VMware Inc v. Good Technology Corp

1. Case Identification

• Patent #: 6,151,606
• Filed: October 6, 2014
• Petitioner(s): VMware, Inc.
• Patent Owner(s): Good Technology Corporation
• Challenged Claims: 1, 10, 21, 25, and 45

2. Patent Overview

• Title: System and Method for Using a Workspace Data Manager to Access, Manipulate and Synchronize Network Data
• Brief Description: The ’606 patent discloses a system for managing data between a server and a client device, referred to as an "untrusted client site." The system allows the client to "borrow" workspace data (e.g., emails, documents), manipulate it locally, synchronize the changes back to the server, and then automatically delete the data from the client device upon completion.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1, 10, and 21 under 35 U.S.C. §102

• Prior Art Relied Upon: Clark (Patent 5,666,530)
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Clark disclosed every element of claims 1, 10, and 21. Clark teaches a handheld computer system (a "smart phone" under the proposed construction) with application software (a "workspace data manager") that automatically synchronizes files with a host computer. Clark’s system downloads files related to a calendar event to the handheld, allows a user to modify them, synchronizes the modified data back to the host, and then deletes the files from the handheld to conserve space, which Petitioner contended constitutes "automatically disabling" access.
  • Key Aspects: The argument relied on construing Clark's handheld computer with telephonic capabilities as a "smart phone" and its automatic, event-driven file deletion as meeting the "automatic disabling" and "de-authorization indication" limitations.

Ground 2: Obviousness of Claims 1, 10, and 21 over Clark in view of Isikoff

• Prior Art Relied Upon: Clark (Patent 5,666,530) and Isikoff (Patent 5,748,084)
• Core Argument for this Ground:
  • Prior Art Mapping: This ground asserted that to the extent Clark alone did not disclose every limitation, the combination with Isikoff rendered the claims obvious. Clark provided the base system of a handheld device that temporarily downloads, manipulates, and synchronizes data. Isikoff, which was not considered during prosecution, disclosed a security system for portable devices that included a "remote wipe" feature, where a remote signal could cause the device to delete its data if lost or stolen.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would have been motivated to add Isikoff’s remote wipe security feature to Clark’s handheld device. Since Clark’s device was portable and stored sensitive personal information (calendar data, etc.), adding a feature to remotely delete that data in case of theft would have been a predictable and commonsense improvement to enhance security.
  • Expectation of Success: The combination would have been straightforward. Both patents operate in the field of portable electronic devices connected to networks, and Clark already disclosed the necessary architecture for connecting its handheld to a remote host, which could be adapted to receive a remote wipe command as taught by Isikoff.

Ground 3: Obviousness of Claims 1, 10, and 21 over Nokia, Hawkins, and Isikoff

• Prior Art Relied Upon: Nokia (“Nokia 9000i: Owner’s Manual”), Hawkins (Patent 6,006,274), and Isikoff (Patent 5,748,084)
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued this combination taught all limitations. The Nokia manual described the 9000i Communicator, a "smart phone" with applications ("workspace data manager") that could download data from a remote host via Telnet. Hawkins was cited to supply a more robust data synchronization method than the simple file transfers in Nokia. Isikoff was again cited for its remote wipe capability to teach the "automatic disabling" in response to a remote "de-authorization indication."
  • Motivation to Combine: A POSITA would combine Nokia and Hawkins to improve Nokia's data handling with true synchronization, preventing version conflicts. Adding Isikoff’s security features to the portable Nokia device would be a logical step to protect user data, especially for a device designed for travel.
  • Expectation of Success: Modifying Nokia to include Hawkins's synchronization and Isikoff's remote wipe would be predictable, as the Nokia device already possessed the required network connectivity and processing capabilities.

Ground 4: Obviousness of Claims 25 and 45 over Clark, Boyer, and Isikoff

• Prior Art Relied Upon: Clark (Patent 5,666,530), Boyer (Patent 6,401,112), and Isikoff (Patent 5,748,084)
• Core Argument for this Ground:
  • Prior Art Mapping: This ground targeted claims 25 and 45, which recite interacting first and second client sites. Petitioner asserted Clark, as modified by Boyer, taught these limitations. Clark provided the first client site (the handheld device). Boyer taught a system for synchronizing email state between a portable device and a desktop computer (the second client site) via a remote server, where the desktop client could generate and store workspace data (the email state). Isikoff was again added to supply the remote disabling feature.
  • Motivation to Combine: A POSITA would have been motivated to implement the email system described in Clark using the more detailed client-server synchronization architecture of Boyer. This would be a predictable implementation choice to ensure data consistency between a handheld and host machine. The motivation to add Isikoff remained the same: enhancing security.

4. Key Claim Construction Positions

• smart phone: Petitioner proposed the construction "A device that integrates computing capabilities and telephonic capabilities." This broad construction was important for mapping prior art like Clark's handheld computer, which had a fax modem and cellular connectivity, onto the claim language.
• untrusted client site: Petitioner proposed "A computer accessible to unprivileged users." This construction focused on the need for authentication rather than physical location (e.g., "outside a firewall"), broadening the applicability to prior art systems that required user login to access a host.
• a de-authorization indication: Petitioner proposed "an indication causing the automatic disabling." This construction was key to arguing that the indication did not need to be the immediate cause of deletion, but could instead trigger a sequence of events (like synchronization followed by deletion) that ultimately resulted in disabling access.
• temporary storage: Petitioner proposed "non-permanent storage," arguing this was consistent with the plain meaning and the Examiner's interpretation during reexamination. This allowed any system where data was eventually deleted to meet the limitation.

5. Key Technical Contentions (Beyond Claim Construction)

• Priority Date: Petitioner argued the ’606 patent was not entitled to a priority date earlier than its filing date of January 16, 1998. The petition asserted that the patent failed to properly specify the relationship to its alleged priority applications as required by patent office rules. Further, it argued the priority documents did not provide adequate written description support for key claim features, such as "automatically disabling" the client and a "de-authorization indication at the remote site." This argument was critical to establishing that the cited references qualified as prior art.

6. Arguments Regarding Discretionary Denial

• Timeliness Under §315(b): Petitioner preemptively argued that the petition was not time-barred, even though a complaint was served on AirWatch LLC more than a year prior. Petitioner VMware acquired AirWatch after the complaint was served. Petitioner contended that, based on Board precedent, privity is determined at the time of service. Because VMware was not in privity with AirWatch at that time, the one-year statutory bar under §315(b) did not apply to VMware.

7. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1, 10, 21, 25, and 45 of Patent 6,151,606 as unpatentable.