VMware Inc v. Good Technology Software Inc

1. Case Identification

• Case #: Unassigned
• Patent #: 7,702,322
• Filed: August 18, 2014
• Petitioner(s): VMware, Inc.
• Patent Owner(s): Good Technology Software, Inc.
• Challenged Claims: 1-9 and 12-18

2. Patent Overview

• Title: Method and System for Distributing and Updating Software in Wireless Devices
• Brief Description: The ’322 patent discloses a method and system for managing the distribution of software updates to wireless devices. The system involves a "customer site" that receives notice of available updates, applies a "software policy" to determine which devices are eligible, and notifies the devices, which then communicate with a web-based server to download the appropriate files after the server consults a "compatibility matrix".

3. Grounds for Unpatentability

Ground 1: Claims 1-9 and 12-18 are anticipated by or obvious over Marolia.

• Prior Art Relied Upon: Marolia (Patent 7,480,907)
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Marolia discloses every element of the challenged claims. Marolia describes an update management system for mobile handsets that includes a "customer site" (the update environment), a management console, and an update store/device server. Petitioner asserted that Marolia’s system receives messages about available updates, assigns a "software policy" by placing updates in a "testing" state to associate them with specific users or devices, and notifies those devices. The system then uses device-specific information (e.g., manufacturer, model, firmware) to select an update, which Petitioner contended is equivalent to searching a "compatibility matrix" to identify rules for updates.
  • Key Aspects: Petitioner emphasized that Marolia discloses the key "compatibility matrix" limitation, which was the feature that led to the allowance of the ’322 patent. As an alternative, Petitioner argued that to the extent any minor difference exists, the claims would have been obvious over Marolia’s disclosure.

Ground 2: Claims 1-6 and 12-18 are obvious over Chia in view of Hamasaki.

• Prior Art Relied Upon: Chia (Patent 8,555,273) and Hamasaki (Patent 7,921,182).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Chia discloses most of the claimed system, including an update management system with a management console, a "customer site," and a web-based update store. Chia’s system assigns updates to a "download group," which Petitioner equated to the claimed "software policy." Crucially, Chia’s update store uses a matrix (Chia, Fig. 24) associating device characteristics like firmware version and manufacturer with specific updates, which Petitioner contended is a "compatibility matrix." Petitioner argued that Hamasaki, which discloses a system for managing devices using "virtual user groups," supplies the one element allegedly not explicit in Chia: transmitting a notification to devices based on their membership in a group (the software policy).
  • Motivation to Combine: A person of ordinary skill in the art (POSA) would combine Chia and Hamasaki to improve Chia's system by adding Hamasaki's targeted notification feature. This would improve efficiency by sending update notifications only to eligible devices within a "download group." Petitioner further argued the combination was obvious because both patents were assigned to the same company (BitFone), share an inventor, and address the same technical problem of wireless device management, making the integration of their respective features a predictable improvement.
  • Expectation of Success: A POSA would have a high expectation of success because combining a known grouping feature (Chia's "download groups") with a known notification feature for such groups (Hamasaki) is a straightforward application of known techniques to achieve a predictable result.

Ground 3: Claims 7-9 are anticipated by or obvious over Chia.

• Prior Art Relied Upon: Chia (Patent 8,555,273).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that independent claim 7 recites a subset of the steps of claim 1, focusing on the actions performed by the web-based server and the wireless device (transmitting device info, searching a compatibility matrix, receiving a download message, and downloading). Petitioner asserted that Chia's disclosure of a wireless device sending parameters to an update store, which then uses a matrix (Fig. 24) to identify the correct update package and sends a message back to the device to initiate the download, meets all limitations of claims 7-9. Dependent claims 8 and 9 were also alleged to be disclosed by Chia.
  • Key Aspects: This ground provided a more focused challenge on claims 7-9, arguing that Chia alone, without any secondary reference, contains all the necessary elements for this subset of server- and device-side actions.

4. Key Claim Construction Positions

• "compatibility matrix": Petitioner proposed this term be construed as "one or more associations between wireless device characteristics and updates." This construction was central to the argument that both Marolia and Chia disclose the limitation, as they describe systems that associate device data (like model or firmware version) with specific update files.
• "software policy": Petitioner proposed this term be construed as "one or more associations between updates and users or devices." This construction allowed Petitioner to map the term to features in the prior art like Marolia’s "testing" state and Chia’s "download groups," which both function to link specific updates to specific sets of devices.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the IPR petition was not time-barred under 35 U.S.C. §315(b). The Patent Owner had sued AirWatch, LLC, alleging infringement of the ’322 patent on November 15, 2012. Petitioner VMware, Inc. did not acquire AirWatch until February 2014. Citing PTAB precedent (e.g., ABB Tech. Ltd. v. IPCO, LLP), Petitioner contended that the relevant time for determining privity for a §315(b) bar is the date the complaint was served. Because VMware was not in privity with AirWatch in November 2012, it argued it was not statutorily barred from filing the petition.

6. Relief Requested

• Petitioner requested the institution of an inter partes review (IPR) and the cancellation of claims 1-9 and 12-18 of Patent 7,702,322 as unpatentable.