Teradata US, Inc.

Patent Trials and Appeals Board

Dec 1, 2021

IPR2021-01017 (P.T.A.B. Dec. 1, 2021)

Trials@uspto.gov Paper 7
571-272-7822 Date: December 1, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

SAP SE,
Petitioner,
v.
TERADATA US, INC.,
Patent Owner.

IPR2021-01017
Patent 7,904,419 B1

Before LYNNE E. PETTIGREW, BART A. GERSTENBLITH, and
RUSSELL E. CASS, Administrative Patent Judges.

PETTIGREW, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314

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I. INTRODUCTION
Petitioner, SAP SE, filed a Petition for inter partes review of
claims 1, 2, 4–12, 14, 15, and 17–28 of U.S. Patent No. 7,904,419 B1
(Ex. 1001, “the ’419 patent”). Paper 1 (“Pet.”). Patent Owner, Teradata US,
Inc., filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
Under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we have authority to
institute an inter partes review if “the information presented in the
petition . . . and any response . . . shows that there is a reasonable likelihood
that the petitioner would prevail with respect to at least 1 of the claims
challenged in the petition.” 35 U.S.C. § 314(a) (2018). After considering
the Petition, the Preliminary Response, and the evidence of record, we
determine the information presented does not show a reasonable likelihood
that Petitioner would prevail in establishing the unpatentability of at least
one of the challenged claims of the ’419 patent. Accordingly, we do not
institute an inter partes review.
II. BACKGROUND
A. Real Parties-in-Interest
Petitioner identifies SAP SE, SAP America, Inc., and SAP Labs, LLC
as real parties-in-interest. Pet. 87. Patent Owner identifies Teradata US,
Teradata Operations, Inc., and Teradata Corporation as real parties-in-
interest. Paper 4, 1 (Patent Owner’s Mandatory Notices).
B. Related Matters
The parties identify the following district court proceeding involving
the ’419 patent: Teradata US, Inc. v. SAP SE, Case No. 3:20-cv-06127
(N.D. Cal.), filed August 31, 2020. Pet. 87; Paper 4, 1.
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C. Overview of the ’419 Patent
The ’419 patent is directed to managing allocation of temporary and
permanent files in a database system. Ex. 1001, 1:7–8. As background, the
’419 patent explains that typical database systems divide data into different
storage regions including permanent storage, typically used to store user
data, and temporary storage, typically used to store intermediate or final
results of a query. Id. at 1:21–29. The ’419 patent describes inefficiencies
in prior database systems associated with “the separation of the database
control logic for temporary and permanent files.” Id. at 1:48–50.
The ’419 patent discloses a “file management context” to indicate
allocation of files in storage. Id. at 1:56–64, 3:11–14. In one embodiment, a
file management context “includes two maps: a first map to allocate storage
identifiers for uniquely identifying each file created in the database system,
and a second map to allocate allocation units, which are blocks or pages of
storage.” Id. at 3:27–31. One embodiment of a database system includes a
file management context in non-persistent memory to indicate allocation of
temporary and permanent files and a file management context in a persistent
storage device to indicate allocation of permanent files. Id. at 4:10–14.
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Figure 2 of the ’419 patent, reproduced below, illustrates an example
of file management contexts stored in a database system (id. at 2:6–8):

Figure 2 above shows file management context 26 in non-persistent memory
and file management context 38 in a persistent storage device. Id. at
3:63–67. Persistent file management context 38 includes STORAGE_ID
map 106 to allocate storage identifiers to permanent files and
ALLOCATION_UNIT map 108 to allocate blocks or pages to permanent
files. Id. at 4:1–4. Non-persistent file management context 26 includes
STORAGE_ID map 110 to allocate storage identifiers to both temporary and
permanent files and ALLOCATION_UNIT map 112 to allocate blocks or
pages to both temporary and permanent files. Id. at 4:8–14. Each map
includes an array of flags set to “1” or “0,” where “1” represents an active
state indicating that a storage ID or allocation unit has been allocated. Id. at
4:4–7, 4:15–19. “[P]ersistent maps 106 and 108 are subsets of respective
non-persistent maps 110 and 112.” Id. at 4:14–15.
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In the event of a system crash or reset, maps 106 and 108 stored in a
persistent storage device are maintained “so that permanent files are not lost
as a result of the system crash or reset.” Id. at 5:60–64. By contrast,
maps 110 and 112 stored in non-persistent memory are lost when the system
crashes, “which effectively erases any allocated temporary files.” Id. at
5:64–65.
D. Illustrative Claim
Challenged claims 1, 2, and 4 are independent; claims 5–10, 18–24,
27, and 28 depend directly or indirectly from claim 1; claims 11, 12, and 25
depend directly or indirectly from claim 2; and claims 17 and 26 depend
directly from claim 4. Claim 4, reproduced below, is illustrative for
purposes of the issues raised at this stage of the proceeding:
4. An article comprising at least one storage medium containing
instructions that when executed cause a system to:
store a first file management file context in non-persistent
memory to indicate allocation of temporary and
permanent files; and
store a second file management file context in persistent storage
to indicate an allocation of permanent files.
Ex. 1001, 7:11–17.
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E. Asserted Grounds of Unpatentability
Petitioner asserts that claims 1, 2, 4–12, 14, 15, and 17–28 are
unpatentable based on the following grounds (Pet. 14):
Claim(s) Challenged 35 U.S.C. § Reference(s)
1, 2, 4–8, 11, 14, 17–19,
21, 22, 28 103(a)
1 System R,2 Lorie3
9, 10, 12, 15, 20, 24–27 103(a) System R, Lorie, Astrahan4
23 103(a) System R, Lorie, R*5

III. DISCUSSION
A. 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

1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’419 patent has an
effective filing date before the effective date of the applicable AIA
amendments, we refer to the pre-AIA version of 35 U.S.C. § 103.
2 Jim Gray et al., The Recovery Manager of the System R Database
Manager, Computing Surveys, Vol. 13, No. 2, 223–42, June 1981
(Ex. 1002, “System R”).
3 Raymond A. Lorie, Physical Integrity in a Large Segmented Database,
ACM Transactions on Database Systems, Vol. 2, No. 1, 91–104, Mar. 1977
(Ex. 1008, “Lorie”).
4 M. M. Astrahan et al., System R: Relational Approach to Database
Management, ACM Transactions on Database Systems, Vol. 1, No. 2, 97–
137, June 1976 (Ex. 1003, “Astrahan”).
5 Haas et al., R*: A Research Project on Distributed Relational DBMS,
Quarterly Bulletin of the IEEE Computer Society Technical Committee on
Database Engineering, Vol. 5, No. 4, 28–32, Dec. 1982 (Ex. 1009, “R*”).
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obviousness is resolved on the basis of underlying factual determinations,
including (1) the scope and content of the prior art; (2) any differences
between the claimed subject matter and the prior art; (3) the level of ordinary
skill in the art; and (4) when in evidence, objective indicia of
non-obviousness.6 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
B. Level of Ordinary Skill in the Art
Citing the Declaration of Dr. Wolfgang Lehner, Petitioner contends
that a person of ordinary skill in the art at the time of the invention “would
have possessed at least a Bachelor’s degree in computer science with at least
two years of experience with database system development.” Pet. 14 (citing
Ex. 1006 ¶¶ 21–22). Petitioner further contends that a person of ordinary
skill in the art could have had “some combination of (1) more formal
education and less technical experience, or (2) less formal education and
more technical or professional experience.” Id. (citing Ex. 1006 ¶¶ 21–22).
Patent Owner does not dispute Petitioner’s proposed level of ordinary skill
in the art. See generally Prelim. Resp.
At this stage of the proceeding, with the exception of the open-ended
phrase “at least,” which expands the range of experience indefinitely without
an upper bound, we adopt Petitioner’s assessment of the level of ordinary
skill in the art because it is consistent with the ’419 patent and the asserted
prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).

6 With respect to the fourth Graham factor, the parties at this time do not
present arguments or evidence regarding objective indicia of non-
obviousness. Therefore, the obviousness analysis at this stage of the
proceeding is based on the first three Graham factors.
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C. Claim Construction
In this inter partes review, we apply the same claim construction
standard that would be used in a civil action under 35 U.S.C. § 282(b).
37 C.F.R. § 42.100(b) (2019). In applying this standard, we generally give
claim terms their ordinary and customary meaning as would be understood
by a person of ordinary skill in the art at the time of the invention and in the
context of the entire patent disclosure. See id.; Phillips v. AWH Corp.,
415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc).
Petitioner contends that no claim terms require explicit construction at
this stage of the proceeding. Pet. 16. Patent Owner contends that in related
district court litigation, Petitioner has proposed construing several terms in
accordance with pre-AIA 35 U.S.C. § 112 ¶ 6, and Patent Owner faults
Petitioner for not applying those constructions in the Petition. Prelim.
Resp. 7–8.
Based on the record before us, we need not construe any claim terms
expressly to decide the issues presented at this stage of the proceeding. See
Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to
be construed, and only to the extent necessary to resolve the controversy
(citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed.
Cir. 1999))).
D. Asserted Obviousness over System R and Lorie
Petitioner contends that claims 1, 2, 4–8, 11, 14, 17–19, 21, 22, and 28
of the ’419 patent are unpatentable under 35 U.S.C. § 103(a) as obvious over
System R and Lorie. Pet. 24–70. In response, Patent Owner argues that
Petitioner fails to show that the combination of System R and Lorie teaches
a “file management context” stored in “non-persistent memory,” as required
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by independent claims 1, 2, and 4. Prelim. Resp. 16–23. For the reasons
discussed below, we determine that the information presented does not show
a reasonable likelihood that Petitioner would prevail in establishing that
claims 1, 2, 4–8, 11, 14, 17–19, 21, 22, and 28 would have been obvious
over System R and Lorie.
1. Overview of System R
System R describes the recovery manager of the Research Storage
System (RSS) layer of the System R database system. Ex. 1002, 223
(Abstract), 224. The RSS supports the notion of a transaction, which
consists of an application-specified sequence of RSS actions, including
“operations to create, destroy, manipulate, retrieve, and modify RSS objects”
such as files. Id. at 225, 227. An application declares the beginning of a
transaction with a BEGIN action and the end of the transaction with a
COMMIT action. Id. If the transaction either aborts or is aborted before the
transaction commits, the system must undo all actions of that transaction.
Id. at 227.
System R discloses that when the system crashes, the state of primary
memory is lost but the state of disk storage is preserved. Id. at 226. When
the system restarts following a crash, “the most recently committed state is
reconstructed from the surviving disk state by referencing a log of recent
activity to restore the work of committed and aborted transactions.” Id.
System R discloses that all persistent data are stored in files that are
made up of 4096-byte pages allocated on disk. Id. at 229. A buffer manager
brings files to be modified into a virtual memory buffer pool. Id. The buffer
manager uses a least recently used (LRU) algorithm to regulate occupancy
of pages in the buffer pool. Id.
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The System R database stores two types of files, nonshadowed and
shadowed, each having a particular recovery protocol. Id. at 230. Figure 7
of System R, reproduced below, shows the directory structure for shadowed
and nonshadowed files:

Id. Figure 7 above shows a directory structure with a single entry for a
nonshadowed file (file A) and two entries—a current version and a shadow
version—for a shadowed file (file B). Id.
Nonshadowed files have no automatic recovery. Id. The system
updates pages of nonshadowed files in the buffer pool and stores updated
pages back to disk when the pages are removed from the buffer pool by the
LRU algorithm or when the file containing the pages is saved or closed. Id.
“By contrast, the RSS maintains two on-line versions of shadowed
files, a shadow version and a current version.” Id. “RSS actions affect only
the current version of a file and never alter the shadow version,” unless the
current version is saved as the new shadow version to make recent updates
to the file permanent. Id. “Although the current version of a [shadowed]
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file does not survive restart, because recent updates to the file may still
reside in the buffer pool, the shadow version of a file does.” Id. “Hence at
RSS restart . . . all shadowed files are reset to their shadow versions.” Id.
System R refers to Lorie for a more detailed description of how the current
and shadow versions of a shadowed file are implemented. Id. at 231.
2. Overview of Lorie
Lorie discloses a recovery scheme for use with the System R database.
Ex. 1008, 91 (Abstract), 104. The recovery scheme “is based on
maintaining a dual mapping between pages and their location on disk. One
mapping represents the current state of a segment being modified; the other
represents a previous backup state.” Id. at 91 (Abstract).
Lorie first describes a conventional technique for mapping logical
pages of a database into physical slots of a segment on disk. Id. at 93–96. A
mapping is implemented using a vector Vk, referred to as a page table, which
is a sequence of slot numbers. Id. at 94. The ith element of the vector
indicates which physical slot is used to store the contents of page i. Id.
When pages need to be modified, the system brings the pages from their disk
slots into a page buffer (PB) in memory for modification. Id. at 95. When
processing is completed, the system writes pages back to disk if they have
been modified. Id. Lorie explains that this conventional method is
vulnerable to a system failure, such as a crash while the system is writing
pages back to disk. Id. at 95–96. In that situation, “[i]f only some pages
have not yet been written back on disk, the contents of these pages will be
different from what the user expects.” Id. at 96.
Lorie proposes an improved recovery scheme that uses two versions
of a logical page—a current and a backup. Id. at 96–97. Lorie discloses a
current page table, Vk0, and a backup (or shadow) page table, Vk1, identifying
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disk slots storing current and backup pages in disk segment Sk. Id. at 97,
Fig. 3. To modify page i of Sk, the system retrieves page i from slot j on disk
and loads it into the page buffer (PB) in memory, where it is modified. Id.
When the system rewrites the modified page to disk, it writes the page into a
new free slot j' instead of its original slot j. Id. The old slot j is kept as a
shadow slot containing an older version of the page, and the new slot j'
contains the current version of the page. Id. The current page table Vk0 is
updated to map the logical page to slot j'. Id. If the same page is modified
again, it can be written back to the same slot j'. Id.
Figure 4, reproduced below, illustrates the database in a situation
when disk segment S1 is open for modification:

Id. at 98. Figure 4 above shows current page table V10 pointing to current
versions of pages stored in slots on disk and shadow page table V11 pointing
to shadow versions of pages stored in slots on disk. Id. If the database fails
and then restarts, the system determines whether the segment was open (i.e.,
whether pages were being modified). Id. If the segment was open, shadow
page table V11 reflects the last state of integrity and can be restored as the
current page table. Id. Figure 4 also shows bit maps associated with the
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page tables indicating whether slots of the disk segment are busy (denoted
by a “1”) or free (denoted by a “0”). See id. at 95 (describing use of bit
maps).
3. Analysis of Independent Claims 1, 2, and 4
Independent claims 1, 2, and 4 each require a “file management
context” stored in “non-persistent memory” for indicating allocation of
temporary and permanent files. Claim 4 recites an “article comprising at
least one storage medium containing instructions . . . to . . . store a first file
management context in non-persistent memory to indicate allocation of
temporary and permanent files.” Ex. 1001, 7:10–14 (emphasis added).
Claim 1, directed to a “database system,” likewise recites “a non-persistent
memory storing a second file management context . . . to indicate allocated
temporary files and permanent files in [a] pool of storage elements.” Id. at
6:43–52 (emphasis added). And claim 2, directed to a “method for use in a
database system having a persistent storage device and a non-persistent
memory,” similarly recites the step of “storing a second file management
context in the non-persistent memory,” and requires “updating” the second
file management context “to allocate a permanent file” and “to allocate a
temporary file.” Id. at 6:53–63 (emphasis added).
Petitioner contends that System R in view of Lorie teaches or renders
obvious a “file management context” stored in “non-persistent memory” for
indicating allocation of temporary and permanent files, as recited in the
independent claims. Pet. 28–35 (claim 4), 48–49 (claim 2), 52–58 (claim 1).
In its analysis of claim 4, Petitioner argues that System R’s current page
table and associated data structures, including free-space bit maps, comprise
a “file management context” to indicate allocation of temporary and
permanent files. Id. at 29–30 (citing Ex. 1002, 240), 35. Petitioner contends
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that the functionality of System R’s current page table and free-space bit
maps, as further detailed in Lorie, mirrors that of non-persistent
STORAGE_ID map 110 and non-persistent ALLOCATION_UNIT map 112
(i.e., non-persistent file management context 26) in the ’419 patent. Id. at 35
(comparing Lorie’s Figure 4 with Figure 2 of the ’419 patent); see also id.
at 5 (comparing Figure 7 of System R with Figure 2 of the ’419 patent).
Petitioner also contends that the System R current page table indicates
“allocation of temporary [files] (Changed Pages containing records updated
by yet-uncommitted transactions that do not survive a system restart) and
permanent files (Unchanged/Shadow Pages stored on disk that do survive a
system restart).” Id. at 35.
For the requirement that the file management context indicating
allocation of temporary and permanent files be stored in “non-persistent
memory,” Petitioner refers to an annotated version of Figure 7 of System R,
reproduced below:

Id. at 31; see Ex. 1002, 230. As shown above in red, Petitioner annotates
Figure 7 to indicate that System R’s current page table and changed pages
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are “In Memory” and the shadow page table and shadow and unchanged
pages are “On Disk.” Pet. 31; see also id. at 4, 20, 33, 36, 37, 39, 42, 43, 45,
46, 48, 49, 50, 51, 53, 54, 59, 60, 63, 64, 66, 67, 69, 77, 79, 81, 83
(duplicating Figure 7 with the same annotations throughout the Petition).
Petitioner repeatedly describes the current page table as being “in memory.”
See, e.g., id. at 5, 22, 46, 68.
Petitioner contends that a person of ordinary skill in the art “would
have understood that the Current Page Table resides in non-persistent
memory and tracks in-memory versions of Changed Pages (containing
‘temporary’ data records that do not survive a system restart) that have
changed in the course of a current transaction.” Id. at 31 (citing Ex. 1002,
230). Petitioner further contends that a person of ordinary skill in the art
“would have understood that the Current Page Table/Changed Pages reside
in non-persistent memory because ‘the current version of a file does not
survive restart.’” Id. at 31–32 (quoting Ex. 1002, 230). In contrast,
Petitioner continues, “‘the shadow version of a file does’” survive restart.
Id. at 32 (quoting Ex. 1002, 230). Petitioner also contends that “[w]hen
performing RSS actions, System R operates on in-memory, and thus
temporary, versions of pages,” and that “temporary augmentations of data
records . . . are stored in Changed Page files in memory.” Id.
For the similar limitation in claim 2 (“storing a second file
management context in the non-persistent memory”), Petitioner refers back
to its analysis for claim 4. Id. at 48–49 (“And as described with reference to
the first limitation of claim 4, System R’s Current Page Table and associated
data structures such as free-space bit maps disclose a second file
management context in non-persistent memory.”). Likewise, for claim 1’s
recitation of “a non-persistent memory storing a second file management
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context,” Petitioner refers back to its analysis for claim 2, which refers to the
claim 4 analysis. Id. at 53 (“As described with reference to the second
limitation of claim 2, System R’s Current Page Table and associated data
structures such as free-space bit maps disclose a second file management
context in non-persistent memory.”).
On the present record, we agree with Patent Owner that Petitioner
does not show sufficiently that the combination of System R and Lorie
teaches a “file management context” stored in “non-persistent memory.”
See Prelim. Resp. 16–22. As an initial matter, Petitioner asserts that the
“Current Page Table and associated data structures such as free-space bit
maps” comprise the claimed “file management context” in “non-persistent
memory,” but Petitioner does not cite any passage in System R disclosing
that the current page table (or any associated data structure) resides “in
memory” rather than “on disk,” as shown in Petitioner’s annotated version
of System R’s Figure 7. See Pet. 28–35. Nor does Petitioner point to any
disclosure in Lorie in support of its contention that the current page table in
the System R database system is stored in non-persistent memory. See id.
Instead, Petitioner argues that a person of ordinary skill in the art
would have understood that System R’s current page table resides in
non-persistent memory because it tracks changed pages, which themselves
“reside in non-persistent memory because ‘the current version of a file does
not survive restart.’” Id. at 31–32 (quoting Ex. 1002, 230). On the record
before us, the Petition lacks a sufficiently detailed explanation with
evidentiary support for why a person of ordinary skill in the art would have
concluded that the current page table shown in Figure 7 of System R resides
in non-persistent memory. Notably, the Petition does not specifically cite
the testimony of Dr. Lehner to support its contention regarding what a
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person of ordinary skill in the art would have understood. See id. (citing
System R but not Dr. Lehner’s Declaration). In any event, Dr. Lehner
makes substantially the same statement in his Declaration, without any
further explanation or citation to the evidentiary record. See Ex. 1006 ¶ 75.
Moreover, Petitioner’s contention that an ordinarily skilled artisan
would have understood that System R’s current page table is present in
memory rather than on disk is premised on Petitioner’s assertion that the
changed pages in Figure 7 of System R, which the current page table tracks,
reside in memory. Pet. 31–32. Patent Owner, however, identifies some
apparent deficiencies in Petitioner’s position. Prelim. Resp. 19–21. For
instance, Patent Owner argues that “Lorie makes it clear that both a current
version and a shadow version of a logical page are stored in slots of a disk
segment.” Id. at 19–20. As Patent Owner points out, Lorie’s Abstract
“explicitly states that the disclosed recovery scheme ‘is based on
maintaining a dual mapping between pages and their locations on disk.’”
Id. at 20 (quoting Ex. 1008, 91 (Abstract)). Patent Owner further notes that
Figure 4 of Lorie, which Petitioner cites for teaching details of the claimed
“file management contexts,” shows vector V10 (corresponding to System R’s
current page table) pointing to slots of a disk segment. Id. (citing Ex. 1008,
98). In addition, Lorie discloses storing a modified current page in slot j' on
disk, and updating the current page table to map the page to slot j', while
maintaining the shadow page at slot j. Ex. 1008, 97; see Prelim. Resp. 20.
Patent Owner also identifies an apparent deficiency in Petitioner’s
argument that a person of ordinary skill in the art would have understood
that the current page table in System R tracks pages in non-persistent
memory that do not survive restart. Prelim. Resp. 20 (citing Pet. 28–35).
Patent Owner again points to Lorie, which, according to Patent Owner,
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explains that the reason the current version of a page does not survive restart
is not that it is stored in memory. Id. at 20–21 (citing Ex. 1008, 98). Rather,
Lorie explains that in the event of system failure, a disk segment that is open
(because some pages are being modified in the page buffer) lacks
consistency and integrity, and therefore upon restart the system is restored to
its last integrity state (i.e., the shadow version of pages in the disk segment
rather than the current version). See id. at 21 (citing Ex. 1008, 98).
The Petition does not attempt to reconcile these various teachings in
Lorie with Petitioner’s assertion that the current page table tracks changed
pages in non-persistent memory rather than on disk (i.e., persistent storage).
See Pet. 28–35. Therefore, on the present record, we are not persuaded that
Petitioner has made a sufficient showing that System R’s current page table
tracks changed pages in memory, as Petitioner contends, rather than changed
pages on disk. Consequently, because Petitioner’s argument that the current
page table resides in memory depends on its assertion that the current page
table tracks pages in memory, Petitioner’s failure to make a sufficient
showing regarding that assertion further undercuts its position.
For at least these reasons, based on the record at this stage of the
proceeding, Petitioner has not shown sufficiently that the combination of
System R and Lorie teaches or suggests a “file management context” stored
in “non-persistent memory,” as required by independent claims 1, 2, and 4.
Accordingly, we determine that the information presented does not show a
reasonable likelihood that Petitioner would prevail in establishing that any of
independent claims 1, 2, and 4, or dependent claims 5–8, 11, 14, 17–19, 21,
22, and 28, would have been obvious over the combined teachings of
System R and Lorie.
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E. Remaining Asserted Obviousness Grounds
Petitioner contends that dependent claims 9, 10, 12, 15, 20, and 24–27
are unpatentable under 35 U.S.C. § 103(a) as obvious over the combination
of System R, Lorie, and Astrahan, and that dependent claim 23 is
unpatentable under 35 U.S.C. § 103(a) as obvious over the combination of
System R, Lorie, and R*. Pet. 70–86. Petitioner cites Astrahan and R* for
teaching additional limitations recited in these dependent claims, not for
teaching a “file management context” in “non-persistent memory.” Id.
Therefore, Petitioner’s contentions do not address the deficiencies identified
above with respect to independent claims 1, 2, and 4. Accordingly, we
determine that the information presented does not show a reasonable
likelihood that Petitioner would prevail in establishing that claims 9, 10, 12,
15, 20, and 23–27 would have been obvious over the asserted combinations
of references.
IV. CONCLUSION
After considering the evidence and arguments presented in the
Petition and Preliminary Response, we determine that the information
presented does not show a reasonable likelihood that Petitioner would
prevail in establishing that at least one of claims 1, 2, 4–12, 14, 15, and
17–28 of the ’419 patent is unpatentable on the grounds asserted in the
Petition.
V. ORDER
Accordingly, it is
ORDERED that the Petition is denied, and no inter partes review is
instituted.
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PETITIONER:

Matthew W. Johnson
Joseph M. Beauchamp
JONES DAY
mwjohnson@jonesday.com
jbeauchamp@jonesday.com

Andrew M. Mason
KLARQUIST SPARKMAN, LLP
andrew.mason@klarquist.com

J. Steven Baughman
PAUL, WEISS, RIFKIND, WHARTON & GARRISON LLP
sbaughman@paulweiss.com

PATENT OWNER:

Mehran Arjomand
Akira Irie
Shouvik Biswas
Roman Swoopes
Fahd H. Patel
MORRISON & FOERSTER LLP
marjomand@mofo.com
airie@mofo.com
sbiswas@mofo.com
rswoopes@mofo.com
fpatel@mofo.com

David L. Fehrman
DSA LEGAL SOLUTIONS PC
dfehrman@dsa-legal.com