DCT
1:19-cv-00359
Hybir Inc v. Arcserve USA LLC
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Hybir, Inc. (Colorado)
- Defendant: Arcserve (USA), LLC. (Delaware)
- Plaintiff’s Counsel: Bayard, P.A.
- Case Identification: 1:19-cv-00359, D. Del., 02/21/2019
- Venue Allegations: Venue is alleged to be proper in the District of Delaware as Defendant is a Delaware corporation.
- Core Dispute: Plaintiff alleges that Defendant’s Arcserve Unified Data Protection (UDP) products infringe patents related to source-side data deduplication technology for computer backup systems.
- Technical Context: The technology addresses methods for making data backups more efficient by using unique identifiers, such as cryptographic signatures, to avoid storing redundant copies of the same file or data blocks.
- Key Procedural History: The complaint alleges that Defendant had pre-suit knowledge of the patents-in-suit as of at least February 2018, stemming from business discussions and an in-person meeting where the patents were presented. Subsequent to the filing of this complaint, inter partes review (IPR) proceedings were initiated against all three asserted patents. These proceedings resulted in the U.S. Patent and Trademark Office cancelling all asserted claims of the '545 and '146 patents, as well as the primary exemplary claim (Claim 1) and numerous other asserted claims of the '043 patent. This development fundamentally alters the scope and viability of the lawsuit as originally filed.
Case Timeline
| Date | Event |
|---|---|
| 2006-05-05 | Priority Date for ’043, ’545, and ’146 Patents |
| 2011-11-01 | U.S. Patent No. 8,051,043 Issued |
| 2015-05-19 | U.S. Patent No. 9,037,545 Issued |
| 2017-06-13 | U.S. Patent No. 9,679,146 Issued |
| 2018-02-xx | Alleged business discussions begin between Plaintiff and Defendant |
| 2018-05-11 | Alleged in-person meeting where patents were presented to Defendant |
| 2019-02-21 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,051,043 - “Group Based Complete and Incremental Computer File Backup System, Process and Apparatus,” issued Nov. 1, 2011
The Invention Explained
- Problem Addressed: The patent’s background section describes inefficiencies in prior art data backup systems, which managed data on a "per user basis" and maintained "separate copies of files... for each user" (’043 Patent, col. 1:25-37). This resulted in large, redundant backups. Further, older methods using CRC-32 checksums to identify duplicate files were described as unreliable for guaranteeing uniqueness (’043 Patent, col. 1:50-53).
- The Patented Solution: The invention proposes a group-based backup system that uses a "descriptor" to uniquely identify electronic data like files (’043 Patent, Abstract). By using these descriptors, a backup server can maintain a single copy of a file in a shared repository, even if multiple users have that same file. This method is intended to reduce network bandwidth, processing time, and storage requirements for backups (’043 Patent, col. 2:38-51). Figure 5 of the patent illustrates this concept, showing multiple user accounts (504a-c) with lists of descriptors (508) that point to a common, shared pool of files (512) (’043 Patent, col. 10:57-67).
- Technical Importance: This approach sought to solve the growing technical and economic problems of storing and transmitting massive amounts of redundant data in enterprise and online backup environments (’043 Patent, col. 2:48-51).
Key Claims at a Glance
- The complaint asserts independent claim 1, among other claims (Compl. ¶30).
- The essential elements of independent claim 1 include:
- Receiving, at a backup server, a first inventory of electronic data from a remote source, where the inventory contains at least one "descriptor" comprising a cryptographic signature that uniquely identifies the data.
- Comparing the descriptor from the first inventory to a list of descriptors in a second inventory of data already on a backup storage medium.
- Determining that the descriptor from the first inventory substantially matches a descriptor from the second inventory.
- Reporting from the backup server back to the remote source that the corresponding electronic data is already stored.
- The complaint reserves the right to assert other dependent and independent claims (Compl. ¶30). It is notable that subsequent IPR proceedings cancelled claim 1, but several other asserted claims survived.
U.S. Patent No. 9,037,545 - “Group Based Complete and Incremental Computer File Backup System, Process and Apparatus,” issued May 19, 2015
The Invention Explained
- Problem Addressed: As a continuation of the ’043 patent, the ’545 Patent addresses the same general problems of inefficient and redundant data backups (’545 Patent, col. 1:16-44).
- The Patented Solution: The ’545 Patent focuses on a client-side method for managing data in an encrypted system. The process involves a client device identifying files for backup, generating cryptographic signature values for those files, creating an inventory of these signatures, and transmitting the inventory to a backup server. The client then sends files to the server only upon a determination that the signature values permit access, a mechanism to avoid sending duplicate data (’545 Patent, Abstract; col. 2:23-40).
- Technical Importance: The invention provides a client-centric method for participating in an efficient, deduplicated backup process, shifting some of the computational work of identifying data for backup to the source device (’545 Patent, col. 8:1-15).
Key Claims at a Glance
- The complaint asserts independent claim 1, among other claims (Compl. ¶42).
- The essential elements of independent claim 1 include:
- Receiving, at a client device, a request to backup data.
- Initiating a backup routine at the client, which includes identifying files and generating a cryptographic signature value for each file.
- Generating a first inventory at the client device that includes these signature values.
- Transmitting the first inventory from the client to the backup server.
- Causing one or more files to be transmitted to the server for storage upon determining that their signature values allow access to the files on the server.
- The complaint reserves the right to assert other claims (Compl. ¶42). Subsequent IPR proceedings, however, cancelled all asserted claims of this patent.
Multi-Patent Capsule: U.S. Patent No. 9,679,146 - “Group Based Complete and Incremental Computer File Backup System, Process and Apparatus,” issued Jun. 13, 2017
- Technology Synopsis: The ’146 Patent, also in the same family, claims a method for synchronizing data between two different client devices through a central backup server. The server receives an inventory with descriptors from a first client, compares it to its master inventory, and determines which unique data the first client has that the second client lacks and is permitted to have. The server then provides this unique data to the second client to complete the synchronization (’146 Patent, Abstract; Compl. ¶55).
- Asserted Claims: The complaint asserts independent claim 1 and other claims (Compl. ¶54). Subsequent IPR proceedings cancelled all asserted claims of this patent.
- Accused Features: The complaint alleges that the Arcserve UDP system infringes by synchronizing data between an Arcserve UDP agent and a recovery point server, and potentially between two or more agents (Compl. ¶56).
III. The Accused Instrumentality
Product Identification
The accused instrumentality is the Arcserve Unified Data Protection System ("Arcserve UDP") (Compl. ¶18).
Functionality and Market Context
- Arcserve UDP is described as a storage management system for distributed and multiplatform environments that uses source-side data deduplication to reduce data transfer and storage during backups (Compl. ¶¶18, 20).
- The accused functionality involves an "agent" on a source computer and a "recovery point server." The agent splits data into blocks, generates a cryptographic hash (SHA1) for each block, and sends the hashes to the server (Compl. ¶23). The server compares these hashes with its existing database of hashes and sends back "comparison information" to the agent, which then transmits only the unique data blocks for which no matching hash was found (Compl. ¶¶24-25).
- The complaint includes "Arcserve Fig. 2," a data flow diagram that illustrates the accused process of an agent splitting data, creating and sending hashes, and then sending unique data blocks based on feedback from the recovery point server (Compl. ¶21, p. 8).
IV. Analysis of Infringement Allegations
’043 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| 1(a) receiving, at a backup server, a first inventory of electronic data stored on a first remote storage medium, wherein the first inventory comprises at least one descriptor and wherein the at least one descriptor comprises a cryptographic signature... | The Arcserve recovery point server (the "backup server") receives cryptographic hash signatures (the "descriptors") from the agent on a client computer (the "remote storage medium"). | ¶33 | col. 17:58-18:13 |
| 1(b) comparing, at the backup server, the at least one descriptor of the first inventory to a list of descriptors associated with a second inventory of electronic data stored on a backup data storage medium... | The recovery point server compares the received cryptographic hash signatures with the existing hash signatures stored on the server, which represent data from multiple clients. | ¶34 | col. 18:1-13 |
| 1(c) determining that a first descriptor from the at least one descriptor of the first inventory substantially matches a second descriptor from the list of descriptors... | The recovery point server determines whether the received hash signatures match the existing stored hash signatures. | ¶35 | col. 18:14-19 |
| 1(d) reporting, from the backup server, to the first remote storage medium that electronic data associated with the first descriptor is already stored in the backup data storage medium. | The server sends "comparison information" to the agent, which is a list of unique cryptographic hash signatures. Based on this information, the agent sends only the unique data blocks. This process is alleged to constitute "reporting." | ¶36 | col. 18:20-25 |
- Identified Points of Contention:
- Scope Questions: Does the "comparison information" sent to the agent, which the complaint describes as a list of unique hashes, meet the claim limitation of "reporting... that electronic data... is already stored"? A court may need to determine if reporting by exception (i.e., identifying what is not stored) satisfies a limitation that recites an affirmative report of what is stored.
- Technical Questions: What evidence does the complaint provide that the "inventory" of hashes sent by the agent corresponds to "electronic data stored on a first remote storage medium" as a whole, versus a stream of data blocks that may not represent discrete, static files?
’545 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| 1(d) generating, at the client device, a cryptographic signature value for each file in the first set of files... | The Arcserve UDP agent creates a cryptographic hash signature (SHA1) for each data block using the data within the block. | ¶46 | col. 19:50-54 |
| 1(e) generating, at the client device, a first inventory for the first set of files... wherein the first inventory includes the cryptographic signature value generated for each file... | The Arcserve agent creates cryptographic hash signatures for each data block, and these signatures for a file constitute an inventory for that file. | ¶47 | col. 19:55-60 |
| 1(f) transmitting the first inventory from the client device to the backup server via one or more encrypted communications... | The agent sends the cryptographic hash signatures to the recovery point server. This process is part of the deduplication workflow described in paragraphs 23-24 of the complaint. | ¶48; ¶24 | col. 19:61-64 |
| 1(g) causing one or more files... to be transmitted to the backup server for storage... upon determining that the cryptographic signature values... allows access to the one or more files on the backup server. | Based on a comparison of hashes, the recovery point server only receives data blocks with new hashes not previously stored, which the complaint alleges is equivalent to the signature values allowing access. | ¶48 | col. 19:65-20:5 |
- Identified Points of Contention:
- Scope Questions: Does the accused system's generation of hashes for "data blocks" satisfy the claim requirement of generating a signature "for each file"? A defendant could argue that this block-level granularity is technically distinct from the file-level process recited in the claim.
- Technical Questions: Does the accused system’s comparison of hashes to identify uniqueness perform the function of "determining that the cryptographic signature values... allows access," as claimed? The analysis may question whether a deduplication check is functionally equivalent to an access-granting determination.
V. Key Claim Terms for Construction
For the ’043 Patent
- The Term: "descriptor"
- Context and Importance: This term is the central concept of the patent. Its construction is critical because the complaint equates it directly with the SHA1 hash signatures generated by the accused Arcserve UDP system (Compl. ¶33). Whether a "descriptor" requires more than just a hash will be a key point of dispute.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states that a descriptor "may be a combination of file metadata... and cryptographic signature or signatures" (’043 Patent, col. 2:36-39). The use of "may" could be argued to mean that a cryptographic signature alone, without metadata, is sufficient to be a "descriptor".
- Evidence for a Narrower Interpretation: The same passage could be read to imply that a descriptor is a specific structure that includes metadata and a signature. Furthermore, the specification states "the descriptor for a particular file may be a combination of a number of descriptors" (’043 Patent, col. 9:30-32), suggesting a potentially more complex structure than a single hash value.
For the ’545 Patent
- The Term: "cryptographic signature value for each file"
- Context and Importance: This term's construction is crucial because the complaint alleges infringement by a system that generates hashes for "each block" of data, not necessarily for each whole file (Compl. ¶46). The dispute will center on whether a block-level process can meet a file-level claim limitation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A plaintiff might argue that because files are composed of blocks, generating signatures for all the blocks within a file is effectively generating a signature value "for" that file. The patent's goal is data deduplication, which the accused block-level system performs.
- Evidence for a Narrower Interpretation: The plain language of the claim recites "for each file," not "for each block." The patent’s abstract and background consistently discuss the management and identification of "files," not sub-file data chunks (’545 Patent, Abstract; col. 1:16-44), which may support an interpretation that the claimed process must operate on whole files.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement for all three patents, asserting that Arcserve's support website and product documentation instruct and encourage users of Arcserve UDP to operate it in a manner that directly infringes the patents (Compl. ¶¶38, 50, 64). Contributory infringement is also alleged on the basis that Arcserve provides material components of the invention that are not suitable for substantial non-infringing use (Compl. ¶¶39, 51, 65).
- Willful Infringement: The complaint alleges that Arcserve’s infringement has been willful, based on pre-suit knowledge of the patents. The allegations point to business discussions beginning in February 2018 and a specific in-person meeting on May 11, 2018, where Plaintiff provided Defendant with information on the asserted patents and their relevance to Defendant's products (Compl. ¶¶27-28).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue for the case is one of procedural viability: given that post-filing IPRs have cancelled all asserted claims of the ’545 and ’146 patents and the lead exemplary claim of the ’043 patent, can the plaintiff reformulate its case to proceed on the narrow subset of surviving asserted claims from the ’043 patent, and if so, do those specific claims read on the accused product?
- A key evidentiary question will be one of definitional mapping: assuming the case proceeds on the surviving claims of the ’043 patent, does the accused Arcserve UDP system—with its "agent," "recovery point server," and "comparison information"—fall within the scope of the patent's claim terms like "remote storage medium," "backup server," and "reporting"?
- Finally, a foundational technical question underlying the original dispute is one of granularity: can a deduplication system that operates on sub-file "data blocks" be found to infringe patent claims that are written at the "file" level? While the claims where this distinction was most prominent have been cancelled, the underlying technical difference may remain relevant for interpreting any surviving claims.