VMware Inc v. Cirba IP Inc

1. Case Identification

• Case #: IPR2021-00008
• Patent #: 10,523,492
• Filed: October 1, 2020
• Petitioner(s): VMware, Inc.
• Patent Owner(s): Cirba IP Inc.
• Challenged Claims: 1-33

2. Patent Overview

• Title: System and Method for Consolidating Computer Systems
• Brief Description: The ’492 patent discloses a method and system for planning the consolidation of computer systems within an IT environment. The invention involves gathering and analyzing technical, business, and workload data from a pool of systems to perform multidimensional compatibility analyses, which are used to generate an optimal placement roadmap for migrating "source" systems to "target" systems.

3. Grounds for Unpatentability

Ground 1: Anticipation over Power - Claims 1-5, 9-16, 20-27, and 31-33 are anticipated under 35 U.S.C. §102(e) over Power.

• Prior Art Relied Upon: Power (Patent 7,616,583).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Power taught a computer-implemented method for planning the consolidation of hardware devices that anticipates the challenged claims. Power’s method began by conducting a "survey" of all systems in an environment to collect technical, financial, and functional attributes, directly corresponding to the ’492 patent's data gathering limitations. Power then evaluated these systems using rule sets, termed "future state criteria," to designate them as "source candidates" or "target candidates." Subsequently, Power performed an iterative, N-to-1 compatibility analysis to determine optimal source-target pairings by comparing attributes in a prioritized order and updating target capacities after each successful pairing, thus anticipating the core evaluation and placement analysis limitations of the independent claims.

Ground 2: Obviousness over Power in view of Kerr - Claims 1-33 are obvious over Power in view of Kerr.

• Prior Art Relied Upon: Power (Patent 7,616,583), Kerr (Patent 8,606,886).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Power taught the claimed analysis and planning method, but to the extent it did not explicitly teach the final step of physically "placing" the source systems onto target systems via virtualization, Kerr supplied this element. Kerr described "PowerConvert," a fully automated Physical-to-Virtual (P2V) utility that converts a physical source machine into a virtual machine (VM) and places it on a remote target server. The combination of Power's planning with Kerr's automated execution renders the claimed methods obvious.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA), after using Power to devise an optimal consolidation plan, would be motivated to use a known, automated P2V tool like Kerr's PowerConvert to execute that plan. This combination would achieve significant efficiencies over manual consolidation—including reduced administrative costs, faster migrations, and less server downtime—which directly aligns with the optimization goals stated in both references.
  • Expectation of Success: A POSITA would have a reasonable expectation of success. Virtual machine technology was widely used, and Power itself acknowledged that target systems might need reconfiguration. Combining Power's planning output with Kerr's well-defined execution tool represented a straightforward application of known technologies to achieve a predictable and desirable result.

Ground 3: Obviousness over Van Hoose in view of Le - Claims 1-33 are obvious over Van Hoose in view of Le.

• Prior Art Relied Upon: Van Hoose (Application # 2004/0034577), Le (Patent 7,356,679).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Van Hoose, like Power, taught a method for analyzing an "inventory" of computer systems for consolidation. Van Hoose evaluated systems based on technical (e.g., hardware architecture, OS versions), workload (e.g., CPU, memory requirements), and business (e.g., financial ROI, upgrade cost) constraints. It explicitly described performing N-by-N compatibility analysis (by grouping "like elements" and checking "scenarios" for incompatibility) and N-to-1 analysis (by evaluating source server scenarios against potential target servers). Le, similar to Kerr, disclosed a P2V utility for migrating physical systems to a virtual host computer to achieve consolidation.
  • Motivation to Combine: A POSITA implementing Van Hoose's "box consolidation" concept—where different servers are merged into a single physical "box" but each retains its own operating system—would be motivated to use Le's P2V technology. Virtualization provided a natural and convenient way to achieve this, allowing multiple, distinct OS environments to run on a single hardware host, thereby fulfilling the objective described in Van Hoose while overcoming hardware compatibility issues inherent in non-virtual migrations.
  • Expectation of Success: The combination would be expected to succeed, as it involved using a known technical solution (Le's P2V tool) to implement the consolidation strategy produced by Van Hoose's analytical framework. This represented a common and well-understood approach to achieving IT efficiency.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate because the petition presented art and arguments that were materially different from those considered during prosecution. Petitioner contended the Examiner allowed the claims based on an incorrect finding that the prior art of record lacked teachings of (1) multidimensional compatibility analysis involving business constraints, and (2) the "placing" of source systems onto targets. Petitioner asserted that both Power and Van Hoose explicitly taught the former, and that Power, Kerr, and Le all taught the latter. Furthermore, key references like Kerr and Le, which disclose the practical implementation of virtualized consolidation, were never considered by the Examiner.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of all claims (1-33) of the ’492 patent as unpatentable.