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 REQUEST FOR
`REHEARING PURSUANT TO 37 C.F.R. § 42.71(C) FOR PARTIAL
`RECONSIDERATION OF ITS DECISION TO INSTITUTE TRIAL
`
`
`
`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 REQUEST FOR
`REHEARING PURSUANT TO 37 C.F.R. § 42.71(C) FOR PARTIAL
`RECONSIDERATION OF ITS DECISION TO INSTITUTE TRIAL
`
`
`
`Case IPR2013-00150
`U.S. Patent No. 7,093,086
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ...........................................................................................1
`
`LEGAL STANDARDS ...................................................................................2
`
`A.
`
`B.
`
`The Standard Of Review For Rehearing...............................................2
`
`The Standard For Instituting An Inter Partes Review..........................3
`
`III. ARGUMENT...................................................................................................4
`
`A.
`
`B.
`
`C.
`
`Symantec Separately Contested Petitioner’s Challenge Based On
`Suzaki And Wang..................................................................................4
`
`Symantec Separately Argued That Suzaki And Wang Were Not
`Properly Combinable.............................................................................5
`
`Symantec Separately Argued That Suzaki And Wang, Even If
`Combined, Lack Material Limitations ..................................................7
`
`IV. CONCLUSION................................................................................................8
`
`i
`
`
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`Case IPR2013-00150
`U.S. Patent No. 7,093,086
`
`TABLE OF AUTHORITIES
`
`CASES
`Gose v. United States Postal Service,
`451 F.3d 831 (Fed. Cir. 2006)....................................................................3
`
`O'Keefe v. U.S. Postal Service,
`318 F.3d 1310 (Fed. Cir. 2002)..................................................................3
`
`STATUTES AND RULES
`
`37 C.F.R. § 42.71.............................................................................................2
`
`37 C.F.R. § 42.71(c) ....................................................................................1, 2
`
`37 C.F.R. § 42.71(d)........................................................................................3
`
`37 C.F.R. § 42.108(c) ......................................................................................3
`
`MISCELLANEOUS
`
`Trial Practice Guide,
`77 Fed. Reg. 48756, 48757 (August 14, 2012) ..........................................3
`
`ii
`
`
`
`Case IPR2013-00150
`U.S. Patent No. 7,093,086
`
`Patent Owner Symantec Corporation (“Symantec”) respectfully requests a
`
`rehearing pursuant to 37 C.F.R. § 42.71(c) for partial reconsideration of the
`
`Board’s Decision to Institute Trial (Paper No. 10) with respect to claims 11 and 22
`
`in view of Suzaki and Wang. The Board’s decision to institute trial in this
`
`proceeding with respect
`
`to claims 11 and 22 in view of Suzaki and Wang
`
`overlooked Patent Owner’s arguments in its Preliminary Response contesting this
`
`ground.
`
`I.
`
`INTRODUCTION
`On August 7, 2013, the Board authorized the institution of this inter partes
`
`review for U.S. Patent No. 7,093,086 (“the ‘086 patent”) on five (5) of the grounds
`
`presented in the petition. In particular, the Board authorized the Petitioner to raise
`
`the following five (5) grounds of invalidity during this inter partes review,
`
`IPR2013-00150:
`
`The Petition is granted as to the following grounds
`proposed:
`A.
`Anticipation of Claims 1, 11, 12, and 22 by Lim.
`B.
`Anticipation of Claims 1, 11, 12, and 22 by
`VMware ESX.
`C.
`Anticipation of Claims 1, 11, 12, and 22 by
`VMware GSG.
`D.
`Anticipation of Claims 1 and 12 by Suzaki.
`
`1
`
`
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`Case IPR2013-00150
`U.S. Patent No. 7,093,086
`
`Obviousness [sic] of Claims 11 and 22 in view of
`E.
`Suzaki and Wang.
`The Petition is denied as to all other grounds proposed.
`
`Decision to Institute (Paper No. 10) at 24.
`
`Symantec respectfully requests rehearing because the Board overlooked
`
`Patent Owner’s arguments in its Preliminary Response separately contesting
`
`Petitioner’s challenge based on Suzaki (VEEAM Exs. 1007-1009) and Wang
`
`(VEEAM Ex. 1010). See Paper No. 9 at 46-48. It is respectfully submitted that
`
`the Board reconsider Veeam’s Proposed Ground 5 in light of these arguments
`
`and deny the Petition with respect to obviousness of claims 11 and 22 in view of
`
`Suzaki and Wang. This Request for Rehearing on behalf of Symantec is filed
`
`within 14 days of the Decision (Paper No. 10) and is timely under 37 C.F.R. §
`
`42.71.
`
`II.
`
`LEGAL STANDARDS
`
`A.
`
`The Standard Of Review For Rehearing
`
`Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a
`
`panel will review the decision for an abuse of discretion.” The Federal Circuit has
`
`held that “[a]n abuse of discretion occurs where the decision is based on an
`
`erroneous interpretation of the law, on factual findings that are not supported by
`
`substantial evidence, or represents an unreasonable judgment in weighing relevant
`
`2
`
`
`
`Case IPR2013-00150
`U.S. Patent No. 7,093,086
`
`factors.” Gose v. United States Postal Service, 451 F.3d 831, 836 (Fed. Cir. 2006)
`
`(internal quotations omitted); see also O'Keefe v. U.S. Postal Service, 318 F.3d
`
`1310, 1314 (Fed. Cir. 2002) (“The Board necessarily abuses its discretion when it
`
`rests its decision on factual findings unsupported by substantial evidence.”)
`
`(internal quotations omitted).
`
`Under 37 C.F.R. § 42.71(d), “[t]he request must specifically identify all
`
`matters the party believes the Board misapprehended or overlooked, and the place
`
`where each matter was previously addressed in a motion, an opposition, or a
`
`reply.”
`
`The Standard For Instituting An Inter Partes Review
`B.
`Under 37 C.F.R. § 42.108(c), an inter partes review will only be “instituted
`
`for a ground of unpatentability” where the Board decides that the evidence put
`
`forward in a petition demonstrates that there is “a reasonable likelihood that at least
`
`one of the claims challenged in the petition is unpatentable.”
`
`37 C.F.R. §
`
`42.108(c). “In instituting a trial, the Board will narrow the issues for final decision
`
`by authorizing the trial to proceed only on the challenged claims for which the
`
`threshold standards for the proceeding have been met. Further, the Board will
`
`identify, on a claim-by-claim basis, the grounds on which the trial will proceed.
`
`Any claim or issue not included in the authorization for review will not be part of
`
`the trial.” See Trial Practice Guide, 77 Fed. Reg. 48756, 48757 (August 14, 2012).
`
`3
`
`
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`Case IPR2013-00150
`U.S. Patent No. 7,093,086
`
`III. ARGUMENT
`
`A.
`
`Symantec Separately Contested Petitioner’s Challenge
`Based On Suzaki And Wang
`
`After stating Petitioner’s position regarding Ground 5, the Board found that
`
`“Patent Owner does not contest separately Petitioner’s challenge based on Suzaki
`
`and Wang. Therefore, we determine that Petitioner has demonstrated that there is
`
`a reasonable likelihood that it will prevail with respect to claims 11 and 22 based
`
`on the ground that these claims are obvious in view of Suzaki and Wang.” Paper
`
`No. 10 at 20-21 (emphasis added). Thus, the Board instituted inter partes review
`
`based on the Suzaki and Wang combination believing that Symantec did not
`
`specifically contest this ground. Symantec, however, contested (at pages 46-48 of
`
`its Preliminary Response) Veeam’s Proposed Ground 5 on several grounds.
`
`First, Symantec set forth why the alleged combination in Ground 5 (Suzaki
`
`in view of Wang) was improper. Paper No. 9 at 46-47. Symantec further set forth
`
`that the combination still failed to teach each and every limitation set forth in
`
`claims 11 and 22, even if these references could be properly combined. Id. at 47-
`
`48.
`
`Thus, Symantec respectfully submits that the Board overlooked Symantec’s
`
`argument at pages 46-48 of its Preliminary Response where Symantec separately
`
`contested Veeam’s Proposed Ground 5. Accordingly, Symantec respectfully
`
`4
`
`
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`Case IPR2013-00150
`U.S. Patent No. 7,093,086
`
`requests that the Board reconsider Veeam’s Proposed Ground 5 in light of these
`
`arguments and withdraw its decision granting the Petition with respect to this
`
`Ground.
`
`B.
`
`Symantec Separately Argued That Suzaki And Wang Were
`Not Properly Combinable
`
`Symantec separately argued, on pages 46-47 of Paper No. 9, against the
`
`proposed combination of Suzaki and Wang. For example, Symantec demonstrated
`
`(and the Board did not dispute) that it is the operating system in Suzaki which
`
`captures state information in order to maintain the current state of a virtual
`
`machine.
`
`Id. at 39 and 46. Symantec also stated that, unlike Suzaki, Wang
`
`discloses an application that allegedly captures state (using an UNDO log) in a
`
`transaction based system. Id. at 46-47. Importantly, Wang’s application requires
`
`discrete transactions (i.e., instructions that are executed over a period of time,
`
`which is defined by start/end points). Wang at 306. Thus, one of ordinary skill in
`
`the art would not have combined Wang’s UNDO log (which is part of a
`
`5
`
`
`
`Case IPR2013-00150
`U.S. Patent No. 7,093,086
`
`transaction based application) with Suzaki’s non-transaction based operating
`
`system.1
`
`Moreover, Symantec also stated that Wang “requires that ‘the files and
`
`volatile memory updated by an application are not shared by any other
`
`application’ (emphasis added).” Paper No. 9 at 46. Thus, Wang does not teach
`
`how to capture state in an environment like Suzaki’s in which resources such as
`
`files and memory are necessarily shared. Id. Furthermore, Symantec also stated
`
`that “Petitioner does not set forth any method or other teaching for modifying the
`
`operating system in the Suzaki Paper such that it does not access any resources
`
`except the ones that are ‘private’ to the updating application as required by the
`
`Suzaki Paper.” Id. at 47.
`
`1 As Wang makes clear, the end points are used to determine the success/failure of
`
`the transaction, where failures result in the rollback to the previous state. Wang at
`
`306-07, Paper No. 9 at 47. Such failures and rollbacks, however, are irrelevant to
`
`maintaining current state (Suzaki’s main purpose), because there are no start/end
`
`points or even transactions, and, therefore, nothing to rollback. Paper No. 9 at 39
`
`and 46.
`
`6
`
`
`
`Case IPR2013-00150
`U.S. Patent No. 7,093,086
`
`C.
`
`Symantec Separately Argued That Suzaki And Wang, Even
`If Combined, Lack Material Limitations
`
`Symantec separately argued, on pages 47-48 of Paper No. 9, that the
`
`proposed combination of Suzaki and Wang lack material limitations of claims 11
`
`and 22. For example, Symantec argued that “the alleged combination fails to
`
`teach or suggest ‘creating a new log of uncommitted updates.’” Id. at 47
`
`(emphasis in original). Recognizing that “Suzaki does not explicitly disclose
`
`‘creating a new log of uncommitted updates,’” Petitioner relied on Wang’s
`
`“UNDO log” to fulfill this limitation. Paper No. 1 at 34-35.
`
`However, as Symantec clearly explained on page 47 of Paper No. 9, “[t]he
`
`so-called UNDO logs in the Wang Paper do not capture updates as required by the
`
`claims, and instead stores prior disk data for the purpose of rolling back to a
`
`previous version.” This prior disk data is for “undoing file updates upon a
`
`rollback,” and not for the “updates” taught by the patent.2
`
`Id. Thus, Symantec
`
`argued that Wang fails to teach or suggest creating a log of “uncommitted
`
`updates,” as required by claims 11 and 22. Id.
`
`2 Furthermore, if the changes captured by Wang’s UNDO log are not committed to
`
`the disk, then there would be nothing to rollback (UNDO). Thus, it cannot be said
`
`that Wang’s UNDO log includes “uncommitted updates” as required by the claims.
`
`7
`
`
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`Case IPR2013-00150
`U.S. Patent No. 7,093,086
`
`IV. CONCLUSION
`
`In view of the foregoing, Symantec respectfully requests that the Board
`
`reconsider Veeam’s Proposed Ground 5 regarding claims 11 and 22 in light of
`
`Symantec’s previously submitted arguments and withdraw its decision granting
`
`the Petition with respect to the obviousness of claims 11 and 22 in view of
`
`Suzaki and Wang.
`
`Respectfully submitted,
`
`By: /Joseph J. Richetti, Reg. No. 47024/
`Joseph J. Richetti
`Reg. No. 47,024
`Lawrence G. Kurland
`Reg. No. 24,895
`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
`
`Date: August 21, 2013
`
`
`
`Case IPR2013-00150
`U.S. Patent No. 7,093,086
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the foregoing PATENT OWNER’S
`
`REQUEST FOR REHEARING PURSUANT TO 37 C.F.R. § 42.71(c) FOR
`
`PARTIAL RECONSIDERATION OF ITS DECISION TO INSTITUTE TRIAL
`
`was served electronically via e-mail on August 21, 2013, 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: August 21, 2013
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