Avago Technologies International Sales Pte. Limited

Patent Trials and Appeals Board

May 17, 2021

IPR2021-00098 (P.T.A.B. May. 17, 2021)

Trials@uspto.gov Paper 7
571-272-7822 Date: May 17, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

NETFLIX, INC.,
Petitioner,

v.

AVAGO TECHNOLOGIES INTERNATIONAL SALES PTE. LIMITED,
Patent Owner.

IPR2021-00098
Patent 8,365,183 B2

Before KRISTEN L. DROESCH, NATHAN A. ENGELS, and
MELISSA A. HAAPALA, Administrative Patent Judges.

DROESCH, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314

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I. INTRODUCTION
A. Background
Netflix, Inc. (“Petitioner”) filed a Petition requesting an inter partes
review of claims 1–20 (“challenged claims”) of U.S. Patent No. 8,365,183
B2 (Ex. 1001, “’183 Patent”). Paper 2 (“Pet.”). Petitioner filed a
Declaration of Dr. Prashant Shenoy, with its Petition. Ex. 1003. Avago
Technologies International Sales Pte. Limited (“Patent Owner”) filed a
Preliminary Response. Paper 6 (“Prelim. Resp.”).
We have authority to determine whether to institute review under
35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). An inter partes review may not be
instituted unless it is determined that “the information presented in the
petition filed under section 311 and any response filed under section 313
shows that there is a reasonable likelihood that the petitioner would prevail
with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.
§ 314(a) (2018).
For the reasons provided below, we determine, based on the record
before us, that there is not a reasonable likelihood Petitioner would prevail in
showing at least one of the challenged claims is unpatentable.
B. Related Matters
The parties indicate the ’183 Patent is the subject of litigation in
Broadcom Corp. v. Netflix, Inc., Case No. 3:20-cv-04677-JD (N.D. Cal.),
which was filed as Broadcom Corp. v. Netflix, Inc., Case No. 8:20-cv-
00529-JVS-ADS (C.D. Cal.) and later transferred to the U.S. District Court
for the Northern District of California. See Pet. 80; Paper 4, 1.
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C. The ’183 Patent (Ex. 1001)
The ’183 Patent relates to a system and method for dynamic resource
provisioning for job placement. See Ex. 1001, code (57), 1:8–9.
Figure 1 of the ’183 Patent is reproduced below.

Figure 1 depicts a system for dynamic resource provisioning for job
placement. See Ex. 1001, 2:23–25, 3:38–40. System 100 includes client
machine 102 operable to submit a job request to brokering engine 106
residing on server machine 108. See id. at 3:40–45, 4. The job request
includes a request for brokering engine 106 to find a most suitable computer
device available for processing job 104. See id. at 3:43–45. Brokering
engine 106 monitors active pool 110 of computer devices 112 and identifies
the best computer device available in active pool 110 for performing job 104
based on one or more job criteria 105 (e.g., particular hardware
requirements) and utilization criteria 107 needed to perform job 104. See id.
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at 3:45–51. If none of computer devices 112 are properly provisioned or if
all computer devices 112 are too busy to perform job 104, brokering
engine 106 may provision a new computer device 112 from inactive
pool 118 of computer devices 112 to perform job 104. See id. at 4:2–8. The
components of system 100 are coupled to each other through network 120
via links 116. See id. at 4:9–12.
Figure 2 of the ’183 Patent is reproduced below.

Figure 2 depicts a method for dynamic resource provisioning for job
placement. See Ex. 1001, 2:26–28, 11:25–27. At step 200, brokering
engine 106 receives a request from client machine 102 to find a best
computer device on which to run a job, where the request includes job
criteria 105 and utilization criteria 107. See id. at 11:25–31. At step 204,
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brokering engine 106 determines a list of suitable computer devices 112 for
performing job 104 by comparing the operational characteristics of each
computer device 112 in pool 110 against job criteria 105 and disqualifies
any computer devices 112 whose operational characteristics do not satisfy
job criteria 105. See id. at 11:31–37. At step 206, brokering engine 106
compares utilization metrics 114 gathered from each computer device 112
on the list of suitable computer devices 112 against utilization criteria 107 to
identify computer devices 112 having a suitable level of utilization for
performing job 104. See id. at 11:37–42. At step 208, brokering engine 106
returns a list of computer devices 112 having suitable operational
characteristics and a suitable level of utilization for performing job 104 to
client machine 102. See id. at 11:42–45. At step 210, client machine 102
forwards job 104 to one computer device on the list of suitable computer
devices 112 for execution. See id. at 11:45–48.
D. Illustrative Claim
Claims 1, 11, and 16 are independent, claims 2–10 depend from
claim 1, claims 12–15 depend from claim 11, and claims 17–20 depend from
claim 16. Claim 1 is illustrative and reproduced below:
1. A method for dynamic resource provisioning for job
placement, comprising:
receiving a request to perform a job on an unspecified
computer device;
determining one or more job criteria for performing the job,
the one or more job criteria defining one or more
operational characteristics needed for a computer device
to perform the job;
determining one or more utilization criteria for performing
the job;
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providing a list of available computer devices, the list
comprising a plurality of computer devices currently
provisioned to perform computer operations;
from the list of available computer devices, determining a
list of suitable computer devices for performing the job
by comparing operational characteristics for each
available computer device with the job criteria, the list of
suitable computer devices comprising one or more
computer devices having operational characteristics that
satisfy the job criteria;
using the utilization criteria to determine whether one or
more underutilized computer devices exist on the list of
suitable computer devices, the one or more underutilized
computer devices having a suitable level of utilization for
performing the job; and
if the one or more underutilized computer devices exist,
forwarding the job to one of the one or more
underutilized computer devices.
Ex. 1001, 15:43–16:3.
E. Asserted Challenges to Patentability and Asserted Prior Art
Petitioner asserts that claims 1–20 are unpatentable on the following
grounds:
Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
1, 4, 5, 10–13, 16–18 1031 Tate2
8, 15, 20 103 Tate, Mishra3
2, 3 103 Tate, Fellenstein4

1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(2011), amended 35 U.S.C. § 103 effective March 16, 2013. Because the
’183 Patent has an effective filing date prior to the effective date of the
applicable AIA amendment, we refer to the pre-AIA version of § 103.
2 Ex. 1004, US2006/0218127 A1, published Sept. 28, 2006 (“Tate”).
3 Ex. 1005, US2008/0307036 A1, published Dec. 11, 2008 (“Mishra”).
4 Ex. 1006, US2006/0005181 A1, published Jan. 5, 2006 (“Fellenstein”).
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Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
6, 7, 9, 14, 19 103 Tate, Raja5

II. ANALYSIS
A. Claim Construction
The Board applies the same claim construction standard as applied in
federal courts in a civil action under 35 U.S.C. § 282(b), which is generally
referred to as the Phillips standard. See 37 C.F.R. § 42.100(b) (2019);
Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Under the
Phillips standard, words of a claim are generally given their ordinary and
customary meaning. Phillips, 415 F.3d at 1312.
Petitioner provides explicit constructions for “job criteria,”
“utilization criteria,” “determining one or more job criteria,” and
“determining one or more utilization criteria.” See Pet. 21–24 (citations
omitted). Patent Owner asserts that these claim terms are defined in the
Specification and have their plain and customary meanings, which requires
no construction. See Prelim. Resp. 14. Patent Owner contends that
Petitioner’s proposed constructions are immaterial to whether institution
should be denied. See id. at 15. As demonstrated in the analysis below, for
the purpose of institution, we need not expressly construe “job criteria,”
“utilization criteria,” “determining one or more job criteria,” and
“determining one or more utilization criteria.” See Nidec Motor Corp. v.
Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).

5 Ex. 1007, US2008/0225710 A1, published Sept. 18, 2008 (“Raja”).
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One or More Underutilized Computer Devices
Claim 1 recites “one or more underutilized computer devices” in the
context of “using the utilization criteria to determine whether one or more
underutilized computer devices exist on the list of suitable computer devices,
the one or more underutilized computer devices having a suitable level of
utilization for performing the job.” Ex. 1001, 15:63–67. Petitioner refers to
the aforementioned limitation as limitation [1g]. See Pet. 42–47.
Independent claims 11 and 16 recite similar limitations. Compare Ex. 1001,
16:58–17:20 (claim 11) and Ex. 1001, 17:53–18:24 (claim 16), with
Ex. 1001, 15:43–16:3 (claim 1).
Petitioner contends that, based on limitation [1g],
“underutilized computer devices” are simply those computer
devices from the list identified in [1f] that ‘hav[e] a suitable
level of utilization for performing the job. In other words,
“underutilized computer devices” are those computer devices
that meet the utilization criteria, such as those using less than
10% of their CPU, RAM, or bandwidth.
Pet. 43 (citing Ex. 1003 ¶ 212) (emphasis added); see id. at 45 (citing
Ex. 1003 ¶ 222).
According to Patent Owner, “[a]n underutilized computer device
references the utilization level of the computer device as compared to other
available computer devices, generally for load balancing purposes, which is
one of the focuses of the ’183 Patent.” Prelim. Resp. 32 (quoting Ex. 1001,
2:53–57); see id. at 33 (quoting Ex. 1001, 2:58–3:11, 3:59–61). Patent
Owner asserts that Petitioner’s attempt to redefine “‘underutilized computer
devices’ to mean ‘simply those computer devices from the list identified in
[1f] that have a suitable level of utilization for performing the job’” “is a
plain misreading of the claim language to replace underutilized with not
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overutilized.” Id. at 35–36. Patent Owner contends, “limitation [1g]
requires a computer device to (1) satisfy underutilization criteria and (2)
have enough resources to perform the job.” Id. at 36. Patent Owner asserts
that these are two separate issues because, for example, a computer device
might have less than 10% utilization, but the job requires 95% of the
computer’s resources, and still lack sufficient resources to perform the
requested job. See id.
We agree with Patent Owner that Petitioner’s proposed claim
construction incorrectly redefines “one or more underutilized computer
devices.” Petitioner’s assertions overlook entirely the meaning of
“underutilized,” and, in particular, the meaning of the prefix “under” in the
term “underutilized.”
We observe that the ’183 Patent discloses:
In some cases it may be appropriate to look at the individual
computer device as opposed to a group of computer devices
because an individual computer device may be critical to a
business function and may experience conditions or utilization
which indicate that it is over-utilized while the remaining
computer devices in the group are not being utilized or are
being under utilized.
Ex. 1001, 3:5–11. The ’183 Patent further discloses:
[f]or example, if a particular action or job requires a system
with a minimum of 2 Giga Bytes [] of RAM and a 2.4 Giga
hertz [] CPU and requires these two metrics to be less than
10% utilized, the computer system may provision a new
computer device if none are currently available that fit the given
criteria.
Ex. 1001, 3:22–27 (emphasis added). The ’183 Patent further discloses:
utilization criteria 107 may specify a maximum acceptable level
of utilization that represents a threshold level of resource usage,
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above which brokering engine 106 will determine that a
computer device 112 is too busy to perform job 104. However,
if the resource usage of a computer device 112 falls below the
maximum acceptable utilization level, brokering engine 106
may determine that that computer device 112 has a suitable
level of utilization for performing job 104.
Ex. 1001, 8:67–9:8 (emphasis added). In view of the ’183 Patent
Specification disclosure related to underutilized computer devices, we
determine the ordinary and customary meaning of “one or more
underutilized computer devices” is “one or more computer devices that have
a utilization level below, or less than, a specified utilization level.” Notably,
the ordinary and customary meaning of “one or more underutilized computer
devices” is consistent with Petitioner’s proposed construction for “utilization
criteria”––“criteria specifying a level of utilization of a computer device
needed for it to execute a requested job including, but not limited to, a
percentage of processing power, memory, or bandwidth being utilized, or
any other measurable parameter identified as a utilization metric in Table 1.”
Pet. 23 (emphasis added).
B. Principles of Law
A claim is unpatentable under 35 U.S.C. § 103 if the differences
between the claimed subject matter and the prior art are such that the subject
matter, as a whole, would have been obvious at the time the invention was
made to a person having ordinary skill in the art to which the subject matter
pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The
question of obviousness is resolved on the basis of underlying factual
determinations, including: (1) the scope and content of the prior art; (2) any
differences between the claimed subject matter and the prior art; (3) the level
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of skill in the art; and (4) if in evidence, so-called secondary considerations.
Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).6
C. Level of Ordinary Skill in the Art
Petitioner asserts that a person of ordinary skill in the art
of the ’183 Patent would have had been a person with a
bachelor’s degree in computer science, or a similar field, with at
least two years of experience in the design of distributed
computing systems that perform job scheduling, or a person
with a master’s degree in computer science, or a similar field
with a specialization in such systems. A person with less
education but more relevant practical experience may also meet
this standard.
Pet. 20–21 (citing Ex. 1003 ¶¶ 75–77). Patent Owner does not dispute
Petitioner’s assertions addressing the skill level of a person of ordinary skill
in the art. See generally Prelim. Resp. For the purpose of institution, we
adopt Petitioner’s definition of a person of ordinary skill in the art because it
appears to be consistent with the level of skill reflected by the ’183 Patent
Specification and the asserted prior art.
D. Challenges to Patentability
1. Challenge to Claims 1, 4, 5, 10–13, and 16–18 over Tate
a. Overview of Tate (Ex. 1003)
Tate is directed to a method, system, and program for selecting a
resource manager to satisfy a service request. See Ex. 1004, code (57), ¶ 2.

6 The parties do not present evidence of secondary considerations.
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Figure 1 of Tate is reproduced below.

Figure 1 depicts a network environment providing access to services. See
Ex. 1004 ¶¶ 6, 13. The network environment includes network 2 connecting
to resource managers 4a, 4b, 4c, coordinator 6, and subscribers 8a, 8b. See
id. ¶ 13. Resource managers 4a, 4b, 4c publish or provide access to one or
more services 10a, 10b, 10c, such as data services or computational services.
See id. Subscribers 8a, 8b request a service and coordinator 6 tries to link
the service request with resource managers 4a, 4b, 4c publishing the
requested service. See id. Coordinator 6 includes catalog 12 identifying
services offered by resource managers 6a, 6b, 6c, resource manager
information 14 including performance information and technical properties
on resource managers 6a, 6b, 6c registered in catalog, and inference
engine 16 that processes rules 18 to select one resource manager 6a, 6b, 6c
to use to provide the service in a manner that complies with rules 18. See id.
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Figure 5a of Tate is reproduced below.

Figure 5a depicts operations performed by coordinator 6 to process a service
request from subscriber 8a, 8b. See Ex. 1001 ¶¶ 10, 19. At block 100,
coordinator 6 receives a request for service from subscriber 8a, 8b. See id.
¶ 19. At block 102, coordinator 6 processes catalog 12 to identify resource
managers 4a, 4b, 4c publishing the requested service. See id. At block 104,
coordinator 6 or inference engine 16 further processes resource manager
information 14 to determine at least one identified resource
manager 4a, 4b, 4c publishing the requested service in a manner that
satisfies at least one rule applicable to the service request. See id. One rule
may indicate a technical parameter such as a technical property that must be
supported or available at resource manager 4a, 4b, 4c, for example, a
minimum amount of available storage or computational resources at
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resource manager 4a, 4b, 4c, minimum connection bandwidth, supported
protocols and required features, etc. See id. at ¶ 20. The technical parameter
specifies a technical feature for the resource manager 4a, 4b, 4c to be
available to provide the requested service. See id. At block 106, if there is
at least one rule applicable to the service request having a technical
parameter, then, at block 108, a determination is made whether at least one
resource manager 4a, 4b, 4c publishing the requested service satisfies the
technical parameter. See id. If the technical parameter is not satisfied, an
error message is returned in block 110 indicating the service in unavailable.
See id. If the technical parameter is satisfied, at block 112, a check is made
to determine whether one rule applicable to the service request includes a
quality of service parameter, which may be part of a service level agreement.
See id. ¶ 21.
A quality of service parameter specifies a requirement that the
resource manager 4a, 4b, 4c must satisfy to provide a certain
level of performance to the subscriber, such as a required
connection bandwidth, a maximum number of currently
connected users, a minimum amount of available computational
resources, a specified hardware redundancy, performance
requirements of the resource manager hardware, etc. The
quality of service parameter may specify both a minimum
amount of performance or service as well as a maximum.
Ex. 1004 ¶ 21. If there is one applicable rule having a quality of service
parameter at block 112, coordinator 6 determines, at block 114, whether at
least one resource manager publishing the requested service satisfies the
quality of service parameter. See id. If a quality of service parameter is not
satisfied, a message is returned in block 110 indicating the service is
unavailable. See id.
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Figure 5b of Tate is reproduced below.

Figure 5b depicts additional operations performed by coordinator 6 to
process a service request from subscribers 8a, 8b. See Ex. 1001 ¶¶ 10, 19.
If a quality of service parameter is satisfied, at block 116 and block 120 in
Fig. 5b, coordinator 6 checks to see if there are any rules applicable to the
requested service having business parameters. See id. ¶ 22. If it is
determined (at blocks 116 and 120) that there is a rule having a business
parameter, and if there is a determination (at block 118) that at least one
resource manager 4a, 4b, 4c publishing the requested service does not satisfy
the business parameter and/or if there is a determination (at block 122) that
at least one requesting subscriber 8a, 8b does not satisfy the specified
parameter, a message is returned (at block 110) indicating the service in
unavailable. See id. If all the applicable rules are satisfied by at least one
resource manager 4a, 4b, 4c and subscriber 8a, 8b, at block 124,
coordinator 6 selects one determined resource manager 4a, 4b, 4c satisfying
all the applicable rules to provide the requested service to subscribers 8a, 8b,
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or uses a selection technique if there are multiple resource
managers 4a, 4b, 4c that satisfy the rules. See id. ¶ 23.
b. Analysis
Petitioner asserts that Tate renders obvious the limitation “using the
utilization criteria to determine whether one or more underutilized computer
devices exist on the list of suitable computer devices, the one or more
underutilized devices having a suitable level of utilization for performing the
job,” based on Tate’s teaching of using a quality of service (QOS) parameter
and coordinator 6 determining whether at least one resource manager
satisfies the QOS parameters. See Pet. 42 (citing Ex. 1004 ¶ 21, Fig. 5A,
block 114; Ex. 1003 ¶¶ 209, 210, 211, 215, 224); see also id. at 43–44
(arguing Tate further teaches this limitation in the highlighted portion of
Fig. 5A; reproducing Ex. 1004, Fig. 5A (with block 114 highlighted); citing
Ex. 1003 ¶ 213). Petitioner contends that Tate teaches that after resources
satisfying the technical parameter are identified in block 108 of Figure 5A,
at block 114, coordinator 6 determines whether at least one resource
manager publishing the requested service satisfies the quality of service
parameter. See Pet. 43 (quoting Ex. 1004 ¶ 21; citing Ex. 1003 ¶ 211).
According to Petitioner,
Tate’s identification of a resource manager that satisfies
the QOS parameter is analogous to determining “one or more
underutilized computer devices” in [1g] because [1g] further
specifies that the “underutilized computer devices” are simply
those computer devices from the list identified in [1f] that
“hav[e] a suitable level of utilization for performing the job.” In
other words, “underutilized computer devices” are those
computer devices that meet the utilization criteria, such as those
using less than 10% of their CPU, RAM, or bandwidth. This
determination whether the computer device meets the
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utilization criteria is analogous to Tate’s application of a QOS
rule using Tate’s exemplary QOS parameters (e.g., a required
bandwidth, a minimum amount of available computational
resources, or a performance requirement.).
Pet. 43 (citing Ex. 1003 ¶ 212).
Petitioner additionally asserts that Tate teaches its system stores
information regarding properties of its resource managers, including both
operational and level of utilization characteristics, and applies its QOS rules
by comparing the requirements of an identified QOS rule to information
about the previously identified resource managers to identify those resource
managers that also satisfy the QOS rule in order to further its determination
of whether there is at least one resource manager that satisfies all the
applicable rules. See Pet. 44–45 (citing Ex. 1004 ¶¶ 15, 21, 23; Ex. 1003
¶¶ 220, 221). According to Petitioner, a person of ordinary skill in the art
would have understood that this comparison of QOS rules with
information [] about the list of resource managers publishing
the requested service . . . and complying with the technical rule
. . . would result in a reduced list of resource managers that:
(i) publish the requested service; (ii) satisfy the technical rule;
and (iii) satisfy the QOS rule. This reduced list of resource
managers is analogous to the ‘underutilized computer devices’
of [the claim limitation] because they ‘have a suitable level of
utilization for performing the job.
Pet. 45 (citing Ex. 1003 ¶ 222). Petitioner further contends that, stated a
different way, Tate’s identified servers would have a level of utilization that
meets the applicable QOS rules, for example, they would have a particular
connection bandwidth, minimum amount of available computational
resources, performance requirements of the resource manager hardware, etc.
See id. (citing Ex. 1004 ¶ 21). Petitioner asserts that because the identified
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servers meet the specified QOS rules for the job, they would have a suitable
level of utilization for performing the job. See id. (citing Ex. 1003 ¶ 223).
Patent Owner argues that Tate does not teach any determination as to
whether one or more computer devices are underutilized. See Prelim.
Resp. 29 (citing Ex. 1001, 15:63–65 (claim 1), 17:13–15 (claim 11),
18:17–19 (claim 16)). Patent Owner contends that Petitioner relies on no
disclosure of Tate, and only relies on testimony of Dr. Shenoy, to support its
assertion that identifying a resource manager that satisfies the QOS
parameters is analogous to determining one or more underutilized computer
devices. See id. at 30. Patent Owner asserts that Dr. Shenoy’s testimony
does not provide a citation of prior art nor any explanation for the
unsupported assertion. See id. at 30–31 (quoting Kinetic Techs., Inc. v.
Skyworks Sol’ns, Inc., IPR2014-00529, Paper 8 at 15 (PTAB Sept. 23,
2014); Wowza Media Sys., LLC v. Adobe Sys., Inc., IPR2013-00054,
Paper 16 at 4 (PTAB July 13, 2013); citing Ex. 1003 ¶¶ 89, 90). Patent
Owner further contends that neither Petitioner nor its expert explains how
requiring a resource manager to comply with QOS parameters would equate
to a determination that a computer device is underutilized. See id. at 31.
Patent Owner further contends that Tate teaches the QOS parameters
ensure that the service provided to a client meets a particular quality of
service and that a computer device has sufficient resources that it does not
become over utilized by providing the requested service. See Prelim.
Resp. 31 (citing Ex. 1004 ¶¶ 21–22). Patent Owner contends that Tate’s
QOS parameters are designed only to prevent the overutilization of
resources, for example, maximum number of currently connected users, and
minimum amount of available computation resources, which, according to
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Patent Owner, do not correlate to underutilization of a computer device. See
id. at 31–32 (quoting Ex. 1004 ¶ 21).
We agree with Patent Owner’s arguments. Petitioner’s contentions
and supporting testimony do not establish sufficiently, for the purpose of
institution, that Tate’s disclosure of determining whether a resource manager
satisfies the QOS parameters or QOS rules teaches “using the utilization
criteria to determine whether one or more underutilized computer devices
exist on the list of suitable computer devices, the one or more underutilized
devices having a suitable level of utilization for performing the job.” As
explained above, the ordinary and customary meaning of “one or more
underutilized computer devices” is “one or more computer devices that have
a utilization level below, or less than, a specified utilization level.” Claim 1
requires both a determination that “one or more underutilized computer
devices exist on the list of suitable computer devices” and that the “one or
more underutilized computer devices hav[e] a suitable level of utilization for
performing the job.” Petitioner’s assertions that “underutilized computer
devices” are simply those computer devices . . . that have a suitable level of
utilization for performing the job” reads out the claim requirement to
determine that the computer device is “underutilized.” See Pet. 43; see also
id. at 45 (Petitioner’s assertions that the identified servers that meet specified
QOS rules for the job would have a suitable level of utilization for
performing the job). Petitioner does not explain sufficiently how Tate’s
disclosures of determining whether at least one resource manager satisfies
the QOS parameters or QOS rules teaches any determination of one or more
resource managers is “underutilized” (i.e., has a utilization level below, or
less than, a specified utilization level).
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Based on the record before us, Petitioner has not set forth sufficient
argument and supporting evidence to demonstrate that Tate teaches or
suggests “using the utilization criteria to determine whether one or more
underutilized computer devices exist on the list of suitable computer devices,
the one or more underutilized devices having a suitable level of utilization
for performing the job,” as recited in claim 1, and consistent with the
ordinary and customary meaning for “one or more underutilized computer
devices.” Independent claims 11 and 16 each recite limitations substantially
similar to the above addressed limitations of claim 1. Compare Ex. 1001,
15:63–67 (claim 1), with Ex. 1001, 17:13–17 (claim 11) and Ex. 1001,
18:17–21 (claim 16). For the same reasons as those addressing claim 1,
Petitioner has not set forth sufficient argument and supporting evidence to
demonstrate that Tate teaches or suggests the limitations of claims 11
and 16. Due to the dependency of claims 4, 5, and 10 from claim 1, the
dependency of claims 12 and 13 from claim 11, and the dependency of
claims 17 and 18 from claim 16 (see Ex. 1001, 16:11–29, 16:56–57, 17:21–
38, 18:25–42), and for the same reasons as those addressing claim 1,
Petitioner has not set forth sufficient argument and supporting evidence to
demonstrate that Tate teaches or suggests all of the limitations of claims 4, 5,
10, 12, 13, 17, and 18.
Accordingly, Petitioner has not established a reasonable likelihood
that it would prevail in showing that claims 1, 4, 5, 10–13, and 16–18 are
unpatentable over Tate.
2. Challenge to Claims 8, 15, and 20 over Tate and Mishra
Claim 8 depends from claim 1, claim 15 depends from claim 11, and
claim 20 depends from claim 16. See Ex. 1001, 16:39–45, 17:43–52,
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18:46–55. As applied by Petitioner, the teachings of Mishra do not remedy
the deficiencies of Tate discussed in the preceding section addressing
claims 1, 11, and 16. See Pet. 63–68. Therefore, for the same reasons as
those addressing claims 1, 11, and 16 in the preceding section, Petitioner has
not established that there is a reasonable likelihood it would prevail in
showing claims 8, 15, and 20 are unpatentable over Tate and Mishra.
3. Challenge to Claims 2 and 3 over Tate and Fellenstein
Claims 2 and 3 depend from claim 1. See Ex. 1001, 16:4–10. As
applied by Petitioner, the teachings of Fellenstein do not remedy the
deficiencies of Tate discussed in the preceding section addressing
claims 1, 11, and 16. See Pet. 68–73. Therefore, for the same reasons as
those addressing claims 1, 11, and 16, Petitioner has not established that
there is a reasonable likelihood it would prevail in showing claims 2 and 3
are unpatentable over Tate and Fellenstein.
4. Challenge to Claims 6, 7, 9, 14, and 19 over Tate and Raja
Claims 6, 7, and 9 depend from claim 1, claim 14 depends from
claim 11, and claim 19 depends from claim 16. See Ex. 1001, 16:30–38,
16:49–55, 17:39–42, 18:43–45. As applied by Petitioner, the teachings of
Raja do not remedy the deficiencies of Tate discussed in the preceding
section addressing claims 1, 11, and 16. See Pet. 73–79. Therefore, for the
same reasons as those addressing claims 1, 11, and 16, Petitioner has not
established that there is a reasonable likelihood it would prevail in showing
claims 6, 7, 9, 14, and 19 are unpatentable over Tate and Raja.
IPR2021-00098
Patent 8,365,183 B2
22

E. Discretion under 35 U.S.C. § 325(d)
Patent Owner argues that the Board should exercise discretion to deny
the Petition under 35 U.S.C. § 325(d). See Prelim. Resp. 45–47. Because
we deny institution on the merits of the proposed patentability challenges to
claims 1–20, we need not address arguments regarding the exercise of
discretion under 35 U.S.C. § 325(d).
F. Patent Owner’s Argument that Petitioner Did Not Provide
Governing Law, Rules, and Precedent
Patent Owner contends that the Petition should be denied because it
does not identify applicable legal standards as required by 37 C.F.R.
§ 42.22(a). See Prelim. Resp. 19–20 (quoting 37 C.F.R. § 42.22(a)).
Because we deny institution on the merits of the proposed patentability
challenges to claims 1–20, we need not address these arguments. In any
event, we find the Petition sufficiently explains the basis for Petitioner’s
challenges to the claims of the ’183 Patent with citations to 35 U.S.C. § 103.
See Pet. 12.
III. CONCLUSION
For the foregoing reasons, we determine there is not a reasonable
likelihood that Petitioner would prevail in showing at least one of the
challenged claims of the ’183 Patent is unpatentable.
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that, pursuant to 35 U.S.C. § 314(a), the Petition is
denied, and no inter partes review is instituted.

IPR2021-00098
Patent 8,365,183 B2
23

PETITIONER:
Harper Batts
Chris Ponder
Jeffrey Liang
hbatts@sheppardmullin.com
cponder@sheppardmullin.com
jliang@sheppardmullin.com

PATENT OWNER:

Daniel Young
Chad King
dyoung@adseroip.com
chad@adseroip.com