In addition, the ’077 patent Specification generally states “structures
and functionality presented as a single component may be implemented as
separate components.” Ex. 1001, 32:29–32 (emphasis added); Pet. Reply
12. As Petitioner points out, the ’077 patent specifically describes
“structures Fi and Gi [that] represent database blocks stored in the files
1010 respectively.” Pet. Reply 12 (quoting Ex. 1001, 19:19–20) (emphasis
by Petitioner). In the context of a database block, these disclosures bolster
the disclosure cited above (see, e.g., supra note 16, Ex. 1001, 15:33–35
(discussed below)) and show that metadata may be separate from or
combined with a database block, as Petitioner argues. See Pet. Reply 12
(citing Ex. 1063 ¶ 31).
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 and 18 recite receiving PIT copies of a source database and storing
database blocks associated with the received PIT copies on a storage system.
But the claims do not say anything about a particular method of transferring
PIT copies, whether by streaming or by file sharing. Hence, the claims
cannot be limited to either embodiment, and, therefore, the streaming
embodiment cited by Patent Owner does not limit the claims.
In addition, consideration of differences among the claims of the ’808
patent (upon which Patent Owner relies as noted above), supports the
conclusion that Patent Owner’s cited passages are not limiting. Claim 29,
which depends from claim 1 of the ’808 patent, recites “receiving point-in-
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

30

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). See Ex. 2001, 45–46.
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 Ex. 2017 ¶¶ 79–80; PO Resp.
18–19 (citing Ex, 2017 ¶¶ 76, 79–80).
Claim 1 of the ’077 patent, which is similar to claim 1 of the ’088
patent, is presumed to be broader and not limited by the additional
limitations relating to streaming and metadata recited in these dependent
claims of the related ’088 patent. “[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. in City of New York v. Symantec Corp.,
No. 2015-1146, 2016 WL 386068, at *10 (Fed. Cir. Feb. 2, 2016) (citing
Phillips, 415 F.3d at 1314–15; Acumed LLC v. Stryker Corp., 483 F.3d 800,
806 (Fed. Cir. 2007)).
In addition to the citations described above that show that database
blocks do not require metadata, the ’077 patent describes storing database
blocks as follows: “The file in which the database block is saved comprises
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

31

a file header including metadata associated with the file and a sequence of
database blocks.” Ex. 1001, 15:33–35. This passage shows 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, the Specification does
not clearly and consistently describes the claimed invention as requiring
metadata in database blocks.
Therefore, in view of the entire disclosure of the ’707 patent and the
plain language of the claims, we find, notwithstanding the statement in the
summary section of the ’808 patent relied upon by Patent Owner, “[a]
portion of the database block stores metadata associated with the database
block” (Ex. 2001, 2:10–12), that the 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 Tech. Berhad, 447 F.
App’x at 151.
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. 1019, “Zadok Decl.”),
Patent Owner asserts that requiring metadata in database blocks “comports
with how the term is used by every major database system provider.” PO
Resp. 18 (citing Ex. 2017 ¶¶ 41–46, 77). Patent Owner also argues that
databases mentioned in the ’077 patent, such as Microsoft SQL and IBM
DB2 (Ex. 1001, 5:55–67), require metadata in database blocks. See PO
Resp. 23 (citing Ex. 2018 ¶ 158, n.11), n.5 (citing Ex. 2019, 58–59, n.7). In
the paragraphs cited by Patent Owner, Dr. Shenoy discusses various
documents describing some of the database systems listed in the ’077 patent,
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

32

including Oracle, Sybase, Microsoft SQL Server, and IBM DB2, and
testifies that these database systems all require metadata in database
blocks.17 Ex. 2017 ¶¶ 43–46, n.11.
The extrinsic evidence cited by Patent Owner 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
describe embodiments of the ’707 patent, the evidence would be insufficient
to limit the term “database block,” because even if the ’077 does not
describe database blocks that do not require metadata (it does), 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 limitation, it would not be proper
to import from the patent’s written description limitations that are not found
in the claims themselves.”) (emphasis added) (citations and internal
quotation marks omitted); see also Dealertrack, Inc. v. Huber, 674 F.3d
1315, 1322 (Fed. Cir. 2012) (“The disclosure of multiple examples does not
necessarily mean that such list is exhaustive or that non-enumerated
examples should be excluded.”).

17 However, neither Patent Owner’s Response nor Dr. Shenoy discusses
whether the MYSQL database system mentioned in the ’707 patent requires
database blocks with metadata. See Ex. 2017 ¶ 43, n. 11 (citing Ex. 1001,
5:63–67 and listing “MYSQL, and the like,” without addressing metadata in
MYSQL.
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

33

In addition to the documents describing various commercially
available database systems, Dr. Shenoy also discusses a treatise on database
systems and testifies that it is generally understood that a database block or a
page will include metadata. Ex. 2017 ¶ 40, n.8 (citing Ex. 2014 (“Molina”),
29. The portion of the Molina treatise cited by Dr. Shenoy, however,
describes features of a relational database system, not characteristics
common to all databases in general. See, e.g., Ex. 2014, 29 (“Collections
such as relations are usually represented by placing the records that
represent their data elements in one or more blocks.”) (emphasis added), see
also id. at 31 (“Records representing tuples of a relation are stored in blocks
of the disk . . . . [T]here is a block header holding information such as: . . .
Information about which relation the tuples of this block belong to.”) (first
and last emphasis added).18 Furthermore, rather than showing a normal
meaning of a “database block,” the cited page shows that Molina refers to
“one or more blocks,” “blocks of the disk,” and “a disk block,” for example,
stating “it is normal for a disk block to hold only elements of one relation,
although there are organizations where blocks hold tuples of several
relations.” Ex. 2014, 29. In other words, similar to the ’077 patent
Specification, as discussed further below, Molina does not support an
alleged normal meaning of a “database block”––it obscures any alleged
normal meaning of a database block because it does not use that term. See
Pet. Reply 11 (arguing that all of Patent Owner’s related patents repeatedly
interchange “data block” and “database block”).

18 Dr. Shenoy also cites to pages 20 and 21 of Exhibit 2014, but these pages
correspond to the Table of Contents in Molina. See Ex. 2017 ¶ 40, n.8.
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

34

Petitioner contends that Patent Owner does not provide any evidence
that database blocks require metadata in database systems other than
relational database systems. See Pet. Reply 10. Petitioner correctly points
out that the ’077 patent Specification announces that the disclosed invention
“can be used for any database.” Id. (quoting Ex. 1001, 6:6–7 (emphasis by
Petitioner).) Relying on supplemental testimony of Dr. Zadok (Ex. 1063)
submitted with its Reply, Petitioner asserts that, in other types of database
systems, such as Google’s BigTable database, metadata is stored separately
from the database blocks.19 Pet. Reply 10–11 (citing Ex. 1049, 4; Ex. 1063
¶ 22). Petitioner also argues, citing the testimony of Dr. Zadok and another
treatise on database systems (Ex. 1050, “Elmasri”), that a “flat file
database,” such as a comma separated value (CSV) file used by spreadsheet
applications, do not have metadata in its blocks. Pet. Reply 11 (citing
Ex. 1063 ¶¶ 23–25, Ex. 1050, 431; Ex. 1053 (flat file database “is unlike a
relational database” according to tekopedia.com); Ex. 1055, 15 (examples of
flat files or ordinary text fields). Therefore, Petitioner asserts that the

19 Petitioner argues the definition of a “database” proposed by Dr. Shenoy,
“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 Pet. Reply 10–11 (citing Ex. 2017 ¶ 33). In
addition to disclosing that “the techniques disclosed can be used for any
database,” the ’707 patent provides another broad definition—“[a] database
comprises data stored in a computer for use by computer implemented
applications.” Ex. 1001, 5:59–60, 6:6–7. Under either description or Mr.
Shenoy’s testimony, we agree with Petitioner that a “database” encompasses
many types of databases other than the relational databases, including
Google’s BigTable, flatfiles, spreadsheet databases, and “any database.”
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

35

ordinary meaning of database block does not require including metadata.
See id.; Ex. 1063 ¶ 25.20
Petitioner also relies on Dr. Zadok’s testimony that contradicts Dr.
Shenoy’s testimony in several aspects. Pet. Reply 9–10 (citing Ex. 2003,
271, 273; Ex. 1001, 14:42–49; Ex. 1063 ¶¶ 13–18). Dr. Zadok explains that
at least Oracle and IBM DB2 also include empty database blocks without
metadata, explains that Patent Owner relies on relational databases, and
concludes that “[t]he ordinary meaning of the term ‘database block’ does not
include metadata.” Ex. 1063 ¶¶ 13, 21, 25
We agree with Petitioner that the extrinsic evidence Patent Owner
relies upon to argue for a limited ordinary meaning rests on relational
databases. Because the challenged claims plainly recite “database,” and,
therefore, are not limited to relational databases, Patent Owner’s evidence,
even assuming it shows that most or all relational databases have database
blocks that require metadata, does not establish an ordinary and customary
meaning of “database blocks” recited in the claims. Therefore, we find
Patent Owner’s extrinsic evidence regarding ordinary meaning does not
overcome the intrinsic record of this case. See Phillips, 415 F.3d at 1318
(“[A] court should discount any expert testimony that is clearly at odds with
the claim construction mandated by the claims themselves, the written
description, and the prosecution history, in other words, with the written

20 Similar to Exhibits 1020 and 1048 discussed above, Patent Owner
characterizes cited Exhibits 1049, 1050, 1053, and 1055 as improperly
submitted evidence, because they do not appear in the Petition. Paper 58, 1–
2. Contrary to the characterization, we find this Exhibit evidence responsive
to Patent Owner’s arguments regarding the claim construction of a database
block.
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

36

record of the patent.”) (quotation marks omitted). Furthermore, we are
persuaded by Petitioner’s evidence that certain well-known databases,
including Google’s BigTable database and other databases, such as flat file
databases, as discussed immediately above, do not require metadata in
database blocks, and, therefore, find that the evidence in this case does not
establish a widely accepted meaning of “database block” in the field of
database systems that requires metadata to be necessarily included in a
database block. See supra, note 19; Ex. 1063 ¶¶ 21–25 (discussing and
citing Exs. 1050, 431–32; Ex. 1053; Ex. 1055, 15; Ex. 1049, 4).
Moreover, notwithstanding the competing extrinsic evidence
regarding ordinary meaning from the parties, our focus in claim construction
must properly remain with written description and the language of the
claims. See Kara Tech. Inc. v. Stamps.com Inc., 582 F.3d 1341, 1348 (Fed.
Cir. 2009) (“It is not uncommon in patent cases to have [] dueling experts.
When construing claims, however, the intrinsic evidence and particularly the
claim language are the primary resources.”). Upon weighing the competing
extrinsic evidence regarding ordinary meaning from the parties and in view
of our analysis of the written description and claim language discussed
above and further below, we find Patent Owner’s extrinsic evidence is not
sufficient to overcome the plain language of the claims and, therefore,
decline to read the “metadata” limitation into the term “database block.” See
id. (finding the testimony of an expert cannot overcome the plain language
of the claims and rejecting a proposed construction that limits a claim term
by reading in a limitation not recited in the claims); see also Phillips, 415
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

37

F.3d at 1321 (“Properly viewed, the ‘ordinary meaning’ of a claim term is its
meaning to the ordinary artisan after reading the entire patent.”).
ii) “Application Level” vs. “Storage Level”
Patent Owner argues, citing the passages in the ’707 patent describing
certain aspects of the streaming embodiment, that a “database block” must
include metadata because “the ’707 patent describes an application level
system that understands database blocks and uses metadata in those database
blocks to determine whether to store database blocks and where to store
them.” PO Resp. 28 (emphasis added), 13–14 (same or similar argument,
citing Ex. 1001, 14:32–49, 15:15–19). A subsection heading announces that
a “‘database block’ is not storage level unit of data.” Id. at 26 (original
emphasis deleted, emphasis added). The passages cited by Patent Owner,
however, describe processing in the streaming embodiment discussed above,
and therefore, do not limit the challenged claims. See PO Resp. 13–14
(citing Ex. 1001, 14:32–49, 15:15–19. Furthermore, the passages related to
streaming do not relate clearly to whether or not a “database block” is an
“application level” or “storage level” entity or concept.
Patent Owner also asserts that the system of the ’707 patent “operates
at the application level” because the system uses APIs (application program
interfaces) to copy database blocks. Id. at 15 (citing Ex. 1001, 8:39–41).
Petitioner argues that Patent Owner’s argument is contrary to disclosed
embodiments of the ’707 patent because the patent teaches the system “may
retrieve the necessary database blocks from storage level snapshots of
production databases.” Pet. Reply 13 (citing Ex. 1001, 9:24–26 (emphasis
by Petitioner)). We agree with Petitioner’s argument and further note that
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

38

the ’707 patent also discloses copying of database blocks from storage level
snapshots of a database. See Ex. 1001, 7:4–10 (“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). More importantly, Patent Owner
does not explain why a disclosed API embodiment to access database blocks
necessarily requires the database blocks to include metadata. For example,
Patent Owner does not identify, nor do we discern, anything in the written
description that explains why the APIs cannot access and process metadata
that is stored separately from database blocks.
Patent Owner further relies upon the testimony of Dr. Shenoy and
external documents to argue that a “database block” is an “application level”
entity, which is different from a “file system block,” an “operating system
block,” “data blocks,” “blocks of data,” or “storage level” unit of data. PO
Resp. 23–28, n.9 (citing Ex. 2017 ¶¶ 87, 104, 107, 128, 132). In particular,
Patent Owner asserts that an Oracle document (Ex. 2003, “Oracle Manual”)
explains this “well-known distinction.” Id. at 26–27 (citing Ex. 2003, 250,
Fig. 12-5). Patent Owner further argues “neither are file system blocks
accessible to a database nor are database blocks accessible to the file
system.” Id. at 29 (citing Ex. 2017 ¶¶ 121–34). Therefore, Patent Owner
argues a construction of the term “database block” that encompasses a
storage unit block is incorrect. Id. at 29–30.
As a threshold matter, we note that the Oracle Manual document is
dated May, 2014, which is almost five years later than the filing date of the
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

39

’077 patent, October, 2009. Compare Ex. 2003, 1, with Ex. 1001, 1. Hence,
the Oracle document is not probative of what was known to one of ordinary
skill in the art at the time of the invention. More importantly, as discussed
above, the ’707 patent Specification does not support a limiting construction
of the term “database block” based on the purported “application level”
versus “storage level” distinction. Further, we do not find any disclosure in
the ’707 patent Specification that describes or discusses whether a “database
block” is an “application level” or a “storage level” entity or construct.
Hence, we find the testimony of Dr. Shenoy and the external documents
discussed by Patent Owner regarding the “application level” versus “storage
level” distinction to be largely divorced from the written description, and,
therefore, insufficient to overcome the plain language of the claims. See
Kara Tech., 582 F.3d at 1348; Phillips, 415 F.3d at 1318.
iii) Specific Number of Bytes in a Database Block
In the Institution Decision, we found that database blocks of the ’707
patent need not have a specific number of bytes stored in storage because an
empty database block need not have “a specific number of bytes stored in
storage.” Dec. on Inst. 8. Citing passages in the ’808 patent, Patent Owner
contends that “[t]he correct interpretation of the term ‘database block’ 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.”” PO Resp. 17 (citing Ex. 2001, 2:7–12). Again, Patent Owner
does not direct attention to a comparable disclosure in the ’077 patent. See
id. at 17–18.
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

40

Even if one exists, Patent Owner does not explain how to interpret “a
specific number of bytes stored in storage.” For example, it is not clear if “a
specific number” is a constant across all databases. In another argument,
Patent Owner states that “[d]atabase blocks may be implemented as any
number of different sizes independently of the size of the file system data
blocks which may ultimately store the database data.” PO Resp. 29 (citing
Ex. 2017 ¶¶ 121–34). Patent Owner also states that “an IBM DB2 database
page can be up to 32KB in size, spanning 8 WAFL data blocks, most of
which will not contain any metadata for the database page.” Id. at 28 (citing
Ex. 2017 ¶ 128).
According to Patent Owner’s arguments and the record, as noted
above, a database block may be “any number of different sizes.” PO Resp.
29. Therefore, the database blocks of the ’077 patent need not have a
constant specific number of bytes stored in storage.
iv) “Database Block” vs. “File” Distinction
Next, Patent Owner argues that the construction proposed by
Petitioner (Pet. 10) and preliminarily adopted in our Institution Decision
(Dec. on Inst. 11)—“a unit of data used by a database”—is improper
because it would equate a “database block” with a “file.” PO Resp. 25–26.
Citing dictionaries, Patent Owner argues that the ordinary meaning of “file”
is “a unit of data.” Id. at 25 (citing Ex. 2020, 3; Ex. 2021, 3). Patent Owner
further asserts that our preliminary construction incorrectly encompasses a
log file described in the Specification because “a log file is also a unit of
data used by a database.” Id. at 25–26.
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

41

Petitioner argues, citing the deposition testimony of Patent Owner’s
expert, Dr. Shenoy, that Patent Owner is incorrect because a file has a name
associated with it, but a database block, as construed by Petitioner, would
not. Pet. Reply 13 (citing Ex. 1031, 261:19–20, 262:8–9). We agree with
Petitioner that defining a database block as “a unit of data used by a
database” does not equate a database block with a file.
First, a file is not necessarily “a unit of data used by a database”
because not all files are used by a database. Conversely, the phrase “a unit
of data used by a database” is not sufficient to describe a file because a file
has additional properties or characteristics, such as a unique file name. In
fact, the full definitions of a “file” provided in the Patent Owner cited
dictionaries, including the portions Patent Owner omitted when quoting the
sources in the Patent Owner Response, show that a file name is a required
attribute of a file. See Ex. 2020, 3 (defining “file” as “[a] document or other
collection of information stored on a disk and identified as a unit by a
unique name”), Ex. 2021, 3 (defining “file” as “[a] collection of data or
information that is stored as a unit in the computer under a single name,
called the file name”) (the portions omitted by Patent Owner indicated with
bold emphasis). Hence, the fact that a definition of a “database block” reads
on some “files,” such as a log file used by a database, does not mean the
definition equates the two terms because a file has additional properties or
characteristics, such as a file name.
v) Database Blocks, Blocks of Data, and Data
Patent Owner contends that the ’077 patent Specification does not use
the term “database blocks” and “blocks of data” interchangeably. PO Resp.
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

42

20. Patent Owner contends that the ’077 patent only uses “blocks” in the
context of “blocks of virtual database files that point to database blocks” or
uses the term “database block” and “then uses the word ‘block’ as shorthand
to refer to these database blocks.” Id. at 21. Petitioner disagrees, and argues
that the ’077 patent uses database blocks and generic blocks of data
interchangeably. Pet. Reply 11–12 (citing Ex. 1001, 11:6–10; Ex. 1063
¶¶ 26–29; Ex. 1031, 251:20–255:21–22).
The record supports Petitioner and does not support Patent Owner,
even if the “shorthand” use does not obscure any supposed distinction. For
example, in one sentence, the ’077 patent introduces “a block B1” and “a
block B2,” and then refers to those blocks as “database block B1” and
“database block B2.” Ex. 1001, 15:50–55. As another example, the ’077
patent Specification describes “sav[ing] blocks of data,” keeping track of
“each block of data,” “making copies of blocks of data,” and “updating the
original block of data.” See Ex. 1001, 11:7–21. The ’077 patent also refers
to “the latest copy of the blocks F33 and F34,” “shar[ing] block F11 with
block U11 of VDB files,” and announces that “the sharing of blocks across
multiple VDBs results in efficient[] utilization of data stored in the storage
system data store.” Id. at 19:57–64. The ’077 patent Specification also
refers generically to “data” multiple times in the context of the invention.
Id. at 23:45, 24:4, 24:31, 24:26, 24:57, 24:65, 27:2–3, 27:31, 27:42, 28:59.
Patent Owner admits that “‘data blocks’ refer to blocks of data stored
on a disk and manipulated by the file system.” PO Resp. at 27, n.9; Pet.
Reply 12. Accordingly, contrary to Patent Owner’s arguments, similar to
the extrinsic evidence discussed above with respect to Molina (Ex 2014;
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

43

supra Section C.1.i), the ’077 patent Specification does not distinguish
between blocks of data, data, and database blocks. This implies that the
terms have similar meanings in light of the ’077 patent Specification.
vi) Conclusion
In summary, we find nothing in the intrinsic record, including the
written description and the language of the claims, that justifies limiting the
term “database block” by reading in the “metadata” or “specific number of
bytes” limitations not found in the claims. Furthermore, no extrinsic
evidence, including the testimony of experts, presented in this case is
sufficient to overcome the plain claim language of the term “database
block.” Therefore, on this record, consistent with the term as defined in the
Specification, we construe “database block” to mean “a unit of data used by
a database.” See Phillips, 415 F.3d at 1316 (“The construction that stays
true to the claim language and most naturally aligns with the patent’s
description of the invention will be, in the end, the correct construction.”).
2. Virtual Database
Challenged independent claim 1 recites “[a] method . . . using a
virtual database system, the method comprising . . . linking, . . . loading . . .
and provisioning . . . a development virtual database . . . and a test virtual
database.”
In the Institution Decision, we preliminarily construed the term
“virtual database” to mean “a set of database files capable of being read
from and written to, and capable of being mapped to physical addresses for
stored database blocks.” Dec. on Inst. 15. Petitioner agrees with this
construction. Pet. Reply 13–14. Patent Owner, on the other hand, asserts
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

44

that the term should be interpreted to mean “a set of files to which a database
server can read and write such that the physical implementation of the
database files is decoupled from the logical use of the database files by the
database server.” PO Resp. 30. Patent Owner relies on the following
sentence in the ’077 patent Specification to support the “decoupled” aspect
of its construction: “The virtual databases are ‘virtual’ in the sense that the
physical implementation of the database files is decoupled from the logical
use of the database files by a database server.” Id. (quoting Ex. 1001, 6:10–
13). Patent Owner relies on the following sentence to support the “database
server” aspect: “The set of files associated with the VDB are mounted on a
database server allowing the database server to read from and write to the set
of files.” Id. (quoting Ex. 1001, Abstract).
To unpack the language of Patent Owner’s proposed construction for
further analysis, Patent Owner defines a virtual database as “a set of files”
and modifies the definition with two phrases, each expressing a concept
involving a database server: (1) “a database server can read and write” to
the set of files, and (2) referring to the set of files as “database files,” “the
physical implementation of the database files is decoupled from the logical
use of the database files by the database server.”
i) Whether Reading and Writing by “a Database Server” Is Necessary
Patent Owner argues that the point of the first proposed phrase is to
“require[] something of the files . . . that they are of a form readable and
writable by a database server.” PO Resp. 33–34. In other words, the main
thrust of Patent Owner’s proposed phrase is that a database server can read
from and write to a set of files into the proposed definition. See id. at 34.
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

45

Challenged independent claims 1 and 18 specifically recite “mounting
the set of files to the system to allow a database server running on the system
to access the set of files.” Claim 1 of the related ’808 patent more narrowly
recites “allowing the database server to read from and write to the set of
files.” Hence, Patent Owner could have claimed the limitation in a server
and chose not to do it. See LSI Indus., Inc. v. ImagePoint, Inc., 279 F. App’x
964, 972 (Fed. Cir. 2008) (rejecting the district court’s construction of
“display device” as necessarily including the superfluous limitation of
“internal illumination” because other claim terms specifically recited an
“illuminated display device”); but cf. ERBE Elektromedizin GmbH v.
Canady Tech. LLC, 629 F.3d 1278, 1286 (Fed. Cir. 2010) (“no canon of
[claim] construction is absolute in its application”).
Patent Owner also argues that requiring a “database server” to be able
to read “a set of files” is necessary to clarify that “a set of files” in its
proposed definition must be “database files.” See PO Resp. 34 (citing Ex.
2017 ¶ 99). Patent Owner’s argument is unpersuasive because our
construction already requires a virtual database to include “a set of database
files.” The ’707 patent tracks our construction and describes that a virtual
database comprises “database files.” See, e.g., Ex. 1001, 6:10–13 (“The
virtual databases are ‘virtual’ in the sense that the physical implementation
of the database files is decoupled from the logical use of the database files
by a database server.”) (emphasis added), 6:31–32 (“A virtual database may
be created on a database server by creating the database files.”) (emphasis
added).
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

46

Patent Owner also argues that “[t]o be a database file, a database
server must be able to read, write and understand its contents.” PO Resp. 34
(citing Ex. 2017 ¶ 99). As noted above, claim 1 specifies that a database
server accesses the set of files. The ’707 patent provides a description of a
“database” as follows: “[a] database comprises data stored in a computer for
use by computer implemented applications.” Ex. 1001, 5:59–60.
Furthermore, the ’077 patent Specification announces that the disclosed
invention “can be used for any database.” Id. (emphasis added).
Furthermore, “[a] database server is a computer program that can interact
with the database and provides database services, for example, access to the
data stored in the database.” Id. at 5:60–63. During the hearing, Patent
Owner clarified that that a database server in its proposed construction “is
used synonymously . . . with database application.” Tr. 185:11–12. In line
with Patent Owner’s acknowledgement at the oral hearing, the ’077 patent,
and the meaning of a database, database files have the capability of being
read from, and written to, by a computer program or application.
The Specification shows that the readable and writable characteristics
are inherent attributes of a virtual database. See, e.g., Ex. 1001, 19:15–16
(“FIG. 10 indicates how storage efficient copies are made to create a
read/write file structure representing a VDB.”) (emphasis added); 19:45–51
(“The virtual database manager . . . identifies . . . the recent most PIT copy
associated with time Tj . . . The read/write file structure . . . is created . . .
by making storage efficient copies of the database blocks in the identified
PIT copy.”) (emphasis added); 18:67–19:3 (“The virtual database manager []
sends . . . handles to the read/write file structure to the associated virtual
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

47

database system 130.”) (emphasis added). Thus, a virtual database must
comprise readable and writable database files.
Nevertheless, the phrase “database files” need not be further modified
to indicate explicitly that the files are capable of being read to, and written
from, by a computer application or program (i.e., a database server),
because, as discussed above, the “database” description provided in the
Specification (see supra note 19), and the recited database server in the
challenged claims, already requires a database server to be able to access the
database files. Therefore, the term “virtual database” is properly construed,
to have as the base phrase of its definition, “a set of readable and writable
database files.”
ii) “Decoupled from the Logical Use of the Database Files
by the Database Server”
Patent Owner relies on the following sentence in the ’707 patent to
support the second part, i.e., the “decoupled” aspect, of its proposed
construction: “virtual databases are ‘virtual’ in the sense that the physical
implementation of the database files is decoupled from the logical use of the
database files by a database server.” PO Resp. 30 (quoting Ex. 1001, 6:10–
13). Patent Owner asserts this sentence explicitly defines the use of the
word “virtual” in the term “virtual database.” Id. However, the ’707 patent
does not describe clearly what it means for “the physical implementation of
the database files [to be] decoupled from the logical use of the database files
by a database server.” Citing the testimony of Dr. Shenoy, Patent Owner
asserts the cited sentence describes one of the key features of the invention
of the ’707 patent, which is applying the general concept of virtualization—
“the decoupling of a computing process from the platform on which it
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

48

operates”—to databases. Id. (emphases added) (citing Ex. 2017 ¶¶ 23–26,
63–70, 87–90). Petitioner asserts Patent Owner confuses “platform
virtualization” with “database virtualization” or “virtualizing data.” See Pet.
Reply 16 (citing Ex. 1063 ¶ 37). We agree with Petitioner that “platform
virtualization” is unrelated to the concept of “virtual database” as claimed
and described in the ’707 patent.
In his Declaration, Dr. Shenoy testifies that the Java programming
language running on a Java Virtual Machine (JVM) as described in an
Oracle document explains the general concept of platform virtualization.
See Ex. 2017 ¶¶ 23, 24 n.6 (citing Ex. 2002, 451–52, Fig. 24-7). Patent
Owner’s discussion of Java Virtual Machine illustrates the basic problem
with Patent Owner’s argument—that it is directed to the features or
functions of software, not a database. For example, Dr. Shenoy explains that
the “decoupling [of] a computing process from the platform on which it
operates” (Ex. 2017 ¶ 23) is achieved by the Java Virtual Machine, which
“is software that emulates the operation and interface of a physical
processor” (id. at ¶ 24 (emphasis added)). The ’707 patent also describes
that a “virtual machine” is “provided by platform virtualization software” or
“server virtualization software.” Ex. 1001, 8:9–12 (emphases added).
Further, the ’707 patent describes a Java Virtual Machine as part of
production database system 110 (Ex. 1001, 9:4–7), which is separate from
virtual database 220 stored on database storage system 100, as discussed
above in Section II.A. See Ex. 1001, Fig. 2(a). Hence, Patent Owner’s
discussion of the Java Virtual Machine may relate to database servers or
other software of the disclosed system, but it is not directed to a virtual
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

49

database, which is a set of files as expressly recited in the claims and
described in the Specification. See, e.g., Ex. 1001, 6:23–26, Figs. 2a, 10, 12,
Abstract.
Other examples of “decoupling” that Dr. Shenoy discusses similarly
relate to the function or operation of various software or programs, not
database files. For instance, Dr. Shenoy testifies that, because the system of
the ’707 patent operates at the “application level” using APIs, the database
storage system of the invention does not depend on and need not concern
itself with the underlying details of the physical storage system. Ex. 2017
¶¶ 69–70 (citing Ex. 1001, 8:39–44). The latter cited portion of the ’707
patent describes, however, that the APIs are provided by “production system
library 385” and “vendor interface module 335,” which are programs or
software code modules residing at the production system. See, e.g., Ex.
1001, Fig. 3, 8:39–44 (“An example of a vendor interface module is the
program code of a database server provided by vendor ORACLE that
implements RMAN APIs.”), 14:1–3 (“the production system library 385
includes code to analyze the structures of the files of the database stored in
the data store 350”) (emphases added).
Dr. Shenoy and Patent Owner also describe and rely upon virtual
database systems 130c depicted in Figure 1 of the ’707 patent. PO Resp. 31
(citing Ex. 2017 ¶ 92). However, Figure 1 shows 130c as the “Virtual
Database System 130(c),” instead of the disclosed (and claimed) virtual
database, which is stored in a different system, namely, Database Storage
System 100. See Ex. 1001, Figs. 1, 2a, 2b. That is, virtual database system
130 is separate from and external to virtual database 220. Id. Further, the
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

50

’707 patent describes that virtual database system 130 includes no database
or database files but, rather, comprises a database server and a VDB system
library, both of which are software modules or programs. See Ex. 1001,
12:61–13:4 (“A virtual database system 130 includes a database server 360
and a VDB system library 380 . . . The VDB system library 380 contains
program code for processing requests sent by the database storage system
100.” (emphasis added)); Fig. 3. Hence, Patent Owner appears to conflate
the function of the software of a virtual database system with the meaning of
“a virtual database,” which is a set of files that resides in a database storage
system that is separate from the virtual database system.
Petitioner argues that Patent Owner’s platform virtualization argument
is misguided because it conflates the meaning of a “virtual database” with
the disclosed embodiments of production database system and the virtual
database system. Pet. Reply 16–17. We agree with Petitioner as discussed
above. Patent Owner’s arguments are directed to the software part of the
disclosed system that is separate from and external to a virtual database. As
described in the ’707 patent, a database system generally comprises a
database, which is data stored in storage, and database software, such as
database servers or other programs that access the database. See Ex. 1001,
5:59–67; 8:27–30. Dr. Shenoy similarly describes a database system as
comprising a database and database software.
A database system is typically a computer that includes the
stored data itself, i.e. the database, as well as database
management software, often shortened to DBMS. A DBMS
includes software for accessing the data in the database and
modifying that data to add, remove or change stored data. A
DBMS may run as or include an autonomous program which
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

51

handles client requests to the database and which is often called
a database server.
Ex. 2017 ¶ 34 (emphases added). Hence, the platform virtualization or the
storage virtualization or abstraction argued by Patent Owner as
demonstrating what is meant by the phrase “the physical implementation of
the database files is decoupled from the logical use of the database files by a
database server” is a function or feature of the software part of a database
system—be it Java Virtual Machine, a database server, or various software
modules providing APIs—which is separate from and external to a database,
i.e., the set of files pointing to and including the data part (database blocks)
of a database system.21 Therefore, contrary to Patent Owner’s argument,
virtualization of computing platform or storage by software is unrelated to
and cannot be equated to virtualization of the data files and data, i.e., the
subject matter claimed by the term “virtual database.”
In effect, Patent Owner’s platform virtualization argument calls for
improperly importing the function or operation of the software of the
disclosed system into the meaning of a virtual database, which is a set of
files separate from and external to the software part. If the Patentees
intended to claim the function or operation of the software of the disclosed

21 “Each [decoupled database] file includes a set of database blocks and the
data structures for referring to the database blocks.” Ex. 1001, 6:25–26
(emphasis added). In other words, apparently, the database files “include”
the “database blocks” in the sense that the files point to (i.e., are linked with)
the database blocks (also, as noted, a different set of files may point to the
same database bocks), so that the use of the files (writing thereto and reading
therefrom) is decoupled from the location (including the storage of data in)
the database blocks. See Ex. 1001, Figs. 10–12; Ex. 1009 ¶¶ 38–45
(describing the virtual database pointing system of the ’077 patent).
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

52

system, they could have done so by explicitly claiming the subject matter.
Not having done so, Patent Owner may not import the array of functions and
intelligence embodied in the described software into a single term “virtual
database” to impart a very different meaning to the claims from what is
indicated by the plain language of the claims and the written description of
the patent.
Nevertheless, Patent Owner asserts that, by discounting Patent
Owner’s platform virtualization argument, the preliminary construction
reads out the “virtual” requirement from the term “virtual database.” PO
Resp. 33 (citing Inst. Dec. 17). Patent Owner’s argument is unpersuasive.
As discussed above and below, our claim construction is consistent with the
language of the claims and the written description of the ’707 patent, and
implicitly includes the concept of virtualization, without including every
feature that Patent Owner argues the concept requires.
Challenged independent claim 1 recites
[a] method . . . using a virtual database system, the
method comprising: linking a source database . . . provisioning
a development virtual database to a development system and a
test virtual database to a test system, wherein provisioning each
of the virtual databases to a system comprises: creating a set
of files linked to the stored database blocks on the storage
system.
Ex. 1001, 35:27–43 (emphasis added).
Tracking the language of claim 1, the ’077 patent Specification
describes that “[t]he provisioning of the virtual databases is performed by
creating a set of files linked to the stored database blocks on the storage
system.” Ex. 1001, 2:11–12 (emphasis added). Similarly, “[a] virtual
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

53

database (VDB) is created by creating a set of files in the data storage
system. Each file in the set of files created for a VDB is linked to the
database blocks on the database storage system associated with a point-in-
time copy of the source database.” Id. at Abstract. Hence, the database files
of a VDB are linked or mapped to the database blocks associated with the
database being virtualized.
Looking to the ’077 patent Specification for further clarification,
Figure 10 of the ’707 patent depicts “how . . . to create a read/write file
structure representing a VDB.” Id. at 19:15–16. When the VDB file
structures are created, “the blocks V11, V12 . . . , V25 may be implemented
as pointers to the actual database block that stores the data.” Id. at 19:34–37
(emphasis added). The ’707 patent further describes this pointing system as
follows:
For example, V11 represents the information in block F1 and
since the block F1 was never updated during copies made at
time T1 and T2, V11 points at F11. V12 represents the
information in block F2 and since F2 was updated at time T1,
V12 points at the block F22. Similarly, V13 corresponds to
block F3 that was updated at time T2 and points at the block
F33.
Id. at 19:37–43 (emphases added). Hence, blocks V11, V12, etc. of a virtual
database do not contain ordinary data, but, instead, point to the location or
address of the actual database blocks F1, F3, etc. stored in a physical storage
device.
Another disclosed example shows that writing to a pointing block in a
database file, such as V11, which is stored at one location, actually results in
writing to a copy of the original block of data F11 at another physical
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

54

location: “For example, if the virtual database system 130 writes to the
block V11, space is allocated and block F11 copied to the allocated block.
Hence, the original copy of the block F11 is maintained as a read only copy
and the virtual database system 130 is allowed to write to a copy of the
appropriate database block created specifically for the virtual database
system 130.” Id. at 20:39–45. The ’707 patent further describes “[s]ince the
[virtual database file] structure 1050 illustrated in FIG. 10, structure 1150
illustrated in FIG. 11, or structure 1350 illustrated in FIG. 13 are read/write
structures, the virtual database system 130 is allowed to read from these
structures as well as write to them.” Id. at col. 20:33–36. As described
further, “[a] database block that is not written to by virtual database systems
130 may be shared by several virtual database systems without being copied
for a specific virtual database systems 130.” Id. at 20:52–55.
Thus, the ’707 patent indicates that the database files are “virtual” in
the sense that they create the illusion of allowing data to be written to
pointing blocks in the VDB files, but the system actually writes the data
elsewhere to another physical location specified by the pointing blocks such
as V11 and V12. See id. at 20:32–55, Figs. 10–12. They also are virtual in
the sense that database blocks may be shared by a different set of files
corresponding to different virtual databases. See id. at 20:52–55.
Based on the disclosure in the ’707 patent discussed above, “the
logical use of database files” can be understood as reading from or writing to
database blocks by reading from or writing to virtual database file structures
that point to the actual database blocks. Hence, as described in the ’707
patent, decoupling of physical implementation of the database files, i.e.,
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

55

actual database blocks stored on a physical storage device, from the logical
use of the database files, i.e., accessing the database blocks through virtual
database files, is accomplished by using pointers to map blocks in virtual
database files to physical addresses for database blocks stored in physical
storage devices.
Dr. Shenoy acknowledges that Figure 10 illustrates the “decoupling of
the physical storage of the database from its logical use,” in part, because
“common database blocks are shared between different point-in-time copies.
This is imperceptible to the user.” Ex. 2017 ¶ 63. Similarly, Dr. Shenoy
testifies that “the physical storage for the virtual database is decoupled from
the logical view of the database . . . by mapping blocks captured at various
points in time to [virtual database files].” Id. ¶ 97 (emphasis added).
Nonetheless, Patent Owner argues that the preliminary construction is
erroneous because “any database, including a non-virtual database, can be
mapped to physical addresses for stored database blocks.” PO Resp. 33
(citing Ex. 2017 ¶ 100). Patent Owner also explains that the construction
“would cover a non-virtual data base” and cover “an exact copy of a source
database.” Id. at 32 (citing Ex. 2017 ¶¶ 95–96).
Patent Owner’s arguments are partially persuasive. Accordingly, we
modify our preliminary construction. Based on the foregoing discussion, the
term “virtual database” is construed as “a set of readable and writable
database files capable of being mapped to physical addresses for stored
database blocks associated with another database.”
In other words, the construction now requires the stored database
blocks to be associated with another database. As Patent Owner’s
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

56

arguments imply, an ordinary (i.e., a non-virtual database) consists of its
own database blocks and would not be created by mapping or pointing to
stored blocks associated with another database. Furthermore, the ’707
patent describes that a virtual database may be a source database (or vice
versa). See Ex. 1001, 2:9–11; 20:5–6; see also Ex. 2001, 35:1–3 (claim 6 of
the ’808 patent reciting “wherein . . . the source database is a second virtual
database”).
The claim construction tracks the language of the challenged claims,
the ’077 patent Specification, Dr. Zadok’s testimony, and Dr. Shenoy’s
testimony, all of which show how to create a VDB (i.e., using a set of files),
as discussed above. See Ex. 2017 ¶¶ 63, 97; Ex. 1001, Abstract.
iii) Conclusion
Based on the foregoing discussion, the term “virtual database” is
construed as “a set of readable and writable database files capable of being
mapped to physical addresses for stored database blocks associated with
another database.”
D. Obviousness
1. Principles of Law
A claim is unpatentable under § 103(a) if the differences between the
claimed subject matter and the prior art are such that the subject matter, as a
whole, would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of the following underlying factual
determinations: (1) the scope and content of the prior art; (2) any
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

57

differences between the claimed subject matter and the prior art; (3) the level
of skill in the art; and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
2. Sanders
Sanders describes a system “to clone a DB2 database quickly and
easily.” Ex. 1013, 1. “Database cloning is [a] process by which you can
create an exact copy of a DB2 database.” Id. at 3. The disclosed NetApp
system 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. at 8–9. Specifically, “[a] FlexClone volume is a
writable point-in-time image of a FlexVol volume or another FlexClone
volume.” Id. (emphasis added). 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 snaphsot created
for the clone; or applications can point directly to the clone database.” Id. at
6. “A FlexClone volume has all the features and capabilities of a regular
FlexVol volume, including . . . the ability to be the source of another
FlexClone volume.” Id. at 3. Thus a FlexClone volume can be based off a
PIT copy of another FlexClone volume. See id. (“A FlexClone volume is a
writable point-in-time image of a FlexVol volume or another FlexClone
volume.”).
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
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

58

clone.” Id. at 3. Clones can be created on the same or different storage
systems. Id. at 6. The SnapMirror technology provides “an efficient way to
transfer data” as read-only copies at the same or at different destinations. Id.
at 3. “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.
Sanders’s Figure 3, annotated by Petitioner to add source and clone
database labels, follows:

Pet. 19 (annotating Ex. 1013, Fig. 3). Figure 3 represents using the
combined SnapMirror and FlexClone technology to transmit PIT clone
copies of a production database to a destination storage system. See Ex.
1013, 8.
Sanders also describes mounting a clone database on a database
server. See id. at 14 (“In order to access the clone database, you need to
mount the clone volumes to a database server. . . . [Y]ou can mount the
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

59

clone volume by executing the following command on the database server:
mount [MountPoint].”).
3. Edwards
Edwards describes the same NetApp system as Sanders, and provides
additional explanation with background information regarding the
virtualization of volumes and files used to clone DB2 databases in Sanders.
A volume essentially comprises a file system that points to underlying data
storage on storage disks:
[A] FlexVol volume is a file system created within a file on an
underlying file 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.
Ex. 1014, 11 (second emphasis added). Edwards describes the same
underlying SnapMirror, FlexVol, and FlexClone systems that Sanders
describes, as forming a virtualized system. See, e.g., id. at 10 (describing
“Snapshot copies” and flexible volumes introduced by “NetApp in release
7.0 of Data ONTAP®”), 13 (“Volume SnapMirror”), 14–15 (“FlexVol,”
“FlexClone”). SnapMirror mirrors the contents of a volume from a source
system to a destination storage system. Id. at 13.
Using these systems, “we 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 10
(emphasis added). “Virtualization is a well-known method of abstracting
physical resources and of separating the manipulation and use of logical
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

60

resources from their underlying implementation.” Id., Abstract (emphasis
added). “The resulting virtual file volumes, or FlexVol® volumes, are
managed independent of lower storage layers.” Id. (emphasis added).
Edwards also describes mapping virtual blocks to the addresses of physical
blocks: “Mapping between virtual block addresses used by FlexVols and
physical block addresses . . . .” Id. at 10 (emphases added).
Edwards further explains this virtualization technology is used “to
implement writable Snapshot copies (called FlexClone volumes).” Id. at 10.
A clone volume “inherits pointers to the complete file system image stored
in the original Snapshot copy” of an original FlexVol volume. Id. at 15.
Snapshot copies are PIT copies: “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 11. “WAFL Snapshot copies provide consistent point-in-time copies of a
volume.” Id. at 14. Although a Snapshot copy is read-only, combining
Snapshot and FlexClone technologies provides writable Snapshot copies,
because “[in] database environments . . . it is often desirable to make
writable copies of a production database for development or test purposes.”
Id.
Edwards explains that “[c]reating a clone volume is a simple process.”
Id. at 15. A container file for the new clone volume (i.e., a FlexClone
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.
Because vol_info block is the root of the “tree of blocks that form the
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

61

Snapshot copy, the clone inherits pointers to the complete file system image
stored in the original snapshot copy.” Id.
Petitioner provides an annotated version of Edwards’s Figure 1, to
demonstrate this step in cloning, as follows:

Pet. 20. Figure 1 as annotated by Petitioner depicts WAFL data structures of
a Snapshot copy and a clone volume based on the Snapshot copy.
4. Alleged Obviousness Ground: Sanders and Edwards
i) Claims 1, 3, 5–7, 9, 10, 18, 20–23, 25, and 26
Relying on its declarant, Dr. Zadok (Ex. 1009), Petitioner asserts that
the combination of Sanders and Edwards renders obvious claims 1, 3, 5–7,
9, 10, 18, 20–23, 25, and 26. Pet. 30–53. Petitioner points to specific
disclosures in the prior art that are deemed to describe, teach, or render
obvious all the claim limitations. See id.
Addressing the preamble of claim 1, Petitioner contends that, even if
it is afforded weight, Sanders’s FlexVol, SnapMirror, and FlexClone
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

62

systems together create writable cloned volumes as a virtual database
system. Pet. 15–25, 30–31 (citing Ex. 1009 ¶¶ 122–124). According further
to Petitioner, Edwards’s system, which describes the same underlying
NetApp system that Sanders describes, has a physical implementation of the
files in the clone volume decoupled from the logical use of the files, creating
a virtual system, because the files “‘point[]’ to the pre-existing data blocks
associated with a point-in-time copy of its parent volume instead of
physically duplicating the data blocks of its parent.” See Pet. 31 (citing Ex.
1009 ¶ 124); Pet. 25 (quoting Ex. 1014, 141 and stating that FlexClone
volumes “‘separate the management of physical storage devices from the
management of logical data sets’”).
The first listed step of claim 1 recites “linking a source database,
wherein linking the source database comprises receiving information
identifying the source database.” Petitioner contends that Sanders teaches
this step by executing a “snapmirror initialize” command at a destination
storage system to identify a source IBM DB2 database volume for
subsequent cloning. Pet. 31–32 (citing Ex. 1013, 22–23; Ex. 1009 ¶ 127).
The next listed step of claim 1 requires loading multiple PIT copies:
“loading a plurality of point-in-time copies of the source database, wherein
the loading comprises; receiving database blocks for the point-in-time copies
of the source database, and storing the database blocks on a storage system.”
Petitioner contends that Sanders’s SnapMirror system satisfies this step,
quoting Sanders, as follows: “As noted earlier, the initialization process
transfers data, including all Snapshot copies from the source volume to the
destination volume for the first time; thereafter, only changed blocks are
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

63

transferred.” Pet. 33 (quoting Ex. 1013, 21(emphases by Petitioner); citing
Ex. 1009 ¶ 128).
The next listed step requires provisioning development and test virtual
database systems. Petitioner points out that the ’077 patent Specification
describes provisioning as making the virtual database available to a database
server. Pet. 35 (citing Ex. 1001, 6:38–40).
Petitioner relies on Sanders’s teaching of “access[ing] the clone
database . . . [by] mount[ing] the clone volumes to a database server.” Pet.
35 (quoting Ex. 1013, 28). Petitioner also quotes Sanders as follows: “[a]
database clone can be created simply by creating a clone of the FlexVol
volumes that are used for the database’s data and transaction logs.” Pet. 35
(quoting Ex. 1013, 3). Petitioner further explains that
[i]n addition, Sanders discloses provisioning both a
development and test FlexClone volumes. “Database cloning is
performed frequently by database administrators to provide
near-production data for various business needs such as
application development, QA testing, and report generation.”
See Sanders at 3; Zadok Decl. at ¶ 135. Given that “cloning is
performed frequently,” (id.) a POSITA would understand that
separate test and development clones can be created and
mounted. See id.
Pet. 35 (emphases by Petitioner).
Petitioner relies on similar teachings in Edwards that describe making
clones that share blocks with a base snapshot and making writable copies
for “development or test purposes.” See Pet. 35–36 (citing Ex. 1009 ¶ 135;
Ex. 1014, 15; quoting Ex. 1014, 14).
The two final listed claim steps require “creating a set of files linked
to the stored database blocks on the storage system” and “mounting the set
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

64

of files to the system to allow a database server running on the system to
access the set of files.”22
Sanders’s system mounts the clone volume to a server in order to
access the data, as noted above. See Ex. 1013, 28. Petitioner points out that
Sanders discloses that “[a] database clone can be created simply by creating
a clone of the FlexVol volumes that are used for the database’s data and
transaction logs.” Pet. 36 (citing Ex. 1013, 3).
Addressing linking, Petitioner relies partly on the following teachings
in Sanders:
The clone database that results “is a frozen image of the
database file system at the time of the clone creation.” [Ex.
1013, 6]. “[T]he original FlexVol volume and the FlexClone
volume [] share common data.” Id. at 3. Sanders discloses
creating a FlexClone volume which shares—or is “linked” to—
data blocks of a point-in-time copy of a source database. [Ex.
1009 ¶ 139].
Pet. 36.
Petitioner contends that although Sanders does not set forth
explicitly all the details for creating the linking files, Edwards, which
describes the same underlying NetApp system, “provides further detail on
creating a set of files linked to the stored database blocks on the
storage system, through the creation of a FlexClone volume.” Pet. 37.
Relying on Edwards, and Dr. Zadok, according to Petitioner,
[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

22 The “database server running on the system” inferentially refers back to
one or more systems having antecedent basis in claim 1: “a virtual database
system,” “a system,” “a storage system,” and “the storage system.”
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

65

block of the Snapshot copy on which the clone is based.” [Ex.
1014, 15.] Thus, the cloned volume inherits all the pointers or
links of the Snapshot copy that point to the underlying data
blocks. Thus, the clone volume “inherits pointers to the
complete file system image stored in the original Snapshot
copy.” [Id.]. By creating a new vol_info block that points or
links to the tree of blocks of the Snapshot (point-in-time) copy,
Edwards discloses creating a new, cloned volume comprising a
set of database files, by pointing to already-stored database
blocks associated with a point-in-time copy of the source
database. [Ex. 1009 ¶¶ 140–142].
Pet. 37 (emphasis by Petitioner)).
ii) Reasons for Combining Sanders and Edwards
Petitioner contends that combining Sanders and Edwards, which
disclose “the same NetApp technology and features, albeit in varying levels
of detail,” would have been obvious in order to gain a more complete
understanding of the system. Pet. 26–27 (citing Ex Parte Mettke, No. 2008-
0610, 2008 WL 4448201 (BPAI Sept. 30, 2008), aff’d, 570 F.3d 1356 (Fed.
Cir. 2009) (Ex. 1011); Ex. 1009 ¶ 86). According to Petitioner, NetApp
introduced a number of database products for cloning:
All of these products integrated the SnapMirror, FlexVol, and
FlexClone technologies described in Sanders and Edwards.
While NetApp did not introduce a similar, stand-alone product
dedicated for DB2 databases, a POSITA would have readily
referred to Sanders to apply the cloning technique described in
Edwards to clone DB2 databases. [Ex. 1009 ¶ 99].
Pet. 29.
A POSITA would have been motivated to combine
Sanders and Edwards, given that they recite the same
FlexClone, SnapMirror, and Snapshot features from the
DataONTAP platform by NetApp, and a POSITA would have
looked to Edwards to understand the specifics of the FlexClone
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

66

creation process of how FlexClone creates files linked to stored
database blocks on the storage system. [Ex. 1009 ¶ 143].
Pet. 39.
Petitioner provides other and similar reasons for combining the
various aspects of the NetApp technologies at various places in the Petition.
See Pet. 26–29, 31, 34, 36. In summary, Petitioner asserts that combining
the teachings of the same underlying integrated cloning systems from the
same corporation as described in Sanders and Edwards would have provided
an efficient mechanism for cloning databases in order to facilitate testing or
data back-up, something desired by companies for managing data. See id.
iii) Summary of Petitions
Petitioner applies the teachings of Sanders and Edwards in an asserted
ground of obviousness as to claims 1, 3, 5–7, 9, 10, 18, 20–23, 25, and 26.
Pet. 30–53. Petitioner applies the teachings of Sanders, Edwards, and Patel,
in an asserted ground of obviousness as to claims 2, 4, and 8. Pet. 53–57.
Petitioner applies the teachings of Sanders, Edwards, and Data ONTAP
Guide, in an asserted ground of obviousness as to 8, 11–13, 24, and 27–29.
’026 Pet. 33–57. Petitioner applies the teachings of Sanders, Edwards, Data
ONTAP Guide, and Sarma, in an asserted ground of obviousness as to
claims 17 and 33. ’026 Pet. 57–60.
We find that the two Petitions provide ample reasons why one of
ordinary skill in the art would have combined the teachings of Sanders,
Edwards, Patel, and Data ONTAP Guide as set forth in the Petitions. See
Pet. 15–30; ’026 Pet. 25–33. Sanders, Edwards, Patel, and Data ONTAP
Guide teach cloning (i.e., virtual) file systems using the same underlying
NetApp technologies: Snapshot, SnapMirror, and FlexClone. They each
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

67

employ the same solution, using cloning file systems, in order to solve the
problem of avoiding making physical copies of data and creating efficient
reductions in storage space, resources, cost, and speed for data retention and
recovery. See Pet. 27–30; ’026 Pet. 26–33; Ex. 1013, 1, 3; Ex. 1014, 9–11,
14; Ex. 1016, 1–6; Ex. 1009 ¶¶ 90, 57–101; ’026 Ex. 1117, 7–9, 92; ’026
Ex. 1109 ¶¶ 56–117.
In addition, Dr. Zadok testifies that Sanders expressly refers to Data
ONTAP Guide. ’026 Ex. 1109 ¶ 109 (citing ’026 Ex. 1113, 50 (i.e., a copy
of Ex. 1013, 50)). Sarma suggests compression for storage efficiency and
cites to systems including ONTAP and SnapMirror. ’026 Pet. 31 (citing
’026 Ex 1118, 7:11–14, 14:11–13; ’026 Ex. 1109 ¶ 113). The record
supports, and we adopt, Petitioner’s contentions as summarized above.
iv) Patent Owner’s Response
Patent Owner groups together independent claims 1, 11, 18, and 27
and focuses arguments on claim 1. See PO Resp. 41–42; ’026 PO Resp. 40–
41.
a. Motivation
Patent Owner argues that Sanders, Edwards, and Patel, do not
describe the “same” technology, and that “Petitioners sole argument as to
why the documents collectively render a claim limitation obvious is because,
Petitioner maintains, they describe ‘the same’ technology.” PO Resp. 6.
Patent Owner contends that “FlexVol, FlexClone and SnapMirror are
NetApp trademarks [and products] . . . associated with products and
technologies that changed over time,” showing that the documents describe
different embodiments. Id.
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

68

On the other hand, Patent Owner concedes that “Petitioner offers
other general reasons why one skilled in the art would purportedly combine
the teachings of Sanders, Edwards and Patel.” Id at 5. Patent Owner makes
similar arguments in the ’026 IPR with respect to Sanders, Edwards, Data
ONTAP Guide, and Sarma. ’026 PO Resp. 5–7, 34–55, 40.
As Petitioner contends, and as we find above, with the exception of
Sarma (which cites and applies to the NetApp systems as noted below), the
documents focus on describing the same basic NetApp system, including
FlexVol, FlexClone, and SnapMirror, all to provide database cloning,
eliminating the need for physical copying, and providing savings in storage
space, cost, data recovery, etc. See Pet. 15–26; Ex. 1009 ¶¶ 57–100; ’026
Pet. 26–33; Ex. 1109 ¶¶ 90–93, 56–117. Even if the products did change
over time, as Patent Owner contends, understanding the evolution of the
underlying related systems reasonably would have been beneficial to better
understand the products and apply them for cloning solutions, data back-up,
etc. See, e.g., Ex. 1009 ¶ 100 (“Sanders, Edwards, and Patel describe the
natural evolution of these technologies at NetApp”) ¶ 99 (starting with
Sanders for cloning virtual databases, “the most obvious place to start would
be to look at other NetApp publications”) ¶¶ 90–94 (Sanders, Edwards, and
Patel address the same problem and solution and provide motivation for
combining––e.g., creating multiple virtual databases copies, and providing
writable virtual copies, in order to avoid the cost and complexity in making
physical copies and to provide data for experimental, test, developmental
purposes); ’026 Ex. 1109 ¶¶ 96–112 (describing Sanders and Edwards in the
same fashion, adding that Sanders refers to Data ONTAP Guide, and that
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

69

Data ONTAP Guide, like Sanders and Edwards, provides additional features
for making PIT using SnapMirror and FlexClone).
In summary, notwithstanding Patent Owner’s arguments to the
contrary, as we find above, Petitioner provides ample motivation and
reasons to combine Sanders, Edwards, Patel, and Data ONTAP Guide.
b. Database Blocks, Database, Server
Patent Owner contends that the “data blocks [in the NetApp system of
Sanders and Edwards] are not database blocks,” because “NetApp’s storage
technology is based on its proprietary file system called WAFL, which
operates on physical storage systems and organizes data to be stored.” PO
Resp. 37. Patent Owner contends that “Sanders does not address database
blocks or database files.” Id. at 40–41 (citing Ex. 2017 ¶ 116). Patent
Owner argues that the combined system fails to render obvious database
blocks. Id. at 43–44. According to Patent Owner, in the NetApp system,
“when an application asks to read a file, the file system looks up the proper
inode for the file and traverses its structure to find the appropriate data
blocks which store the file content.” Id. at 38 (citing Ex. 2017 ¶ 106)
(emphasis added). According further to Patent Owner, “[a]t a minimum, a
‘database block’ must be a unit of data recognized and used by a database
server application. Indeed, the patent repeatedly describes that database
blocks are accessed and obtained through Application Programming
Interfaces (APIs).” Id. at 46 (emphasis added).
According further to Patent Owner:
Petitioner attempts to draw a parallel between WAFL’s use of
“inodes” and pointers to data blocks on disk with the claimed
virtual database system and its use of database blocks and files
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

70

linked to the database blocks. The NetApp documents relied-
upon by Petitioner, however, do not virtualize databases as
described and claimed in the ’077 patent, they describe storage
level systems and technologies, not database systems and
database blocks.
Id. at 39 (emphases added).
Patent Owner also argues that the NetApp snapshot copies do
not constitute the PIT copies required by challenged claims 1 and 18.
Patent Owner explains that “Snapshot copies do not include database
blocks, they include file system data blocks.” Id. at 50 (emphases
added). Similarly, Patent Owner contends that the inode database
files in WAFL “are not capable of being mapped to physical addresses
for stored database blocks, as required by the Board’s preliminary
construction.” Id. at 54. Rather, Patent Owner contends that the
“inode files are collections of inodes which may point to file system
data blocks.” Id. Patent Owner presents the same claim construction
and makes materially the same arguments in the ’026 IPR. See ’026
PO Resp. 17–59.
Patent Owner’s arguments primarily turn on the claim construction of
“database block” and fail to rebut Petitioner’s showing. As described above,
the ’077 patent “techniques disclosed can be used for any database.” Ex.
1001, 6:5–6. The ’707 patent provides another broad definition—“[a]
database comprises data stored in a computer for use by computer
implemented applications.” Ex. 1001, 5:59–60, 6:6–7. As Petitioner notes,
Dr. Shenoy’s testimony shows that a database, as described in the ’077
patent, encompasses a wide variety of databases. See Pet. Reply 10–11
(citing Ex. 2017 ¶ 33); supra note 19. As discussed above, the challenged
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

71

’077 patent claims and the ’077 patent Specification do not require metadata
in database blocks, do not require APIs, do not distinguish between database
blocks and blocks of data, and do not preclude file systems or file system
data blocks. See supra Section II.C.1 (Claim Construction of database
block). In other words, the challenged claims read on the NetApp WAFL
system as taught by the combination of Sanders and Edwards, which renders
obvious the challenged claims, as set forth by Petitioner.
Further regarding arguments alleging the lack of a database system
and database server, claim 1 requires “mounting the set of files to the system
to allow a database server running on the system to access the set of files.”
Petitioner persuasively shows that that the NetApp database server
recognizes the set of files of a database. For example, Petitioner relies on
Sanders’s teaching of “access[ing] the clone database . . . [by] mount[ing]
the clone volumes to a database server.” Pet. 35 (quoting Ex. 1013, 28); see
also Pet. 19 (similar reliance on Sanders’s server, citing Ex. 1013, 28–29;
Ex. 1009 ¶ 60).23 On cited page 28, Sanders urges the user to “repeat this
step to create an export entry for each clone volume that is used for the clone
database.” Ex. 1013, 28. As quoted in the Institution Decision, Edwards
specifically refers to the clone as a database accessible by applications:
“[t]he clone database is a frozen image of the database file system at the

23 In its Reply, Petitioner also points to Dr. Shenoy’s acknowledgement that
the NetApp server can access NetApp disk blocks indirectly. See Pet. Reply
18–19 (citing Ex. 1031, 305:8–15 (“So as I just said, when a database block
is read by a database server, you map it to some portion of a database file.
You make a request to that portion of the data from the file system, which
then maps it to underlying disk block.”)).

IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

72

time of the clone creation. If necessary, the primary database can be
restored from the snaphsot created for the clone; or applications can point
directly to the clone database.” Dec. on Inst. 16 (quoting Ex. 1013, 6).
Based on the foregoing discussion and consideration of the record, the
record supports Petitioner’s showing.
c. Virtualization
In addition to the argument asserting the lack of virtual database in the
NetApp system listed above (PO Resp. 39), Patent Owner also argues, as
follows, that Edwards does not describe a virtual database:
This “virtualization” is not the process of decoupling data from
its storage layer. (Shenoy Decl. at ¶ 113.) Rather, it is
virtualization within the file system storage layer itself,
permitting a decoupling of file system structures from the
physical disks which store data and allowing instantiation of
many file systems on a set of physical drives rather than
confining a file system per a physical drive or dedicated set of
disks.
Id. at 40.
According further to Patent Owner, “[o]ne skilled in the art would not,
after reading Sanders, Edwards and Patel, know how to put together a
system where a virtual database can run on a different database server and
operating system than the production database to ensure, for example, the
described flexibility in provisioning a test system.” PO Resp. 35 (citing Ex.
2017 ¶ 119). Patent Owner makes additional arguments advocating its view
of “virtualization” that track Patent Owner’s claim construction arguments
that we address above. See supra Section II.C; ’026 PO Resp. 35–36, 40, 55
(“Petitioner attempts to . . . draw a false equivalence between Flex volume
‘virtualization’ . . . and the claimed virtualization of data bases. The Flex
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

73

volumes . . . . operated at the physical storage level, not the application level,
which is the level at issue in the challenged claims.”).
Again, Patent Owner’s arguments largely turn on claim construction
and fail to rebut Petitioner’s showing. Patent Owner’s arguments regarding
virtualization turn in part on the claim construction of database blocks and
databases. See PO Resp. 39. These arguments also are not persuasive for
the reasons explained above. As determined above, the NetApp system as
described in Sanders and Edwards, and as further described in Data ONTAP
Guide and Patel, is virtual and operates on database blocks according to the
claim construction set forth above. In addition, contrary to Patent Owner’s
arguments, the challenged claims do not require the ability to operate a
virtual database with a different database server and operating system than
the production base. They also do not require operation at the application
level. As we determine above in several instances, the ’077 patent describes,
and the claims embrace, file system databases. See supra Section II.C.1.i, ii
& 2; see, e.g., Ex. 1001, 7:4–10 (“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 regarding virtualization, Patent Owner’s arguments concede
that the NetApp system as disclosed by Sanders employs a type of
virtualization––“a decoupling of file system structures from the physical
disks which store data.” PO Resp. 40 (emphasis added). Patent Owner’s
characterization of “virtualization” changes in various arguments. For
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

74

example, Patent Owner states that with respect to the claimed invention,
“[i]n reality, however, each virtual database is ‘virtual’ as it is accessing the
same remote system and the same database blocks received at different
points in time as other virtual databases.” Id. at 31. On the other hand,
Patent Owner also states that the “‘virtualization’ [described in Edwards] is
not the process of decoupling data from its storage layer.” Id. at 40 (citing
Ex. 2017 ¶ 113).
As found and generally described above in connection with claim 1,
the NetApp system described by Edwards and Sanders allows the creation of
multiple virtual database clones, each of which may access and share the
same database blocks received from a source databases at a destination
database at different points in time via SnapMirror and FlexClone. For
example, Petitioner persuasively relies on teachings in Sanders and Edwards
that describe making clones that share blocks with a base snapshot and
making writable copies for “development or test purposes.” See Pet. 35–36
(citing Ex. 1009 ¶ 135; Ex. 1014, 14–15). Petitioner also argues
persuasively that “the physical implementation of the files in the clone
volume is decoupled from the logical use of the files. The cloned volume is
‘virtual’ because it ‘points’ to the pre-existing data blocks associated with a
point-in-time copy of its parent volume instead of physically duplicating the
data blocks of its parent.” Pet. 31 (citing Ex. 1009, 122–124). As
determined above, a “virtual database” is construed as “a set of readable and
writable database files capable of being mapped to physical addresses for
stored database blocks associated with another database.” Supra section
II.C.2.iii (Claim Construction).
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

75

Patent Owner does not challenge Petitioner’s contentions
persuasively. Rather, apart from the “set of files” limitation discussed
below, Patent Owner effectively concedes that the NetApp system described
by Sanders and Edwards includes a virtual database according to our claim
construction. Furthermore, the ’077 patent Specification touts eliminating
“[s]everal steps requiring copies of [a] database . . . as a result of the use of
virtual databases.” Ex. 1001, 25:61–63.
In other words, as Petitioner contends:
The purpose of the patent is virtualizing data by
eliminating redundant physical copies, not platform
independence. ‘077 patent at 20:66–21:2 (“workflow scenarios
associated with databases can be simplified and made highly
efficient by creating virtual databases instead of making
physical copies of the databases.”); id. at 1:64–67. The patent’s
database virtualization thus refers to virtualizing data. Mapping
VDB files to the physical addresses of stored database blocks,
rather than making physical copies, achieves the stated purpose.
Pet. Reply 16 (citing Ex. 1001, 19:53–56, 20–39–45, Figs. 10–11; Ex. 1063
¶ 37); see also Pet. Reply 14 (citing Ex. 1031, 54:20–55:1 (Dr. Shenoy
testifying that pointing to the “same structures” via a “new root inode” and
the original root inode constitutes “in that sense . . . a virtual copy)); 15
(citing Ex. 1063 ¶ 37 and describing data virtualization); Ex. 1063 ¶¶ 36–44
(describing a virtual database as data virtualization in light of the ’077
patent).
Describing the NetApp WAFL system as described in Edwards, Dr.
Shenoy also states, during cross-examination, that “you made a copy of the
root inode, which is pointing to the same structure. That’s a virtual copy. It
does involve pointers.” Ex. 1031, 56:5–7. He also testifies that “[b]ecause
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

76

you do not have two physical copies, it’s a virtual copy.” Id. at 55:4–5.24
In a similar fashion, the ’077 patent repeatedly highlights these essential
features of a virtual database: “A point-in-time copy retrieves data changed
in the database . . . . A virtual database (VDB) is created by creating a set of
files in the data storage system. Each file in the set of files created for a
VDB is linked to the database blocks . . . associated with a point-in-time
copy of the source database.” Ex. 1001, Abstract (emphasis added); see also
id. at 15:2–6 (noting that “[s]ubsequent PIT copies obtain only the changed
information . . . and can be much smaller than the information contained in
the first PIT copy.”)
Patent Owner also argues that our construction improperly covers a
source database. PO Resp. 32. This argument, like most of Patent Owner’s
arguments, are addressed above in the Claim Construction section. See
supra Section II.C.2.ii. Based in part on Patent Owner’s arguments, as
addressed, the modified claim construction clarifies that a virtual database
requires association with another database: “a set of readable and writable
database files capable of being mapped to physical addresses for stored

24 Dr. Shenoy also contends that he is “not sure that there is any decoupling
going on at that level” in a discussion of the WAFL system, where “the
pointers are shared, the disk blocks are shared.” Ex. 1031, 54:17–19.
Essentially Dr. Shenoy appears to contend that sharing pointers by “simply
creating a copy of the root inode” makes him “not sure” of “any
decoupling.” Ex. 1031, 54:15–551. Dr. Shenoy’s testimony about “not
[being] sure” fails to rebut sufficiently the record evidence (including his
statements) about the meaning of virtual in light of the ’077 patent
Specification. Furthermore, Dr. Shenoy fails to explain why having a copy
of an inode that points to another inode structure is any more decoupled
from the underlying physical data than copying the whole inode structure.
See the discussion below regarding the claimed “set of files.”
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

77

database blocks associated with another database.” Supra Section II.C.2.iii.
Relying on pointers to the source database (i.e., another database), Petitioner
shows that the NetApp system, as taught by Sanders and Edwards, renders
this feature of virtualization to be part and parcel of, and rendered obvious
by, the NetApp system. See, e.g., Pet. 37–38 (explaining that creating a new
vol_info block points to a PIT copy of “already-stored database blocks
associated with a point-in-time copy of the source data base”); Ex. 1009
¶¶ 140–42 (testimony directed to the same point).
As Petitioner summarizes: “The claims require ‘receiving database
blocks for the point-in-time copies of the source database’ and creating files
‘linked to the stored database blocks.’. . . A source database is not created by
mapping or pointing to stored blocks of point in time copies of itself.” Pet
Reply 15 (citing Ex. 1063 ¶ 36). As Petitioner also points out, and as
discussed above in the claim construction section, “the patent states that a
source database can be a virtual database.” Id. (quoting Ex. 1001, 22:14–16
(“The virtual database may be created based on . . . a point-in-time copy of
another virtual database.”); see supra section II.C.2. In other words, a
central essence of a virtual database according to the ’077 patent
Specification involves eliminating the requirement to make physical copies:
“Various workflow scenarios associated with databases can be simplified
and made highly efficient by creating virtual databases instead of making
physical copies of the data bases.” Ex. 1001, 20:66–21:2 (emphasis added).
Based on the foregoing discussion and consideration of the record, the
record supports Petitioner’s showing.

IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

78

d. Set of Files
Patent Owner contends that creating a Snapshot in Edwards by
creating “the new vol_info block is not a set of files, which is what must be
linked to the stored database blocks. . . . Nor does the new vol_info block
point to stored database blocks.” See PO Resp. 59 (citing Ex. 2017 ¶¶ 155–
56). Patent Owner makes materially the same arguments in the ’026 IPR.
See ’026 PO Resp. 56–59.
These arguments are not persuasive. The argument about stored
“database blocks” again turns on Patent Owner’s unsupported claim
construction of that term. The NetApp system discloses “database blocks”
according to our claim construction. Patent Owner does not dispute, or
rebut, persuasively, Petitioner’s contention that the NetApp system points to
the NetApp data blocks.25
As to the other argument, Patent Owner contends that each clone
merely creates a “clone vol_info block,” which “is not a set of files.” Id. at
59 (emphasis added). Patent Owner explains that according to a dictionary
source, an applicable meaning of “set” is “[a] group of things of the same
kind that belong together and are so used.” See id. (citing Ex. 2027, 3–4).
Petitioner disagrees with Patent Owner. See Pet. 36–39; Pet. Reply 22 (“The
creation of a new vol_info block creates a new file system with new files.”)
(citing Ex. 1009 ¶¶ 74–76; 1063 ¶¶ 55–57).

25 For example, although Patent Owner contends that “[i]node files or inodes
are not mapped to physical addresses for database blocks”; Patent Owner
also states that “inode files are collections of inodes which may point to file
system data blocks.” PO Resp. 54 (emphases added).
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

79

To illustrate the argument, Patent Owner annotates and reproduces the
following version of Edward’s Figure 1:

PO Resp. 59 (citing Ex. 1014, Fig. 1). As described by Patent Owner,
above, annotated Figure 1 of Edwards illustrates Edwards’s pointer system,
which ultimately uses inode files to map to “data blocks.” See PO Resp. 54–
55, 58–59.
Contrary to Patent Owner’s arguments, by creating a new “clone
vol_info block,” the NetApp system creates a new set of files. In other
words, creating a new member, “clone vol_info block,” which points to the
old set of files pointing to PIT copies, constitutes creating a new “group of
things of the same kind that belong together and are so used,” according to
Patent Owner’s proffered definition of “set.” See PO Resp. 59 (citing Ex.
2007, 3–4). By analogy, the set of numbers (1, 5, 6) is a different set than
the set of numbers (2, 1, 5, 6), even though the sets overlap. Patent Owner’s
arguments imply that all original pointers in Edwards would have to be re-
copied to constitute “creating a set of files” as set forth in the challenged
claims, but Patent Owner fails to explain why that creates a patentable
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

80

distinction over the set of files as Petitioner advances with respect to Sanders
and Edwards, and as described above. See PO Resp. 59; supra note 24; Ex.
1063 ¶ 55 (addressing the argument).
In addition, as Petitioner argues, FlexClone creates a new FlexVol
volume: “[A] FlexVol volume is a file system created within a file on an
underlying file system.” Pet. Reply 22 (quoting Ex. 1014, 11, citing Ex.
1013, 14; Ex. 1031, 257:4–6 (“[A] FlexVol is based on the WAFL file
system. So in this case, there is a file system associated with the volume.”)).
The clone vol_info block represents a file structure that corresponds to the
“‘read/write file structure representing a VDB’ created in the patent.” See
Pet. Reply 22 (quoting Ex.1001, 19:16). In other words, as Petitioner
argues, “the creation of a new vol_info block creates a new file system with
new files.” Id.; see also Ex. 1009 ¶¶ 78–82 (summarizing Edwards as a
virtual database system); Ex. 1063 ¶¶ 55–58. Furthermore, the NetApp
system can create a clone of a clone quickly, thereby creating another set of
files, at any point in time. See Ex. 1013, 3 (“a Flexclone volume has the
ability . . . to be the source of another FlexClone volume).
As described above in this section and the summary above of
Edwards, the record supports Petitioner. Edwards discloses that
[c]reating a clone volume is a simple process. WAFL creates
the files required for a new FlexVol Volume. But rather than
creating and writing a new file structure inside the volume,
WAFL seeds the container file of the clone with a vol_info
block that is a copy of the vol_info block of the Snapshot copy
on which the clone is based.
Ex. 1014, 15 (emphases added).
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

81

In other words, according to Edwards, WAFL “creates the files” (i.e.,
a new file system) during cloning, as Petitioner and Dr. Zadok contend, even
if it does not write “a new file structure inside the volume.” See id. (noting
other differences in the files of the created FlexClone volume, such as
“holes” and “the writing of a fixed, small number of blocks”).
Expounding on the point, Dr. Zadok testifies that FlexClone volumes
are writable and therefore different than snapshot’s read-only files, thereby
showing for another reason that the clone vol_info block constitutes an
“independent set of files.” Ex. 1063 ¶ 58, ¶¶ 55–58 (responding to Patent
Owner and Dr. Shenoy). The record supports Dr. Zadok’s testimony in this
regard also. See Ex. 1014, 15 (discussing FlexClone volumes); Ex. 1013, 3
(FlexClone volumes are “writable point-in-time image of a FlexVol volume
or another FlexClone volume). As Dr. Zadok testifies, Dr. Shenoy agrees
that a FlexClone volume (created with a cloned vol_info block) constitutes a
writable file structure and a snapshot copy is read only. See Ex. 1063 ¶¶ 55–
58; Ex. 1031:267:2–269:6; 351:19–352:8. Accordingly, as Petitioner
argues, “the files of a FlexClone cannot be the same as the files of a
snapshot.” Pet. Reply 23 (citing Ex. 1063 ¶ 58).
Based on the foregoing discussion and consideration of the record, the
record supports Petitioner’s showing.
e. PIT Copies
Claim 1 requires “receiving database blocks for the point-in-time
copies of the source database . . . storing the database blocks on a storage
system; . . . [and] creating a set of files linked to the stored database blocks
on the storage system.” Patent Owner also argues that “SnapMirror does not
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

82

create or load a plurality of point-in-time copies of the FlexVol volume it is
cloning, it is merely cloning the current state of the data that is within the
volume.” Id. at 51. According to Patent Owner,
. . . when a copy of a FlexVol volume is created by
SnapMirror, it is the exact replica of the current state of a
FlexVol volume with all the inodes and pointers to data blocks
is created. (Shenoy Decl. at ¶¶ 141, 148, 152.) Even if the
FlexVol volume included various snapshots, those snapshots
are merely copied when the entirety of FlexVol volume is
replicated—SnapMirror does not create or load a plurality of
point-in-time copies of the FlexVol volume it is cloning, it is
merely cloning the current state of the data that is within the
volume. (Id. at ¶¶ 149–50.) And even if the volume includes
snapshots, merely cloning the current state of the volume is
fundamentally different than the invention of the ’077 patent,
which allows receiving point-in-time copies of the source
database at different points in time and creating a virtual
database using the point-in-time copies. (Id. at ¶¶ 149–52.)
PO Resp. 51.
Patent Owner’s arguments, focusing on its disclosed invention as
being “fundamentally different,” do not rebut Petitioner’s showing as
summarized above with respect to a specific element as recited in challenged
claim 1. Petitioner shows that Sanders discloses loading PIT copies during
initial steps employed to clone a FlexVol using SnapMirror. See Pet. 33
(citing Ex. 1013, 21, 23; Ex. 1009 ¶ 129); Ex. 1009 ¶¶ 62 (citing Ex. 1013,
Figs. 3, 4) 64 (citing Ex. 1013, 27, 28). Petitioner also replies that “the
claims require ‘receiving a plurality of point-in-time copies.’ ‘077 patent,
claim 1. But these different PIT copies need not be received ‘at different
points in time.’” Pet. Reply 20 (quoting PO Resp. 51).
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

83

Claim 1 requires the “storage system” to receive and store “database
blocks for the [PIT] copies.” According to claim 1, the PIT copies
(snapshots) each may be received and stored at different times, or at the
same time, and the set of files are linked to them. Patent Owner’s argument
admits that the NetApp system FlexVol volume incudes a current state that
“includes snapshots” (and that those snapshots are cloned).
As summarized above with respect to the Petition, creating NetApp
snapshots at a destination satisfies the claim 1 requirements of receiving and
storing database blocks for the PIT copies on a storage system. See, e.g., Ex.
1013, 3 (stating “[d]ata changes made at SnapMirror source are continuously
replicated at the SnapMirror destination”); 21 (during cloning, “the
initialization process transfers data, including all Snapshot copies, from the
source volume to the destination volume for the first time; thereafter, only
changed blocks are transferred”). Therefore, as Petitioner contends, even if
the claims require “‘receiving point-in-time copies of the source database at
different points in time,’” “SnapMirror sends snapshots stored on the source
to the destination.” Pet Reply 20 (quoting PO Resp. 51 (emphasis by
Petitioner), citing Ex. 1031, 107:2–108:2).
There is no dispute that a SnapMirror destination receives
“continuously replicated” changes at different points in time. See Ex. 1013,
3. Edwards provides background to Sanders regarding PIT copies: “WAFL
write anywhere [file layout scheme] . . . can create point-in-time Snapshot
copies of a volume almost for free.” Ex. 1014, 11. Each time NetApp
writes a block, it updates links or pointers to the new location on the block.
Snapshot copies point to the blocks. See Ex. 1009 ¶¶ 71–77 (citing Ex.
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

84

1014, 11); Ex. 1014, 15 (“Like the creation of a snapshot, creating a flexible
volume clone, or FlexClone volume, requires the writing of a fixed, small
number of blocks and is nearly instantaneous.”).26
Based on the foregoing discussion, the record supports Petitioner’s
showing, and Patent Owner does not rebut it persuasively.
f. Linking, Volume, Database
Regarding the linking element in challenged claim 1, Patent Owner
contends that the proposed combination does not disclose or render obvious
identifying a “source database,” but rather, only identifies “a NetApp
volume.” PO Resp. 41–42. Patent Owner contends that “an identification of
a volume is not an identification of a database,” because “there is no
necessary correspondence between” the two. Id. at 42 (citing Ex. 2017
¶¶ 159–62. According to Patent Owner, “Petitioner’s expert acknowledged
that multiple database[s] could be stored in a single volume.” Id. (citing Ex.
2016, 188:22–189:10)). Patent Owner also argues that Sanders does not
disclose the “linking” step, because identifying the source database and
linking constitute separate requirements. PO Resp. 43.
Patent Owner’s arguments are not persuasive. Regarding the latter
argument, claim 1 recites “linking a source database, wherein linking the
source database comprises receiving information identifying the source
database.” As Dr. Zadok testifies, “[t]he [S]pecification explains that the
required information is necessary ‘to retrieve data from the production
database system 110.’” Ex. 1063 ¶ 52 (citing Ex. 1001, 21:10–18). The

26 As discussed above, FlexClones are essentially writable snapshots. Ex.
1013, 3. Patel’s Figure 4 reproduced below presents a good illustration
representing the copying of changed database blocks for a clone.
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

85

Specification states that “[t]he information may include the name of the
database” and other information. It also states, “as part of the linking
operation, the database storage system may communicate with the
production database production system.” Ex. 1001, 21: 17–19. The ’077
Specification states further that the information “enables the database
storage system 100 to retrieve data,” and “[t]he database storage system 100
can retrieve database blocks from the linked database,” but “[t]he load
operation retrieves data” only from a “linked . . . database storage system.”
Ex. 1001, 21: 15–17, 23–25, 35–39.
In other words, the ’077 patent Specification tracks claim 1, and
describes providing some type of necessary information for linking, such as
the name of the database, but does not describe any other necessary
information or steps as part of linking. Moreover, Petitioner contends that
“the ‘snapmirror initialize’ command is executed on the destination storage
system and provided with the source volume information.” Pet. 32 (citing
Ex. 1013, 22–23; Ex. 1009 ¶ 127). Therefore, Petitioner shows that this
command links the destination and source databases together. Beyond
arguing that the NetApp system does not disclose or suggest linking by
merely providing a database name, Patent Owner fails to identify what
additional action the term requires and fails to distinguish the initialize
command persuasively. See PO Resp. 42–43.
Turning to the former arguments, as Petitioner and Dr. Zadok also
contend, identifying a volume identifies a database. See Pet. Reply 20–21
(quoting Ex. 1013, 6 (“dbdata is “used to store the production database table
data”); citing Ex. 1063 ¶ 52). Sanders describes “creat[ing] an instantaneous
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

86

point-in-time copy of a production database by creating an exact copy of the
storage system volumes that are used to hold the database’s data and
transaction logs.” Ex. 1013, 1. Sanders refers to “cloned databases” that
“share data with the production database they were created from.” Id.
Sanders also teaches that “you need to initialize the SnapMirror relationship
for each volume that is used for the dataset by executing” the initialize
command. Id. at 22. Sanders also describes “[c]reating a DB2 Database on
a NetApp or IBM N-Series Storage System” (id. at 9), refers to “the
FlexVols used for the source database” (id. at 9, Fig. 4, step 2), refers to
“[c]lone database volumes (id. at 8, Fig. 3), and uses a command “create
database [DatabaseName] on [MountPoint]. As Dr. Zadok also testifies,
“the SnapMirror initialize command identifies a source volume named
‘dbdata’ on a source storage system “srcstore.” Ex. 1063 ¶ 53 (citing Ex.
1005, 22 (“snapmirror initialize –S srcstore:dbdata dststore:dbdata.”)).
Based on these teachings, an ordinarily skilled artisan would have
recognized that a volume designated for and containing a database identifies
a database. See Ex. 1063 ¶ 53.
Therefore, even if it is possible for a volume to contain more than one
database as Patent Owner contends (see PO Resp. 42–43), Sanders at least
discloses or suggests that a volume also includes a single database––in
typical situations involving the cloning of a desired database. Petitioner
shows that Sanders discloses, or at least suggests, linking by identifying a
source database as set forth in claim 1, in order to clone a database.27

27 In Dr. Zadok’s deposition testimony relied upon by Patent Owner (Ex.
2016, 188:22–189:10, PO Resp. 42), Patent Owner asks if “it is possible to
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

87

Based on the foregoing discussion and the record, Patent Owner
does not rebut Petitioner’s showing persuasively.
g. Claims 1, 3, 5–7, 9, 10, 18, 20–23, 25, and 26––Summary
We adopt Petitioner’s showing as summarized above, and also with
respect to claims 3, 5–7, 9, 10, 18, 20–23, 25, and 26. See Pet. 30–53. The
Scheduling Order cautions Patent Owner that any arguments for
patentability not raised in the Response will be deemed waived. See Paper
12, 3. As noted above, Patent Owner has grouped together independent
claims 1 and 18 and focused arguments on claim 1. PO Resp. 41–42. Patent
Owner has elected not to respond separately, with specificity, to the grounds
of unpatentability asserted against claims 3, 5–7, 9, 10, 18, 20–23, 25, and
26. Based on the foregoing discussion and a review of the record, we
determine that Petitioner has established by a preponderance of the evidence
that the subject matter of claims 1, 3, 5–7, 9, 10, 18, 20–23, 25, and 26
would have been obvious over Sanders and Edwards.
v) Remaining Asserted Grounds
As noted above, the Scheduling Order cautioned Patent Owner that
any arguments for patentability not raised in the Response will be deemed
waived. See Paper 12, 3. As also noted above, Patent Owner has grouped

store more than one database in a volume,” and Dr. Zadok replies that “I
believe the technology is flexible enough it allows you to store multiple sets
of files or multiple databases within the same volume.” Dr. Zadok otherwise
testifies that “the volume name, in my opinion, identifies this source
database.” Id. at 188:19–20. The possibility raised by Patent Owner does
not overcome Petitioner’s showing of obviousness where NetApp discloses,
or at least suggests, identifying a database via a volume name or vice versa.
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

88

together independent claims 1, 11, 18, and 27 and focused arguments on
claim 1. PO Resp. 41–42; ’026 PO Resp. 40–41. As summarized further
below, Patent Owner has elected not to respond separately, with specificity,
to the grounds of unpatentability asserted against claims 2, 4, 8, 11–13, 17,
19, 24, 27–29, and 33.
a. Claims 2, 4, and 19––Sanders, Edwards, and Patel
Petitioner adds the teachings of Patel to the basic combination of
Sanders and Edwards in an asserted ground of obviousness as to dependent
claims 2, 4, and 19. Pet. 52–57. Petitioner relies on Patel, a patent directed
to NetApp, to demonstrate the obviousness of these claims. Pet. 52‒57
(supported by the testimony of Dr. Zadok in Ex. 1009). These claims
require associating a test virtual database with a PIT copy of a development
database, or a clone of a clone. As noted above, and as Petitioner contends,
Sanders teaches cloning a clone (i.e., using a clone as a source database),
and Patel teaches using a test clone as a source to clone a quality assurance
clone. See Pet. 54–55 (citing Ex. 1009 ¶¶ 150, 157; Ex. 1013, 3); Pet. 25–26
(citing Ex. 1016, 1, 3, 10, Fig. 10; Ex. 1009 ¶¶ 83, 84).
In addition, as found above, Patel describes the NetApp technologies
described by Edwards and Sanders (i.e., FlexClone, SnapMirror, and
Snapshot) as “solutions [that] dramatically reduce the effort required to
deploy databases for application development, testing, QA, maintenance,
and migration.” See Ex. 1016, 1, 6, 7. According to Patel, “NetApp
Snapshot technology offers advantages because a Snapshot copy does not
involve copying data from one location to another, so it is extremely fast and
space efficient.” Id. at 8.
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

89

Patel’s Figure 4 follows:

Ex. 1016, 8. In general, Figure 4 represents the creation of multiple
FlexClone copies (e.g., QA, Test 1), which store only changed blocks.
According to Patel, these copies can be created and provisioned faster and
with less memory space than legacy systems to provide development, test,
and QA databases. See id. at 8.
Patel’s Figure 2 follows:

IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

90

Patel’s Figure 2 represents using NetApp’s SnapMirror to replicate a
production database, and provisions test and QA clones from a development
clone. See id. at 6.
Patent Owner directs arguments to claim 1 and generally attacks
Petitioner’s showing regarding motivation or reasons to combine Patel with
the base references, as discussed above. These arguments are not persuasive
for the reasons discussed above. We adopt Petitioner’s showing and
determine that Petitioner has established by a preponderance of the evidence
that the subject matter of claims 2, 4, and 19 would have been obvious over
Sanders, Edwards, and Patel.
b. Claims 8, 11–13, 24, and 27–29––Sanders, Edwards, and Data
ONTAP Guide
Petitioner adds the teachings of Data ONTAP Guide to the basic
combination of Sanders and Edwards in an asserted ground of obviousness
as to dependent claims 8, 11–13, 24, and 27–29. ’026 Pet. 25–33, 43–57.
Petitioner uses the teachings of Data ONTAP Guide to provide further
details of NetApp’s storage copy features to show the obviousness of
dependent claims 8, 11–13, 24, and 27–29, again relying on the testimony of
Dr. Zadok. Id. Dr. Zadok testifies that Sanders expressly refers to Data
ONTAP Guide as a technical reference. ’026 Ex. 1109 ¶ 109 (citing ’26 Ex.
1113, 50 (i.e., same as Exhibit 1013). Petitioner primarily relies on Data
ONTAP Guide’s volume copy feature, to address the staging limitations of
the challenged dependent claims, and to bolster the staging teachings in
Sanders. See, e.g., ’026 Pet. 43–45 (citing ’026 Ex. 1113, 5; ’026 Ex. 1009
¶¶ 166–67, ’026 Ex. 1117, 379, 381). Petitioner contends that Data ONTAP
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

91

Guide’s NetApp teachings would have been useful to supplement Sanders’s
NetApp teachings and provide volume copies in order to provide disaster
protection. Id. at 44–45; see also id. at 29–30 (discussing further motivation
to combine).
As indicated above, Patent Owner directs arguments to claim 1, and
generally attacks Petitioner’s showing regarding motivation or reasons to
combine Data ONTAP Guide with the base references, as discussed above.
See also ’026 PO Resp. 34–35 (repeating general arguments applicable to
claim construction and claim regarding database blocks, application level
solutions, and metadata). Patent Owner does not rebut Petitioner’s showing
persuasively. We adopt Petitioner’s showing and determine that Petitioner
has established by a preponderance of the evidence that the subject matter of
claims 8, 11–13, 24, and 27–29 would have been obvious over Sanders,
Edwards, and Data ONTAP Guide.
c. Claims 17 and 33––Sanders, Edwards, Data ONTAP Guide,
and Sarma
Petitioner adds the teachings of Sarma to the basic combination of
Sanders, Edwards, and Data ONTAP Guide in an asserted ground of
obviousness as to dependent claims 17 and 33. ’026 Pet. 57–59. Petitioner
uses the teachings of Sarma to supplement NetApp’s storage system, as
taught by the base references, to show the obviousness of dependent claims
17 and 23, again relying on the testimony of Dr. Zadok. Id. Patent Owner
directs arguments to claim 1 and generally contends that Sarma does not
relate to databases or virtualization, but Patent Owner does not address
persuasively Petitioner’s showing regarding the reasons for adding the
teachings of Sarma to the base references. See ’026 PO Resp. 40.
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

92

Petitioner relies on Sarma for its data compression and other
techniques, not for its teachings about virtualization and databases. Pet. 58
(citing Ex. 1018, 2:27–11). Petitioner points out that Sarma discloses the
NetApp SnapMirror and ONTAP technology. Id. (citing Ex. ’026 Ex. 1018,
7:11–14; 14:16–23). Petitioner persuasively shows that Sarma’s standard
compression or encryption techniques would have benefited the NetApp
system described in the base references, for example, “because compression
was a well-known method of increasing transmission and storage
efficiency.” Id. (citing ’026 Ex. 1108 ¶¶ 183–84); see also id. at ’026 Pet.
31–33 (discussing further motivation to combine). We adopt Petitioner’s
showing and determine that Petitioner has established by a preponderance of
the evidence that the subject matter of claims 17 and 33 would have been
obvious over Sanders, Edwards, Data ONTAP Guide, and Sarma.
IV. CONCLUSION
Petitioner has met its burden of proof, showing by a preponderance of
the evidence that claims 1–13, 17–29, and 33 of the ʼ077 patent are
unpatentable based on the following grounds under 35 U.S.C. § 103(a) for
obviousness:
A. Claims 1, 3, 5–7, 9, 10, 18, 20–23, 25, and 26 over the combination
of Edwards and Sanders;
B. Claims 2, 4, and 19 over the combination of Sanders, Edwards, and
Patel;
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

93

C. Claims 8, 11–13, 24, and 27–29 over the combination of Sanders,
Edwards, and Data ONTAP Guide; and
D. Claims 17 and 33 over the combination of Sanders, Edwards, Data
ONTAP Guide, and Sarma.
V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that proceedings in IPR2015-00026 and IPR2015-00026
are consolidated for purposes of issuance of this final decision;
FURTHER ORDERED that claims 1–13, 17–29, and 33 of the ʼ077
patent are unpatentable;
FURTHER ORDERED that Patent Owner’s Motions to Exclude as to
Exhibits 1029, 1030, 1032, 1033, 1035–1146, 1054, and 1062, and ’026
Exhibits 1134–1136, 1138–1148, 1150, 1151, 1153, and 1156, are dismissed
(as moot);
FURTHER ORDERED that Patent Owner’s Motions to Exclude as to
Exhibits 1048 and 1049, and ’026 Exhibits 1117 and 1150, are denied;
FURTHER ORDERED that the parties’ Demonstratives for the Oral
Hearing (Papers 63–66, Exhibits 1067 and 1068, ’026 Papers 60–63, and
’026 Exhibits 1171 and 1172) are expunged;
FURTHER ORDERED that Petitioner’s Motions to expunge Exhibit
1028 and ’026 Exhibit 1130 are granted;
FURTHER ORDERED that the parties’ Motions to Seal the
Demonstratives (Papers 60 and 62, and ’026 Papers 56 and 58) are dismissed
(as moot); and
IPR2015-00025 & IPR2015-00026
Patent 8,161,077 B2

94

FURTHER ORDERED that Petitioner’s Objections to Patent Owner’s
Demonstratives (Paper 67 and ’026 Paper 64) are dismissed (as moot).
This is a Final Decision. Parties to the proceeding seeking judicial
review of the decision must comply with the notice and service requirements
of 37 C.F.R. § 90.2.

PETITIONER:
Robert Steinberg
Jonathan Link
Giri Pathmanaban
LATHAM & WATKINS LLP
bob.steinberg@lw.com
jonathan.link@lw.com
giri.pathmanaban@lw.com

PATENT OWNER:
J. David Hadden
Saina S. Shamilov
FENWICK & WEST LLP
dhadden-ptab@fenwick.com
sshamilov-ptab@fenwick.com