1
`
`
`
`
`
` UNITED STATES DISTRICT COURT
` WESTERN DISTRICT OF TEXAS
` AUSTIN DIVISION
`INTELLECTUAL VENTURES I, ) Docket No. A 19-CA-1075 ADA
`LLC, INTELLECTUAL
`)
`VENTURES II, LLC
`)
` )
`vs.
` ) Austin, Texas
` )
`VMWARE, INC.
`) May 14, 2020
`
`
`
`
` TRANSCRIPT OF TELEPHONIC MARKMAN HEARING
`BEFORE THE HONORABLE ALAN D. ALBRIGHT
`
`APPEARANCES:
`For the Plaintiff:
`
`For the Defendant:
`
`
`
`Mr. Alex E. Breger
`Mr. Jonathan DeBlois
`Mr. Robert R. Gilman
`Prince, Lobel, Tye, LLP
`One International Place
`Boston, Massachusetts 02110
`Mr. Matthew D. Vella
`Prince, Lobel, Tye, LLP
`357 South Coast Highway,
`Suite 200
`Laguna Beach, California 92651
`Mr. Derek T. Gilliland
`The Sorey Law Firm
`109 West Tyler Street
`Longview, Texas 75601
`
`Mr. Michael R. Rueckheim
`Ms. Katherine K. Vidal
`Winston & Strawn, LLP
`275 Middlefield Road, Suite 205
`Menlo Park, California 94025
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`VMware - Exhibit 1027
`VMware v. IV I - IPR2020-00470
`Page 1 of 69
`
`
`
`
`
`
`
` UNITED STATES DISTRICT COURT
` WESTERN DISTRICT OF TEXAS
` AUSTIN DIVISION
`INTELLECTUAL VENTURES I, ) Docket No. A 19-CA-1075 ADA
`LLC, INTELLECTUAL
`)
`VENTURES II, LLC
`)
` )
`vs.
` ) Austin, Texas
` )
`VMWARE, INC.
`) May 14, 2020
`
`
`
`
` TRANSCRIPT OF TELEPHONIC MARKMAN HEARING
`BEFORE THE HONORABLE ALAN D. ALBRIGHT
`
`APPEARANCES:
`For the Plaintiff:
`
`For the Defendant:
`
`
`
`Mr. Alex E. Breger
`Mr. Jonathan DeBlois
`Mr. Robert R. Gilman
`Prince, Lobel, Tye, LLP
`One International Place
`Boston, Massachusetts 02110
`Mr. Matthew D. Vella
`Prince, Lobel, Tye, LLP
`357 South Coast Highway,
`Suite 200
`Laguna Beach, California 92651
`Mr. Derek T. Gilliland
`The Sorey Law Firm
`109 West Tyler Street
`Longview, Texas 75601
`
`Mr. Michael R. Rueckheim
`Ms. Katherine K. Vidal
`Winston & Strawn, LLP
`275 Middlefield Road, Suite 205
`Menlo Park, California 94025
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`VMware - Exhibit 1027
`VMware v. IV I - IPR2020-00470
`Page 1 of 69
`
`
`
`(Appearances Continued:)
`For the Defendant:
`
`Court Reporter:
`
`
`2
`
`Mr. Vivek V. Krishnan
`Winston & Strawn, LLP
`35 West Wacker Drive
`Chicago, Illinois 60601
`Mr. William M. Logan
`Winston & Strawn, LLP
`800 Capitol Street, Suite 2400
`Houston, Texas 77002
`Mr. M. Brett Johnson
`Winston & Straw, LLP
`2121 North Pearl Street,
`Suite 900
`Dallas, Texas 75201
`Ms. Lily Iva Reznik, CRR, RMR
`501 West 5th Street, Suite 4153
`Austin, Texas 78701
`(512)391-8792
`
`Proceedings reported by computerized stenography,
`transcript produced by computer-aided transcription.
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`VMware - Exhibit 1027
`VMware v. IV I - IPR2020-00470
`Page 2 of 69
`
`
`
`3
`
`THE COURT: Well, welcome, everyone, to the
`Markman hearing in this case.
`If counsel for the plaintiff, whoever's going to
`be speaking, if you would identify yourself, and then, if
`counsel for defendant would, who's going to be speaking,
`identify him or herself. And then, I'd like to get on the
`record where the parties are with respect to which claim
`terms we need to take up.
`So starting with the plaintiff, if you would
`please address the Court.
`MR. GILLILAND: Your Honor, this is Derek
`Gilliland here on behalf of Intellectual Ventures. And
`there should also be on the line from Prince Lobel on
`behalf of Intellectual Ventures, there should be Jonathan
`DeBlois, Mr. Matthew Vella, Mr. Robert Gilman, Mr. Alex
`Breger.
`
`And I believe Mr. DeBlois will be addressing two
`of the remaining terms in dispute: Those being
`"exhausted" and "consumed." Mr. Vella will be addressing
`the third term, No. 26, "virtual server," and with the
`modification of claim 27, as discussed by e-mail where
`"physical" there is changed to "physical interface," I
`believe claim 27. And all of the other claims are agreed
`to -- or term claim.
`THE COURT: Thank you, Mr. Gilliland.
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`14:01:02
`
`14:01:04
`
`14:01:05
`
`14:01:09
`
`14:01:14
`
`14:01:17
`
`14:01:21
`
`14:01:24
`
`14:01:26
`
`14:01:28
`
`14:01:30
`
`14:01:31
`
`14:01:36
`
`14:01:39
`
`14:01:41
`
`14:01:41
`
`14:01:47
`
`14:01:50
`
`14:01:53
`
`14:01:56
`
`14:02:00
`
`14:02:06
`
`14:02:10
`
`14:02:12
`
`14:02:14
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`VMware - Exhibit 1027
`VMware v. IV I - IPR2020-00470
`Page 3 of 69
`
`
`
`4
`
`And before anyone else talks, I screwed up. I
`should have allowed Suzanne to call the case so we have
`that on the record.
`Suzanne, if you'd be so kind as to call the case,
`
`please.
`
`THE CLERK: Certainly.
`Markman hearing in Civil Action 1:19-CV-1075,
`styled, Intellectual Ventures I and II, LLC vs. VMware,
`Incorporated.
`THE COURT: Okay. Having done that, if counsel
`for the defendant would identify whoever's going to be
`speaking, please.
`MS. VIDAL: Good afternoon, Judge.
`This is Kathy Vidal from Winston & Strawn,
`speaking on behalf of VMware. Speaking with me today are
`my colleagues, Mike Rueckheim and William Logan. We've
`got a lot of our team on, including Brett Johnson. So I
`won't name them all. And we also have our client, VMware
`on, including Brooks Beard, who I believe you know, who is
`the head of litigation.
`THE COURT: Okay. And, Ms. Vidal, who will be
`speaking on behalf -- primarily today? Or is there more
`than one person?
`MS. VIDAL: It would be three of us: Mike
`Rueckheim, William Logan and myself.
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`14:02:15
`
`14:02:17
`
`14:02:20
`
`14:02:22
`
`14:02:24
`
`14:02:25
`
`14:02:25
`
`14:02:32
`
`14:02:36
`
`14:02:39
`
`14:02:41
`
`14:02:43
`
`14:02:46
`
`14:02:47
`
`14:02:50
`
`14:02:53
`
`14:02:58
`
`14:03:00
`
`14:03:03
`
`14:03:06
`
`14:03:07
`
`14:03:10
`
`14:03:14
`
`14:03:15
`
`14:03:18
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`VMware - Exhibit 1027
`VMware v. IV I - IPR2020-00470
`Page 4 of 69
`
`
`
`5
`
`THE COURT: Okay. Very good.
`And I was having a little bit of a hard time
`hearing Mr. Gilliland.
`Ms. Vidal, if you want to go through and tell the
`Court what you think the claim terms that are left to take
`up at the hearing are, that will make sure that we're all
`on the same page.
`MS. VIDAL: I appreciate that, your Honor.
`There are only three that are left. And I have
`to say, with the caveat that VMware does reserve its right
`to all the terms you left on the cutting room floor. So
`I'll start with that that say we focus our discussion
`today on three terms, "exhausted," "consumed," and those
`are both from the 752 patent, and "virtual server" from
`the 051.
`THE COURT: Okay. Mr. Gilliland, since I think
`is more likely that it is the defendant who is going to be
`either an opponent either for what the Court proposed or a
`proponent for something else, I'm going to allow VMware to
`go first unless you have some objection to that.
`MR. GILLILAND: This is Derek Gilliland.
`And we have no objection to that. We're agreed
`on the terms to be argued.
`THE COURT: Ms. Vidal, if you could tell me which
`of the -- if which of the claim terms makes the most sense
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`14:03:19
`
`14:03:21
`
`14:03:23
`
`14:03:26
`
`14:03:28
`
`14:03:33
`
`14:03:36
`
`14:03:37
`
`14:03:39
`
`14:03:42
`
`14:03:46
`
`14:03:49
`
`14:03:50
`
`14:03:55
`
`14:03:59
`
`14:04:01
`
`14:04:08
`
`14:04:13
`
`14:04:18
`
`14:04:24
`
`14:04:27
`
`14:04:30
`
`14:04:31
`
`14:04:33
`
`14:04:39
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`VMware - Exhibit 1027
`VMware v. IV I - IPR2020-00470
`Page 5 of 69
`
`
`
`6
`
`to you to take up first.
`MS. VIDAL: Yes, your Honor. And if I could just
`give a brief overview, as well.
`The first term that we'd like to address is the
`term "exhausted." We think that's the most important of
`the three terms we're going to address today. That's in
`the 752 patent. We'd then like to move to the term
`"consumed" only because it's somewhat related to the term
`"exhausted." That one is less important. And not to be a
`spoiler, but we're going to suggest that the Court use
`ordinary meaning and keep the word "consumed" and not
`water it down with the word "use." And we can give a
`short explanation of that, but that will be a very short
`argument.
`And then, the third term is the only one we
`believe merits argument on the 051, and that's the term
`"virtual server."
`THE COURT: Well, before we move on, then, let me
`ask -- let me just pull it up here -- Mr. Gilliland, the
`defendant now wants -- if I heard her correctly, and she
`can correct me if I'm wrong, but I think they want plain
`and ordinary meaning for "consumed."
`How do you feel about that?
`MR. GILLILAND: And, your Honor, if you don't
`mind -- this is Derek Gilliland.
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`14:04:40
`
`14:04:43
`
`14:04:44
`
`14:04:46
`
`14:04:49
`
`14:04:52
`
`14:04:55
`
`14:04:59
`
`14:05:02
`
`14:05:06
`
`14:05:09
`
`14:05:12
`
`14:05:15
`
`14:05:18
`
`14:05:18
`
`14:05:21
`
`14:05:24
`
`14:05:27
`
`14:05:30
`
`14:05:37
`
`14:05:41
`
`14:05:46
`
`14:05:48
`
`14:05:50
`
`14:05:51
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`VMware - Exhibit 1027
`VMware v. IV I - IPR2020-00470
`Page 6 of 69
`
`
`
`7
`
`If you don't mind, I'd like to refer that
`question to Mr. DeBlois, who is prepared to argue the
`"consumed" term.
`THE COURT: Don't mind at all.
`MR. DEBLOIS: Good afternoon, your Honor. This
`is Jonathan DeBlois.
`We would prefer that the Court's preliminary
`construction be used. We agree with your reasoning and
`think that that would be the most proper.
`THE COURT: Okay. Well, then, we'll take it up
`in order then.
`But let's start, then -- and, Ms. Vidal, who will
`be arguing the claim term "exhausted"?
`MS. VIDAL: So, your Honor, I'd like to give a
`quick overview, and then, I'm going to turn it over to
`Mike Rueckheim.
`THE COURT: Okay. And by the way, I'm doing the
`best I can. I'm putting you all on mute, and so, if
`there's a lag time on me resuming, I'm here. But -- and
`so -- but I'm doing my best to go on and off and I'm sure
`y'all are, too. So I'm happy for you to do the overview,
`but I'm going to have mute on. And then, if you just want
`to transition to having him move into the argument for
`"exhausted," I'm happy for you to do that, or whatever
`works best for you all.
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`14:05:53
`
`14:05:57
`
`14:06:00
`
`14:06:00
`
`14:06:03
`
`14:06:04
`
`14:06:06
`
`14:06:10
`
`14:06:14
`
`14:06:16
`
`14:06:19
`
`14:06:20
`
`14:06:25
`
`14:06:27
`
`14:06:29
`
`14:06:31
`
`14:06:33
`
`14:06:35
`
`14:06:39
`
`14:06:45
`
`14:06:48
`
`14:06:53
`
`14:06:56
`
`14:07:00
`
`14:07:03
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`VMware - Exhibit 1027
`VMware v. IV I - IPR2020-00470
`Page 7 of 69
`
`
`
`8
`
`MS. VIDAL: Thank you, your Honor.
`So we'll go ahead and start the argument at slide
`5. And just explain our process here, your Honor, we're
`trying to tweak the constructions that the Court gave to
`keep them within the spirit of what it appeared the Court
`was trying to do. But the proposed edit, we believe,
`would bring the constructions more in line with the record
`and with Federal Circuit case law.
`So turning to the first construction of
`"exhausted," the Court's preliminary construction is
`unavailable to be used again at that instant of time, but
`may be available for use at a later instant of time. And
`in looking at that construction and the constructions
`proposed by the parties, it appears that the judge wanted
`to put -- or the Court wanted to put an additional
`limitation into the claim to explain that although the
`resource may be unavailable for reuse, there may be a way
`to refresh the resource so that it could be used later.
`So we were taking that into consideration when
`thinking about a construction that would stay within the
`spirit of that, but which we believe would have the
`construction comport more with the law, the record, and
`would be easy for the jury to understand.
`And so, Mike Rueckheim is going to step through
`the evidence on this. And then, you'll see the slide
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`14:07:05
`
`14:07:07
`
`14:07:10
`
`14:07:16
`
`14:07:20
`
`14:07:23
`
`14:07:27
`
`14:07:29
`
`14:07:32
`
`14:07:35
`
`14:07:39
`
`14:07:44
`
`14:07:48
`
`14:07:51
`
`14:07:54
`
`14:07:57
`
`14:08:01
`
`14:08:04
`
`14:08:07
`
`14:08:12
`
`14:08:14
`
`14:08:17
`
`14:08:20
`
`14:08:23
`
`14:08:28
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`VMware - Exhibit 1027
`VMware v. IV I - IPR2020-00470
`Page 8 of 69
`
`
`
`9
`
`again at the end. And at the end of the day, defendant's
`proposed construction is "unavailable to be used again,"
`and then, we added in a second clause that we tweaked,
`"but new amounts may be issued at a later time."
`And the thinking there is, if you use the example
`that's given in the patent about minutes on a cellphone
`plan, when you use up those minutes, they are, as
`defendant proposed, unavailable for reuse. But there is
`the possibility that you could go back and either buy more
`minutes or if a new -- if you hit a new month, those
`minutes may be refreshed. So that's why we added in that
`second clause that new amounts may be issued at a later
`time.
`
`And if you turn to slide 6, what I tried to
`capture in slide 6 was some of the concerns we had with
`the Court's construction. Directionally, we think we
`understand where the Court wanted to go. One of the
`concerns we had was, we didn't know whether the
`construction would cover the appellant -- the applicant's
`repeated disclaimer of reusable hardware and software
`resources. Because if you read the construction,
`unavailable to be used again at that instant in time, that
`might include something like memory where you've used it
`all up. But then, for example, you might delete a file,
`and then, again, it would be found available in the
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`14:08:30
`
`14:08:33
`
`14:08:36
`
`14:08:39
`
`14:08:43
`
`14:08:46
`
`14:08:49
`
`14:08:53
`
`14:08:56
`
`14:08:59
`
`14:09:03
`
`14:09:06
`
`14:09:09
`
`14:09:10
`
`14:09:16
`
`14:09:21
`
`14:09:25
`
`14:09:27
`
`14:09:29
`
`14:09:34
`
`14:09:37
`
`14:09:41
`
`14:09:44
`
`14:09:47
`
`14:09:50
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`VMware - Exhibit 1027
`VMware v. IV I - IPR2020-00470
`Page 9 of 69
`
`
`
`10
`
`future.
`
`So Mike's going to step through that, but one of
`our concerns was the construction as written would then
`cover certain subject matter that was given up during
`prosecution.
`The second concern we had with the construction
`was the term "instant of time" versus "later instant of
`time," and we had concern about the temporal scope there
`in terms of where one part of that ends and where the
`other part begins. And so, I just -- I wanted to define
`that, as well, because these are some of the concerns that
`fed into our construction. We thought that there were
`arguably no discernible bounds when it came to that part
`of the claim construction.
`And the third is the conditional part of this
`construction. Is there a prerequisite before the service
`resource may be available for use at a later time? The
`construction doesn't provide the jury with any guidance as
`to the dividing line between resources that are consumed
`but still available instants later and those that are
`capable of being exhausted.
`So those are our concerns with the term. We
`believe we kept within the spirit of what the Court was
`trying to do and have proposed language. And with that, I
`will -- unless there are any questions, I will turn it
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`14:09:52
`
`14:09:53
`
`14:09:57
`
`14:10:00
`
`14:10:02
`
`14:10:04
`
`14:10:08
`
`14:10:12
`
`14:10:16
`
`14:10:19
`
`14:10:22
`
`14:10:26
`
`14:10:29
`
`14:10:31
`
`14:10:34
`
`14:10:37
`
`14:10:41
`
`14:10:44
`
`14:10:47
`
`14:10:52
`
`14:10:56
`
`14:10:57
`
`14:10:59
`
`14:11:01
`
`14:11:04
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`VMware - Exhibit 1027
`VMware v. IV I - IPR2020-00470
`Page 10 of 69
`
`
`
`11
`
`over to Mike Rueckheim to step the Court through the
`evidence and our proposal.
`MR RUECKHEIM: Thanks, Kathy.
`So hearing no questions, unless there's a mute
`issue, so Mike Rueckheim on behalf of VMware.
`So I would like to turn the Court to slide 9. On
`slide 9, we have just the exemplary claim here. It's
`claim 9 from the 752 patent. And we included this really
`to kind of give context to what we're talking about in
`this case. And so, the claim deals with this agent, this
`network-based agent. And the patent discusses a
`network-based agent as being some type of virtual software
`assistance.
`And what the agent does is, it uses a service and
`then, it uses a service resource. And the patent
`describes two different types of service resources. The
`patent gives the example of having this agent place long
`distance calls for whoever's using the software. And one
`type of service resource you could use is a telephone for
`placing the call. But the patent also describes that
`there are certain types of service resources that are
`configured to be consumed by the agent.
`And that's exactly what the claim language in
`claim 9 says and all the claims that are at issue in this
`case is that the service resource that is configured to be
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`14:11:07
`
`14:11:10
`
`14:11:14
`
`14:11:20
`
`14:11:23
`
`14:11:27
`
`14:11:31
`
`14:11:33
`
`14:11:37
`
`14:11:41
`
`14:11:44
`
`14:11:47
`
`14:11:51
`
`14:11:51
`
`14:11:55
`
`14:11:58
`
`14:12:02
`
`14:12:06
`
`14:12:09
`
`14:12:13
`
`14:12:15
`
`14:12:18
`
`14:12:21
`
`14:12:24
`
`14:12:26
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`VMware - Exhibit 1027
`VMware v. IV I - IPR2020-00470
`Page 11 of 69
`
`
`
`12
`
`consumed. And the claim also states that wherein the
`service resource is exhausted upon being consumed. And
`"exhausted" is a claim term at issue right now. The
`patent gives the example of these long distance minutes
`being the type of service resource that are configured to
`be consumed and exhausted.
`And so, if we turn to slide 10, slide 10 includes
`just the excerpt of the claim language we've inserted, the
`proposed modified construction that we're proposing in
`this case such that the service resource when it's
`consumed -- I'm sorry. An amount of the service resource
`where it's consumed is unavailable to be used again, but
`new amounts may be issued at a later time.
`And so, what this proposal is really trying to
`encompass is really two concepts. One is the claim
`language recites that the type of service resource is
`exhausted, therefore, it's unavailable to reuse again.
`For example, if you have so many long distance minutes and
`you have a particularly long call, you can use up all of
`your long distance minutes. But, of course, common sense
`will tell you that a person who's ordered long distance
`minutes can order additional long distance minutes, and
`that's the new amounts of resources that can be used at a
`later time.
`So if you turn to slide 11. So for the next
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`14:12:29
`
`14:12:33
`
`14:12:38
`
`14:12:41
`
`14:12:44
`
`14:12:47
`
`14:12:50
`
`14:12:57
`
`14:13:02
`
`14:13:06
`
`14:13:09
`
`14:13:12
`
`14:13:16
`
`14:13:20
`
`14:13:22
`
`14:13:26
`
`14:13:29
`
`14:13:33
`
`14:13:36
`
`14:13:37
`
`14:13:41
`
`14:13:43
`
`14:13:46
`
`14:13:49
`
`14:13:50
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`VMware - Exhibit 1027
`VMware v. IV I - IPR2020-00470
`Page 12 of 69
`
`
`
`13
`
`section, I want to go through exactly what was said to the
`patent office by the original applicants. I'm going to
`try not to exhaust the Court here, but there are a few
`slides. But we've put this together really because I know
`that when you're just reading the multiple briefs with
`multiple exhibits and different office actions, things may
`get lost. And we put together a few slides here to show
`really exactly what was said to the patent office and
`exactly what the applicant gave up to these arguments.
`So on slide 11, the original claims just recited
`that you have an agent for using a service and a service
`resource. And the patent office issued this rejection
`based on prior art called Humpleman. And Humpleman
`discloses a client server architecture with general
`computer hardware on either side. And the applicant tried
`to get around Humpleman by saying that, well, what we're
`claiming here is a type of service resource that is
`configured to be consumed by the agents.
`If you'd turn to slide 12. The applicant then
`made the argument that Humpleman just discloses hardware.
`That's the service resource at issue in Humpleman. And
`hardware, the applicant said, is not the type of service
`resource that is configured to be consumed by the agent.
`If the Court will turn to slide 13. So what's
`next happening was, the examiner didn't quite agree with
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`14:13:56
`
`14:14:00
`
`14:14:03
`
`14:14:07
`
`14:14:10
`
`14:14:14
`
`14:14:16
`
`14:14:19
`
`14:14:21
`
`14:14:24
`
`14:14:29
`
`14:14:34
`
`14:14:36
`
`14:14:43
`
`14:14:45
`
`14:14:48
`
`14:14:52
`
`14:14:55
`
`14:15:02
`
`14:15:06
`
`14:15:10
`
`14:15:14
`
`14:15:16
`
`14:15:25
`
`14:15:31
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`VMware - Exhibit 1027
`VMware v. IV I - IPR2020-00470
`Page 13 of 69
`
`
`
`14
`
`this argument, and the examiner stated that, well, all
`resources generally, not really discussing service
`resources, or the patent also describes something called
`computational resources as something different. But the
`examiner said all resources are configured to be consumed.
`The applicant needs to be more specific.
`So in response to this, the applicant then
`amended the claims again and stated that this is the type
`of service resource that's configured to be consumed, and
`wherein, the service resource is exhausted after it is
`being consumed.
`On slide 14, the applicant repeated pretty much
`its prior argument that the hardware in Humpleman is not
`what it's claiming. And on this slide right here, this is
`a screen shot from the file history. This is not us
`adding bolding. This is the applicant saying in bold,
`Humpleman has hardware as a resource, and that is not
`something that is configured to be consumed and exhausted.
`And I really think the last sentence on this
`slide 14 is the most clear because the applicant said that
`hardware when it's used as a resource is not consumed or
`exhausted as recited in the claims. This is a clear
`example of the applicant giving up any claim scope
`covering hardware as being some type of service resource
`that is consumed or exhausted.
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`14:15:35
`
`14:15:38
`
`14:15:40
`
`14:15:42
`
`14:15:45
`
`14:15:48
`
`14:15:52
`
`14:15:55
`
`14:15:58
`
`14:16:02
`
`14:16:07
`
`14:16:12
`
`14:16:16
`
`14:16:21
`
`14:16:26
`
`14:16:29
`
`14:16:32
`
`14:16:34
`
`14:16:39
`
`14:16:41
`
`14:16:46
`
`14:16:51
`
`14:16:55
`
`14:17:00
`
`14:17:02
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`VMware - Exhibit 1027
`VMware v. IV I - IPR2020-00470
`Page 14 of 69
`
`
`
`15
`
`So if the Court can turn to slide 15. So there's
`a few disclaimers at issue in this case. What's important
`about the Humpleman one, in particular, is that we raise
`this issue in our briefing. IV did not rebut this issue
`at all in their briefing. Also, the prior litigation, the
`IV vs. HCC, this issue was never raised up in the briefing
`in that litigation, either.
`In that litigation, the parties dealt with
`multiple terms, and they only spent two pages of the
`argument in the defendant's responsive claim construction
`brief talking about disclaimers at all, and they dealt
`with the next disclaimer we're going to get to and didn't
`really address Humpleman. So the Humpleman disclaimer was
`not in front of the prior court.
`Why is Humpleman important with respect to the
`Court's preliminary claim construction? Well, it begs the
`question that the applicant gave up covers of the client
`server architecture of Humpleman, and that's what's shown
`on the right-hand side of the slide 15. This is a figure
`3 that was being discussed by the examiner in the
`rejection. So in just general server, resources,
`computer, memory, hardware. If the applicant gave that up
`as being covered as the type of service resource that's
`being claimed, would IV's expert be able to argue under
`the Court's preliminary construction that a system like
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`14:17:07
`
`14:17:10
`
`14:17:14
`
`14:17:18
`
`14:17:22
`
`14:17:27
`
`14:17:31
`
`14:17:33
`
`14:17:37
`
`14:17:39
`
`14:17:43
`
`14:17:46
`
`14:17:49
`
`14:17:52
`
`14:17:54
`
`14:17:56
`
`14:18:01
`
`14:18:05
`
`14:18:08
`
`14:18:11
`
`14:18:14
`
`14:18:18
`
`14:18:21
`
`14:18:24
`
`14:18:30
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`VMware - Exhibit 1027
`VMware v. IV I - IPR2020-00470
`Page 15 of 69
`
`
`
`16
`
`Humpleman is encompassed by the claims now?
`If the memory in these client server systems is
`stilled, it is unavailable to be used at that instant of
`time as per the Court's preliminary construction. But if,
`you know, a user deletes certain files, maybe the memory
`is then available for use at a later time. This issue's
`important here because, as I'll get to in a second, that's
`exactly what IV is accusing in this case. It's using
`systems that use CPU processing and memory of being the
`service resources that are being exhausted when they told
`the world and they told the patent office that that is not
`what is covered by their claims.
`THE COURT: Counsel.
`MR RUECKHEIM: Yeah.
`THE COURT: Do you have the patent available?
`MR. RUECKHEIM: The Humpleman patent or the 752?
`THE COURT: The 752.
`MR. RUECKHEIM: Yep.
`THE COURT: Okay. Can you go to column 10?
`MR. RUECKHEIM: Yep. Got it.
`THE COURT: And if you can go to the very bottom
`of that column. And in column 10, it identifies -- at the
`bottom, identifies what service resources are. And
`starting around line 61 or 62, it says, in general, a
`service resource is a resource which enables a service to
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`14:18:33
`
`14:18:37
`
`14:18:42
`
`14:18:45
`
`14:18:48
`
`14:18:53
`
`14:18:59
`
`14:19:02
`
`14:19:07
`
`14:19:11
`
`14:19:14
`
`14:19:17
`
`14:19:24
`
`14:19:25
`
`14:19:27
`
`14:19:29
`
`14:19:33
`
`14:19:35
`
`14:19:35
`
`14:19:41
`
`14:19:42
`
`14:19:45
`
`14:19:54
`
`14:19:57
`
`14:20:02
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`VMware - Exhibit 1027
`VMware v. IV I - IPR2020-00470
`Page 16 of 69
`
`
`
`17
`
`be performed, for example, in a call-processing service,
`service resources may include a telephone, an answering
`machine, a telephone line, goes on.
`Tell me how that affects your argument here with
`regard to hardware.
`MR. RUECKHEIM: Okay. So if I can direct the
`Court's attention to the very -- the very next paragraph.
`So this is column 11, starting around line 5. The patent
`states that at least some service resources may comprise
`discrete units which are consumed during utilization of
`the service. And it's here where it starts talking about
`long distance calling time.
`And so, my read of this patent is, they're
`describing two type of service resources. First, the
`patent is very vague as to what service resource is. It
`really only provides examples, and it says that some
`examples are going to include stuff like telephones, like
`your Honor just pointed out; but it said at least some of
`them are the type that can actually be consumed during
`operation. And that's exactly how the applicant amended
`its claims and, at first, just recited service resources,
`which I think could have encompassed exactly what your
`Honor said. Everything under the sun maybe.
`But then, it changed its claims to say no. We're
`talking about we're claiming the type of service resources
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`14:20:06
`
`14:20:11
`
`14:20:14
`
`14:20:18
`
`14:20:24
`
`14:20:27
`
`14:20:30
`
`14:20:34
`
`14:20:39
`
`14:20:43
`
`14:20:47
`
`14:20:49
`
`14:20:50
`
`14:20:54
`
`14:20:57
`
`14:21:02
`
`14:21:04
`
`14:21:10
`
`14:21:12
`
`14:21:14
`
`14:21:18
`
`14:21:21
`
`14:21:24
`
`14:21:26
`
`14:21:30
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`VMware - Exhibit 1027
`VMware v. IV I - IPR2020-00470
`Page 17 of 69
`
`
`
`18
`
`that can be -- that are configured to be consumed. And
`then, it doubled down, it changed the claims to state that
`an amount of the service resources are going to be
`exhausted upon being consumed. And I struggle with the
`concept of thinking of an amount of a telephone being
`exhausted upon being consumed if telephone was encompassed
`by these claims. I don't think they can.
`And if that addresses your Honor's question, I
`can move on to the Chou reference.
`THE COURT: It does.
`MR. RUECKHEIM: Okay. So turning to slide 16,
`this is really the second disclaimer that was discussed
`during the file wrapper. And so, what happened was, the
`examiner, as the patent office often does, it will say
`that -- it will basically say that the applicant's prior
`arguments are moot because we now have a new reference,
`right? And so, what the examiner did was, it dropped the
`hardware reference for Humpleman and it imposed the Chou
`reference. And Chou discloses reusable software
`cartridges. And so, the applicant then amended the claim
`slightly to say that it's an amount of the service
`resource that's being exhausted.
`And if the Court can turn to slide 17, this is a
`slide that really gets me. We added highlighting over
`one -- you know, it's like five words. But the rest of
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`14:21:33
`
`14:21:38
`
`14:21:42
`
`14:21:46
`
`14:21:51
`
`14:21:55
`
`14:21:59
`
`14:22:06
`
`14:22:08
`
`14:22:10
`
`14:22:11
`
`14:22:15
`
`14:22:20
`
`14:22:23
`
`14:22:26
`
`14:22:30
`
`14:22:33
`
`14:22:37
`
`14:22:41
`
`14:22:45
`
`14:22:48
`
`14:22:52
`
`14:22:54
`
`14:23:00
`
`14:23:04
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`VMware - Exhibit 1027
`VMware v. IV I - IPR2020-00470
`Page 18 of 69
`
`
`
`19
`
`the bolding in here in italic, this is the applicant
`making this emphasis. And so, what the applicant did is
`said -- basically it says that Chou discloses these
`cartridges that are reused, and that's reused in bold.
`And then, the applicant says that Chou teaches the exact
`opposite of what is being claimed.
`And at least in all my years of practice, I have
`never seen an applicant make a more clear disclaimer that
`the claims are the exact opposite of a feature that is
`spelled out clearly as something that is being reused.
`So if we can turn to slide 18. So again, this is
`another slide that shows the Court's preliminary claim
`construction on one side and then, really, what's being
`disclosed in Chou on the right-hand side.
`So Chou disclosed these cartridges, and the
`cartridges would switch between states of being busy, and
`when they're not being busy, they're released to the pool,
`so they can -- they're now labeled as free. They're able
`to be reused, right? And so, the question is, if the
`applicant gave up claim scope with regard to Chou by
`saying it's the exact opposite of its claims, does the
`Court's preliminary construction cover Chou?
`If you look, when a cartridge is busy,
`potentially you could argue that it's unavailable to be
`used again as an instant in time; but if it can turn to
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`14:23:06
`
`14:23:10
`
`14:23:14
`
`14:23:17
`
`14:23:22
`
`14:23:24
`
`14:23:28
`
`14:23:31
`
`14:23:35
`
`14:23:40
`
`14:23:47
`
`14:23:51
`
`14:23:54
`
`14:23:58
`
`14:24:01
`
`14:24:03
`
`14:24:08
`
`14:24:11
`
`14:24:14
`
`14:24:17
`
`14:24:20
`
`14:24:25
`
`14:24:27
`
`14:24:30
`
`14:24:33
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`VMware - Exhibit 1027
`VMware v. IV I - IPR2020-00470
`Page 19 of 69
`
`
`
`20
`
`being free, maybe someone can could argue that it's
`available for use at a later instant of time.
`And then, just to end this discussion, if the
`Court can turn to slide 19. So slide 19, this is the
`examiner's response to Chou. So the examiner did two
`things in responding to this Chou argument by the
`applicant. First, it dropped the Chou reference, and it
`imposed a new reference called Cohn, C-O-H-N. And Cohn
`disclosed these -- basically some type of credit --
`billing credit system where you could deplete fees from
`the amount of credit a user has or very close to depleting
`long distance minutes.
`But the examiner also took somewhat issue with
`the applicant's arguments. The examiner stated
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
