Actifio Inc v. Delphix Corp

1. Case Identification

• Patent #: 8,468,174
• Filed: October 23, 2014
• Petitioner(s): Actifio, Inc.
• Patent Owner(s): Delphix Corp.
• Challenged Claims: 27 and 29

2. Patent Overview

• Title: Interfacing with a virtual database system
• Brief Description: The ’174 patent describes a system and method for creating space-efficient "virtual databases." The technology aims to reduce storage costs associated with making multiple copies of a production database by creating virtual copies that point to shared, common data blocks, rather than physically duplicating the entire dataset for each copy.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claim 27 over Edwards, Edwards II, Neto, and Klivansky

• Prior Art Relied Upon: Edwards (USENIX Conference, June 2008), Edwards II (Patent 7,409,511), Neto (Technical Report, Apr. 2009), and Klivansky (Technical White Paper, Oct. 2004).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that claim 27, a system claim, is obvious for the same reasons as method claim 1, which it mirrors. The combination of prior art was argued to teach all elements. Edwards was presented as the primary reference, disclosing NetApp's core technology for creating virtual database "clones" from point-in-time "snapshots" using pointer-based, space-efficient techniques (FlexClone). Neto was argued to add a graphical user interface (SnapManager) for managing multiple backups and creating clones from them. Edwards II was cited for its detailed disclosure of how multiple snapshots achieve space efficiency by sharing common data blocks. Finally, Klivansky was used to show the mounting of these cloned databases to destination servers for testing and development, providing explicit examples and commands that satisfy the limitations of receiving server information and making the virtual database accessible for read/write operations.
  • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would combine these references because they all originate from the same company (NetApp), describe different aspects of the same integrated product line (Data ONTAP, FlexClone, SnapManager), and address the same problem of creating efficient, writable database copies. The references were characterized as complementary, with Edwards and Edwards II describing the underlying technology and Neto and Klivansky serving as user guides and technical papers that a POSITA would naturally consult to implement that technology.
  • Expectation of Success: A POSITA would have had a high expectation of success, as the technologies described were already integrated and commercialized by NetApp, ensuring their compatibility and predictable operation when used together.

Ground 2: Obviousness of Claim 29 over Edwards, Edwards II, Neto, Klivansky, and Hart

• Prior Art Relied Upon: Edwards (USENIX Conference, June 2008), Edwards II (Patent 7,409,511), Neto (Technical Report, Apr. 2009), Klivansky (Technical White Paper, Oct. 2004), and Hart (Application # 2008/0307345).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds upon Ground 1 to address the additional limitations of dependent claim 29, which requires a user interface manager to present a "geometric shape" (e.g., a timeline) where a position corresponds to a time value for selecting a backup. While the base combination disclosed a list-based GUI (from Neto), Petitioner argued that Hart, describing Apple's "Time Machine" feature, explicitly taught a timeline-based GUI. Hart's interface used a vertical line with tick marks for different dates, allowing a user to select a point-in-time snapshot for restoration, thereby meeting the "geometric shape" limitation.
  • Motivation to Combine: A POSITA seeking to improve the usability of the backup selection feature in Neto's SnapManager GUI would be motivated to substitute its list-based selection with Hart's well-known and intuitive timeline interface. Petitioner contended this was a simple substitution of one known UI for another to perform the identical function of selecting a point-in-time backup, which would yield the predictable result of an improved user experience.
  • Expectation of Success: Success would be expected because both the Neto and Hart GUIs perform the same function of selecting a backup from multiple options, and replacing one selection method with another is a routine design choice in software development.

4. Key Claim Construction Positions

• "virtual database": Petitioner proposed the construction "a set of database files capable of being read from and written to, created by pointing to already-stored database blocks." This construction was argued to be critical for mapping the prior art's "clone" databases, which are created via pointers, to the claimed invention.
• "database blocks": Proposed as "a unit of data used by a database." This broad construction was used to align the "blocks" in NetApp's file system (as described in the prior art) with the claimed term.
• "mount[ing]": Proposed as "making accessible [to a database server]." This construction was used to connect the act of making a cloned volume available to a server in the prior art with the claim's mounting limitation.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 27 and 29 of the ’174 patent as unpatentable.