Actifio, Inc.v.DELPHIX CORP.

Patent Trial and Appeal Board

Mar 31, 2016

13183131 (P.T.A.B. Mar. 31, 2016)

Trials@uspto.gov Paper 57
571-272-7822 Date Entered: March 31, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

ACTIFIO, INC.,
Petitioner,

v.

DELPHIX CORP.,
Patent Owner.
____________

Case IPR2015-00050
Patent 8,548,944 B2
____________

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

BLANKENSHIP, Administrative Patent Judge.

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

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I. BACKGROUND
Petitioner, Actifio, Inc., filed a request for an inter partes review of
claims 1–6, 9–12, 17–19, and 21 of U.S. Patent No. 8,548,944 B2 (Ex. 1001,
“the ’944 patent”) under 35 U.S.C. §§ 311–319. Paper 1 (“Petition” or
“Pet.”). The Board instituted an inter partes review of claims 1–6, 9–12,
17–19, and 21 on asserted grounds of unpatentability for obviousness. Paper
8 (“Dec. on Inst.”).
Subsequent to institution, Patent Owner, Delphix Corp., filed a patent
owner response. Paper 20 (“PO Resp.”). Petitioner filed a reply. Paper 24
(“Pet. Reply”).
Patent Owner filed a Motion to Exclude Evidence (Paper 37; “PO
Mot. to Exclude”). Petitioner filed an Opposition to the Motion to Exclude
(Paper 41; “Pet. Exclude Opp.”), and Patent Owner filed a Reply (Paper 43;
“PO Exclude Reply”).
An oral hearing concerning this case and several other inter partes
reviews in which the parties are involved was held on January 14, 2016.
The record contains a transcript of the hearing (Paper 55).
The Board has jurisdiction under 35 U.S.C. § 6(c). This final written
decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons that follow, we determine that Petitioner has shown by
a preponderance of the evidence that claims 1–6, 9–12, 17‒19, and 21 of the
’944 patent are unpatentable.

A. Related Proceedings
According to Petitioner, the ’944 patent is involved in the lawsuit
Delphix Corp. v. Actifio, Inc., No. 5:13-cv-04613-BLF (N.D. Cal.). Pet. 2.
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The ’944 patent is also the subject of Case IPR2015-00052 (PTAB Oct. 8,
2014).

B. The ’944 Patent
The ’944 patent relates to backing up and restoring file systems. File
system backups are performed by copying information describing changes in
the file system since a previous point in time. To restore data, a virtual
restored file system (VRFS) structure is created corresponding to a snapshot
of data copied from the file system that is stored in the backup file system.
Ex. 1001, Abstract. The VRFS structure points at data blocks copied at
various points in time. Id. at col. 1, ll. 40–42. Upon request, the backup
system generates a virtual restored file system by linking a set of files to
stored data blocks of the storage system and mounting the set of files on the
target system. Id. at col. 1, ll. 57–62.

C. Illustrative Claim
Claim 1, reproduced below, is illustrative.
1. A method for performing backup of file systems, the
method comprising:

receiving data blocks for a plurality of point-in-time
copies of a source file system, each point-in-time copy of the
source file-system obtained by extracting data blocks from the
source file-system that changed since a previous point-in-time
copy was extracted, the source file system comprising at least a
source file;

storing the data blocks on a storage system, the stored
data blocks comprising one or more versions of a data block,
each version corresponding to a point-in-time copy;
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receiving a request to restore information obtained from
the source file system for a target system; and

responsive to receiving the request to restore, creating a
virtual restored file system comprising a set of files including a
restored file corresponding to the source file, the creating
comprising:

linking the restored file to a plurality of the data
blocks stored on the storage system, the plurality of data blocks
comprising at least a first data block associated with a first
point in time copy and a second data block associated with a
second point in time copy, and

mounting the set of files to the target system to
allow the target system to access the set of files, the mounted
set of files comprising the virtual restored file system.

D. Asserted Prior Art
Fair et al., US 7,334,095 B1, issued Feb. 19, 2008 (“Fair”). Exhibit 1006.

Sanders et al., “DB2: Cloning a Database using NetApp FlexClone™
Technology,” Apr. 30, 2006 (“Sanders”). Exhibit 1003.

Edwards et al., “FlexVol: Flexible, Efficient File Volume Virtualization in
WAFL,” June 22–27, 2008, PROCEEDINGS OF THE ANNUAL TECHNICAL
USENIX CONFERENCE (“Edwards”). Exhibit 1004.

Patterson et al., “SnapMirror®: File System Based Asynchronous Mirroring
for Disaster Recovery,” PROCEEDINGS OF THE FAST 2002 CONFERENCE ON
FILE AND STORAGE TECHNOLOGIES, Jan. 28–30, 2002 (“Patterson”). Exhibit
1005.

NetApp, Inc., “Data ONTAP® 7.1 Data Protection Online Backup and
Recovery Guide,” Jan. 12, 2007 (“ONTAP”). Exhibit 1007.
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E. Asserted Grounds of Unpatentability
We instituted inter partes review on the following grounds of
unpatentability under 35 U.S.C. § 103(a):

References

Claim(s)
Sanders, Edwards, and Patterson 1–4, 10–12, 17, 18, and 21
Sanders, Edwards, Patterson, and
Fair 5, 6, and 19
Sanders, Edwards, Patterson, and
ONTAP 9

II. ANALYSIS
A. Patent Owner’s Motion to Exclude Evidence
In inter partes reviews, documents are admitted into evidence subject
to an opposing party asserting objections to the evidence and moving to
exclude the evidence. 37 C.F.R. § 42.64. As movant, Patent Owner has the
burden of showing that an Exhibit is not admissible. 37 C.F.R. § 42.20(c).
Patent Owner moves to exclude Petitioner’s Exhibits 1019, 1027,
1029, 1032, 1034‒1037, 1039‒1042, 1044, 1045, and 1047, all of which
were filed with Petitioner’s Reply. PO Mot. to Exclude 1. As Patent Owner
notes, however, Petitioner does not rely on Exhibits 1034, 1035, 1036, and
1037. Id. at 1 n.1. Further, Petitioner has moved, unopposed, to expunge
Exhibit 1027 (see Paper 34), which motion we hereby grant. Of the other
objected-to Exhibits, except for Exhibits 1019 and 1044, we do not, and
need not, consider such evidence in connection with the Reply. We
determine, for reasons set forth below, that Petitioner has demonstrated by a
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preponderance of the evidence that the challenged claims are unpatentable,
without need for Petitioner’s additional arguments or evidence in relation to
those additional Exhibits. Of the objected-to Exhibits, our Final Written
Decision discusses and relies on only Exhibits 1019 and 1044. Accordingly,
Patent Owner’s motion to exclude Exhibits 1027, 1029, 1032, 1034‒1037,
1039‒1042, 1045, and 1047 is dismissed as moot.
Exhibit 1019 is the Declaration of Mr. Louis Hernandez. Patent
Owner’s motion does not specify the basis for any evidentiary objection to
the Exhibit.
Patent Owner’s motion to exclude Exhibit 1019 is denied.
Exhibit 1044 is the Supplemental Declaration of Louis Hernandez.
Patent Owner argues that the Exhibit is “inadmissible hearsay.” PO Mot. to
Exclude 5‒7. The Supplemental Declaration, however, consists of
statements made by the Declarant while testifying in this proceeding — not
“hearsay” (Fed. R. Evid. 801(c)) — but sworn testimony that is subject to
cross-examination. Indeed, Patent Owner cross-examined Mr. Hernandez
with respect to that testimony.
Patent Owner’s motion to exclude Exhibit 1044 is denied.

B. Printed Publications — Sanders and ONTAP
Patent Owner in its Response contests that Sanders and ONTAP are
prior art “printed publications” in accordance with 35 U.S.C. §§ 102 and
311(b). We look to the underlying facts to make a legal determination as to
whether a document is a printed publication. Suffolk Techs., LLC v. AOL
Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014). The determination of whether a
document is a “printed publication” under 35 U.S.C. § 102(b) involves a
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case-by-case inquiry into the facts and circumstances surrounding its
disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345,
1350 (Fed. Cir. 2004). Public accessibility is a key question in determining
whether a document is a printed publication and is determined on a case-by-
case basis. Suffolk Techs., 752 F.3d at 1364. To qualify as a printed
publication, a document “must have been sufficiently accessible to the
public interested in the art.” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir.
2009).
Initially, we note our disagreement with Patent Owner’s contention
that Petitioner cannot rely upon evidence not submitted with the Petition to
show that Sanders and ONTAP are prior art. PO Resp. 4‒5. In Patent
Owner’s view, Petitioner must make out a prima facie case of
unpatentability in its Petition, which includes the substantive element of
Sanders and ONTAP being publicly accessible and prior art. Id. at 4. That
position, however, does not account for the difference between the threshold
for instituting a trial (35 U.S.C. § 314(a)) and that for proving
unpatentability of a claim in trial (35 U.S.C. § 316(e)). As noted by our
reviewing court, “there is a significant difference between a petitioner’s
burden to establish a ‘reasonable likelihood of success’ at institution, and
actually proving invalidity by a preponderance of the evidence at trial.”
TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016) (quoting
35 U.S.C. § 314(a) and comparing § 316(e)).
Based on the information presented in the Petition and Patent Owner’s
Preliminary Response (Paper 7) we determined there was a reasonable
likelihood that Petitioner would prevail in its challenges that included
Sanders and ONTAP. Dec. on Inst. 14; see 35 U.S.C. § 314(a) (threshold
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for instituting inter partes review); see also 37 C.F.R. § 42.108(c) (“The
Board’s decision [on Institution] will take into account a patent owner
preliminary response where such a response is filed.”). Patent Owner did
not challenge the prior art status of any of the applied patents or publications
in its Preliminary Response. Patent Owner, in fact, stated that it had
“disclosed to the Patent Office every NetApp feature that Petitioner now
cites in the Petition” and that Sanders, Edwards, and Patterson “were
published over a span of six years.” Paper 7, 22 (emphasis added). We do
not mean to suggest that a patent owner must raise any “printed publication”
issues in a preliminary response in order for the Board to consider such
issues in the preliminary proceeding phase. In this case, however, based in
part on the information in Patent Owner’s Preliminary Response and in part
on the printed dates and the lack of indicia of confidentiality or internal,
non-public distribution in Sanders and ONTAP, we determined that
Petitioner had met its burden for a threshold showing to proceed to trial.
Patent Owner also argues that Petitioner cannot rely on two
Declarations in its Reply. PO Resp. 2. The Declarations are provided by
Louis Hernandez (Ex. 1019) and Joseph Ortiz (Ex. 1027).1 Patent Owner
submits that Petitioner provided Patent Owner with the Hernandez
Declaration in response to Patent Owner’s objections to evidence (although
Patent Owner does not tell us its basis for the objections). Our rules
authorize serving supplemental evidence in response to an objection. 37
C.F.R. § 42.64(b)(2). Patent Owner lacks a foundation to complain that
evidence has been produced in response to its objections. Petitioner also

1 Exhibit 1027 is expunged at Petitioner’s request. We do not further discuss
the Exhibit.
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relies, properly, on the supplemental evidence in its Reply, as evidence in
reply to Patent Owner’s arguments in its Response that Sanders and ONTAP
are not printed publications.
Turning to the substance of Exhibit 1019, Mr. Hernandez testifies that
he is currently employed by Petitioner, was employed by NetApp from 2004
to 2009, and was a NetApp customer from 2000 to 2004. Ex. 1019 ¶¶ 1, 2,
4. Mr. Hernandez testifies further that for most of his time at NetApp, as a
Systems Engineer, he was responsible for marketing NetApp’s products and
services to numerous customers, prospective customers, business partners,
and/or alliances. Id. ¶ 3. “During the 2000-2009 time-frame, to support its
marketing efforts, it was NetApp’s standard practice to publish technical
reports, white papers, and product manuals or guides to customers, potential
customers, business partners, and alliances.” Id. ¶ 6. “These documents
were published, according to standard practice, as of the month and year that
appeared on the face of the documents.” Id. Mr. Hernandez testifies that he
has personal knowledge of and recognizes Sanders and ONTAP, and that
they were published during his tenure at NetApp. Id. ¶¶ 7, 10, 11.
Patent Owner argues Mr. Hernandez does not declare that Sanders or
ONTAP was “publicly accessible.” PO Resp. 2‒3. Patent Owner submits:
Even if it was NetApp’s “standard practice” to provide its
documents to its “customers, potential customers, business
partners and alliances,” that does not establish that these
documents were available to the public, but instead shows at
most that they were only available to a subset of entities
affiliated with NetApp.

Id. at 3.
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Petitioner replies with a Supplemental Declaration from Mr.
Hernandez. Pet. Reply 7‒8. Mr. Hernandez testifies that he uses the term
“publish” or “published” as referring to documents being publicly
distributed to customers, potential customers, business partners, and
alliances as of the month and year that appeared on the face of the
documents, non-confidentially. Ex. 1044 ¶ 5. According to Declarant,
NetApp had more than two hundred Systems Engineers and other sales
personnel during the relevant timeframe (id. ¶ 4) and that technical reports,
white papers, product manuals, and product guides were freely distributed to
support its marketing efforts (id. ¶ 7). Mr. Hernandez testifies further that it
was important for NetApp to date the documents accurately so that
customers and potential customers could understand if a specific document
accurately reflects features for specific versions of NetApp’s products or if a
document was outdated or updated to reflect more current features. Id. ¶ 10.
Further, Petitioner provides evidence that by 2007 there were more than
94,000 NetApp systems deployed and the company had thousands of
customers in 138 countries. Pet. Reply 6; Ex. 1046, 1, 2, 4.2
As part of routine discovery (37 C.F.R. § 42.51(b)(1)(ii)), Patent
Owner had the opportunity to cross-examine Mr. Hernandez during Patent
Owner’s first discovery period but elected not to. Patent Owner cross-
examined Mr. Hernandez in its second discovery period regarding the
testimony in his Supplemental Declaration. We have considered Patent
Owner’s Motion for Observation on Cross-Examination Testimony of Mr.

2 We find that Exhibit 1046, a NetApp Form 10-K SEC filing, was properly
submitted by Petitioner as evidence in rebuttal to Patent Owner’s public
accessibility challenge in its Response.
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Hernandez (Paper 38) and Petitioner’s Response (Paper 42), insofar as they
relate to public accessibility of Sanders and ONTAP. We acknowledge the
potential for bias in Mr. Hernandez’s testimony as a present employee of
Petitioner. We find, however, the testimony in Mr. Hernandez’s
Declarations as to public accessibility of Sanders and ONTAP to be credible.
As an earlier panel of the Board has found, in a proceeding involving a
different patent and different parties, documents such as Sanders and
ONTAP are dated technical documents or whitepapers, having no indication
of being mere drafts or internal papers, each of which is “a type of document
whose very purpose is public disclosure.” Veeam Sw. Corp. v. Symantec
Corp., Case IPR2014-00089, slip op. at 14 (PTAB Apr. 25, 2014) (Paper 9).
Moreover, in that case, at the preliminary proceeding phase, the panel found
that Sanders, on its face, was sufficient to qualify as a printed publication.
Id. at 2, 13‒14.
Finally, in reply to Patent Owner’s challenge in its Response,
Petitioner also submits a Declaration it says was produced in response to
Patent Owner’s evidentiary objections. Pet. Reply 3. Petitioner provided
the Declaration from the office manager of the Internet Archive (Wayback
Machine). Id. (citing Ex. 1022). Sanders is dated April 30, 2006 and is
designated “TR-3460” (or Technical Report 3460). Ex. 1003, 1. According
to the testimony regarding how the Internet Archive works (Ex. 1022 ¶¶ 3‒
5), we find the evidence indicates that Sanders was available on NetApp’s
commercial website on, or at least as early as, November 22, 2006. Id. at
231, 232. Exhibit 1022 indicates that Sanders was, thus, “sufficiently
accessible to the public interested in the art.” Lister, 583 F.3d at 1311.
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“A given reference is ‘publicly accessible’ upon a satisfactory
showing that such document has been disseminated or otherwise made
available to the extent that persons interested and ordinarily skilled in the
subject matter or art exercising reasonable diligence, can locate it.” SRI
Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008)
(quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed.
Cir. 2006)). In view of the foregoing considerations, we find that Petitioner
has established, by a preponderance of the evidence, that Sanders (dated
Apr. 30, 2006) and ONTAP (dated Jan. 12, 2007) were available to the
interested public at least more than one year before July 15, 2010, the
earliest possible priority date of the ʼ944 patent. See Ex. 1001, at (60).
Therefore, on this record, Sanders and ONTAP are printed publications
under 35 U.S.C. § 102(b).

C. Claim Interpretation
In an inter partes review, the Board construes claim terms in an
unexpired patent using their broadest reasonable construction in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.100(b); In
re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015),
cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 890
(mem.) (2016). There is a presumption that a claim term carries its ordinary
and customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d
1359, 1366 (Fed. Cir. 2002). The “ordinary and customary meaning” is that
which the term would have to a person of ordinary skill in the art in
question. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007).
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Only those terms which are in controversy need to be construed, and
only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v.
Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). In reaching our
determinations in this Decision, we do not find construction of any terms
necessary.

D. Asserted Grounds of Unpatentability
1. Section 103(a) — Sanders, Edwards, and Patterson
Petitioner applies the teachings of Sanders, Edwards, and Patterson in
an asserted ground of obviousness as to claims 1–4, 10–12, 17, 18, and 21.
Pet. 27–52.

2. Sanders
Sanders describes a system “to clone a DB2 database quickly and
easily.” Ex. 1003, 1. “Database cloning is [a] process by which you can
create an exact copy of a DB2 database. . . .” Id. at 3. The disclosed system,
by Network Appliance, Inc. (“NetApp”), uses FlexClone and SnapMirror
technologies in a combined manner. Id. at 8. This combined technology
allows administrators to clone a production FlexVol database system as a
writable FlexClone database on another storage system. Id. “A FlexClone
volume is a writable point-in-time image of a FlexVol volume or another
FlexClone volume.” Id. at 3. Stated differently, “[t[he clone database is a
frozen image of the database file system at the time of the clone creation. If
necessary, the primary database can be restored from the snapshot created
for the clone; or applications can point directly to the clone database.” Id. at
6.
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A FlexClone volume “uses space very efficiently, allowing both the
original FlexVol volume and the FlexClone volume to share common data,
storing only the data that changes between the original volume and the
clone.” Id. at 3. Clones can be created on the same or remote storage
systems. Id. at 6. The SnapMirror technology provides FlexCone volumes
to be produced at different destinations: “A SnapMirror source and its
corresponding destination can reside on the same storage system or on two
separate storage systems that are miles apart . . . .” Id. at 3.
Sanders’s Figure 3, annotated by Petitioner to add source and clone
database labels, follows:

Pet. 11 (annotating Ex. 1003, Fig. 3). Figure 3 represents using the
combined SnapMirror and FlexClone technology to transmit point-in-time
clone copies of a production database to a destination storage system. See
Ex. 1003, 8.

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3. Edwards
Edwards describes the same NetApp system as Sanders, and provides
more explanation about the use of volumes and files to manage data. A
volume essentially comprises a file system that points to and uses underlying
data storage on storage disks:
[A] FlexVol volume is a file system created within a file on an
underlying system. A hidden file system spans a pool of
storage, and we create externally visible volumes inside files on
this file system. This introduces a level of indirection, or
virtualization between the logical storage space used by a
volume and the physical storage space provided by the RAID
subsystem.

Ex. 1004, 131.3 “Conceptually, we wanted to aggregate many disks into a
large storage container and allow administrators to create volumes by
carving out arbitrarily sized logical chunks of this volume.” Id.
Edwards describes the same SnapMirror and FlexCone systems that
Sanders describes as forming a virtualized system: “[W]e virtualize the
allocation of volumes on physical storage, allowing multiple, independently
managed file volumes, along with their Snapshot copies, to share the same
storage.” Id. at 130. “Virtualization is a well-known method of abstracting
physical resources and of separating the manipulation and use of logical
resources from their underlying implementation.” Id. at 129. “By
separating the management of file systems from the management of physical
storage resources, these systems make it easier to create, destroy, and resize
file systems, as these operations can be performed independent of the

3 Page numbers refer to original page numbers.
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underlying storage.” Id. “The resulting virtual file volumes, or FlexVol®
volumes, are managed independent of lower storage layers.” Id.
Edwards explains that “writable Snapshot copies [are] []called
Flexclone volumes.” Id. at 130. A clone volume “inherits pointers to the
complete file system image stored in the original Snapshot copy” of an
original FlexVol volume. Id. at 135. “The only differences between a
Snapshot copy and the live file system are the blocks that have been
modified since the Snapshot copy was created (and the metadata that points
to them).” Id. at 131.
“WAFL [Write Anywhere File Layout] Snapshot copies provide
consistent point-in-time copies of a volume.” Id. at 134. But, a Snapshot
copy is read-only. Id. Therefore, “[v]olume cloning creates a FlexVol
volume in which the active file system is a logical replica of a Snapshot
copy in a different FlexVol volume within the same aggregate.” Id. To
copy a volume, the system transfers metadata blocks that contain block
pointers. See id. at 130–31.
Edwards explains that “[c]reating a clone volume is a simple process.”
Id. at 135. A container file for the new clone volume (or FlexClone volume)
is created and seeded “with a vol_nfo block that is a copy of the vol_info
block of the Snapshot copy on which the clone is based.” Id. Because
vol_info block is the root of the “tree of blocks that form the Snapshot copy,
the clone inherits pointers to the complete file system image stored in the
original Snapshot copy.” Id. at 135. “[T]he clone does not actually own the
blocks it has inherited from the parent, [and] it does not have those blocks in
its container files.” Id. at 135. Nevertheless, the system may create new
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copies of any blocks shared with the parent in order to sever the connection
between the parent and clone. Id.

E. Asserted Obviousness over Sanders, Edwards, and Patterson
As we noted, Petitioner applies the teachings of Sanders, Edwards,
and Patterson in an asserted ground of obviousness as to claims 1–4, 10–12,
17, 18, and 21. Petitioner points to specific disclosures in the prior art that
are deemed to describe or teach all claim limitations. Pet. 27–52.
We find that the Petition provides ample reasons why one of ordinary
skill in the art would have combined the teachings of Sanders, Edwards, and
Patterson. Pet. 21‒25. For example, all the references address the problem
of reducing the time to restore a backup copy of an organization’s file
system. Pet. 22 (citing Declaration of Erez Zadok, Ex. 1016 ¶¶ 100‒105).
Sanders, Edwards and Patterson all address the problem using the same
solution — virtual file systems. Id. Sanders and Edwards teach creating
virtual file systems use the same underlying NetApp technologies: Snapshot,
SnapMirror, and FlexClone technologies incorporated into the Data ONTAP
operating system. Pet. 22‒23 (citing Ex. 1016 ¶ 101). Moreover, Edwards
expressly refers to the earlier Patterson reference for details relating to how
to use SnapMirror for replication. Pet. 23, 36; Ex. 1004, 133, 142.

F. Patent Owner’s Response
Patent Owner in its Response argues that the Petition fails to show
that several limitations in the claims are found in the applied prior art. We
consider each of those arguments in turn.

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1. Receiving of Data Blocks for a Plurality of Point-In-Time
Copies of a Source File System

Sanders teaches configuring and initializing SnapMirror (Ex. 1003,
27), which includes creating Snapshot copies of the source database (id.,
steps (3) and (4)). Petitioner submits that Sanders also teaches creating and
transferring a second Snapshot copy of the source file system as part of the
backup and cloning process. Ex. 1016 (Declaration of Dr. Erez Zadok)
¶ 139. Sanders teaches manually updating the destination volume with
contents of the source volume, including Snapshot copies. Ex. 1003, 23.
During this update, only changed blocks are transferred. Id. at 21, § 5.4 (2).
Petitioner refers to Patterson for further details of the process. Ex. 1016
¶¶ 140–41.
Patent Owner argues that the NetApp storage system does not disclose
or render obvious the claimed receiving of “data blocks for [a] plurality of
point-in-time copies of a source file system.’” PO Resp. 24. According to
Patent Owner, NetApp (specifically, SnapMirror) is a mirroring method for
disaster recovery of physical storage, where the source file system and
backup “mirror” are always maintained in the identical current state. Id.
(citing Declaration of Dr. Prashant Shenoy, Ex. 2009 ¶ 70). Patent Owner
submits further that the SnapMirror “mirror only represents what is
maintained by the source system and does not store different point-in-time
copies of the source.” Id. at 25 (citing Ex. 2009 ¶ 70).
Patent Owner acknowledges, however, that the Petition relies on
SnapMirror’s base reference and incremental reference snapshots created by
the source system as the plurality of point-in-time copies of the source. Id.
at 27. Patent Owner argues that the snapshots are never transferred to or
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received by a destination, and thus cannot be the received data blocks for a
plurality of point-in-time copies of a source file system. Id. “[T]hese
temporary snapshots are created at the source, for use by the source and are
not transferred to or stored at the destination.” Id. (citing Ex. 2009 ¶¶ 58‒
61, 73‒74). Patent Owner does not indicate why it refers to the snapshots as
“temporary,” but states that the snapshots “created and used during the
SnapMirror processes” are never transferred to or received at the destination.
Id. Patent Owner refers, apparently, to additional snapshot copies that are
created automatically for SnapMirror update purposes. Ex. 1003, 23.
Petitioner does not rely on those snapshot copies as corresponding to the
claimed “plurality of point-in-time copies of a source file system.” Sanders,
in fact, warns that “[i]t is recommended not to use these automatically
created Snapshot copies to create a clone volume.” Id. The Petition,
instead, relies on the incremental snapshot copies for which, after
SnapMirror initialization, changed blocks are transferred. Pet. 29‒30; Ex.
1003, 21 (step (iv), execute command to “update the SnapMirror
relationship manually”). As Petitioner explains, the record is replete with
evidence that establishes that baseline and incremental copies are transferred
to and received at the destination. Pet. Reply 8‒12.
Patent Owner argues, further, that the claims require that the received
point-in-time copies are obtained by extracting data blocks from the source
file-system that changed since a previous point-in-time copy was extracted.
PO Resp. 28. Patent Owner acknowledges that, after initialization, “in its
next syncing operation, SnapMirror will send all data blocks that have
changed since the last update including any newly-created snapshots.” Id. at
29. According to Patent Owner, “[i]f there are new snapshots they represent
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the state of the source file system when they were created, not when they are
mirrored to the destination.” Id. (citing Ex. 2009 ¶¶ 58‒61, 74‒76). “That
is, they are not a point-in-time copy of the source file system as it exists
when the data blocks are ‘extracted.’” Id. We agree with Petitioner (Pet.
Reply 12‒13), however, that although the claims require a “plurality of
point-in-time copies of a source file system,” nothing in the claims requires
that the point-in-time copies be with respect to the source file system as it
exists when the copies are mirrored to the destination or when the data
blocks are extracted.

2. Create a Virtual Restored File System
Patent Owner argues that the claims require the creation of a set of
files for a virtual restored file system. PO Resp. 29‒30. Patent Owner
submits that Petitioner relies on the description in Edwards of creating a
FlexClone volume of a stored snapshot. Id. at 30. Specifically, Petitioner
relies on “the step in which a ‘container file for the new clone volume is
created and seeded “with a vol_info block that is a copy of the vol_info
block of the snapshot copy on which the clone is based.’” Id. (quoting Pet.
34). According to Patent Owner, this “container file” is not a newly created
set of files. Id. at 31. “As illustrated in Edwards, this new ‘container file’ is
merely a copy of the ‘vol_info’ block of the volume to be cloned; no new set
of files is created. Every file in the cloned volume existed prior to the
creation of the clone itself.” Id. (citing Ex. 2009 ¶¶ 78‒81) (internal citation
deleted).
Petitioner responds, however, that Edwards teaches that FlexClone
creates a new “FlexVol volume,” which is “a file system created within a file
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on an underlying file system.” Pet. Reply 13 (quoting Ex. 1004, 131). Thus,
“cloning a volume containing files creates a new FlexVol volume with a
new file system comprising a new set of files.” Id. at 13‒14 (citing Pet. 31‒
33, Ex. 1016 ¶¶ 149‒155, Ex. 1033 ¶¶ 18‒22).4 We observe that the claims
require creating a “virtual restored file system,” not creating new “files.”
See PO Resp. 29‒30 (quoting claim language). As Petitioner notes (Pet.
Reply 14), the ʼ944 patent teaches that its virtual restored file system
structure can be implemented by creating a new file structure that points to
existing structures. The patent teaches that “a read write file structure is
created 730 [Fig. 7] by making storage efficient copy of data blocks. For
example, the file structure may include pointers to blocks of data stored in
backup file system 210.” Ex. 1001, col. 10, ll. 48‒51.

3. Linking the Restored File to a Plurality of the Data Blocks
Stored on the Storage System

Patent Owner argues that each of the independent claims requires that,
responsive to receiving the request to restore, creating “a virtual restored file
system comprising a set of files,” wherein “creating the files comprises
‘linking the restored file to a plurality of data blocks,’ one of which is
associated with ‘a first point-in-time copy’ and another of which is
associated with ‘a second point-in-time copy.’” PO Resp. 32. According to
Patent Owner, when a clone is created in NetApp, the files themselves

4 Patent Owner does not submit that any cross-examination testimony of Dr.
Zadok is relevant to this declaration testimony (Ex. 1033 ¶¶ 18‒22). See
Paper 39, Patent Owner Motion for Observation on Cross-Examination
Testimony of Dr. Erez Zadock (“Mot. Obs. Zadok”).
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already exist and are merely pointed to by the new vol_info block. Id. at 34
(citing Ex. 2009 ¶¶ 64‒66, 77‒81, 85‒86). Patent Owner submits that any
linking of files to the data blocks of the file system is in place on the
destination before the clone is created and thus is not created “responsive to
receiving the request to restore.” Id. “No linking of a file to data blocks is
performed when the clone is created.” Id.
Petitioner responds that, in Edwards, upon cloning a snapshot, a new
file structure (the vol_info block) is created that includes pointers to existing
structures of snapshot copies. Pet. Reply 16. New files are created
(including a restored file) by pointing or linking to the blocks of the snapshot
copies. Id. (citing Ex. 1033 (Supplemental Declaration of Dr. Zadok) ¶ 24).5
Moreover, as noted by Petitioner (id. at 17) and supra (§ II.F.2), the ʼ944
patent teaches that its virtual restored file system structure can be
implemented in the same way.

4. A Request to Receive the Data Blocks for a Point-In-Time
Copy of the . . . Source File System (Dependent Claims 2 and 12)

Patent Owner argues that Petitioner has failed to identify any request
to receive data blocks for a given point-in-time copy, as required by
dependent claims 2 and 12. PO Resp. 35 (citing Ex. 2009 ¶ 88). According
to Patent Owner, SnapMirror “merely sends any and all snapshots stored on
the source at each update.” Id.

5 Patent Owner does not submit that any cross-examination testimony of Dr.
Zadok is relevant to this declaration testimony (Ex. 1033 ¶ 24). See Mot.
Obs. Zadok.
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Petitioner responds that Sanders teaches that a snapshot is created and
that same snapshot is requested by the destination by a SnapMirror update.
Pet. Reply 17‒18 (citing Ex. 1003, 22‒23). Sanders instructs “[n]ow you
replicate the Snapshot copy created in step b to the SnapMirror destination
volume.” Ex. 1003, 23. To do so, the SnapMirror relationship is updated by
executing a command on the destination storage system. Id. We agree with
Petitioner that the claims do not require that any particular point-in-time
copy be specified by the request. Pet. Reply 18.

5. Conclusion
Therefore, based on the foregoing, we find that Petitioner has
established by a preponderance of the evidence that the subject matter of
claims 1–4, 10–12, 17, 18, and 21 would have been obvious over Sanders,
Edwards, and Patterson.

G. Remaining Asserted Grounds
In our Scheduling Order (Paper 9, 3), we cautioned Patent Owner that
any arguments for patentability not raised in the response will be deemed
waived. Patent Owner has elected not to respond separately to the grounds
of unpatentability asserted against dependent claims 5, 6, 9, and 19.

1. Section 103(a) — Sanders, Edwards, Patterson, and Fair
Petitioner adds the teachings of Fair to the basic combination of
Sanders, Edwards, and Patterson in an asserted ground of obviousness as to
dependent claims 5, 6, and 19. Pet. 52–57. Petitioner relies on Fair, a patent
directed to NetApp, to demonstrate the obviousness of these claims. Id. at
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52‒57 (supported by the testimony of Dr. Zadok in Ex. 1016). We find that
Petitioner has established by a preponderance of the evidence that the
subject matter of claims 5, 6, and 19 would have been obvious over Sanders,
Edwards, Patterson, and Fair.

2. Section 103(a) — Sanders, Edwards, Patterson,
and ONTAP

Petitioner adds the teachings of ONTAP to the basic combination of
Sanders, Edwards, and Patterson in an asserted ground of obviousness as to
dependent claim 9. Pet. 57–59. Petitioner uses the teachings of ONTAP to
provide further details of NetApp’s Data ONTAP storage operating system
to show the obviousness of dependent claim 9, again relying on the
testimony of Dr. Zadok. Id. Sanders expressly refers to an ONTAP backup
and recovery guide as a technical reference. Pet. 58; Ex. 1003, 50. We find
that Petitioner has established by a preponderance of the evidence that the
subject matter of claim 9 would have been obvious over Sanders, Edwards,
Patterson, and ONTAP.

III. CONCLUSION
For the foregoing reasons, we conclude that Petitioner has
demonstrated, by a preponderance of the evidence, that claims 1–4, 10–12,
17, 18, and 21 of the ’944 patent are unpatentable under 35 U.S.C. § 103(a)
as obvious over the combination of Sanders, Edwards, and Patterson, claims
5, 6, and 19 are unpatentable as obvious over Sanders, Edwards, Patterson,
and Fair, and claim 9 is unpatentable as obvious over Sanders, Edwards,
Patterson, and ONTAP.
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IV. ORDER
In consideration of the foregoing, it is
ORDERED that claims 1–6, 9–12, 17‒19, and 21 of the ’944 patent
have been shown to be unpatentable;
FURTHER ORDERED that Petitioner’s motion to expunge Exhibit
1027 is granted;
FURTHER ORDERED that Patent Owner’s motion to exclude
evidence is dismissed-in-part and denied-in-part; and
FURTHER ORDERED that, because this is a final written 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.
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For PETITIONER:

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

For PATENT OWNER:

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