Trials@uspto.gov
`571-272-7822
`
`Paper 38
`Entered: December 7, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`VMWARE, INC.,
`Petitioner,
`v.
`CIRBA INC.,
`Patent Owner.
`
`PGR2021-00098
`Patent 10,951,459 B2
`
`
`
`
`
`
`
`
`
`Before DAVID C. MCKONE, STACY B. MARGOLIES, and
`RUSSELL E. CASS, Administrative Patent Judges.
`CASS, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 328(a)
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 38
`Entered: December 7, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`VMWARE, INC.,
`Petitioner,
`v.
`CIRBA INC.,
`Patent Owner.
`
`PGR2021-00098
`Patent 10,951,459 B2
`
`
`
`
`
`
`
`
`
`Before DAVID C. MCKONE, STACY B. MARGOLIES, and
`RUSSELL E. CASS, Administrative Patent Judges.
`CASS, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 328(a)
`
`
`
`
`
`
`
`
`
`PGR2021-00098
`Patent 10,951,459 B2
`
`
`I.
`
`INTRODUCTION
`
`A. Background
`In this post-grant review, VMware, Inc. (“Petitioner”) challenges the
`patentability of claims 1–63 (the “challenged claims”) of U.S. Patent
`No. 10,951,459 B2 (Ex. 1001, “the ’459 patent”), which is assigned to Cirba
`Inc. (“Patent Owner”).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision, issued pursuant to 35 U.S.C. § 328(a), addresses issues and
`arguments raised during the trial in this post grant review. For the reasons
`discussed below, Petitioner has proven by a preponderance of the evidence
`that claims 1–63 are unpatentable.
`
`B. Procedural History
`In this proceeding, Petitioner submitted its Petition on July 6, 2001
`(Paper 2 (“Pet.”)), challenging claims 1–63 based on the following ground:
`
`Claims Challenged
`1–63
`
`35 U.S.C. §
`112(a)1
`
`Reference(s)/Basis
`Written Description
`
`
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), included revisions to 35 U.S.C. § 112 that became effective
`as of March 16, 2013. The application for the ’459 patent was filed after
`March 16, 2013, but includes a priority claim to an application filed before
`this date. Ex. 1001, codes (22), (63). Petitioner contends that the challenged
`claims are not entitled to an effective filing date earlier than March 16, 2013,
`because the pre-AIA priority applications lack written description for the
`challenged claims. Pet. 20–53. Because, as discussed below, the record
`shows that the pre-AIA priority applications lack sufficient written
`description for the challenged claims, we apply the post-AIA version of
`§ 112.
`
`2
`
`
`
`PGR2021-00098
`Patent 10,951,459 B2
`
`Pet. 20–54. With its Petition, Petitioner submitted the Declaration of
`Dr. Erik Zadok. Ex. 1006. Patent Owner elected to waive its Preliminary
`Response. Paper 11. We instituted trial on all grounds of unpatentability.
`(Paper 12 (“Inst. Dec.”)).
`During the trial, Patent Owner filed a Response (Paper 14, “PO
`Resp.”), Petitioner filed a Reply (Paper 22, “Pet. Reply”), and Patent Owner
`filed a Sur-reply (Paper 23, “PO Sur-reply”).
`An oral hearing was held on September 15, 2022, a transcript of
`which appears in the record. Paper 37 (“Tr.”).
`
`C. Real Parties in Interest
`Petitioner states that “VMware, Inc.” is the real party in interest, and
`“is the sole party who has funded this Petition and has full and exclusive
`control over this proceeding.” Pet. 54. Petitioner also states that, “[o]ut of
`an abundance of caution, VMware discloses that it is a majority-owned
`subsidiary of EMC Corporation, which is a wholly-owned subsidiary of Dell
`Technologies, Inc.” Id. Petitioner further states that “VMware does not
`believe that either EMC Corporation or Dell Technologies, Inc. are real-
`parties-in-interest and, as far as VMware is aware, neither EMC Corporation
`nor Dell Technologies, Inc. has ever been served with a complaint accusing
`them of infringing the ’459 patent.” Id.
`In its initial Mandatory Notices, Patent Owner stated that “[t]he real
`parties-in-interest are Cirba IP, Inc. and Cirba Inc. (d/b/a Densify).”
`Paper 4, 2. On August 17, 2022, Patent Owner filed Updated Mandatory
`Notices stating that, on April 20, 2022, “Cirba IP, Inc. was amalgamated (the
`Canadian version of merged) into Cirba Inc.” Paper 29, 1. According to
`Patent Owner, “Cirba Inc. (the amalgamated company), which now includes
`
`3
`
`
`
`PGR2021-00098
`Patent 10,951,459 B2
`
`both what was formerly Cirba Inc. and what was Cirba IP, Inc., succeeds to
`all rights and interests of Cirba Inc. and Cirba IP, Inc. (both of which survive
`the amalgamation).” Id. “As a result,” Patent Owner represents, “Cirba Inc.
`(the amalgamated company) is the owner of U.S. Patent No. 10,951,459 and
`is the real party-in-interest in this proceeding.” Id.
`
`D. Related Proceedings
`The parties identify the following consolidated district court cases
`involving the ’459 patent, and its parent, U.S. Patent No. 10,523,492 (the
`“’492 patent”): Cirba Inc. et al. v. VMware, Inc., No. 1:19-cv-00742-LPS
`(D. Del.) and VMware, Inc. v. Cirba Inc., No. 1:20-cv-00272-LPS (D. Del.)
`(the “District Court Litigation”). Pet. 55; Paper 4, 2.
`The parties identify IPR2021-01210 and IPR2021-01211 as involving
`the ’459 patent.2 Paper 4, 2. The parties also identify IPR2021-00008 as
`involving the parent ’492 patent. Id.
`
`E. The ’459 Patent (Ex. 1001)
`The ’459 patent relates to systems and methods for analyzing a
`collection of computers for consolidation based on various constraints,
`including compatibility. Ex. 1001, code (57). According to the ’459 patent
`specification, challenges have arisen in managing distributed computing
`systems due to the sprawl that can occur over time as applications and
`servers proliferate, resulting in more processing capacity than is required by
`an organization. Id. at 1:47–58. Removing some of the servers from a large
`computing environment, the specification explains, can significantly reduce
`costs. Id. at 2:1–4.
`
`
`2 IPR2021-01210 and IPR2021-01211 were terminated on December 28,
`2021. IPR2021-01210, Paper 16; IPR2021-01211, Paper 16.
`
`4
`
`
`
`PGR2021-00098
`Patent 10,951,459 B2
`
`
`To address this concern, the ’459 patent discloses an analysis program
`for determining compatibilities in a computing environment and identifying
`consolidation solutions, as shown, for example, in Figure 1 reproduced
`below.
`
`
`Figure 1 is a block diagram of an analysis program for evaluating the
`compatibility of computer systems to identify consolidation solutions.
`Ex. 1001, 3:42–44, Fig. 1.
`As shown in Figure 1, analysis program 10, accessed through computer
`station 14, gathers data 18 pertaining to a collection of systems to be
`consolidated 16. Id. at 5:18–20. The data is obtained for each system and
`includes one or more parameters that preferably relate to technical, business,
`
`5
`
`
`
`PGR2021-00098
`Patent 10,951,459 B2
`
`and workload characteristics or features of the respective system. Id. at
`5:29–33. Analysis program 10 uses gathered data 18 to evaluate the
`compatibility of the computer systems and provides roadmap 20 specifying
`how the original set of systems can be consolidated to a smaller number of
`systems 22. Id. at 5:20–24. The systems include source systems from which
`applications and/or data are to be moved, and target servers or systems to
`which such applications and/or data are to be moved. Id. at 5:57–60.
`The compatibility analysis is performed using differential rule sets to
`evaluate and quantify the compatibility of systems and produce an overall
`compatibility score. Ex. 1001, 6:66–7:7. A 1-to-1 compatibility analysis
`may be used to evaluate the compatibility of every possible source-target
`pair combination on a 1-to-1 basis. Id. at 7:19–21. This analysis is useful
`in assessing single transfer consolidation candidates. Id. at 7:21–23.
`A multi-dimensional compatibility analysis can evaluate the
`compatibility of transfer sets where multiple sources are to be transferred to
`a common target. Ex. 1001, 7:26–28. To assess the compatibility of
`transferring multiple source entities (N) to a target, a rule-based analysis can
`compute a compatibility score based on a combination of N-to-1 and N-by-N
`compatibility analyses. Id. at 30:46–49. An N-to-1 intercompatibility
`analysis “assesses each source system against the target” to generate a score
`that “reflect[s] the compatibility between N source entities and a single
`target.” Id. at 30:49–51, 31:25–26. An N-by-N intracompatibility analysis
`“evaluates each source system against each of the other source systems” to
`generate a score that “reflect[s] the compatibility amongst N source entities
`with respect to a given rule set.” Id. at 30:51–52, 32:17–19. Based on this
`analysis, a consolidation solution (or roadmap) is generated containing one
`
`6
`
`
`
`PGR2021-00098
`Patent 10,951,459 B2
`
`or more transfer sets based on a common pool of source and target entities.
`Id. at 6:46–48.
`
`F. Illustrative Claim
`The ’459 patent includes challenged claims 1–63, of which claims 1,
`32, and 63 are independent. Claim 1 is illustrative and is reproduced below.
`1. A system for determining placement of source computer
`systems on target computer systems, the system configured to
`execute operations causing the system to:
`collect data for a collection of computer systems, the
`collection of computer systems comprising a plurality of
`source systems and a plurality of target systems;
`determine a placement of at least one source system from the
`collection of computer systems on at least one target
`system from the collection of computer systems by
`employing the following operations:
`evaluate compatibility between a specific source system
`from the plurality of source systems and a specific
`target system from the plurality of target systems by
`evaluating one or more rules that operate against
`attributes or data relating to the source and target
`systems being evaluated;
`evaluate compatibility between the specific source system
`from the plurality of source systems and one or more
`other source systems either already placed on the
`specific target system, or being evaluated for placement
`onto the specific target system, to determine if the
`specific source system can be placed with those other
`source systems on the specific target system, by
`evaluating one or more rules that operate against
`attributes or data relating to the source systems;
`evaluate compatibility between the specific source system
`and the specific any one of the plurality of target system
`by evaluating the impact on resource utilization of the
`specific target system of placing the specific source
`system on the specific target system, in combination
`
`7
`
`
`
`PGR2021-00098
`Patent 10,951,459 B2
`
`
`with the one or more other source systems, either
`already placed on the specific target system, or being
`evaluated for placement onto the specific target system;
`and
`issue instructions to place the at least one source system on
`the at least one target system in accordance with the
`determined placement.
`Ex. 1001, 40:2–39.
`
`G. Priority Claims and Prosecution History of the ’459 Patent
`The ’459 patent states that it is a continuation of Application No.
`14/341,471 (the “’471 application”), filed on July 25, 2014 (now U.S. Patent
`No. 10,523,492 (the “’492 patent”)), which is a continuation of Application
`No. 11/738,936 (the “’936 application”), filed on April 23, 2007 (now U.S.
`Patent No. 8,793,679). Ex. 1001, code (63). The ’936 application is a
`continuation-in-part of Application No. 11/535,355 (the “’355 application”),
`now U.S. Patent No. 7,809,817, and Application No. 11/535,308 (the “’308
`application”), now U.S. Patent No. 7,680,754, both filed on September 26,
`2006. Id. The ’459 patent also claims priority to Provisional Application
`No. 60/745,322 (the “’322 application”), filed on April 21, 2006. Id. at code
`(60). The ’936 application states that it incorporates by reference the ’355,
`’308, and ’322 applications. Ex. 1009 ¶ 1.
`Petitioner includes the following graphic to illustrate the priority chain
`for the ’459 patent.
`
`8
`
`
`
`PGR2021-00098
`Patent 10,951,459 B2
`
`
`
`Petitioner’s graphic illustrating the chain of applications upon which the
`’459 patent claims priority, and indicating which ones are pre-AIA and
`which are post-AIA. Pet. 21.
`Aspects of the prosecution history that are relevant to this Decision are
`summarized below.
`On October 30, 2018, the applicant in the ’471 application filed a
`Request for Continued Examination (RCE), which included the following
`claim:
`
`1. A computer-implemented method for determining
`compatibility of computer systems for combining source
`systems on target systems, the method comprising:
`analyzing compatibility parameters for the computer systems
`to determine whether a source system is compatible with
`at least one of: i) a target system, and ii) another source
`system, wherein the compatibility parameters correspond
`to features or characteristics of the respective computer
`systems that can be evaluated, quantified, measured, or
`compared between systems;
`
`9
`
`
`
`PGR2021-00098
`Patent 10,951,459 B2
`
`
`analyzing source system workload data to determine which
`of the computer systems is operable with another system
`on the target system; and
`generating an output comprising a workload placement
`solution based on which of the computer systems is
`operable and compatible with other systems, to enable one
`or more placements of source systems onto target systems
`to be implemented.
`Ex. 1024, 140 (accounting for amendments to the claim).
`On January 2, 2019, the examiner rejected claim 1 under 35 U.S.C.
`§ 101 on the basis that the claimed combination “do[es] not amount to
`significantly more than an abstract idea.” Ex. 1024, 75. The examiner
`found that claim limitations that were “considered to be part of the abstract
`idea,” included “generating an output . . . ,” among others. Id. at 75.
`On July 2, 2019, the applicant responded to the examiner’s rejection
`by amending claim 1 as follows:
`1. A computer-implemented method for determining
`compatibility of computer systems for combining placing
`source systems on target systems, the method comprising:
`analyzing compatibility parameters for the computer systems
`to determine whether a source system is compatible with
`at least one of: i) a target system, and ii) another source
`system, wherein the compatibility parameters correspond
`to features or characteristics of the respective computer
`systems that can be evaluated, quantified, measured, or
`compared between systems;
`analyzing source system workload data to determine which
`of the computer systems is operable with another system
`on the target system; and
`evaluating one or more source systems against other source
`systems and against one or more target systems using at
`least one rule set that evaluates parameters of the systems
`to determine whether the systems can or can not be placed
`together on a specific target system, wherein the
`
`10
`
`
`
`PGR2021-00098
`Patent 10,951,459 B2
`
`
`evaluating comprises one or more of: a 1-to-1
`compatibility analysis, an N-to-1 compatibility analysis, or
`an N-by-N compatibility analysis; and
`generating an output comprising a workload placement
`solution based on which of the computer systems is
`operable and compatible with other systems, to enable one
`or more placements of source systems onto target systems
`to be implemented.
`placing the source systems onto the target systems in
`accordance with technical, business, and workload
`constraints determined in the compatibility analysis.
`Ex. 1024, 47.
`The applicant explained that, in response to the Section 101 rejection,
`it “has amended claim 1[,] as indicated above, to specify a practical
`application of the previously recited ‘output,’ namely: ‘placing the source
`systems onto the target systems in accordance with technical, business, and
`workload constraints determined in the compatibility analysis.’” Id. at 53.
`The applicant argued that this newly-added element “integrate[s] the abstract
`idea into a practical application” because it “clearly recites applying the
`result of the compatibility analysis by placing source systems onto target
`systems — a practical application of any alleged abstract idea.” Id. at 54.
`Following this amendment, on October 18, 2019, the examiner issued
`a Notice of Allowance allowing the pending claims, including claim 1.
`Ex. 1024, 11, 15.
`The application for the ’459 patent was filed on November 19, 2019,
`with a single claim. Ex. 1002; Ex. 1001, code (63). In a preliminary
`amendment filed on July 2, 2020, Patent Owner canceled the originally filed
`claim and added 57 new claims. Ex. 1003, 2–9. New claim 2 recited as
`follows:
`
`11
`
`
`
`PGR2021-00098
`Patent 10,951,459 B2
`
`
`2. A system for determining placement of a source system
`on a target system, the system configured to execute operations
`causing the system to:
`collect data for a collection of systems, the collection of
`systems comprising a plurality of source systems and a
`plurality of target systems;
`evaluate compatibility between any one of the plurality of
`source systems and any one of the plurality of target
`systems by evaluating one or more rules that operate
`against attributes or data relating to the source and target
`systems being evaluated;
`evaluate compatibility between any two or more of the
`plurality of source systems by evaluating one or more
`rules that operate against attributes or data relating to the
`two or more source systems;
`evaluate compatibility between any one of the plurality of
`source systems and any one of the plurality of target
`systems by evaluating the impact on resource utilization of
`the target system of placing that source system on that
`target system, in combination with any other source
`systems, either already placed on that target system, or
`being evaluated for placement onto that target system;
`determine a placement of at least one source system of the
`collection of systems on at least one target system of the
`collection of systems by employing the evaluating
`operations on any one or more of the systems of the
`collection of systems; and
`issue instructions to place the at least one source system on
`the at least one target systems in accordance with the
`determining.
`Ex. 1003, 2. In the remarks accompanying the Preliminary Amendment,
`Patent Owner stated that “[s]upport for these amendments can be found
`throughout the application as filed,” but did not identify any specific
`portions of the application. Id. at 11.
`
`12
`
`
`
`PGR2021-00098
`Patent 10,951,459 B2
`
`
`The Examiner allowed the claims on October 5, 2020, without issuing
`any rejections. Ex. 1004, 1. In the Notice of Allowance, the examiner stated
`that claim 2 “contain[s] similar limitations/inventive concepts to the
`allowable limitations of at least Claim 1” of the ’471 application “along with
`further narrowing limitations,” and that claim 2 was “considered allowable
`for analogous reasons as highlighted in [the] related prior” ’471 application.
`Id. at 2–3.
`On December 10, 2020, Patent Owner filed a Request for Continued
`Examination and made further amendments, including requiring that the
`“evaluat[ing] compatibility” between source systems include “one or more
`other source systems, either already placed on the specific target system, or
`being evaluated for placement onto the specific target system.” Ex. 1005, 2–
`3. Patent Owner did not identify support for the amendments in the
`application. Id. at 14. The Examiner then allowed the amended claims on
`January 11, 2021.
`
`II. DISCUSSION
`
`A. Claim Construction
`A claim “shall be construed using the same claim construction
`standard that would be used to construe the claim in a civil action under 35
`U.S.C. [§] 282(b).” 37 C.F.R. § 42.200(b) (2020).
`
`1. “Source System” and “Target System”
`Petitioner argues that the specification expressly defines a “source
`system” as “a system from which applications and/or data are to be moved,”
`and a “target system” as “a system to which [a source system’s] applications
`and/or data are to be moved.” Pet. 19 (citing Ex. 1001, 5:57–60) (alteration
`in original). In the section of the Petition arguing lack of written description,
`
`13
`
`
`
`PGR2021-00098
`Patent 10,951,459 B2
`
`Petitioner also argues that these definitions imply that “a system’s
`applications and data are distinct from the system itself.” Pet. 33.
`Patent Owner proposes that “the Board adopt the constructions of
`‘source system’ and ‘target system’” adopted in the District Court Litigation.
`PO Resp. 11. Patent Owner asserts that, in the District Court litigation, “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’).” Id. (citing Ex. 2004, 1). According to Patent Owner,
`in adopting these constructions, the district court “rejected the very same
`proposed constructions and arguments that Petitioner raises in this
`proceeding.” Id. (citing Ex. 2005, 9–12).
`Petitioner responds that Patent Owner seeks to expand the definition
`of “source system” in the specification “to include systems from which
`applications or data ‘have been moved to target systems,’” but “[n]o
`evidence supports this.” Pet. Reply 26. According to Petitioner, “[t]he
`specification refers only to source and target systems as part of analyses, and
`those analyses are exclusively ‘forward-looking.’” Id. Petitioner argues that
`Patent Owner’s arguments cite “only to transfers that have yet to happen,” or
`“to excerpts where the phrase ‘source system’ is missing entirely.” Id.
`(citing PO Resp. 12–13 (citing Ex. 1001, 6:35–41, 39:43–48)). In any event,
`Petitioner contends, “the Board need not decide what ‘source system’ and
`‘target system’ mean” because “[t]he ’936 application’s lack of support for
`‘already placed’ and ‘issuing instructions’ does not depend on the precise
`meaning of these terms.” Id.
`
`14
`
`
`
`PGR2021-00098
`Patent 10,951,459 B2
`
`
`Based on the full trial record, we agree with Petitioner that we need
`not provide an express construction for “source system” and “target system”
`in order to resolve the issues presented in this proceeding. See Nidec Motor
`Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed.
`Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999) (“[O]nly those terms need be construed that are in
`controversy, and only to the extent necessary to resolve the controversy.”).
`
`2. “Place,” “Placed,” “Placing,” and “Placement”
`The terms “place,” “placed,” “placing,” and/or “placement” appear in
`all of the independent claims (claims 1, 32, and 63). Patent Owner argues
`that, “[b]ased on the plain meaning of the claim terms and the context
`provided by the surrounding claim language and the ’459 patent’s
`specification, the ‘place’ and ‘placement’ terms would be understood by a
`[person of ordinary skill in the art] to mean putting or arranging, i.e., placing
`or placement of systems includes moving, transferring, stacking or otherwise
`arranging systems.” PO Resp. 16 (citing Ex. 2001 ¶¶ 85–87). Citing the
`Merriam-Webster Dictionary, Patent Owner argues that its construction “is
`consistent with commonly understood definitions of those terms—‘to put in
`or as if in a particular place,’ ‘to put in a particular state,’ or ‘to distribute in
`an orderly manner.’” Id. at 19 (citing Ex. 2007; Ex. 2008, 549; Ex. 2001
`¶ 89). Patent Owner also asserts that the court in the District Court
`Litigation agreed with this construction, relying on the district court’s
`statement that “the specification does not limit the scope of the ‘place’ terms
`to exclude all other actions aside from ‘moving,’ as it additionally includes
`references to, for example, ‘consolidating,’ ‘stacking,’ and ‘transferring.’”
`Id. at 16–17 (citing Ex. 2005, 13); see also PO Sur-reply 5, 15.
`
`15
`
`
`
`PGR2021-00098
`Patent 10,951,459 B2
`
`
`Additionally, Patent Owner argues that one of ordinary skill “would
`have understood the plain meaning of ‘place’ and ‘placement’ as used in
`[the] ’459 patent to be consistent with the full panoply of consolidation and
`transfer analyses disclosed in the ’459 patent.” PO Resp. 17. According to
`Patent Owner, “[t]he ’459 patent specification describes numerous examples
`of what the claim terms ‘place’ and ‘placement’ mean in the context of the
`patent, including ‘consolidating,’ ‘stacking,’ ‘moving,’ ‘forward
`consolidating,’ ‘transferring,’ ‘combining,’ ‘migrating,’ ‘arranging,’
`‘packing,’ ‘fitting,’ etc.” Id. at 20–21. Patent Owner argues that one of
`ordinary skill would have understood the mapping of sources onto targets
`“as a ‘placement’ (which may involve ‘consolidating,’ ‘stacking,’ ‘moving,’
`‘transferring,’ etc.)” Id. at 26 (citation omitted).
`Petitioner responds that Patent Owner “incorrectly assume[s] that
`mapping sources to targets when defining transfer sets (which comprise
`potential, not actual, transfers) qualifies as ‘placement.’” Pet. Reply 2.
`Petitioner asserts that “mapping” is not “placement” because “‘[m]apping’
`occurs when defining a transfer set” and “is done purely for analytical
`purposes, to provide candidates for inclusion—after evaluation—in the
`consolidation solution.” Id. According to Petitioner, “[t]he ’459 claims
`reinforce that ‘placement’ occurs after and separately from the analytical
`evaluation process” because they “require ‘determining placement of source
`computer systems on target computer systems’ which includes the ‘evaluate
`compatibility’ steps.” Id. at 3 (citing Ex. 1001, 40:2–4, 40:8–36). “When
`the evaluations are complete,” Petitioner contends, “the claimed system will
`have determined a placement, but not executed it.” Id. (citing Ex. 1023,
`28:13–18).
`
`16
`
`
`
`PGR2021-00098
`Patent 10,951,459 B2
`
`
`“Actual placement,” Petitioner contends, “occurs only through a
`separate claimed step for ‘issu[ing] instructions to place’ according to the
`‘determined placement.’” Id. (citing (Ex. 1001, 40:37–39). Thus, according
`to Petitioner, “placement occurs after evaluation and uses its results,” in
`contrast to “mapping of sources onto targets,” which “is part of the
`analytical evaluation process, and therefore cannot be ‘placement’ within the
`meaning of the ’459 patent’s claims.” Id.
`Petitioner further argues that the prosecution history of the ’459
`patent’s parent, the ’492 patent, “confirms that placement must be more than
`just part of an analysis, which is all that mapping is.” Pet. Reply 3–4.
`Petitioner asserts that, “[t]o avoid a rejection under 35 U.S.C. § 101,” Patent
`Owner amended its claims to “specify a practical application of the
`previously recited ‘output,’ namely: ‘placing the source systems onto the
`target systems in accordance with technical, business, and workload
`constraints determined in the compatibility analysis.’” Id. at 4 (citing
`Ex. 1024, 53–54, 47–49). According to Petitioner, because “the concept of
`‘placing’ was added specifically to give the ’492 patent’s claims a non-
`analytical component,” the term “placing” cannot “be merely analytical.”
`Id.
`
`Additionally, Petitioner argues that Patent Owner “presents a handful
`of quotations out of context to imply that placement occurs during the
`consolidation analysis,” but “the analysis only simulates placement.” Pet.
`Reply 4. For example, Petitioner asserts, “Patent Owner emphasizes the
`word ‘transferred’ when discussing the ’459 patent’s description of ‘multi-
`dimensional compatibility scores (multiple sources transferred to a single
`target),’” but “this reference to ‘transfer’ merely clarifies what a ‘multi-
`
`17
`
`
`
`PGR2021-00098
`Patent 10,951,459 B2
`
`dimensional compatibility score’ measures.” Id. at 4–5 (citing PO Resp. 21
`(quoting Ex. 1001, 13:36–38)). “Elsewhere,” according to Petitioner, “the
`patent explains that in a multi-dimensional compatibility analysis, ‘a transfer
`set can include multiple sources (N) to be transferred to the target,” which
`“clarifies that the sources are not transferred during the analysis,” but instead
`“are only considered for transfer as part of potential scenarios that the
`analysis evaluates and scores.” Id. at 5 (citing Ex. 1001, 30:36–39).
`Petitioner also argues that “Patent Owner’s alleged support for
`‘already placed’” in the ’936 application “confirms that ‘place’ cannot mean
`anything beyond ‘transfer,’ which requires movement.” Id. at 24–25 (citing
`Ex. 1009 ¶¶ 86 (describing “transfer” as “the movement of a single source
`entity onto a target”), 87–89, 95–97, 313–321, 342–347 (analyses revolve
`around “transfer sets”)). Finally, Petitioner argues that Patent Owner
`“overstates the district court’s construction,” because “[t]he district court
`merely clarified that ‘place’ could include different forms of transfer, whose
`nuances might not be captured by ‘movement’ alone,” but “did not construe
`‘place’ to include mapping.” Id. at 25 (citing Ex. 2005, 12–14).
`Patent Owner responds by characterizing the dispute between the
`parties as “whether ‘theoretical’ placing can be considered placing, such that
`a ‘theoretically’ placed source is an ‘already placed’ source.” PO Sur-reply
`2 n.1. Patent Owner presents an analogy in which a couple planning a
`wedding creates a seating plan by “plac[ing] guests (sources) at tables
`(targets), after evaluating the guests’ compatibilities with other guests and
`possible tables, using one or more rules (e.g., seat children together, the
`elderly at tables closer to the front of the room, quarrelsome relatives apart,
`etc.).” Id. at 4. Patent Owner explains that, “[b]ecause the wedding hasn’t
`
`18
`
`
`
`PGR2021-00098
`Patent 10,951,459 B2
`
`happened yet, these placements are purely theoretical.” Id. Nonetheless,
`according to Patent Owner, the plan “places” guests at tables, even though
`the guests are not “actually, physically placed at their assigned tables” until
`dinner time. Id. at 4–5.
`Patent Owner also argues that Petitioner’s reliance on the prosecution
`history of the ’492 patent “is improper and incorrect.” PO Sur-reply 10.
`Patent Owner contends that Petitioner’s prosecution history argument was
`not made in the Petition, and that the prosecution history was not submitted
`with the Petition. Id. Patent Owner also disagrees that the amendment of
`the claims during prosecution to add the step of “placing the source systems
`onto the target systems” “confirms that placement must be more than just
`part of an analysis” because it was added to provide a “practical application”
`to the claim. Id. To the contrary, Patent Owner argues that “[a]n invention
`that determines a consolidation solution by conducting compatibility
`evaluations is ‘practical’ even if the solution isn’t executed, much like a
`seating chart is ‘practical’ even if the wedding is cancelled.” Id. at 11.
`We agree with Petitioner that, based on the intrinsic evidence, the
`term “placing” requires more than a theoretical placing or planning to place
`as part of an analytical solution. Turning first to the claim language, we
`agree with Petitioner that the language of the independent claims is
`consistent with “placement” occurring after and separately from the
`analytical evaluation process. See Pet. Reply 3. For example, claim 1 is
`directed to a system for “determining placement of source computer systems
`on target systems,” the system configured to “determine a placement” by
`employing operations to “evaluate compatibility.” Ex. 1001, 40:2–4, 40:8–
`36. The second “evaluate compatibility” operation is “to determine if the
`
`19
`
`
`
`PGR2021-00098
`Patent 10,951,459 B2
`
`specific source system can be placed with those other source systems on the
`specific target system,” which suggests that what is being evaluated is
`whether the source system can be actually placed (e.g., moved or
`transferred) to the target system. Id. at 40:18–27 (emphasis added).
`Similarly, the third “evaluate compatibility” operation involves “evaluating
`the impact on resource utilization of the specific target system of placing the
`specific source system on the specific target system,” which suggests that
`what is being evaluated is the impact on resource utilization once the source
`system is actually moved or transferred to the target. Id. at 40:28–32
`(emphasis added). Additionally, the claim states that, based on the
`“evaluate” operations, the claimed system “determi
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
