DCT
1:20-cv-00457
Intellectual Ventures II LLC v. VMware Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Intellectual Ventures II LLC (Delaware)
- Defendant: VMware, Inc. (Delaware)
- Plaintiff’s Counsel: Sorey, Gilliland & Hull, LLP; Nix Patterson L.L.P.; Prince Lobel Tye LLP
- Case Identification: 6:20-cv-00220, W.D. Tex., 03/25/2020
- Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas because VMware maintains regular and established places of business in the district, including two offices in Austin with over 700 employees.
- Core Dispute: Plaintiff alleges that Defendant’s virtualization and cloud computing products infringe five patents related to remotely hosted virtual machines, dynamic delivery of server-based applications, and network route management.
- Technical Context: The technologies at issue, virtualization and software-defined networking, are foundational to modern cloud computing, enabling efficient resource allocation in data centers and remote access to desktops and applications.
- Key Procedural History: The complaint does not reference any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patents-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 1996-02-16 | ’217 Patent Priority Date |
| 2000-09-13 | ’464 Patent Priority Date |
| 2001-06-29 | ’378, ’546, and ’963 Patents Priority Date |
| 2004-11-09 | ’464 Patent Issue Date |
| 2006-03-21 | ’963 Patent Issue Date |
| 2015-07-28 | ’546 Patent Issue Date |
| 2016-05-10 | ’217 Patent Issue Date |
| 2017-06-20 | ’378 Patent Issue Date |
| 2020-03-25 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,338,217 - “METHOD AND APPARATUS FOR COMPUTING WITHIN A WIDE AREA NETWORK”
The Invention Explained
- Problem Addressed: The complaint alleges that prior art remote computing technologies were limited, offering either downloadable applets or basic master/slave remote control, and lacked the ability to maintain a user's persistent "personal state" when migrating a virtual session from one host computer to another (Compl. ¶25-26).
- The Patented Solution: The invention describes a system where a user’s "personal state," including the state of their workspace, is stored remotely and can be loaded onto any number of network-accessible host computers (Compl. ¶25; ’217 Patent, Abstract). This allows for failover and migration of a user’s session across different physical hosts while maintaining the session's state, and also facilitates collaboration between a host and client computer over the network (Compl. ¶28; ’217 Patent, col. 4:4-21).
- Technical Importance: This approach provided a more resilient and flexible architecture for remotely hosted computing environments, improving reliability and untethering users from a specific host or client machine (Compl. ¶26).
Key Claims at a Glance
- The complaint asserts independent claim 14 (Compl. ¶30-31).
- Claim 14 is a method claim comprising the following essential elements:
- Receiving a first request at a server from a host computer.
- The host computer is configured to implement a "network accessible stored personal state" which is remotely stored, accessible via the internet, and includes a "stored prior state of a workspace."
- The host computer is posted for collaboration.
- The server determines the workspace for the host computer from the stored personal state.
- The server loads the workspace into the host computer, where the workspace includes windows that were open during a previous use.
- The server receives a second request from a client computer to collaborate with the host computer.
- The server facilitates collaboration between the host and client computer.
- The complaint also asserts dependent claims 1, 2, 4, 7, 8, 15-17, and 19 (Compl. ¶30).
U.S. Patent No. 9,686,378 - “CONTENT MANAGEMENT AND TRANSFORMATION SYSTEM FOR DIGITAL CONTENT”
The Invention Explained
- Problem Addressed: The complaint alleges that prior systems for delivering server-based applications were limited to providing static, pre-configured content, and could not dynamically create customized application interfaces adapted for the specific characteristics of diverse client devices (Compl. ¶48-49).
- The Patented Solution: The invention describes a server-based method that responds to user actions on a client device. The server receives an indication of the user's action, identifies "client variables" defining the client's environment, and invokes a version of a server-side "application component" configured for that specific environment. This component processes the user's action, produces interim data, and is used to create and package an updated user interface for the client (Compl. ¶50; ’378 Patent, Abstract).
- Technical Importance: This dynamic approach enabled a more flexible delivery of server-based applications, allowing interfaces to be optimized for a client's specific environment rather than relying on static, one-size-fits-all versions (Compl. ¶49).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶53-54).
- Claim 1 is a method claim comprising the following essential elements:
- Receiving, by a server from a client device, an indication of an actuation of a user interface.
- The client device is associated with "client variables defining an environment of the client device."
- In response, the server invokes a version of an "application component" configured for that environment, which processes the actuation and produces "interim data."
- The server creates, based on the client's environment and the interim data, an "updated version of the user interface."
- The server packages the updated version of the user interface for communication to the client.
- The complaint also asserts dependent claims 3-6, 9, 10, 12, 13, and 15-20 (Compl. ¶53).
U.S. Patent No. 9,092,546 - “CONTENT MANAGEMENT AND TRANSFORMATION SYSTEM FOR DIGITAL CONTENT”
- Technology Synopsis: This patent, related to the ’378 and ’963 patents, addresses the problem of delivering server-based applications to diverse remote clients (Compl. ¶20, ¶68). The patented solution involves a server receiving a request from a client that identifies client variables, obtaining a version of an application component selected for that client's environment, and then invoking it to create and package a tailored application interface (Compl. ¶70).
- Asserted Claims: Independent claim 1 is asserted (Compl. ¶72-73).
- Accused Features: The complaint accuses VMware's Horizon and vSphere products, which allegedly receive requests from a Horizon Client that include client machine information and deliver a customized desktop experience in response (Compl. ¶74-76).
U.S. Patent No. 7,016,963 - “CONTENT MANAGEMENT AND TRANSFORMATION SYSTEM FOR DIGITAL CONTENT”
- Technology Synopsis: This patent, the parent to the ’378 and ’546 patents, addresses delivering server-based application interfaces based on client characteristics and real-time user inputs (Compl. ¶20, ¶89-90). The solution involves receiving an invocation request, selecting an interface particular to the client device, and then responding to subsequent action requests by interpreting the required changes and providing updated rendering information (Compl. ¶92).
- Asserted Claims: Independent claim 2 is asserted (Compl. ¶94-95).
- Accused Features: The complaint accuses VMware's Horizon and vSphere products of practicing the claimed method by allowing a Horizon Client to select a remote application, after which the vSphere platform selects an appropriate interface and manages subsequent user interactions (Compl. ¶96-101).
U.S. Patent No. 6,816,464 - “METHOD, SYSTEM, AND COMPUTER PROGRAM PRODUCT FOR ROUTE QUALITY CHECKING AND MANAGEMENT”
- Technology Synopsis: This patent addresses the problem of selecting optimal network routes in a wide area network (WAN) (Compl. ¶113). The patented method involves identifying candidate routes, transmitting and receiving quality measurement packets to determine metrics like packet loss, jitter, and delay, and then scoring the routes based on these statistics and user-defined preferences (Compl. ¶115-116; ’464 Patent, Abstract).
- Asserted Claims: Independent claim 1 is asserted (Compl. ¶118-119).
- Accused Features: The complaint accuses VMware's NSX and SD-WAN by VeloCloud products, specifically alleging that the Dynamic Multi-Path Optimization (DMPO) feature monitors traffic paths, transmits measurement packets, and steers traffic based on the measured performance attributes (Compl. ¶120-126).
III. The Accused Instrumentality
Product Identification
- The complaint accuses VMware’s virtualization and software-defined networking platforms, including vSphere (with its components vCenter Server, vMotion, and ESX/ESXi hypervisor), Horizon/Horizon View, VMware’s SD-WAN solution (VeloCloud), NSX, and vSAN (Compl. ¶14, 30, 53, 118).
Functionality and Market Context
- The accused products form an integrated platform for virtualization and cloud computing (Compl. ¶14). VMware vSphere provides the core virtualization layer, allowing multiple virtual machines (VMs) to run on physical ESX/ESXi servers (Compl. ¶32). VMware Horizon is a virtual desktop infrastructure (VDI) solution that delivers virtual desktops and applications to end-users (Compl. ¶32). vSAN provides shared storage for VM state information, while vMotion enables the live migration of running VMs between physical hosts (Compl. ¶33, 36). The complaint contains a diagram illustrating how client devices connect through a View Connection Server to access virtual desktops running on ESXi hosts managed by a vCenter Server (Compl. p. 10).
- VMware NSX and SD-WAN by VeloCloud are networking products. The complaint alleges VeloCloud’s Dynamic Multi-Path Optimization (DMPO) functionality monitors multiple network paths (e.g., MPLS, broadband) and steers traffic over the optimal link based on real-time performance metrics to ensure application quality (Compl. ¶120-122).
IV. Analysis of Infringement Allegations
U.S. Patent No. 9,338,217 Infringement Allegations
| Claim Element (from Independent Claim 14) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| receiving a first request over a network at a server from at least one network accessible computer...the host computer configured to: implement a network accessible stored personal state, wherein the network accessible stored personal state is remotely stored at a remote server...the network accessible stored personal state including a network accessible stored prior state of a workspace of a previously used network accessible computer, and post the host computer for collaboration | VMware Horizon and vSphere receive requests from ESX/ESXi hosts. These hosts implement a personal state by using vSAN shared storage, which stores VM state information, including personalized settings and the real-time state of running VMs from previous sessions (Compl. p. 11). This allows for collaboration. | ¶32, 33, 34, 35 | col. 4:4-15 |
| determining, by the server, the workspace for the at least one network accessible computer from the network accessible stored personal state | The vSphere back-end (e.g., vCenter Server) determines the workspace by retrieving the stored VM state information from vSAN storage corresponding to the end user. This occurs during instantiation, recovery, or migration via vMotion. | ¶36 | col. 8:6-12 |
| loading, by the server, the workspace into the at least one network accessible computer, wherein the workspace includes one or more windows that were open at a time the previously used network accessible computer was previously used | The vSphere back-end loads the retrieved VM state files onto the target ESX/ESXi host. This state information allegedly includes all programs, processes, and windows that were being used at the time of a prior failure or migration. | ¶37 | col. 8:13-18 |
| receiving a second request over the network at the server from the client computer to collaborate with the host computer | The vSphere back-end (View Connection Server and vCenter Server) facilitates connection and re-connection requests from a Horizon client, including after a migration or failure situation, allowing collaboration with the hosted VM. The complaint includes a Horizon architecture diagram (Compl. p. 15). | ¶38 | col. 4:16-18 |
| facilitating by the server the collaboration of the host computer and the client computer over the network. | The View Connection Server and vCenter Server act as brokers to facilitate the connection between the Horizon client and the virtual machine running on the host, thereby facilitating collaboration. | ¶39 | col. 4:19-21 |
Identified Points of Contention:
- Scope Questions: Does the migration of an entire virtual machine's memory state as implemented by vMotion satisfy the claim limitation of "determining...the workspace" and "loading...the workspace"? A court may question whether this technical process is equivalent to the patent's description of loading a user's "personal state" and "workspace," which may imply a more granular, user-profile-centric operation.
- Technical Questions: The complaint equates "collaboration" with a client connecting to a remote VM (Compl. ¶38-39). The patent, however, may contemplate a more specific, multi-user interactive collaboration feature. The evidence required to show that a standard client-server VDI connection constitutes "collaboration" as claimed will be a central issue.
U.S. Patent No. 9,686,378 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| receiving, by the server from a client device, an indication of an actuation of a user interface provided on the client device, wherein the client device is associated with client variables defining an environment of the client device | When a user interacts with a Horizon Client (e.g., scroll, keyboard input), the vSphere back-end infrastructure receives an indication of this interaction. The client device is associated with variables such as the chosen display protocol (e.g., Blast Extreme, PCoIP) and hardware capabilities. | ¶55 | col. 1:57-62 |
| in response...invoking, by the server, a version of an application component that is configured for the environment of the client device, wherein the invoking of the application component processes the indication of the actuation...and produces interim data | The vSphere back-end processes the actuation information (e.g., via the Blast protocol using a WebSocket) and invokes necessary application components selected based on client variables. This process generates pixel data representing an updated interface, which is the interim data. | ¶56 | col. 2:1-7 |
| creating, by the server, based on the determined environment of the client device and using the interim data, an updated version of the user interface for display in the environment of the client device | The Blast protocol uses pixel encoding to generate an updated version of the user interface based on the user actuation and client variables. The complaint notes that Blast rapidly determines changed screen regions and provides this information to the encoder. | ¶57 | col. 2:8-12 |
| packaging, by the server, the updated version of the user interface for communication to the client device. | The updated pixel data is encoded and transmitted to the client via the network. A visual in the complaint shows motion vectors being used to efficiently encode a moved calculator window for transmission (Compl. p. 25). | ¶58 | col. 2:13-15 |
Identified Points of Contention:
- Scope Questions: A central question will be whether a remoting protocol's process of encoding pixel changes constitutes "creating...an updated version of the user interface" as claimed. The patent family appears to describe the transformation of content structure (e.g., transforming SGML), which may be fundamentally different from encoding a bitmap of screen changes for display.
- Technical Questions: The complaint maps the term "application component" to the back-end infrastructure that processes actuation information via the Blast protocol (Compl. ¶56). It is an open question whether this general server-side processing constitutes "invoking a version of an application component that is configured for the environment of the client device," which may require a more discrete, selectable software module as taught by the patent.
V. Key Claim Terms for Construction
From the ’217 Patent:
- The Term: "network accessible stored personal state"
- Context and Importance: The definition of this term is critical to determining whether the storage of an entire VM's state and memory on a shared datastore (like vSAN) falls within the claim scope. The infringement theory hinges on this equivalence.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states the personal state can include "the network addressable physical location of files used by the user, the 'state' of one or more computers...as last used by the user" which could be argued to encompass the entire VM state (col. 8:31-35).
- Evidence for a Narrower Interpretation: The abstract and summary focus on storing a user's "personal state" to allow migration, which might imply user-specific data and configuration files rather than the entire operating system and memory image of a virtual machine. Embodiments describe the state including workspaces and files (Fig. 28), which could suggest a narrower scope than a full VM snapshot.
From the ’378 Patent:
- The Term: "updated version of the user interface"
- Context and Importance: The infringement case depends on construing this term to cover a stream of encoded pixel data representing screen changes. If the term is construed more narrowly to require a structural or content-based transformation of the interface itself, the infringement theory may be challenged.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent is a continuation of a family ('963 patent) that discusses providing "rendering information" and transforming content into a format "compatible with the requesting device" (’963 Patent, col. 1:57-61). This could be argued to broadly cover any data that allows the client to display an updated view.
- Evidence for a Narrower Interpretation: The patent family's background extensively discusses transforming content between markup languages (e.g., SGML, XML, HTML) to suit different client devices (’963 Patent, col. 1:15-col. 4:65). This context suggests the "updated version of the user interface" may refer to a newly generated set of markup or application-level interface components, not a stream of encoded pixels from a remote framebuffer.
VI. Other Allegations
- Indirect Infringement: For each asserted patent, the complaint alleges active inducement, stating that VMware provides products and services to customers with the intent that they use them in an infringing manner. This is allegedly supported by VMware's product documentation, user guides, white papers, and marketing materials that instruct users on how to configure and operate the accused systems (e.g., Compl. ¶41, 44, 60, 82, 106, 128).
- Willful Infringement: The willfulness allegations are based on alleged knowledge of the patents-in-suit beginning "at least as early as the service upon VMware of this Complaint" (e.g., Compl. ¶43, 62, 84, 108, 130). This frames the willfulness claim as being based on post-suit conduct.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "workspace," as used in the ’217 patent in the context of a user's "personal state," be construed to cover the entire memory state and file system of a virtual machine being migrated between physical servers?
- A key evidentiary question will be one of technical equivalence: does a modern remoting protocol's function of detecting user input, encoding the resulting pixel-level screen changes, and streaming them to a client constitute the claimed method of "invoking an application component" to "create" and "package" an "updated version of the user interface" as recited in the ’378 patent family?
- A central dispute in the networking-related ’464 patent case will likely be one of functional distinction: can VMware demonstrate that its DMPO technology operates in a manner materially different from the claimed method of transmitting quality measurement packets, determining statistics for loss, delay, and jitter, and scoring routes based on those statistics and user-defined policies?