Veeam Software Corporationv.Symantec Corporation

Patent Trial and Appeal Board

Mar 20, 2015

11180412 (P.T.A.B. Mar. 20, 2015)

Trials@uspto.gov Paper 45
Tel: 571-272-7822 Entered: March 20, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
VEEAM SOFTWARE CORPORATION,
Petitioner,
v.
SYMANTEC CORPORATION,
Patent Owner.
_______________

Case IPR2014-00088
Patent 7,480,822
_______________

Before THOMAS L. GIANNETTI, TRENTON A. WARD, and
JEREMY M. PLENZLER, Administrative Patent Judges.

PLENZLER, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. INTRODUCTION
A. Background
Veeam Software Corporation (“Petitioner”) filed a Petition to institute
an inter partes review of claims 1, 2, 6, 7, and 12–15 of U.S. Patent No.
7,480,822 (Ex. 1001, “the ’822 patent”). Paper 1 (“Pet.”). The Petition was
accompanied by an expert declaration from Prashant Shenoy, Ph.D.
Ex. 1008 (“Shenoy Declaration”). Symantec Corporation (“Patent Owner”)
filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). We instituted trial
on the following grounds: (1) obviousness of claims 1, 2, 6, 7, and 12–15 in
view of VS Guide
1
and VSMT
2
; and (2) obviousness of claims 1, 2, 6, 7, and
12–15 in view of P2V Manual
3
and ESX Guide
4
. Paper 7 (“Dec. on Inst.”).
Trial was not instituted for the additional challenges to claims 1, 2, 6, 7, and
12–15 as (1) obvious over the combination of Rob’s Guide
5
and ESX Guide
and (2) as obvious over the combination of Le
6
and ESX Guide. Dec. on
Inst. 30.
During trial, Patent Owner filed a Patent Owner Response (Paper 16,
“PO Resp.”), which was accompanied by an expert declaration from

1
MICROSOFT, VIRTUAL SERVER 2005 ADMINISTRATOR’S GUIDE (2004) (Ex.
1002, “VS Guide”).
2
MICROSOFT, MICROSOFT VIRTUAL SERVER 2005: SERVER CONSOLIDATION
AND MIGRATION WITH THE MICROSOFT VIRTUAL SERVER 2005 MIGRATION
TOOLKIT (2004) (Ex. 1003, “VSMT”).
3
VMWARE, INC., VMWARE P2V ASSISTANT USER’S MANUAL (2004) (Ex.
1004) (“P2V Manual”).
4
VMWARE, INC., ESX SERVER 2.1 ADMINISTRATION GUIDE (2004) (Ex.
1005, “ESX Guide”).
5
ROB BASTIAANSEN, ROB’S GUIDE TO USING VMWARE (2004) (Ex. 1006,
“Rob’s Guide”).
6
U.S. Patent No. 8,209,680 (issued June 26, 2012) (Ex. 1007, “Le”).
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Matthew Green, Ph. D (Ex. 2003, “Green Declaration”). Patent Owner
additionally filed a Motion to Amend (Paper 18, “Mot. to Amend”), which
was accompanied by a supplemental declaration from Dr. Green (Ex. 2010,
“Supplemental Green Declaration”). Petitioner filed a Reply to the Patent
Owner Response (Paper 23, “Pet. Reply”) and a Response to the Motion to
Amend (Paper 22, “Pet. MTA Resp.”), accompanied by a supplemental
declaration from Dr. Shenoy (Ex. 1010, “Supplemental Shenoy
Declaration”). Patent Owner filed a Reply to Petitioner’s MTA Response.
Paper 25 (“PO Reply to MTA Resp.”). Upon authorization from the Board,
Petitioner and Patent Owner each filed supplemental briefing on 35 U.S.C.
§ 103(c) relative to alleged common ownership of the ’822 patent and U.S.
Patent No. 7,093,086 (Ex. 1012, “the ’086 patent”), asserted by Petitioner in
response to Patent Owner’s Motion to Amend. Papers 32, 33. Petitioner
and Patent Owner each filed a Motion to Exclude Evidence. Papers 31, 35.
An oral hearing was held on December 18, 2014. A transcript of the hearing
has been entered into the record. Paper 44 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6(c). This final written
decision is issued pursuant to 35 U.S.C. § 318(a).
We determine that Petitioner has shown by a preponderance of the
evidence that claims 1, 2, 6, 7, and 12–15 of the ʼ822 patent are
unpatentable. We further determine that Patent Owner’s Motion to Amend
is denied.
B. Related Proceedings
The ’822 patent is the subject of the following co-pending federal
district court case: Symantec Corp. v. Veeam Software Corp., No. 3:12-cv-
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5443-SI (N.D. Cal.) (consolidated with No. 3:12-cv-00700-SI (N.D. Cal.)).
Pet. 1.
On July 29, 2014, we issued final decisions in four inter partes review
proceedings based on Petitioner’s challenges to the patentability of certain
claims of Patent Owner’s U.S. Patent Nos. 6,931,558 (IPR2013-00141,
IPR2013-00142), 7,191,299 (IPR2013-00143), and 7,093,086 (IPR2013-
00150). Additionally, we instituted inter partes review on April 25, 2014
based on Petitioner’s challenges to the patentability of certain claims of
Patent Owner’s U.S. Patent Nos. 7,831,861 (IPR2014-00089), 7,024,527
(IPR2014-00090), and 8,117,168 (IPR2014-00091).
C. The ’822 Patent
The ’822 patent is titled “Recovery and Operation of Captured
Running States from Multiple Computing Systems on a Single Computing
System” and generally relates to a method and system for restoring access to
previous running states of a plurality of computing systems onto a single
computing system. Ex. 1001, Abstr. The ’822 patent explains that the
running states of multiple primary computing systems are recovered to a
single recovery computing system that provides the functionality offered by
all of the primary computing systems by operating upon the restored running
states. Id. at 4:31–41.
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Figure 3 of the ’822 patent is reproduced below.

Figure 3 is an illustration of primary computing systems 310, 320, 330 and
recovery computing system 350. Running states 311, 321, 331 from primary
computing systems 310, 320, 330 are restored by capturing running states
311, 321, 331 via capture channel 351 and providing captured running states
312, 322, 332 to recovery computing system 350. Id. at 5:1–5. Capture
channel 351 may include communications media or storage media. Id. at
5:5–10. Common virtualization component 361 interfaces with captured
running states 312, 322, 332 on recovery computing system 350 via device
drivers 315, 325, 335 included in each captured running state 312, 322, 332.
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Id. at 5:11–30. The ’822 patent identifies VMware® as an example of
common virtualization component 361.
Each running state 311, 321, 331 includes application data, the
executable instructions for application programs, the executable instructions
for the operating system, and configuration information for the application
programs and the operating system. Id. at 4:56-60. Therefore, in addition to
device drivers 315, 325, 335, captured running states include captured
applications and data 313, 323, 333 and captured operating systems 314,
324, 334. Id. at 5:60–6:3. Virtualization component 361 interfaces with
hardware 363 of recovery computing system 350 via recovery computing
system’s operating system 362, allowing a variety of different applications
and operating systems to run on hardware 363. Id. at 6:17–20.
D. Illustrative Claim
Of challenged claims 1, 2, 6, 7, and 12–15, claims 1 and 15 are
independent. Claims 2, 6, 7, and 12–14 depend from claim 1. Claim 1
illustrates the claimed subject matter, and is reproduced below:
1. A method for restoring access to running states
of a plurality of primary computing systems onto a
single computing system, the method comprising
the following:
an act of accessing a captured running state of each
of the primary computing systems on the single
computing system, wherein the captured
running states each include, or are altered to
include, at least one device driver that is
configured to interface with a common
virtualization component that runs on the single
computing system, wherein the common
virtualization component is configured to at
least indirectly interface with hardware on the
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single computing system that operates at least
part of the hardware using a different interface
than the at least one device driver is configured
to interface with;
an act of identifying a boot order for each of the
primary computing systems; and
an act of booting the captured running states for
each of the primary computing systems in the
identified boot order on the single computing
system.
Ex. 1001, 13:3–22.

II. ANALYSIS
For the challenged claims, Petitioner must prove unpatentability by a
preponderance of the evidence. 35 U.S.C. § 316(e). We begin with a claim
construction analysis, and then follow with specific analysis of the prior art.
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are given
their broadest reasonable interpretation in light of the specification in which
they appear and the understanding of others skilled in the relevant art.
37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC., No. 2014-
1301, 2015 WL 448667, at *7–8 (Fed. Cir. Feb. 4, 2015) (“Congress
implicitly adopted the broadest reasonable interpretation standard in
enacting the AIA,” and “the standard was properly adopted by PTO
regulation.”). Applying that standard, we interpret the claim terms of the
’822 patent according to their ordinary and customary meaning in the
context of the patent’s written description. See In re Translogic Tech., Inc.,
504 F.3d 1249, 1257 (Fed. Cir. 2007).
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1. “running state/captured running state”
In our Decision on Institution, we construed “running state” as
“application data, the executable instructions for application programs, the
executable instructions for the operating system, and configuration
information for the application programs and the operating system existing
during computer operation (i.e., when the computer is powered on).” Dec.
on Inst. 6–8. We construed “captured running state” as “a copy of the
‘running state’ during computer operation.” Id.
Patent Owner “agree[s] in principle” with our constructions of
“running state” and “captured running state,” but proposes clarification
regarding the parenthetical “(i.e., while the computer is powered on).” PO
Resp. 18. Specifically, Patent Owner notes that “to the extent that this
parenthetical was simply intended to indicate that, ‘running’ does not
necessarily require that an active process is currently being executed, Patent
Owner does not object to this distinction.” Id. This was our intent. We do
not construe “running” to require simply that “the computer has power (e.g.,
is connected to the power supply and/or the power button has been
pressed),” which Patent Owner indicates as a potential disagreement. Id. at
18–19. Patent Owner additionally indicates that it “understands the Board’s
constructions to mean that the ‘running state’ is a state that exists while the
computer is turned on and operating normally (e.g., ready for use) and,
likewise, that a ‘captured running state’ requires that the running state be
captured during such normal operation of the computer.” Id. at 18.
(emphasis added). Patent Owner contends that, therefore, “[t]he broadest
reasonable construction for [running state] is the state of the computer
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during normal operation (i.e., when the computer is ready for use and
capable of providing its intended functionality).” Id. at 19.
Petitioner contends that Patent Owner’s proposed construction
including normal operation and intended functionality of the computer is an
overly narrow construction. We agree. Although Patent Owner alleges that
its proposed construction “is consistent with the specification, the cited
references, other relevant materials, and how one of ordinary skill in the art
would have generally understood the term around the time of the ’822
Patent” (PO Resp. 18), it offers no persuasive explanation for this allegation.
The claim does not specify a type of computer operating condition during
the “running state.” Rather, the claim simply recites “running states of a
plurality of primary computing systems” and “accessing . . . captured
running states.” Patent Owner does not identify, and we do not see,
anything in the specification of the ’822 patent that requires “running state”
to be construed as corresponding to a particular operating condition of the
computer. For example, the specification of the ’822 patent explains that
“[t]he running state . . . includes application data, the executable instructions
for application programs, the executable instructions for the operating
system, and configuration information for the application programs and the
operating system,” without specifying an operating condition corresponding
to the “running state.” Ex. 1001, 4:56–60.
Accordingly, for purposes of this decision, we determine that
“running state” includes “application data, the executable instructions for
application programs, the executable instructions for the operating system,
and configuration information for the application programs and the operating
system,” and does not require a specific computer operating condition.
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We also see no requirement that the “captured running state” requires
anything beyond a copy of the “running state,” as defined above. The claims
simply recite “accessing a captured running state,” without specifying how
or when the running state is captured. Thus, we determine that a “captured
running state” is simply “a copy of the application data, the executable
instructions for application programs, the executable instructions for the
operating system, and configuration information for the application
programs and the operating system.”
2. “boot order”
In our Decision on Institution, we construed “boot order” as “the order
of booting, independent of any relationship between the computing systems
being booted.” Dec. on Inst. 9–10. Both Patent Owner and Petitioner agree
with our construction of “boot order.” PO Resp. 16; Pet. Reply 9.
Accordingly, we are not aware of any reason to alter our construction of
“boot order” noted above.
B. Obviousness over VS Guide and VSMT
We have reviewed the Petition, the Patent Owner Response, and
Petitioner’s Reply, as well as the relevant evidence discussed in those
papers. We are persuaded that Petitioner has established, by a
preponderance of the evidence, that claims 1, 2, 6, 7, and 12–15 would have
been obvious over the combination of VS Guide and VSMT.
Initially, we note that Patent Owner alleged in its Response that
neither VS Guide nor VSMT qualifies as printed publications. PO
Resp. 29–36. At oral hearing, however, Patent Owner acknowledged that it
no longer maintains this contention. See Tr. 64:1–9.
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1. Overview of VS Guide
VS Guide is the Microsoft® Virtual Server 2005 Administrator’s
Guide. Ex. 1002, 1. VS Guide explains how to create and run one or more
virtual machines, each with its own operating system, on a single physical
computer using Microsoft® Virtual Server 2005. Id. An illustrative figure
from page 124 of VS Guide (“VS Guide figure”) is reproduced below.

VS Guide Figure
The VS Guide figure above illustrates the system architecture, and includes
guest operating systems and applications, virtual machines, a virtual server,
a host operating system, and a physical computer. Id. at 124. VS Guide
explains that “[s]tarting from the bottom of the logical stack [in the VS
Guide figure], the host operating system manages the physical computer.
The Virtual Machine Monitor (VMM) virtualization layer manages virtual
machines, providing the software infrastructure for hardware emulation.
Each virtual machine consists of a set of virtualized devices.” Id. (emphasis
omitted).
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2. Overview of VSMT
VSMT is a white paper describing the Microsoft® Virtual Server
Migration Toolkit, which “is designed to help solve problems associated
with migrating to Virtual Server 2005 by creating a reliable and repeatable
process for migrating an operating system and installed applications from a
physical server to a virtual machine.” Ex. 1003, 5. VSMT discusses
migrating physical servers to virtual machines running on a single physical
server and explains that “Virtual Server 2005 allows multiple, disparate
operating systems to run simultaneously on a single server computer.” Id.
3. Claims 1 and 15
As seen above, claim 1 is directed to “[a] method for restoring access
to running states of a plurality of primary computing systems onto a single
computing system” and includes “accessing a captured running state of each
of the primary computing systems on the single computing system,”
“identifying a boot order for each of the primary computing systems,” and
“booting the captured running states for each of the primary computing
systems in the identified boot order on the single computing system.” Claim
15 is directed to “[a] computer program product” having similar limitations.
We have reviewed, and are persuaded by, Petitioner’s contentions regarding
the teachings of VS Guide and VSMT relative to these claims, and that one
skilled in the art would have combined these teachings.
For example, with respect to the “running state” limitations, Petitioner
contends that “VS Guide describes having multiple virtual machines running
on a single physical computing system” and the virtual machines in VS
Guide restore access to a running state by executing the running state as a
captured running state. Pet. 12 (citing Ex. 1002, 17; Ex. 1008 ¶ 40).
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Petitioner cites VSMT as describing the migration from the physical
computer to the virtual machine and, therefore, teaching “capturing ‘running
states’ of a physical computer by converting physical computers into Virtual
Server 2005 virtual machines.” Id. As noted above, we do not construe
“running state” as requiring a specific computer operating condition.
Petitioner contends, however, that even with the construction of
running state proposed by Patent Owner, including the additional limitations
of the computer “operating normally” and providing its “intended
functionality,” the prior art applied in the challenges meets the “running
state” and “captured running state” limitations. Pet. Reply 6–9; Tr. 126:14–
128:12. Petitioner explains that “[s]ince the contents of the disk do not
change when the computer is shutdown, when VSMT [] capture[s] the
contents of the disk, [it is] capturing the running state of the computer when
it was operating normally (i.e., providing its intended functionality).” Pet.
Reply 8 (citing Ex. 1010 ¶ 4). Petitioner contends that “[t]he virtual
machine data is the ‘captured running state’ since it was migrated from a
physical machine into the virtual machine running on the single computing
system.” Id. at 13. Petitioner contends that VS Guide’s discussion of
“allowing users to access a particular virtual machine, thus accessing its
associated data,” therefore, corresponds to the “accessing a captured running
state” recited in the claims. Id.
Petitioner reasons that a person of ordinary skill in the art would have
combined VS Guide and VSMT because both are Microsoft® products and
are designed specifically to work together. Pet. 11 (citing Ex. 1003, 5).
Petitioner contends that “it would have been obvious to one having ordinary
skill in the art to combine VS Guide with VSMT as doing so is nothing more
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than combining known elements using known techniques to yield a
predictable result (e.g., server consolidation).” Id. (citing Ex. 1008 ¶ 38).
Patent Owner responds that “[n]either VS Guide, nor VSMT,
include[s] any teaching or suggestion of capturing the state of any
computing system while it is running.” PO Resp. 42–43. Patent Owner
argues that “VSMT makes clear that the physical (i.e. source computer) is not
and cannot be running during its migration process” and “expressly discloses
that the physical source computer (i.e., the asserted primary computing
system) must first be shut down, rebooted into a specialized pre-boot
environment to perform the P2V conversion, and then shut down and
rebooted again to resume normal operation.” Id. at 43. Patent Owner
contends, therefore, that “the physical computer is not capable of operating
normally or providing any of its intended functionality at any point during
the conversion process.” Id.
Patent Owner focuses on the state of the computer in the “pre-boot”
mode in VSMT, but this is not the state that is captured from the physical
computer, migrated to the virtual machine, and later accessed on the virtual
machine. Regardless of whether the source computer is running during the
migration process, or is running in a specialized pre-boot environment
during the migration process, the source computer is running before it is shut
down for migration. As Petitioner contends, this state of the source
computer prior to migration is saved and migrated to the virtual machine.
Pet. Reply 8 (citing Ex. 1010 ¶ 4). Dr. Shenoy’s testimony supports this
understanding of the migration process, explaining that “the data captured
after the computer has been shut down or rebooted is the same data as it
existed when the computer was previously running.” Ex. 1010 ¶ 4. Thus,
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the data migrated to, and ultimately accessed on, the virtual machine in
Petitioner’s proposed combination of VS Guide and VSMT is a copy of
application data, the executable instructions for application programs, the
executable instructions for the operating system, and configuration
information for the application programs and the operating system existing
during computer operation. We are persuaded, therefore, that the
combination of VS Guide and VSMT teaches restoring access to a “running
state,” as construed above, and accessing a copy of the running state (i.e.,
“accessing a captured running state”).
We are also persuaded that, in VSMT, the source computer is
“operating normally” and “providing its intended functionality” before it is
shut down for migration, as required by Patent Owner’s proposed
construction of “running state.” For example, the data migrated to, and
ultimately accessed on, the virtual machine in Petitioner’s proposed
combination of VS Guide and VSMT is a copy of the running state existing
during normal computer operation (i.e., when the computer is powered on,
ready for use, and providing its intended functionality).
Patent Owner does not address specifically Petitioner’s reasons for
combining VS Guide and VSMT. Instead, Patent Owner focuses on the
references not being related to disaster recovery. PO Resp. 47–49.
However, the claims are not limited to “disaster recovery.” Rather, the
claims require accessing captured running states, which includes migration
of a physical machine to a virtual machine as discussed in VS Guide and
VSMT. As indicated above, Petitioner notes that VS Guide and VSMT both
are Microsoft® products and are designed specifically to work together.
Pet. 11 (citing Ex. 1003, 5).
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Patent Owner’s contentions that “[t]he process for migrating physical
machines to a virtual server by converting them into virtual machines is an
extremely complex and lengthy procedure with numerous steps performed
manually” does not persuade us that one skilled in the art would not have
combined the teachings of VS Guide and VSMT. VSMT expressly states
that it “is designed to help solve problems associated with migrating legacy
operating systems and line of business applications to new hardware by
creating a reliable and repeatable process for migrating an operating system
and installed applications from a physical server to a virtual machine
running on Virtual Server 2005.”
7
Ex. 1003, 5.
Turning to the “boot order” limitations, Petitioner cites VS Guide’s
discussion of allowing a user to set delays for booting the virtual machines.
Pet. 16 (citing Ex. 1002, 58). Specifically, Petitioner contends that by
setting delays for the different virtual machines, a user can manipulate the
order in which virtual machines are booted. Id. (citing Ex. 1008 ¶ 45).
Petitioner submits that “[e]ach of the virtual machines automatically boots
based on the selected order when the Virtual Server software is started.”
Id. at 17 (citing Ex. 1002, 58).
Patent Owner acknowledges that VS Guide, for example, teaches that
“a user may choose to have one virtual machine boot immediately with the
virtual server and have another virtual machine start booting 30 seconds
after the virtual server starts up,” but argues that this time delay is not a boot
order. PO Resp. 46 (citing Ex. 1002, 58). Patent Owner contends that “the
claimed ‘boot order’” requires “certain captured running states start booting

7
As noted above, VS Guide is the Administrator’s Guide for Virtual Server
2005. Ex. 1002, 1.
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only after other captured running states finish booting-up and are
operational.” Id. at 46–47. This limitation, however, is not found in the
claims.
As discussed above, we construe “boot order” as “the order of
booting, independent of any relationship between the computing systems
being booted.” Patent Owner agrees with this construction. PO Resp. 16.
The claims recite “an act of identifying a boot order for each of the primary
computing systems” and “an act of booting the captured running states for
each of the primary computing systems in the identified boot order on the
single computing system.” Neither claim 1 nor claim 15 requires one
captured running state to complete booting before another starts booting.
Specifying the time at which a virtual machine starts booting meets our
construction of boot order (i.e., a user selects the time a virtual machine
boots, independent of when another virtual machine boots). Thus, we are
persuaded that VS Guide teaches this limitation.
Patent Owner does not address specifically Petitioner’s contentions
regarding the additional limitations of claims 1 and 15, such as the device
driver and common virtualization component limitations. As indicated
above, we have reviewed, and are persuaded by, Petitioner’s contentions.
For the reasons discussed above, Petitioner has established, by a
preponderance of the evidence, that claims 1 and 15 would have been
obvious over the combination of VS Guide and VSMT.
4. Claims 2, 6, 7, and 12–14
Claims 2, 6, 7, and 12–14 depend from claim 1, and Patent Owner
does not dispute Petitioner’s contentions regarding these claims specifically.
Based on our review of Petitioner’s contentions regarding these claims, we
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are also persuaded that Petitioner has established, by a preponderance of the
evidence, that claims 2, 6, 7, and 12–14 would have been obvious over the
combination of VS Guide and VSMT.
C. Obviousness over P2V Manual and ESX Guide
Petitioner additionally challenges claims 1, 2, 6, 7, and 12–15 as being
unpatentable over the combination of P2V Manual and ESX Guide. Pet. 22–
37. Because we determine all challenged claims to be unpatentable over the
combination of VS Guide and VSMT, we do not reach Petitioner’s challenge
based on the combination of P2V Manual and ESX Guide.
D. Motion to Amend
Patent Owner moves to substitute claims 26 and 27 for claims 1 and
15, respectively, if we determine claims 1 and 15 to be unpatentable. Mot.
to Amend 1. Because we determine that Petitioner has demonstrated, by a
preponderance of the evidence, that all challenged claims are unpatentable,
including claims 1 and 15, Patent Owner’s Motion to Amend is before us for
consideration. Proposed substitute claims 26 and 27 are independent claims,
and are reproduced below.
26. A method for restoring access to running states
of a plurality of primary computing systems onto a
single computing system, the method comprising
the following:
an act of periodically capturing a running state of
each of the primary computing systems at a
particular point in time, wherein at least one of
the plurality of primary computing systems is a
virtual machine;
an act of accessing a most recently captured
running state of each of the primary computing
systems on the single computing system,
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wherein the captured running states each
include, or are altered to include, at least one
device driver that is configured to interface
with a common virtualization component that
runs on the single computing system, wherein
the common virtualization component is
configured to at least indirectly interface with
hardware on the single computing system that
operates at least part of the hardware using a
different interface than the at least one device
driver is configured to interface with;
an act of identifying a boot order for each of the
primary computing systems; and
an act of booting the most recently captured
running states for each of the primary
computing systems in the identified boot order
on the single computing system.

27. A computer program product comprising one
or more computer-readable storage media having
thereon computer executable instructions that,
when executed by one or more processors of a
single computing system, cause the single
computing system to perform a method for
restoring access to running states of a plurality of
primary computing systems onto the single
computing system, the method comprising the
following:
an act of capturing the running states of each of the
primary computing systems, wherein the
running states are captured during normal
operation of the primary computing systems;
an act of testing a recovery operation to determine
whether operation of the running states can be
continued using the captured running states on
the single computing system, the act of testing
comprising:
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an act of accessing a captured running state of
each of the primary computing systems on
the single computing system, wherein the
captured running states each include, or are
altered to include, at least one device driver
that is configured to interface with a
common virtualization component that runs
on the single computing system, wherein the
common virtualization component is
configured to at least indirectly interface
with hardware on the single computing
system, at least part of the hardware using a
different interface than the at least one
device driver is configured to interface with;
an act of identifying a boot order for each of the
primary computing systems; and
an act of booting the captured running states for
each of the primary computing systems in
the identified boot order on the single
computing system;
wherein the acts of capturing and testing are
performed without losing functionality of the
primary computing systems.
Mot. to Amend 1–3 (emphasis added by Patent Owner to indicate changes).
Pursuant to 37 C.F.R. § 42.121(a)(2), a motion to amend may be
denied if the amendments introduce new subject matter. Patent Owner has
the burden to set forth written description support in the original disclosure
for each proposed substitute claim. 37 C.F.R. § 42.121(b)(1). The written
description test is whether the original disclosure of the application relied
upon reasonably conveys to a person of ordinary skill in the art that the
inventor had possession of the claimed subject matter as of the filing date.
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en banc). For the reasons discussed below, we determine that Patent Owner
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has not established written description support in the original disclosure for
the substitute claims presented in the Motion to Amend. Accordingly,
Patent Owner’s Motion to Amend is denied.
1. Claim 26
Substitute claim 26 seeks to add “periodically capturing a running
state of each of the primary computing systems at a particular point in time.”
Mot. To Amend 1. Patent Owner contends that “[s]upport for these
limitations and features can be found at least at ¶¶ [0005]–[0008], [0028],
[0032]–[0033], [0036], [0039]–[0040], [0042]–[0043], [0050], [0051],
[0070] and [0073]–[0075], as well as in Figure 2, of the original disclosure
for the ’822 Patent and original claim 2.” Mot. to Amend 7. As indicated
above, Patent Owner cites eighteen paragraphs, a figure, and a claim, but
offers no specific explanation for how any of these citations provide support
for the “periodically capturing a running state” limitation discussed above.
Instead, Patent Owner simply alleges, generally, for example, that “these
passages disclose . . . backup processes are typically run periodically and
frequently to increase the freshness of the backup data.” Id. Patent Owner
further alleges, generally, that “one of ordinary skill in the art would have
understood these passages to mean that the running states are captured
periodically.” Id. (citing Ex. 2010 ¶¶ 34–47).
None of the cited paragraphs, Figure 2, or claim 2 discusses
periodically capturing a running state. “[T]he [written] description
requirement does not demand any particular form of disclosure or that the
specification recite the claimed invention in haec verba.” Ariad Pharms.,
598 F.3d at 1352 (citation omitted). Patent Owner’s citation to eighteen
paragraphs, a figure, and a claim of the original disclosure of the ’822 patent
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(Ex. 2019, “the ’822 application”), without explanation, however, offers no
guidance as to how these portions of the ’822 application allegedly support
the limitation.
Based on our review of the portions of the ’822 application cited by
Patent Owner, it is not clear that the ’822 application supports the limitation.
For example, paragraph 5 of the ’822 application discusses benefits of
“efficiently restoring access to data and other operational state of multiple
primary computing systems . . . without necessarily requiring replacement
computing systems that have identical hardware as the lost primary
computing systems.” Paragraph 28 describes Figure 2 of the ’822
application as “a flowchart of a method 200 for restoring access to running
states of multiple primary computing systems onto a single recovery
computing system.” Paragraph 32 discusses “captured running states,” but
only with reference to their content (e.g., device drivers). The only portion
of the ’822 application cited by Patent Owner that is directed to the act of
capturing running states is claim 2, which simply recites “an act of capturing
the running states of each of the primary computing systems.” Paragraph
31, which is not cited by Patent Owner, discusses capturing running states,
but only states “[e]ach of the running states is captured via the use of capture
channel 351,” without further detail regarding the frequency of the
“capturing.”
Patent Owner’s general citation to fourteen paragraphs of the
Supplemental Green Declaration does not cure the deficiencies noted above.
Paragraphs 34–47 of the Supplemental Green Declaration are cited only to
support the conclusory allegation that “one of ordinary skill in the art would
have understood the[] passages [cited in the Motion to Amend] to mean that
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the running states are captured periodically.” Mot. to Amend 7. The
Supplemental Green Declaration is not cited as evidence supporting any
specific argument, discussed in the Motion to Amend, regarding a specific
understanding of the cited portions of the ’822 application. See 37 C.F.R.
§ 42.6(a)(3) (“Arguments must not be incorporated by reference from one
document into another document.”).
For these reasons, we are not persuaded that Patent Owner has met its
burden in establishing that the ’822 application provides adequate written
description support for the added limitation “periodically capturing a
running state of each of the primary computing systems at a particular point
in time.”
Substitute claim 26 also seeks to add that “at least one of the plurality
of primary computing systems is a virtual machine.” Mot. to Amend 1.
Patent Owner contends that “[s]upport for this limitation can be found at
least at ¶¶ [0005]–[0008], [0028], [0032]–[0033], [0036], [0039]–[0040],
[0042]–[0043], [0050], [0051], [0070] and [0073]–[0075], as well as in
Figure 2, of the original disclosure for the ’822 Patent.” Mot. to Amend 8.
Similar to the “periodically capturing” limitation discussed above, Patent
Owner offers no specific explanation for how these citations provide support
for the “virtual machine” limitation discussed above. Instead, Patent Owner
alleges, generally, that “these passages demonstrate that (i) the restoration
mechanisms utilize virtualization; (ii) the computing systems could be
implemented as software services; and (iii) the running states could already
include the device driver.” Id. Patent Owner further alleges, generally, that
“one of ordinary skill in the art would have understood these passages to
mean that the primary computing systems could be virtual machines.” Id.
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(citing Ex. 2010 ¶¶ 34–47). Patent Owner additionally indicates that
Petitioner’s expert, Dr. Shenoy, agreed with this during deposition. Mot. to
Amend 8 (citing Ex. 2005, 88:15–89:3).
None of the cited paragraphs or Figure 2 discusses one of the primary
computing systems being a virtual machine. Patent Owner’s citation to
eighteen paragraphs and a figure of the ’822 application, with no explanation
other than conclusory allegations, offers no guidance as to how these
portions of the ’822 application allegedly provide a written description of the
limitation. Based on our review of the portions of the ’822 application cited
by Patent Owner, it is not clear that the ’822 application provides such
support for the limitation. Patent Owner’s citations to the ’822 application
are the same as those discussed above relative to the “periodically capturing”
limitation. As seen above in our discussion of the examples of those
citations, we are not persuaded that the ’822 application provides adequate
written description support for one of the primary computing systems being
a virtual machine.
Patent Owner’s general citation to same fourteen paragraphs of the
Supplemental Green Declaration as discussed above also does not cure these
deficiencies. Patent Owner’s allegation that Dr. Shenoy agreed that “one of
ordinary skill in the art would have understood the[] passages [cited in the
Motion to Amend] to mean that the primary computing systems could be
virtual machines” (Mot. to Amend 8) also is unpersuasive. The cited portion
of Dr. Shenoy’s deposition transcript states that one reason a captured
running state might include a device driver is “that it came from a virtual
machine.” Ex. 2005, 88:21–22. Dr. Shenoy’s deposition transcript also
states that “[a]nother reason is the virtualization component is simply
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emulating a very common piece of hardware that the operating system
already has drivers for and that it’s still a physical machine.” Id. at 88:22–
89:3. As Petitioner notes, “Dr. Shenoy merely stated that if a captured
running state had a driver that interfaced with a common virtualization
component it could indicate that it was a virtual machine, not that it was
necessarily a virtual machine.” Pet. MTA Resp. 5. Even if one skilled in the
art would understand that the primary computing systems discussed in the
’822 application could include virtual machines, this is not sufficient to
establish possession of the claimed subject matter. See Ariad Pharms., 598
F.3d at 1352 (“it is the specification itself that must demonstrate possession .
. . a description that merely renders the invention obvious does not satisfy
the requirement”) (citations omitted).
For these reasons, we are not persuaded that Patent Owner has met its
burden of establishing that the “one of the primary computing systems is a
virtual machine” limitation is supported by the ’822 application.
2. Claim 27
Substitute claim 27 seeks to add “an act of capturing the running
states of each of the primary computing systems, wherein the running states
are captured during normal operation of the primary computing systems”
and specifies that the “act of capturing” is “performed without losing
functionality of the primary computing systems.” Patent Owner contends
that “[s]upport for these additional limitations and features can be found at
least at ¶¶ [0005]–[0008], [0020], [0024], [0027]–[0029], [0032]–[0033],
[0036], [0039]–[0040], [0042]–[0043], [0050], [0074], as well as in Figure
2, of the original disclosure for the ’822 Patent.” Mot. to Amend 9.
Similar to the limitations discussed above relative to claim 26, Patent
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Owner offers no specific explanation for how these citations provide support
for the proposed limitations. Patent Owner alleges for example, that “these
passages explain that the restoration mechanisms can be performed, while
the primary systems continue operation and without ever losing their
functionality.” Id. Patent Owner further alleges that “one of ordinary skill
in the art would have understood these passages to mean that the running
states are captured (and the entire process could be performed) during
normal operation of the primary computing systems.” Id. (citing Ex. 2010
¶¶ 48–56).
None of the cited paragraphs or Figure 2 discusses the conditions
during which a running state is captured. We conclude that Patent Owner’s
citation to eighteen paragraphs and a figure of the ’822 application, without
explanation, offers no guidance as to how these portions of the ’822
application allegedly support the limitation.
Based on our review of the portions of the ’822 application cited by
Patent Owner, we are not able to conclude that the ’822 application supports
the limitation. Paragraph 29 is the only portion of the ’822 application cited
by Patent Owner that discusses the act of capturing the running states. But
this citation indicates only that “[t]he method 200 includes capturing the
running states of each of the primary computing systems (act 201).”
Paragraph 31, which is not cited by Patent Owner, also discusses capturing
running states, but only states that “[e]ach of the running states is captured
via the use of capture channel 351.” It does not provide further detail
regarding the operating conditions of the primary computing systems during
the “capturing.” Paragraph 42 indicates that “the principles of the present
invention may be practiced even if the primary computing systems continue
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operation,” such that “the operation of the running states on the recovery
computing system allows for testing of the recovery operation without ever
losing functionality of the primary computing systems.” We cannot
determine, however, whether this passage includes the running states being
captured while the primary computing systems continue operation. Rather,
it appears that this passage simply indicates that the physical hardware
associated with the primary computing systems is not required for recovery
operation or testing. Patent Owner offers no argument as to why this
passage supports the limitation.
Patent Owner’s general citation to nine paragraphs of the
Supplemental Green Declaration does not cure the deficiencies noted above.
Paragraphs 48–56 of the Supplemental Green Declaration are cited only to
support the conclusory allegation that “one of ordinary skill in the art would
have understood the[] passages [cited in the Motion to Amend] to mean that
the running states are captured (and the entire process could be performed)
during normal operation of the primary computing systems.” Mot. to
Amend 9. The Supplemental Green Declaration is not cited as evidence
supporting any specific argument discussed in the Motion to Amend,
regarding a specific understanding of the cited portions of the ’822
application.
For these reasons, we are not persuaded that Patent Owner has met its
burden in establishing that “an act of capturing the running states of each of
the primary computing systems . . . during normal operation of the primary
computing systems . . . without losing functionality of the primary
computing systems” is supported by the ’822 application.
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Accordingly, we determine that Patent Owner has not established
written description support in the original disclosure for substitute claims 26
and 27, and Patent Owner’s Motion to Amend is denied.
E. Motion to Exclude
1. Petitioner’s Motion
Petitioner filed a motion to exclude certain evidence including Aaron
Smith’s declaration (Ex. 2021, “Smith Declaration”) and Exhibits 2022–
2030, filed in support of the Smith Declaration. Paper 31. The Smith
Declaration and supporting exhibits were filed by Patent Owner in support
of arguments regarding removal under 35 U.S.C. § 103(c) of the ’086 patent
as prior art. That patent was cited by Petitioner in response to Patent
Owner’s Motion to Amend. Because we deny Patent Owner’s Motion to
Amend for other reasons, as discussed above, we did not reach this issue and
we, therefore, dismiss Petitioner’s motion as moot.
2. Patent Owner’s Motion
Patent Owner filed a motion to exclude certain evidence including the
ESX Guide (Exhibit 1005) and the Supplemental ESX Guide (Exhibit 1017).
Paper 35. Because, as noted above, we do not reach Petitioner’s challenge
including the ESX Guide, we dismiss Patent’s Owner’s motion as moot.

III. SUMMARY
Petitioner has demonstrated, by a preponderance of the evidence, that
claims 1, 2, 6, 7, and 12–15 would have been obvious over the combination
of VS Guide and VSMT, and that these claims, therefore, are unpatentable.
Patent Owner has not established written description support in the original
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disclosure for the substitute claims proposed in its Motion to Amend and,
therefore, the Motion is denied.

IV. ORDER
For the reasons given, it is
ORDERED that:
A. Claims 1, 2, 6, 7, and 12–15 are unpatentable as obvious
over the combination of VS Guide and VSMT;
B. Patent Owner’s Motion to Amend is denied;
C. Petitioner’s Motion to Exclude is dismissed; and
D. Patent Owner’s Motion to Exclude is dismissed.
FURTHER ORDERED that parties to the proceeding seeking judicial
review of this final written decision must comply with the notice and service
requirements of 37 C.F.R. § 90.2.

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For PETITIONER:

Lori A. Gordon
lgordon-PTAB@skgf.com

Michael Lee
mlee-PTAB@skgf.com

Jonathan Strang
jstrang-PTAB@skgf.com

Daniel Block
dblock-PTAB@skgf.com

For PATENT OWNER:

Joseph J. Richetti
joe.richetti@bryancave.com

Daniel Crowe
dacrowe@bryancave.com