Databricks Inc v. Byteweavr LLC

1. Case Identification

• Case #: IPR2025-00716
• Patent #: 8,275,827
• Filed: March 13, 2025
• Petitioner(s): Databricks, Inc.
• Patent Owner(s): Byteweavr, LLC
• Challenged Claims: 2, 10-12, 14, and 22-24

2. Patent Overview

• Title: Software-Based Network-Attached Storage
• Brief Description: The ’827 patent discloses a system for providing software-based network-attached storage (NAS) services by utilizing unused or under-utilized storage resources from a network of distributed devices, such as ordinary desktop computers.

3. Grounds for Unpatentability

Ground 1: Obviousness over Carter - Claims 2, 10-12, 14, and 22-24 are obvious over Carter.

• Prior Art Relied Upon: Carter (International Publication No. WO 98/22881).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Carter, which discloses a distributed storage system allowing network-connected computers to share unused storage resources, teaches all limitations of the challenged claims. Carter's "shared memory subsystem" running on each node was identified as the claimed "software-based NAS component" within a "client agent." This component assesses unused resources via a "policy element" that determines the availability of resources like hard-disk space. The system represents these pooled resources as a NAS device by providing a unified, addressable shared memory space to other network nodes. For dependent claims 2 and 14, Petitioner asserted that Carter’s individual nodes, which mimic dedicated NAS devices by making their storage available, meet the "stand-alone dedicated NAS device" limitation, an interpretation previously found by the Board in prior IPRs involving the ’827 patent. Dependent claims 10-12 and 22-24, relating to storage priority control, were argued to be taught by Carter's disclosure of a "policy controller" and "hierarchy manager" that manage data migration and load balancing based on parameters like recent usage.
  • Motivation to Combine (for §103 grounds): Not applicable (single reference ground).
  • Expectation of Success (for §103 grounds): Not applicable (single reference ground).
  • Key Aspects: This ground heavily relies on the Board's findings in prior IPRs (IPR2017-00374 and IPR2017-00439), which invalidated parent claims 1 and 13 over Carter. Petitioner argued that collateral estoppel applies to claims 2 and 14, as their added limitation was substantively addressed and found to be disclosed by Carter under the Patent Owner's own proposed construction in those prior proceedings.

Ground 2: Obviousness over OceanStore - Claims 2 and 14 are obvious over OceanStore.

• Prior Art Relied Upon: OceanStore (Kubiatowicz, John et al., “OceanStore: An Architecture for Global-Scale Persistent Storage,” Nov. 2000).
• Core Argument for this Ground:
  • Prior art Mapping: Petitioner contended that OceanStore, an architecture for global-scale persistent storage using unused computer resources, renders claims 2 and 14 obvious. The software running on OceanStore's "pool" devices (e.g., desktop workstations) was asserted to be the claimed "client agent" with a "software-based NAS component" that assesses and makes excess storage available to the network. Each "pool" device acts as a NAS device, and since the system is an aggregation of such pools, clients can see more than a single NAS device. This arrangement, Petitioner argued, meets the "stand-alone dedicated NAS device" limitation of claims 2 and 14, where each pool device separately appears to network users as a dedicated NAS device. This position aligns with the Board's findings in a prior IPR that invalidated parent claims 1 and 13 over OceanStore.
  • Motivation to Combine (for §103 grounds): Not applicable (single reference ground).
  • Expectation of Success (for §103 grounds): Not applicable (single reference ground).

Ground 3: Obviousness over Carter in view of Gibson - Claims 2 and 14 are obvious over Carter in view of Gibson.

• Prior Art Relied Upon: Carter (WO 98/22881) and Gibson (Garth A. Gibson et al., “File Server Scaling with Network-Attached Secure Disks,” 1998).
• Core Argument for this Ground:
  • Prior art Mapping: Petitioner presented this as an alternative ground for claims 2 and 14. Carter was argued to teach the base distributed system that pools unused storage, as detailed in Ground 1. Gibson was introduced for its explicit teaching of Network-Attached Secure Disks (NASDs), which are described as stand-alone, dedicated NAS devices that can be accessed directly by a client after authenticating with a file manager. The combination of Carter’s distributed storage environment with Gibson's stand-alone NASDs was argued to directly teach the limitations of claims 2 and 14.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Carter and Gibson because both address improving the efficiency, scalability, and data-sharing capacity of distributed networks. A POSITA would have been motivated to incorporate Gibson’s efficient, stand-alone NASDs into Carter’s network to predictably expand its scalability and provide more efficient access to a greater volume of storage, operating in parallel with Carter's aggregated shared memory space.
  • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success because integrating known NAS devices (Gibson) into a known distributed network (Carter) was a predictable combination of known elements to achieve the known benefit of improved network performance.

4. Key Claim Construction Positions

• Petitioner argued for applying claim interpretations from the Final Written Decisions (FWDs) of two prior IPRs concerning the ’827 patent.
• "stand-alone dedicated NAS device" (Claims 2 & 14): Crucially, Petitioner adopted the Patent Owner’s own proposed construction from the prior IPRs for this term: "a distributed device that separately appears to network-connected devices as a dedicated NAS device." Petitioner noted that the Board in the prior IPRs found that both Carter and OceanStore disclosed this feature even under this narrowing construction.

5. Arguments Regarding Discretionary Denial

• Fintiv Analysis: Petitioner argued against discretionary denial under Fintiv, stating that the co-pending district court case is in its early stages, a motion to transfer venue is pending (which often leads to a stay), and the merits of the petition are exceptionally strong, as evidenced by prior IPRs invalidating related claims using the same art. Petitioner also stipulated that, if the IPR is instituted, it will not pursue in district court any invalidity ground raised in the IPR.
• General Plastics Analysis: Petitioner asserted that denial under General Plastics is inappropriate because this is not a "follow-on" petition. The current Petitioner (Databricks) is unrelated to the petitioners in the prior IPRs (EMC, Lenovo, NetApp), and the Patent Owner is also different.
• §325(d) Analysis: Petitioner argued against denial under §325(d), noting that the prior art references were not considered by the examiner during original prosecution. Furthermore, while the art was used in prior IPRs, the specific claims challenged in this petition (2, 10-12, 14, and 22-24) were not challenged in those proceedings.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 2, 10-12, 14, and 22-24 of the ’827 patent as unpatentable.