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
`
`PATENT OWNER'S RESPONSE TO PETITIONER’S
`OBSERVATIONS ON CROSS-EXAMINATION OF
`DR. MATTHEW GREEN
`
`
`
`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
`
`PATENT OWNER'S RESPONSE TO PETITIONER’S
`OBSERVATIONS ON CROSS-EXAMINATION OF
`DR. MATTHEW GREEN
`
`
`
`Case IPR 2013-00150
`U.S. Patent No. 7,093,086
`
`TABLE OF CONTENTS
`
`Response to Observation #1.......................................................................................1
`
`Response to Observation #2 and #3...........................................................................2
`
`Response to Observation #4.......................................................................................3
`
`Response to Observation #5.......................................................................................4
`
`Response to Observation #6.......................................................................................6
`
`Response to Observation #7.......................................................................................6
`
`i
`
`
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`Case IPR 2013-00150
`U.S. Patent No. 7,093,086
`
`TABLE OF AUTHORITIES
`
`STATUTES AND RULES
`
`35 U.S.C. §102...........................................................................................................7
`
`Trial Practice Guide 77 Fed. Reg. 48756, 48768 ............................................. 1, 2, 6
`
`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)
`(Expunged)
`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
`Declaration of Matthew D. Green in Support of Patent
`Owner’s Reply to Petitioner’s Opposition (Green Rep.)
`
`iv
`
`
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`Case IPR 2013-00150
`U.S. Patent No. 7,093,086
`
`TABLE OF ABBREVIATIONS
`
`Description
`U.S. Patent No. 7,093,086
`Patent Owner’s Motion to Amend (Paper No. 27)
`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,
`Expunged)
`
`Resubmitted Declaration by Dr. Green (Symantec 2028)
`
`Deposition of P. Shenoy (Symantec 2017)
`
`Deposition Transcript of Dr. Green, 3/28/14 (Veeam 1032)
`
`Petitioner’s Opposition to Patent Owner’s Motion to
`Amend (Paper No. 32)
`
`Abbreviation
`‘086 Patent
`Mot.
`Mot. Dec.
`
`Orig. Dec.
`
`Resub. Dec.
`Shenoy 1st Dep.
`Green Rep. Dep.
`
`Opp.
`
`v
`
`
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`Case IPR 2013-00150
`U.S. Patent No. 7,093,086
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`Patent Owner respectfully responds as follows to Petitioner’s observations
`
`(Paper No. 42) regarding the March 28, 2014 cross-examination testimony of
`
`Patent Owner’s Reply declarant, Dr. Matthew Green (Veeam 1032):
`
`Response to Observation #1:
`
`Petitioner improperly and incorrectly asserts that Dr. Green’s testimony
`
`contradicts his positions regarding claim 31 in his Declaration in Support of Patent
`
`Owner’s Reply. Petitioner’s observation is improper given that it argues for the
`
`first time that claim 31 is not supported by col. 4:53-61 and col. 6:40-61 of the
`
`‘086 Patent, which were referenced in paragraph 54 of Dr. Green’s Declaration in
`
`Support of Patent Owner’s Motion to Amend. See Trial Practice Guide 77 Fed.
`
`Reg. 48756, 48768 (“[a]n observation…is not an opportunity to raise new
`
`arguments, re-argue issues or pursue objections.”).
`
`Moreover, the aforementioned portions of the ‘086 Patent provide
`
`exemplary support for the ‘backup program’ feature which was expressly added in
`
`substitute claim 31. See also, Mot. Dec. ¶¶ 18, 33, 54. This backup program is
`
`consistently discussed throughout the specification and the various embodiments
`
`depicted in the figures as a program 42 that is separate from, and interfaces with,
`
`the virtual machine kernel, as required by claim 31. See, e.g., FIG. 1-2, 6-8; col. 4:
`
`43-61, col. 6: 40-49, col. 11:31-40; col. 12:4-18; col. 12:55-13:25. Indeed, Dr.
`
`Green’s relevant statements in his declarations consistently point out that this
`
`
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`Case IPR 2013-00150
`U.S. Patent No. 7,093,086
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`backup program is separate from the virtual machine kernel, and interfaces with
`
`the kernel to allow the virtual machine to be backed up while it continues to
`
`execute. Mot. Dec. ¶¶ 46, 54; Resub. Dec. ¶ 11. Thus, contrary to Petitioner’s
`
`allegations, Dr. Green’s testimony regarding his support for the added feature of
`
`claim 31 is not inconsistent with his declaration.
`
`Petitioner ignores the additional support provided by Dr. Green in paragraph
`
`54 for claim 31. Importantly, paragraph 54 explicitly refers to Fig. 6 of the ‘086
`
`Patent, and further confirms that the backup program is separate from the virtual
`
`machine kernel. Fig. 6 also provides support for the invention in claim 31 as a
`
`whole which, consistent with Dr. Green’s testimony, is specifically directed to the
`
`embodiment in which the virtual machine’s state is captured during execution (i.e.,
`
`without suspending the virtual machine). Mot. Dec. ¶¶ 46-47; Shenoy 1st Dep., p.
`
`68, l. 22 – p. 69, l. 6.
`
`Response to Observations #2 and #3:
`
`Petitioner again presents new arguments in these observations in violation of
`
`the guidelines. See Trial Practice Guide 77 Fed. Reg. 48756, 48768. Specifically,
`
`Petitioner states for the first time that Patent Owner has not explained why claim
`
`31 is not obvious. Moreover, Petitioner’s statements in these observations are
`
`simply untrue. Contrary to Petitioner’s statements, Patent Owner and Dr. Green
`
`did explain why claim 31 would not have been obvious. Mot. Dec. ¶ 52; Mot. pp.
`
`2
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`
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`Case IPR 2013-00150
`U.S. Patent No. 7,093,086
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`6-8, 12-13. For example, Dr. Green clearly stated that “that none of the reviewed
`
`prior art either alone or in combination teaches or suggests the added feature of a
`
`backup program that interfaces with a VM kernel to capture the state of a virtual
`
`machine executing on a physical machine.” Orig. Dec. ¶ 31. Finally, Petitioner’s
`
`observations are moot as they both pertain to statements that have been removed
`
`from Dr. Green’s Declaration in Support of Patent Owner’s Reply pursuant to the
`
`Board’s order (Paper No. 40). More specifically, in both observations, Petitioner
`
`refers to a statement in paragraph 31 which is no longer present in the April 14,
`
`2014 Resubmitted Declaration by Dr. Green.
`
`Response to Observation #4:
`
`Petitioner improperly draws an inference that is contradicted by the record
`
`from Dr. Green’s testimony. Petitioner claims that Dr. Green could not identify
`
`support for the capture of ‘configuration settings,’ and that this testimony
`
`contradicts other statements he made regarding the need for such configuration
`
`files. This is simply not true. Dr. Green clearly testified during his deposition that
`
`the ‘086 Patent states that “those pieces of information are necessary to resume” in
`
`light of the Board’s construction. See Green Rep. Dep., p. 51, l. 8 – p. 54, l. 8.
`
`Petitioner argues that during his deposition, Dr. Green could not readily point to a
`
`specific passage in the ‘086 Patent that explicitly discusses the capture of
`
`‘configuration settings.’ However, when asked to identify such support, Dr. Green
`
`3
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`Case IPR 2013-00150
`U.S. Patent No. 7,093,086
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`did not have the benefit of reviewing the ‘086 Patent or his relevant declaration.
`
`Importantly, Dr. Green stated that “I don’t think that -- I discuss that with respect
`
`to this particular declaration” in Support of Patent Owner’s Reply (emphasis
`
`added). Id. at p. 53, l. 22 – p. 54, l. 6. Indeed, Dr. Green did provide support for
`
`this feature in his previous Declaration in Support of Patent Owner’s Motion to
`
`Amend. For example, Dr. Green quoted language pertaining to the configuration
`
`settings directly from the ‘086 Patent stating that “‘[r]eplicating all the state needed
`
`to restart the application on the on the second computer system (e.g., the operating
`
`system and its configuration settings, the application and its configuration settings)
`
`is complicated.’ (‘086 Patent, col. 1:64-68).” Mot. Dec. ¶¶ 169, 40. Finally,
`
`Petitioner’s expert, Dr. Shenoy, also acknowledged that the ‘086 Patent
`
`specification discloses configuration settings and that configuration files are
`
`necessary to backup a virtual machine. Shenoy 1st Dep., p. 43, l. 7 – p. 45, 22; p.
`
`86, ll. 8-19.
`
`Response to Observation #5:
`
`Petitioner’s observation completely mischaracterizes Dr. Green’s testimony.
`
`First, Petitioner selectively quotes Dr. Green’s testimony on p. 85, ll., 9-22 and p.
`
`90, ll. 6-21 and ignores his testimony on p. 86, l. 6 – p. 88, l. 7. This testimony,
`
`which Petitioner conveniently overlooks, is relevant to the statements relied on by
`
`Petitioner in Dr. Green’s Supplemental Declaration pertaining to how Lim does not
`
`4
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`Case IPR 2013-00150
`U.S. Patent No. 7,093,086
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`describe “that the GUI is used to transfer the state vector to a remote virtual
`
`machine.” Resub. Dec. ¶ 8. In these relevant portions of his deposition, Dr. Green
`
`testified that Lim did not disclose that the GUI had the capability of transferring
`
`the state vector and “required you to essentially build a GUI that's substantially
`
`more advanced than anything that's disclosed in the Lim patent.” Green Rep. Dep.,
`
`p. 87, l. 6 – p. 88, l. 7. Second, Petitioner inaccurately summarizes the substance
`
`of Dr. Green’s testimony by stating that he testified that “Lim can be interpreted
`
`such that in one embodiment when a checkpoint is initiated, the state vectors are
`
`transmitted to a second virtual machine.” Contrary to Petitioner’s
`
`mischaracterization, Dr. Green clearly testified on p. 90, ll. 15-21 that “A. There is
`
`a section in Lim that describes that a virtual machine monitor may extract and
`
`transmit the state vector. Q. And that would occur after it's created. Correct? …A.
`
`Presumably, yes.” Importantly, Dr. Green’s agreement with Petitioner that the
`
`transfer occurs “after” (not “when” as incorrectly stated by Petitioner) supports Dr.
`
`Green’s statements that there is no connection between Lim’s capture and transfer
`
`steps other than the fact that transfer must obviously occur sometime after capture,
`
`and that “nowhere does Lim state that the GUI is used to transfer the state vector to
`
`a remote virtual machine.” Resub. Dec. ¶ 8.
`
`5
`
`
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`Case IPR 2013-00150
`U.S. Patent No. 7,093,086
`
`Response to Observation #6:
`
`This observation makes clear that it is Petitioner, and not Patent Owner’s
`
`expert, who misunderstands how claims are interpreted. Petitioner attempts to
`
`interpret the language in substitute claim 33 in light of the language in original
`
`claim 21. Patent Owner points out, however, that claim 21 does not depend from
`
`claim 33 (as suggested by Petitioner). Rather, claim 21 is not subject to this
`
`proceeding and depends from claim 12. Thus, claim 33 does not include the
`
`language of claim 21. The foregoing demonstrates Petitioner’s misunderstanding
`
`of how claims are presented and interpreted in these proceedings. In addition,
`
`Petitioner’s observation is a clear attempt to introduce a new argument which it has
`
`not previously raised in relation to the alleged requirements of claim 33, which is
`
`impermissible. See Trial Practice Guide 77 Fed. Reg. 48756, 48768. Finally, this
`
`observation is now moot because the paragraph cited by Petitioner (Orig. Dec. ¶
`
`17) has been removed from, and is no longer present in, the April 14, 2014
`
`Resubmitted Declaration by Dr. Green pursuant to the Board’s order (Paper No.
`
`40).
`
`Response to Observation #7:
`
`Petitioner’s observation mischaracterizes Dr. Green’s testimony and unfairly
`
`accuses the witness of being incapable of rendering a proper opinion regarding the
`
`patentability of claim 32, when it is Petitioner’s own statements that were the
`
`6
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`
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`Case IPR 2013-00150
`U.S. Patent No. 7,093,086
`
`source of the confusion relied upon by Petitioner. First, Petitioner incorrectly
`
`states that Dr. Green was “‘confused’ by whether the rejection of claim 32 was an
`
`obviousness or anticipation rejection.” Dr. Green, however, testified that he was
`
`merely confused as to Petitioner’s statement regarding how Lim qualified as prior
`
`art under 35 U.S.C. §102, which was not Petitioner’s basis for the rejection. Green
`
`Rep. Dep., p. 142, l. 19 -22; Opp. p. 9.
`
`Second, Dr. Green’s declaration clearly shows that, despite referring to
`
`Petitioner’s ground for rejection as ‘anticipation,’ his analysis of claim 32 was
`
`responsive to the alleged obviousness of the combination of Lim and Li. For
`
`example, he stated that “I do not believe the Lim and Li combination renders
`
`obvious claims 32 and 34” (Resub. Dec. ¶ 40), that he “addressed the shortcomings
`
`of the Lim and Li combination.” (Resub. Dec. ¶ 41), and that “[b]ecause Li ignores
`
`states common to virtual machines, it is my opinion, that one of ordinary skill
`
`would not have looked to the Li reference to incorporate COW memory areas into
`
`virtual machines. Also, one of ordinary skill would not have consulted Li in order
`
`to learn how to keep a virtual machine executing during capture and copy of its
`
`state” (Resub. Dec. ¶ 44).
`
`Finally, Petitioner has only itself to blame for the confusing nature of its
`
`rejection. In its opposition, Petitioner argues that Lim discloses all of the
`
`limitations of claim 33. Petitioner goes on to identify one exception which it then
`
`7
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`Case IPR 2013-00150
`U.S. Patent No. 7,093,086
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`essentially states cannot be met. More specifically, after stating that Lim does not
`
`disclose “that the virtual machine can continue to execute during the capturing
`
`step,” Petitioner introduces Li, which Petitioner admits does not fully address the
`
`missing limitation because “it is not possible for a virtual machine to have the
`
`ability to execute during the entirety of the capture step described in the ’086
`
`Patent,” according to the Petitioner. Opp. 9-10.
`
`Date: April 21, 2014
`
`Respectfully submitted,
`
`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
`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
`
`8
`
`
`
`Case IPR 2013-00150
`U.S. Patent No. 7,093,086
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the foregoing PATENT OWNER'S
`
`RESPONSE TO PETITIONER’S OBSERVATIONS ON CROSS-
`
`EXAMINATION OF DR. MATTHEW GREEN, was served electronically via e-
`
`mail on April 21, 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
`
`9
`
`Date: April 21, 2014
`
`
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