`Entered: July 29, 2014
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`Trials@uspto.gov
`Tel: 571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
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`VEEAM SOFTWARE CORPORATION
`Petitioner
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`v.
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`SYMANTEC CORPORATION
`Patent Owner
`_______________
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`Case IPR2013-00150
`Patent 7,093,086 B1
`_______________
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`Before FRANCISCO C. PRATS, THOMAS L. GIANNETTI, and TRENTON A.
`WARD, Administrative Patent Judges.
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`WARD, Administrative Patent Judge.
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`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a); 37 C.F.R. § 42.73
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`I.
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`INTRODUCTION
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`A. Background
`Veeam Software Corporation (“Petitioner”) filed a petition for inter partes
`review of claims 1, 11, 12, and 22 of U.S. Patent 7,093,086 B1 (“the ’086 patent”).
`Paper 2 (“Pet.”). Symantec Corporation (“Patent Owner”) filed a Preliminary
`Response. Paper 9 (“Prelim. Resp.”). Pursuant to 35 U.S.C. § 314, we instituted
`inter partes review, on August 7, 2013, as to claims 1, 11, 12, and 22 of the
`’086 patent. Paper 10 (“Dec.).
`After institution of trial, Patent Owner filed a Response (Paper 28, “PO
`Resp.”) and Petitioner filed a Reply (Paper 33, “Pet. Reply”). Patent Owner also
`filed a Motion to Amend Claims (Paper 27, “Mot. to Amend”), which Petitioner
`opposed (Paper 32, “Opp.”) and Patent Owner filed a Reply (Paper 43, “Reply to
`Mot. to Amend”). Oral hearing was held on May 5, 2014. The hearing transcript
`has been entered in the record as Paper 53 (“Tr.”).
`The Board has jurisdiction under 35 U.S.C. § 6(c). This final written
`decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the
`reasons discussed below, we determine that Petitioner has shown by a
`preponderance of the evidence that claims 1, 11, 12, and 22 of the ’086 patent are
`unpatentable. Furthermore, for reasons discussed below, Patent Owner’s motion to
`amend original claims 1, 11, 12, and 22 with proposed substitute claims 31-34 is
`denied.
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`B. Related Proceedings
`In addition to this petition, we instituted inter partes review on August 7,
`2013 based on Petitioner’s challenges to the patentability of certain claims of
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`Patent OOwner’s UU.S. Patentss 6,931,5588 (IPR20133-00141, IPPR2013-0
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`7,191,299 (IPR2013-00143)). Our finaal decisionss in those pproceedinggs are bein
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`C. TThe ’086 Paatent
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`TThe ’086 paatent is titled “Disastter Recoverry and Bacckup Usingg Virtual
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`Machinnes” and geenerally rellates to commputer sysstems and mmethods foor backing
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`virtual mmachines. Ex. 1001, col. 2, ll. 3-4. The ppatent desccribes a commputer sysstem
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`that exeecutes one or more viirtual machhines, havi
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`ng multiplle applicatiions. To
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`create aa backup, thhe computer system mmay captuure a state oof each virttual machiine
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`and bacckup the staate. Id. at col. 2, ll. 553-56. Thee state mayy include thhe informaation
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`e virtual mmachine. Idd. at
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`response tto a suspennsion of th
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`col. 2, ll. 60-62. FFigure 1 off the ’086 ppatent is reeproduced
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`’086 paatent, Figuure 1
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`As illustrated above in Figure 1, the ’086 patent discloses that multiple virtual
`machines, 16A-C, can be controlled by Virtual Machine (“VM”) Kernel 18, all of
`which may comprise software and/or data structures executed on the underlying
`hardware 20 of computer system 10. Ex. 1001, col. 3, ll. 30-37. Figure 1 further
`illustrates that computer system 10 can include storage device 22 and backup
`medium 24. Ex. 1001, col. 3, ll. 40-42. Claim 1 illustrates the claimed subject
`matter and is reproduced below:
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`1. A computer readable medium storing a plurality of
`instructions comprising instructions which, when
`executed:
`(i) capture a state of a first virtual machine executing on a
`first computer system, the state of the first virtual
`machine corresponding to a point in time in the
`execution of the first virtual machine, wherein the first
`virtual machine comprises at least one virtual disk
`storing at least one file used by at least one
`application executing in the first virtual machine, and
`wherein
`the state of
`the first virtual machine
`comprises the at least one file; and
`(ii) copy at least a portion of the state to a destination
`separate from a storage device to which the first
`virtual machine is suspendable, wherein suspending
`the first virtual machine is performed responsive to a
`suspend command.
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`D. Claim Construction
`Consistent with the statute and the legislative history of the AIA,1 the Board
`will interpret claims of an unexpired patent using the broadest reasonable
`construction in light of the specification of the patent. See Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012); 37 C.F.R.
`§ 42.100(b). Under the broadest reasonable construction standard, claim terms are
`given their ordinary and customary meaning as would be understood by one of
`ordinary skill in the art in the context of the entire disclosure. In re Translogic
`Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
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`1. “state of a virtual machine”
`Claims 1 and 12 require capturing the “state of a first virtual machine.” In
`the Decision to Institute, we adopted the prior construction of the District Court for
`the Northern District of California as the broadest reasonable construction, which
`construed “‘a state of [first] virtual machine’ as ‘information regarding the [first]
`virtual machine to permit the virtual machine to resume execution of the
`application at the point in time the state was captured.” Dec. 5-6 (citing Symantec
`Corp. v. Veeam Software Corp., Case No. 12-cv-00700-SI, Mar. 8, 2013 Claim
`Construction Order, 9 (Ex. 2005) (“Claim Construction Order”) (brackets in
`original)).
`Patent Owner argues that this construction is unreasonably narrow and
`inconsistent with the specification because the Board’s construction does not
`require capturing all of the state information needed to resume execution of the
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`1 Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011)
`(“AIA”).
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`virtual machine. PO Resp. 17. Patent Owner proposes the “a state of [a] virtual
`machine” be construed to mean “information regarding [the] virtual machine to
`resume execution of [the] virtual machine on any computer at the point in time the
`state was captured.” Id. at 18 (brackets in original). Petitioner counters that Patent
`Owner’s construction is overly narrow because the claims are not limited to
`backup and do not require that all of the state information be copied to a
`destination, but rather claims 1 and 12 expressly recite that “at least a portion of
`the captured state is copied.” Pet. Reply. 5 (quoting claims 1 and 12). We agree
`and are not persuaded by Patent Owner to modify the construction set forth in the
`Decision to Institute. See Dec. 6. Accordingly, in light of the specification and in
`the context of the claims, we construe “a state of [first] virtual machine” as
`“information regarding the [first] virtual machine to permit the virtual machine to
`resume execution of the application at the point in time the state was captured.”
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`2. “backup program”
`Patent Owner contends that claims 1 and 12 require a backup “program” that
`“performs the two recited steps in order to backup a virtual machine”. PO Resp.
`20. Petitioner argues that the explicit language of claims 1 and 12 neither recites
`nor requires a backup program. Pet. Reply 2-3. Petitioner also points out claims 2
`and 13 narrow independent claims 1 and 12 by adding the limitation that “the
`destination is a backup medium coupled to the first computer system and used to
`backup data from the first computer system.” Pet. Reply 3 (emphasis added). We
`are not persuaded by Patent Owner’s arguments, as claims 1 and 12 do not include
`the term “backup.” Therefore, we do not import the limitation of a “backup
`program,” as urged by Patent Owner, from the specification into the claims.
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`II. ANALYSIS
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`A. Anticipation by Lim
`Petitioner contends that the challenged claims of the ’086 patent are
`anticipated by Lim. Pet. 7-15. “A claim is anticipated only if each and every
`element as set forth in the claim is found, either expressly or inherently described,
`in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814
`F.2d 628, 631 (Fed. Cir. 1987).
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`1. Overview of Lim
`Lim is titled “mechanism for restoring, porting, replicating, and
`checkpointing computer systems using state extraction” and discloses a virtual
`machine monitor on which multiple virtual computer systems are installed whose
`states can be checkpointed under control of the virtual machine monitor. Ex. 1004,
`Abstract. The checkpointed virtual machine may be restored into the system at a
`later time. Id. Figure 2 of Lim is reproduced below:
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`LLim, Figurre 2
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`) 200, e (“VM1”)ual machineloses virtu, Lim discn Figure 2As showwn above i
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`includinng virtual ooperation ssystem (“VVOS”) 202,, virtual prrocessor (“VVPROC”)
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`204, a vvirtual diskk that is virrtual memoory (“VMEEM”) 206,
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`and virtuaal peripheraal
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`devices 208, “all oof which arre implemeented in sooftware to
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`correspoonding commponents oof an actuaal computeer.” Ex. 10004, col. 144, ll. 27-322.
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`Additionally, as shhown in Fiigure 2, Limm disclosees virtual mmachine moonitor 250
`Ex. 1004,
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`betweenn the virtuaal machinees 200 to 2000n and thhe system hhardware.
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`col. 15, ll. 26-31. To enablee computerr system reestoration, LLim disclooses capturring
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`the “total machine state” of a computer system, which is “the entire collection of
`all information that is necessary and sufficient to uniquely determine the status of
`all hardware and software components at the completion of any given processor
`instruction.” Ex. 1004, col. 10, ll. 26-30. Therefore, if the processor’s execution is
`interrupted,
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`The total machine state is then the set of data that, when loaded at any
`time into the appropriate memory positions (both internal and external
`to the processor), will cause the processor, and all connected hardware
`and software components, to continue executing in exactly the same
`way as if there had been no interruption at all.
`Ex. 1004, col. 10, ll. 32-38.
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`2. Analysis
`a. Claims 1 and 12
`Petitioner asserts that claims 1 and 12 of the ’086 patent are unpatentable
`under 35 U.S.C. § 102(e) as anticipated by Lim. Pet. 7-15. Patent Owner argues
`against Petitioner’s challenge based on Lim on multiple grounds.
`First, Patent Owner argues that Lim fails to anticipate claims 1 and 12
`because Lim fails to disclose a separate backup program that performs the capture
`and copy steps in claims 1 and 12. PO Resp. 25. In particular, Patent Owner
`argues that Petitioner’s expert never refers to Lim as a backup system. PO Resp.
`25 (citing Ex. 1002, Declaration of Prashant Shenoy (“Shenoy Decl.”) ¶¶ 13-14).
`Patent Owner’s arguments are unavailing, as they are not commensurate with the
`scope of the claims. Specifically, they are premised on an overly narrow
`construction of claims 1 and 12, namely, that they require a “backup program.” As
`discussed above, we decline to adopt Patent Owner’s narrow construction because
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`it would import limitations from the specification into the claims, improperly
`limiting the claims to a preferred embodiment.
`Second, Patent Owner argues that Lim does not anticipate claims 1 and 12
`because Lim fails to disclose capturing “a state of [a] virtual machine.” PO Resp.
`29. In particular, Patent Owner contends that Lim does not capture or transmit any
`configuration information because it is not concerned with capturing sufficient
`state information for the virtual machine to resume execution of the virtual
`machine on any computer. Id. In its Reply, Petitioner counters that Lim discloses
`capturing “the state of a virtual machine,” which Lim identifies as “the entire
`collection of all information that is necessary and sufficient to uniquely determine
`the status of all hardware and software component at the completion of any given
`processor instruction.” Pet. Reply 9 (citing Ex. 1004, col. 10, ll. 27-30).
`Furthermore, Petitioner argues Patent Owner’s expert, Dr. Matthew Green, agreed
`that Lim describes capturing “the type of hardware” as part of its state and Dr.
`Green agreed that this hardware information is included in the configuration
`information of the virtual machine. Id. at 9-10 (citing Ex. 1026, 284:4-7, 258:20-
`25). In view of the cited disclosures from Lim and the testimony, we are not
`persuaded by Patent Owner that Lim fails to disclose capturing a state of a virtual
`machine.
`Additionally, Patent Owner argues that Lim fails to anticipate claims 1 and
`12 because it does not allow the virtual machine to continue executing when its
`alleged state is captured. PO Resp. 33. Specifically, Patent Owner argues that the
`capturing step, step (i) of claims 1 and 12, requires that the virtual machine
`continue executing while its state is captured, i.e., without suspending the virtual
`machine. Id. Petitioner counters this argument by stating that claims 10 and 21,
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`dependent from claims 1 and 12 respectively, recite “wherein [step] (i) comprises
`suspending the first virtual machine.” Pet. Reply. 6 (quoting claims 1 and 12).
`Thus, Petitioner argues that the independent claims 1 and 12 must be interpreted
`broadly to encompass embodiments where the virtual machine is suspended during
`capture. Id. We are persuaded by Petitioner’s argument that in view of the
`limitations in dependent claim 10 and 22, claims 1 and 12 must be interpreted to
`include, at least, suspending the virtual machine during capture. Thus, we are not
`persuaded by Patent Owner’s argument that claims 1 and 12 require capturing
`while the virtual machine is executing.
`For the foregoing reasons, we conclude that Petitioner has demonstrated by a
`preponderance of the evidence that claims 1 and 12 are anticipated by Lim.
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`b. Claims 11 and 22
`Patent Owner argues that Lim fails to anticipate dependent claims 11 and 22
`because Lim discloses conventional Copy-On-Write (“COW”) files and memories,
`and “not the ‘new log of uncommitted updates’ or the new ‘memory area’ which
`are specifically created during the capture step (i) according to the claims.” PO
`Resp. 40. More particularly, Patent Owner argues that claims 11 and 22 require
`the “new log of uncommitted updates” and the new “memory area” to be created as
`the virtual machine continues execution during the capture step (i). Id.
`Petitioner responds that Lim explicitly discloses creating a “new log of
`uncommitted updates” and a “memory area” in describing the use of copy-on-write
`techniques to capture the contents of memory and disk. Pet. Reply 11 (citing Ex.
`1030 ¶¶ 19-22). Specifically, Dr. Shenoy states that Lim discloses creating a log of
`uncommitted updates for keeping track of changes and that the log of changes can
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`be stored in a memory area. Ex. 1030 ¶¶ 19-22 (citing Ex. 1004, col. 11, l. 67 –
`col. 12, l. 3; col. 19, ll. 51-55; col. 23, ll. 52-55). In fact, Lim discloses “to keep a
`log of changes” and that “complete state vector” can be stored in “a dedicated
`memory partition.” Ex. 1004, col. 11, l. 67 – col. 12, l. 3; col. 19, ll. 51-55.
`Therefore, we agree with Petitioner that Lim discloses creating “a new log of
`uncommitted updates” and “a memory area.”
`Patent Owner additionally argues that Lim fails to disclose a virtual machine
`that is capable of continuing to execute during both the capture and copy steps. PO
`Resp. at 41. We are not persuaded by Patent Owner’s arguments as they not
`commensurate with the scope of the claims. Contrary to Patent Owner’s
`arguments, claims 11 and 22 recite “creating a memory area to capture writes to a
`memory of the first virtual machine, such that the first virtual machine can
`continue executing during (ii).” Claims 11 and 22 (emphasis added). Therefore,
`the limitation regarding continued execution is directed to the copy step (ii), not
`the capture step (i). Accordingly, claims 11 and 22 do not require that the virtual
`machine is capable of continuing to execute during both the capture and copy
`steps.
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`For the foregoing reasons, we conclude that Petitioner has demonstrated by a
`preponderance of the evidence that claims 11 and 22 are anticipated by Lim.
`B. Anticipation by VMware ESX of claims 1, 11, 12, and 22
`Overview of VMware ESX VMware ESX provides a user’s manual for
`installing and configuring the VMware ESX Server, including how to create and
`provision virtual machines and how to manage virtual machines. Ex. 1005, 18.
`VMware ESX discloses that a virtual machine can be suspended at any desired
`point in its operation and then later resumed at that same state. Ex. 1005, 97. In
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`order to capture the state of a virtual machine, VMware ESX discloses storing
`information in two files: (1) an .std file, which “contains the entire state of the
`virtual machine,” and (2) a redo-log file (.redo file) used to save changes while the
`virtual machine is operation. Ex. 1005, 58, 97-98, 149. Furthermore, VMware
`ESX describes that the .std file and the .redo file can be stored locally or remotely.
`See Ex. 1005, 97, 106.
`VMware ESX discloses the creation of a redo log (.redo file), which
`“contains the incremental changes to the disk image.” Ex. 1005, 106.
`Furthermore, VMware ESX discloses that the ESX server captures changes during
`a working session in redo log and “continually adds changes to the redo log until
`you remove the redo-log file or commit the changes using the commit command.”
`Ex. 1005, 39.
`1. Analysis
`a. Claims 1 and 12
`Petitioner asserts that claims 1 and 12 of the ’086 patent are unpatentable
`under 35 U.S.C. § 102(a) as anticipated by VMware ESX. Pet. 15-22. Patent
`Owner argues against Petitioner’s challenge based on VMware ESX on multiple
`grounds.
`First, Patent Owner counters that VMware ESX does not disclose a separate
`backup program that captures and copies state. PO Resp. 23. As discussed above,
`Patent Owner’s arguments regarding a “backup program” are unavailing because
`we decline to adopt Patent Owner’s narrow construction that claims 1 and 12
`require a backup program.
`Second, Patent Owner argues that the ’086 patent discloses backing up
`machines automatically and periodically, while VMware ESX requires the user to
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`perform commands manually each time the user intends to capture the state of the
`virtual machine. We are not persuaded by this argument because Patent Owner
`fails to direct us to any limitations in claims 1 and 12 that prohibit user interaction.
`Furthermore, as Petitioner notes, Patent Owner’s argument is contradicted by an
`embodiment in the ’086 patent that explains that “[v]arious operations have been
`assigned to the backup program… in other embodiments, various ones of these
`operations may be performed manually by a user.” Pet. Reply 8 (quoting Ex.
`1001, col. 14, ll. 7-11) (emphasis added).
`Third, Patent Owner further argues that that VMware ESX does not disclose
`capturing “the state of a virtual machine” because VMware ESX does not save
`configuration information and the VMware ESX redo log only saves changes to
`the virtual disk. PO Resp. 26-27. Patent Owner also argues that the information
`recorded in VMware ESX would not be sufficient to resume execution of the
`virtual machine. Id. at 27 (citing Ex. 2016, Declaration of Matthew Green (“Green
`Decl.”) ¶¶ 73-76). Petitioner counters that Patent Owner’s argument is premised
`on an impermissibly narrow construction that the “state of a virtual machine” must
`include virtual machine configuration information. Pet. Reply 9. We agree with
`Petitioner because, as discussed above, we do not construe the “state of a virtual
`machine” to require configuration information. Petitioner additionally asserts that
`Patent Owner’s argument that the redo logs do not “permit the virtual machine to
`resume execution of the application” is incorrect because redo logs can contain
`such information. Id. at 10 (citing Ex. 1030 ¶ 26). Dr. Shenoy states that VMware
`ESX discloses that that the redo log includes any modification to the virtual disk
`made during the execution of the virtual machine. Ex. 1030 ¶ 26 (citing Ex. 1005,
`39, 94 (describing the various modes of virtual disk operation, including persistent,
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`nonpersistent, undoable, and append)). In view of the cited disclosures and
`supporting testimony, we agree with Petitioner that VMware ESX discloses the
`claimed step of capturing the “state of a virtual machine.”
`Fourth, Patent Owner repeats its argument that claims 1 and 12 require that
`the state is captured while the virtual machine is executing and active.
`PO Resp. 31. As discussed above, we do not interpret claims 1 and 12 to require
`continued execution during capturing. Thus, we are not persuaded by Patent
`Owner’s argument that VMware ESX fails to disclose this limitation.
`For the foregoing reasons, we conclude that Petitioner has demonstrated by a
`preponderance of the evidence that claims 1 and 12 are anticipated by VMware
`ESX.
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`b. Claims 11 and 22
`Patent Owner argues that Petitioner’s challenge of anticipation of claims 11
`and 22 by VMware ESX fails because VMware ESX does not disclose a “new log
`of uncommitted updates,” as recited in the claims. PO Resp. 34. In particular,
`Patent Owner argues that because VMware ESX requires the virtual machine be
`suspended in order to capture its alleged state, it does not need to create a new log
`since there are no updates being made to the disk. Id. at 35.
`Patent Owner further argues that the ’086 patent discloses one log for storing
`uncommitted disk updates for non-persistent disks and a “different ‘new log’” to
`capture disk so that backup can be performed without actually suspending the
`virtual machines. Id. 34-35 (citing Ex. 1001, col. 7, l. 60 – col. 8, l. 3; col. 11, ll.
`31-44). Patent Owner fails to identify, however, the limitations in claims 11 and
`22 that require two different logs. Furthermore, Patent Owner does not dispute that
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`the redo log disclosed in VMware ESX provides a log of uncommitted updates.
`See PO Resp. 34. As Petitioner points out, claims 11 and 22 only require one log
`of uncommitted updates. Pet. Reply 12-13; see also claims 11 and 22 (“creating a
`new log of uncommitted updates for each virtual disk.”). Accordingly, we are not
`persuaded by Patent Owner’s arguments that VMware ESX does not disclose a
`“new log of uncommitted updates,” as recited in claims 11 and 22.
`For the foregoing reasons, we conclude that Petitioner has demonstrated by a
`preponderance of the evidence that claims 11 and 22 are anticipated by VMware
`ESX.
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`C. Anticipation by VMware GSG of claims 1, 11, 12, and 22
`1. Overview of VMware GSG
`Like VMware ESX, VMware GSG provides a user guide related to the
`VMware software for implementing virtual machines. Ex. 1006, 1-1. VMware
`GSG is titled “Getting Started Guide – Vmware 2.0 for Linux” and describes how
`to install, configure, and manage VMware 2.0 on computer systems executing the
`Linux operating system. Ex. 1006, 1-1. Similar to VMware ESX described above,
`VMware GSG discloses the ability to suspend and store virtual machines.
`Ex. 1006, 2-5 (“Using Suspend and Instant Restore . . . [y]ou can save the current
`state of your virtual machine.”). Specifically, VMware GSG discloses that
`“[s]uspend to disk allows you to save the current state of a virtual machine across
`reboots of your host operating system” so that without having to wait for the
`virtual machine to boot “you can quickly pick up work right where you stopped,
`with all the applications and documents you were working on open and ready for
`use.” Ex. 1006, 3-25.
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`VMware GSG further discloses that the “state of a virtual machine can be
`saved to disk or memory.” Ex. 1006, 3-25. “If you suspend to memory, the saved
`state of the virtual machine is available as long as the virtual machine is powered
`on,” and “[i]f you suspend a virtual machine to disk, you may power off after
`suspending.” Ex. 1006, 3- 25.
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`2. Analysis
`a. Claims 1 and 12
`Petitioner asserts that claims 1 and 12 of the ’086 patent are unpatentable
`under 35 U.S.C. § 102(b) as anticipated by VMware GSG. Pet. 22-28. Patent
`Owner reasserts many of the arguments asserted against VMware ESX to counter
`the challenge of claims 1 and 12 based on VMware GSG. See PO Resp. 22-34.
`Specifically, Patent Owner argues that (1) VMware GSG does not disclose a
`“backup program,” (2) does not disclose capturing the “state of a virtual machine,”
`and (3) does not disclose capturing the state while the virtual machine is executing.
`Id. We find these arguments deficient for the same reasons discussed above with
`respect to these arguments against VMware ESX.
`In addition to the similar arguments raised against VMware ESX, Patent
`Owner argues that VMware GSG fails to anticipate claims 1 and 12 because
`VMware GSG fails to disclose “copy[ing] at least a portion of the state” to a
`separate destination. PO Resp. 42. Patent Owner argues that the portion of
`VMware GSG relied upon by Petitioner for copying to a separate destination
`merely teaches that a user can pre-specify where the redo log can be stored and
`fails to teach moving the log from one location to another. Id. Furthermore, Patent
`Owner argues that VMware GSG fails to disclose a “separate copy step” but
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`suggests that the claimed capture and copy steps both occur simultaneously. Id. at
`43.
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`Petitioner counters that VMware GSG discloses that the virtual machine can
`be suspended to memory, which is a separate device from a disk that stores the
`redo logs. Pet. Reply 14 (citing Ex. 1006, 3-25 (“The state of a virtual machine
`can be saved to disk or memory.”)). Furthermore, Dr. Shenoy describes VMware
`GSG as disclosing that “[a]ll writes to an undoable disk issued by software running
`inside the virtual machines appear to be written to the disk, but are in fact stored in
`a temporary file (.REDO).” Ex. 1030 ¶ 33 (quoting Ex. 1006, 4-2)). Dr. Shenoy
`states that if the capturing and copying step were done simultaneously it would
`defeat the purpose of redirecting writes to the redo log as the data would already
`reside on the disk. Ex. 1030 ¶ 34. Thus, Dr. Shenoy opines that, in accordance
`with the disclosure in VMware GSG, writes intended for the disk are first stored in
`memory (RAM or processor register memory) and then copied into the redo log
`file. Id. at ¶¶ 34-35. We are persuaded by the cited disclosure, and the supporting
`testimony from Dr. Shenoy, that VMware GSG discloses the claimed step of
`“copy[ing] at least a portion of the state” to a separate destination.
`For the foregoing reasons, we conclude that Petitioner has demonstrated by a
`preponderance of the evidence that claims 1 and 12 are anticipated by VMware
`GSG.
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`b. Claims 11 and 22
`Patent Owner argues that Petitioner’s challenge of anticipation of claims 11
`and 22 by VMware GSG fails because VMware GSG does not disclose a “new log
`of uncommitted updates” and does not disclose creating a “memory area to capture
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`writes to memory,” as required by claims 11 and 22. PO Resp. 38-39. Patent
`Owner’s arguments are similar to those advanced against the challenge of claims 1
`and 12 based on VMware ESX. See PO Resp. 38-40. We find these arguments
`deficient for the same reasons discussed above with respect to these arguments
`against VMware ESX.
`For the foregoing reasons, we conclude that Petitioner has demonstrated by a
`preponderance of the evidence that claims 11 and 22 are anticipated by VMware
`GSG.
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`D. Anticipation by Suzaki of claims 1 and 12
`1. Overview of Suzaki
`Suzaki is titled “Checkpoint for Network Transferable Computer,” and it
`describes a system that enables the transfer of the running OS image (Snapshot) to
`another machine through the use of a virtual machine. Ex. 1008, 1. Suzaki
`discloses that the prior art systems had to stop the virtual machine to get the
`snapshot because the snapshot was taken in hibernation, but the “new version
`enables the taking of the snapshot without stopping the virtual machine.” Ex.
`1008, 1. Suzaki discloses that “‘Network transferable computer’ [1] is a system
`that makes it possible to continue working at home without physically bringing a
`computer from your office.” Ex. 1008, 2. Figure 1 of Suzaki is reproduced below:
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`SSuzaki Figuure 1
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`napshot” oof “your offfice comp
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`As seenn in Figure
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`discloses ttaking a “s
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`and recrreating whhat you werre doing onn it on youur home commputer bassed on the
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`executaable image..” Ex. 10008, 2. For eexample, SSuzaki disccloses that
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`possiblee to pause a QuickTimme movie on an X WWindow maachine andd continue tto
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`play it oon another machine.”” Ex. 10088, 2. Figurre 3 of Suz
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`aki is reprooduced bellow:
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`Figure 3 of Suzuki illustrates an example of a movie playback process. Suzaki
`discloses that its system makes it “possible to pause a QuickTime movie played by
`XAnim on a desktop computer, transfer the execution image via network or a PC
`card to a notebook computer, and resume the movie (FIG. 3).” Ex. 1008, 5.
`Additionally, Suzaki discloses that the “[c]heckpoint function makes it
`possible to save current state information without stopping the execution of the
`process.” Ex. 1008, 5. Furthermore, Suzaki discloses that the “‘[n]etwork
`transferable computer’ not only transfers a disk image but can also recreate the
`same OS environment on another computer.” Ex. 1008, 3.
`2. Analysis
`Petitioner asserts that claims 1 and 12 of the ’086 patent are unpatentable
`under 35 U.S.C. § 102(a) as anticipated by Suzaki. Pet. 29-33. Patent Owner
`argues against Petitioner’s challenge based on Suzaki on multiple grounds.
`First, Patent Owner contends that Suzaki does not disclose a backup
`program. PO Resp. 45. In particular, Patent Owner argues that Suzaki does not
`use a VM kernel, let alone a separate backup program that interfaces with such a
`kernel in order to capture the state of a virtual machine. Id. As discussed above,
`claims 1 and 12 do not require a backup program. Additionally, as applied to the
`claimed limitation of capture a state of the virtual machine, Suzaki discloses a
`“checkpoint function” that makes it possible to take a snapshot of the state
`information without stopping the virtual computer. Pet. Reply 14 (citing Ex. 1007,
`5).
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`Patent Owner further argues that Suzaki does not disclose capturing “the
`state of [a] virtual machine.” PO Resp. 46. In particular, Patent Owner contends
`that the state must correspond to a particular “point in time in the executing of the
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`virtual [] machine,” such that the virtual machine, including all its processes, can
`be resumed from a single point in time. Id. (citing Ex. 1001, col. 3, ll. 7-17).
`Patent Owner argues that Suzaki fails to disclose capturing the claimed “at a point
`in time” because Suzaki discloses recording information about each application
`indi