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