Actifio Inc v. Delphix Corp

1. Case Identification

• Case #: IPR2015-00108
• Patent #: 8,566,361
• Filed: October 21, 2014
• Petitioner(s): Actifio, Inc.
• Patent Owner(s): Delphix Corp.
• Challenged Claims: 9-13 and 21-23

2. Patent Overview

• Title: Datacenter Workflow Automation Using Virtual Databases
• Brief Description: The ’361 patent describes methods for creating space-efficient, instantaneous, and writable copies of production databases, termed "virtual databases." This technology is intended to streamline datacenter workflows, such as development, testing, and data warehousing, by avoiding the time and storage costs associated with making full physical copies of large databases.

3. Grounds for Unpatentability

Ground 1: Obviousness over Sanders, Edwards, and Patel - Claims 9-12, 21, and 22 are obvious over Sanders in view of Edwards and Patel.

• Prior Art Relied Upon: Sanders (a 2006 NetApp Technical Report TR-3460), Edwards (a 2008 USENIX Conference paper), and Patel (a 2007 NetApp White Paper).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of these references, all describing NetApp's integrated storage technologies, taught every element of the challenged claims. Sanders was asserted to disclose the overall method of creating "clone databases" (analogous to the claimed "virtual databases") from point-in-time snapshots for data warehousing and other workflows. Edwards allegedly provided the key technical details missing from Sanders, explaining how NetApp's FlexClone technology creates a writable clone by creating a new file structure with pointers to the original data blocks of a read-only snapshot, thereby meeting the claim limitation of "creating a set of files linked to the stored database blocks." Patel was argued to explicitly teach using these clone databases for data warehouse ETL (Extract, Transform, Load) processes and creating multiple clones from a single source, directly corresponding to limitations in independent claim 9 and dependent claims 11 and 12.
  • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSITA) would have been strongly motivated to combine these references. All three documents originated from the same company (NetApp), described different aspects of the same commercial product suite (Data ONTAP OS with FlexVol, FlexClone, and SnapMirror features), and collectively addressed the same problem of creating efficient, writable database copies. A POSITA seeking to implement the high-level workflow described in Sanders would have naturally looked to a technical paper like Edwards for implementation details and to a white paper like Patel for specific application use cases like ETL operations.
  • Expectation of Success: Success was not only expected but certain, as the references describe technologies that were designed, marketed, and sold by NetApp to work together seamlessly within the same operating system.

Ground 2: Obviousness over Sanders, Edwards, Patel, and Chapman - Claims 13 and 23 are obvious over Sanders in view of Edwards, Patel and Chapman.

• Prior Art Relied Upon: Sanders (a 2006 NetApp Technical Report TR-3460), Edwards (a 2008 USENIX Conference paper), Patel (a 2007 NetApp White Paper), and Chapman (a 2006 NetApp Technical Report TR-3446).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination in Ground 1, adding Chapman to address the limitations of claims 13 and 23, which require "performing backup of the database blocks...to a second storage system." Petitioner asserted that Chapman, as NetApp's "SnapMirror Best Practices Guide," explicitly disclosed a "cascading" SnapMirror configuration. This feature involved transmitting data from a first SnapMirror destination (the "first storage system" of claim 9) to a subsequent destination (the "second storage system" of claim 13), directly teaching the claimed backup step.
  • Motivation to Combine: The motivation to combine Sanders, Edwards, and Patel remained the same as in Ground 1. A POSITA implementing the SnapMirror technology broadly described in Sanders would have been motivated to consult Chapman, the official best practices guide for that specific technology, to understand advanced configurations, capabilities, and backup solutions like cascading replication. Chapman's disclosure of backup consolidation benefits provided a clear reason to add this capability to the system described by the other references.
  • Expectation of Success: As with Ground 1, the combination involved components of a single, integrated commercial system, ensuring a high expectation of success.

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 equating NetApp's "FlexClone" volumes, which are writable and created by pointing to blocks of a read-only snapshot, with the claimed invention.
• "database blocks": Petitioner proposed the construction "a unit of data used by a database." This broad construction was used to map the blocks described in the prior art's file system context to the claimed database blocks.
• "mounting": Petitioner proposed construing this term as "making accessible [to a database server]." This construction allowed NetApp's standard network file system (NFS) mounting procedures described in Sanders to satisfy the claim limitation.

5. Relief Requested

• Petitioner requested the institution of an inter partes review (IPR) and the cancellation of claims 9-13 and 21-23 of Patent 8,566,361 as unpatentable.