Actifio Inc v. Delphix Corp

1. Case Identification

• Patent #: 8,548,944
• Filed: October 08, 2014
• Petitioner(s): Actifio, Inc.
• Patent Owner(s): Delphix Corp.
• Challenged Claims: 1-6, 9-12, 17-19, and 21

2. Patent Overview

• Title: De-Deduplication Based Backup of File Systems
• Brief Description: The ’944 patent relates to methods for "storage efficient backup" of large file systems. The invention creates "virtual restored file system" (VRFS) structures from point-in-time snapshots, allowing a client to directly read and write to the backup copy, thereby reducing data restoration time and storage space.

3. Grounds for Unpatentability

Ground 1: Obviousness over Sanders, Edwards, and Patterson - Claims 1-4, 10-12, 17, 18, and 21 are obvious over Sanders in view of Edwards and Patterson.

• Prior Art Relied Upon: Sanders (a 2006 NetApp technical report), Edwards (a 2008 USENIX conference paper), and Patterson (a 2002 FAST conference paper).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Sanders, a NetApp "how-to" guide, taught the core method of the ’944 patent. Sanders disclosed using NetApp's SnapMirror and FlexClone technologies to create a writeable "clone" (the claimed "virtual restored file system") from a snapshot of a source database for backup and recovery. Patterson, which describes NetApp’s SnapMirror technology, was cited to teach the claimed step of receiving only changed data blocks during incremental updates and storing multiple versions of a data block corresponding to different point-in-time copies. Edwards was cited to supply the underlying technical details of how NetApp's FlexClone technology works, specifically teaching that a clone is created by making a new vol_info block that inherits pointers to the existing data blocks of a snapshot, thereby "linking" the new restored files to the stored data as claimed.
  • Motivation to Combine: Petitioner contended a POSITA would combine these references because they all originated from the same company (NetApp), described different aspects of the same integrated product suite (Data ONTAP, SnapMirror, FlexClone), and addressed the same problem of fast, space-efficient data recovery. Edwards expressly referred to Patterson for technical details, and a POSITA reviewing Sanders’ high-level guide would naturally consult more detailed NetApp technical papers like Edwards and Patterson to understand implementation specifics.
  • Expectation of Success: A POSITA would have had a high expectation of success, as the references described commercially available technologies that were designed and documented to work together seamlessly within NetApp's product ecosystem.

Ground 2: Obviousness over Sanders, Edwards, Patterson, and Fair - Claims 5, 6, and 19 are obvious over Sanders in view of Edwards, Patterson, and Fair.

• Prior Art Relied Upon: Sanders (a 2006 NetApp technical report), Edwards (a 2008 USENIX conference paper), Patterson (a 2002 FAST conference paper), and Fair (Patent 7,334,095).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon Ground 1 to address claims reciting specific read (claim 5) and write (claims 6, 19) operations on the virtual restored file system. While Sanders taught mounting a writeable clone, Petitioner argued Fair was needed for explicit technical details. Fair, a NetApp patent co-authored by an author of Edwards, described how a cloned volume services read requests by accessing the underlying data blocks. For write requests, Fair detailed the copy-on-write (COW) mechanism inherent in NetApp's file system, where modifying a data block involves creating a copy, writing to the new copy, and updating pointers to the new block, thus teaching the claimed steps of "creating a copy," "updating the copy," and "linking the restored file to the copy."
  • Motivation to Combine: The motivation to add Fair was similar to the motivation in Ground 1. Fair patented the same cloning technology described in the other references and provided the low-level operational details of reading and writing that a POSITA implementing the system described in Sanders would seek. All references concerned the same NetApp technology and solved the same problem.
  • Expectation of Success: Success was expected because Fair described the fundamental, established read/write operations of the WAFL file system upon which the technologies in Sanders, Edwards, and Patterson were built.

Ground 3: Obviousness over Sanders, Edwards, Patterson, and Data ONTAP Guide - Claim 9 is obvious over Sanders in view of Edwards, Patterson, and Data ONTAP Guide.

• Prior Art Relied Upon: Sanders (a 2006 NetApp technical report), Edwards (a 2008 USENIX conference paper), Patterson (a 2002 FAST conference paper), and Data ONTAP Guide (a 2007 NetApp user guide).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed claim 9, which required exporting the virtual restored file system to a second storage system. Petitioner argued that while Sanders taught creating a clone database at a disaster recovery site, the Data ONTAP Guide provided the explicit mechanism for the claimed export functionality. The Data ONTAP Guide described the vol copy command, a feature used for "replicating all of the data from one volume to another," including both active file system data and snapshot data. This command could be used to send the data blocks of the cloned volume (the virtual restored file system) to a second, remote storage system.
  • Motivation to Combine: A POSITA would combine these references because Sanders explicitly cited the Data ONTAP Guide for further details on NetApp's storage operating system. Given the shared objective of disaster recovery, a POSITA implementing the staging area in Sanders would look to the Guide's teachings on volume copying to create a fail-safe copy on a separate system.
  • Expectation of Success: The combination was expected to succeed as it involved using a standard, documented command (vol copy) from NetApp's own user guide to manage a volume (the clone) created by other standard NetApp technologies.

4. Key Claim Construction Positions

• "data block": Petitioner proposed the construction "a unit of data used by a file system." This broad construction was important because the prior art (e.g., Edwards) described data storage in terms of fixed-size blocks (4KB) that were units of data within the file system, directly mapping to the proposed construction.
• "virtual restored file system": Petitioner proposed "a set of files pointing to already-stored data blocks associated with a point-in-time copy of the source file system." This construction was central to the invalidity case, as it framed the invention as a pointer-based system, which Petitioner argued was precisely what NetApp's FlexClone technology, described in Edwards, accomplished by creating a new vol_info block that points to existing snapshot data.
• "mounting": Petitioner proposed the construction "making accessible." This interpretation was argued to be consistent with the specification and allowed Sanders' disclosure of using standard nfs mount commands to make a cloned volume available to a server to meet the claim limitation.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-6, 9-12, 17-19, and 21 of the ’944 patent as unpatentable.