Actifio Inc v. Delphix Corp

1. Case Identification

• Patent #: 8,161,077
• Filed: October 6, 2014
• Petitioner(s): Actifio, Inc.
• Patent Owner(s): Delphix Corp.
• Challenged Claims: 8, 11-13, 17, 24, 27-29, and 33

2. Patent Overview

• Title: Datacenter Workflow Automation Scenarios Using Virtual Databases
• Brief Description: The ’077 patent describes a system and method for creating and managing space-efficient “virtual databases” for use in development and testing workflows. The invention purports to solve issues of storage cost and time overhead by creating instantaneous, writable database copies from point-in-time snapshots, which are implemented as pointers to underlying stored data blocks rather than full physical copies.

3. Grounds for Unpatentability

Ground 1: Obviousness over NetApp Prior Art - Claims 8, 11-13, 24, and 27-29 are obvious over Sanders in view of Edwards and Data Ontap Guide.

• Prior Art Relied Upon: Sanders (a 2006 NetApp technical report on DB2 cloning), Edwards (a 2008 USENIX conference paper on NetApp's FlexVol technology), and Data Ontap Guide (a 2007 NetApp technical guide).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of these references, all describing NetApp’s integrated Data ONTAP storage system, taught every limitation of the challenged claims. Sanders was asserted to teach the overall workflow of using NetApp’s SnapMirror feature to create a remote point-in-time copy (snapshot) of a production database and its FlexClone feature to create a writable “clone” (the claimed “virtual database”) from that snapshot for testing and development. Edwards was argued to provide the underlying technical implementation details, explaining that FlexClone volumes are “virtual” because they are created by pointing to existing data blocks (via a new vol_info block) rather than physically duplicating them, thereby decoupling logical and physical storage. Data Ontap Guide was asserted to teach additional required functionality, such as “cascading” SnapMirror data from a first destination system to a second destination system (addressing claim 11) and reversing the data flow for disaster recovery (addressing claim 12).
  • Motivation to Combine: Petitioner asserted a strong motivation to combine existed because all three references were published by the same company (NetApp), described different aspects of the same commercial product suite (Data ONTAP, FlexVol, FlexClone, SnapMirror), and were directed to solving the same problem of creating efficient database copies. Petitioner noted that Sanders explicitly referenced the Data Ontap Guide, and a person of ordinary skill in the art (POSITA) would have naturally consulted the more detailed technical paper (Edwards) and user manual (Data Ontap Guide) to understand and implement the system described in Sanders.
  • Expectation of Success: A POSITA would have had a high expectation of success because the references described features of a single, integrated, and commercially available product designed to work together.

Ground 2: Obviousness over NetApp Prior Art with Sarma - Claims 17 and 33 are obvious over Sanders in view of Edwards, Data Ontap Guide, and Sarma.

• Prior Art Relied Upon: Sanders (a 2006 NetApp technical report), Edwards (a 2008 USENIX conference paper), Data Ontap Guide (a 2007 NetApp technical guide), and Sarma (Patent 7,631,021).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination in Ground 1 to address the limitations of claims 17 and 33, which require performing a pre-script operation such as compressing or encrypting database blocks during transmission. While the base combination taught the transmission of database blocks between storage systems, Sarma—another NetApp patent describing its multi-hop data replication technology (SnapMirror)—was asserted to explicitly teach that such transmissions could be compressed or encrypted using standard techniques.
  • Motivation to Combine: Petitioner argued a POSITA would combine Sarma with the other references to improve efficiency. Since Sanders, Edwards, and the Data Ontap Guide all emphasized the benefits of storage and resource savings, a POSITA would be motivated to incorporate a known efficiency-improving technique like data compression, especially when taught for the very same SnapMirror technology by the same company in Sarma.
  • Expectation of Success: The expectation of success was argued to be high, as it involved applying a standard, known technique (compression) to an existing data transmission process to achieve a predictable result (reduced bandwidth and storage usage).

4. Key Claim Construction Positions

• "virtual database": Petitioner argued this central term should 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 critical to the Petitioner’s case, as it directly equated the claimed invention with the functionality of NetApp’s prior art FlexClone technology, which created writable volumes by inheriting pointers to a read-only snapshot’s file system image.
• "database blocks": Proposed as “a unit of data used by a database.” This construction was argued to be broad and consistent with how Edwards describes data blocks in the context of NetApp’s file system.
• "mounting": Proposed as “making accessible [to a database server].” This aligns the claim term with the common understanding of mounting a file system to make it available for use.
• "[pre/post]script operation": Proposed as “specific logic to be executed [before/after] a VDB operation.” This construction was used in Ground 2 to argue that applying compression before transmission, as taught by Sarma, would constitute a "prescript operation."

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 8, 11-13, 17, 24, 27-29, and 33 of the ’077 patent as unpatentable under 35 U.S.C. §103.