DCT
1:25-cv-06138
NetApp Inc v. Valtrus Innovations Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: NetApp, Inc. (Delaware)
- Defendant: Valtrus Innovations Ltd. (Ireland) and Key Patent Innovations Ltd. (Ireland)
- Plaintiff’s Counsel: Winston & Strawn, LLP
- Case Identification: 1:25-cv-06138, S.D.N.Y., 07/25/2025
- Venue Allegations: Plaintiff NetApp alleges venue is proper because Defendants are foreign entities subject to personal jurisdiction in the district, have conducted business in the district (including negotiating funding and licenses), and a substantial part of the events giving rise to the claims occurred in the district.
- Core Dispute: Plaintiff seeks a declaratory judgment that its data storage products and services do not infringe six patents asserted by Defendants related to clustered computing systems, profile migration, data security, and performance monitoring.
- Technical Context: The technologies at issue concern the management, security, and performance optimization of large-scale enterprise data storage systems, which are foundational to modern data centers and cloud computing infrastructure.
- Key Procedural History: This action was filed by NetApp in response to a patent infringement lawsuit initiated by Defendants against NetApp on May 9, 2025, in the Eastern District of Texas. The complaint alleges that the patents-in-suit originated with Hewlett Packard Enterprise (HPE). For one patent, the complaint asserts that prosecution history estoppel bars Defendants' infringement theory, based on arguments made by the applicant to the U.S. Patent & Trademark Office to secure the patent's issuance.
Case Timeline
| Date | Event |
|---|---|
| 2001-09-27 | U.S. Patent No. 7,120,832 Priority Date |
| 2006-04-26 | U.S. Patent No. 8,370,416 Priority Date |
| 2006-10-10 | U.S. Patent No. 7,120,832 Issue Date |
| 2007-03-30 | U.S. Patent No. 7,856,488 Priority Date |
| 2007-12-20 | U.S. Patent No. 7,640,332 Priority Date |
| 2008-05-13 | U.S. Patent No. 7,904,686 Priority Date |
| 2009-04-08 | U.S. Patent No. 8,370,571 Priority Date |
| 2009-12-18 | ’488 Patent Office Action Response Date |
| 2009-12-29 | U.S. Patent No. 7,640,332 Issue Date |
| 2010-06-02 | '488 Patent Appeal Brief Filing Date |
| 2010-08-26 | '488 Patent Application Allowance Date |
| 2010-12-21 | U.S. Patent No. 7,856,488 Issue Date |
| 2011-03-08 | U.S. Patent No. 7,904,686 Issue Date |
| 2013-02-05 | U.S. Patent No. 8,370,416 Issue Date |
| 2013-02-05 | U.S. Patent No. 8,370,571 Issue Date |
| 2025-05-09 | Defendants file infringement complaint against Plaintiff in E.D. Texas |
| 2025-07-25 | Complaint Filing Date (S.D.N.Y.) |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,370,416 - "Compatibility enforcement in clustered computing systems," issued February 5, 2013
The Invention Explained
- Problem Addressed: The patent describes the technical challenge of ensuring hardware, software, and firmware compatibility, as well as licensing compliance, in clustered computing systems where individual components are frequently added, removed, or changed (ʼ416 Patent, col. 1:24-30).
- The Patented Solution: The invention proposes a method to enforce licensing rules programmatically. It involves storing license information for a computing cluster that includes a "bundle-type parameter" defining characteristics of the entire cluster (such as its size) and separate license parameters for individual nodes. The system then activates the cluster only when the number and type of nodes comply with the rules defined by the bundle-type parameter, effectively preventing invalid or unlicensed configurations (ʼ416 Patent, Abstract; col. 5:45-6:3).
- Technical Importance: This approach provides an automated method for managing the configuration and licensing of complex, scalable computing systems, reducing the risk of misconfiguration and enforcing commercial terms.
Key Claims at a Glance
- The complaint asserts non-infringement of independent method claim 1 (Compl. ¶14).
- The essential elements of claim 1 include:
- storing license information for a computing cluster that includes a "bundle-type parameter" identifying a cluster size and at least one other characteristic, along with node-specific license parameters.
- initializing the cluster in a first node.
- adding one or more available nodes to the cluster.
- activating the cluster when the number of nodes complies with the "bundle-type parameter."
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 8,370,571 - "Transfer control of a storage volume between storage controllers in a cluster," issued February 5, 2013
The Invention Explained
- Problem Addressed: In an asymmetric storage cluster, where different controllers may have more or less efficient paths to a given storage volume, routing I/O requests through a sub-optimal controller can degrade system performance (’571 Patent, col. 1:5-14).
- The Patented Solution: The patent describes an automated ownership transfer mechanism to maintain optimal data paths. A storage controller designated as the "owner" of a volume monitors both the direct "client requests" it receives and the "proxy requests" forwarded to it from other controllers. If the number of proxy requests from a second controller is higher than the number of client requests, it indicates that the second controller is receiving more traffic for that volume and should become the new owner; the system then automatically transfers control ('571 Patent, Abstract; col. 3:35-4:5).
- Technical Importance: This invention allows for dynamic and automatic load balancing in a distributed storage system, enhancing performance by ensuring data requests are handled by the most efficient controller without manual intervention.
Key Claims at a Glance
- The complaint asserts non-infringement of independent method claim 12 (Compl. ¶20).
- The essential elements of claim 12 include:
- receiving, by a first storage controller owning a storage volume, both "client requests" and "proxy requests" from other controllers.
- determining that an ownership transfer should occur based on the numbers of client and proxy requests.
- wherein the determination comprises finding that a second controller has provided a "higher number of proxy requests" for the volume "than the number of the client requests."
- performing the transfer of ownership to the second controller.
- The complaint does not explicitly reserve the right to assert dependent claims.
Multi-Patent Capsules
U.S. Patent No. 7,904,686, "Data Security For Use With A File System," issued March 8, 2011
- Technology Synopsis: The patent addresses unauthorized copying of files from a storage device. The described solution applies a mathematical "mapping function" to a file's logical data block numbers (as listed in its index node) to generate scattered, non-sequential physical storage addresses, preventing file reconstruction without access to the specific mapping algorithm (’686 Patent, Abstract).
- Asserted Claims: Claim 1 (method) (Compl. ¶26).
- Accused Features: Plaintiff's products that use Hadoop Distributed File System ("HDFS"). The complaint denies that the accused products apply the claimed mapping function to data block numbers (Compl. ¶¶24, 27).
U.S. Patent No. 7,856,488, "Electronic Device Profile Migration," issued December 21, 2010
- Technology Synopsis: The technology facilitates the migration of an electronic device's identity "profile" (e.g., MAC address, serial numbers) to a second device for upgrade or failover purposes. A key aspect of the invention is that after the profile is migrated to the second device, the first device is "no longer associated with the first profile" ('488 Patent, Abstract; col. 8:28-31).
- Asserted Claims: Claim 1 (network) (Compl. ¶32).
- Accused Features: Plaintiff's systems using ONTAP. The complaint argues for non-infringement based on prosecution history estoppel, alleging the patentee surrendered any claim scope covering migration where the first device is not fully "disassociated" from its original profile (Compl. ¶¶33-35).
U.S. Patent No. 7,120,832, "Storage Device Performance Monitor," issued October 10, 2006
- Technology Synopsis: This patent describes a system for predicting and preempting storage device failures. The method involves intercepting and analyzing communications between a computer system and a storage device to detect performance degradation (e.g., increased access times, recoverable errors). Based on this analysis, data is reallocated on the storage device to enhance performance or move it away from a potentially failing area (’832 Patent, Abstract).
- Asserted Claims: Claim 25 (method) (Compl. ¶40).
- Accused Features: Plaintiff's SANtricity and systems implementing Apache Kafka Streams, RocksDB, Cassandra, or HBase. The complaint denies that these products perform the claimed steps of analyzing intercepted communications and then reallocating data based on that analysis (Compl. ¶¶38, 41).
U.S. Patent No. 7,640,332, "System and Method for Hot Deployment/Redeployment in Grid Computing Environment," issued December 29, 2009
- Technology Synopsis: The invention aims to improve the efficiency of updating applications in a grid computing environment without service interruption. It describes using a "discovery services module" to identify which grid nodes are running a specific application, and then using an "appropriate hot deployment plug-in" to deploy a new version of the application to those running nodes (’332 Patent, Abstract).
- Asserted Claims: Claim 1 (method) (Compl. ¶46).
- Accused Features: Plaintiff's NetApp ONTAP and NetApp Trident with Kubernetes integration. The complaint denies that these products contain a "discovery services module" or perform "hot deploy/redeploy" in the manner claimed (Compl. ¶¶44, 47).
III. The Accused Instrumentality
Product Identification
- The complaint seeks a declaration of non-infringement for several of Plaintiff's product lines, including Cluster Management ONTAP, systems using SANtricity on E-Series controllers, products using HDFS, and NetApp Trident integrated with Kubernetes (Compl. ¶¶12, 18, 24, 44).
Functionality and Market Context
- The accused instrumentalities are components of NetApp's enterprise data storage and management ecosystem. The complaint describes the functionality of these products by way of what they allegedly do not do. For instance, it alleges that Cluster Management ONTAP does not use a "bundle-type parameter" for licensing (Compl. ¶15), and that systems using SANtricity do not use "proxy requests" for ownership transfer decisions (Compl. ¶21). The complaint does not otherwise detail the products' specific operations or market positions, focusing instead on the alleged absence of the claimed functions.
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
'416 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| storing license information for a computing cluster in a memory module associated with a computing node, wherein the licensing information includes a bundle-type parameter that identifies a size of the cluster and at least one additional bundle-type characteristic of the cluster... | The complaint alleges that Plaintiff's Cluster Management ONTAP products do not store license information with a "bundle-type parameter" that identifies both a cluster size and an additional bundle-type characteristic as recited in the claim. | ¶15 | col. 9:57-64 |
| activating the computing cluster when the computing cluster includes a number of nodes that complies with the bundle-type parameter. | The complaint alleges that Plaintiff's Cluster Management ONTAP products do not activate a computing cluster based on whether the number of nodes complies with the claimed "bundle-type parameter." | ¶15 | col. 9:65-67 |
- Identified Points of Contention:
- Scope Question: A central issue will be the interpretation of "bundle-type parameter." The dispute raises the question of whether any licensing or configuration data used by NetApp's ONTAP system can be construed as meeting the claim's two-part definition of identifying both "a size of the cluster" and "at least one additional bundle-type characteristic."
- Technical Question: What is the actual technical basis for cluster activation in the accused ONTAP products? The case will require evidence on whether this activation is functionally equivalent to the claimed step of activating only when the node count "complies with the bundle-type parameter."
'571 Patent Infringement Allegations
| Claim Element (from Independent Claim 12) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| receiving, by a first of the storage controllers that is currently an owner of the storage volume, client requests from one or more client computers and proxy requests from one or more other storage controllers in the cluster | The complaint alleges that Plaintiff's systems using SANtricity on E-Series controllers do not receive "proxy requests from one or more other storage controllers in the cluster" in the manner claimed. | ¶21 | col. 8:20-24 |
| based on numbers of the client requests and the proxy requests, determining that a transfer of ownership is to be performed... wherein the determining comprises determining that the second storage controller has provided a higher number of proxy requests... than the number of the client requests | The complaint alleges that the accused systems do not determine ownership transfer based on a comparison between the number of client requests and proxy requests. | ¶21 | col. 8:25-31 |
- Identified Points of Contention:
- Technical Question: Do the accused SANtricity systems feature any form of inter-controller communication that could be characterized as a "proxy request" for a storage volume?
- Functional Question: What is the actual logic that governs load balancing or ownership transfer in the accused systems? The dispute will focus on whether that logic is based on the specific numerical comparison recited in the claim, or on different technical metrics such as latency, I/O load, or a simple failover state.
V. Key Claim Terms for Construction
For the '416 Patent:
- The Term: "bundle-type parameter"
- Context and Importance: This term is central to the dispute over the '416 Patent, as Plaintiff's primary non-infringement argument is that its products do not use such a parameter (Compl. ¶15). The construction of this term will determine whether Plaintiff's licensing model, which may define cluster attributes in some way, falls within the scope of the claims.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests a bundle can be defined by various "additional parameters such as, e.g., an array, tape, computing, translating functional bundle," and can relate to market function or purpose ('416 Patent, col. 5:54-63). This language could support construing the term to cover a wide variety of licensing schemes.
- Evidence for a Narrower Interpretation: The claim explicitly requires the parameter to identify both "a size of the cluster" and "at least one additional bundle-type characteristic" ('416 Patent, col. 9:60-62). An embodiment describes a "sales bundle" with a "specific homogeneous purpose" and "standard grid parameters," which could support a narrower construction tied to a specific commercial package ('416 Patent, col. 5:63-6:1).
For the '571 Patent:
- The Term: "proxy requests"
- Context and Importance: Plaintiff's non-infringement defense for the '571 Patent hinges on the assertion that its systems do not receive or act upon "proxy requests" (Compl. ¶21). The definition of this term is critical, as any inter-controller communication in the accused system could potentially be characterized as a proxy request.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification provides a general definition: "Such a request received from another storage controller is referred to as a 'proxy request.'" ('571 Patent, col. 3:3-5). This could be argued to encompass any request for a volume forwarded between controllers.
- Evidence for a Narrower Interpretation: The claim language requires a specific use for these requests: their number must be compared against the number of client requests to trigger an ownership transfer ('571 Patent, col. 8:25-31). This functional context may support a narrower definition, limiting the term to only those forwarded requests that are counted as part of the claimed ownership transfer logic.
VI. Other Allegations
- Indirect Infringement: For each patent-in-suit, the complaint seeks a declaration that Plaintiff does not infringe indirectly, either by contribution or inducement (e.g., Compl. ¶¶13, 19). The complaint does not elaborate on the specific factual allegations of indirect infringement made by Defendants in the parallel Texas litigation.
VII. Analyst’s Conclusion: Key Questions for the Case
- Prosecution History Estoppel: A central legal issue for the '488 patent will be the applicability of prosecution history estoppel. The case will likely turn on whether the patentee's arguments to the patent office to "disassociate" a migrated profile from the original device constituted a "clear and unmistakable surrender" of claim scope, which would bar Defendants from now asserting a broader interpretation against Plaintiff's products.
- Technical Mismatch in Function: For the remaining five patents, the core of the dispute appears to be a fundamental mismatch between the claimed methods and the operation of the accused products. A key evidentiary question will be one of functional operation: does the accused NetApp technology (e.g., ONTAP licensing, SANtricity load balancing) perform the highly specific functions recited in the claims—such as using a "bundle-type parameter" or counting "proxy requests"—or does it achieve similar high-level goals through technically distinct methods that fall outside the literal scope of the patent claims?
- The Forum Battle: A threshold procedural question will be which of the two parallel lawsuits—this declaratory judgment action in New York or the earlier-filed infringement action in Texas—will proceed. The resolution of this issue, governed by the first-to-file rule and its exceptions, will determine the venue for the dispute and may significantly influence litigation strategy and outcomes.