Filed on behalf of Symantec Corporation
`
`Case IPR 2013-00150
`U.S. Patent No. 7,093,086
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`VEEAM SOFTWARE CORPORATION
`Petitioner
`
`v.
`
`SYMANTEC CORPORATION
`Patent Owner
`
`Case IPR2013-00150
`U.S. Patent No. 7,093,086
`
`REPLY TO PETITIONER’S OPPOSITION TO PATENT
`OWNER’S MOTION TO AMEND PURSUANT TO 37 C.F.R. § 42.23
`
`
`
`Case IPR 2013-00150
`U.S. Patent No. 7,093,086
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`VEEAM SOFTWARE CORPORATION
`Petitioner
`
`v.
`
`SYMANTEC CORPORATION
`Patent Owner
`
`Case IPR2013-00150
`U.S. Patent No. 7,093,086
`
`REPLY TO PETITIONER’S OPPOSITION TO PATENT
`OWNER’S MOTION TO AMEND PURSUANT TO 37 C.F.R. § 42.23
`
`
`
`Case IPR 2013-00150
`U.S. Patent No. 7,093,086
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`III.
`
`PETITIONER’S PROCEDURAL CHALLENGES LACK MERIT..............1
`
`LIM DOES NOT DISCLOSE A “BACKUP PROGRAM” ...........................3
`
`THE COMBINATION DOES NOT RENDER OBVIOUS CLAIMS
`32-34 ...............................................................................................................3
`
`IV. CONCLUSION................................................................................................5
`
`i
`
`
`
`Case IPR 2013-00150
`U.S. Patent No. 7,093,086
`
`TABLE OF AUTHORITIES
`
`CASES
`
`Bass Pro Trademarks, L.L.C. v. Cabela's, Inc.,
`485 F.3d 1364, 1369 (Fed. Cir. 2007) ..................................................................3
`
`ii
`
`
`
`Symantec
`Exhibit No.
`Symantec 2001
`Symantec 2002
`Symantec 2003
`Symantec 2004
`Symantec 2005
`
`Symantec 2006
`
`Symantec 2007
`Symantec 2008
`
`Symantec 2009
`
`Symantec 2010
`
`Symantec 2011
`
`Symantec 2012
`
`Symantec 2013
`
`Symantec 2014
`
`Case IPR 2013-00150
`U.S. Patent No. 7,093,086
`
`LIST OF EXHIBITS
`
`Document Description
`Office Action, dated April 11, 2005
`Appeal Brief, dated July 19, 2005
`Response to Office Action, dated November 14, 2005
`Supplemental Notice of Allowability, dated July 6, 2016
`Symantec Corp. v. Veeam Software Corp., Civil Action No.
`3:12cv700 (Dkt. 105), Claim Construction Order, dated
`March 8, 2013
`Patent Owner’s Objections to Petitioner’s Evidence Pursuant
`to 37 C.F.R. § 42.64(b)(1)
`Declaration of Daniel Block, dated September 5, 2013
`Patent Owner’s Objections to Petitioner’s Supplemental
`Evidence Pursuant to 37 C.F.R. § 42.64(b)(1)
`Email requesting permission to file motion to amend, dated
`October 21, 2013
`Internet Archive webpage titled “Download VMware
`Products” captured from VMware website, dated June 23,
`2001
`Internet Archive webpage titled “Download VMware
`Products” captured from VMware website, dated June 23,
`2001
`Internet Archive webpage titled “VMware Server Products
`Ordering Information” captured from VMware website, dated
`October 7, 2001
`Internet Archive webpage titled “Evaluate VMware ESX
`Servicer” captured from VMware website, dated June 8, 2001
`Garmin Int’l, Inc. et al. v. Cuozzo Speed Tech. LLC,
`IPR2012-00001, No. 26 (Mar. 5, 2013), Decision
`
`iii
`
`
`
`Symantec
`Exhibit No.
`Symantec 2015
`
`Symantec 2016
`
`Symantec 2017
`Symantec 2018
`
`Symantec 2019
`
`Symantec 2020
`
`Symantec 2021
`Symantec 2022
`Symantec 2023
`
`Symantec 2024
`
`Symantec 2025
`
`Symantec 2026
`Symantec 2027
`
`Symantec 2028
`
`Case IPR 2013-00150
`U.S. Patent No. 7,093,086
`
`Document Description
`Declaration of Matthew D. Green in Support of Patent
`Owner’s Motion to Amend
`Declaration of Matthew D. Green in Support of Patent
`Owner’s Response
`Cross-Examination Testimony of Prashant Shenoy
`Non-Provisional Patent Application Serial No. 10/109,186
`accorded a filing date of March 28, 2002 (original ‘086
`specification)
`Declaration of Matthew D. Green in Support of Patent
`Owner’s Reply to Petitioner’s Opposition (Green Rep.)
`Deposition Transcript of Prashant Shenoy, March 7, 2014
`(Shenoy 2nd Dep.)
`Suzaki, U.S. Patent 7,240,239
`CP Command Reference for general Users (“VM Dump”)
`Linux on IBM eserver zSeries and S/390: ISP/ASP Solutions
`(“Linux on IBM”)
`Preemptable Remote Execution Facilities for the V-System
`(“Theimer”)
`CM BrightStor VM:Backup Operator’s Guide (“CM
`BrightStor”)
`Patent Owner’s Objections to Evidence, March 2, 3013
`Deposition Transcript of Dr. Green, March 28, 2014
`
`Currently Filed
`Declaration of Matthew D. Green in Support of Patent
`Owner’s Reply to Petitioner’s Opposition (Green Rep.)
`
`iv
`
`
`
`Case IPR 2013-00150
`U.S. Patent No. 7,093,086
`
`TABLE OF ABBREVIATIONS
`
`Abbreviation
`PO
`__:__-__
`Mot.
`Opp.
`
`Document Description
`Patent Owner
`‘086 Patent __:__-__
`Patent Owner’s Motion to Amend Claims
`Petitioner’s Opposition to Patent Owner’s Motion to Amend
`Claims
`Declaration of Matthew D. Green in Support of Patent
`Owner’s Motion to Amend (Symantec 2015)
`Declaration of Matthew D. Green in Support of Patent
`Owner’s Reply to Petitioner’s Opposition (Symantec 2019)
`Shenoy 1st Dep.
`Cross-Examination Testimony of Prashant Shenoy
`Shenoy 2nd Dep.
`Deposition Transcript of Prashant Shenoy, March 7, 2014
`Shenoy Opp. Dec. Declaration of Prashant Shenoy in Support of Petitioner’s
`Opposition to Motion to Amend
`Shenoy Rep. Dec. Declaration of Prashant Shenoy in Support of Petitioner’s
`Reply
`“Low-Latency, Concurrent Checkpointing for Parallel
`Programs” by Li et al. (Veeam 1029)
`
`Green
`
`Green Rep.
`
`Li
`
`v
`
`
`
`Case IPR2013-00150
`U.S. Patent No. 7,093,086
`
`I. PETITIONER’S PROCEDURAL CHALLENGES LACK MERIT
`
`Petitioner implies that PO and Dr. Green only considered the patentability of
`
`the claims over the five references that remain in this IPR. This is incorrect. PO
`
`considered all of the known art, including the categories identified in the
`
`Opposition, and determined that certain references and, in particular Lim, were the
`
`closest prior art. Mot. at 6. Dr. Green analyzed these references (and certain
`
`others), and confirmed the patentability of each substitute claim. Green ¶¶ 63-192.
`
`Petitioner’s reliance on Lim as its primary reference, as well as its expert’s
`
`deposition testimony, confirms that Lim is the closest reference. Shenoy 2nd Dep.
`
`66:15-67:19. Moreover, Dr. Green’s declaration and PO’s Motion set forth the
`
`significance of the added features in the context of the prior art as a whole. Green
`
`¶¶ 34-57; Mot. at 12-15. For example, a person of ordinary skill in the art would
`
`have been aware of the existence of checkpointing references that required
`
`interruption or suspension of a virtual machine. Green Rep. ¶¶ 38, 40.
`
`Importantly, none of these references capture the state of a virtual machine while it
`
`is executing, let alone using a backup program or creating structures, such as a
`
`memory COW area, for this particular purpose. Id.
`
`Consequently, in order to backup a virtual machine, a person of ordinary
`
`skill would have relied on pre-existing techniques that require interruption or
`
`suspension of the virtual machine, rather than those claimed in the ‘086 Patent. Id.
`
`
`
`Case IPR 2013-00150
`U.S. Patent No. 7,093,086
`37. As acknowledged by both experts, using such techniques would have been
`
`easier than the more complex and challenging task of capturing state without
`
`interrupting the virtual machine given that the state would be changing. Id.
`
`Shenoy 1st Dep. 64:15-65:4; Green ¶ 48. Thus, PO has proven that the substitute
`
`claims are patentable over all known prior art.
`
`The Specification Fully Supports The Substitute Claims
`
`Petitioner asserts that the Motion does not show support for the substitute
`
`claims “as a whole.” Opp. at 3. This is a red herring. The Motion identified
`
`support for the new features as well as the embodiments depicted in FIGS. 6-8
`
`which support the remaining claim limitations. Mot. at 4-6. Moreover, Petitioner
`
`states that substitute claim 31 is not supported by the ‘086 Patent. Opp. at 4-5.
`
`Nothing could be further from the truth. The ‘086 Patent makes clear that the
`
`backup program initiates the capture step by requesting the state information from
`
`the VM Kernel. Green Rep. ¶ 11; 11:32-40; 11:66-12:3; 12:61-13:16. Even
`
`Petitioner’s own expert confirmed this fact. Shenoy 2nd Dep. 20:2 - 21:19; Green ¶
`
`54.
`
`Curiously, after stating that the amendments to the preamble require the
`
`backup program to perform both capture and copy steps, Petitioner then asserts that
`
`these amendments add nothing to the claim. Opp. at 4-5. Here, the amendments
`
`made to the preamble further limit the claim by, inter alia, expressly requiring a
`
`2
`
`
`
`Case IPR 2013-00150
`U.S. Patent No. 7,093,086
`backup program, which further distinguishes the claims over the prior art. Bass
`
`Pro Trademarks, L.L.C. v. Cabela's, Inc., 485 F.3d 1364, 1369 (Fed. Cir. 2007).
`
`As for substitute claim 34, Petitioner incorrectly argues that the amendments
`
`enlarged the scope of the claim. When viewed in light of the amendments to
`
`independent claim 33, it is clear that the dependent claim has not been enlarged.
`
`II. LIM DOES NOT DISCLOSE A “BACKUP PROGRAM”
`
`Lim never refers to a backup program. Petitioner points to a GUI disclosed
`
`in Lim to allegedly show a backup program. It is undisputed, however, that the
`
`GUI does not perform the required copy step (ii). Green Rep. ¶¶ 7-8; Opp. at 4, 7-
`
`8; Shenoy 2nd Dep. 51:11-19.
`
`III.THE COMBINATION DOES NOT RENDER OBVIOUS CLAIMS 32-34
`
`Substitute claims 32-34 require that the “virtual machine can continue
`
`executing during [the capture step] (i).” Mot. at 2-4, 10-15. The ‘086 Patent
`
`accomplishes this by providing a new log of uncommitted updates and memory
`
`COW area1 where changes made as a result of the continued execution of the
`
`virtual machine can be written. 11:45-52; Shenoy 1st Dep. 22:14-23:5. This
`
`preserves the state of the virtual machine so that it can be retrieved and copied
`
`while the virtual machine continues executing. 11:42-12:13; Shenoy 1st Dep. 68:5-
`
`13, 72:20-73:5.
`
`1 No construction is required since the claim recites the memory COW’s purpose.
`3
`
`
`
`Case IPR 2013-00150
`U.S. Patent No. 7,093,086
`Significantly, Petitioner admits that Lim does not allow the virtual machine
`
`to continue execution during the capture step. Opp. at 11. Petitioner, therefore,
`
`attempts to modify Lim with the Li reference. Li, however, suffers from the same
`
`fatal defect as Lim -- it interrupts execution of a computer system.2 Opp. at 11; Li
`
`p. 875. In fact, Li requires such interruptions even when it uses multiple
`
`processors. Green Rep. ¶¶ 14-15. Petitioner attempts to minimize this deficiency
`
`by asserting that it is impossible to capture state without suspending the virtual
`
`machine, at least momentarily. Opp. at 11. This is another red herring. The ‘086
`
`Patent makes clear that the embodiment disclosed in Figs. 6-8 captures the state
`
`“without suspending the virtual machine.” 11:31-34; 13:3-6; Shenoy 1st Dep.
`
`68:22-69:6, 62:2-63:20; Shenoy Opp Dec. ¶¶ 10-14. As Dr. Green explains, a
`
`person of ordinary skill in the art would understand that the claims are directed to
`
`allowing the virtual machine to continue normal execution -- the manner in which
`
`it would have executed if the capture and copy steps were not taking place. Green
`
`Rep. ¶¶ 28-32. Nevertheless, Petitioner’s expert even admitted that if the Board’s
`
`construction of state is correct, then the capture step could be done without
`
`suspending the virtual machine. Shenoy 1st Dep. 52:4-55:3; Shenoy Rep. Dec. ¶
`
`10.
`
`2 Petitioner’s expert admitted that the Opposition mischaracterizes the Li reference.
`Shenoy 1st Dep. 116:3-117:1; Opp. at 12; Shenoy Opp Dec. ¶ 26.
`4
`
`
`
`Case IPR 2013-00150
`U.S. Patent No. 7,093,086
`Finally, as Dr. Green explains, one of ordinary skill in the art would not have
`
`combined Lim and Li’s teachings; unlike Lim, Li does not pertain to virtual
`
`machines, is merely concerned with checkpointing a single program, and is limited
`
`to specific, multi-processor computers. Green Rep. ¶¶ 22-26, 44.
`
`IV. CONCLUSION
`
`PO respectfully requests that its Motion to Amend be granted.
`
`Date: April 14, 2014
`
`Respectfully submitted,
`
`Attorney for Patent Owner
`Symantec Corporation
`
`By: /Joseph J. Richetti, Reg. No. 47024/
`Joseph J. Richetti, Reg. No. 47,024
`BRYAN CAVE LLP
`1290 Avenue of the Americas
`New York, NY 10104
`Direct Tel: (212) 541-1092
`Fax: (212) 541-4630
`Email: joe.richetti@bryancave.com
`
`5
`
`
`
`Case IPR2013-00150
`U.S. Patent No. 7,093,086
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies
`
`that
`
`the
`
`foregoing REPLY TO
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION TO AMEND
`
`PURSUANT TO 37 C.F.R. § 42.23 was served electronically via e-mail on April
`
`14, 2014, in its entirety on the following:
`
`Lori A. Gordon
`STERNE, KESSLER, GOLDSTEIN
`& FOX P.L.L.C
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3932
`lgordon-PTAB@skgf.com
`
`Michael Q. Lee
`STERNE, KESSLER, GOLDSTEIN
`& FOX P.L.L.C
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3932
`mlee-PTAB@skgf.com
`
`Respectfully submitted,
`
`By: /Joseph J. Richetti, Reg. No. 47024/
`Joseph J. Richetti
`Lead Attorney for Patent Owner
`Reg. No. 47,024
`BRYAN CAVE LLP
`1290 Avenue of the Americas
`New York, NY 10104
`General Tel: (212) 541-2000
`Direct Tel: (212) 541-1092
`Fax: (212) 541-4630
`Email: joe.richetti@bryancave.com
`
`Attorneys for Patent Owner – Symantec
`Corporation
`
`Date: April 14, 2014
`
`
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