SAP Se v. Teradata US Inc

1. Case Identification

• Case #: IPR2021-00863
• Patent #: 9,720,623
• Filed: May 7, 2021
• Petitioner(s): SAP Se
• Patent Owner(s): Teradata US, Inc.
• Challenged Claims: 1-3, 5-9, 11-13, 15, and 17-19

2. Patent Overview

• Title: Management of Data in Multi-Storage Systems That Can Include Non-Volatile and Volatile Storages
• Brief Description: The ’623 patent describes methods for managing data in computer systems with multiple storage types, such as a volatile cache and a non-volatile disk. The core concept involves using storage information (e.g., data "temperature" reflecting access frequency) associated with data in a first storage device to manage how data is stored in a second storage device.

3. Grounds for Unpatentability

Ground 1: Claims 1-3, 5-9, 11-13, 15, 17-19 are anticipated or obvious over Morris.

• Prior Art Relied Upon: Morris (Application # 2007/0067575).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued Morris discloses a multi-storage system with non-volatile disk drives and a volatile cache that anticipates the claims. Morris teaches that a "temperature" value, representing the access rate of a data object, is stored with the data object on the disk drive (the first storage). This temperature information is then used to manage data in the cache (the second storage). Specifically, Morris's flowcharts show using this temperature to determine whether a data object read from the disk should be stored in the cache and, separately, whether an existing object should be deleted from the cache to make space. Petitioner asserted this directly maps to the claim limitations of using information from a first storage to manage a second storage.
  • Motivation to Combine (for §103 grounds): For the alternative obviousness argument, Petitioner argued that even if Morris were found not to inherently disclose providing the disk-based temperature value to the cache, a POSITA would find it obvious to do so. The temperature value stored with the data object on the disk was the most direct and logical source of information for the cache management decisions described, making its use a natural design choice.
  • Expectation of Success (for §103 grounds): Petitioner contended a POSITA would have had a high expectation of success because using an access-rate metric to manage a cache was a well-known and predictable technique for improving performance.

Ground 2: Claim 19 is obvious over Morris in view of Ghandeharizadeh.

• Prior Art Relied Upon: Morris (Application # 2007/0067575) and Ghandeharizadeh ("Placement of Data in Multi-Zone Disk Drives," 1996).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner addressed claim 19, which recites managing non-volatile storage using information from volatile storage. While Morris primarily teaches the reverse, Petitioner argued that Ghandeharizadeh explicitly teaches managing data storage within a non-volatile disk drive based on a file's "heat" (access frequency) by assigning frequently accessed files to faster physical "zones" on the disk.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Ghandeharizadeh's disk optimization technique with the Morris system to enhance overall system performance. The "temperature" values already stored on the disk drives in Morris, which reflect access rates, would serve as a ready-made input for the "heat" metric required by Ghandeharizadeh's method. The motivation was to improve disk drive access times, a known goal in the art, by applying a known optimization technique to a system that already generated the necessary data.
  • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success as Ghandeharizadeh provides detailed implementation guidance, and adapting Morris's existing temperature data would be a straightforward software modification to the disk controller or storage manager.

Ground 3: Claims 1-3, 5-9, 11-13, 15, 17-19 are anticipated or obvious over Burke.

• Prior Art Relied Upon: Burke (Patent 8,566,549).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued Burke teaches a system with a primary storage device (R1) and a secondary storage device (R2), each containing multiple tiers of volatile (e.g., DRAM cache) and non-volatile (e.g., flash) memory. Burke discloses collecting "characterized data access information" (including access rate and frequency of use) at the primary device and transmitting it to the secondary device. The secondary device then uses this information to manage its own data storage, for example by applying an Information Lifecycle Management (ILM) algorithm to place data in the appropriate storage tiers to match the performance requirements of the primary device. This process was alleged to anticipate the challenged claims.
  • Motivation to Combine (for §103 grounds): As an alternative, Petitioner asserted that Burke expressly teaches that its various disclosed embodiments can be combined. A POSITA would have been motivated to implement the disclosed ILM techniques across the described multi-storage architectures to create optimized and efficient storage solutions tailored to specific needs.
  • Expectation of Success (for §103 grounds): A POSITA would have expected success because ILM was a well-known storage management technique, and Burke provides detailed guidance on its implementation within the described systems.

4. Key Claim Construction Positions

• Petitioner proposed constructions for key terms to encompass the prior art disclosures.
• "Data temperature": Proposed to include any value representing the number or frequency of data access. Petitioner argued this construction is supported by the patent's specification and was necessary to show that access rate information disclosed in Morris and Burke meets this limitation.
• "Persistent data temperature": Petitioner identified three possible interpretations, arguing that the term could mean (1) a temperature value stored in non-volatile memory, (2) the temperature of data that is stored in non-volatile memory, or (3) both. Petitioner contended that the prior art discloses examples meeting all three interpretations.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under 35 U.S.C. §314(a), asserting that the parallel district court litigation was in its early stages.
• Key arguments included that the trial was scheduled for January 2023, well after a Final Written Decision (FWD) would issue in the inter partes review (IPR). Petitioner also contended that significant resources had not yet been invested in the district court case, the claim construction process had not begun, and the petition relied on strong prior art references that were not before the Examiner during prosecution.

6. Relief Requested

• Petitioner requested the institution of an IPR and cancellation of claims 1-3, 5-9, 11-13, 15, and 17-19 of the ’623 patent as unpatentable.