Tessell Inc v. Nutanix Inc

1. Case Identification

• Case #: IPR2025-00298
• Patent #: 11,860,818
• Filed: December 13, 2024
• Petitioner(s): Tessell, Inc.
• Patent Owner(s): Nutanix, Inc.
• Challenged Claims: 1-36

2. Patent Overview

• Title: Database Provisioning System and Method
• Brief Description: The ’818 patent discloses a database system that uses a user-friendly, intuitive user interface (UI) to automate the provisioning of a database. The system receives various user-specified parameters—such as database name, engine type, and data protection settings—through a dashboard and creates a database based on those inputs.

3. Grounds for Unpatentability

Ground 1: Obviousness over Sivasubramanian and Zha - Claims 1-36 are obvious over Sivasubramanian in view of Zha.

• Prior Art Relied Upon: Sivasubramanian (Patent 8,713,060) and Zha (Patent 8,150,808).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Sivasubramanian teaches a "control plane" for automating the creation and provisioning of databases. Sivasubramanian's system accepts user inputs via a GUI or command-line interface to define parameters like repository name, database engine, and storage capacity, thus teaching the core workflow of the ’818 patent. However, Sivasubramanian is allegedly agnostic on the specific implementation details of its database backup workflow. Zha remedies this deficiency by teaching a database backup system that uses "point-in-time" copies (snapshots) and transaction logs. Zha explicitly discloses configuring a "schedule" that specifies the frequency and timing for capturing snapshots and a "retention period" for storing them. The combination of Sivasubramanian's database creation UI with Zha's configurable backup and retention policies allegedly renders the limitations of the independent claims obvious.
  • Motivation to Combine: A POSITA implementing Sivasubramanian's database system, which includes a generic "backup" workflow, would combine it with Zha's specific teachings to provide a more robust and useful product. Zha's disclosure of user-configurable schedules and retention periods for backups addresses a known need to balance data protection with storage and performance costs, a detail Sivasubramanian does not provide. This combination would predictably improve Sivasubramanian's system by adding well-known, beneficial backup configuration options.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in this combination. Both references operate in the same field of database management. Integrating Zha's scheduling and retention policies into Sivasubramanian's flexible UI would be a straightforward implementation for a person of ordinary skill.

Ground 2: Obviousness over Sivasubramanian, Zha, and Shekar - Claims 1-36 are obvious over Sivasubramanian in view of Zha and Shekar.

• Prior Art Relied Upon: Sivasubramanian (Patent 8,713,060), Zha (Patent 8,150,808), and Shekar (Application # 2018/0232142).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the Sivasubramanian and Zha combination from Ground 1 to address limitations in dependent claims reciting a "hyperconverged infrastructure system" (e.g., claims 2, 9, 16). Sivasubramanian teaches that its database provisioning workflows operate on a flexible "data plane," which can be implemented as a "cloud" system. Shekar discloses a high-performance hyperconverged infrastructure (HCI) that provides both storage and compute capabilities, a known alternative to cloud infrastructure for deploying applications like databases. Petitioner asserted that Shekar provides a specific, well-known implementation for Sivasubramanian’s more conceptual "data plane."
  • Motivation to Combine: A POSITA would combine Shekar's HCI with the Sivasubramanian/Zha system to realize the known benefits of HCI, such as enhanced performance, resource sharing, and ease of management. Sivasubramanian's disclosure is flexible as to the underlying hardware environment, and Shekar provides a known, advantageous option for that environment. The motivation is to deploy the combined database provisioning and backup system on a high-performance, integrated hardware platform.
  • Expectation of Success: Success would be expected because deploying databases on HCI systems was well-known. Shekar’s HCI includes components (e.g., storage arrays, virtual machines) that are functionally equivalent to the infrastructure required to implement Sivasubramanian's data plane, making the integration predictable and achievable for a POSITA.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) based on Fintiv factors is unwarranted. The petition was filed early in a parallel district court litigation, before significant litigation investments were made, and a Final Written Decision (FWD) from the PTAB is expected to issue well before the scheduled trial date.
• Petitioner further argued that denial under §325(d) is inappropriate because the primary prior art references and the proposed combinations were never substantively considered during prosecution. Although Zha and a related Sivasubramanian patent were listed in an Information Disclosure Statement (IDS), the Examiner’s reasons for allowance did not articulate any consideration of them, meaning the art was not "meaningfully addressed" by the USPTO.

5. Relief Requested

• Petitioner requests institution of inter partes review and cancellation of claims 1-36 of the ’818 patent as unpatentable.