UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`MIDLAND-ODESSA DIVISION
`
`VIRTAMOVE, CORP.,
`
`Plaintiff,
`
`v.
`
`GOOGLE LLC,
`
`Defendant.
`
`Case No. 2:24-cv-00033-DC-DTG
`
`PLAINTIFF VIRTAMOVE, CORP.’S CORRECTED SUPPLEMENTAL
`PRELIMINARY DISCLOSURE
` OF ASSERTED CLAIMS AND INFRINGEMENT CONTENTIONS
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`I.
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`OGP § I: Disclosure of Asserted Claims and Infringement Contentions
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`Pursuant to OGP § I, Plaintiff VirtaMove, Corp. submits the following Preliminary
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`Disclosure of Asserted Claims and Infringement Contentions. This disclosure is based on the
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`information available to VirtaMove as of the date of this disclosure, and VirtaMove reserves the
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`right to amend this disclosure to the full extent permitted, consistent with the Court’s Rules and
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`Orders.
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`A.
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`Asserted Claims
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`VirtaMove asserts that Defendant Google LLC (“Defendant” or “Google”) infringes the
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`following claims (collectively, “Asserted Claims”):
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`(1) U.S. Patent No. 7,519,814 (“the ’814 patent”), claims 1, 2, 4, 6, 9, 10, 13, and 14;
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`and
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`(2) U.S. Patent No. 7,784,058 (“the ’058 patent”), claims 1–5, 10, and 18.
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`This Supplemental Preliminary Disclosure of Asserted Claims and Infringement Contentions
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`includes the Corrected Preliminary Disclosure of Asserted Claims and Infringement Contentions
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`1
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`Google Exhibit 1078
`Google v. VirtaMove
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`

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`previously served. The Corrected Preliminary Disclosure of Asserted Claims and Infringement
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`Contentions correctly reflecteds, consistent with the Complaint (Dkt. 1) and the Amended
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`Complaint (Dkt. 27), that the only independent claims that are asserted in this case are independent
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`claim 1 of the ’814 patent and independent claim 1 of the ’058 patent. Independent Claim 31 of
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`the ’814 patent is not, was not, and will not be asserted in this case. This The Corrected Preliminary
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`Disclosure of Asserted Claims and Infringement Contentions also correcteds the case caption and
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`identification of the OGP as the applicable rule, and the cover pleading is corrected to reflect the
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`identification of previously served and charted claims for the ’814 patent. Otherwise, the
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`Corrected Preliminary Disclosure of Asserted Claims and Infringement Contentions presented
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`infringement theories remain identical to what was had previously been served on June 25, 2024.
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`B.
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`Accused Instrumentalities of which VirtaMove is aware
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`VirtaMove asserts that the Asserted Claims are infringed by the various instrumentalities
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`used, made, sold, offered for sale, or imported into the United States by Defendant, including
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`certain (a) Google products and services using secure containerized applications, including without
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`limitation Google Kubernetes Engine, Cloud Run, and Migrate to Containers, and all versions and
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`variations thereof since the issuance of the ’814 patent; and (b) Google products and services using
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`user mode critical system elements as shared libraries, including without limitation Google
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`Kubernetes Engine, Cloud Run, and Migrate to Containers, and all versions and variations thereof
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`since the issuance of the ’058 patent (“Accused Instrumentalities”). To the extent Google contends
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`“Google Cloud Observability” is a separate instrumentality, the combination of GKE and Google
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`Cloud Observability and the combination of Cloud Run and Google Cloud Observability are
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`Accused Instrumentalities with respect to claim 13. Defendant’s Accused Instrumentalities of
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`which VirtaMove is presently aware are described in more detail in the accompanying preliminary
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`infringement contention charts.
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`2
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`

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`VirtaMove reserves the right to accuse additional products from Defendant to the extent
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`VirtaMove becomes aware of additional products during the discovery process. Unless otherwise
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`stated, VirtaMove’s assertions of infringement apply to all variations, versions, and applications
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`of each of the Accused Instrumentalities, on information and belief, that different variations,
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`versions, and applications of each of the Accused Instrumentalities are substantially the same for
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`purposes of infringement of the Asserted Claims.
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`C.
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`Claim Charts
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`VirtaMove’s analysis of Defendant’s products is based upon limited information that is
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`publicly available, and based on VirtaMove’s own investigation prior to any discovery in these
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`actions. Specifically, VirtaMove’s analysis is based on certain limited resources that evidence
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`certain products made, sold, used, or imported into the United States by Defendant.
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`VirtaMove reserves the right to amend or supplement these disclosures for any of the
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`following reasons:
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`(1) Defendant and/or
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`third parties provide evidence relating
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`to
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`the Accused
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`Instrumentalities;
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`(2) VirtaMove’s position on infringement of specific claims may depend on the claim
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`constructions adopted by the Court, which has not yet occured; and
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`(3) VirtaMove’s investigation and analysis of Defendant’s Accused Instrumentalities is
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`based upon public information and VirtaMove’s own investigations. VirtaMove
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`reserves the right to amend these contentions based upon discovery of non-public
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`information that VirtaMove anticipates receiving during discovery.
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`Attached and incorporated herein in their entirety, are charts identifying where each
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`element of the Asserted Claims are found in the Accused Instrumentalities.
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`3
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`

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`Unless otherwise indicated, the information provided that corresponds to each claim
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`element is considered to indicate that each claim element is found within each of the different
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`variations, versions, and applications of each of the respective Accused Instrumentalities described
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`above.
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`D.
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`Literal Infringement / Doctrine of Equivalents
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`With respect to the patents at issue, each element of each Asserted Claim is considered to
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`be literally present. VirtaMove also contends that each Asserted Claim is infringed or has been
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`infringed under the doctrine of equivalents in Defendant’s Accused Instrumentalities. VirtaMove
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`also contends that Defendant both directly and indirectly infringes the Asserted Claims. For
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`example, the Accused Instrumentalities are provided by the Defendant to customers, who are
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`actively encouraged and instructed (for example, through Defendant’s online instructions on its
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`website and instructions, manual, or user guides that are provided with the Accused
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`Instrumentalities) by Defendant to use the Accused Instrumentalities in ways that directly infringe
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`the Asserted Claims. Defendant therefore specifically intends for and induces its customers to
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`infringe the Asserted Claims under Section 271(b) through the customers’ normal and customary
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`use of the Accused Instrumentalities. In addition, Defendant is contributorily infringing the
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`Asserted Claims under Section 271(c) and/or Section 271(f) by selling, offering for sale, or
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`importing the Accused Instrumentalities into the United States, which constitute a material part of
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`the inventions claimed in the Asserted Claims, are especially made or adapted to infringe the
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`Asserted Claims, and are otherwise not staple articles or commodities of commerce suitable for
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`non-infringing use.
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`E.
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`Priority Dates
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`The Asserted Claims of the ’814 patent are entitled to a priority date at least as early as
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`September 15, 2003, the filing date of provisional application No. 60/502,619.
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`
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`4
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`

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`The Asserted Claims of the ’058 patent are entitled to a priority date at least as early as
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`September 22, 2003, the filing date of provisional application No. 60/504,213.
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`A diligent search continues for additional responsive information and VirtaMove reserves
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`the right to supplement this response.
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`F.
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`Identification of Instrumentalities Practicing the Claimed Invention
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`At this time, VirtaMove does not identify any of its instrumentalities as practicing the
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`Asserted Claims. A diligent search continues for additional responsive information and VirtaMove
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`reserves the right to supplement this response.
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`II.
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`Document Production Accompanying Disclosure
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`Pursuant to Patent Rule 3-2, VirtaMove submits the following Document Production
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`Accompanying Disclosure, along with an identification of the categories to which each of the
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`documents corresponds.
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`A. Documents related to sale of the invention:
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`VirtaMove is presently unaware of any documents sufficient to evidence any discussion
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`with, disclosure to, or other manner of providing to a third party, or sale of or offer to sell, the
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`inventions recited in the Asserted Claims of the Asserted Patents prior to the application dates or
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`priority dates for the Asserted Patents. A diligent search continues for such documents and
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`VirtaMove reserves the right to supplement this response.
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`B. Documents related to conception:
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`VirtaMove identifies the following non-privileged documents as related to evidencing
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`conception and reduction to practice of each claimed invention of the Asserted Patents:
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`VM_GOOGLE_0000865–VM_GOOGLE_0000880. A diligent search continues for additional
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`documents and VirtaMove reserves the right to supplement this response.
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`C. Documents including the file history:
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`
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`5
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`

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`VirtaMove identifies the following documents as being the file histories for the Asserted
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`Patents: VM_GOOGLE_0000001–VM_GOOGLE_0000864.
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`
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`Dated: July 1September 6, 2024
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` Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`/s/ Reza Mirzaie
`Reza Mirzaie
`CA State Bar No. 246953
`Marc A. Fenster
`CA State Bar No. 181067
`Neil A. Rubin
`CA State Bar No. 250761
`Amy E. Hayden
`CA State Bar No. 287026
`Jacob R. Buczko
`CA State Bar No. 269408
`James S. Tsuei
`CA State Bar No. 285530
`James A. Milkey
`CA State Bar No. 281283
`Christian W. Conkle
`CA State Bar No. 306374
`Jonathan Ma
`CA State Bar No. 312773
`Daniel Kolko (CA SBN 341680)
`RUSS AUGUST & KABAT
`12424 Wilshire Boulevard, 12th Floor
`Los Angeles, CA 90025
`Telephone: 310-826-7474
`Email: rmirzaie@raklaw.com
`Email: mfenster@raklaw.com
`Email: nrubin@raklaw.com
`Email: ahayden@raklaw.com
`Email: jbuczko@raklaw.com
`Email: jtsuei@raklaw.com
`Email: jmilkey@raklaw.com
`Email: cconkle@raklaw.com
`Email: jma@raklaw.com
`Email: dkolko@raklaw.com
`
`Qi (Peter) Tong
`4925 Greenville Ave., Suite 200
`Dallas, TX 75206
`
`
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`6
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`Email: ptong@raklaw.com
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`ATTORNEYS FOR PLAINTIFF
`VIRTAMOVE, CORP.
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`7
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`CERTIFICATE OF SERVICE
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`I certify that this document is being served upon counsel of record for Defendants
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`on July September 61, 2024 via e-mail.
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`
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`/s/ Christian W. Conkle
` Christian W. Conkle
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`8
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