Actifio Inc v. Delphix Corp

1. Case Identification

• Case #: IPR2015-00016
• Patent #: 8,150,808
• Filed: October 3, 2014
• Petitioner(s): Actifio, Inc.
• Patent Owner(s): Delphix Corp.
• Challenged Claims: 3, 29, 31, 36, 53, 54, and 56

2. Patent Overview

• Title: Virtual Database System
• Brief Description: The ’808 patent describes a system and method for creating "virtual databases," which are space-efficient, read/writable copies of a production database. The system receives and stores multiple point-in-time copies (snapshots) of a source database on a remote storage system and creates virtual databases by creating file structures that point to the underlying data blocks of the snapshots, avoiding data duplication.

3. Grounds for Unpatentability

Ground 1: Obviousness over Edwards, Patterson, and Sanders - Claims 3, 29, 31, 53, 54, and 56 are obvious over Edwards in view of Patterson and Sanders.

• Prior Art Relied Upon: Edwards (a 2008 USENIX conference proceeding on NetApp's FlexVol technology), Patterson (a 2002 USENIX conference proceeding on NetApp's SnapMirror technology), and Sanders (a 2006 NetApp technical report on cloning databases).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of these three NetApp-authored references teaches every limitation of the challenged claims. Edwards was asserted to be the primary reference, teaching the creation of writable, virtual database clones from read-only snapshots using NetApp's FlexClone technology. Edwards described that these clones are "virtual" because they inherit pointers to the data blocks of the original snapshot, rather than physically duplicating them. While Edwards disclosed using SnapMirror to replicate snapshots to a remote system, Petitioner argued it did not explicitly detail the storage of multiple snapshots that share common data blocks. Patterson allegedly supplied this missing detail, teaching that SnapMirror stores a plurality of point-in-time snapshots on a destination system, where different snapshots share common, unchanged data blocks. Finally, Petitioner contended that Sanders explicitly taught the final step of mounting the cloned database onto a database server to make it accessible for reading and writing, a step only implied in Edwards. For dependent claims, Patterson was argued to teach sending requests for snapshots (claim 3/53) and receiving data streams corresponding to snapshots (claim 29/54), including streams of only changed blocks (claim 31/56).
  • Motivation to Combine: Petitioner asserted a strong motivation to combine existed because all three references originated from the same company (NetApp), described different features of the same integrated commercial product (Data ONTAP), and collectively solved the same problem of creating efficient database copies. Edwards explicitly referenced Patterson for more detail on SnapMirror's functionality, directing a person of ordinary skill in the art (POSITA) to combine their teachings. Sanders was presented as a user-focused guide that explained how to practically implement the technologies described academically in Edwards and Patterson.
  • Expectation of Success: A POSITA would have had a high expectation of success because the references described technologies that were not merely compatible but were designed, marketed, and sold by NetApp as an integrated system. The combination represented the intended use of the constituent technologies.

Ground 2: Obviousness over Edwards, Patterson, Sanders, and Singh - Claim 36 is obvious over Edwards in view of Patterson, Sanders, and Singh.

• Prior Art Relied Upon: Edwards, Patterson, and Sanders (as in Ground 1), and Singh (Patent 8,775,663).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground specifically addressed claim 36, which adds the limitation of "compressing the database blocks prior to storing on the storage system" to the method of claim 1. Petitioner argued that the base combination of Edwards, Patterson, and Sanders established all elements of claim 1. The additional reference, Singh, was introduced to teach the compression limitation. Singh, another NetApp-authored reference, explicitly disclosed using data compression in conjunction with SnapMirror data replication to improve transfer efficiency and reduce storage requirements on the destination system.
  • Motivation to Combine: Petitioner argued that a POSITA would be motivated to add Singh's compression teachings to the base combination for a simple and compelling reason: to improve efficiency. The primary references (Edwards, Patterson, Sanders) all emphasized the goals of reducing storage space and optimizing data transfer. Compression is a well-known, fundamental technique for achieving these exact goals. A POSITA seeking to further enhance the system's efficiency would have found it obvious to apply standard data compression, and Singh provided an explicit teaching of doing so within the same NetApp product ecosystem.
  • Expectation of Success: Success was expected because Singh described applying a standard, predictable technology (data compression) to the specific NetApp technologies (SnapMirror) already discussed in the other references. There was no technical incompatibility or uncertainty in applying compression to the data blocks before storage.

4. Key Claim Construction Positions

• "virtual database": Petitioner proposed this term be construed as "a set of database files capable of being read from and written to, created by pointing to already-stored database blocks." This construction was central to the argument, emphasizing that the "virtual" nature arises from using pointers rather than duplicating data, a concept Petitioner argued was fully disclosed in the prior art's description of NetApp's FlexClone technology.
• "database blocks": Petitioner proposed this term meant "a unit of data used by a database." This construction aligned with the patent's specification and was argued to be broad enough to encompass the data blocks described in the prior art.
• "mount[ing]": Petitioner proposed this term meant "making accessible [to a database server]." This functional definition was used to argue that Sanders's disclosure of using a standard "mount" command to make a cloned volume accessible to a server met the claim limitation.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 3, 29, 31, 36, 53, 54, and 56 of the ’808 patent as unpatentable.