DCT
1:20-cv-00480
Cirba Inc v. Turbonomic Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: CIRBA INC. (d/b/a DENSIFY) and Cirba IP, Inc. (Canada)
- Defendant: Turbonomic, Inc. (Delaware)
- Plaintiff’s Counsel: Reichman Jorgensen LLP; Morris James LLP
- Case Identification: 1:20-cv-00480, D. Del., 04/07/2020
- Venue Allegations: Plaintiff alleges venue is proper in the District of Delaware because Defendant Turbonomic, Inc. is a Delaware corporation and has offered for sale, sold, and continues to sell its allegedly infringing products and services within the district.
- Core Dispute: Plaintiff alleges that Defendant’s "Turbonomic Application Resource Management" software platform infringes a patent related to methods for evaluating and optimizing virtualized computing environments.
- Technical Context: The technology at issue addresses the complex computational problem of optimally placing virtual machines on physical host servers to improve efficiency, reduce costs, and manage performance in large-scale IT infrastructures like data centers and cloud environments.
- Key Procedural History: The complaint notes that the asserted patent, U.S. Patent No. 8,209,687, was previously found to be willfully infringed by VMware, Inc. in a January 2020 jury verdict in the District of Delaware. The complaint also alleges that Defendant hired multiple former Densify employees, including its current Chief Technology Officer, who were allegedly familiar with Plaintiff's technology and patents.
Case Timeline
| Date | Event |
|---|---|
| 2007-08-31 | U.S. Patent No. 8,209,687 Priority Date |
| 2009 | Turbonomic Launched |
| 2012-06-26 | U.S. Patent No. 8,209,687 Issued |
| 2014-01 | Former Densify SVP Charles Crouchman joins Turbonomic as CTO |
| 2020-01 | Jury verdict in Cirba Inc v. VMware Inc finds '687 patent willfully infringed |
| 2020-04-07 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,209,687 - "Method and System for Evaluating Virtualized Environments"
- Patent Identification: U.S. Patent No. 8,209,687, issued June 26, 2012.
The Invention Explained
- Problem Addressed: The patent addresses the challenge of managing IT infrastructure "sprawl," where the proliferation of applications and servers creates under-utilized hardware and inefficiencies (’687 Patent, col. 1:35-41). In virtualized environments, the "virtually infinite number of possible consolidation permutations" makes choosing optimal placements for virtual machines difficult, error-prone, and time-consuming when performed manually (’687 Patent, col. 2:12-21).
- The Patented Solution: The invention provides an automated method and system for evaluating and designing virtualized environments by applying "compatibility analytics and virtualization rule sets" (’687 Patent, Abstract). The system obtains detailed data sets for existing physical or virtual systems and uses an analysis program to evaluate them against technical, business, and workload constraints, thereby determining optimal placements and configurations (’687 Patent, col. 5:52-6:4). This allows for either designing a new virtual environment or validating and managing an existing one.
- Technical Importance: The patented method provided a data-driven, analytical framework to automate the highly complex, multi-variable optimization problem of workload placement, which was becoming a critical operational challenge as enterprises rapidly adopted virtualization (Compl. ¶21-22).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 7 (Compl. ¶45).
- The essential elements of independent claim 7 are:
- A method for validating an existing virtualized environment comprising a plurality of virtual machines on one or more virtual hosts.
- Obtaining a data set for each virtual machine, with the data pertaining to technical, business, and workload constraints.
- Evaluating the placement of the virtual machines by assessing each virtual guest against each virtual host and other guests using one or more rule sets related to the constraints to determine guest-host placements.
- Identifying virtual machines with suboptimal placements to enable alternative placements.
- The complaint's prayer for relief seeks judgment on "one or more claims of the '687 patent," reserving the right to assert additional claims (Compl. ¶61, 73a).
III. The Accused Instrumentality
Product Identification
- The "Turbonomic Application Resource Management" software platform, which is available in Essentials, Advanced, and Premier editions (the "Turbonomic Accused Product") (Compl. ¶26).
Functionality and Market Context
- The complaint alleges the accused product is an "AI-powered Application Resource Management" tool that "simultaneously optimizes performance, compliance, and cost in real time" (Compl. ¶45, 46). It is alleged to work by using APIs to "discover applications, platforms, and infrastructure" and pull resource data for processing by a software analytics engine (Compl. ¶47). Based on this analysis, the product automatically provides "specific actions that ensure your applications always get the resources they need to perform," including placing and moving workloads within a computing environment (Compl. ¶26, 46).
- The complaint positions the accused product as a direct competitor to Densify's own optimization software and claims it is trusted by large organizations, including over 100 of the Fortune 500 (Compl. ¶28, 29, 31).
IV. Analysis of Infringement Allegations
'687 Patent Infringement Allegations
| Claim Element (from Independent Claim 7) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method for validating an existing virtualized environment comprising a plurality of virtual machines placed on one or more virtual hosts... | The accused product allegedly utilizes a method for validating existing virtual environments when it "assesses the placements of virtual machines on hosts using multiple criteria" to determine if an environment is in an "optimized state." | ¶46 | col. 3:26-36 |
| obtaining a data set for each of said plurality of virtual machines, each data set comprising information pertaining to technical, business, and workload constraints... | The accused product allegedly obtains technical and workload data (e.g., CPU/memory utilization) and business data through user-defined policies (e.g., licensing rules). A screenshot shows a user interface for creating a license-based placement policy. | ¶47-50, 18 | col. 7:20-41 |
| evaluating the placement of said virtual machines... using one or more rule sets pertaining to said technical, business and workload constraints to determine guest-host placements... | The accused product allegedly evaluates placements by comparing "current utilization and demand against allocated capacities" and considering "user-configured constraints defined in a placement policy." A screenshot shows a dashboard with "Pending Actions" to move virtual machines for performance reasons. | ¶51, 16 | col. 13:42-51 |
| identifying the existence of virtual machines with suboptimal placements to enable alternative placements for said virtual machines. | The accused product allegedly identifies suboptimal placements by comparing metric values against constraints to "determine whether a metric exhibits a problem" and recommends actions to "avoid problems." | ¶56 | col. 3:33-36 |
- Identified Points of Contention:
- Scope Questions: A central question may be whether the accused product's function, described as continuous, real-time optimization, falls within the scope of "validating an existing virtualized environment" as recited in the claim. The defense may argue that "validating" implies a discrete, backward-looking check, whereas its product is a forward-looking, dynamic management tool.
- Technical Questions: The analysis may turn on whether Turbonomic's use of an "analytics engine" and user-defined "Placement Policies" is functionally equivalent to the patent's disclosure of "rule sets" (’687 Patent, col. 11:25-12:34). The complaint alleges they are, but a key question for the court will be whether the specific implementation and logic of the accused product differ materially from the system described in the patent.
V. Key Claim Terms for Construction
The Term: "validating an existing virtualized environment"
Context and Importance: This phrase in the preamble of claim 7 defines the overall purpose of the claimed method. Its construction is critical because it will frame whether the accused product's continuous, real-time optimization activities constitute "validating." Practitioners may focus on this term because the accused product is marketed as a dynamic management platform, not a static auditing tool.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification discusses "ongoing management" of the virtual environment after its initial creation, which includes "validating placement of the systems" and "rebalancing the systems" if necessary, suggesting an ongoing, dynamic process (col. 2:49-54).
- Evidence for a Narrower Interpretation: The term "validating" could be interpreted more narrowly to mean a specific check to confirm compliance against a set of rules, as opposed to a continuous optimization process. The detailed description of the process in FIG. 43, for example, shows a discrete "VM placement validation ruleset" (240) being input into an analysis.
The Term: "rule sets"
Context and Importance: This term is the mechanism by which the claimed evaluation is performed. The dispute will likely focus on whether Turbonomic’s use of business policies and an analytics engine meets this limitation. The definition of "rule set" will determine whether a wide range of logic-based systems infringe or only those structured in a manner closely tracking the patent's specific embodiments.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes "rule sets" in general terms as "groupings of rules that represent higher-level considerations such as business objectives or administrative concerns" (col. 12:1-5), which could encompass the "Compliance Policies" alleged to be used by the accused product (Compl. ¶26).
- Evidence for a Narrower Interpretation: The patent provides specific examples of "differential rule sets" that include "penalty weights" and check for incompatibilities like different OS versions or name conflicts (col. 11:25-12:34). A party could argue that for a system to use "rule sets," it must employ this type of structured, penalty-based logic, rather than a more flexible policy engine or machine-learning model.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement under 35 U.S.C. § 271(b), asserting that Turbonomic provides customers with instructions and support—including technical documents, user guides, videos, and webinars—that actively encourage and teach them to use the accused product in an infringing manner (Compl. ¶65-69).
- Willful Infringement: The willfulness claim is based on allegations of both pre-suit and post-suit knowledge. The complaint alleges pre-suit knowledge based on Turbonomic's hiring of former senior Densify employees, including its current CTO, who was allegedly "aware of the '687 patent at least as early as November 2012" (Compl. ¶64). It further alleges willful blindness for "affirmatively avoiding investigating" a direct competitor's patents (Compl. ¶64). Post-suit knowledge is based on the filing of the complaint itself (Compl. ¶63).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of technological definition: Does Turbonomic's "AI-powered" real-time optimization platform, which uses a proprietary analytics engine and user-defined policies, operate as the claimed method of "validating" an environment using "rule sets," or does its functionality represent a distinct technological approach that falls outside the patent's scope?
- A key question for damages will be one of scienter: Can the plaintiff prove that knowledge of the '687 patent, allegedly held by former Densify employees now at Turbonomic, can be imputed to the defendant corporation to establish pre-suit knowledge and support the claim for willful infringement?