Tessell Inc v. Nutanix Inc

1. Case Identification

• Case #: IPR2025-00322
• Patent #: 11,010,336
• Filed: December 18, 2024
• Petitioner(s): Tessell, Inc.
• Patent Owner(s): Nutanix, Inc.
• Challenged Claims: 1-23

2. Patent Overview

• Title: Database System for Provisioning a Source Database in a Hyperconverged Infrastructure System
• Brief Description: The ’336 patent discloses a database system with a user interface (UI) for provisioning a source database. The system receives user inputs for parameters like database engine type and a protection schedule, then automatically provisions the database and sets up the capture of snapshots and transactional logs for backup.

3. Grounds for Unpatentability

Ground 1: Claims 1, 5-8, 10-15, and 19-21 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 taught the foundational elements of the challenged claims, including a “control plane” system that uses a UI (both graphical and command-line) to automate the provisioning of databases based on user-selected parameters like database engine type and storage capacity. Sivasubramanian further disclosed a “recovery and backup” workflow that captures database snapshots and associated log files. Petitioner contended that Zha supplied the specific, well-known backup configuration details absent from Sivasubramanian. Zha taught a system for database backup that allows a user to configure a “schedule” specifying the “frequency” for capturing point-in-time copies (snapshots) and transaction logs, as well as defining a “retention period” for this data. The combination allegedly taught receiving a user request for provisioning, selecting a database engine, and setting up automatic capturing of snapshots and transactional logs based on a protection schedule and SLA, as recited in independent claim 1.
  • Motivation to Combine: A person of ordinary skill in the art (POSA) would combine Zha’s specific, user-configurable backup scheduling features with Sivasubramanian’s flexible database provisioning system. The motivation was to enhance Sivasubramanian's general backup framework with well-known, granular controls for backup frequency and retention, thereby increasing user convenience and allowing users to tune backup parameters to their specific needs.
  • Expectation of Success: A POSA would have a reasonable expectation of success in this combination because implementing user-configurable fields for backup parameters into a UI-based provisioning system was a routine and predictable design choice within the skill of an ordinary artisan.

Ground 2: Claims 1-23 are obvious over Sivasubramanian in view of Shekar and Zha.

• Prior Art Relied Upon: Sivasubramanian (Patent 8,713,060), Shekar (Application # 2018/0232142), and Zha (Patent 8,150,808).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground asserted that the Sivasubramanian and Zha combination taught nearly all limitations of the claims, as argued in Ground 1. The addition of Shekar was to explicitly teach the “hyperconverged infrastructure system” limitation recited in the independent claims and the virtual machine (VM) limitations of dependent claims (e.g., claims 2-4 and 9). Shekar disclosed a hyperconverged infrastructure (HCI) where applications, such as databases, run on VMs. Petitioner argued that Shekar taught provisioning the source database on a VM within an HCI. The combination of Sivasubramanian, Zha, and Shekar therefore allegedly rendered all challenged claims obvious, including dependent claims that recite creating a “source database virtual machine” and configuring it with software, compute, or network “profiles.”
  • Motivation to Combine: A POSA would be motivated to implement the database provisioning system of Sivasubramanian+Zha on the HCI taught by Shekar. Sivasubramanian was environment-agnostic, and HCI was a well-known, high-performance alternative to cloud-based systems for deploying databases. The motivation was to achieve the known benefits of HCI, such as high performance, resource sharing, and ease of management, for the provisioned databases.
  • Expectation of Success: A POSA would expect success in this combination because running databases on VMs in HCI environments was a common and well-understood practice. The components described in Shekar’s HCI were functionally equivalent to those used to run databases in Sivasubramanian’s data plane, ensuring predictable integration.

4. Arguments Regarding Discretionary Denial

• §314(a) (Fintiv Factors): Petitioner argued against discretionary denial under Fintiv because the parallel district court litigation was in its earliest stages. Key factors weighing against denial included the lack of a trial date, minimal litigation investment by the parties, and the fact that Petitioner filed the IPR petition before infringement contentions were served, ensuring no significant overlap in party efforts.
• §325(d) (Same or Substantially Same Art): Petitioner contended that denial under §325(d) was improper because the examiner did not "meaningfully address" the asserted prior art during prosecution. Although Zha and a related Sivasubramanian reference were listed on an Information Disclosure Statement (IDS), the examiner provided no analysis of their teachings and, critically, never considered the specific obviousness combinations presented in the petition.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-23 of the ’336 patent as unpatentable.