IPR2013-00150 of
`
`US. 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
`
`US. Patent No. 7,093,086
`
`
`
`VEEAM SOFTWARE CORPORATION’S MOTIOE TO COMPEL
`
`THE DEPOSITION OF VMWARE
`
`ON THE PUBLIC AVAILABILITY OF EXHIBIT E005
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`US. Patent and Trademark Office
`
`PO. Box 1450
`
`Alexandria, VA 22313-1450
`
`
`
`US. 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
`
`US. Patent No. 7,093,086
`
`
`
`VEEAM SOFTWARE CORPORATION’S MOTIOE TO COMPEL
`
`THE DEPOSITION OF VMWARE
`
`ON THE PUBLIC AVAILABILITY OF EXHIBIT E005
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`US. Patent and Trademark Office
`
`PO. Box 1450
`
`Alexandria, VA 22313-1450
`
`
`
`IPR2013-00150 of
`
`US. Patent No. 7,093,086
`
`Table of Contents
`
`I.
`
`Introduction ....................................................................................................... 1
`
`H.
`
`Background Facts .......................................................................................... 2
`
`A.
`
`Symantec’s objections to the ESX Manual .................................................. 2
`
`The evidence of record showing the ESX Manual’s public availability in
`B.
`mid-2001 .............................................................................................. -. ................. 4
`
`C.
`
`Pertinent differences between the ESX Server User Manual and the
`
`VMware 2.0 for Linux Getting Started Guide ....................................................... 6
`
`III. Argument ........................................................................................................ S
`
`A.
`
`Veeam has satisfied the five Garmin factors .............................................. 10
`
`B.
`
`The Getting Started Guide is not sufficient................................................ 11
`
`l. The two references describe two distinct products .................................... 12
`
`2. The Board and Symantec have recognized material differences between the
`references ........................................................................................................... 12
`
`IV. Conclusion............................................ 14
`
`-ii-
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`
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`IPR2013-00150 of
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`US. Patent No. 7,093,086
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`I. Introduction
`
`Pursuant to 37 CPR. § 42.52, Veeam respectfully seeks authorization to
`
`compel third party Dan Scales, Principal Engineer at VMware, Inc., and member of
`
`the team that created VMware ESX Server, to testify by deposition regarding the
`
`public availability of VMware’s ESX Server User’s Manual Version 1.0 (“ESX
`
`Manual,” submitted as EX. 1005), which VMware distributed with its ESX Server
`
`Version 1.0.1 in mid-2001, before the March 28, 2002 filing date of the ’086 patent.1
`
`Veeam expects VMware’s testimony to corroborate the 2001 copyright shown
`
`on the face of electronic and physical copies of the ESX Manual, the date printed on
`
`the CD-ROM containing the ESX Server product and the ESX Manual, and the dates
`
`on the various archived web pages showing the availability of the ESX Server
`
`product V101 and its documentation.
`
`Taken together, the ESX Manual and Veeam’s supporting evidence show that
`
`the ESX Manual was publicly available, and Symantec has presented no evidence to
`
`the contrary. Nevertheless, Symantec maintains its objections regarding the public
`
`availability of this reference.
`
`1 Subject to VMware proffering a more knowledgeable witness.
`
`-1-
`
`
`
`Veeam has exhausted other sources of evidence. VMware should be able to
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`IPR2013-00150 of
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`US. Patent No. 7,093,086
`
`testify that it made its ESX Manual available to the public in 2001, as Show: by all of
`
`the evidence already of record. Testifying on this limited topic should not be unduly
`
`burdensome because the deposition will be very brief and the ESX Manual is a
`
`non-cumulative reference that anticipates all four challenged claims of the ’086
`
`patent.
`
`II. Background yacts
`
`The Board instituted this IPR on August 7, 2013, finding that Veeam had
`
`demonstrated a reasonable likelihood of prevailing on the grounds that claims 1, 11,
`
`12 and 22 were anticipated by the ESX Manual, as well as the Getting Started Guide
`
`for another VMware Product, VMware 2.0 for Linux, and the Lim patent. (Decision
`
`to Institute, Paper 10 (August 7, 2013) (“Decision”)). The Board also found that
`
`Veeam had demonstrated a reasonable likelihood of prevailing under § 103 over two
`
`other references. Id.
`
`A. Symantec’s objections to the ESX Manual
`
`On August 21, 2013, Symantec objected on various grounds to all of the
`
`applied references. (Symantec’s Obj. to Evid. (Ex. 1014)). Symantec specifically
`
`contended that the ESX Manual is not authentic, is inadmissible hearsay, and is not
`
`prior art. Id. at 2. Symantec also objected on the grounds of authenticity, hearsay, and
`
`-2-
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`
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`IPR2013—00150 of
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`US. Patent No. 7,093,086
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`relevance to Exhibit 1012, a VMware web page with a link to buy the ESX Server
`
`product that was captured by the Internet Archive on June 23, 2001. Id. at 2-3.
`
`To address Symantec’s objections, Veeam served supplemental evidence on
`
`Symantec on September 5, 2013. (Email and Cert. of Serv. (EX.1015)). Veeam
`
`included a declaration from Daniel Block, an attorney at SKGF who Visited
`
`VMware2 and took photographs of VMware’s copies of its software and user
`
`manuals, and declarations from Christopher Butler, an Internet Archive employee
`
`who authenticated Exhibit 1012 and other archived VMware web pages. Id.
`
`On September 12, 2013, Symantec objected to Veeam’s supplemental
`
`evidence on various grounds. (Symantec’s Obj. to Suppl. Evid. (Ex. 1016)). After a
`
`meet and confer, Veeam served a replacement Block declaration on October 4, 2013
`
`to address many of Symantec’s concerns. (Email and Repl. Block Decl. (Ex. 1017)).
`
`Eventually, the parties resolved all of Symantec’s objections to the applied
`
`references except for the ESX Manual. During the October 28, 2013 conference call,
`
`Symantec explained to the Board that it believes the proffered evidence does not
`
`show that the ESX software or documentation was actually available in 2001, and
`
`that it intends to file a motion to exclude the ESX Manual reference. Veeam believes
`
`
`
`2 VMware was unwilling to provide a declaration.
`
`-3-
`
`
`
`US. Patent No. 7,093,086
`it already has provided sufficient evidence to authenticate the ESX Manual and prove
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`IPR2013-00150 of
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`that it was publicly available prior art to the ’086 patent, but Symantec’s continued
`
`insistence on its objections to the ESX Manual leaves Veeam no other option than to
`
`seek this third-party discovery.
`
`B. The evidence of record showing the ESX Manual’s public availability in
`mid-2001
`
`The inside cover of the ESX Manual shows a copyright date of 2001 , before
`
`the March 2002 filing date of the ’086 patent. (Ex. 1005 at 2). Veeam confirmed that
`
`VMware has an identical hardcopy version of the manual with the same copyéight
`
`date. (Exhibit A to Repl. Block Decl. at 18 (EX.1018)).
`
`Veeam also confirmed that the same ESX Manual is included on the CD-ROM
`
`for version 1.0.1 of VMware’s ESX Server software. (Directory of Exh. F to Repl.
`
`Block Decl. (EX. 1020) (the ESX Manual is the file titled “ESX_10_M.PDF”)). This
`
`CD-ROM is also marked with a copyright date of 2001:
`
`
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`IPR2013-00150 of
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`US. Patent No. 7,093,086
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`
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`(Exh. A of Repl. Block Decl. at 17 (showing a 2001 copyright date) (EX. 1018).
`
`Veeam also established that version 1.0.1 of the ESX Server product was on
`
`sale in 2001. On June 23, 2001, the Internet Archive captured a VMware web page
`
`that shows VMware offering for sale ESX Server v1.0.1 software:
`
`Server Products
`
`VMware GSX Serve! Beta
`
`(for Windows NT/2000)
`
`Bx IW"
`
`VMware GSX Sewer 1.0.1
`
`(for Linux)
`
`VMware esx Server 1.0.1
`
`Bu! I11! IW"
`
`flux IW
`
`(EX. 1012 (authenticated by Butler Affidavit of August 26, 2013 (EX. 1021)). The
`
`“Buy” link leads to a page telling the user to contact sales@VMware.com for “details
`
`and availability.”
`
`On June 15, 2001, the Internet Archive also captured a VMware web page that
`
`shows the availability of documentation for ESX Server v1.0.1:
`
`-5-
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`
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`IPR2013-00150 of
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`US. Patent No. 7,093,086
`
`-# VMware esx Server
`W
`
`Latest Version:
`1 .0.1
`
`Note: If you have purchased or are currently
`evaluating VMware ESX Server. you have been
`supplied Mth a Iogln and password to access the
`product documentation; click the Documentation link
`to sign in. To evaluate VMware ESX Server, please
`oontactW or all 1-877-4VMWARE
`(486-9273) in the US and Canada. 2650-4755000
`elsewhere.
`
`(Butler Affidavit of July 15, 2013 (EX. 1022)). Internet Archive’s spiders could not
`
`download and archive the documentation because the “Documentation” link was
`
`password protected.
`
`C. Pertinent differences between the ESX Server User Manual and the
`
`VMware 21% for Linux Getting Started Guide
`
`Although both of these references are invalidating prior art, the references
`
`address two distinct products with distinct features that are directed to two different
`
`target audiences.
`
`The ESX Manual is a user manual for VMware’s ESX Server product, and the
`
`Getting Started Guide is a guide to VMware’s desktop product:
`
`Ill;-U
`
`Sewer
`Product-is
`
`GSX Server
`"'3'
`' VMware ESX Server
`
`(VMware Products web page of June 3, 2001(EX. 1023)).
`
`-6-
`
`
`
`US. Patent No. 7,093,086
`The ESX Server product is for enterprise IT customers who need advanced
`
`IPR2013-00150 of
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`workload management capabilities and guaranteed quality of service. (VMware
`
`Server Products web page of June 5, 2001 (Ex. 1024). The ESX Server product
`
`includes its own operating system with its own kernel (“VMkernel”):
`
`VMware Server Products - Comparison
`
`ESX Server
`
`GSX Servea'
`
`Target Solutions
`
`Scalabflity
`
`Host 05 Platform
`
`TypEcal Workload _
`
`Typical Simultaneous
`Virtual Machines _
`Web gases: Management
`
`" Remote Display-r
`Perl Scripting
`
`I
`
`_
`
`Network Performanfe
`Disk Perfonnaréce
`
`CW Resource Governing
`
`Memory Resource Control
`
`VMware Workstation
`
`Compamka with
`
`Wham-720M
`
`161.; see also EX. 1005 at 18; ’086 patent at 6: 1 -2 (“In one embodiment, the VM kernel
`
`may be the ESX product available from VMWare, Inc.”)).
`
`In contrast, the VMware 2.0 for Linux product creates virtual machines on a
`
`desktop computer:
`
`
`
`VMware Desktop Products - Comparison
`
`Workstation
`
`Express
`
`IPR2013-00150 of
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`US. Patent No. 7,093,086
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`6 '
`
`9 9
`
`install guest operating system without repartitioning
`Enjoy full netwomieg support for virtual machines
`Work on Linux systems
`Work on Windows NT and Windows 2000 syetems
`Run virtual machines in full-screen
`
`Rue multiple virtual machines concureretfy
`gun Windows 95 or Mndows 98
`
`Run DOS,WIndows 3 rmwem NT or Window; 2000
`Run L%nux and FreeBSD
`
`Suspend and resume wing instara Eeszore
`
`Rollbadr changes using undoabie disks
`Boot from existing panama
`him-r
`
`#90900009000
`
`(VMware Desktop Products web page of June 5, 2001 (Ex. 1025)). Unlike the ESX
`
`Server product, it runs on top of the desktop’s existing operating system, i.e., Linux.
`
`(Ex. 1006 at 1—2). Although the ’086 patent specification discusses VMware’s ESX
`
`Server and GSX Server products, it does not mention VMware’s desktop products
`
`for Linux or other operating systems.3
`
`III. Argument
`
`The record evidence identified above shows that the ESX Manual was indeed
`
`available in 2001, and Symantec has produced no evidence to the contrary.
`
`3 Symantec incorrectly states that the VMware desktop product described in
`
`the Getting Started Guide is mentioned in the’086 patent. (Preliminary Response at l,
`
`3, 30 & n.9). The ’086 patent mentions only VMware’s ESX Server and GSX Server
`
`products.
`
`
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`IPR2013-00150 of
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`US. Patent No. 7,093,086
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`Nevertheless, Symantec maintains its objections that the above evidence is
`
`insufficient to establish public availability. Accordingly, unless the Board rules that
`
`evidence already of record is sufficient to establish the prior public availability of the
`
`ESX Manual, Veeam seeks to compel testimony from Dan Scales at VMware
`
`regarding the ESX Manual’s availability to customers purchasing ESX Server v1.0.1
`
`before March 28, 2002, including (a) the public availability of the hardcopy version
`
`of the ESX Manual maintained by VMware, (b) the public’s ability to download the
`
`ESX Manual from VMware’s website, and (c) the public availability of the ESX
`
`Server V1.0.1 CD—ROM maintained by VMware.
`
`The Board should authorize Veeam to subpoena Dan Scales of VMware under
`
`35 U.S.C. § 24 because he has firsthand knowledge that VMware made its ESX
`
`Manual publicly available before March 28, 2002. This exercise adds unnecessary
`
`expense to this procedure because Veeam has produced other evidence that the ESX
`
`Manual was publicly available in 2001: the 2001 copyright date on the face of the
`
`reference itself, the copyright date on the ESX Server V1 .0.1 CD—ROM, and the
`
`archived copies of VMware’s web pages dating from mid-2001. But with no
`
`evidence to the contrary, Symantec demands more. Veeam must therefore turn to
`
`VMware, and ask it to confirm that it made the ESX Server manual publicly available
`
`before March 28, 2002.
`
`
`
`IPR2013-00150 of
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`US. Patent No. 7,093,086
`
`A. Veeam has satisfied the five Garmin factors
`
`The Board uses the five Garmin factors to determine whether a discovery
`
`request meets the “interest ofj ustice” standard codified at 35 U.S.C. § 316(a)(5) and
`
`37 CPR. §§ 42.51(b)£:2)(i). Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC,
`
`IPR2012-00001, Paper No. 26 at 6-7 (PTAB, Mar. 5, 2013). Veeam addresses each
`
`factor in turn.
`
`First, Veeam has already produced evidence showing “more than a possibility
`
`and mere allegation” that the deposition will result in finding something useful.
`
`Specifically, Veeam expects to elicit testimony confirming that the ESX manual was
`
`publicly available before March 2002 as shown by 2001 copyright date on the face of
`
`the reference, the CD—ROM holding the reference, and the archived copies of
`
`VMware’s web pages.
`
`Second, Veeam is not requesting “litigation positions and underlying basis.” It
`
`merely seeks additional evidence confirming that the ESX Manual was publicly
`
`available before March 2002 as shown by evidence already of record.
`
`Third, Veeam does not have the “ability to generate equivalent information by
`
`other means.” The evidence already of record shows public availability, but
`
`Symantec demands more. Because VMware made the ESX Manual available to the
`
`-10-
`
`
`
`US. Patent No. 7,093,086
`public, it should be able to confirm that it made the ESX Manual available before
`
`IPR2013-00150 of
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`March 28, 2002.
`
`Fourth, Veeam will verbally provide “easily understandable instructions”
`
`during the deposition, which will be narrowly focused on when the ESX Manual was
`
`made publicly available.
`
`Fifth, Veeam’s “requests [are] not overly burdensome to answer.” Veeam will
`
`merely ask VMware whether the ESX Manual was publicly available before March
`
`28, 2002 to customers purchasing ESX Server v1.0.1, including (a) the public
`
`availability of the hardcopy version of the ESX Manual maintained by VMware, (b)
`
`the public’s ability to download the ESX Manual from VMware’s website, and (c)
`
`the public availability of the ESX Server v1.0.1 CD-ROM maintained by VMware.
`
`B. The Getting Started Guide is not sufficient
`
`The Board ordered that that in addition to addressing the five Garnein factors,
`
`“Petitioner” s motion will address the question of why the other VMware manual (Ex.
`
`”4
`1006) is not sufficient. These two references -— ESX Manual and Getting Started
`
`
`4 Whether the ESX Manual is cumulative to another reference describing
`
`another VMware product goes to the teachings of each of the references, i.e., the
`
`merits of this IPR. The parties should address such issues according to the procedures
`
`established for IPRs: Patent Owner’s Response, Petitioner’s Reply, etc. Although a
`
`-11-
`
`
`
`US. Patent No. 7,093,086
`Guide —- describe two distinct products, and the Board has already recognized that
`
`IPR2013-00150 of
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`they are not cumulative. As such, the Getting Started Guide is not sufficient.
`
`1. The two references describe two distinct products
`
`As explained in the Background Facts section above, the Getting Started
`
`Guide and the ESX Manual have different disclosures because they address two
`
`different VMware products with different features. Specifically, the Getting Started
`
`Guide describes VMware’s product for a desktop computer already running the
`
`Linux operating system. In contrast, the ESX Manual describes the ESX Server
`
`product for enterprise IT customers that need advanced features, and includes its own
`
`operating system using VMware’s VMkernel.
`
`2. The Board and Symantec have recognized material differences
`between the references
`
`Symantec may have confused the issue in its Preliminary Response by
`
`incorrectly contending that the two references discuss the same product and are
`
`cumulative. (E. g, Symantec’s Prelim. Resp, paper 9, at l, 8, 27, 51 (May 20, 2013)
`
`(“POPR”)). The Board, however, recognized at least some differences between the
`
`ESX Manual and the Getting Started Guide in its Decision to Institute. For example,
`
`
`
`motion to compel discovery is not the proper vehicle to address the merits of this
`
`IPR, Veeam discusses this issue now in response to the Board’s order.
`
`-12-
`
`
`
`US. Patent No. 7,093,086
`in discussing the copying to a “destination separate from a storage device” claim
`
`IPR2013-00150 of
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`element, the Board recognized that the ESX Manual “discloses that the .redo file
`
`containing the changes to the disk image can be ‘transported to a remote site.’”
`
`(Decision at 14 (citing ESX Manual at 106)). In contrast, the Board recognized that
`
`the Getting Started Guide “discloses that ‘[t]he redo log file is placed in the same
`
`directory as the disk file by default. However, the location ofthe redo Zogfile can be
`
`changed in the Configuration Editor under Misc.
`
`(Decision 16 (quoting Getting
`
`3”
`
`Started Guide at 3-9) (emphasis added by the Board); see also Petition for IPR, paper
`
`2, at 21—22, 28 (Feb. 14, 2013) (separately discussing each reference’s teaching of
`
`this claim element)).
`
`In addition, Symantec recognized differences between these references in its
`
`Preliminary Response. For example, Symantec argued that the “separate destination”
`
`element was not met by the ESX Manual’s teaching of a “remote site” because “the
`
`
`‘remote site’ of the VMware Manual is not remote at all; it is the same storage device
`
`to which the virtual machine was suspended.” (POPR at 33-34 (emphasis in original).
`
`In contrast, Symantec argued that Getting Started Guide’s teaching that “the location
`
`of the redo log file can be changed” did not teach the “separate destination” element
`
`because it “teaches storing the redo log in a different directory (though not
`
`-13-
`
`
`
`US. Patent No. 7,093,086
`necessarily a different storage device) as the disk.” (POPR at 34-35) (emphasis in
`
`IPR2013-00150 of
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`original).
`
`IV. Conclusion
`
`For the foregoing reasons, the Board should grant Veeam’s motion to compel
`
`testimony from VMware to corroborate the public availability date of the ESX
`
`Manual reference.
`
`The Patent Trial and Appeal Board is hereby authorized to charge any fees
`
`associated with Inter Partes Review 2013-00150 to Deposit Account 19—0036. Our
`
`Customer ID. is 261 ll
`
`Respectfully Submitted,
`
`STERNE, KESSLER, GOLDSTErN & Fox P.L.L.C.
`
`w Ill-C;
`
`
`J
`
`Lorl
`
`. Gordon
`
`Lead Counsel for Petitioner — Veeam Software
`
`Corporation
`Registration No. 50,633
`
`Date: November 1, 2013
`
`l 100 New York Avenue, NW.
`
`Washington, D.C.20005—3934
`
`(202) 371—2600
`
`-14-
`
`
`
`CERTIFICATE OF SERVICE
`
`IPR2013-00150 of
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`US. Patent No. 7,093,086
`
`The undersigned hereby certifies that the foregoing MOTION TO COMPEL
`
`THE DEPOSITION OF VMWARE ON THE PUBLIC AVAILABILITY OF
`
`EXHIBIT 1005 was served electronically Via e—mail on November 1, 2013, in its
`
`entirety on Attorneys for Patent Owner — Sy‘mantec Corporation:
`
`Joseph J. Richetti (Lead Counsel)
`Lawrence G. Kurland (Backup Counsel)
`BRYAN CAVE LLP
`
`1290 Avenue of the Americas
`
`New York, NY 10104
`
`joe.richetti@bryancave.com
`ljkurland@bryancave.com
`
`STERNE, KESSLER, GOLDSTEIN & Fox P.L.L.C.
`
`
`
`L ' A. Gordon
`Lead Counsel for Petitioner — Veeam
`
`Software Corporation
`Registration No. 50,633
`
`Date: November 1, 2013
`
`1 100 New York Avenue, NW.
`
`Washington, D.C.20005—3934
`(202) 371-2600
`
`-15-
`
`
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