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 RESPONSE
`TO PETITION PURSUANT TO 37 C.F.R. § 42.120
`
`

`

`Case IPR2013-00150
`U.S. Patent No. 7,093,086
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION..............................................................................................1
`
`A. Procedural Background.................................................................................1
`
`B. Summary of Patent Owner’s Arguments ......................................................1
`
`II. THE ‘086 PATENT ........................................................................................4
`
`A. Background Of The Technology At The Time Of The ‘086 Patent.............5
`
`B. The Inventions Described And Claimed In The ‘086 Patent........................7
`
`III. The Proper Constructions of Critical Terms in the Challenged Claims .........14
`
`A. State Of A Virtual Machine ........................................................................15
`
`B. Backup Program..........................................................................................18
`
`IV. The VMWARE References AND THE SUZAKI REFERENCE DO NOT
`ANTICIPATE THE CHALLENGED CLAIMS .............................................20
`
`A. The VMware References ............................................................................20
`
`1. The VMware References Do Not Disclose A Backup
`Program..................................................................................................22
`
`2. The VMware References Do Not Disclose Capturing “The
`State Of A Virtual Machine” .................................................................26
`
`3. The VM References Do Not Disclose Capturing The State While The
`Virtual Machine Is “Executing” ............................................................30
`
`4. The VM References Do Not Disclose Creating “A New Log Of
`Uncommitted Updates” And “A Memory Area” Such That The “Virtual
`Machine Can Continue Executing” During The Copy Step..................34
`
`5. VMware GSG Reference Does Not Disclose “copy[ing] at least a
`portion of the state” To A Separate Destination ................................42
`
`B. Suzaki Does Not Anticipate Claims 1 or 12 ...............................................44
`
`1. Suzaki Does Not Disclose A Backup Program ..................................45
`
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`Case IPR2013-00150
`U.S. Patent No. 7,093,086
`2. Suzaki Does Not Disclose Capturing “The State of [a] Virtual
`Machine” ...............................................................................................46
`
`3. Suzaki Does Not Disclose Capturing State While A Virtual Machine
`Is Executing ..........................................................................................50
`
`V. Petitioner’s Proposed Combination DoES Not Render the Challenged Claims
`Obvious ............................................................................................................52
`
`A. The Suzaki And Wang Papers May Not Be Properly Combined...............52
`
`1. Suzaki’s Disclosure Concerning Check Points is Sufficient.................52
`
`2. One Of Ordinary Skill In The Art Would Not Have Combined Suzaki’s
`Non-Transactional Operating System With Wang’s Transactional Log
`54
`
`3. Combining Suzaki With Wang Is Improper Because It
`Would Require A Substantial Modification of Suzaki’s OS.................55
`
`B. The Proposed Combination Lacks Material Limitations............................57
`
`VI. CONCLUSION ................................................................................................60
`
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`Case IPR2013-00150
`U.S. Patent No. 7,093,086
`TABLE OF AUTHORITIES
`
`CASES
`
`Page
`
`Becton, Dickinson & Co. v. Tyco Healthcare Group, LP,
`616 F.3d 1249 (Fed. Cir. 2010)............................................................................44
`
`In re Dembiczak,
`175 F.3d 994, 998-1001 (Fed. Cir. 1999) ............................................................53
`
`In re Fine,
`837 F.2d 1071, 1075 (Fed. Cir. 1988)..................................................................53
`
`Gaus v. Conair Corp.,
`363 F.3d 1284 (Fed. Cir. 2004)............................................................................44
`
`In re Ratti,
`46 C.C.P.A. 976, 270 F.2d 810 (CCPA 1959).....................................................56
`
`STATUTES AND RULES
`
`M.P.E.P. §2143.01 ..................................................................................................57
`
`iii
`
`

`

`Symantec
`Exhibit No.
`Symantec 2001
`Symantec 2002
`Symantec 2003
`Symantec 2004
`Symantec 2005
`
`Symantec 2006
`
`Symantec 2007
`Symantec 2008
`
`Symantec 2009
`
`Symantec 2010
`
`Symantec 2011
`
`Symantec 2012
`
`Symantec 2013
`
`Symantec 2014
`
`Case IPR2013-00150
`U.S. Patent No. 7,093,086
`
`LIST OF EXHIBITS
`
`Document Description
`Office Action, dated April 11, 2005
`Appeal Brief, dated July 19, 2005
`Response to Office Action, dated November 14, 2005
`Supplemental Notice of Allowability, dated July 6, 2016
`Symantec Corp. v. Veeam Software Corp., Civil Action No.
`3:12cv700 (Dkt. 105), Claim Construction Order, dated
`March 8, 2013
`Patent Owner’s Objections to Petitioner’s Evidence Pursuant
`to 37 C.F.R. § 42.64(b)(1)
`Declaration of Daniel Block, dated September 5, 2013
`Patent Owner’s Objections to Petitioner’s Supplemental
`Evidence Pursuant to 37 C.F.R. § 42.64(b)(1)
`Email requesting permission to file motion to amend, dated
`October 21, 2013
`Internet Archive webpage titled “Download VMware
`Products” captured from VMware website, dated June 23,
`2001
`Internet Archive webpage titled “Download VMware
`Products” captured from VMware website, dated June 23,
`2001
`Internet Archive webpage titled “VMware Server Products
`Ordering Information” captured from VMware website, dated
`October 7, 2001
`Internet Archive webpage titled “Evaluate VMware ESX
`Servicer” captured from VMware website, dated June 8, 2001
`Garmin Int’l, Inc. et al. v. Cuozzo Speed Tech. LLC,
`IPR2012-00001, No. 26 (Mar. 5, 2013), Decision
`
`iv
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`

`

`Case IPR2013-00150
`U.S. Patent No. 7,093,086
`
`Currently Filed
`
`Symantec
`Exhibit No.
`Symantec 2015
`
`Symantec 2016
`
`Symantec 2017
`Symantec 2018
`
`Document Description
`Declaration of Mathew D. Green in Support of Patent
`Owner’s Motion to Amend
`Declaration of Mathew D. Green in Support of Patent
`Owner’s Response
`Cross-Examination Testimony of Prashant Shenoy
`Non-Provisional Patent Application Serial No. 10/109,186
`accorded a filing date of March 28, 2002 (original ‘086
`specification)
`
`ABBREVIATIONS
`
`Document Description
`U.S. Patent No. 6,795,966 to Lim (VEEAM 1004)
`VMware ESX Server: User Manual (VEEAM 1005)
`Getting Started Guide: VMware 2.0 for Linux (VEEAM
`1006)
`“Checkpoint for Network Transferable Computer” by
`Suzaki (VEEAM 1009)
`“Integrating Checkpointing with Transaction
`Processing” by Wang (VEEAM 1010)
`U.S. Patent No. 6,917,963 to Hipp (VEEAM 1011)
`
`Abbreviation
`“Lim”
`“ESX”
`“GSG”
`
`“Suzaki”
`
`“Wang”
`
`“Hipp”
`
`v
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`

`

`Case IPR2013-00150
`U.S. Patent No. 7,093,086
`
`CITATIONS
`
`Document Description
`U.S. Patent No. 7,093,086 (VEEAM 1001)
`Declaration of Dr. Prashant Shenoy (VEEAM 1002)
`U.S. Patent No. 6,795,966 to Lim (VEEAM 1004)
`VMware ESX Server: User Manual (VEEAM 1005)
`Getting Started Guide: VMware 2.0 for Linux (VEEAM
`1006)
`“Checkpoint for Network Transferable Computer” by
`Suzaki (VEEAM 1009)
`“Integrating Checkpointing with Transaction Processing”
`by Wang (VEEAM 1010)
`U.S. Patent No. 6,917,963 to Hipp (VEEAM 1011)
`Declaration of Mathew D. Green in Support of Patent
`Owner’s Response (Symantec 2016)
`Cross-Examination Testimony of Prashant Shenoy
`(Symantec 2017)
`Petition
`Decision, Paper No. 11
`
`Cited As
`‘086 Patent, col. _:_
`Shenoy ¶_
`Lim, col. _:_
`ESX, p. _
`GSG, p. _
`
`Suzaki, p. _
`
`Wang, p.
`
`Hipp, col. _:_
`Green ¶_
`
`Shenoy Tr. _:_
`
`Pet. at _
`Dec. at _
`
`vi
`
`

`

`Patent Owner Symantec Corporation, pursuant to 37 C.F.R. §42.120, hereby
`
`submits this Response to the Petition filed by Veeam Software Corporation for
`
`inter partes review of U.S. Patent No. 7,093,086 (“the ‘086 Patent”). As discussed
`
`in detail below, Petitioner has failed to meet
`
`its burden of proving by a
`
`preponderance of the evidence that any of the challenged claims of the ‘086 Patent
`
`are unpatentable. Accordingly, Patent Owner respectfully requests that the Patent
`
`Trial and Appeal Board (“Board”) issue a final written decision in favor of the
`
`Patent Owner on all remaining Grounds.
`
`I. INTRODUCTION
`
`A. Procedural Background
`On February 14, 2013, Petitioner filed a petition under 37 C.F.R. §42.100 et
`
`seq., seeking inter partes review of claims 1, 11, 12, and 22 of the ‘086 Patent. On
`
`May 20, 2013, Patent Owner filed a Preliminary Response to the Petition pursuant
`
`to 37 C.F.R. §42.107. Paper 9. On August 7, 2013, the Board granted certain of
`
`the proposed grounds in the Petition and instituted an inter partes review of claims
`
`1, 11, 12, and 22 of the ‘086 Patent. Paper 11, “Decision”. Specifically, the Board
`
`granted the Petition with respect
`
`to five Grounds based on three VMware
`
`references, and the Suzaki and Wang references. Dec. at 24. The Board explicitly
`
`denied the Petition as to all other grounds proposed by Petitioner. Id.
`
`B. Summary of Patent Owner’s Arguments
`
`Patent Owner respectfully asserts that all four challenged claims of the ‘086
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`Case IPR2013-00150
`U.S. Patent No. 7,093,086
`Patent involved in this proceeding are patentable over the five remaining Grounds.
`
`In particular, for at least the following reasons, Petitioner has failed to meet its
`
`burden of demonstrating, by a preponderance of the evidence, that any of these
`
`claims are not patentable over the prior art relied upon in these Grounds.
`
`First, all of the VMware, Inc. references (i.e., ESX, GSG, and Lim) are
`
`directed to the creation, operation and/or deployment of virtual machines
`
`themselves.
`
`In contrast, as both parties, their respective experts, and the Board
`
`agree, the ‘086 Patent is directed to backing-up one or more virtual machines (e.g.,
`
`using a separate backup program to automatically capture the state of a virtual
`
`machine and copy it to a separate storage destination). As the ‘086 Patent makes
`
`clear, the backup program is separate and distinct from the VM Kernel.
`
`‘086
`
`Patent, col. 6:45-51, 11:36-41, FIGS 1, 6. Moreover, the challenged claims are not
`
`only directed to a backup program, but rather to a specific type of backup program:
`
`one that is designed to backup the virtual machine while it is executing (i.e.,
`
`without having to suspend the virtual machine). Thus, Grounds A-C are deficient
`
`for failing to disclose each and every limitation arranged as recited in the
`
`challenged claims.
`
`Second, Suzaki (like the VMware, Inc. references) does not disclose a
`
`program for backing-up the state of a virtual machine at a point-in-time. Rather,
`
`Suzaki
`
`is directed to a technique for gradually checkpointing individual
`
`2
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`Case IPR2013-00150
`U.S. Patent No. 7,093,086
`applications over a period of time. Moreover, Suzaki fails to disclose that the
`
`virtual machine continues executing during the capture step because, during the
`
`checkpointing process, the operating system transitions to a hibernation state
`
`which suspends the running applications. Thus, Ground D4 is deficient for failing
`
`to disclose each and every limitation arranged as recited in challenged claims 1
`
`and 11.
`
`Third, it is respectfully submitted that Suzaki and Wang could not have
`
`been combined in the manner alleged by Petitioner, nor would one of ordinary skill
`
`in the art at the time of the ‘086 Patent have been motivated to do so. For example,
`
`as explained in the declaration of Patent Owner’s technical expert, Dr. Matthew
`
`Green (Green ¶¶ 147-153), one of ordinary skill in the art would not be motivated
`
`to seek out another reference, much less Wang’s, to implement the checkpoint
`
`function that
`
`is sufficiently described in Suzaki.
`
`Furthermore,
`
`the proposed
`
`combination would have substantially modified the operation of Suzaki’s
`
`checkpoints and required a significant undertaking that would not have been
`
`obvious to one of ordinary skill in the art. Green ¶¶ 141-146. Thus, Ground E is
`
`deficient for failing to raise even a prima facie case of obviousness for challenged
`
`claims 12 and 22.
`
`Fourth, the proposed combination of Suzaki and Wang in Ground E fails
`
`even to teach or suggest the additional material limitations recited in challenged
`
`3
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`U.S. Patent No. 7,093,086
`claims 11 and 22. As a result, Ground E is deficient for failing to teach or suggest
`
`each and every limitation recited in the challenged claims.
`
`For at least the foregoing reasons, it is clear that the Petition falls far short of
`
`proving by a preponderance of the evidence that any of the five remaining Grounds
`
`render any of the challenged claims unpatentable. Thus, Patent Owner respectfully
`
`requests that the Board confirm the patentability of all four of these claims as
`
`originally issued.
`
`II. THE ‘086 PATENT
`
`The ‘086 Patent generally relates to backup and disaster recovery of
`
`computer systems and, in particular, new mechanisms for backing-up virtual
`
`machines. Virtual machines, like the physical computer systems within which they
`
`execute, are subject to various types of failures (e.g., hardware, software, electrical,
`
`etc.), which often result in the loss of data in the virtual machine. As a result,
`
`effective mechanisms for backing-up virtual machines are a key feature that,
`
`among other things, minimizes the risk of data loss and allows virtual machines to
`
`be recovered and restored in the event of such failures. The ‘086 Patent provides
`
`this critical functionality through new systems and methods that use a backup
`
`program to automatically capture the state of one or more virtual machines and
`
`copy the captured state to a separate backup destination, while allowing the virtual
`
`machine to continue execution. These novel techniques for backing-up virtual
`
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`machines provide significant benefits over prior systems. See, e.g., ‘086 Patent,
`
`Abstract, col. 1:12-67, 2:53-60, 3:8-17, 5:11-15.
`
`A. Background Of The Technology At The Time Of The ‘086 Patent
`
`In general terms, a “virtual machine” (VM) can be any combination of
`
`software and/or virtual hardware that runs within the environment of a physical
`
`computer but is designed to mimic the environment of a different computer
`
`system. As explained in Dr. Green’s declaration, around the time of the ‘086
`
`Patent, these virtual machines were (and still are) used for numerous applications
`
`in the field of computer science. For example, virtual machines were used to “co-
`
`locate” multiple different simulated computer systems on a single piece of
`
`physical hardware. Green ¶ 23.
`
`The primary component of virtual machine-based systems is typically
`
`referred to as a Virtual Machine Kernel (“VM Kernel”). The VM Kernel runs on
`
`the underlying software and hardware of the physical computer system and is
`
`responsible for simulating and controlling the operation of one or more virtual
`
`machines. Among other things, the VM Kernel may incorporate software and/or
`
`data structures for emulating the hardware used by the applications executing
`
`within a virtual machine. For example, the VM Kernel may simulate various
`
`types of hardware devices, such as virtual CPUs, virtual storage devices (e.g.,
`
`RAM, cache, hard disk drives), virtual network hardware and/or virtual
`
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`U.S. Patent No. 7,093,086
`input/output devices (e.g., keyboards and video monitors). Green ¶ 23; ‘086
`
`Patent, col. 3:32-4:6.
`
`While various types of virtual machines existed, the most common virtual
`
`machine software packages were designed to emulate a complete computer
`
`system. As a result, from the point-of-view of software applications executing on
`
`such virtual machines, the virtual computer system is indistinguishable from that
`
`of a physical computer system and, therefore, these software applications could
`
`run in the virtual environment without the need for modifications. Green ¶ 25.
`
`As explained by Dr. Green, virtual machines (like the physical computer
`
`systems they emulate) exist in a single “state” at any given point-in-time.
`
`In
`
`general, the state of a virtual machine includes the state of all of the software
`
`and/or hardware associated with the virtual machine. Accordingly, the VM state
`
`includes all of the information needed to continue or resume execution of the
`
`machine from the point-in-time it was captured. Green ¶ 26; ‘086 Patent, col.
`
`1:64-67, 3:22-26, 4:7-18.
`
`As discussed above, virtual machines (like physical computer systems)
`
`were susceptible to various kinds of failures that could result in data loss or
`
`corruption. Thus, there was a need in these virtual machine based systems to
`
`backup the state of the virtual machines and, therefore, recover from such failures
`
`quickly and with minimal data loss. ‘086 Patent, col. 1:26-28, 1:46-50. Prior to
`
`6
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`Case IPR2013-00150
`U.S. Patent No. 7,093,086
`the ‘086 Patent, however, backing-up virtual machines presented a number of
`
`significant challenges:
`
` prior systems required users to perform time-consuming manual
`processes in order to create backups, such as by copying and/or
`transferring files manually;
`recording state required suspension,
` previous techniques for
`thereby preventing a user from working on the VM;
` some prior systems used a gradual process to record the state over
`a period of time; often resulting in an inconsistent or “blurred”
`state;
` some prior techniques were only able to record a portion of the
`VM state, such as partial file updates; not all of the information
`needed in order to recover the VM;
` other systems required separate “agents” (i.e., software requiring
`custom code) for each application executing within the VM.
`(Green ¶¶ 26-40; ‘086 Patent, col. 1:12-67).
`
`B. The Inventions Described And Claimed In The ‘086 Patent
`
`The ‘086 Patent overcomes the challenges discussed above, and provides a
`
`number of significant benefits, through new mechanisms for backing-up virtual
`
`machines. ‘086 Patent, Abstract, col. 2:3-4, 2:55-60, 3:8-17, 5:11-15. In general,
`
`these mechanisms backup one or more virtual machines executing on a computer
`
`system by performing two steps, namely: (i) capturing the state of the virtual
`
`machine at a point-in-time; and (ii) backing-up the state by copying it to a separate
`
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`Case IPR2013-00150
`U.S. Patent No. 7,093,086
`
`storage destination. ‘086 Patent, Abstract, col. 2:55-56.
`
`More specifically, the ‘086 Patent discloses that a program (i.e., a set of
`
`instructions) is used to perform the capture and copy steps. ‘086 Patent, col. 4:42-
`
`52, 6:32-35. The backup program is separate from the VM Kernel, and in fact
`
`interfaces with such a kernel to capture the state. ‘086 Patent, col. 2:57-59, 4:43-
`
`47, 7:21-23, 11:31-34, 12:61-13:6; Shenoy Tr. 51:6-8, 85:19-24. Once the state of
`
`the virtual machine has been captured, the back up program copies it to a separate
`
`storage destination, such as another storage device (e.g., removable disk, drive,
`
`tape or compact disk) or another computer system (e.g., a backup server).
`
`‘086
`
`Patent col. 5:4-12, claims 2, 4, 5, 7. As a result, “[i]n the event of a ‘disaster’ at
`
`the original computer system, the virtual machines may be resumed.” ‘086 Patent
`
`col. 3:12-15. This ability to copy and store the virtual machine’s state in a separate
`
`destination is key to achieving “backup” of the virtual machine.
`
`‘086 Patent
`
`Abstract, col. 2:11-13.
`
`The ‘086 Patent discloses two main embodiments for backing-up a virtual
`
`machine using this backup program.
`
`In one embodiment, the backup program
`
`captures the state while the virtual machines continue to execute. For example, the
`
`backup program may cooperate with the VM Kernel to preserve the state of the
`
`virtual machine and use copy-on-write techniques to allow the virtual machine to
`
`continue executing. As a result, the backup program is able to capture the state of
`
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`a virtual machine and copy it
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`Case IPR2013-00150
`U.S. Patent No. 7,093,086
`to a separate destination for backup without
`
`suspending the virtual machine. ‘086 Patent, col. 4:43-47, 11:31-41, 12:56-13:6,
`
`FIGS. 6-7.
`
`The ‘086 Patent also discloses a second embodiment, in which the state of a
`
`virtual machine is captured by requesting the VM Kernel to suspend the virtual
`
`machine to an image and then backing up the image of the virtual machine. ‘086
`
`Patent, col. 2:62-65, 6:45-51, FIG. 2.
`
`Importantly, it is clear that the challenged
`
`claims of the ‘086 Patent are directed to the first embodiment, namely the
`
`embodiment in which the backup program is able to capture the state while the
`
`virtual machine is executing (i.e., without suspending the virtual machine). See
`
`‘086 Patent, col. 2:57-60, 3:17-19, col. 4:9-14. An example of this “continued
`
`execution” embodiment for the backup program is illustrated and described in
`
`connection with Figure 6 of the ‘086 Patent (reproduced below).
`
`9
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`As shown in Figure 6, a computer system (10) includes one or more virtual
`
`machines (e.g., 16A, 16C), which are controlled by a VM Kernel 18. The ‘086
`
`Patent explains that the VM Kernel is responsible for managing the operation of
`
`the virtual machines and may be implemented using a number of products
`
`available from VMware, Inc., such as the ESX Server product.
`
`‘086 Patent, col.
`
`5:58-61, 6:1-2.
`
`The ‘086 Patent explains that a virtual machine generally “comprises any
`
`combination of software, one or more data structures in memory and/or one or
`
`more files stored on a storage device”. ‘086 Patent, col. 3:45-47. As a result, the
`
`virtual machine is able to mimic the hardware used during the execution of one or
`
`more applications. For example, virtual machine 16A shown in Figure 6 includes
`
`an application 28 that is designed to execute within operating system 30, both of
`
`which execute on virtual CPU 32. ‘086 Patent, col. 3:49-54.
`
`The ‘086 Patent also discloses that “computer system 10 is configured to
`
`backup the virtual machines executing thereon.” ‘086 Patent, col. 4:42-43. More
`
`specifically, this is achieved through the use of a backup program, such as backup
`
`program 42 stored in storage device 22, which interfaces with the VM Kernel to
`
`capture the state of the virtual machine and then copies the state to a separate
`
`storage destination.
`
`‘086 Patent col. 4:43-47, 11:31-34, 12:61-13:6. The ‘086
`
`Patent makes clear that this backup program is “a set of instructions which, when
`
`10
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`executed, perform the function described for that program” (i.e., backing-up the
`
`virtual machines). ‘086 Patent, col. 6:34-35.
`
`In particular, with respect to the “continued execution” embodiment, the
`
`‘086 Patent explains that “the backup program 42 (in cooperation with the VM
`
`kernel 18) may be configured to backup virtual machines without suspending the
`
`virtual machines.”
`
`‘086 Patent, col. 11:31-34.
`
`In order to do so, the backup
`
`program may send a request to the VM Kernel for image data of a virtual machine,
`
`which requests “the current state of the virtual machine, as would be provided if
`
`the virtual machine were suspended, without actually suspending the virtual
`
`machine.” ‘086 Patent, col. 11:37-40.
`
`For example, when the VM Kernel receives an image data request from the
`
`backup program, a new COW file (74A) is created to store subsequent updates to
`
`the virtual disk associated with the virtual machine (i.e., rather than writing such
`
`updates to the disk file 72 and/or COW file 74). Similarly, a new memory COW
`
`112 is created to record subsequent updates to the memory 110. As a result, the
`
`state of the virtual disk (including the COW file 74) and/or memory 110 remain
`
`constant as of the time of the image data request. ‘086 Patent, col. 11:42-52.
`
`In other words, these new COW files enable subsequent “updates” and
`
`“writes” (i.e., the changes made to the virtual disk and memory as the virtual
`
`machine continues to execute) to be recorded in a separate location so that the
`
`11
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`backup program is able to capture an unmodified version of the virtual disk and
`
`memory. ‘086 Patent, col. 11:42-12:13, claims 11, 22; Shenoy Tr. 68:5-13, 72:20-
`
`73:5. Thus, the state of the virtual machine is captured at the point-in-time of the
`
`image data request, while the virtual machine is allowed to continue executing
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`(i.e., by using the new COW file and/or memory COW to record any updates).
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`In turn, the backup program then copies this captured state (or at least
`
`portion thereof in the case where the complete state has previously been backed-
`
`up) to a separate storage destination, such as backup medium 24 shown in Figure
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`6, or a separate computer system. As explained in the ‘086 Patent, the backup
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`program may also copy the state of the virtual machine while the virtual machine
`
`continues to execute. Accordingly, the virtual machine can continue to execute
`
`during both the capture and copy step, thereby allowing the entire backup process
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`to be performed by the backup program without interrupting a user’s ability to
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`work on the virtual machine. ‘086 Patent, col. 11:31-34, 12:4-14; Green ¶¶ 41, 43-
`
`45.
`
`Importantly, the challenged claims clearly track this “continued execution”
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`embodiment, as illustrated in Figures 6-8 and described in the corresponding
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`portions of
`
`the ‘086 Patent specification.
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`‘086 Patent, col. 11:14-14:6.
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`Specifically, both of the challenged independent claims require that a set of
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`instructions be executed (or that a computer system be configured) to “capture a
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`state of a first virtual machine executing on a first computer system” and that there
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`be “at least one application executing in the first virtual machine.” ‘086 Patent
`
`claims 1, 12 (emphasis added). In other words, independent claims 1 and 12, like
`
`the “continued execution” embodiment, both require that the backup program be
`
`capable of capturing the state of the virtual machine while it is executing (i.e.,
`
`without suspending the virtual machine). See also ‘086 Patent, col. 4:9-14.
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`Likewise, challenged claims 11 and 22 (which depend from claims 1 and 12
`
`respectively) further require the creation of a “new log of uncommitted updates”
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`(e.g., new COW file 74A) and a “memory area” (e.g., memory COW 112) where
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`changes to both the virtual disk and memory are captured. ‘086 Patent, col. 11:42-
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`12:13, FIG. 6, claims 11, 22. Moreover, these claims also require that the first
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`virtual machine can continue executing during the copy step.
`
`In other words,
`
`dependent claims 11 and 22 require that the backup program perform both the
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`capturing step and the copying step while allowing the virtual machine to continue
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`executing. Thus, it is clear that these challenged claims are specifically directed to
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`the “continued execution” embodiment disclosed in the ‘086 Patent, and the entire
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`claimed backup process can occur without interrupting the virtual machine. ‘086
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`Patent, col. 11:31-34, 12:4-14; Green ¶ 49.
`
`The new mechanisms for backing-up virtual machines described in the ‘086
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`Patent and recited in the challenged claims provide a number of significant
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`benefits. One such benefit is that allowing the virtual machine to continue
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`executing during the capture and/or copy steps avoids the need to continually
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`suspend/pause the virtual machine each time a backup is created,
`
`thereby
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`minimizing disruptions to its execution and accessibility. This is especially
`
`helpful when the backup is intended to be performed often and periodically, as
`
`well as for several virtual machines.
`
`‘086 Patent, col. 1:28-30, 3:8-10, 7:23-28,
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`13:29-32, FIG. 6 (items 60, 62), claim 6; Green ¶¶ 41, 43, 49.
`
`Another key aspect of the claimed invention is that storing the state on a
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`device or computer that can be “physically separated from the computer system
`
`that is backed up” helps to ensure the reliability of the backup. For example, “an
`
`event which causes problems on the computer system [on which the virtual
`
`machine is executing] may not affect the backup medium.” ‘086 Patent col. 5:11-
`
`15.
`
`In fact, copying the virtual machine’s state to a separate destination is what
`
`enables and achieves the primary objective of the claimed invention and the true
`
`purpose of “backing up” a virtual machine namely, safe storage and protection
`
`against data loss in case of failure.
`
`‘086 Patent, Abstract, col. 1:25-56, 2:3-6,
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`5:11-15; Shenoy ¶ 13-14; Shenoy Tr. 22:1-14.
`
`III. THE PROPER CONSTRUCTIONS OF CRITICAL TERMS IN
`THE CHALLENGED CLAIMS
`In its Decision to Institute Inter Partes Review, the Board set forth initial
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`constructions for two phrases in the challenged claims, namely, “state of a virtual
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`machine,” and “copy[ing] at least a portion of the state…” Dec. at 5-7. Although
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`Patent Owner respectfully disagrees with both constructions, Patent Owner
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`specifically objects to the construction of “state of a virtual machine,” as being
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`inconsistent with the specification and the other claim language in claims 1 and 12
`
`of the ‘086 Patent and, therefore, requests that the Board reconsider its initial
`
`interpretation for this phrase. Patent Owner also requests consideration of a new
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`construction advanced in this Response, namely,
`
`that
`
`the challenged claims
`
`require a program for performing the claimed backup functionality.
`
`A. State Of A Virtual Machine
`
`In its Preliminary Response, Patent Owner proposed that the phrase “a state
`
`of [a] virtual machine” should be construed to mean: “information regarding [the]
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`virtual machine, including virtual disk(s), to permit the virtual machine to resume
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`execution.” The Board, however, adopted the District Court’s prior construction
`
`and construed this phrase as meaning “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. at 5-6. Patent Owner respectfully
`
`objects to this construction.
`
`As discussed above, both parties and the Board agree that the ‘086 Patent is
`
`directed to backing up virtual machines. In order to accomplish this, the “state” of
`
`the virtual machine is captured and copied to a separate destination, thereby
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`allowing the virtual machine to be restored in the event of a failure and continue
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`execution from the point-in-time at which the state was captured. ‘086 Patent, col.
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`2:3-13, 8:18-31, 8:40-46, claims 1, 12. As explained in the ‘086 Patent, in some
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`instances, the virtual machine can be restored on the same computer (e.g., the
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`backup saved on a separate storage device can be reloaded on the first computer).
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`In other cases, the virtual machine can be restored on a different computer at a
`
`different location (e.g., at a disaster recovery site). ‘086 Patent, col. 1:12-67, 3:7-
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`26, 3:45-65, 4:19-28, 13:20-25, claims 8, 19; Green ¶¶ 34, 43, 44, 58. Thus, the
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`captured state information must include sufficient information to permit the virtual
`
`machine to be restored and/or continue executing on any computer. Petitioner’s
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`own expert acknowledged that such information would be needed to backup a
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`virtual machine. Shenoy Tr. 86:11-22. While it is true that the ‘086 Patent does
`
`not provide an exhaustive list of what must be included in the “state of a virtual
`
`machine,” the specification does provide numerous examples, such as
`
`information associated with the operating system state, application(s) state,
`
`configuration settings, file-system state, the state of the memory within the
`
`virtual machine, the state of the hardware (e.g., virtual I/O devices) within the
`
`virtual machine, and non-persistent disk state (e.g., COW files). ‘086 Patent at
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`col. 3:22-26, 4:48-49, 9:28-35; Green ¶¶ 26, 33, 40.
`
`Accordingly, Patent Owner
`
`submits
`
`that
`
`the broadest
`
`reasonable
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`construction of “a state of a virtual machine” is: “information regarding [the]
`
`virtual machine to resume execution of [the] virtual machine on any computer at
`
`the point in time the state was captured.” Although this proposed construction is
`
`very similar to the initial interpretation adopted by the Board (and the District
`
`Court), the key difference centers