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`Paper No. __
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
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`GOOGLE LLC,
`Petitioner,
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`v.
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`VIRTAMOVE, CORP.,
`Patent Owner.
`_____________
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`Case No. IPR2025-00487
`Patent No. 7,519,814
`_____________
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`PETITIONER GOOGLE LLC’S NOTICE RANKING PETITIONS AND
`EXPLAINING MATERIAL DIFFERENCES
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`Petitioner is filing two parallel petitions for inter partes review challenging
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`U.S. Patent No. 7,519,814 (“the ’814 patent”). Pursuant to the Board’s
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`Consolidated Trial Practice Guide (November 2019) (“TPG”)1 at 59-60, Petitioner
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`submits this notice identifying a ranking of the petitions and a succinct explanation
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`of differences between the petitions, why the issues addressed by the differences
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`are material, and why the Board should institute both petitions.
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`2
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`I.
`RANKING OF PETITIONS
`Rank Petition Grounds
`1) Blaser in view of Calder renders obvious claims 1-4, 7-11,
`1
`IPR2025-
`14, and 16-30
`00487
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`2) Blaser in view of Calder and Schmidt-449 renders obvious
`claims 5-6, 12-13, 15, and 31-34
`1) Schmidt-479 in view of Tormasov renders obvious claims
`1-34
`2) Schmidt-479 in view of Tormasov and Calder renders
`obvious claims 1-34
`3) Schmidt-479 in view of Tormasov and Schmidt-629
`renders obvious claims 1-34
`4) Schmidt-479 in view of Tormasov, Calder, and Schmidt-
`629 renders obvious claims 1-34
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`IPR2025-
`00488
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`
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`II. MATERIAL DIFFERENCES BETWEEN PETITIONS
`A. Material Difference 1: Potential Priority Dispute
`The ’814 patent issued from an application filed September 13, 2004. It
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`claims priority to provisional applications No. 60/512,103 filed October 20, 2003,
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`1 https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf?MURL=
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`– 1 –
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`and No. 60/502,619 filed September 15, 2003. Because these dates predate the
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`enactment of the Leahy-Smith America Invents Act (“AIA”), the ’814 patent is
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`subject to pre-AIA law under which the patentee can remove a reference as §102(e)
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`prior art by establishing earlier invention antedating the reference.
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`In the concurrent district-court proceeding between Patent Owner
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`(“VirtaMove”) and Petitioner (“Google”), VirtaMove claims “[t]he Asserted
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`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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`and that “VirtaMove reserves the right to supplement this response.” See
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`VirtaMove’s Supplemental Preliminary Disclosure of Asserted Claims and
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`Infringement Contentions (EX1078), 4-5 (emphasis added). VirtaMove further
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`identified documents “as related to evidencing conception and reduction to
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`practice,” while again “reserv[ing] the right to supplement.” Id. That proceeding
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`was stayed just after fact discovery began, with further responses not yet due.
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`By alleging “a priority date at least as early as” the earliest claimed date on
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`the ’814 patent’s face, while leaving the possible date range open-ended and
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`“reserv[ing] the right to supplement” (id., emphasis added), VirtaMove has
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`expressly implicated the possibility that VirtaMove may attempt to defeat
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`IPR2025-00487 (“Petition 1”) by antedating the prior art on which it relies.
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`Petition 1 challenges the ’814 patent’s claims over combinations based on
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`– 2 –
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`U.S. Patent No. 7,117,495 (“Blaser”), which issued from an application filed June
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`11, 2003 (before the ’814 patent’s earliest provisional filing date) and published
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`October 3, 2006 (after the ’814 patent’s nonprovisional filing date). Therefore,
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`Blaser is prior art under pre-AIA 35 U.S.C. §102(e), but not under §102(b).
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`VirtaMove could therefore attempt to defeat Petition 1 by establishing an invention
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`date earlier than Blaser’s filing date of June 11, 2003. To date, VirtaMove has left
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`open that possibility, and has not stipulated that Blaser is prior art. See TPG at 61.
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`IPR2025-00488 (“Petition 2”) challenges the ’814 patent’s claims over U.S.
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`Patent Application Publication No. 2002/0095479 (“Schmidt-479”) in
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`combinations with U.S. Patent Application Publication No. 2002/0124072
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`(“Tormasov”), U.S. Patent Application Publication No. 2002/0066022 (“Calder”),
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`and U.S. Patent Application Publication No. 2002/0138629 (“Schmidt-629”).
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`Schmidt-479 (published July 18, 2001), Tormasov (published September 5, 2002),
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`and Calder (published May 30, 2002), each published more than a year before the
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`September 15, 2003 filing date of the ’814 patent’s earliest provisional application,
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`and therefore are indisputable prior art under §102(b). Schmidt-629 (used only in
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`Grounds 3-4) was published September 26, 2002 (more than a year before the ’814
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`patent’s October 20, 2003 second provisional filing date), and therefore is
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`indisputable prior art under §102(b) unless VirtaMove can establish the challenged
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`claims’ entitlement to the September 15, 2003 provisional filing date. Even if
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`– 3 –
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`VirtaMove did so, Schmidt-629 would still be prior art under §102(a) and §102(e).
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`Because Petition 2’s Grounds 1-2 rely on indisputable §102(b) prior art,
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`Petition 2 would remain viable against the ’814 patent should VirtaMove establish
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`a priority date earlier than Blaser’s June 11, 2003 filing date.
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`B. Material Difference 2: Different Evidence and Grounds
`Petition 1 relies on a combination of Blaser and Calder, whereas Petition 2
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`relies on a base combination of Schmidt-479 and Tormasov. The teachings
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`supplied by Calder in the Blaser-Calder combination are different and are mapped
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`to different claim limitations than the teachings supplied by Tormasov in the
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`Schmidt-Tormasov combination. Thus, apart from the material difference of the
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`potential priority dispute, the unpatentability and obviousness issues between the
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`two petitions are also materially distinct and non-cumulative.
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`III.
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`INSTITUTION OF BOTH PETITIONS IS WARRANTED
`The potential priority dispute between the parties justifies institution of two
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`petitions. The TPG recognizes that “more than one petition may be necessary” in
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`circumstances where “there is a dispute about priority date requiring arguments
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`under multiple prior art references.” TPG at 59. The Board has instituted parallel
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`petitions in similar circumstances as here. See, e.g., Apple Inc. v. Sonrai Memory
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`Ltd., IPR2023-00975, Paper 9, 14 (Dec. 14, 2023) (instituting two petitions relying
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`on references having different prior-art dates, “in view of a potential priority
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`– 4 –
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`dispute regarding the effective filing date of the challenged claims,” because
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`“Patent owner has not conceded that it cannot establish a priority date earlier than
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`the filing date” of the challenged patent and “makes no [] stipulation” that the
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`asserted “references qualify as prior art”) (internal quotation marks and citations
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`omitted); 10X Genomics, Inc. v. Bio-Rad Labs., Inc., IPR2020-00088, Paper 8, 46-
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`47 (April 27, 2020) (instituting two petitions where patent owner “might try to
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`defeat Petition 1 by alleging an earlier date of invention, but would be unable to do
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`so with respect to [indisputable prior art] in Petition 2,” noting that “[t]o avoid
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`institution of two parallel petitions, Patent Owner could have agreed not to dispute
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`Petitioner’s contention that [Petition 1’s] references are prior art,” but “did not do
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`so”) (internal quotation marks and citations omitted); SolarEdge Techs. Ltd. v. SMA
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`Solar Tech., AG., IPR2020-00965, Paper 8, 33-34 (Jan. 11, 2021).
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`Although Petitioner ranks Petition 1 higher than Petition 2, instituting both
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`petitions is the fairest outcome in view of the potential dispute between the parties
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`about the priority date of the ’814 patent, absent a stipulation by VirtaMove. TPG
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`at 61. Institution of two trials will not unduly burden the Board given the limited
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`number of grounds (Petition 1 presents only one ground against each claim;
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`Petition 2’s grounds all rely on a base combination of Schmidt-479 and Tormasov).
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`Dated: January 31, 2025
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`
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`Respectfully submitted,
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`/Elisabeth Hunt/____________________
`Elisabeth H. Hunt, Reg. No. 67,336
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`– 5 –
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6 (E)(4)
`I certify that on January 31, 2025, I will cause a copy of the foregoing
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`document, including any exhibits or appendices filed therewith, to be served via
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`USPS Priority Mail Express at the following correspondence address of record for
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`the patent:
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`Date: January 31, 2025
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`Allen, Dyer, Doppelt + Gilchrist, PA
`1135 East State Road 434
`Suite 3001
`Winter Springs, FL 32708
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`
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`/Dara Del Rosario/
`Dara Del Rosario
`Paralegal
`WOLF, GREENFIELD & SACKS, P.C.
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`
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