`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`VMware, Inc.
`
`Petitioner,
`
`v.
`
`Cirba IP Inc.
`
`Patent Owner.
`
`_________________________
`
`Case PGR2021-00098
`U.S. Patent 10,951,459
`_________________________
`
`
`PATENT OWNER’S RESPONSE
`
`

`

`
`
`TABLE OF CONTENTS
`
`
`Case PGR2021-00098
`Patent No. 10,951,459
`
`Pages(s)
`
`
`
`I.
`INTRODUCTION ........................................................................................... 1
`STATUS OF RELATED MATTERS ............................................................. 2
`II.
`III. OVERVIEW OF THE ’459 PATENT ............................................................ 2
`IV. LEVEL OF ORDINARY SKILL .................................................................... 8
`V.
`CLAIM CONSTRUCTION ............................................................................ 8
`A. Governing Principles ............................................................................. 8
`B.
`Patent Owner’s Claim Construction Analysis .................................... 11
`1.
`“source system” and “target system” ........................................ 11
`2.
`“place” and “placement” ........................................................... 15
`VI. THE 459 PATENT’S PRE-AIA PRIORITY APPLICATIONS
`PROVIDE ADEQUATE WRITTEN DESCRIPTION FOR THE
`CHALLENGED CLAIMS ............................................................................ 23
`A.
`The ’936 Application Discloses Evaluating Source Systems
`With “Other Source Systems [] Already Placed On The Specific
`Target System.” ................................................................................... 25
`1.
`The ’936 Application discloses evaluating a source
`system with other “already placed” source systems. ................ 28
`Petitioner is incorrect that Paragraph 345 of the ’936
`Application’s does not disclose performance of
`compatibility analyses on “already placed” systems. ............... 36
`Petitioner is incorrect that the ’936 Application’s
`definition of a “source system” is incompatible with the
`concept of “already” placed [or transferred] systems. .............. 37
`The ’936 Application discloses the claims’ “issuing
`instructions” limitation. ....................................................................... 39
`
`B.
`
`2.
`
`3.
`
`ii
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`

`

`
`
`C.
`
`The ’459 Patent Provides Adequate Written Description for the
`Claims .................................................................................................. 46
`D. Other Pre-AIA Priority Applications .................................................. 47
`VII. PETITIONER FAILS TO SHOW THAT THE ’459 PATENT IS
`ELIGIBLE FOR PGR .................................................................................... 47
`VIII. CONCLUSION .............................................................................................. 48
`
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`iii
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`
`
`TABLE OF AUTHORITIES
`
`
`Case PGR2021-00098
`Patent No. 10,951,459
`
`CASES
`3M Innovative Properties Co. v. Avery Dennison Corp.,
`350 F.3d 1365 (Fed. Cir. 2003) .............................................................................. 9
`ACTV, Inc. v. Walt Disney Co.,
`346 F.3d 1082 (Fed. Cir. 2003) .............................................................................. 9
`Axonics, Inc., v. Medtronic, Inc.,
`IPR2020-00712, Paper 42 (P.T.A.B. Sept. 22, 2021) .......................................... 16
`Blue Calypso, LLC v. Groupon, Inc.,
`815 F.3d 1331 (Fed. Cir. 2016) ............................................................................ 19
`Cross Med. Prod., Inc. v. Medtronic Sofamor Danek, Inc.,
`424 F.3d 1293 (Fed. Cir. 2005) ............................................................................ 10
`Hockerson–Halberstadt, Inc. v. Converse Inc.,
`183 F.3d 1369 (Fed.Cir.1999) ................................................................................ 9
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) ............................................................................ 16
`Liebel-Flarsheim Co. v. Medrad, Inc.,
`358 F.3d 898 (Fed. Cir. 2004) .............................................................................. 19
`Lockwood v. Am. Airlines, Inc.,
`107 F.3d 1565 (Fed. Cir. 1997) ............................................................................ 20
`Nystrom v. TREX Co.,
`424 F.3d 1136 (Fed. Cir. 2005) ............................................................................ 10
`On Demand Machine Corp. v. Ingram Industries, Inc.,
`442 F.3d 1331 (Fed. Cir. 2006) ............................................................................ 10
`Optical Disc Corp. v. Del Mar Avionics,
`208 F.3d 1324 (Fed. Cir. 2000) ............................................................................ 10
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ............................................................... 1, 8, 9, 10
`
`iv
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`Patent No. 10,951,459
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`
`Takeda Pharm. Co. v. Zydus Pharms. USA, Inc.,
`743 F.3d 1359 (Fed. Cir. 2014) .............................................................................. 9
`Trading Techs. Int’l, Inc. v. eSpeed, Inc.,
`595 F.3d 1340 (Fed. Cir. 2010) ............................................................................ 13
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed.Cir.1996) ........................................................................... 9, 10
`REGULATIONS
`37 C.F.R. § 42.200(b) ................................................................................................ 8
`37 C.F.R. § 42.204(b)(3) .......................................................................................... 15
`83 Fed. Reg. 51,340 (Oct. 11, 2018) .......................................................................... 8
`
`
`
`
`
`v
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`Patent No. 10,951,459
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`LIST OF EXHIBITS TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`EXHIBIT
`2001
`2002
`2003
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`2006
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`2007
`2008
`2009
`
`2010
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`2011
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`2012
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`2013
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`2014
`
`2015
`
`2016
`
`2017
`
`DESCRIPTION
`Declaration of Dr. Vijay Madisetti in Support of Patent Owner’s Response
`List of Materials Considered by Dr. Vijay Madisetti
`Curriculum Vitae of Dr. Vijay Madisetti
`Order, D.I. 1161, Cirba Inc. (d/b/a Densify) and Cirba IP, Inc., v. VMware, Inc.,
`2004
`Case 1:19-cv-0742-LPS (D. Del.), Feb. 24, 2022
`2005 Memorandum Opinion, D.I. 1160, Cirba Inc. (d/b/a Densify) and Cirba IP, Inc.,
`v. VMware, Inc., Case 1:19-cv-0742-LPS (D. Del.), Feb. 24, 2022
`Joint Claim Construction Brief, D.I. 1094, Cirba Inc. (d/b/a Densify) and Cirba
`IP, Inc., v. VMware, Inc., Case 1:19-cv-0742-LPS (D. Del.), Feb. 24, 2022
`DICTIONARY BY MERRIAM-WEBSTER ()
`THE MERRIAM-WEBSTER DICTIONARY (2004)
`ROGET’S II THE NEW THESAURUS (3d ed. 2003)
`Newman, Morris et al., IBM, SERVER CONSOLIDATION WITH VMWARE ESX
`SERVER (January 2005)
`Brodkin, Jon, Virtual Server Sprawl Highlights Security Concerns, April 30,
`2008
`Provazza, Alyssa, FAQ: Devising a Server Consolidation Plan, November 24,
`2010
`VMware, Inc., Virtualization (available at
`https://www.vmware.com/solutions/virtualization.html)
`The Computer Language Company Inc., Virtual Environment, (available at
`https://www.computerlanguage.com/results.php?definition=virtual+environment)
`Hammersley, Eric, PROFESSIONAL VMWARE SERVER 1-9 (2007)
`VMware, Inc., Introduction to VMware Infrastructure, Update 2 and later for
`ESX Server 3.5, ESX Server 3i version 3.5, VirtualCenter 2.5 (2008, 2009)
`Defense Industry Daily, The Virtual Armed Forces: US Military Turns to
`Virtualization, August 15, 2011 (available at
`https://www.defenseindustrydaily.com/dod-virtual-machines-06991/)
`Steele, Colin, Face-Off: VMware vs. Microsoft in the Hypervisor Wars, May 1,
`2009 (available at http://web.archive.org/web/20150909123350/https://
`itknowledgeexchange.techtarget.com/server-virtualization/face-off-vmware-vs-
`microsoft-in-the-hypervisor-wars/)
`Kerner, Sean Michael, KVM vs. Xen vs. VMware. Is it a Hypervisor War?,
`September 6, 2008 (available at
`
`2018
`
`2019
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`https://www.internetnews.com/software/print.php/3769911)
`Venezia, Paul, Ramming Microsoft Down IT’s Throat, September 21, 2009
`(available at https://www.infoworld.com/article/2629925/ramming-microsoft-
`down-it-s-throat.html)
`Dubie, Denise, VMware, MS Battle Over Virtualization Management, June 27,
`2008 (available at https://www.cio.com/article/2435386/vmware--ms-battle-
`over-virtualization-management.html)
`Rosenblum, Mendel & Garfinkel, Tal, Virtual Machine Monitors: Current
`Technology and Future Trends, COMPUTER, Vol. 38, No. 5, 39-47 (May 2005)
`
`
`
`2020
`
`2021
`
`2022
`
`vii
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`

`

`Cirba IP Inc. (“Patent Owner”) submits this Response to the Petition of
`
`Case PGR2021-00098
`Patent No. 10,951,459
`
`
`
`VMware, Inc. (“Petitioner”) seeking post grant review (“PGR”) of U.S. Patent No.
`
`10,951,459 (“the ’459 patent”).
`
`I.
`
`INTRODUCTION
`The Petition fails to show that any of the challenged claims are unpatentable
`
`for lack of written description under 35 U.S.C. § 112(a). Petitioner’s arguments are
`
`deficient because they are grounded in improper claim constructions that do not
`
`abide by the well-settled principles articulated in Phillips1 and its progeny, and that
`
`were rejected by a district court’s recent claim construction order in a related case
`
`involving the same patent. Petitioner relies on these erroneous claim construction
`
`positions, which improperly narrow the scope of the claims, to argue that the
`
`intrinsic record does not contain adequate written description for the “already
`
`placed” and “issuing instructions” claim elements. When properly construed,
`
`however, it becomes clear that these elements are fully supported by written
`
`descriptions throughout the disclosures in the last pre-AIA application in the priority
`
`chain of the ’459 patent, i.e., the ’936 application. This pre-AIA support removes
`
`Petitioner’s sole basis for claiming post-grant review eligibility.
`
`
`1 Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005).
`
`1
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`

`

`For at least the reasons explained in this Response, Petitioner has not satisfied
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`
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`its burden of showing by a preponderance of the evidence that any challenged claim
`
`is unpatentable. The Board should also find that the ’459 patent is not eligible for
`
`post-grant review, as adequate written description support exists in at least one pre-
`
`AIA application in the ’459 patent’s priority chain.
`
`II.
`
`STATUS OF RELATED MATTERS
`The ’459 patent is the subject of litigation in Cirba, Inc. d/b/a Densify et al.
`
`v. VMware, Inc., DDE-1-19-cv-00742-LPS.
`
`III. OVERVIEW OF THE ’459 PATENT
`The ’459 patent discloses methods and systems for determining compatibility
`
`of computer systems. As the information technology industry trended away from
`
`large, centralized computer systems (such as mainframes) toward smaller,
`
`“distributed systems” of multiple computers operating in parallel, significant
`
`practical challenges emerged. Ex. 1001 (’459 patent) at 1:35-58. For example, while
`
`distributed approaches allowed computer resources to be deployed in relatively low-
`
`cost increments and with greater flexibility, they led to a proliferation of servers
`
`(known as “sprawl”), resulting in an overabundance of processing capacity and
`
`posing complex and costly system management challenges. Id. at 1:51-2:4.
`
`Organizations sought to reduce costs and increase efficiency by consolidating,
`
`or “combining,” distributed computing systems. Id. at 2:5-42. But identifying
`
`2
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`

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`consolidation strategies was often difficult, error-prone, and time consuming due to
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`the virtually infinite number of possible consolidation permutations in large
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`enterprise computing environments, which included suboptimal and incompatible
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`system combinations. Id. at 2:43-60. For example, consolidation strategies could
`
`employ various
`
`techniques of combining computing resources,
`
`including
`
`“virtualization,” id. at 2:14-19, operating system-level (or “OS-level”) “application
`
`stacking,” id. at 2:20-29, “database stacking,” id. at 2:30-36, and physical
`
`consolidation, id. at 2:37-42, among others. In particular, strategy selections were
`
`complicated by various considerations of incompatibility among the computer
`
`systems to be consolidated, such as complex systems configurations, diverse
`
`business requirements, dynamic workloads, and the heterogenous nature of
`
`distributed systems. Id. at 2:51-60; see also id. at 39:43-52.
`
`The ’459 patent discloses novel and inventive solutions for determining
`
`placement of and for placing multiple “source” computer systems onto “target”
`
`computer systems. Ex. 1001 at 5:57-64; 34:40-48; 39:43-52. Among other things,
`
`the ’459 patent discloses a “multi-dimensional compatibility analysis” that
`
`“evaluates the compatibility of transfer sets that can involve multiple sources being
`
`transferred to a common target.” Id. at 6:42-45; 7:27-31; 29:37-45, 30:36-44.
`
`Referring to annotated Figure 3 below, a “transfer” (green) “describes the movement
`
`3
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`

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`of a single source entity” (blue) onto a target” (red), and “[a] transfer set” (yellow)
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`“can be considered one or more transfers that involve a common target.” Id. at 6:38.
`
`
`
`In a multi-dimensional compatibility analysis, “a transfer set can include
`
`multiple sources (N) to be transferred to the target, [and] the analysis may evaluate
`
`the compatibility of sources amongst each other (N-by-N) as well as each source
`
`against the target (N-to-1).” Id. at 30:36-44. In other words, “[a]n N-to-1
`
`intercompatibility analysis assesses each source system against the target,” and “[a]n
`
`N-by-N intracompatibility analysis evaluates each source system against each of the
`
`other source systems.” Id. at 30:46-53 (emphases added).
`
`4
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`Factors that impact whether systems can be combined include technical,
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`business, and workload parameters. Id. at 5:40-53, 6:65-7:10, 10:21-23, 15:24-29.
`
`Examples of technical parameters include “the operating system, OS version,
`
`patches, application settings, hardware devices, etc.” of systems. Id. at 5:40-42.
`
`Examples of business parameters include “the physical location, organization
`
`department, data segregation requirements, owner, service level agreements,
`
`maintenance windows, hardware lease agreements, software licensing agreements,
`
`etc.” Id. at 5:43-49, 6:66-7:2, 39:43-48. Examples of workload parameters include
`
`“various resource utilization and capacity metrics related to the system processor,
`
`memory, disk storage, disk I/O throughput and network bandwidth utilization.” Id.
`
`at 5:49-53.
`
`System compatibility with respect to these parameters may be evaluated
`
`during the compatibility analysis using “differential rules” and “workload stacking”
`
`algorithms. Id. at 6:66-7:7. With reference to annotated Figure 1 below, technical
`
`(“configuration”), business, and workload parameters, are first obtained through data
`
`collection (yellow), and differential rules are then used to evaluate those parameters
`
`and determine the compatibility between systems with respect to technical, business,
`
`and workload constraints (green). Ex. 1001 at 5:15-24, 5:29-39, 10:21-23, 11:6-9,
`
`15:24-39, 29:48-51, Fig. 1.
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`The differential rules may be grouped into “rule sets” that allow or prevent
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`systems from being combined for a given consolidation strategy, while meeting
`
`requisite compatibility constraints. Ex. 1001 at 7:32-38, 10:21-27. Compatibility
`
`constraints may include technical, business, and workload constraints. Id. at 10:21-
`
`23, 15:24-29, 29:48-51. The constraints can be expressed in rule sets, and a rule set
`
`can be used to evaluate system compatibility. Id. at 8:12-14; 10:9-11, 10:21-25,
`
`15:24-29. Once specified, the compatibility analyses may be executed, and a
`
`placement of source systems onto target systems may be determined. Id. at e.g. 6:36-
`
`60, 29:36-30:44, 30:54-57, 33:34-53, 36:58-67, 39:5-13, Figs. 3, 51, 52. Instructions
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`6
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`for placing source systems onto target systems in accordance with the determined
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`placement may then be issued. Id.
`
`The ’459 patent discloses improvements over existing approaches to
`
`determining placement of and placing source systems on target systems. For
`
`example, the multi-dimensional compatibility analysis evaluates candidate systems
`
`for placement against each other “based not only on technical and workload
`
`constraints . . . but also business constraints” to determine their compatibility, and
`
`not just against arbitrary criteria (such as lease status or financial savings targets).
`
`Id. at 6:61-65, 15:24-29. The ’459 patent’s multi-dimensional analysis also enables
`
`the placement of sources on targets to be done in accordance with all three types of
`
`constraints (i.e., technical, business, and workload) used in the multi-dimensional
`
`compatibility analysis. Ex. 1001 at 30:36-44, 39:15-31. It also enables compatibility
`
`to be determined with these methods between and among systems either already
`
`placed on a specific target system or being evaluated for placement onto a specific
`
`target system. Ex. 1001 at 29:37-30:44.
`
`The ’459 patent’s multi-dimensional compatibility analysis “evaluates the
`
`compatibility of transfer sets that can involve multiple sources being transferred to
`
`a common target.” Ex. 1001 at 7:26-28. The ’459 patent’s multi-dimensional
`
`compatibility analyses may use as inputs specified or previous consolidation
`
`solutions and auto fit input parameters. Ex. 1001 at 9:7-15; 29:37-58.
`
`7
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`

`
`IV. LEVEL OF ORDINARY SKILL
`Petitioner sets forth a level of ordinary skill. Petition at 18-19. Although
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`Case PGR2021-00098
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`Patent Owner does not concede that Petitioner’s definition of a person of ordinary
`
`skill (“POSA”) is correct, Patent Owner does not offer a competing definition for
`
`purposes of this proceeding. The Petition fails to establish unpatentability even if
`
`the Board were to apply Petitioner’s definition.
`
`V. CLAIM CONSTRUCTION
`A. Governing Principles
`The standard for claim construction in post grant review proceedings is “the
`
`same claim construction standard that would be used to construe the claim in a civil
`
`action under 35 U.S.C. 282(b), including construing the claim in accordance with
`
`the ordinary and customary meaning of such claim as understood by one of ordinary
`
`skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. §
`
`42.200(b). Thus, claims are construed in accordance with Phillips v. AWH Corp.,
`
`415 F.3d 1303 (Fed. Cir. 2005) and its progeny.2 See 415 F.3d at 1312-13.
`
`
`2 See 83 Fed. Reg. 51,340, 51,341, 51,345, 51,358 (Oct. 11, 2018) (amending 37
`
`C.F.R. § 42.200(b) effective November 13, 2018) (now codified at 37 C.F.R. §
`
`42.200(b) (2019)).
`
`8
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`The “starting point in construing a claim term must be the words of the claim
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`
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`itself.” Takeda Pharm. Co. v. Zydus Pharms. USA, Inc., 743 F.3d 1359, 1364 (Fed.
`
`Cir. 2014) (citing Phillips, 415 F.3d at 1314). “Proper claim construction [also]
`
`demands interpretation of the entire claim in context, not a single element in
`
`isolation.” Hockerson–Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374
`
`(Fed.Cir.1999). “While certain terms may be at the center of the claim construction
`
`debate, the context of the surrounding words of the claim also must be considered in
`
`determining the ordinary and customary meaning of those terms.” ACTV, Inc. v.
`
`Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003).
`
`Claims are not construed in a vacuum. Rather, “the person of ordinary skill in
`
`the art is deemed to read the claim term not only in the context of the particular claim
`
`in which the disputed term appears, but in the context of the entire patent, including
`
`the specification.” Phillips, 415 F.3d at 1313. Indeed, the specification “is the single
`
`best guide to the meaning of a disputed term.” Id. at 1315.
`
`A patentee may be its own lexicographer. Vitronics Corp. v. Conceptronic,
`
`Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996). Thus, “a definition of a claim term in the
`
`specification will prevail over a term’s ordinary meaning if the patentee has acted as
`
`his own lexicographer and clearly set forth a different definition.” 3M Innovative
`
`Properties Co. v. Avery Dennison Corp., 350 F.3d 1365, 1371 (Fed. Cir. 2003). But
`
`“[w]ithout evidence in the patent specification of an express intent to impart a novel
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`meaning to a claim term, the term takes on its ordinary meaning.” Optical Disc
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`Case PGR2021-00098
`Patent No. 10,951,459
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`Corp. v. Del Mar Avionics, 208 F.3d 1324, 1334-35 (Fed. Cir. 2000).
`
`To determine whether a patent imparts a special meaning to a claim term,
`
`judges may consult general purpose dictionaries. Vitronics, 90 F.3d at 1584 n.6.
`
`“For example, a judge who encounters a claim term while reading a patent might
`
`consult a general purpose or specialized dictionary to begin to understand the
`
`meaning of the term, before reviewing the remainder of the patent to determine how
`
`the patentee has used the term.” Phillips, 415 F.3d at 1324; see id. at 1322.
`
`However, it is improper to construe a claim term more broadly than its
`
`ordinary meaning “as reflected in dictionary definitions and in the overall context of
`
`the intrinsic record.” See Cross Med. Prod., Inc. v. Medtronic Sofamor Danek, Inc.,
`
`424 F.3d 1293, 1306 (Fed. Cir. 2005). “Broadening of the ordinary meaning of a
`
`term in the absence of support in the intrinsic record indicating that such a broad
`
`meaning was intended violates the principles articulated in Phillips.” Nystrom v.
`
`TREX Co., 424 F.3d 1136, 1145-46 (Fed. Cir. 2005). “Although . . . each term
`
`standing alone can be construed as having varying degrees of breadth, each term
`
`must be construed to implement the invention described in the specification.” On
`
`Demand Machine Corp. v. Ingram Industries, Inc., 442 F.3d 1331, 1340, 1344 (Fed.
`
`Cir. 2006).
`
`10
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`B.
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`Patent Owner’s Claim Construction Analysis
`1.
`“source system” and “target system”
`Patent Owner proposes that the Board adopt the constructions of “source
`
`system” and “target system” ordered by the United Stated District Court for the
`
`District of Delaware in the related proceeding captioned Cirba, Inc. d/b/a Densify et
`
`al. v. VMware, Inc., DDE-1-19-cv-00742-LPS. There the district court adopted
`
`Patent Owner’s proposed construction for “source system” (“a physical, virtual, or
`
`hypothetical system from which applications and/or data are moved or are to be
`
`moved”) and “target system” (“a physical, virtual, or hypothetical system to which
`
`applications and/or data are moved or are to be moved”). Ex. 2004 (2/24/2022 claim
`
`construction Order) at 1. In adopting Patent Owner’s constructions, the court
`
`rejected the very same proposed constructions and arguments that Petitioner raises
`
`in this proceeding. Ex. 2005 (2/24/2022 Memorandum Opinion) at 9-12.
`
`Patent Owner’s support for its constructions in the district court case, which
`
`the court found persuasive, are equally applicable here. Ex. 2006 (Joint Claim
`
`Construction Brief) at 34-35, 38-40, 42-43; Ex. 1001 at 5:57-64, 6:35-41. The
`
`patentees defined “source system” as “a system from which applications and/or data
`
`are to be moved,” and “target system” as “a system to which such applications and/or
`
`data are to be moved,” while also making clear that “source systems” include
`
`systems that are being moved or are already moved. Ex. 1001 at 5:57-60; Ex. 2006
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`11
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`(Joint Claim Construction Brief) at 34-35, 39. For example, the patent explains that
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`“[c]onsolidation . . . can be considered to include one or more ‘transfers,’” where
`
`“[t]he actual transfer describes the movement of a single source entity onto a target”
`
`and “[t]he transfer type (or consolidation strategy) describes how a source entity is
`
`transferred onto a target, e.g. virtualization, OS stacking etc.” Ex. 1001 at 6:35-41
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`(emphasis added). The patent also teaches that “[t]he [compatibility] analysis can
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`be performed on an analysis with pre-existing source-target transfers,” Id. at 34:44-
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`46 (emphasis added),3 and that “the compatibility analysis can evaluate the
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`incremental effect of adding other source systems . . . to the specified transfer sets,”
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`whereby a source system “can be individually assessed against [a] transfer set” that
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`already includes one or more source systems stacked onto a target system. Id. at
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`30:18-26. This demonstrates that the specification is not limited to “forward-looking
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`‘analysis’ activity” only, but also compatibility analyses involving source systems
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`that are already moved to a target system. To this point, the patent specifically
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`teaches compatibility analyses may be used for purposes other than consolidation,
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`including activities that can be performed after source systems have been moved to
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`target systems, including “optimization,” “administration,” and “change.” Ex. 1001
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`3 This excerpt of the ’459 patent specification corresponds to Paragraph 345 of the
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`’936 application. Compare Ex. 1001 at 34:40-48 with Ex. 1009 at [00345].
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`at 39:43-48. The patent also makes clear that “systems” may be “physical systems,
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`virtual systems or hypothetical models.” Id. at 5:65-6:1.
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`VMware (the Petitioner in this proceeding) (hereinafter referred to as
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`“Petitioner” for clarity) argued in the district court proceeding that “source system”
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`is limited to “a system from which applications and/or data are to be moved,” and
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`“target system” is limited to “a system to which applications and/or data from a
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`source system are to be moved.” Ex. 2006 (Joint Claim Construction Brief) at 34,
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`42. Petitioner argued that its constructions “follow[] the specification’s express
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`definition” and Patent Owner’s “preliminary response to [Petitioner’s] IPR petition
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`against the ’492 patent,” and that “[t]he PTAB adopted [these] construction[s] when
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`instituting the IPR.” Id. at 35-36, 43-44. Petitioner ignored the fact that Patent
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`Owner’s arguments (then and now) are fully consistent with the patentees’
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`lexicography; Petitioner also blinded itself to other relevant disclosures in the
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`specification, which make clear that the intended scope of “source system” mirrors
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`Patent Owner’s construction. See Trading Techs. Int’l, Inc. v. eSpeed, Inc., 595 F.3d
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`1340, 1353-56 (Fed. Cir. 2010) (affirming construction that “made two important
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`changes to [an] express definition” in the specification based on additional context
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`in “the claims, the rest of the specification, and the prosecution history”).
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`Petitioner’s rigid adherence to its improper construction is presumably
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`motivated by the fact that its Section 112(a) argument depends on it. In seeking to
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`exclude “past or present (real-time) moves” of source systems, Petitioner hopes to
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`convince the Board that, once moved, a “source system” effectively ceases to exist,
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`because it is no longer “an actual source of applications and data.” Paper 2 at 32
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`(PGR2021-00098, Petition for PostGrant Review of U.S. Patent No. 10,951,459
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`(hereinafter referred to as “Petition”)). The specification, however, disproves this
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`theory. Throughout the specification, “source systems” that are moved, stacked, or
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`transferred are still referred to as “sources.” Ex. 1001 at, e.g., Figs. 22, 25, 26, 49,
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`52, 6:1-57, 10:39-53; 15:1-12; 16:54-17:7; 30:1-26. And once placed, a source may
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`still be evaluated for placement elsewhere. See, e.g., id. at 29:59-30:44.
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`The district court rejected Petitioner’s arguments and adopted Patent Owner’s.
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`Although the court acknowledged that “the construction VMware now proposes is
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`the same one the PTAB adopted when instituting the IPR [of the ’492 patent],” and
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`that “VMware argues its construction is consistent with the specification’s express
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`definition,” (Ex. 2005 (2/24/2022 Memorandum Opinion) at 10-11), the court
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`nonetheless found Patent Owner’s construction appropriate and construed “source
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`system” to mean “a physical, virtual, or hypothetical system from which applications
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`and/or data are moved or are to be moved”; “target system” was similarly construed.
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`Ex. 2004 (2/24/2022 claim construction Order) at 1 (emphasis added). In so
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`ordering, the court found that the specification supported the specificity set forth in
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`Patent Owner’s construction. Ex. 2005 (2/24/2022 Memorandum Opinion) at 10
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`(“[T]he specification’s disclosure that the systems may be physical, virtual, or
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`hypothetical is consistent with the express definition while providing more
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`specificity.”) (citing Patent Owner’s arguments in its claim construction brief). The
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`court also concluded that “the patent does not place a temporal limit on the claimed
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`‘source system’ – that is, it does not exclude systems that have already been moved
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`or are currently being moved.” Id. (citing Patent Owner’s arguments at the claim
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`construction hearing) (emphasis added). The Board should adopt the district court’s
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`constructions here for the same reasons. Ex. 2001 ¶¶ 75 - 84.
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`2.
`“place” and “placement”
`The Board acknowledged in its Decision granting institution that Petitioner
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`“makes arguments based on the meaning of the term ‘placement’ in the claims, [but]
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`never conducts a claim construction analysis for the terms “placed” or “placement.”
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`Paper 12 (Institution Decision) at 22.4 The Board stated that “[t]o the extent
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`4 Petitioner’s failure to include a claim construction analysis for the “placed” and
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`“placement” terms, while basing the petitioned Grounds on a particular
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`interpretation of those terms, violates the requirements of 37 C.F.R. § 42.204(b)(3).
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`Though the Board invited the parties to address the proper construction of these
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`terms during the trial, Petitioner should not be allowed to use its Reply to offer new
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`rationales to show unpatentability under Patent Owner’s proposed construction. See
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`appropriate, the parties may address the proper construction of these terms during
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`the trial. Id. Patent Owner addresses construction of these claim terms below.
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`Based on the plain meaning of the claim terms and the context provided by
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`the surrounding claim language and the ’459 patent’s specification, the “place” and
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`“placement” terms would be understood by a POSA to mean putting or arranging,
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`i.e., placing or placement of systems includes moving, transferring, stacking or
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`otherwise arranging systems. Ex. 2001 ¶¶ 85 - 87. The district court agreed, finding
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`Consolidated Trial Practice Guide (November 2019) (“CTPG”) at 74 (“‘Respond’
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`in the context of 37 C.F.R. § 42.23(b) does not mean proceed in a new direction with
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`a new approach as compared to the positions taken in a prior filing. . . . [A] reply or
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`sur-reply that raises a new issue or belatedly presents evidence may not be
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`considered.”) (citing Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d
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`1359, 1369–70 (Fed. Cir. 2016))); see also Axonics, Inc., v. Medtronic, Inc.,
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`IPR2020-00712, Paper 42 at 34-37 (P.T.A.B. Sept. 22, 2021) (where “Petitioner
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`chose to interpret the claims” in a particular way in its petition, notwithstanding
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`contrary evidence in the specification, “Petitioner’s apparent misapprehension of
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`what is disclosed in the [challenged] patent as [of] the filing of its Petition does not
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`afford Petitioner the opportunity to present new arguments in its Reply” under Patent
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`Owner’s proposed construction).
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`“the specification does not limit the scope of the ‘place’ terms to exclude all other
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`actions