UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORP.,
`Petitioner,
`
`v.
`
`VIRTAMOVE, CORP.,
`Patent Owner.
`____________
`
`Case No. IPR2025-00850
`Patent No. 7,519,814
`____________
`
`PETITIONER MICROSOFT CORPORATION’S NOTICE RANKING
`PETITIONS REGARDING U. S. PATENT NO. 7,519,814
`AND EXPLAINING MATERIAL DIFFERENCES
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`1619516313
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`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORP.,
`Petitioner,
`
`v.
`
`VIRTAMOVE, CORP.,
`Patent Owner.
`____________
`
`Case No. IPR2025-00850
`Patent No. 7,519,814
`____________
`
`PETITIONER MICROSOFT CORPORATION’S NOTICE RANKING
`PETITIONS REGARDING U. S. PATENT NO. 7,519,814
`AND EXPLAINING MATERIAL DIFFERENCES
`
`1619516313
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`
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`Petitioner is filing four parallel “copycat” IPR petitions against U.S. Pat. No.
`
`7,519,814 (“the ’814 patent”) and thus submits this ranking of those petitions.
`
`2
`
`IPR2025-00850
`(“Petition 2”)
`
`RANKING OF PETITIONS
`I.
`Rank Petition
`Grounds
`1
`IPR2025-00849
`1) Blaser in view of Calder renders obvious claims
`(“Petition 1”)
`1-4, 7-11, 14, and 16-30
`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
`1) Osman renders obvious claims 1, 2, 4, 6, 8-10,
`and 13-14
`2) Tucker and Bandhole render obvious claims 1, 2,
`4, 6, 8-10, and 13
`3) Gélinas renders obvious claims 1, 2, 4, 6, 8-10,
`and 13-14
`1) Osman renders obvious claims 3, 5, 7, 11-12, 15,
`and 31-34
`2) Tucker and Bandhole render obvious claim 16
`3) Gélinas renders obvious claim 16
`
`3
`
`4
`
`IPR2025-00851
`(“Petition 3”)
`
`IPR2025-00852
`(“Petition 4”)
`
`II. MATERIAL DIFFERENCES BETWEEN PETITIONS
`A. Material Difference 1: Potential Priority Dispute
`The ’814 patent issued from an application filed 9/13/2004. It claims priority
`
`to provisional applications Nos. 60/512,103 filed 10/20/2003, and 60/502,619 filed
`
`9/15/2003. Based on these dates, the ’814 patent is subject to pre-AIA §102. In the
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`
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`concurrent district-court proceeding between Patent Owner VirtaMove (“PO”) and
`
`Petitioner (“Microsoft”), PO asserts that “[t]he Asserted Claims of the ’814 patent
`
`are entitled to a priority date at least as early as September 15, 2003” and that
`
`“VirtaMove reserves the right to supplement this response.” EX-1147, 4 (emphasis
`
`added). PO further identified documents “as related to evidencing conception and
`
`reduction to practice,” while again “reserv[ing] the right to supplement.” Id. By
`
`alleging “a priority date at least as early as” the earliest claimed priority date and
`
`“reserv[ing] the right to supplement,” PO has expressly implicated the possibility
`
`that PO may attempt to antedating the prior art relied on by these Petitions.
`
`Petition 1 challenges the ’814 patent’s claims over combinations based on
`
`U.S. Pat. No. 7,117,495 (“Blaser”), which issued from an application filed
`
`6/11/2003 (before the ’814 patent’s earliest provisional filing date) and published
`
`10/3/2006 (after the ’814 patent’s nonprovisional filing date). Therefore, Blaser is
`
`prior art under pre-AIA 35 U.S.C. §102(e) but not §102(b), and thus might be
`
`antedated by PO. PO 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.
`
`Pat. App. Pub. No. 2002/0095479 (“Schmidt-479”) in combinations with U.S. Pat.
`
`App. Pub. Nos. 2002/0124072 (“Tormasov”), 2002/0066022 (“Calder”), and
`
`2002/0138629 (“Schmidt-629”). Schmidt-479 (published 7/18/2001), Tormasov
`
`(published 9/5/2002), and Calder (published 5/30/2002) each published more than
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`
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`a year before the 9/15/2003 filing date of the ’814 patent’s earliest provisional
`
`application, and thus each are §102(b) references. Schmidt-629 (used only in
`
`Grounds 3-4) was published 9/26/2002, which was well prior to the ’814 patent’s
`
`9/15/2003 provisional filing date and thus will be significantly harder to antedate
`
`than Blaser. Because Petition 2’s Grounds 1-2 rely on indisputable §102(b) prior
`
`art, Petition 2 would remain viable against the ’814 patent should PO establish a
`
`priority date earlier than Blaser’s 6/11/2003 filing date.
`
`IPR2025-00563 (“Petition 3”) and IPR2025-00566 (“Petition 4”) both
`
`challenge the ’814 patent’s claims over a printed publication presented at a major
`
`industry conference entitled ‘The Design and Implementation of Zap: A System for
`
`Migrating Computing Environments” (“Osman”), U.S. Pat. No. 7,437,556
`
`(“Tucker”) in combination with U.S. Pat. Pub. No. 2002/0171678A1 (“Bandhole),
`
`and a printed publication entitled Virtual Private Servers and Security Contexts
`
`(“Gélinas”). Gélinas published no later than 8/14/2002, and therefore is
`
`indisputably prior art under § 102(b). Osman published no later than 12/11/2002,
`
`and Bandhole published on 11/21/2002, and therefore are prior art under §§ 102(a)
`
`and (e). Tucker was filed 1/21/2004, with a priority date of 5/9/2003, and is prior
`
`art under § 102(e).
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`
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`B. Material Difference 2: Different Evidence and Grounds
`Each of the four petitions presents arguments directed to different prior art
`
`references, different challenged claims, or both. Petition 1 relies on a combination
`
`of Blaser and Calder, Petition 2 relies on a base combination of Schmidt-479 and
`
`Tormasov, and Petitions 3 and 4 rely on the same prior art combinations (Osman,
`
`Tucker and Bandhole, and Gélinas). While Petitions 3 and 4 rely on the same prior
`
`art, the petitions each challenge non-overlapping sets of claims.
`
`The teachings supplied by Calder in Petition 1 are different than those of the
`
`Schmidt-Tormasov combination in Petition 2 or the Osman-Tucker-Bandhole-
`
`Gelinas combination in Petitions 3 and 4. The references in each petition are
`
`mapped to different claim limitations in different ways. Thus, apart from the
`
`material difference of the potential priority dispute, the unpatentability and
`
`obviousness issues between the petitions are materially distinct.
`
`III.
`
`INSTITUTION OF ALL PETITIONS IS WARRANTED
`The potential priority dispute between the parties justifies institution of the
`
`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
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`
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`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); see also 10X Genomics, Inc. v. Bio-Rad Labs., Inc., IPR2020-00088,
`
`Paper 8, 46-47 (April 27, 2020); SolarEdge Techs. Ltd. v. SMA Solar Tech., AG.,
`
`IPR2020-00965, Paper 8, 33-34 (Jan. 11, 2021).
`
`Although Petitioner has ranked the petitions, instituting all petitions is the
`
`fairest outcome in view of the potential dispute between the parties about the
`
`priority date of the ’814 patent and the lack of a stipulation by PO, and the
`
`materially distinct and non-cumulative nature of each petition. TPG at 61. Further,
`
`by filing copycat petitions together with Motions for Joinder in which it agrees to
`
`an understudy role, Petitioner has surrendered its opportunity to pursue challenges
`
`and claims of its own choosing in order to avoid taxing the Board’s finite resources
`
`during this interim period of diminished resources. For each underlying petition
`
`resulting in institution, there will have been a determination that unpatentability is
`
`reasonably likely. This determination implicates the public’s strong interest in
`
`eliminating bad patents. Granting Petitioner’s copycat petition for each granted
`
`underlying petition serves that public interest by allowing the underlying IPRs to
`
`continue in the event of settlement without impacting the Board’s finite resources.
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`Dated: April 18, 2025
`
`Respectfully submitted,
`
`/James M. Heintz/
`James M. Heintz, Reg. No. 41,828
`
`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6 (E)(4)
`The undersigned certifies pursuant to 37 C.F.R. §§ 42.6(e) and 42.105 that
`
`on April 18, 2025, a true and correct copy of the foregoing document was served
`
`by emailing a copy of same to the following attorneys, who have agreed to accept
`
`service on behalf of Patent Owner:
`
`Reza Mirzaie
`rmirzaie@raklaw.com
`Marc A. Fenster
`mfenster@raklaw.com
`Neil A. Rubin
`nrubin@raklaw.com
`Amy E. Hayden
`ahayden@raklaw.com
`Christian W. Conkle
`cconkle@raklaw.com
`Jonathan Ma
`jma@raklaw.com
`Daniel B. Kolko
`dkolko@raklaw.com
`Jacob R. Buczko
`jbuczko@raklaw.com
`James Milkey
`
`Date: April 18, 2025
`
`1619516313
`
`jmilkey@raklaw.com
`James S. Tsuei
`jtsuei@raklaw.com
`Mackenzie Paladino
`mpaladino@raklaw.com
`
`RUSS AUGUST & KABAT
`12424 Wilshire Boulevard, 12th Floor
`Los Angeles, CA 90025
`
`Qi (Peter) Tong
`ptong@raklaw.com
`
`RUSS AUGUST & KABAT
`4925 Greenville Ave, Suite 200
`Dallas, TX 75206
`
`James M. Heintz/
`James M. Heintz, Reg. No. 41,828
`
`
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