UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORP.,
`Petitioner,
`
`v.
`
`VIRTAMOVE, CORP.,
`Patent Owner.
`____________
`
`Case No. IPR2025-00853
`Patent No. 7,784,058
`____________
`
`PETITIONER MICROSOFT CORPORATION’S NOTICE RANKING
`PETITIONS REGARDING U. S. PATENT NO. 7,784,058
`AND EXPLAINING MATERIAL DIFFERENCES
`
`1619538633
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORP.,
`Petitioner,
`
`v.
`
`VIRTAMOVE, CORP.,
`Patent Owner.
`____________
`
`Case No. IPR2025-00853
`Patent No. 7,784,058
`____________
`
`PETITIONER MICROSOFT CORPORATION’S NOTICE RANKING
`PETITIONS REGARDING U. S. PATENT NO. 7,784,058
`AND EXPLAINING MATERIAL DIFFERENCES
`
`1619538633
`
`
`
`Petitioner is filing three “copycat” IPR petitions against U.S. Pat. No.
`
`7,784,058 (“’058 patent”) and this submits this ranking of those petitions.
`
`RANKING OF PETITIONS
`I.
`Rank Petition
`Grounds
`1
`IPR2025-00853
`1) Callender renders obvious claims 1-18
`(“Petition 1”)
`IPR2025-00854
`(“Petition 2”)
`
`2
`
`1) Ely and Levine render obvious claims 1-6, 9-14,
`16, and 18
`2) Ely, Levine, and Thekkath render obvious claims
`5-8 and 15
`3) Eggert and Levine render obvious claims 1-4, 9-
`12, 16, and 18
`1) Elnozahy in view of Draves renders obvious
`claims 1-18
`
`3
`
`IPR2025-00855
`(“Petition 3”)
`
`II. MATERIAL DIFFERENCES BETWEEN PETITIONS
`A. Material Difference 1: Potential Priority Dispute
`The ’058 patent issued from an application filed 9/21/2004, claiming priority
`
`to a provisional application filed 9/22/2003. Based on these dates, the ’058 patent
`
`is subject to pre-AIA §102. In the concurrent district-court proceeding between
`
`Patent Owner VirtaMove (“PO”) and Petitioner (“Microsoft”), PO asserts “[t]he
`
`Asserted Claims of the ’058 patent are entitled to a priority date at least as early as
`
`September 22, 2003, the filing date of provisional application No. 60/504,213,”
`
`and that PO “reserves the right to supplement this response.” EX1108, 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
`1
`
`
`
`claimed priority date and “reserv[ing] the right to supplement,” PO has expressly
`
`raised the possibility that PO may attempt to antedate the prior art relied on by
`
`these Petitions.
`
`Petition 1 challenges the ’058 patent’s claims over U.S. Pat. No. 7,024,672
`
`(“Callender”), which issued from an application filed 6/26/2002 (before the ’058
`
`patent’s earliest provisional filing date) and published 1/1/2004. Therefore,
`
`Callender 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 Callender is prior art.
`
`Petition 2 challenges the ’058 patent’s claims over printed publications,
`
`including: (1) Linkers and Loaders, a textbook by John R. Levin, published in
`
`2000 (“Levine”); (2) “Alpine: A User-Level Infrastructure for Network Protocol
`
`Development,” a 2001 presentation by David Ely and other researchers (“Ely”); (3)
`
`“Implementing Network Protocols at User Level,” a 1993 conference paper by
`
`Chandramohan Thekkath (“Thekkath”); and (4) “File Systems in User Space,” a
`
`1993 conference paper by Paul Eggert (“Eggert”). Therefore, these are all prior art
`
`under pre-AIA §102(b). PO cannot defeat Petition 2 by antedating these references.
`
`However, PO may challenge the date or public availability of these references and
`
`has not stipulated that these references are prior art.
`
`“Petition 3” challenges the ’058 patent’s claims over U.S. Pat. App. Pub.
`
`No. 2003/0041118 (“Elnozahy”) in view of U.S. Pat. No. 6,349,355 (“Draves”).
`
`2
`
`
`
`Draves issued on 2/19/2002 (over a year before the ’058’s provisional filing date of
`
`9/2/2003), and therefore is indisputable prior art under §102(b). Elnozahy was
`
`published on 2/27/2003 (more than a year before the ’058 patent’s 9/21/2004
`
`nonprovisional filing date, but less than a year before the ’058 patent’s 9/22/2003
`
`provisional filing date), and therefore is prior art under §102(b) unless PO can
`
`establish the challenged claims’ entitlement to the earlier provisional filing date.
`
`Even if PO does so, Elnozahy would still be prior art under §102(e) as of its
`
`8/23/2001 filing date, which is ten months earlier than Callender’s filing date.
`
`Furthermore, Elnozahy was cited in the ’058 patent’s file history.
`
`Defeating Petition 3 by antedating Elnozahy would thus require PO to
`
`establish both that the ’058 patent’s claims are supported by and entitled to the
`
`filing date of the provisional application, and that the claimed subject matter was
`
`invented and entitled to a priority date earlier than Elnozahy’s filing date of
`
`8/23/2001. This presents a significantly higher burden than that required to
`
`antedate Callender’s 6/26/2002 filing date. Thus, should PO establish a priority
`
`date earlier than 6/26/2002, Petition 3 will remain viable against the ’058 patent
`
`unless PO is able to carry that significantly higher burden.
`
`B. Material Difference 2: Different Evidence and Grounds
`Each petition presents arguments directed to different prior art references or
`
`different challenged claims, or both. Petition 1 relies on a single reference,
`
`3
`
`
`
`Callender, for the ’058 patent’s 18 claims. Petition 2 relies on combinations of
`
`non-patent reference Levine with three other non-patent references (Ely, Thekkath,
`
`and Eggert) to challenge ’058 claims 1-6, 9-14, 16, and 18. Petition 3 relies on a
`
`combination Elnozahy and Draves to invalidate all 18 claims of the ’058 patent.
`
`Callender’s teachings from Petition 1 are different than those of the Levine
`
`and Ely, Thekkath, or Eggert combinations in Petition 2, or those of the Elnozahy
`
`and Draves combination in Petition 3. The references in each petition are mapped
`
`to different claim limitations in different ways. Thus, apart from the material
`
`difference of the potential priority date dispute, the challenges between the
`
`petitions are also materially distinct and non-cumulative.
`
`III.
`
`INSTITUTION OF ALL PETITIONS IS WARRANTED
`The potential priority dispute between the parties justifies institution of the
`
`petitions. The Consolidated Trial Practice Guide (“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 dispute regarding the effective filing date of
`
`the challenged claims,” because “Patent owner has not conceded that it cannot
`
`4
`
`
`
`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 due to the potential dispute between the parties about the priority
`
`date of the ’058 patent, lack of 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, which harm the economy by stifling competition and hindering economic
`
`growth. 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.
`
`5
`
`
`
`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
`
`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
`
`6
`
`
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