DCT
4:22-cv-05289
Red Hat Inc v. Valtrus Innovations Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Red Hat, Inc. (Delaware)
- Defendant: Valtrus Innovations, Ltd. (Ireland)
- Plaintiff’s Counsel: Kirkland & Ellis LLP
- Case Identification: 5:22-cv-05289, N.D. Cal., 09/16/2022
- Venue Allegations: Plaintiff alleges venue is proper because Defendant directed activities into the district by sending patent infringement assertion letters to Plaintiff’s customers located there, engaging in related communications, and allegedly acquiring the patents-in-suit from a Hewlett Packard entity located in the district.
- Core Dispute: In this Declaratory Judgment action, Plaintiff Red Hat seeks a judicial declaration that its enterprise software does not infringe four patents owned by Defendant and further alleges that Defendant’s infringement assertions to Red Hat’s customers constitute tortious interference with contractual relationships.
- Technical Context: The patents-in-suit relate to foundational technologies in enterprise computing, including operating system virtualization, memory management, process migration, and queue management, which are central to the operation of modern data centers and cloud computing environments.
- Key Procedural History: The complaint alleges that Defendant Valtrus acquired the patents-in-suit from their original assignee, Hewlett-Packard. Plaintiff Red Hat asserts that its products are already covered by pre-existing license agreements, including the Open Invention Network (OIN) License, which it claims encumber the patents and bar Defendant’s infringement claims. The dispute materialized after Defendant allegedly began contacting Red Hat’s customers in early 2021 with infringement allegations and claim charts.
Case Timeline
| Date | Event |
|---|---|
| 2003-10-10 | '984 Patent Priority Date |
| 2004-12-22 | '204 Patent Priority Date |
| 2004-12-28 | '471 Patent Priority Date |
| 2005-04-26 | '109 Patent Priority Date |
| 2008-06-03 | '471 Patent Issue Date |
| 2009-05-12 | '109 Patent Issue Date |
| 2009-11-17 | '984 Patent Issue Date |
| 2012-07-24 | '204 Patent Issue Date |
| Early 2021 | Valtrus allegedly begins contacting RHEL customers |
| 2022-09-16 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,230,204 - “Migration of system images”
- Issued: July 24, 2012
- The Invention Explained:
- Problem Addressed: The patent describes the difficulty of migrating a running, stateful application from one machine to another. Such migration often requires either a full system shutdown, causing downtime, or a complex and costly clustered environment. (’204 Patent, col. 2:9-28).
- The Patented Solution: The invention proposes using an operating system's built-in "hibernation semantics," such as the Advanced Configuration and Power Interface (ACPI) S4 sleep state, to pause a process and save its entire context as a persistent image. This image can then be transferred to a different device (physical or virtual), which can resume the process exactly where it left off, avoiding the need for a traditional shutdown and reboot. (’204 Patent, Abstract; col. 2:50-61).
- Technical Importance: This method provides a mechanism for the live migration of stateful workloads, a critical function for hardware maintenance, load balancing, and fault tolerance in enterprise data centers. (’204 Patent, col. 2:25-29).
- Key Claims at a Glance:
- The complaint identifies allegations concerning independent claim 1. (Compl. ¶35).
- The essential elements of claim 1 are:
- performing a process on a first device;
- pausing operation of the process using hibernation semantics;
- migrating a persistent image to a second device; and
- continuing the process on the second device from the point where it was paused.
- The complaint seeks a declaration of non-infringement as to any claim of the patent. (Compl. p. 13, ¶5).
U.S. Patent No. 7,620,984 - “Method of managing computer system”
- Issued: November 17, 2009
- The Invention Explained:
- Problem Addressed: The patent addresses the cost and complexity of creating isolated "computer clusters" for different users within a shared computing environment. Traditional methods require dedicated, expensive hardware like VLAN devices and specialized storage access controllers to enforce isolation. (’984 Patent, col. 2:37-48).
- The Patented Solution: The invention describes a software-based approach using a virtual machine monitor (VMM), or hypervisor. The VMM provides an interface through which an authorized "module" can be added. This module modifies the VMM's fundamental access control rules for network and storage resources, thereby creating securely isolated virtual clusters on shared physical hardware without needing specialized network or storage devices. (’984 Patent, Abstract; col. 8:31-52; FIG. 9).
- Technical Importance: This technology is a foundational element of modern virtualization and multi-tenant cloud computing, enabling the secure partitioning of a single physical server to serve multiple, isolated customers or applications. (’984 Patent, col. 2:49-54).
- Key Claims at a Glance:
- The complaint identifies allegations concerning independent claim 1. (Compl. ¶42).
- The essential elements of claim 1 are:
- placing a virtual machine monitor on a computer, which includes an interface for a module;
- forming a computing platform on the computer where the VMM provides access control to hardware;
- adding the module to the VMM through the interface, causing the module to modify the VMM's access control; and
- wherein the interface performs authorization to verify the module is authorized to be added.
- The complaint seeks a declaration of non-infringement as to any claim of the patent. (Compl. p. 13, ¶5).
U.S. Patent No. 7,383,471 - “Diagnostic memory dumping”
- Issued: June 3, 2008
- Technology Synopsis: The patent addresses the problem that an operating system (OS) that has crashed may be in an unreliable state, preventing it from successfully creating a memory dump for debugging. (’471 Patent, col. 1:43-49). The invention proposes using a separate, "healthy" program, such as a second OS or a virtual machine monitor on the same computer, to receive a dump request and perform the memory copy on behalf of the crashed OS. (’471 Patent, Abstract).
- Asserted Claims: The complaint references allegations against independent claim 1. (Compl. ¶49).
- Accused Features: Red Hat Enterprise Linux is accused. The complaint specifically denies that RHEL practices the claimed step of "copy[] contents of a memory of the computer to a persistent storage device in response to [a] memory dump request" as required by the claims. (Compl. ¶51).
U.S. Patent No. 7,533,109 - “Item Queue Management”
- Issued: May 12, 2009
- Technology Synopsis: The patent addresses inefficiencies in data processing queues where items (e.g., network packets) can become stale or outdated while waiting to be processed. (’109 Patent, col. 2:16-27). The solution is a system that associates time information with each item in a queue and employs a logic component to review this information and proactively discard "aged" items, thereby improving throughput. (’109 Patent, Abstract).
- Asserted Claims: The complaint references allegations against independent claim 16. (Compl. ¶56).
- Accused Features: Red Hat Enterprise Linux is accused. The complaint denies that RHEL performs the claimed steps of defining a length of time for action on an item and reviewing its time information to determine if it should be discarded. (Compl. ¶58).
III. The Accused Instrumentality
- Product Identification: Red Hat Enterprise Linux ("RHEL") and related products, including Red Hat OpenShift. (Compl. ¶6, ¶37, ¶44, ¶51, ¶58).
- Functionality and Market Context: RHEL is described as an open-source, enterprise-grade Linux operating system deployed on over nine million physical servers for functions including edge computing, hybrid cloud, and container management. (Compl. ¶17). The complaint asserts RHEL is a critical component of modern IT infrastructure, relied upon by over 90% of Fortune 500 companies and underpinning an estimated $13 trillion in business revenue. (Compl. ¶12, ¶17).
- Visual Evidence: No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint seeks a declaratory judgment of non-infringement and outlines its defensive theories. The analysis below is based on the complaint's characterization of the infringement dispute.
’204 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| performing a process on a first device | The complaint acknowledges that RHEL performs processes on computer devices. | ¶17 | col. 2:53-54 |
| pausing operation of the process using hibernation semantics | The complaint alleges RHEL does not "paus[e] operation of the process using hibernation semantics," stating this is a required limitation of all claims of the patent. | ¶37 | col. 2:54-55 |
| migrating a persistent image to a second device | The complaint’s denial of the "hibernation semantics" element suggests this element is also not met as claimed, though it provides no specific analysis. | ¶37 | col.2:55-58 |
| continuing the process on the second device from a point where the operation was paused on the first device | The complaint’s denial of the "hibernation semantics" element suggests this element is also not met as claimed, though it provides no specific analysis. | ¶37 | col. 2:58-61 |
Identified Points of Contention (’204 Patent)
- Scope Questions: The central dispute appears to be the definition of "hibernation semantics." A key question will be whether this term is limited to formal ACPI-style hibernation procedures, as the patent’s examples suggest, or if it can be read more broadly to cover other process checkpointing and live migration technologies present in RHEL.
- Technical Questions: A factual question for the court will be whether any process migration feature in RHEL (e.g., within its KVM hypervisor) operates by creating a persistent system image in a manner technically equivalent to the "hibernation semantics" described in the patent, or if there is a fundamental operational difference. (Compl. ¶37).
’984 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| placing a virtual machine monitor on a computer, the virtual machine monitor including an interface for a module | The complaint acknowledges RHEL includes virtualization technologies that function as a VMM. | ¶17 | col. 9:18-21 |
| forming a computing platform on the computer such that the virtual machine monitor provides access control to hardware resources | The complaint acknowledges RHEL is used to form virtual machines that function as computing platforms. | ¶17 | col. 9:22-26 |
| adding the module to the virtual machine monitor through the interface, the module modifying the access control provided by the virtual machine monitor | The complaint alleges that RHEL does not comprise a "module modifying access control provided by the virtual machine monitor," stating this is a required limitation of all claims. | ¶44 | col. 9:27-31 |
| wherein... the interface performs authorization to verify that the module is authorized to be added to the virtual machine monitor | The complaint's denial regarding the existence of the "module" itself suggests this limitation is consequently not met. | ¶44 | col. 9:31-35 |
Identified Points of Contention (’984 Patent)
- Scope Questions: The analysis will likely focus on the definition of a "module." The court may need to decide if the term requires a distinct, separately installed software component, as the patent's description of "adding" it through an "interface" might suggest, or if an integrated function of the hypervisor could qualify.
- Technical Questions: Does the method by which RHEL configures security and access policies for virtual machines constitute "modifying access control" via a "module"? The complaint's denial raises the question of whether RHEL's architecture matches the patent's description of a distinct module being added to the VMM, or if its access controls are an inseparable, native function of the VMM and host OS. (Compl. ¶44).
V. Key Claim Terms for Construction
Term: "hibernation semantics" (’204 Patent)
- Context and Importance: This term is the foundation of Red Hat's non-infringement argument for the ’204 Patent. (Compl. ¶37). Its construction will determine whether RHEL's process-pausing and migration tools fall within the scope of the claims.
- Intrinsic Evidence for a Broader Interpretation: The specification states that while ACPI is used as an example, "embodiments are not lim-ited to use with ACPI." (’204 Patent, col. 6:66-67). This could support an interpretation covering any mechanism that saves a complete process state to persistent storage for later resumption.
- Intrinsic Evidence for a Narrower Interpretation: The detailed description focuses almost exclusively on ACPI sleep states, particularly the S4 "hibernation state," as the mechanism for pausing the process. (’204 Patent, col. 2:1-8; col. 6:15-23; FIG. 3). This may support limiting the term to formal, OS-level hibernation functions.
Term: "module modifying access control" (’984 Patent)
- Context and Importance: Red Hat's non-infringement defense for the ’984 Patent centers on its assertion that RHEL does not contain such a "module." (Compl. ¶44). The construction of this term will be critical to determining if RHEL's integrated virtualization management architecture practices the claim.
- Intrinsic Evidence for a Broader Interpretation: The abstract states the module "modifies the access control provided by the virtual machine monitor," which could be argued to encompass any software component, however delivered, that alters the VMM's security behavior. (’984 Patent, Abstract).
- Intrinsic Evidence for a Narrower Interpretation: The specification describes "adding the module... through the interface" and distinguishes it from an OS-level loadable module, requiring separate "authorization for installation." (’984 Patent, col. 8:31-42). This language may support a narrower construction requiring a distinct component that is installed into the VMM, rather than being an integrated part of it.
VI. Other Allegations
- Indirect Infringement: The complaint states that Valtrus's assertions against its customers "implicitly include assertions of both direct infringement and indirect (joint and contributory) infringement by Red Hat." (Compl. ¶20). It further notes that Valtrus's allegations are based on Red Hat's own product documentation and user manuals, which is a typical basis for an inducement claim. (Compl. ¶20). Red Hat denies all forms of infringement on the grounds that its products do not practice the patented claims. (Compl. ¶24).
- Willful Infringement: As this is a declaratory judgment action filed by the accused infringer, there is no count for willful infringement against Red Hat. However, the complaint alleges that Valtrus has acted in "bad faith" by asserting patents that it allegedly knew were licensed and not infringed, and seeks relief for "tortious interference." (Compl. ¶1, ¶25, ¶30). These allegations may form the basis for a motion for exceptional case status under 35 U.S.C. § 285.
VII. Analyst’s Conclusion: Key Questions for the Case
- A threshold issue, preceding any technical analysis, will be one of contractual rights: are the patents-in-suit exhausted or otherwise encumbered by pre-existing licenses, such as the Open Invention Network license, that shield Red Hat and its customers from infringement claims, as the complaint alleges?
- A central question for the '204 patent will be one of definitional scope: can the term "hibernation semantics," which the patent describes in the context of ACPI system states, be construed to cover the live migration and process checkpointing technologies used in Red Hat Enterprise Linux?
- The core dispute for the '984 patent appears to be one of architectural interpretation: do RHEL’s integrated security and management tools function as a "module modifying access control" that is "add[ed]" to the virtual machine monitor as claimed, or are they an inseparable part of the underlying hypervisor, creating a fundamental mismatch with the patent's described architecture?