IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

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1 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE In re Inter Partes Review of: ) U.S. Patent No. 8,468,174 ) Issued: June 18, 2013 ) Application No.: 13/301,448 ) Filing Date: Nov. 21, 2011 ) For: Interfacing with a virtual database system FILED VIA PRPS PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,468,174 For ease of reference, Petitioner refers to this Petition as 174 Petition II, challenging claims 27 and 29.

2 Table of Contents I. INTRODUCTION... 1 II. REQUIREMENTS FOR PETITION FOR INTER PARTES REVIEW... 1 A. Grounds for Standing (37 C.F.R (a))... 1 B. Notice of Lead and Backup Counsel and Service Information... 1 C. Notice of Real-Parties-in-Interest (37 C.F.R. 42.8(b)(1))... 2 D. Notice of Related Matters (37 C.F.R. 42.8(b)(2))... 2 E. Fee for Inter Partes Review... 3 F. Proof of Service... 3 III. IDENTIFICATION OF CLAIMS BEING CHALLENGED ( (B))... 3 IV. DESCRIPTION OF THE PURPORTED INVENTION... 4 V. CLAIM CONSTRUCTION... 6 A. Applicable Law... 6 B. Construction of Claim Terms... 6 VI. PERSON HAVING ORDINARY SKILL IN THE ART... 9 VII. THE NETAPP PRIOR ART... 9 VIII. MOTIVATIONS TO COMBINE THE PRIOR ART REFERENCES IX. PROSECUTION HISTORY X. PRECISE REASONS FOR THE RELIEF REQUESTED A. B. Ground 1: 27 is rendered obvious over Edwards in view of Edwards II, Neto, and Klivansky Ground 2: Claim 29 is rendered obvious over Edwards in view of Edwards II, Neto, Klivansky, and Hart XI. CONCLUSION i

3 Exhibit List 1101 U.S. Patent No. 8,468,174 ( the 174 patent ) 1102 File History for the 174 patent 1103 Edwards et al., FlexVol: Flexible, Efficient File Volume Virtualization in WAFL June 22-27, 2008, Proceedings of the Annual Technical USENIX Conference ( Edwards ) 1104 Neto et al., Technical Report, SnapManager 3.0 for Oracle Best Practices, TR-3761 April 2009 ( Neto ) 1105 Edwards et al., U.S. Patent No. 7,409,511 ( Edwards II ) 1106 Klivansky et al., Technical White Paper, A Thorough Introduction to FlexClone Volumes October 2004 ( Klivansky ) 1107 Hart et al., U.S. Patent Application Publication No. 2008/ ( Hart ) 1108 Ex Parte Mettke, No , 2008 WL (BPAI Sept. 30, 2008) 1109 NetApp Employment Histories 1110 Datasheet FlexClone 1111 Datasheet FlexVol and FlexClone Software 1112 Datasheet Netapp SnapManager for Oracle 1113 Datasheet NetApp SnapMirror 1114 Datasheet NetApp Snapshot Technology 1115 Delphix s Claim Construction Proposals 1116 Delphix s 174 patent Infringement Contentions 1117 Curriculum Vitae of Dr. Erez Zadok 1118 Declaration of Dr. Erez Zadok in support of inter partes review 1119 Hitz et al., U.S. Patent No. 5,819,292 ( Hitz ) ii

4 I. INTRODUCTION On behalf of Actifio, Inc. ( Petitioner ) and in accordance with 35 U.S.C. 311 and 37 C.F.R , inter partes review of claims 27 and 29 of United States Patent No. 8,468,174, titled Interfacing with a virtual database system is hereby requested. According to USPTO records, the 174 patent is currently assigned to Delphix Corp. ( Delphix ). A copy of the 174 patent is provided as Ex. 1101, and its prosecution history as Ex II. REQUIREMENTS FOR PETITION FOR INTER PARTES REVIEW A. Grounds for Standing (37 C.F.R (a)) Petitioner certifies that the 174 patent is available for inter partes review and that Petitioner is not barred or estopped from requesting inter partes review of the challenged claims of the 174 patent on the grounds identified herein. B. Notice of Lead and Backup Counsel and Service Information Pursuant to 37 C.F.R. 42.8(b)(3), 42.8(b)(4), and 42.10(a), Petitioner provides the following designation of Lead and Back-Up counsel. LEAD COUNSEL Robert Steinberg (Reg. No ) (bob.steinberg@lw.com) Postal & Hand-Delivery Address: Latham & Watkins LLP 355 South Grand Avenue Los Angeles, CA BACKUP COUNSEL Jonathan Link (Reg. No ) (jonathan.link@lw.com) Postal & Hand-Delivery Address: Latham & Watkins LLP 555 Eleventh St., N.W., Suite 1000 Washington, DC

5 T: , F: T: , F: Pursuant to 37 C.F.R (b), a Power of Attorney is attached hereto. C. Notice of Real-Parties-in-Interest (37 C.F.R. 42.8(b)(1)) The real-parties-in-interest is Actifio, Inc. No other party exercised or could have exercised control over this petition; no other party funded or directed this petition. (See Office Patent Trial Practice Guide, 77 Fed. Reg ) D. Notice of Related Matters (37 C.F.R. 42.8(b)(2)) Delphix Corp. v. Actifio, Inc., 5:13-cv BLF (N.D. Cal.). Petition for Inter Partes Review of U.S. Patent No. 8,150,808 (Case No ). Petition for Inter Partes Review of U.S. Patent No. 8,150,808 (Case No ). Petition for Inter Partes Review of U.S. Patent No. 8,150,808 (Case No ). Petition for Inter Partes Review of U.S. Patent No. 8,150,808 (Case No ). Petition for Inter Partes Review of U.S. Patent No. 8,161,077 (Case No ). Petition for Inter Partes Review of U.S. Patent No. 8,161,077 (Case No ). Petition for Inter Partes Review of U.S. Patent No. 8,548,944 (Case No ). Petition for Inter Partes Review of U.S. Patent No. 8,548,944 (Case No ). Petition for Inter Partes Review of U.S. Patent No. 8,566,361 (Case No ). Petition for Inter Partes Review of U.S. Patent No. 8,566,361 (Case No ). Petition for Inter Partes Review of U.S. Patent No. 8,468,174 (to be filed concurrently). According to 2

6 USPTO records, the following application claims the benefit of the priority of the filing date of the 174 patent: 13/894,259. E. Fee for Inter Partes Review The Director is authorized to charge the fee specified by 37 CFR 42.15(a) to Deposit Account No F. Proof of Service Proof of service of this petition on the patent owner at the correspondence address of record for the 174 patent is attached hereto. III. IDENTIFICATION OF CLAIMS BEING CHALLENGED ( (B)) Claims 27 and 29 of the 174 patent (the challenged claims ) are unpatentable in view of the following prior art: (1) Edwards et al., FlexVol: Flexible, Efficient File Volume Virtualization in WAFL June 22-27, 2008, Proceedings of the Annual Technical USENIX Conference. ( Edwards, attached as Ex. 1103); (2) Neto et al., Technical Report, SnapManager 3.0 for Oracle Best Practices, TR-3761 April 2009 ( Neto, attached as Ex. 1104); (3) Edwards et al., U.S. Patent No. 7,409,511, filed on April 30, 2004, and issued on August 5, 2008 ( Edwards II, attached as Ex. 1105); (4) Klivansky et al., Technical White Paper, A Thorough Introduction to FlexClone Volumes October 2004 ( Klivansky, attached as Ex. 1106); and (5) Hart et al., U.S. Patent Application Publication No. 2008/ , filed on June 8, 2007, and published on Dec. 11, 2008 ( Hart, 3

7 attached as Ex. 1107). Specifically, the challenged claims are invalid under 35 U.S.C. 103 on the following grounds: Ground 1: Claim 27 is rendered obvious by Edwards in view of Edwards II, Neto, and Klivansky. Ground 2: Claim 29 is rendered obvious by Edwards in view of Edwards II, Neto, Klivansky and Hart. IV. DESCRIPTION OF THE PURPORTED INVENTION In many organizations, day-to-day transactions are run on production databases. Multiple copies of production databases are often required for various purposes, including for development, testing, backup and recovery. 174 patent at 1: Traditionally, creating a database copy approximately doubles the storage space used. Id. at 1:44-48; Zadok Decl. at This means additional hardware and associated costs. Id. at 1: The 174 patent purportedly solved this issue by creating virtual databases, which are space-efficient database copies. Id. at 2:67-3:2. The virtual databases disclosed by the 174 patent are virtual because data that is common across different copies is not unnecessarily duplicated for each copy. Id. at 3: Instead, where data is common because it has not changed over time, the virtual databases each point to the same underlying data stored in 1 Zadok Decl. refers to the declaration of Dr. Erez Zadok, attached as Ex

8 storage system 100. See id. at 3:60-61 ( A database block may be shared between different files, each file associated with a different VDB. ); id. at 7:64-66( the storage allocation manager 265 allocates only sufficient storage to keep a pointer of reference to the [existing] block of data. ). The virtual databases are thus spaceefficient copies of the production database. Id. at 2:67-3:2, 4: Zadok Decl. at Figure 9 below shows two virtual databases being created from two different points in time copies of the source database. 174 patent at 14:1-12. Specifically, one virtual database 950(a) is created based on the point in time copy of the source database at T2 and another virtual database 950(b) is created based on the point in time copy of the source database at T1. Zadok Decl. at 27. Figure 9 shows that the creation of virtual database 950(a) a copy of the source 2 All emphases added unless otherwise noted. 5

9 database at time T2 did not require any additional storage space because it simply inherits pointers to the data blocks of the point-in-time copy at T2, rather than making physical copies of the blocks. See id. at 14:1-12; id. at 18:27-43, 18:63-19:9. Zadok Decl. at Moreover, the invention of the 174 patent is also directed to the user interactions with methods for creating and mounting virtual databases. Id. at 3:41-57, 10: Zadok Decl. at 32. For example, a user interface may present a time line to the user indicating a range of point-in-time values to select from, allowing the user to select a point-in-time value, thus identifying a point in time copy of a source database from which a virtual database is to be created. 174 patent at 10: Further, another point in time may be selected, thus identifying a different point in time copy of a source database from which a second virtual database can be created. Id. at 3:54-57, 10: Zadok Decl. at 32. V. CLAIM CONSTRUCTION A. Applicable Law In deciding whether to institute inter partes review, [a] claim in an unexpired patent shall be given its broadest reasonable construction in light of the specification of the patent in which it appears. 37 C.F.R (b). B. Construction of Claim Terms The following terms, which are used in all challenged claims, may need to 6

10 be construed: 1. virtual database The 174 patent specification explains that a virtual database is virtual in the sense that the physical implementation of the database files is decoupled from the logical use of the database files by a database server. 174 patent at 3: The 174 patent discloses a method for creating a virtual database that involves creating database files by creating a file structure that includes pointers to the database blocks of a point-in-time copy of a source database. For example, Claim 1 specifically calls for creating a first set of files for the first virtual database, each file in the first set of files linked with a first set of database blocks comprising information stored in the source database prior to the first point in time 174 patent, cl. 1. Those files are linked to the database blocks by using pointers. Id. For instance, [a]s shown in FIG. 9, the block V13 and V14 of the file structure 950(a) point at the latest copy of the blocks F33 and F34. Id. at 14:4-6. Moreover, the files that are created are database files, as Claim 1 expressly requires a database server to read from and write to the files. Id. at cl. 1 ( allowing the first destination database server to read from and write to the first set of files ). Moreover, it is clear that the set of files in a virtual database must be capable of being read from and written to. Id. ( allowing the first destination database 7

11 server to read from and write to the first set of files ). Thus, the broadest reasonable construction of the term virtual database means a set of database files capable of being read from and written to, created by pointing to alreadystored database blocks. 3 Zadok Decl. at database blocks The specification states that data retrieved by the point-in-time copy manager 210 corresponds to database blocks (or pages) of the database being copied from the production DB data store patent at 7: Thus, the broadest reasonable construction of the term database blocks means a unit of data used by a database. 4 See Zadok Decl. at Delphix construes virtual database as A set of files to which a database server can read and such that the physical implementation of the database files is decoupled from the logical use of the database files by the database server. Ex at 3. This is unhelpful and does not inform the Board how virtual databases are created according to the 174 patent. Regardless, Edwards meets Delphix s construction. See VII.2. 4 Delphix s construction of a database block is nearly identical: A unit of data used by a database and comprises a specific number of bytes stored in the storage. Ex at 3. 8

12 3. mount[ing] The specification discusses the mounting of files as follows: The file structure for the VDB is mounted on the destination database system 130, thereby allowing the destination database system to access the VDB.. Id. at 11:3-5. Thus, mounting means making accessible [to a database server]. Zadok Decl. at VI. PERSON HAVING ORDINARY SKILL IN THE ART In November 2010, a relevant person of ordinary skill in the art would have had a Bachelor-level degree in computer science, computer engineering, electrical engineering, or a related field in computing technology, and a few years of experience with data storage systems, or equivalent research experience or knowledge. See Zadok Decl. at 19. This is approximate, and a higher level of education or skill might make up for less experience, and vice-versa. Id. VII. THE NETAPP PRIOR ART For the Board s ease of reviewing the prior art references, the declarant, Dr. Zadok, has provided a glossary mapping terms in the 174 patent to corresponding terms used by the prior art references discussed herein. Zadok Decl. at Overview Of The NetApp Prior Art The purported invention of the 174 patent relates to creating a virtual database system including the creation of multiple virtual databases. See 174 patent at 3:53-57, 14:1-19. However, well before the earliest priority date of the 9

13 174 patent, a company called NetApp Inc. had already developed and commercialized products that were all very well publicly documented, using wellknown methods of virtualization to create virtual databases. For example, Edwards from NetApp, Inc. was published in June 2008 and explains that virtualization was well-known and had been used in NetApp s Data ONTAP operating system for years to create virtual databases. Edwards at 129 (virtualization was a well-known method of abstracting physical resources and of separating the manipulation and use of logical resources from their underlying implementation. ). In NetApp s system, volumes (called FlexVol volumes) and point-in-time copies of those volumes (called snapshots) use links or pointers and add a level of indirection between client-visible volumes and the underlying physical storage. Edwards at 129; see id. at 131 (A FlexVol volume is a file system created within a file on an underlying file system. ) (italics in original). This introduces a level of indirection, or virtualization between the logical storage space used by a volume and the physical storage space provided by the RAID subsystem. Id; Zadok Decl. at 35. NetApp invented the technology for creating virtual databases at least by The technology was called FlexClone and was first released publicly in NetApp s Data ONTAP operating system, in Edwards at 130. NetApp used the term clone database to refer to what the 174 patent calls a virtual database. 10

14 Zadok Decl. at 36, 40, 101. Creating a cloned or virtual database using FlexClone is nearly instantaneous, and resulted in a database whose file system is a logical replica of a snapshot copy of a source volume containing the database. Id. at ; Zadok Decl. at 37. This database clone was created by creating file structures that inherits pointers to the complete file system image stored in the original snapshot copy. Id. at 135; Zadok Decl. at 37. Snapshots are point in time read only copies that could be used to recover files from a previous point in time. But [i]n database environments, for example, it is often desirable to make writable copies of a production database for development or test purposes. Edwards at 134; Zadok Decl. at 38. FlexClone used pointers to create a writable clone volume based on an existing read-only point-in-time copy (snapshot) of a parent FlexVol volume. Edwards at 129; Zadok Decl. at 39. A FlexVol volume is a file system created within a file on an underlying file system. Edwards at 131 (italics in original); Zadok Decl. at 39. There is a level of indirection, or virtualization between the logical storage space used by a volume and the physical storage space. Edwards at 131; Zadok Decl. at 39. By cloning a snapshot of a parent (or source) FlexVol volume that contained a database, a storage efficient database clone is created. Zadok Decl. at 40. The clone, the snapshot on which is based, and the source FlexVol volume share 11

15 substantially the same data blocks. See also U.S. patent no. 7,409,511 ( Edwards II ) at 6:66-7:1 ( In fact, the file system within the clone resembles the file system within the base snapshot, since they comprise substantially the same blocks on disk. ); Zadok Decl. at 40. NetApp s product literature explains that FlexClone technology creates writable clones of the Snapshot copy created during backup. Database clones are created quickly and clones only consume enough storage to hold modified blocks. Neto at 42. The process for creating a virtual database using NetApp s features to create a virtual database (database clone), and then mount that virtual database on a database server, was well known by Edwards at 130, , 139; Zadok Decl. at 42; VII.5. Further, it was well known that one could use NetApp to select multiple, existing snapshots of a source database to create multiple virtual databases. Edwards II at 19:41-57; Zadok Decl. at Edwards (Ex. 1103) Edwards was published in June 22-27, 2008 by the USENIX Association in the proceedings of the 2008 USENIX Annual Technical Conference at is prior art under 102(b) and was not before the USPTO during prosecution of the 174 patent. Edwards describes the NetApp technology used to create clone (virtual) databases. Specifically, Edwards describes three NetApp features: FlexVol (used as source volumes to store a source database); snapshots (point-in- 12

16 time copies of a source database); and FlexClone (used to create a virtual database from a read-only volume at a destination storage system). It also describes in detail why FlexClone volumes are virtual. Zadok Decl. at 48. Edwards describes NetApp s file system (called WAFL) and its buffer tree structure. A file system is the code and data structures that implement a persistent hierarchy of files and directories. Edwards at 130; Zadok Decl. at 49. A volume, such as a FlexVol volume, is an instantiation of the file system. Edwards at 130; Zadok Decl. at 49. NetApp FlexVol volumes uses basic Unix file system data structures. And the volume data structures are shown in Edwards s Figure 1: Each file in a volume comprises data blocks and inodes, which contains pointers to data blocks of the file. Id. at 130. The inodes and the data blocks of a file system form a tree, whose root block is called the vol_info block. Id; Zadok Decl. at Snapshots or point-in-time copies are easy to create in NetApp. By 13

17 creating new file structures a copy of the root, vol_info block, which contains pointers to existing data blocks it is possible to create a snapshot copy of the file system at the same time. Id. at 55. These snapshots are virtual because they are created by file structures pointing to existing data blocks rather than making physical copies of the data blocks. Id. Edwards further discloses how NetApp achieves its virtualization in a FlexVol volume. Edwards explains that in a traditional volume, a physical volume block number (PVBN) specifies a data block s location within a physical disk. Edwards at 131. With a FlexVol volume, on the other hand, because the volume is not tied to any disk but instead resides within a container file, a data block s location within the container file is specified, i.e., pointed to, by a virtual volume block number (VVBN). See Edwards at 131; Zadok Decl. at 56. The FlexVol container file includes a container map that provides VVBNto-PVBN mappings i.e., that implement[s] a level of indirection between physical storage containers (called aggregates) and logical volumes (FlexVol volumes). Edwards at 130, 132; Zadok Decl. at 58. The 174 patent calls for exactly the same thing the files for the virtual database point at the latest copy of the blocks ( 174 patent at 14:4-6) so that the physical implementation of the database files is decoupled from the logical use of the database files (id. at 3:19-22); Zadok Decl. at

18 Edwards further explains that [c]reating a clone volume is a simple process. Id. at 135. A container file for the new clone volume (or FlexClone volume) is created and seeded with a vol_info block that is a copy of the vol_info block of the Snapshot copy on which the clone is based. Id. Since the vol_info block is the root of the tree of blocks that form the Snapshot copy, the clone inherits pointers to the complete file system image stored in the original Snapshot copy. Id. at 135. Zadok Decl. at 60. This process is shown below with respect to Edwards s Figure 1, annotated: By creating a new vol_info block that points to the tree of blocks of the snapshot (point-in-time) copy, Edwards discloses creating a new file system comprising a set of files linked to the data blocks associated with the base snapshot, as shown above. Zadok Decl. at 61. The new vol_info block, like all other vol_info blocks in NetApp, contains the inode describing the inode file, 15

19 which in turn contains the inodes for all of the other files in the file system, including the other metadata files. Id. at 130; Zadok Decl. at 61. The created files in a FlexClone volume are capable of being read from and written to. See id. at 129 (FlexClone volumes are writable snapshot copies ); Zadok Decl. at 62. And like all FlexVol volumes, FlexClone volumes are virtual in that they separate the management of physical storage devices from the management of logical data sets. Id. at 141; Zadok Decl. at 62. As such, a database that resides in a FlexClone volume is a virtual database, since it comprises a set of database files capable of being read from and written to, created by pointing to already-stored database blocks associated with a point-in-time copy. Zadok Decl. at 63. Edwards further discloses that multiple clones of a volume may be created: Volume clones also present a natural case for thin provisioning, since users will often want many clones of a given volume. Edwards at 135; Zadok Decl. at Neto (Ex. 1104) Neto was published in April 2009 by NetApp, Inc., is prior art under 102(b) and was not before the USPTO during prosecution of the 174 patent. Neto was authored by Anand Ranganathan and Antonio Jose Rodrigues Neto who were at the time of Neto s publication employees of NetApp, Inc. Zadok Decl. at 65. Neto is a guide for best practices with a NetApp product called 16

20 SnapManager for Oracle, which provided a GUI for performing various NetApp tasks on Oracle databases, such as creating snapshots and using NetApp s FlexClone technology to create clones of databases, as described in Edwards. See, e.g., Neto at 1 ( Backup, recovery, and cloning are all complicated tasks NetApp SnapManager for Oracle simplifies and automates these complex operations by leveraging NetApp Snapshot and FlexClone technologies. ). Zadok Decl. at 66. Like Edwards, Neto discloses that databases may be backed-up by taking NetApp snapshots of the volumes that contain them: SnapManager for Oracle leverages NetApp Snapshot technology to create fast and space-efficient backups of Oracle databases. These backups are point-in-time virtual copies of the database and are stored on the same physical medium of the database. Neto at 27. Accordingly, a SnapManager backup refers to a point-in-time copy or snapshot of a source database. Zadok Decl. at 67. Neto discloses storing multiple backups of a source database. Neto at 24 (for every SnapManager profile of a database you can specify a backup retention policy that determines how many successful backups on local storage created under that profile should be retained. ); Zadok Decl. at 68. A SnapManager profile referred to in the quote above refers to a database being managed by SnapManager. Neto at 5 ( A profile needs to be created for every database that 17

21 needs to be managed by SnapManager. ); Zadok Decl. at 68. Accordingly, Neto discloses storing a plurality of point-in-time copies (i.e., backups or snapshots) of a source database. Id. Like Edwards, Neto discloses using NetApp s FlexClone technology to create clone databases based on point-in-time copies of a source database. Neto at 42 ( Using NetApp FlexClone technology, SnapManager creates writable clones of the Snapshot copy created during backup. ); Zadok Decl. at 69. Neto teaches that it is desirable to create multiple clones of a source database for test and development purposes. Neto at 42 ( each developer or QA engineer can be provided with his or her own personal copy of the database. Developers and QA engineers can make modifications to these personal copies. ); Zadok Decl. at 69. The NetApp SnapManager GUI allows a user to create a virtual (clone) database based on an existing backup (existing snapshot) of a source (e.g. production) database. Neto at 43; Zadok Decl. at 70. Alternatively, a user may create a new backup (snapshot) and a virtual (clone) database in a single step. Neto at 43; Zadok Decl. at 70. Neto also discloses creating clone databases from two different backups (point-in-time copies). Zadok Decl. at 71. For example, Neto discloses that once a clone is created from a first backup, [b]usiness requirements determine how long a clone database should be retained or cloned again from a new backup. 18

22 Neto at 47. As such, Neto discloses that a clone can be created from a first pointin-time copy (a first backup), and then a second clone can be created from a later, second point-in-time copy (a new backup). Zadok Decl. at 71. The figure shown on Neto s page 42 (reproduced in part and annotated below) is an example of an administrator utilizing NetApp s SnapManager GUI to create two virtual (clone) databases based on two pre-existing backups (snapshots). Zadok Decl. at 72. The GUI displays a list of two snapshots of production database SALES_PROD. Id. This SALES_PROD database is a source database (a database from which a clone can be created). Id. The snapshots are labeled full_online_bkup_030109_1815 (the March Backup ) and full_online_bkup_022709_0645 (the February Backup ). Id. The figure shows 19

23 that the administrator has already created a first virtual (clone) database called SALES_DEV using the February Backup of SALES_PROD. Id. As the name SALES_DEV indicates, this clone is to be used for development purposes, which is desirable. See Neto at 42; Zadok Decl. at 72. Another figure (in Neto s page 46) shows that SALES_DEV refers to a clone used for development purposes. Neto at 46; id. at 45 ( 3. A clone was created for development using the pre-upgrade production database backup. 4. A SnapManager profile [called SALES_DEV as seen in screen shot above] was created for the development database (clone of production). ). See Zadok Decl. at 72. The figure on Neto page 42 also shows that the administrator is in the process of creating a second virtual (clone) database based on a different backup, the March Backup of SALES_PROD. See also id. at 42 ( To clone a database from an existing backup using the SnapManager GUI, right-click on the backup and then select Clone ); Zadok Decl. at 72. Accordingly, Neto discloses that multiple virtual (clone) databases can be created based on different backups (snapshots) from different points in times of one source database. Zadok Decl. at 72. After a virtual (clone) database has been created, NetApp SnapManager may be used to mount that database on a destination database server. Id. at 13 ( BEST PRACTICES AND REQUIREMENTS FOR USING DATABASES ON NFS 20

24 WITH SNAPMANAGER NetApp recommends mounting the file systems following the best practice recommendations ); id. at 50 ( Mount the restored location on the database host. ); Zadok Decl. at Edwards II (Ex. 1105) Edwards II, assigned to NetApp, Inc. was filed on Apr. 30, 2004 and issued on Aug. 5, Both inventors (John Edwards and Robert Fair), were employees of NetApp, and they are also co-authors of the Edwards publication. See Ex (Linkedin profiles of John Edwards and Robert Fair). Zadok Decl. at 74. Edwards II is prior art to the 174 patent under 35 U.S.C. 102(b) and was not before the USPTO during prosecution of the 174 patent. Like Edwards, Edwards II discloses that NetApp s FlexClone technology could be used to create virtual databases by using snapshots of FlexVol volumes that contain a source database to create a clone database. Edwards II at 6: ; Zadok Decl. at 75. The virtual database may be created by using an existing snapshot that had already been created and associated with a previous point in time. See, e.g. Edwards II at 6:46-52; Zadok Decl. at 76. Edwards II discloses that multiple, prior snapshots of a source database can 5 Edwards II refers to the parent FlexVol volume as a parent virtual volume (vvol). Edwards II at 6:46-52; Zadok Decl. at

25 share database blocks. Id. at 4:36-41 ( common parts of the storage element in multiple snapshots share the same file system blocks. Only the differences among these various snapshots require extra storage blocks. ); see also Zadok Decl. at 77. Moreover, each snapshot is a point-in-time representation of a storage element, such as an active file system, file or database. Id. at 3: Edwards II refers to U.S. Patent No. 5,819,292 ( Hitz, attached as Ex. 1119) which is incorporated by reference as though full set forth herein for further details about NetApp s snapshots. Edwards II at 4: Hitz is assigned to NetApp, Inc. and issued on Oct. 6, Hitz discloses that multiple snapshots, taken at various different times, of a volume are stored on the storage system. See, e.g., Hitz at 20:31-38 ( Referring to FIG. 22, two previous snapshots 2110A and 2110B exist on disk. ); Zadok Decl. at 80. Hitz also discloses that multiple snapshots of a source database share some of the same data blocks i.e., that at least some of the database blocks are associated with multiple point-in-time copies. Zadok Decl. at 81. For example, Hitz discloses that a block 1207 is associated with three different snapshots (snapshots 1, 2 & 3) in in its Figure 22. See Hitz at Fig. 22; id. at 20:43-51 ( As shown in FIG. 22, block 1207 is referenced by inode 2210G of the active inode file, and indirectly by snapshots 1, 2, and 3 ). Zadok Decl. at Klivansky (Ex. 1106) 22

26 Klivansky is a NetApp technical white paper published in October 2004 (TR-3347). Klivansky at 1. Klivansky was published by NetApp in October 2004, is prior art under 102(b) and was not before the USPTO during prosecution of the 174 patent. Zadok Decl. at 82. Klivansky explains that the goal of this report is to help understand the full value FlexClone volumes and Data ONTAP 7G can bring to their operations. Klivansky at 3. Klivansky provides detailed hypothetical scenarios of how FlexClone technology can be used to create multiple clones of databases and mount these clones to database servers. Zadok Decl. at 83. Klivansky teaches that a clone can be based on a snapshot (point-in-time copy) that already exist[s], or it can get created automatically as part of the cloning operation. Id. at 5. Klivansky discloses that [m]ultiple FlexClone volumes of a single milestone/production data set can be used by parallel processing of applications across multiple servers to get results more quickly. Id. at 6. Further, these clones can be refreshed as needed to more closely mirror the live data. Id. at 34. Because a FlexClone volume is a writable point-in-time copy of the production data, (id. at 3), refreshing clones to more closely mirror the live data requires creating clones at later points-in-time. Zadok Decl. at 86. As such, Klivansky discloses creating multiple clone volumes based on multiple point-intime copies of a source volume. Zadok Decl. at

27 Klivansky describes an extended example of using FlexClone technology for an example company that stores databases, complex simulations running on multiple compute nodes, and data in flat files for custom applications. Klivansky at 8. Zadok Decl. at 87. In that example, Klivansky describes creating multiple FlexClone volumes of a source volume and mounting each volume to different servers: Alice modifies each clone to be at the desired starting point, mounts each clone on a different set of simulation engines, and lets them work for a while. Her application is not particularly sensitive about permissions and security. If it was, Alice might first mount each FlexClone volume on an administrative host, change file permission or ownership to match the authorized users, and then remount them to the application servers she made the clones for. Id. at As described above, each clone is accessible on a different set of application servers that run simulation engines. Zadok Decl. at 88. Klivansky describes another example where a user clones an Oracle database and mounts the clone volume to a testing server over the iscsi protocol. Zadok Decl. at 89. Specifically, the user maps the cloned LUNS to a testing server via iscsi and performs the upgrade using the cloned copies. Id. at 25. The cloned LUNs referred to above reside in FlexClone volumes and contain the clone databases. See Klivansky at 25 ( Dave destroys the cloned database LUN volume ); id. ( Clone LUNs using FlexClone volumes ); Zadok Decl. at 90. As 24

28 such, mapping the cloned volumes via iscsi to a testing server makes the clone database s files accessible to a testing server. Compare 174 patent at 8:12-14 ( The system for sharing files may be based on small computer system interface (SCSI) protocol, internet small computer system interface (iscsi) protocol ); Zadok Decl. at 90. Further, the testing server is a database server Klivansky teaches that the user does extensive testing on the clone i.e., that the server is reading from and writing to the clone database s files, which can only be performed with a database server. Klivansky at 25; Zadok Decl. at 91. Accordingly, Klivansky discloses mounting making the set of files of a virtual database accessible on a destination database server, allowing the database server to read from and write to the set of files. Zadok Decl. at 91. Moreover, Klivansky also discloses creating a second clone of the same database at a later point in time and mounting that to a database server. Zadok Decl. at Hart (Ex. 1107) Hart published on Dec. 11, 2008 and resulted from Patent Application No. 11/760,708, filed on June 8, U.S. Patent No. 8,010,900 issued from the application and was assigned to Apple Inc. Hart is prior art to the 174 patent under 35 U.S.C. 102(b) and (e), and was not before the examiner during prosecution of the 174 patent. 25

29 While Neto discloses that an administrator using NetApp s SnapManager GUI for Oracle could select from a list of available point in times and snapshots in order to create a virtual (clone) database (see VII.3), that GUI does not present[] a geometric shape, wherein a position in the geometric shape corresponds to a time value as required by claims 4 and 29 of the 174 patent. However, as discussed below, Hart does disclose this. Zadok Decl. at 95. Hart s invention has been commercialized as the well-known Time Machine backup feature in Apple s Mac computers. Zadok Decl. at 96. Hart discloses that users may take multiple snapshots of their computer (e.g., Mac) volumes. Hart at [0050]; Zadok Decl. at 96. A user may then subsequently use the stored snapshots to restore the computer volume to a selected, previous point in time. Hart at [0030] ( the backup component 117 also allows a user to select any of the stored versions and use it to initiate a restoration of backup data corresponding to that version in the computer 102. ); Zadok Decl. at 96. Specifically, Figs. 5-11,14-23 of Hart show a GUI with a geometric shape (i.e., a vertical line, with horizontal tick marks, and labeled with dates) wherein a position in the geometric shape corresponds to a time value. Id. at

30 Hart at Fig. 16. Hart explains that Displaying the backup interface can include displaying a timeline including a vertical column of tick marks. Hart at [0008]. A vertical column represents a geometric shape i.e., a line. Compare 174 patent at Claim 5 ( The method of claim 4, wherein the geometric shape is a line. ); id. at 10:17-21 ( the user interface 295 presents a time line to the user indicating a range of point-in-time values to select from, allowing the user to select a point-in-time value by identifying a position in the time line. ); Zadok Decl. at 97. The flowchart of Hart s Figure 13 (reproduced below) also illustrates that the position of a cursor along the timeline is determined (step 1306), and a tick mark along the timeline may be selected by the user (step 1310), which is mapped to a corresponding point in time (step 1312). Zadok Decl. at

31 Accordingly, the system receives a selection of position in the timeline i.e., a geometric shape consisting of a line (vertical column of tick marks comprising a timeline). Zadok Decl. at 99. Moreover, the system receives a selection of a time point, maps the selection to the point in time selected: The system displays (1312) a history view corresponding to the selected tick mark. Hart at [0079]. Accordingly, Hart must map the selected tick mark on the timeline (i.e., a selected point in time) to the point in time selected; Zadok Decl. at 100. Further, the selected time point is used to restore the contents of the corresponding point-intime snapshot: the restore control 1414 can be used to restore the entire contents of the selected snapshot e.g., restore the current file system state with all the files or items in a currently selected snapshot. Hart at [0082]-[0083]; Zadok Decl. at

32 VIII. MOTIVATIONS TO COMBINE THE PRIOR ART REFERENCES 1. Motivation To Combine References From The Same Company That Describe The Same Product A POSITA would have been motivated to combine any of the NetApp prior art references (Edwards, Edwards II, Neto, and Klivansky). In Ex parte Mettke, the Board ruled in an appeal of a reissue application that there was motivation to combine any of the teachings of four prior art references to invalidate the claim because they are from the same corporation, and expressly teach modifications, variations, and improvements to a pay-for-use public communications terminal. Ex Parte Mettke, No , 2008 WL (BPAI Sept. 30, 2008), (attached as Ex. 1108), aff d, 570 F.3d 1356 (Fed. Cir. 2009). Ex parte Mettke is indistinguishable from this case and thus a POSITA would have been motivated to combine any of the NetApp prior art with each other. 2. Motivation to Combine Edwards, Edwards II, Neto, and Klivansky A POSITA would have been motivated to combine the teachings of Edwards with Edwards II, Neto and Klivansky because they are all NetApp publications that discuss exactly the same NetApp technology, albeit in varying levels of detail. Zadok Decl. at 102. Edwards and Edwards II explain the underlying NetApp technology that enables creating multiple clone databases, e.g. snapshots and FlexClone, in detail. Neto is a step-by-step guide for using NetApp s SnapManager product, which leverages NetApp technologies like Snapshot, and FlexClone 29

33 technology described by Edwards and Edwards II. Neto is intended for use by Oracle database administrators, storage administrators, and architects implementing a backup, recovery, and cloning solution for Oracle databases running on NetApp storage. Neto at 4. Klivansky is a more detailed technical white paper providing extended use case scenarios designed to help storage system administrators understand the full value FlexClone volumes and Data ONTAP 7G can bring to their operations. Klivansky at 3. A POSITA reviewing Edwards would have readily looked to related publications such as Edwards II, Neto and Klivansky to understand how the step-by-step instructions and examples can be used to understand and utilize the full value FlexClone volumes and Data ONTAP can bring to their operations. Id.; Zadok Decl. at 102. For example, Edwards discusses that NetApp s snapshots are space efficient. Edwards at 131. Edwards II provides a more detailed disclosure of how NetApp s snapshots achieve this space efficiency, by sharing data blocks between multiple snapshots. Edwards II at 4: As another example, although Edwards discloses that cloned volumes and databases can be made accessible through thin provisioning, Klivansky provides details on how to actually perform the mounting to make these accessible. See Edwards at 135 ( users will often want many clones of a given volume. ); Zadok Decl. at 103. A POSITA looking to use Edwards s FlexClone technology to create virtual 30

34 databases would have looked to other NetApp publications such as Neto and Klivansky, which provide step-by-step instructions and examples of how to do so. Zadok Decl. at 104. Indeed, Klivansky states that its examples can be used by a POSITA as a way of understanding the full landscape of FlexClone benefits, as a refresher of specific FlexClone operations, or as a guided tutorial that filer administrators can try. Klivansky at 25. Zadok Decl. at 104. Further, the FlexClone technology used to create virtual databases is integrated into NetApp s Data ONTAP operating system. Zadok Decl. at 105. In fact, NetApp s Data ONTAP operating system incorporates all the other related NetApp technologies described in Edwards, Edwards II, Neto, and Klivansky for building virtual databases WAFL, snapshot, FlexVol, and FlexClone. Edwards at 130 ( we describe technology that NetApp introduced in 2004 in release 7.0 of Data ONTAP ); Edwards II at 9:25-27 ( the storage operating system is preferably the NetApp Data ONTAP operating system ); Neto at 1 ( Leveraging NetApp Data ONTAP 7G ); Klivansky at 3(same); Zadok Decl. at 105. A POSITA would have been motivated to look at these references to obtain the underlying technological details related to the Data ONTAP operating system and details about how to use these technologies. Zadok Decl. at 105. (1) Same Problem /Same solution Edwards, Edwards II, Neto, and Klivansky all address the same problem creating 31

35 virtual copies of databases to avoid the costs and complexities involved in making additional physical copies of the data for development, backup, recovery, data warehousing, and other purposes. Zadok Decl. at 107. Edwards, Edwards II, Neto, and Klivansky all address this problem in the same manner. Zadok Decl. at 107. For example, Edwards states that it was desirable to make writable copies of a production database Edwards at 134; see also Edwards at 5:49-49; Neto at 4 (stating that it was desirable to automate[] and simplif[y] cloning); Klivansky at 3; Zadok Decl. at Edwards, Edwards II, Neto and Klivansky because they solve the same problems with the same solution using NetApp s FlexClone feature on snapshots to instantaneously create writable, space-efficient, virtual copies of a production database for development or test purposes. Zadok Decl. at 109. Edwards explains that a clone database is created nearly instantaneous[ly] from a snapshot copy. Edwards at 134; Edwards II at Abstract (same); Neto at 42 (teaching that [u]sing NetApp FlexClone technology, SnapManager creates writable clones of the Snapshot copy created during backup. ); Klivansky at 3 (By using FlexClone volumes, the IT staff gets just that. ). Zadok Decl. at (2) Nothing Incompatible Nothing in these prior references teaches away from their combination. Zadok Decl. at 111. To the contrary, these references and the technologies 32

36 described therein all naturally fit together, as evidenced by actually being combined by NetApp to create virtual databases. Zadok Decl. at 111. The FlexVol, snapshot, and FlexClone technologies described in these references were used to create virtual database systems and were offered together in NetApp s Data ONTAP system and NetApp s SnapManager product years before the 174 patent s effective filing date. These technologies were all compatible since they were integrated and worked together inside the same NetApp operating system. Zadok Decl. at 111. See also Zadok Decl. at Thus, a POSITA had every motivation to combine the teachings of Edwards, with Edwards II, Neto and Klivansky and vice-versa. Zadok Decl. at Motivation to Combine Hart with Edwards, Edwards II, Neto, and Klivansky A POSITA would have also been motivated to combine the teachings of Hart with Edwards, Edwards II, Neto, and Klivansky. Edwards, Edwards II, Neto, and Klivansky all describe NetApp features. Zadok Decl. at 117. And Neto describes a GUI for using those features, including creating and restoring snapshots. Zadok Decl. at 117. Hart provides a GUI that is likewise directed to a method for storing and restoring digital data from snapshots. Hart at Abstract; id. at [0061] ( the restore control 514 can be used to restore the entire contents of the selected snapshot e.g., restore the current file system state. ); Zadok Decl. at 117. Hart s timeline GUI had been commercialized as Apple s Time Machine, which 33

37 allows users to select point-in-time snapshots along a timeline and restore their computer volumes (or individual files) to the selected point in time. Zadok Decl. at 117. It would have been obvious for a POSITA to modify or substitute NetApp s existing SnapManager GUI for managing multiple point-in-time snapshots (as disclosed in Neto) for Hart s timeline GUI, which also managed multiple point-intime snapshots. Zadok Decl. at 117. As discussed in VII.3, NetApp s SnapManager provided a GUI for managing snapshots. For example, Neto discloses steps for using SnapManager s GUI to restore a database to a selected, prior point in time based on a corresponding backup (snapshot). See Neto at Zadok Decl. at 119. Hart similarly discloses an interface showing multiple snapshots from which data can be restored. In Hart s Figure 20, Hart displays snapshot 2002, taken on Jan. 23, Hart at Figure 20. Just like Neto s GUI, Hart s GUI displays a Restore button that allows a user to select a prior point in time and restore the computer volume to that time by using a selected snapshot. Hart at [0083]. Zadok Decl. at 119. Both Neto s GUI and Hart s GUI provided the same functionality in that they both allowed restoring files to their prior state based on a selected point in time snapshot. Zadok Decl. at 120. Further, Neto s examples name the point-intime copies based on the time they were taken and can list them alphabetically; thus, they were typically arranged in a timeline. See Neto at 42; Zadok Decl. at 34

38 120. Given these similarities, it would have been obvious for a POSITA to substitute Neto s GUI with Hart s GUI to perform the snapshot backup, restore, and clone functions described in Neto, Edwards, Edwards II, and Klivansky. Zadok Decl. at 120. Substituting Hart s timeline-based GUI for selecting (typically by clicking a mouse) a point-in-time copy for Neto s right-click based method of selection was nothing more than a simple substitution of one known method of selection with another. A POSITA would have known that such a substitution would have yielded predictable results, i.e., an easy way for the user to select a snapshot using a GUI. Zadok Decl. at 121. Thus, a POSITA had every motivation to combine the teachings of Hart with Neto, Edwards, Edwards II, and Klivansky and vice-versa. Zadok Decl. at 122. IX. PROSECUTION HISTORY During prosecution of the 174 patent, the applicants submitted five highlevel NetApp marketing brochures to the Patent Office in an Information Disclosure Statement. Exs None of those brochures are longer than two pages. See id. The submitted brochures are marketing materials that omit technical details sufficient to enable one skilled in the art to understand how NetApp s technology works. Zadok Decl. at 45. Further, while the brochures disclose individual NetApp features, e.g. snapshot and FlexClone, none explain how these features can be used sequentially and in conjunction with one another to 35

39 create multiple virtual databases based on existing snapshots of a source database. Zadok Decl. at 45. For example, the brochures do not provide detailed descriptions of how virtual databases were created (with the NetApp technologies described in the prior art references discussed below) by creating file structures that point to data blocks of existing point-in-time copies. For probably these reasons, the Examiner did not cite these features against the claims of the 174 patent when it was pending. X. PRECISE REASONS FOR THE RELIEF REQUESTED A. Ground 1: 27 is rendered obvious over Edwards in view of Edwards II, Neto, and Klivansky 1. Claim 1 6 [1a] A method of creating a virtual database system, the method comprising: The preamble of Claim 1 is not limiting at least because it is duplicative of the limitations in the claim s body and does not recite any essential structure or steps. Nor is it necessary to give life, meaning, and vitality to the claim. Regardless, Edwards teaches how to create a NetApp virtual database system by: creating snapshots of a source volume containing a database and using 6 Claims 1 and 4 are being challenged in co-pending 174 Petition I and are only discussed in this Petition for purposes of challenging substantively equivalent claims 27 and 29 respectively. 36

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