Trials@uspto.gov
`571-272-7822
`
`Paper 37
`Date: May 4, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`VMWARE, INC.,
`Petitioner,
`v.
`CIRBA IP INC.,
`Patent Owner.
`
`IPR2021-00008
`Patent 10,523,492 B2
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`
`
`Before DAVID C. McKONE, TERRENCE W. McMILLIN, and
`RUSSELL E. CASS, Administrative Patent Judges.
`CASS, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 37
`Date: May 4, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`VMWARE, INC.,
`Petitioner,
`v.
`CIRBA IP INC.,
`Patent Owner.
`
`IPR2021-00008
`Patent 10,523,492 B2
`
`
`
`
`
`
`
`
`
`Before DAVID C. McKONE, TERRENCE W. McMILLIN, and
`RUSSELL E. CASS, Administrative Patent Judges.
`CASS, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`IPR2021-00008
`Patent 10,523,492 B2
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`I.
`
`INTRODUCTION
`
`A. Background
`In this inter partes review, VMWare, Inc. (“Petitioner”) challenges
`the patentability of claims 1–33 (the “challenged claims”) of U.S. Patent No.
`10,523,492 B2 (Ex. 1001, “the ’492 patent”), which is assigned to Cirba IP
`Inc. (“Patent Owner”).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision, issued pursuant to 35 U.S.C. § 318(a), addresses issues and
`arguments raised during the trial in this inter partes review. For the reasons
`discussed below, Petitioner has proven by a preponderance of the evidence
`that claims 1–33 are unpatentable.
`
`B. Procedural History
`In this proceeding, Petitioner relies upon the following references:
`Power et al., U.S. Patent No. 7,616,583 B1, issued
`Nov. 10, 2009 (Ex. 1004, “Power”);
`Kerr et al., U.S. Patent No. 8,606,886 B2, issued Dec. 10,
`2013 (Ex. 1006, “Kerr”);
`Van Hoose et al., U.S. Patent Publication No.
`2004/0034577 A1, published Feb. 19, 2004 (Ex. 1005, “Van
`Hoose”); and
`Le et al., U.S. Patent No. 7,356,679 B1, issued Apr. 8,
`2008 (Ex. 1007, “Le”).
`Pet. iv, 15.
`
`Petitioner submits the Declaration of Dr. Nader F. Mir (Ex. 1002).
`Patent Owner submits the Declaration of Dr. Vijay Madisetti (Ex. 2015).
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`Petitioner challenges the patentability of claims 1–33 of the
`’492 patent based on the following grounds:
`Reference(s)/Basis
`Claims Challenged
`35 U.S.C. §
`1–5, 9–16, 20–27,
`Power
`102(e)1
`21–33
`Power, Kerr
`1–33
`103(a)
`Van Hoose, Le
`1–33
`103(a)
`Pet. 15. Patent Owner filed a Preliminary Response. Paper 8 (“Prelim.
`Resp.”). We instituted trial on all grounds of unpatentability. Paper 10
`(“Inst. Dec.”), 41.
`During the trial, Patent Owner filed a Response (Paper 13, “PO
`Resp.”), Petitioner filed a Reply (Paper 23, “Pet. Reply”), and Patent Owner
`filed a Sur-reply (Paper 25, “PO Sur-reply”).
`An oral hearing was held on February 9, 2022, a transcript of which
`appears in the record. Paper 35 (“Tr.”).
`
`C. Real Parties in Interest
`Petitioner states that “VMware, Inc.” is the real party in interest. Pet.
`87. Patent Owner states that “[t]he real parties-in-interest are Cirba IP, Inc.
`and Cirba Inc. (d/b/a Densify).” Paper 3, 2.
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), included revisions to 35 U.S.C. §§ 102 and 103 that became
`effective as of March 16, 2013. The application for the ’492 patent was filed
`after March 16, 2013, but includes a priority claim to an application filed
`before this date. Ex. 1001, code (22), (63). Petitioner contends that the
`challenged claims are entitled to an effective filing date of April 21, 2006,
`and that the pre-AIA versions of §§ 102 and 103 apply here. Pet. 12, 15.
`Patent Owner does not challenge this assertion. PO Resp. In this decision,
`we apply the pre-AIA versions of 35 U.S.C. §§ 102 and 103.
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`D. Related Proceedings
`The parties identify the following district court case involving the
`’492 patent: VMware, Inc. v. Cirba Inc. (d/b/a Densify), No. 1:20-cv-00272-
`LPS (D. Del.). Pet. 87; Paper 3, 2.
`
`E. The ’492 Patent (Ex. 1001)
`The ’492 patent relates to systems and methods for analyzing a
`collection of computers for consolidation based on various constraints,
`including compatibility. Ex. 1001, code (57). According to the ’492 patent
`specification, challenges have arisen in managing distributed computing
`systems due to the sprawl that can occur over time as applications and
`servers proliferate, resulting in more processing capacity than is required by
`an organization. Id. at 1:45–56. Removing some of the servers from a large
`computing environment, the specification explains, can significantly reduce
`costs. Id. at 1:67–2:2.
`To address this perceived concern, the ’492 patent discloses an
`analysis program for determining compatibilities in a computing
`environment and identifying consolidation solutions, as shown, for example,
`in Figure 1 reproduced below.
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`Figure 1 is a block diagram of an analysis program for evaluating the
`compatibility of computer systems to identify consolidation solutions.
`Ex. 1001, 3:40–42, Fig. 1.
`Ex. 1001, Fig. 1. As shown in Figure 1, an analysis program 10, accessed
`through a computer station 14, gathers data 18 pertaining to a collection of
`systems to be consolidated 16. Id. at 5:15–19. The data is obtained for each
`system and includes one or more parameters that preferably relate to
`technical, business, and workload characteristics or features of the respective
`system. Ex. 1001, 5:28–32. The analysis program 10 uses the gathered data
`18 to evaluate the compatibility of the computer systems and provides a
`roadmap 20 specifying how the original set of systems can be consolidated
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`to a smaller number of systems 22. Id. at 5:19–23. The systems include
`source systems from which applications and/or data are to be moved, and
`target servers or systems to which such applications and/or data are to be
`moved. Id. at 5:56–59.
`The compatibility analysis is performed using differential rule sets to
`evaluate and quantify the compatibility of systems and produce an overall
`compatibility score. Ex. 1001, 6:65–7:6. To assess the compatibility of
`transferring multiple source entities (N) to a target, a rule-based analysis can
`compute a compatibility score based on a combination of N-to-1 and N-by-N
`compatibility analyses. Id. at 30:2–5. An N-to-1 intercompatibility analysis
`“assesses each source system against the target” to generate a score that
`“reflect[s] the compatibility between N source entities and a single target.”
`Id. at 30:5–7, 30:45–47. An N-by-N intracompatibility analysis “evaluates
`each source system against each of the other source systems” to generate a
`score that “reflect[s] the compatibility amongst N source entities with
`respect to a given rule set.” Id. at 30:7–8, 31:50–52. Based on this analysis,
`a consolidation solution (or roadmap) is generated containing one or more
`transfer sets specifying one or more source entities and a common target. Id.
`at 6:41–50.
`
`F. Illustrative Claims
`Of the challenged claims, claims 1, 12, and 23 are independent.
`Claim 1 is illustrative and is reproduced below.
`1. [a, Preamble] A computer implemented method for
`placing source systems on target systems, the method
`comprising:
`[a1] evaluating one or more source systems against other
`source systems and against one or more target systems
`using at least one rule set that evaluates parameters of the
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`systems to determine whether the systems can or can not
`be placed together on a specific target system,
`[a2] wherein the evaluating comprises one or more of: a 1-to-
`1 compatibility analysis, an N-to-1 compatibility analysis,
`or an N-by-N compatibility analysis; and
`[b] placing the source systems onto the target systems in
`accordance with technical, business, and workload
`constraints determined in the compatibility analysis.
`Ex. 1001, 38:37–48 (bracketed paragraph identifiers added).
`
`II. DISCUSSION
`
`A. Claim Construction
`A claim “shall be construed using the same claim construction
`standard that would be used to construe the claim in a civil action under 35
`U.S.C. § 282(b).” 37 C.F.R. § 42.100(b) (2020). Petitioner states in its
`Petition that it “has not proposed any terms for construction because no
`constructions are necessary to resolve any disputes identified in this
`Petition.” Pet. 14. In its Preliminary Response, Patent Owner provided
`constructions for a number of terms, including “source system,” “target
`system,” “1-to-1 compatibility analysis,” “N-to-1 compatibility analysis,”
`“N-to-1 compatibility analysis,” and “N-by-N compatibility analysis.”
`Prelim. Resp. 17–20.
`In our Institution Decision, we preliminarily adopted Patent Owner’s
`constructions, as follows:
`“source system”: a system from which applications and/or data
`are to be moved;
`“target system”: a system to which applications and/or data
`from a source system are to be moved;
`“N-to-1 compatibility analysis”: an analysis that evaluates the
`compatibility of each of N source systems against a common
`target system; and
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`“N-by-N compatibility analysis”: an analysis that evaluates the
`compatibility of each of N source systems against each of the
`other source systems among the N source systems.
`Inst. Dec. 8–9. These terms will be discussed further below. We also
`discuss the construction of the phrase “evaluating one or more source
`systems against other source systems,” which the parties raise in the post-
`institution briefing. PO Resp. 18–27; Pet. Reply 4–9; PO Sur-reply 7–11.
`
`1. “Source System” and “Target System”
`In its Patent Owner response, Patent Owner states that “source
`system” and “target system,” should be interpreted to be consistent with the
`’492 patent specification’s “defining statement” that “a source system refers
`to a system from which applications and/or data are to be moved, and a
`target server or system is a system to which such applications and/or data are
`to be moved.” PO Resp. 13. Patent Owner further states that “neither party
`has presented any argument that requires the Board to construe ‘source
`system’ or ‘target system,’” and “[a]ccordingly, it is unnecessary for the
`Board to do so.” PO Sur-reply 2–3.
`Petitioner asserts that “[t]he Board should not permit Patent Owner to
`disavow its own express definitions post-institution,” and that “Patent
`Owner proposed different constructions for these terms in the parallel
`litigation.” Pet. Reply 2 & n.2. Petitioner, however, does not assert that
`these terms must be expressly construed in order to resolve any dispute
`between the parties in this inter partes proceeding. We also note that similar
`terms have been the subject of claim construction proceedings in the district
`court litigation concerning the ’492 patent. See Ex. 2022 (Memorandum
`Opinion in Case No. 19-742-LPS) 9–12.
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`Based on the full trial record, we determine that the terms “source
`system” and “target system” need not be expressly construed to resolve the
`issues presented in this proceeding. See Nidec Motor Corp. v. Zhongshan
`Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)
`(“[O]nly those terms need be construed that are in controversy, and only to
`the extent necessary to resolve the controversy.”).
`
`2. “N-to-1 Compatibility Analysis” and “N-by-N Compatibility
`Analysis”
`In its Patent Owner Response, Patent Owner acknowledges that our
`Institution Decision preliminarily adopted Patent Owner’s construction of
`“N-to-1 compatibility analysis,” but stated that “the Board did not explicitly
`indicate that it applied Patent Owner’s interpretation that ‘each source
`system is separately and individually evaluated against the target system,’”
`which Patent Owner applied in its arguments concerning Van Hoose. PO
`Resp. 13–14. Accordingly, Patent Owner proposes that the term “separately
`and individually” be included in the construction of “N-to-1 compatibility
`analysis.” Id. at 14–17. Petitioner disagrees that “separately and
`individually” should be included in the construction of “N-to-1 compatibility
`analysis.” Pet. Reply 2–4. The parties do not dispute the construction of
`“N-by-N compatibility analysis.” PO Resp. 18; Pet. Reply 1–9.
`As discussed below, we find that all of the challenged claims have
`been shown to be unpatentable based on Grounds 1 and 2 involving Power
`and/or Power and Kerr. See §§ II.D, II.E, infra. Therefore, we need not
`decide whether the challenged claims are also unpatentable based on Ground
`3 involving Van Hoose and Le. Because the parties’ dispute concerning the
`terms “N-to-1 compatibility analysis” and “N-by-N compatibility analysis”
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`relates to Ground 3, and is not necessary to resolve Grounds 1 and 2, we
`need not expressly construe these terms for purposes of this Decision, and
`decline to do so. See Nidec, 868 F.3d at 1017.
`
`3. “Evaluating one or more source systems against other source
`systems”
`Patent Owner argues that one of ordinary skill “would have
`understood ‘evaluating one or more source systems against other source
`systems,’ as used in the evaluating step, to directly compare source
`system[s] with other source systems.” PO Resp. 20; PO Sur-reply 7–11.
`Petitioner disagrees, arguing that the claim language has no “direct
`comparison” requirement. Pet. Reply 4–9.
`More specifically, Patent Owner argues that its construction “is
`consistent with the import of the word ‘against,’ which is commonly
`understood to mean ‘compared or contrasted with.’” PO Resp. 20–21 (citing
`Ex. 2016 (Merriam Webster’s Collegiate Dictionary, 11th ed., 2003), 23;
`Ex. 2017 (Merriam Webster’s Collegiate Dictionary, 9th ed., 1983), 63;
`Ex. 2015 ¶ 109). Patent Owner asserts that “[t]he example used by the
`dictionary to explain that meaning is ‘profits are up [against] last year,’
`which indicates a direct comparison with another, i.e., this year’s profits
`with last year’s profits.” Id. at 21. According to Patent Owner, “[t]he
`claims use the word ‘against’ in an ordinary sense, i.e., to require direct
`comparisons of ‘one or more source systems’ with ‘other source systems.’”
`Id. (citing Ex. 2015 ¶ 110).
`Patent Owner also argues that “[t]he ’492 patent’s specification uses
`the word ‘against’ consistently with its commonly understood meaning of
`‘compared or contrasted with’ and expresses no intent to impart a different
`meaning to that word.” PO Resp. 21. Patent Owner relies on the
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`specification’s use of the term “against” in the context of the N-by-N
`compatibility analysis when it states that the N-by-N analysis “‘evaluates
`each source system against each of the other source systems’” and “‘is
`performed with respect to a given rule set and involves . . . [s]eparately
`evaluat[ing] each source entity against the other source entities with the rule
`set.’” Id. at 21–22 (citing Ex. 1001, 3:5–8, 31:50–64; Ex. 2015 ¶ 111).
`Patent Owner asserts that, “[a]s another example, the ’492 patent describes
`the N-by-N compatibility analysis using a hypothetical analysis of a transfer
`set ‘t1’ that is comprised of ‘systems s1, s2 and s3 stacked onto s16,’
`whereby the N-by-N analysis evaluates s1 and s2 ‘against’ each other, s2
`and s3 ‘against’ each other, and s1 and s3 ‘against’ each other.” Id. at 22
`(citing 31:65–32:45).
`Patent Owner also relies on the ’492 patent specification’s use of the
`word “against” in the context of evaluating source systems against target
`systems. PO Resp. 23. Patent Owner points to the ’492 patent’s statement
`that the 1-to-1 compatibility analysis “evaluates the compatibility of every
`specified system as source-target pairs” and yields “a compatibility score for
`each system against each other system.” Id. at 24 (citing Ex. 1001, 9:48–54,
`17:37–41; Ex. 2015 ¶ 114). Patent Owner also argues that, in discussing the
`N-to-1 compatibility analysis, the ’492 patent specification “teaches that it
`‘assesses each source system against the target.’” Id. at 25–26 (citing
`Ex. 1001, 30:5–8, 30:46–56, 30:61–31:15; Ex. 2015 ¶ 115). Patent Owner
`further contends that Figures 26 and 39 show grids in which the
`compatibility analysis directly compares source systems with target systems.
`Id. at 23 (citing Ex. 1001, 37:18–21; Ex. 2015 ¶ 114).
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`Additionally, Patent Owner argues that the “surrounding claim
`language” supports its construction. PO Resp. 27–31. Patent Owner asserts
`that the “evaluating” step uses at least one “rule set,” and one of ordinary
`skill “would have understood ‘evaluating’ a system ‘against’ another system
`using a ‘rule set’ to directly compare the systems.” PO Resp. 29 (citing
`Ex. 2015 ¶ 121). For support, Patent Owner points to the ’492 patent
`specification’s statement that “‘[t]he rule sets . . . 28 determine whether or
`not a particular setting or system criterion/criteria have been met and thus
`how different one system is to the next.” Id. (citing Ex. 1001, 8:44–47).
`Patent Owner also points to the statement that “‘[r]ules evaluate data
`parameters according to rule definitions to determine incompatibilities due
`to differences (or contentious similarities) between the baseline [i.e.,
`“source”] and target systems.’” Id. (citing Ex. 1001, 11:6–9, 11:52–56,
`10:51–53).
`Patent Owner also argues that one of ordinary skill “would have
`considered how the ’492 patent describes the N-by-N compatibility analysis
`when interpreting the meaning of the ‘evaluating’ step because that step
`‘comprises one or more of: a 1-to-1 compatibility analysis, an N-to-1
`compatibility analysis, or an N-by-N compatibility analysis.’” PO Resp. 30.
`“In the context of the ’492 patent,” according to Patent Owner, one of
`ordinary skill “would have understood an N-by-N compatibility analysis to
`directly compare source systems against other source systems.” Id. (citing
`Ex. 2015 ¶¶ 124–125; Ex. 1001, 30:5–8, 31:65–32:45).
`Petitioner responds that the plain meaning of “evaluating . . . against”
`does not require direct comparisons. Pet. Reply 5. Petitioner argues that our
`Institution Decision “recognized that ‘comparisons’ can be made ‘directly’
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`or ‘indirectly,’” and that “Patent Owner’s two dictionary definitions for
`‘against’ are consistent with that understanding.” Id. Petitioner asserts that
`“the word ‘direct’ appears in neither definition.” Id. (citing PO Resp. 20
`(defining “against” as “compared or contrasted with”)). Petitioner also
`contends that the dictionary’s example of “profits are up [against] last year”
`can involve an “indirect” comparison because, “[f]or example, by sorting
`profits over the last five years, one might see that this year’s profits are
`ranked first and last year’s are last.” Id. at 5–6.
`Turning to the ’492 patent specification, Petitioner argues that the
`specification “discusses a rule that ‘operates directly against’ audit data and
`detects cases where the operating system patch level differs.” Pet. Reply 6
`(citing Ex. 1001, 14:20–25 (emphasis added)). Petitioner asserts that “[i]f
`‘against’ required ‘direct’ comparisons, ‘directly against’ would be
`redundant.” Id. Thus, according to Petitioner, “Patent Owner knew how to
`claim a ‘direct’ comparison had it desired to do so.’” Id.
`Turning to the language in other parts of the claim, Petitioner
`disagrees that “the reference to ‘rule sets’” in the claim “requires direct
`source-to-source comparisons.” Pet. Reply 6. Petitioner asserts that the
`claim language “does not use the word ‘direct’” or “require that ‘rule sets’
`perform direct comparisons,” and “nothing in the specification mandates that
`‘rule sets’ perform only direct comparisons.” Id. at 7. Petitioner also argues
`that “the plain claim language does not require that rule sets be used for
`source-to-source evaluation,” but instead “states only that rule sets must be
`used in some evaluation(s) and must evaluate ‘parameters,’ not that the
`rule[] sets must be used in all evaluations.” Id. (citing Ex. 1001, claim 1).
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`“For example,” Petitioner contends, claim 1 “permits evaluating rules for
`source-to-target, but not source-to-source evaluations.” Id.
`Additionally, Petitioner disagrees that “the specification’s description
`of the optional N-by-N compatibility analysis justifies requiring ‘direct’
`comparisons between source systems.” Pet. Reply 7 (citing PO Resp. 30–
`31). According to Petitioner, “[t]he ‘evaluating’ limitation does not require
`an N-by-N compatibility analysis,” but instead “requires only ‘one or more
`of a 1-to-1 compatibility analysis, an N-to-1 compatibility analysis, and N-
`by-N compatibility analysis.’” Id. (citing PO Resp. 28 (emphasis added)).
`Petitioner asserts that the ’492 patent specification’s support for the claimed
`source-to-source evaluation is not limited to an N-by-N analysis, and that
`“the specification repeatedly discloses ‘sort[ing]’ a group of source systems
`and ‘compiling’ candidate transfer sets from the sorted source systems.” Id.
`at 7–8 (citing Ex. 1001, 35:38–41, 35:32–33, 36:37–41).
`Patent Owner responds that “Petitioner’s dictionary-based arguments
`are divorced from the specification,” and the fact “[t]hat comparisons can, as
`a general matter, be made ‘directly’ or ‘indirectly’ does not dictate the
`meaning of ‘evaluate . . . against’ in the context of the ’492 patent.” PO Sur-
`reply 7–8. “Every disclosure in the specification,” Patent Owner asserts,
`“consistently requires a direct comparison between systems.” Id. Patent
`Owner also argues that the specification’s use of the term “directly against”
`is “inapposite” because it is used in a “different context” than evaluating one
`source system against other source systems. Id. at 9. In response to
`Petitioner’s argument that neither the claims nor the specification requires or
`mandates that rule sets perform direct comparisons, Patent Owner asserts
`that “no such express definition is required,” and that such a definition “may
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`be implied by the specification.” Id. at 10. Finally, Patent Owner accuses
`Petitioner of interpreting the phrase “evaluating . . . against” in “a vacuum,
`divorced from the surrounding claim language, including the recited ‘N-by-
`N compatibility analysis.’” Id. at 11 (citing Pet. Reply at 7).
`Based on the full trial record, we agree with Petitioner that
`“evaluating one or more source systems against other source systems”
`should not be construed to require “directly” comparing source systems with
`other source systems. First, there is nothing in the plain meaning of the
`claim language itself that requires a “direct” comparison. The dictionary
`definitions relied on by Patent Owner define “against” as “compared or
`contrasted with,” which does not require that the comparison be “direct.”
`Ex. 2016, 23; Ex. 2017, 63. The dictionary’s example of “profits are up
`[against] last year,” is only one example, and also does not necessarily
`require a direct comparison because, as Petitioner points out, by sorting
`profits over the last five years, one might see that this year’s profits are
`ranked first and last year’s are last. Pet. Reply, 5–6.
`The ’492 patent specification also supports construing “evaluating . . .
`against” as not restricted to only “direct” comparisons. The specification
`uses the term “directly against,” which implies that the term “against” is not
`limited to only “direct” comparisons. Ex. 1001, 14:20–22. See Philips v.
`AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (“[T]he claim in this case
`refers to ‘steel baffles,’ which strongly implies that the term ‘baffles’ does
`not inherently mean objects made of steel.”). Thus, the inventors knew how
`to refer to “direct” comparisons, and chose not to do so in the claims.
`Moreover, we do not agree with Patent Owner’s argument that the
`claims must be limited to “direct” comparisons between source systems
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`because the specification describes only embodiments using direct
`comparisons for evaluating sources against each other. As the Federal
`Circuit explained in Philips,
`[A]lthough the specification often describes very specific
`embodiments of the invention, we have repeatedly warned
`against confining the claim to those embodiments. In
`particular, we have expressly rejected the contention that if a
`patent describes only a single embodiment, the claims of the
`patent must be construed as being limited to that embodiment.
`Philips, 415 F.3d at 1323 (citations omitted).
`We do not see anything in the ’492 patent specification that explicitly
`or implicitly defines “evaluating . . . against” to require direct comparisons,
`or suggests that direct comparisons are an essential aspect of the invention.
`Moreover, many of the portions of the specification that Patent Owner relies
`on specifically discuss the N-to-1, N-by-N, and 1-to-1 compatibility
`analyses. PO Resp. 21–23 (relying on portions discussing N-by-N analysis)
`(citing Ex. 1001, 3:5–8, 31:65–32:45), 25 (relying on portions discussing 1-
`to-1 analysis) (citing Ex. 1001, 9:48–54, 17:37–41), 25–26 (relying on
`portions discussing N-by-1 analysis) (citing Ex. 1001, 30:5–8, 30:46–56,
`30:61–31:15; Ex. 2015 ¶ 115). These analyses are not recited as part of and
`are not required by the claim language at issue here, which only requires
`“evaluating one or more source systems against other source systems.”
`We also do not agree with Patent Owner’s argument that claim 1’s
`later language that the evaluation is performed “using at least one rule set”
`and may include “an N-by-N compatibility analysis” suggest that
`“evaluating . . . against” requires a direct comparison. PO Resp. 27–31.
`Both of these are separate limitations, and even if they did require “direct”
`comparisons, that would not mean that the language reciting “evaluating one
`
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`or more source systems against other source systems” would itself require
`direct comparisons. And, in any event, we do not see anything in the claim
`language or the ’492 patent specification that indicates that rule sets can only
`be used for “direct” comparisons. Patent Owner cites to the specification’s
`statement that rule sets “determine whether or not a particular setting or
`system criterion/criteria have been met and thus how different one system is
`to the next,” but this could be done by comparing each system to a reference
`criteria (such as amount of memory) and sorting the systems based on how
`they compare under that criteria, rather than by doing a direct 1-to-1
`comparison between the systems. PO Resp. 29 (citing Ex. 1001, 8:44–47).
`The specification’s statement that “[r]ules evaluate data parameters
`according to rule definitions to determine incompatibilities due to
`differences (or contentious similarities) between the baseline [i.e., ‘source’]
`and target systems,” relied on by Patent Owner, could also cover comparing
`systems to a standard and sorting them based on the standard, rather than a
`direct 1-to-1 comparison between individual source systems. As to the N-
`by-N compatibility analysis, we agree with Petitioner that claim 1 does not
`require an N-by-N compatibility analysis, but instead specifies a number of
`options (including 1-to-1 and N-to-1 analyses) that can be used. Pet. Reply
`7.
`
`For the foregoing reasons, and based on the full trial record, we
`determine that “evaluating one or more source systems against other source
`systems,” does not require “directly” comparing source system(s) with other
`source systems. We also determine that this term does not require further
`construction to resolve the parties’ disputes in this proceeding. See Nidec,
`868 F.3d at 1017.
`
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`4. Other Terms
`Based on the full trial record, no other claim terms require express
`construction to resolve the issues presented in this proceeding. See Nidec,
`868 F.3d at 1017.
`
`B. Principles of Law
`A claim is unpatentable under 35 U.S.C. § 102 if a single prior art
`reference discloses each and every limitation of the claimed invention, either
`explicitly or inherently. Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 958
`(Fed. Cir. 2014). A single prior art reference may anticipate without
`disclosing a feature of the claimed invention if such feature is necessarily
`present, or inherent, in that reference. Id.
`A claim is unpatentable under 35 U.S.C. § 103 if “the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) where in evidence, objective evidence
`of non-obviousness.2 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`When evaluating a combination of teachings, we must also “determine
`whether there was an apparent reason to combine the known elements in the
`fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re
`
`
`2 Patent Owner has not presented objective indicia of non-obviousness in
`this proceeding.
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`Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Whether a combination of prior
`art elements would have produced a predictable result weighs in the ultimate
`determination of obviousness. Id. at 416–17.
`In an inter partes review, the petitioner must show with particularity
`why each challenged claim is unpatentable. Harmonic Inc. v. Avid Tech.,
`Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016); 37 C.F.R. § 42.104(b). The
`burden of persuasion never shifts to Patent Owner. Dynamic Drinkware,
`LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).
`We analyze the challenges presented in the Petition in accordance
`with the above-stated principles.
`
`C. Level of Ordinary Skill in the Art
`Petitioner contends that a person of ordinary skill in the art at the time
`of the alleged invention “would have at least a bachelor’s degree in
`computer science, computer engineering, or electrical engineering and 2–3
`years of experience related to administering distributed computing
`environments,” and that a “master’s degree or higher is acceptable in place
`of work experience.” Pet. 13 (citing Ex. 1002 ¶ 21). In the Preliminary
`Response, Patent Owner did not object to Petitioner’s proposed level of
`ordinary skill, but reserved the right to dispute it if an inter partes review
`was instituted. Prelim. Resp. 13. In our Institution Decision, we adopted
`Petitioner’s assessment of the level of ordinary skill in the art, determining
`that it is consistent with the ’492 patent and the asserted prior art of record.
`Inst. Dec. 12.
`During the trial, Patent Owner stated that it does not offer a competing
`definition of a person of ordinary skill in the art for purposes of this
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`proceeding. PO Resp. 10. Based on the full trial record, we adhere to the
`level of ordinary skill set forth in our Institution Decision.
`
`D. Ground 1: Anticipation of Claims 1–5, 9–16, 20–27, and 31–33 by
`Power
`Petitioner contends that claims 1–5, 9–16, 20–27, and 31–33 are
`anticipated by Power. Pet. 15–42. Patent Owner disagrees, arguing that the
`claimed combination does not disclose: (1) “evaluating one or more source
`systems against other source systems,” as recited, for example, in limitation
`1[a1], and [2] the claimed “business constraints,” as recited, for example, in
`limitation 1[b]. PO Resp. 32–58. For the reasons discussed below,
`Petitioner has proven by a preponderance of the evidence that the claims
`challenged in this ground are anticipated by Power.
`
`1. Overview of Power (Ex. 1004)
`Power is directed to a method for consolidating computer hardware
`devices running a plural
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