UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`
`VMWARE, INC.,
`Petitioner
`
`v.
`
`INTELLECTUAL VENTURES I, LLC,
`Patent Owner
`
`___________________
`
`Case IPR2020-00470
`Patent 7,949,752
`___________________
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`PATENT OWNER’S PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.107
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-145
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`
`TABLE OF CONTENTS
`
`Case IPR2020-00470
`U.S. Patent No. 7,949,752
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`INTRODUCTION ......................................................................................................... 1
`I.
`OVERVIEW OF THE TECHNOLOGY ........................................................................ 2
`II.
`A. Prior art systems required significant work by a service provider in order to customize
`functionality for integrated networked services. ....................................................................... 2
`B. The ’752 patent describes network-based agents allowing end-user customization of
`network-based services. ........................................................................................................... 3
`C. The Cited Prior Art .......................................................................................................... 6
`1. Chow (EX1018)...........................................................................................................6
`2. Bauer (EX1019)...........................................................................................................7
`3. White (EX1020) ..........................................................................................................7
`THE BOARD SHOULD EXERCISE ITS DISCRETION UNDER 35 U.S.C. § 314(A)
`III.
`TO DENY INSTITUTION OF THIS PETITION AS AN UNDUE BURDEN ON BOARD
`RESOURCES (GROUNDS 1-4). .............................................................................................. 8
`A. The facts in this case support denial under 35 U.S.C. § 314(a). ........................................ 9
`B. The Board has previously denied institution based on facts that are similar to the facts in
`this proceeding. ..................................................................................................................... 12
`IV.
`CLAIM CONSTRUCTION ......................................................................................... 17
`V.
`GROUNDS 1 AND 2 ARE DEFICIENT BECAUSE THEY ARE PREMISED ON AN
`ERRONEOUS CONSTRUCTION OF “AGENT.” ................................................................. 19
`VI.
`GROUNDS 3 AND 4 ARE DEFICIENT BECAUSE VMWARE DOES NOT
`ADEQUATELY EXPLAIN HOW OR WHY A MOBILE AGENT WOULD HAVE BEEN
`COMBINABLE WITH CHOW OR BAUER. ......................................................................... 20
`1. VMware fails to explain how the combination of Chow and White achieves the
`claimed invention. ............................................................................................................. 20
`2. VMware does not explain why or how it would have been appropriate to modify
`Chow’s system to include a mobile agent even though Chow does not contemplate such a
`modification. ..................................................................................................................... 23
`VII. THE BOARD SHOULD DENY INSTITUTION BECAUSE PETITIONER HAS
`FAILED TO DEMONSTRATE HOW THE ART TEACHES “THE SERVICE RESOURCE IS
`EXHAUSTED UPON BEING CONSUMED BY THE NETWORK-BASED AGENT.”
`(GROUNDS 1-4). ................................................................................................................... 25
`VIII. THE BOARD SHOULD DENY INSTITUTION BECAUSE PETITIONER HAS
`FAILED TO PROVIDE PROPER OBVIOUSNESS RATIONALES FOR THE CHALLENGED
`CLAIMS, AS REQUIRED UNDER KSR (GROUNDS 1-4).................................................... 27
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`CONCLUSION ........................................................................................................... 29
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`Case IPR2020-00470
`U.S. Patent No. 7,949,752
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`IX.
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`Case IPR2020-00470
`U.S. Patent No. 7,949,752
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`Exhibit No.
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`2001
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`2002
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`2003
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`2004
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`2005
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`2006
`
`2007
`
`2008
`
`
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`PATENT OWNER’S EXHIBIT LIST
`
`Description
`Joint Claim Construction Statement, Intellectual Ventures I, LLC et.
`al. v. VMware, Inc., No. 1:19-cv-01075, U.S. District Court for the
`Western District of Texas, April 17, 2020.
`
`Defendant’s Preliminary Invalidity Contentions, Intellectual
`Ventures I, LLC et. al. v. VMware, Inc., No. 1:19-cv-01075, U.S.
`District Court for the Western District of Texas, January 15, 2020.
`
`Order Resetting Markman Hearing, Intellectual Ventures I, LLC et.
`al. v. VMware, Inc., No. 1:19-cv-01075, U.S. District Court for the
`Western District of Texas, April 16, 2020.
`
`Exhibit C-1: Invalidity Chart for U.S. Patent No. 7,949,752,
`Intellectual Ventures I, LLC et. al. v. VMware, Inc., No. 1:19-cv-
`01075, U.S. District Court for the Western District of Texas, filed
`July 31, 2019.
`
`Preliminary Claim Construction Rulings, Intellectual Ventures I,
`LLC et. al. v. VMware, Inc., No. 1:19-cv-01075, U.S. District Court
`for the Western District of Texas, May 14, 2020.
`
`Disputed Claim Terms, Intellectual Ventures I, LLC et. al. v.
`VMware, Inc., No. 1:19-cv-01075, U.S. District Court for the
`Western District of Texas, April 17, 2020
`
`Plaintiffs’ Claim Construction Brief, Intellectual Ventures I, LLC et.
`al. v. VMware, Inc., No. 1:19-cv-01075, U.S. District Court for the
`Western District of Texas, March 6, 2020
`
`Defendant VMware, Inc.’s Opening Claim Construction Brief,
`Intellectual Ventures I, LLC et. al. v. VMware, Inc., No. 1:19-cv-
`01075, U.S. District Court for the Western District of Texas, March
`6, 2020
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`Case IPR2020-00470
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`Exhibit No.
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`2009
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`2010
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`2011
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`2012
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`2013
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`2014
`
`Description
`Defendant VMware, Inc.’s Responsive Claim Construction Brief,
`Intellectual Ventures I, LLC et. al. v. VMware, Inc., No. 1:19-cv-
`01075, U.S. District Court for the Western District of Texas, March
`27, 2020.
`
`Plaintiffs’ Reply Claim Construction Brief, Intellectual Ventures I,
`LLC et. al. v. VMware, Inc., No. 1:19-cv-01075, U.S. District Court
`for the Western District of Texas, April 10, 2020.
`
`Defendant VMware Inc.’s Reply Claim Construction Brief,
`Intellectual Ventures I, LLC et. al. v. VMware, Inc., No. 1:19-cv-
`01075, U.S. District Court for the Western District of Texas, April
`10, 2020.
`
`Plaintiffs’ Supplemental Construction Brief, Intellectual Ventures I,
`LLC et. al. v. VMware, Inc., No. 1:19-cv-01075, U.S. District Court
`for the Western District of Texas, May 13, 2020.
`
`Defendant’s Supplemental Claim Construction Statement,
`Intellectual Ventures I, LLC et. al. v. VMware, Inc., No. 1:19-cv-
`01075, U.S. District Court for the Western District of Texas, May
`13, 2020.
`
`Intellectual Ventures’ Technology Tutorial of the ’752 patent,
`Intellectual Ventures I, LLC et. al. v. VMware, Inc., No. 1:19-cv-
`01075, U.S. District Court for the Western District of Texas, April
`24, 2020.
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`I.
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`Case IPR2020-00470
`U.S. Patent No. 7,949,752
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`INTRODUCTION
`The Board should deny institution of inter partes review (“IPR”) of U.S.
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`Patent No. 7,949,752 ( “the ’752 patent”) as a matter of discretion under 35 U.S.C.
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`§314(a) and as a matter of substance because VMware, Inc.’s (“VMware”) Petition
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`is deficient in four critical respects, any one of which warrants denial of institution.
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`As a matter of discretion, the Board should deny the Petition under 35
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`U.S.C. §314(a). This IPR, were it granted, would not conclude until several months
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`after the April 2021 jury trial that is set to be heard in the parallel district-court
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`case between the Patent Owner and the Petitioner over the validity of the ’752
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`patent. Intellectual Ventures I, LLC et. al. v. VMware, Inc., 1:19-cv-01075 (W.D.
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`Tex. July 31, 2019). Because that trial will decide the same issues presented in the
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`Petition, instituting an IPR trial here will be an inefficient and duplicative use of
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`the Patent Trial and Appeal Board’s (“PTAB”) and parties’ resources. This waste
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`is easily avoided by a denial. NHK Spring Co., Ltd., v. Intri-Plex Techs., Inc.,
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`IPR2018-00752, Paper 8 (P.T.A.B. Sep. 12, 2018) (precedential); Apple Inc. v.
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`Fintiv, Inc., IPR2020-00019, Paper 11 (P.T.A.B. Mar. 20, 2020) (precedential).
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`As for the substance of the Petition, there are four independent reasons to
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`deny institution. First, Grounds 1 and 2 fail because they are premised on an
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`erroneous construction of the claim term “agent” that is inconsistent with (indeed
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`far broader) than the lexicographical definition of that term in the ’752 patent and
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`the definition VMWare has agreed with in the parallel district court case. See
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`Sec.V.A; EX2001. Second, Grounds 3 and 4—despite using the correct
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`construction of “agent”—fail because VMware does not show how or why a
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`mobile agent would have been combinable with art that does not contemplate using
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`a mobile agent. Third, all grounds fail because VMware has not shown how the art
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`teaches or renders obvious “the service resource is exhausted upon being consumed
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`by the network-based agent”—a feature recited by all claims. And fourth, all
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`grounds fail because the Petition does not provide a sufficiently detailed rationale
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`for why any of the claims would be found obvious over the prior art—forcing
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`Intellectual Ventures I, LLC (“IV”) and the Board to guess at VMware’s
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`obviousness theories. Accordingly, the Board should deny institution.
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`II. OVERVIEW OF THE TECHNOLOGY
`A. Prior art systems required significant work by a service provider
`in order to customize functionality for integrated networked
`services.
`Before the ’752 patent, conventional systems integrating networked services
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`were lacking in a number of respects. For example, the existing systems integrating
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`networked services of computers and telephones (e.g., e-mail and PIM vs. voice-
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`mail and directory, etc.) had come pre-packaged from service providers. EX1001,
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`1:56-2:4. Customers of the service providers could not customize or add features or
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`integrations to the existing systems. At most, customers for existing systems could
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`request that the service providers perform specific customizations or upgrades. Id.,
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`2:5-34.
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`Because of these deficiencies and problems, service providers incurred
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`significant overhead to be competitive, or their end users would defect to other
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`service providers. Although some systems allowed end users to request that the
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`service providers add desired customizations or upgrades, service providers’
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`existing systems did not easily allow this. Service providers created bespoke
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`solutions for each requesting customer, incurring costs and delays, or risked losing
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`the customer to competing service providers able to provide the desired
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`functionality with more agility—no existing systems allowing users to directly
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`customize services. Id., 2:25-34.
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`Due to the above-noted deficiencies, prior-art systems failed to provide users
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`a convenient system that was efficient for service providers to operate
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`competitively.
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`B. The ’752 patent describes network-based agents allowing end-
`user customization of network-based services.
`Recognizing the above-noted problems associated with prior systems, the
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`inventors of the ’752 patent addressed these deficiencies through a novel network-
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`based agent architecture that allowed users to implement their own customized
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`services and to contract with third parties to provide customized services,
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`irrespective of the service provider. EX1001, 2:38-3:43; see also id., FIG. 1
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`(reproduced below). The ’752 patent describes a sophisticated architecture for
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`service providers to implement, independent from client infrastructure of
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`subscribers (users). In this way, users do not need to re-architect the service
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`provider’s infrastructure or demand that the service provider make changes to its
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`own architecture to accommodate each end user.
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`EX1001, FIG. 1.
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`As shown above in Figure 1, a service provider operates a network system 2
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`to provide technological services to users (a.k.a. subscribers). EX1001 5:32-42.
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`Communication lines allow access for users to interact with network system 2
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`via various interfaces. Id., 6:5-27, 6:49-60 (interfaces 12 and 16 connect to
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`network system 2 by communication lines as described in column 6 but not labeled
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`in FIG. 1.) Programmable functionality component 4 can be programmed “by
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`subscribers or third parties,” id., 5:55-67, unlike prior art systems including those
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`cited by VMware.
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`The ’752 patent specifically refers to users having a subscriber relationship
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`with the provider, where the user controls the customization of services, as
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`opposed to customization being controlled by a system administrator of a service
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`provider. The prior art relied upon by VMware—Chow (EX1018) and Bauer
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`(EX1019)—does not show the novel user customization of the ’752 patent. Instead,
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`the art shows a provider’s system administrator performing any alleged custom
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`agent functionality for subscribers, which would be inapposite to the primary
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`purpose of the invention of the ’752 patent.
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`Representative claim 24 is reproduced below:
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`24. A method comprising:
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`receiving using a computing device, data for creating a
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`network-based agent;
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`invoking using the computing device, and in response to
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`receiving a URL defining a type of event and identifying the network-
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`based agent, execution of the network-based agent, wherein the
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`invoking comprises using a service and a service resource configured
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`to be consumed by the network-based agent for performing the
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`operation, and wherein a discrete unit of the service resource is
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`exhausted upon being consumed by the network-based agent; and
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`communicating, using the computing device, a result of the
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`operation over a network communication link.
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`EX1001, 27:52-65.
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`The ’752 patent thus describes and claims a novel and innovative feature set
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`that allows end-user customization of network-based services. These features of
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`the ’752 patent were crucial to the development of modern integrations of network-
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`based systems (e.g., telephone, e-mail, and PIM).
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`C. The Cited Prior Art
`Chow (EX1018)
`1.
`U.S. Patent No. 6,029,175 (EX1018, “Chow”) purports to describe “a
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`software agent for automatically retrieving changed documents previously
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`accessed from network and internetwork servers.” EX1018, 3:60-64. Chow may
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`retrieve web pages or documents from private sources, comparing changes and
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`considering “costs associated with retrieval,” including various charges. E.g., id.,
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`18:50-19:7, 25:52-26:17, 28:2-52. But Chow’s agent is not “mobile”—VMware
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`does not contend otherwise—a critical omission, as shown below. Pet., 21-22
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`Bauer (EX1019)
`2.
`U.S. Patent No. 5,367,635 (EX1019, “Bauer”) purports to describe “a
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`network management agent having the capability of adding new objects to the
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`agent without requiring modification of the agent source code and without stopping
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`and restarting the agent. These new objects can then be used by network
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`management users to initiate user defined processes.” EX1019, 3:46-51. When
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`Bauer refers to a “user,” Bauer makes it clear that the “‘user’ refers to a person
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`using the network management software. The user is usually the system
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`administrator. Users can obtain management data and alter management data on
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`the network by using network management software.” Id., 1:18-30. Petitioner does
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`not rely on Bauer to teach the claimed agent. Pet., 29-30. Nor does Bauer teach a
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`mobile agent.
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`3. White (EX1020)
`U.S. Patent No. 5,603,031 (EX1020, “White”), which is commonly owned
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`by IV and incorporated by reference by the ’752 patent, describes “an agent” that is
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`enabled to “transport itself from a first place process…in [a] network to a second
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`place process in the network.” EX1020, 8:27-38. In other words, White describes
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`an agent as “a process which occupies a place and which is mobile, i.e.[,] can move
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`from a first place to a second place.” Id., 16:65-67. Aside from some general
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`background, see id., 3:6-5:25, the Petition does not cite or rely on any other
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`description in the 370 columns or 106 drawing sheets of White.
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`III. THE BOARD SHOULD EXERCISE ITS DISCRETION UNDER
`35 U.S.C. § 314(a) TO DENY INSTITUTION OF THIS PETITION
`AS AN UNDUE BURDEN ON BOARD RESOURCES (GROUNDS 1-
`4).
`Whether the PTAB should institute an inter partes review always is
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`discretionary. 35 U.S.C. § 314(a); Oil States Energy Servs. LLC v. Green’s Energy
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`Grp., LLC, 138 S. Ct. 1365 at 1371 (2018) (“The Decision whether to institute
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`inter partes review is committed to the Director’s discretion.”). Here, the Board
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`should exercise its discretion under 35 U.S.C. § 314(a) to deny institution based on
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`its precedential decisions in NHK Spring1 and Fintiv2, and consistent with its other
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`decisions that closely mirror the facts here. The ’752 patent is involved in parallel
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`district-court litigation that involves the same issues, arguments, and evidence that
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`
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`1 NHK Spring Co., Ltd., v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8
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`(P.T.A.B. Sep. 12, 2018) (precedential).
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`2 Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (P.T.A.B. Mar. 20,
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`2020) (precedential).
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`VMware has presented in the instant Petition. The district court has already
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`expended substantial resources to gain familiarity with and resolve these issues and
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`is scheduled to complete a jury trial by April 2021—about one year to the date
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`after IV files this Preliminary Response and well before any expected final written
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`decision in this proceeding. Duplicating the district court’s efforts would not be an
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`efficient use of the Board’s resources and would not serve the primary purpose of
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`AIA proceedings: to provide an effective and efficient alternative to district court
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`litigation.
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`A. The facts in this case support denial under 35 U.S.C. § 314(a).
`VMware has presented essentially the same art and grounds of
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`unpatentability in its Petition that it is asserting in the district-court case—namely
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`that claims 1, 3, 4, 6, 9, 10, 13, 22, 24 and 26 are obvious over (i) Chow alone, (ii)
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`Chow and Bauer, (iii) Chow and White, and (iv) Chow, Bauer, and White. See
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`EX2002. Specifically, in the district court, VMware submitted an invalidity
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`contention chart where they used Chow to challenge the same claims challenged
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`here. See EX2004. In this chart, VMware states: “[t]o the extent Chow ’175 is
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`found not to anticipate any asserted claims or claim elements of the ’752 Patent,
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`the reference nevertheless renders those claims or claim elements obvious under
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`35 U.S.C. § 103, either alone or in combination with other art identified in the
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`cover pleading, herein, or Appendix C of VMware’s Preliminary Invalidity
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`Contentions.” Id., 1 (emphasis added). Moreover, with respect to the other art that
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`VMware alleges would have been combinable with Chow, VMware identifies
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`Bauer and White. See EX2002, 9-10.
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`Regarding claim construction, since VMware presents the same invalidity
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`theories in both this proceeding and the civil case, any relevant claim-construction
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`issues necessary to resolve validity question, will of necessity be presented in both
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`forums—and under the very same claim-construction standard. See Pet., 12
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`(acknowledging the same claim construction standard applies here as in the civil
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`action). In fact, the parties have agreed on claim constructions for several terms
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`(including the term “agent”) and already completed extensive claim-construction
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`briefing in the district court for all disputed terms—each party filing multiple
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`briefs with expert declarations and a technology tutorial. See EX2001, EX2006-
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`EX2014. Additionally, a Markman hearing occurred on May 14 2020 and the court
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`has already issued their constructions on all disputed claim terms. See EX2005. As
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`the court stated prior to the Markman, it “is generally unlikely that the Court will
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`select a party’s proposed construction instead of the preliminary construction”—
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`which the Court confirmed during the hearing, making the Court’s constructions
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`final3. EX2003, 1; see also EX2005, EX2006. Accordingly, the district court’s
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`claim construction process is complete before the filing of this POR and before the
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`Board issues an institution decision in the instant proceeding.
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`Additionally, the district court is set to complete a jury trial before any final
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`decision from the Board would be due. A jury trial is scheduled to begin in early
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`April 2021. Trial is thus scheduled to also conclude in early April 2021, which is
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`less than one year from the date that IV is filing this Preliminary Response. Below
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`is a summary of the significant events in the district court proceeding, all of which
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`are scheduled to be completed before the Board would likely issue a final written
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`decision in this proceeding (should trial improvidently be instituted):
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`• IV served its infringement contentions on November 5, 2019. See
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`EX1013.
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`• VMware served its initial invalidity contentions on January 15, 2020,
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`asserting the same references and arguments as in the instant Petition.
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`EX1012, 4.
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`
`
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`3 During the Markman hearing, the Court changed its construction for
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`“consumed” to plain and ordinary meaning with that definition including “used”
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`and excluding “used up.”
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`• A Markman hearing was held May 14, 2020, and the parties anticipate a
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`claim construction order within a couple of week from the hearing.
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`EX2003, 1.
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`• Fact discovery will be completed by October 16, 2020. EX1012, 6.
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`• Expert discovery will be completed by December 21, 2020. Id.
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`• Case dispositive motions are due January 13, 2021. Id.
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`• A trial is scheduled to begin and conclude in early April, 2021. Id., 8.
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`The Board’s institution decision in this proceeding is due in the month of August,
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`2020, and thus (should trial be instituted) the Board’s final written decision would
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`be due no later than August, 2021—four months after the jury trial.
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`Because the district court will address the same or substantially overlapping
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`issues, arguments, and evidence before the Board’s final decision would be due,
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`instituting review here would not be an efficient use of the Board’s resources. Nor
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`would it be an effective and efficient alternative to district court litigation.
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`Accordingly, the Board should exercise its discretion to deny institution.
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`B. The Board has previously denied institution based on facts that
`are similar to the facts in this proceeding.
`The facts in this case mirror other cases where the Board has denied
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`institution under 35 U.S.C. § 314(a). In NHK Spring, the Board considered several
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`factors and denied institution, in part, because of the duplicative nature and the
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`advanced stage of a parallel district court proceeding. NHK Spring, IPR2018-
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`00752, Paper 8 at 19-20 (applying discretion under 35 U.S.C. § 314(a)); see also
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`id. at 11-18 (apply discretion under 35 U.S.C. § 325(d)). Other cases—relying on
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`NHK—have also denied institution. For example, in E-One, Inc. v. Oshkosh Corp.,
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`the Board applied NHK Spring’s analysis under 35 U.S.C. § 314(a) to deny
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`institution. E-One, Inc. v. Oshkosh Corp., IPR2019-00161, Paper 16 (P.T.A.B.
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`May 15, 2019). In E-One, the Board reasoned: “In the § 314(a) portion of its
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`analysis, [NHK Spring] noted that a district court proceeding involving the same
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`patent was scheduled to go to trial before a final decision would have been due in
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`the Board proceeding, and the Board proceeding would involve the same claim
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`construction standard, the same prior art references, and the same arguments as in
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`the district court.” Id. at 6. In both NHK Spring and E-One, factors warranting a
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`denial of institution included: the district court investing considerable time and
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`resources to handle the same issues presented in the IPR, and trials that were
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`scheduled to be completed prior to a Board’s final written decision. These are no
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`different from the facts here.
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`More recently, the Board issued a precedential decision identifying six
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`factors considered when determining whether discretionary denial is appropriate—
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`also leveraging the NHK Spring decision. Specifically, the Board in Fintiv stated
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`that when the patent owner raises an argument for discretionary denial under NHK
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`due to an earlier trial date, the Board’s decisions have balanced the following
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`factors:
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`U.S. Patent No. 7,949,752
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`1. whether the court granted a stay or evidence exists that one may
`be granted if a proceeding is instituted;
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`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
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`3. investment in the parallel proceeding by the court and the
`parties;
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`4. overlap between issues raised in the petition and in the parallel
`proceeding;
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`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
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`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
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`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 6. Fintiv states, “[t]hese
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`factors relate to whether efficiency, fairness, and the merits support the exercise of
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`authority to deny institution in view of an earlier trial date in the parallel
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`proceeding,” Id.
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`Here, factors 1-6 all weigh in favor of denying institution. There is currently
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`no stay in the parallel district court and no evidence exists that one may be granted
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`if trial is instituted here (Factor 1). The parallel district-court proceeding continues
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`to move forward as scheduled the court issuing preliminary constructions for all
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`disputed claim terms and after the completion of the Markman hearing a week ago.
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`See EX2005. As discussed above, the district-court trial will be completed months
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`before the Board’s projected statutory deadline for a final written decision (Factor
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`2). As Fintiv points out: “[i]f the court’s trial date is earlier than the projected
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`statutory deadline, the Board generally has weighed this fact in favor of exercising
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`authority to deny institution under NHK.” Id. at 9. Moreover, the parties and the
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`court have invested considerable time and resources in the district court
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`proceeding—having already engaged in discovery, completed claim construction
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`briefing and conducted a Markman hearing (Factor 3). The Board in Fintiv
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`explicitly stated, “district court claim construction orders may indicate that the
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`court and parties have invested sufficient time in the parallel proceeding to favor
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`denial.” Id. at 10. Here, the court will issue a claim construction order prior to the
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`Board’s institution decision.
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`In addition, the dispute in this proceeding and the district court involves the
`
`same parties and there are overlapping issues in both proceedings—VMware
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`having challenged the same claims using the same art in both proceedings (Factors
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`4 and 5).
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`Finally, regarding factor 6, the Fintiv decision noted:
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`[I]f the merits of a ground raised in the petition seem particularly
`strong on the preliminary record, this fact has favored institution. In
`such cases, the institution of a trial may serve the interest of overall
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`system efficiency and integrity because it allows the proceeding to
`continue in the event that the parallel proceeding settles or fails to
`resolve the patentability question presented in the PTAB proceeding.
`By contrast, if the merits of the grounds raised in the petition are a
`closer call, then that fact has favored denying institution when other
`factors favoring denial are present.
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`Id. at 14-15.
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`As shown below, VMware’s Petition also fails on the merits for multiple reasons.
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`In light of the other factors discussed above—all favoring denial of institution—
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`denying institution under 35 U.S.C. § 314(a) is appropriate. Instituting trial here
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`would result in the waste of the Board’s time and resources and result in
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`duplicative work.
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`IV. CLAIM CONSTRUCTION4
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`VMware’s Construction:
`“…‘agent’ is not construed (i.e. not
`limited to a mobile agent)….” Pet., 21.
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`Patent Owner’s Construction5
`“ a process that occupies a place and that
`is mobile, i.e., can move from a first
`place to a second place”
`
`
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`The term “agent” should be construed to mean “a process that occupies a
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`place and that is mobile, i.e., can move from a first place to a second place.” This
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`construction is unquestionably correct and is required because the ’752 patent
`
`expressly defines “agent” as such.
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`In particular, the ’752 patent incorporates by reference the entirety of the
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`text of White: “an agent system is taught by U.S. Pat. No. 5,603,031 [White],
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`issued to the Assignee of the present invention, the text of which is incorporated
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`
`
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`4 IV only addresses VMware’s proposed claim construction insofar as those
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`constructions are relevant to the issues raised in this Preliminary Response. By not
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`contesting any VMware proposed construction of a claim, IV is not agreeing that
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`any of those constructions are correct.
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`5 Patent Owner’s Construction is consistent with the construction of the term
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`“agent” recommended by a magistrate judge in the Eastern District of Texas.
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`EX1009, 24–26. The construction is also consistent with what the parties have
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`agreed to in the on-going parallel civil case. EX2001, 2
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`herein by reference.” EX1001, 5:27-31. White’s text provides a glossary defining
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`“agent” as “a process which occupies a place and that is mobile, i.e., can move
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`from a first place to a second place.” EX1020, 16:65-67.
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`As a consequence, the ’752 patent itself has provided a definition of “agent”
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`that must control here. When one patent expressly incorporates by reference
`
`another patent, and the incorporated patent defines a term, the incorporation
`
`includes that definition. Cook Biotech Inc. v. Acell, Inc., 460 F.3d 1365 at 1375-77
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`(Fed. Cir. 2006).
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`Underscoring the soundness of this result, this definition is fully consistent
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`with the examples of agents provided in the ’752 patent specification. E.g.,
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`EX1001, 14:10-14 (“each agent 22 may move to the servers and other
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`computers … and afterward, execute thereon”); see also id., 1:30-52. To be sure,
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`the ’752 patent does not describe any example where the agent is non-mobile. And,
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`for these same reasons, a magistrate judge in the Eastern District of Texas
`
`recommended this construction. EX1009, 24-26. In fact, VMWare has also agreed
`
`with this construction in the ongoing parallel civil case and thus the Court will
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`adopt this construction. EX2001, 2. The Board should consider it and adopt it as
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`well. See 37 C.F.R. § 42.100(b) (“Any prior claim construction determination
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`concerning a term of the claim in a civil action, or a proceeding before the [ITC],
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`that is timely made of record in the inter partes review proceeding will be
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`Case IPR2020-00470
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`considered.”) In its Petition, VMware does not contest that the lexicographical
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`definition of “agent” is the correct one. But it has suggested a b