throbber
Filed on behalf of Symantec Corporation
`
`Case IPR2013-00150
`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 PRELIMINARY RESPONSE
`TO PETITION PURSUANT TO 37 C.F.R. § 42.107
`
`

`
`Case IPR2013-00150
`U.S. Patent No. 7,093,086
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`III.
`
`INTRODUCTION ........................................................................................1
`
`THE ‘086 PATENT AND ALLEGED PRIOR ART .............................2
`
`PETITIONER HAS FAILED TO SHOW THAT THE NON-PATENT
`REFERENCES ARE PRINTED PUBLICATIONS......................................4
`
`A.
`
`B.
`
`C.
`
`D.
`
`Petitioner Fails To Show That The VMware Guide Is A Printed
`Publication..........................................................................................7
`
`Petitioner Fails To Show That The VMware Manual Is A Printed
`Publication..........................................................................................7
`
`Petitioner Fails To Show That The Suzaki Paper Is A Printed
`Publication..........................................................................................9
`
`Petitioner Fails To Show That The Wang Paper Is A Printed
`Publication..........................................................................................9
`
`IV.
`
`THE PROPER CONSTRUCTIONS OF CRITICAL TERMS IN THE
`CHALLENGED CLAIMS ........................................................................10
`
`A.
`
`B.
`
`C.
`
`The Proper Construction Of “file” ....................................................11
`
`The Proper Construction Of “a state of [a] virtual machine” .............14
`
`The Proper Construction Of “copy[ing] at least a portion of the
`state to a destination separate from a storage device to which the
`first virtual machine is suspendable”.................................................16
`
`V.
`
`THE REFERENCES RELIED ON BY PETITIONER DO NOT
`DISCLOSE MATERIAL LIMITATIONS REQUIRED BY THE
`CHALLENGED CLAIMS ........................................................................23
`
`A.
`
`B.
`
`C.
`
`Lim Lacks Material Limitations And Does Not Anticipate Claims
`1, 11, 12, Or 22.................................................................................23
`
`The VMware Manual And VMware Guide Both Lack Material
`Limitations And Do Not Anticipate Claims 1, 11, 12, Or 22.............27
`
`The Suzaki Paper Lacks Material Limitations And Does Not
`i
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`

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`Case IPR2013-00150
`U.S. Patent No. 7,093,086
`
`Anticipate Claims 1 Or 12 ................................................................38
`
`Hipp Lacks Material Limitations And Does Not Anticipate Claims
`1, 11, 12, Or 22.................................................................................41
`
`Hipp Lacks Material Limitations Required By Claims 1 And 12 ......41
`
`Hipp Lacks Material Limitations Required By Claims 11 And 22 ....44
`
`D.
`
`E.
`
`F.
`
`VI.
`
`PETITIONER’S PROPOSED COMBINATIONS DO NOT RENDER
`THE CHALLENGED CLAIMS OBVIOUS...............................................45
`
`A.
`
`B.
`
`C.
`
`D.
`
`The Suzaki And Wang Papers May Not Be Properly Combined .......46
`
`The Alleged Suzaki Paper And Wang Paper Combination Still
`Lacks Material Limitations And Does Not Render Obvious
`Claims 11 Or 22................................................................................47
`
`The Suzaki Paper And Hipp May Not Be Properly Combined..........48
`
`The Alleged Suzaki Paper And Hipp Combination Still Lacks
`Material Limitations And Does Not Render Obvious Claims 11
`Or 22.................................................................................................49
`
`VII. CONCLUSION..........................................................................................51
`
`ii
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`

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`Case IPR2013-00150
`U.S. Patent No. 7,093,086
`
`TABLE OF AUTHORITIES
`
`CASES
`
`CNET Networks, Inc. v. Etilize, Inc.,
`584 F. Supp. 2d 1260 (N.D. Cal. 2008)..............................................................6
`
`Carella v. Starlight Archery and Pro Line Co.,
`804 F.2d 135 (Fed. Cir. 1986), amended on reh'g, 1 USPQ2d 1209 (Fed.
`Cir. 1986).........................................................................................................10
`
`Graham et al. v. John Deere Co.,
`383 U.S. 1 (1966).............................................................................................45
`
`In re Lister,
`583 F.3d 1307 (Fed. Cir. 2009)......................................................................5, 6
`
`Mannesmann Demag Corp. v. Engineered Metal Products Co., Inc.,
`605 F. Supp. 1362 (D. Del. 1985), aff'd, 793 F.2d 1279 (Fed. Cir. 1986)...........6
`
`Neutrino Dev't Corp. v. Sonosite Inc.,
`337 F. Supp. 2d 942 (S.D. Tex. 2004), aff'd, 210 Fed. Appx. 991 (Fed.
`Cir. 2006)...........................................................................................................6
`
`Synopsys, Inc. v. Mentor Graphics Corporation,
`2012-00042, Paper No. 16, at 36 (PTAB Feb. 22, 2013)..........................4, 6, 11
`
`Trintec Industries, Inc. v. Top-U.S.A. Corp.,
`295 F.3d 1292 (Fed. Cir. 2002)........................................................................26
`
`FEDERAL STATUTES
`
`35 U.S.C. § 311(b)..............................................................................................4, 8
`
`37 C.F.R. § 42.104(b)(3).......................................................................................10
`
`iii
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`

`
`Case IPR2013-00150
`U.S. Patent No. 7,093,086
`
`LIST OF EXHIBITS
`
`Symantec
`Exhibit No.
`
`Document Description
`
`Symantec 2001
`
`Office Action, dated April 11, 2005
`
`Symantec 2002
`
`Appeal Brief, dated July 19, 2005
`
`Symantec 2003
`
`Response to Office Action, dated November 14, 2005
`
`Symantec 2004
`
`Supplemental Notice of Allowability, dated July 6, 2006
`
`Symantec 2005
`
`Symantec Corp. v. Veeam Software Corp., Civil Action No.
`3:12cv700 (Dkt. 105), Claim Construction Order, dated
`March 8, 2013
`
`iv
`
`

`
`I.
`
`INTRODUCTION
`
`Patent Owner Symantec Corporation hereby submits this preliminary
`
`response to the Petition filed by Petitioner Veeam Software Corporation, accorded
`
`a filing date of February 14, 2013, which requests inter partes review of claims 1,
`
`11, 12, and 22 of U.S. Patent No. 7,093,086 (“the ‘086 Patent”). Patent Owner
`
`requests that the Patent Trial and Appeal Board deny inter partes review as to all
`
`grounds of the Petition. As explained below, (i) Petitioner has failed to meet its
`
`burden of showing that the non-patent references are printed publications; (ii) all
`
`of the alleged prior art references relied upon by Petitioner lack at least one
`
`material limitation found in each of the challenged claims; (iii) the Petition fails to
`
`establish a prima facie case of obviousness for the proposed combinations; (iv)
`
`Petitioner fails to set forth any constructions, but rather merely restates the
`
`standard by which claim terms are construed; and (v) Petitioner relies on
`
`cumulative references by VMware, Inc. pertaining to the very same products
`
`discussed in the ‘086 Patent.
`
`As such, the Petition does not give rise to a reasonable likelihood of
`
`Petitioner prevailing with respect to at least one of the challenged claims in the
`
`Petition, as required for the grant of a petition for inter partes review under 35
`
`U.S.C. § 314(a).
`
`

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`Case IPR2013-00150
`U.S. Patent No. 7,093,086
`
`II.
`
`THE ‘086 PATENT AND ALLEGED PRIOR ART
`
`The ‘086 Patent is directed to backing up virtual machines. ‘086 Patent,
`
`Abstract and col. 2, ll. 3-4. Virtual machines are software implementations of
`
`physical machines and include software implementations of hardware, such as
`
`input/output devices and storage devices, on which an operating system and
`
`applications can run. ‘086 Patent, col. 3, l. 27 – col. 4, l. 6. Just as with physical
`
`machines, virtual machines can be backed up in case the data on the machine is
`
`lost or the machine itself fails. “The backup may occur, e.g., to a backup medium
`
`or to a disaster recovery site.” ‘086 Patent, Abstract and col. 2, ll. 4-6.
`
`To back up the virtual machine, the ‘086 Patent captures and stores the
`
`“state” of the virtual machine. ‘086 Patent, col. 2, ll. 55-56. In fact, the
`
`independent claims at issue in this proceeding lay out two general steps: (i)
`
`capturing a state of a virtual machine, and (ii) copying at least a portion of the
`
`state to a separate destination. ‘086 Patent, claims 1 and 12. The step of capturing
`
`the state may be implemented by the VM kernel, which supports a suspend
`
`command that creates an image of the virtual machine. ‘086 Patent, col. 2, ll. 60-
`
`65; col. 5, ll. 63-66; col. 6, ll. 45-49. Further, the ‘086 Patent makes clear that the
`
`VM kernel may be implemented using a number of products available from
`
`VMware, Inc., such as the ESX product ‘086 Patent, col. 6, ll. 1-2, ll. 5-10.
`
`Thereafter, the captured state may be copied to a destination separate from the
`
`2
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`

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`Case IPR2013-00150
`U.S. Patent No. 7,093,086
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`storage device (e.g., 22 of FIG. 1) where the state is stored when the virtual
`
`machine is suspended. The copying of the virtual machine’s state to a separate
`
`destination enables the “backing up” of the virtual machine, and is critical to the
`
`invention disclosed and claimed in the ‘086 Patent. ‘086 Patent, Abstract and col.
`
`2, ll. 3-6, ll. 11-13, and claims 1 and 12. This separate destination may be a
`
`backup medium (e.g., 24 of FIG. 1) such as a removable disk, drive, tape or
`
`compact disk that can be separated from the computer system, or can be a server
`
`or storage device coupled to the computer system via a network for back-up
`
`purposes. ‘086 Patent, col. 5, ll. 4-12 and claims 2 and 4. Alternatively, in
`
`disaster recovery configurations, the separate destination to which the state is
`
`copied may be another computer system on which the virtual machine can be
`
`resumed. ‘086 Patent, col. 3, ll. 8-26 and claims 7 and 8.
`
`Curiously, Petitioner relies on the same VMware, Inc. product that is
`
`mentioned in the ‘086 Patent, was cited during prosecution,1 and which the ‘086
`
`Patent clearly improves upon. In fact, three of the four allegedly anticipatory
`
`references advanced by Petitioner are VMware references (see VMware Guide,
`
`VMware Manual, and the Lim patent which names VMware, Inc. as the assignee).
`
`1 See the various VMware publications that appear on page 2 of the ‘086 Patent,
`
`including the one whose title starts with “VMware ESX Server.”
`
`3
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`Case IPR2013-00150
`U.S. Patent No. 7,093,086
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`Each one of these references is missing material claim features, including copying
`
`at least a portion of the state to a separate destination. The other two allegedly
`
`anticipatory references advanced by Petitioner, namely, Hipp and the Suzaki
`
`Paper, are also respectively missing material claim features, namely capturing a
`
`state of a virtual machine which corresponds to a point in time in the execution of
`
`the first virtual machine, as will be explained in more detail below.
`
`III. PETITIONER HAS FAILED TO SHOW THAT THE NON-PATENT
`REFERENCES ARE PRINTED PUBLICATIONS
`
`An inter partes review may be requested “only on the basis of prior art
`
`consisting of patents or printed publications.” 35 U.S.C. § 311(b). With respect
`
`to references relied on as printed publications, Petitioner must show that the
`
`references were published or otherwise disseminated to the public. Synopsys, Inc.
`
`v. Mentor Graphics Corporation, IPR2012-00042, Paper No. 16, at 36 (PTAB
`
`Feb. 22, 2013) (finding that “Petitioner has not shown that the HDL-ICETM
`
`brochure is a prior art printed publication” because “Petitioner has directed us to
`
`no evidence as to the publication or public accessibility of the HDL-ICETM
`
`brochure prior to publication of the file history in application 08/566,401.”) While
`
`4
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`Case IPR2013-00150
`U.S. Patent No. 7,093,086
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`Petitioner relies on four non-patent references in the Petition, it fails to prove that
`
`these references qualify as printed publications. Petition at 6-7.2
`
`Instead, Petitioner makes conclusory statements that the documents were
`
`allegedly published on a particular date. See, e.g., Petition at 7 (stating that the
`
`VMware Guide was “published in 2000”). In so doing, it appears that Petitioner is
`
`relying solely on dates that appear on the various documents. This is improper. It
`
`is well settled that the mere appearance of a date on a document does not establish
`
`that the document was available to and/or disseminated to the public. See, e.g., In
`
`re Lister, 583 F.3d 1307, 1316-17 (Fed. Cir. 2009) (finding that a manuscript
`
`registered with the copyright office was not prior art because there was
`
`insufficient evidence to show that the manuscript was publicly accessible prior to
`
`2 More specifically, in its Proposed Grounds 2 and 3, Petitioner alleges that
`
`Claims 1, 11, 12, and 22 are purportedly anticipated by two VMware, Inc. references,
`
`namely: VMware ESX Server: User Manual (the “VMware Manual”), and Getting
`
`Started Guide: VMware 2.0 of Linux (the “VMware Guide”). Moreover, in
`
`Proposed Grounds 4, 5, and 6, Petitioner alleges that Claims 1, 11, 12, and 22 are
`
`anticipated, or rendered obvious, by two papers, namely: Suzaki, Checkpoint for
`
`Network Transferable Computer (the “Suzaki Paper”), and Wang, Integrating
`
`Checkpointing with Transaction Processing (the “Wang Paper”).
`
`5
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`

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`Case IPR2013-00150
`U.S. Patent No. 7,093,086
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`the critical date); Mannesmann Demag Corp. v. Engineered Metal Products Co.,
`
`Inc., 605 F. Supp. 1362, 1366-67 (D. Del. 1985), aff’d, 793 F.2d 1279 (Fed. Cir.
`
`1986) (concluding that a patentee’s prior publication was not prior art under 102
`
`(b), “[a]bsent more, the mere fact that the Demag brochure was dated, ‘6.77,’ is
`
`hardly evidence that the brochure was actually disseminated to the relevant public
`
`as of that date.”); Neutrino Dev’t Corp. v. Sonosite Inc., 337 F. Supp. 2d 942, 947
`
`(S.D. Tex. 2004), aff’d, 210 Fed. Appx. 991 (Fed. Cir. 2006) (finding that a
`
`brochure affixed with the date April of 1996, at best, showed that it was printed in
`
`April of 1996, but insufficient to establish that it was a “printed publication”).
`
`Further, even a copyright date on a document is insufficient to show that the
`
`document was accessible to the public and, therefore, qualifies as a printed
`
`publication. See, e.g., Lister, 583 F.3d at 1316-17 (finding that a manuscript
`
`registered with the copyright office was not prior art because there was insufficient
`
`evidence to show that the manuscript was publicly accessible prior to the critical
`
`date); CNET Networks, Inc. v. Etilize, Inc., 584 F. Supp. 2d 1260, 1273-74 (N.D.
`
`Cal. 2008) (“find[ing] that a 2001 copyright date does not prove the Liaison CE
`
`User Guide was publicly accessible prior to April 10, 2001”).
`
`Importantly, when determining whether to institute an inter partes trial, the
`
`Board has previously held that the petitioner failed to show that a reference
`
`qualified as a prior art printed publication. Synopsys, Inc., Paper No. 16 at 36. As
`
`6
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`

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`Case IPR2013-00150
`U.S. Patent No. 7,093,086
`
`explained in more detail below, Petitioner did not meet its burden in showing that
`
`any of the non-patent references, namely, the VMware Guide, the VMware
`
`Manual, the Suzaki Paper, and the Wang Paper, qualify as a printed publication.
`
`Thus, the Board should deny Petitioner’s grounds that rely on the non-patent
`
`references.
`
`A.
`
`Petitioner Fails To Show That The VMware Guide Is A
`Printed Publication
`
`With respect to the VMware Guide (VEEAM 1006), Petitioner merely
`
`states that it was published in 2000 and concludes that it is § 102(b) prior art to the
`
`‘086 Patent (presumably relying again on a 2000 copyright date that appears on
`
`the second page of this reference). Petition at 7. As explained above, a copyright
`
`date on a document is not sufficient to show that the document was publicly
`
`accessible. Accordingly, Petitioner has failed to meet its burden to show that the
`
`VMware Guide is a printed publication.
`
`B.
`
`Petitioner Fails To Show That The VMware Manual Is A
`Printed Publication
`
`With respect to the VMware Manual (VEEAM 1005), Petitioner relies on
`
`the 2001 copyright date which appears on page 2 of this reference, and
`
`concludes that this non-patent reference allegedly is § 102(a) prior art to the ‘086
`
`Patent. Petition at 6. As previously stated, a copyright date on a document is not
`
`7
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`Case IPR2013-00150
`U.S. Patent No. 7,093,086
`
`sufficient to show that the document was publicly accessible and, therefore,
`
`qualifies as a printed publication.
`
`Moreover, Petitioner also cites to a WebArchive (VEEAM 1012) to show
`
`that a VMware ESX product was available for purchase as of June 23, 2001. This
`
`is clearly a red herring. Whether a product was offered for sale is irrelevant to an
`
`inter partes proceeding since the proceedings are limited solely to “patents and
`
`printed publications.” 35 U.S.C. § 311(b). The WebArchive provides no proof
`
`that the specific VMware Manual Petitioner attempts to rely on was made
`
`available to the public. Indeed, as is readily apparent from the documents, the
`
`WebArchive references a different version of the manual from that which is cited
`
`in the Petition.
`
`Accordingly, Petitioner has failed to meet its burden to show that the
`
`VMware Manual has been disseminated to the public, and that it qualifies as a
`
`printed publication.
`
`Moreover, these VMware references, namely the VMware Guide and the
`
`VMware Manual, are cumulative of each other. Even Petitioner’s expert admits
`
`that these references describe very similar subject matter. VEEAM 1002 at 14.
`
`The other portions of the VMware Guide that are relied on by Petitioner and its
`
`expert are repetitive of the VMware Manual, and do not add any additional
`
`information that is relevant to the challenged claims.
`
`8
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`

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`Case IPR2013-00150
`U.S. Patent No. 7,093,086
`
`C.
`
`Petitioner Fails To Show That The Suzaki Paper Is A
`Printed Publication
`
`With respect to the Suzaki Paper (VEEAM 1007 and 1008), Petitioner
`
`merely states that it was published on July 26, 2001 based on an English language
`
`translation of a Japanese document, and concludes that it is § 102(a) prior art to
`
`the ‘086 Patent. Petition at 6. Here, Petitioner provides no evidence whatsoever
`
`that the reference was ever published or otherwise available. There is no
`
`indication that the Suzaki Paper was ever published. No publication name appears
`
`anywhere on the paper, and the date that appears thereon is not associated with
`
`any indicia relevant to public accessibility. As explained above, the mere
`
`appearance of a date on a document does not establish that the document was
`
`disseminated to the public.
`
`Accordingly, Petitioner has failed to meet its burden to show that the Suzaki
`
`Paper has been disseminated to the public, and that it qualifies as a printed
`
`publication.
`
`D.
`
`Petitioner Fails To Show That The Wang Paper Is A
`Printed Publication
`
`With respect to the Wang Paper (VEEAM 1010), Petitioner merely states
`
`that it is an IEEE paper published in 1997, and concludes that it is § 102(b) prior
`
`art to the ‘086 Patent. Petition at 7. Beyond noting that the Wang Paper is a 1997
`
`IEEE paper, Petitioner provides no evidence that the reference was ever
`
`9
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`

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`Case IPR2013-00150
`U.S. Patent No. 7,093,086
`
`distributed to anyone. See Carella v. Starlight Archery and Pro Line Co., 804
`
`F.2d 135, 139 (Fed. Cir. 1986), amended on reh’g, 1 USPQ2d 1209 (Fed. Cir.
`
`1986) (the printed publication could not be used to invalidate the patent, in part,
`
`because no evidence was presented as to the date of receipt by the addressee of the
`
`mailed magazine). Although a copyright date of 1997 appears on the bottom of
`
`the first page of the Wang Paper, a copyright date on a document is not sufficient
`
`to show that the document was publicly accessible, as discussed above.
`
`Accordingly, Petitioner has failed to meet its burden to show that the Wang
`
`Paper has been disseminated to the public, and that it qualifies as a printed
`
`publication.
`
`IV. THE PROPER CONSTRUCTIONS OF CRITICAL TERMS IN
`THE CHALLENGED CLAIMS
`
`Petitioner has failed to meet its obligation to provide claim constructions
`
`for the challenged claims. 37 C.F.R. § 42.104(b)(3) clearly states that a petition
`
`for inter partes review must identify “[h]ow the challenged claim is to be
`
`constructed.” Instead, Petitioner merely recites a standard for claim construction
`
`in a section that is presumably meant to discuss “[t]he Claims of the ‘086 Patent
`
`and their Construction”. Petition at 4. Notably, in its various arguments where it
`
`attempts to map the cited art to challenged claims, Petitioner ignores the broadest
`
`reasonable construction of certain meaningful claims terms, the ‘086 Patent
`
`10
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`U.S. Patent No. 7,093,086
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`specification and its prosecution history and, instead, relies on its asserted prior art
`
`references to remold the claim terms to what these references describe. This is
`
`clearly improper.
`
`Because certain claim terms are critical in determining whether Petitioner’s
`
`asserted references allegedly disclose the particular limitations of the challenged
`
`claims, Patent Owner requests that the Board construe the terms “file,” “a state of
`
`[a] virtual machine” and “copy[ing] at least a portion of the state,” and advances
`
`the following proposed constructions and supporting evidence to assist the Board
`
`in performing this claim construction analysis.3
`
`A.
`
`The Proper Construction Of “file”
`
`In inter partes review proceedings, claim terms are to be given the broadest
`
`reasonable construction in light of the specification as mandated by 37 C.F.R.
`
`§ 42.100(b). Patent Owner submits that the following construction is the proper
`
`construction of the term “file:” “a coherent unit of information that a user can
`
`retrieve, change, delete, save, or send to an output device and that is typically
`
`opened, closed, read, and written using a predefined API provided by an operating
`
`3 Patent Owner notes that it is appropriate for the Board to construe critical claim
`
`terms in deciding whether to institute an inter partes review trial. See Synopsys,
`
`Inc., Paper No. 16 at 5-7.
`
`11
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`system.” As explained in more detail below, this construction is consistent with
`
`the specification and a person of ordinary skill’s understanding, as confirmed by
`
`the U.S. Patent and Trademark Office (USPTO)’s statements regarding this term
`
`during prosecution.
`
`Patent Owner notes that Petitioner attempts to bootstrap its definition of this
`
`claim term by relying not on the ‘086 Patent, but rather the very same reference it
`
`asserts against the challenged claims, namely U.S. Patent 6,795,966 (“Lim”).
`
`Specifically, in stating that “Lim discloses that the captured state includes at least
`
`one file,” Petitioner merely cites to a portion of Lim which discusses a particular
`
`“list or data structure” referred to as a state vector, without any other explanation
`
`whatsoever. Petition at 11. Moreover, the Declaration submitted by Petitioner’s
`
`expert is completely silent as to this specific point. Petitioner therefore seems to
`
`be defining a file by equating it to a vector. Instead of advancing a construction
`
`for this term, Petitioner improperly attempts to give the term a meaning that is
`
`purely based on its asserted prior art reference. Moreover, Petitioner’s position
`
`completely ignores the USPTO’s position and apparent construction of this term
`
`during prosecution.
`
`Importantly, the USPTO clearly stated during the prosecution of the
`
`application which issued as the ‘086 Patent that a “file is a complete, named
`
`collection of information, such as a program, a set of data used by a program, or a
`
`12
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`user-created document. A ‘file’ binds a conglomeration of instructions, numbers,
`
`words, or images into a coherent unit that a user can retrieve, change, delete, save,
`
`or send to an output device.” See 4/11/05 Office Action (attached herein as
`
`Symantec exhibit 2001) at 9. Accordingly, it is clear that, in seeking to determine
`
`the broadest reasonable interpretation of this term during prosecution, the USPTO
`
`was of the opinion that a “file” is a particular structure that has certain attributes.
`
`This is consistent with the specification of the ‘086 Patent, which gives different
`
`examples of information and attributes pertaining to files – e.g., “files are used by
`
`applications;” they can be “backed up” or “open;” they may be “written” and
`
`“stored on a storage device;” they “may be actually deleted,” etc. ‘086 Patent, col.
`
`2, ll. 65-67; col. 3, ll. 45-48; col. 4, ll. 24-26; col. 8, ll. 47-49.
`
`Moreover, in successfully distinguishing over the prior art asserted during
`
`prosecution, the patentee stated that, for example, “[a] file is typically opened,
`
`closed, read, and written using a predefined API provided by an operating
`
`system.” See 7/19/05 Appeal Brief (attached herein as Symantec exhibit 2002) at
`
`6. In fact, the patentee overcame the prior art rejections based on a distinction
`
`drawn between a “file” and other data structures which are not necessarily
`
`identical, thereby further confirming that the USPTO at least tacitly agreed with
`
`the above interpretation accorded to the term “file.” See 11/14/05 Response to OA
`
`13
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`

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`Case IPR2013-00150
`U.S. Patent No. 7,093,086
`
`at 3-4, which ultimately resulted in the allowance of the application on July 6,
`
`2006 (attached herein as Symantec exhibits 2003 and 2004).
`
`For at least the foregoing reasons, the broadest reasonable construction in
`
`light of the specification of the term “file” is “a coherent unit of information that a
`
`user can retrieve, change, delete, save, or send to an output device and that is
`
`typically opened, closed, read, and written using a predefined API provided by an
`
`operating system.”
`
`B.
`
`The Proper Construction Of “a state of [a] virtual machine”
`
`Patent Owner submits that the following construction is the broadest
`
`reasonable construction for the term “a state of [a] virtual machine” in light of the
`
`specification, as mandated by 37 C.F.R.§ 42.100(b): “information regarding [the]
`
`virtual machine, including virtual disk(s), to permit the virtual machine to resume
`
`execution.” The following details Patent Owner’s position and supports its
`
`construction.
`
`As discussed above, the ‘086 Patent is concerned with backing up virtual
`
`machines. ‘086 Patent, col. 2, ll. 55-56. To do that, the “state” of this virtual
`
`machine is captured and copied to a separate destination. ‘086 Patent, col. 2, ll. 3-
`
`13; claims 1 and 12. This includes “all of the state used by the application
`
`(operating system and its configuration settings, the application and its
`
`configuration settings, etc.).” ‘086 Patent, col. 3, ll. 22-26. It also includes the
`
`14
`
`

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`Case IPR2013-00150
`U.S. Patent No. 7,093,086
`
`contents of any virtual disk(s) (and, when dealing with non-persistent disks, any
`
`updates to such disk(s) as would be stored in a copy-on-write (COW) file). ‘086
`
`Patent, col. 2, l. 60 – col. 3, l. 7; col. 4, ll. 19-28; col. 6, ll. 52-66; col. 13, ll. 20-25.
`
`Given that the ‘086 Patent is concerned with backing up a virtual machine
`
`such that it can be resumed, e.g., on another computer system, the state
`
`information of the virtual machine must include sufficient information regarding
`
`the virtual machine to permit the virtual machine to resume execution. ‘086
`
`Patent, col. 1, ll. 64-67, col. 3, ll. 7-26; claim 8.
`
`Accordingly, the captured “state of [a] virtual machine” is “information
`
`regarding [the] virtual machine, including virtual disk(s), to permit the virtual
`
`machine to resume execution.” Patent Owner’s proposed construction is the
`
`broadest reasonable interpretation as it allows for information pertaining to
`
`applications, the operating system, other hardware (e.g., I/O devices), etc. to be
`
`part of the captured “state.” It also allows for situations in which the virtual disk
`
`is persistent or non-persistent (consistent with other claims such as claim 3). ‘086
`
`Patent, col. 7, ll. 33-37. Finally, Patent Owner’s proposed construction is
`
`consistent with the specification of the ‘086 Patent as discussed above.
`
`Instead of advancing a construction for this term, Petitioner quotes to
`
`portions of its asserted prior art in what can only be viewed as an improper
`
`attempt to give the claim term the same meaning accorded to it by the reference
`
`15
`
`

`
`Case IPR2013-00150
`U.S. Patent No. 7,093,086
`
`that Petitioner attempts to apply. More specifically, Petitioner quotes from Lim
`
`in stating that “[t]he captured ‘state is the entire collection of all information that
`
`is necessary and sufficient to uniquely determine the states of all hardware and
`
`software components at the completion of any given processor instruction.’”
`
`Petition at 11. Not only is this improper, but the quoted portion of Lim ignores a
`
`key component of the captured state, namely the virtual disk or disks
`
`themselves. As made clear by the claims and the specification, the virtual
`
`disk(s) contents are undisputedly part of the state information captured
`
`according to the ‘086 Patent, and are clearly needed if the virtual machine is to
`
`be restored from the backup medium or resumed on another computer system.
`
`‘086 Patent, col. 3, ll. 45-65; col. 4, ll. 19-28; col. 13, ll. 20-25; claim 8.
`
`For at least the foregoing reasons, the broadest reasonable construction in
`
`light of the specification of the term “a state of [a] virtual machine” is
`
`“information regarding [the] virtual machine, including virtual disk(s), to permit
`
`the virtual machine to resume execution.”
`
`C.
`
`The Proper Construction Of “copy[ing] at least a portion of
`the state to a destination separate from a storage device to
`which the first virtual machine is suspendable”
`
`As required by the challenged claims, the state of a virtual machine must be
`
`captured in step (i). As also required by the challenged claims, “at least a portion
`
`of the state” of the virtual machine which is captured in step (i) must be copied to
`
`16
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`

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`Case IPR2013-00150
`U.S. Patent No. 7,093,086
`
`a separate destination in step (ii). Patent Owner submits that the following
`
`construction is the broadest reasonable construction for the phrase “copy[ing] at
`
`least a portion of the state to a destination separate from a storage device to which
`
`the first virtual machine is suspendable” in light of the specification, as mandated
`
`by 37 C.F.R. § 42.100(b):
`
`(1) if a previous copy of the virtual disk(s) resides on a destination
`that is separate from a storage device on which the state of the first
`virtual machine is stored when the first virtual machine is suspended,
`storing changes to the state at the separate destination, or (2) if a
`previous copy of the virtual disk(s) does not reside on the separate
`destination, storing the captured state at the separate destination.
`
`In order to construe the above phrase, it is helpful to first construe the term
`
`“a destination separate from a storage device to which the first virtual machine is
`
`suspendable.” The proper construction for this term is “a destination separate
`
`from a storage device on which the state of the [first] virtual machine is stored
`
`when the [first] virtual machine is suspended.” Importantly, this construction was
`
`previously agreed to by Petitioner and Patent Owner during District Court
`
`litigation involving the ‘086 Patent, before Petitioner instituted this proceeding.
`
`See Claim Construction Order dated 3/8/13, Case 3:12-cv-00700-SI, Document
`
`105 (attached herein as Symantec exhibit 2005) at 3. Moreover, this construction
`
`is the broadest reasonable interpretation as it allows for the “separate destination”
`
`17
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`Case IPR2013-00150
`U.S. Patent No. 7,093,086
`
`to be any other medium, and is consistent with the other dependent claims and the
`
`specification of the ‘086 Patent.4 Finally, this construction covers the various
`
`different embodiments provided in the specification of the ‘086 Patent.
`
`For example, when considering FIGS. 1 and 6, the state of the first virtual
`
`machine, namely image 40, is saved on storage device 22 in response to a suspend
`
`command when the state is captured. As for when the “at least portion of the
`
`state” is copied, it may be stored on backup medium 24, which is a destination
`
`separate from storage device 22. ‘086 Patent, col. 4, ll. 18-24; col. 7, ll. 21-23. As
`
`another example (See FIG. 3), while the state of the first virtual machine, namely
`
`image 40, is saved on storage device 22 in response to a suspend command, the
`
`“at least portion of the state” is copied and stored on computer system 10B, which
`
`4 For example, the “separate destination” may be a back

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