Netflix Inc v. Avago Technologies Intl Sales Pte Ltd

1. Case Identification

• Case #: IPR2021-00431
• Patent #: 7,457,722
• Filed: January 20, 2021
• Petitioner(s): Netflix, Inc.
• Patent Owner(s): Avago Technologies International Sales Pte. Limited
• Challenged Claims: 4, 6-8, 12, 14-16, 20, and 22

2. Patent Overview

• Title: Application Performance Monitoring
• Brief Description: The ’722 patent discloses a system for monitoring the performance of applications in a distributed computing environment. The system operates by detecting specific "life cycle events" of an application instance—such as its creation, destruction, or migration—and correlating those events with collected performance data to analyze the impact on system performance.

3. Grounds for Unpatentability

Ground 1: Obviousness over Masters - Claims 4, 6-8, 12, 14-16, 20, and 22 are obvious over Masters.

• Prior Art Relied Upon: Masters (Patent 7,051,098).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Masters, which was not considered during prosecution, discloses all elements of the challenged claims. Masters describes a Resource Management Architecture (RMA) for monitoring performance in a distributed environment that collects "application status and performance data" from multiple copies ("instances") of a scalable application.
    • For claims related to general life cycle events (e.g., claims 4, 12, 20, which depend from claims reciting creation, destruction, or migration), Petitioner asserted that Masters’ RMA detects events equivalent to the ’722 patent’s life cycle events. For example, Masters’ "scaling up" of an application instance is a "creation" event, and "scaling down" is a "destruction" event. Masters' system then explicitly correlates performance data (e.g., response time, CPU load) with these events, as shown in its "Resource Management Decision Review Display" (FIGS. 9A-9B), to support resource allocation decisions.
    • For claims specifically requiring migration (e.g., claims 6-8, 14-16, 22), Petitioner contended that Masters teaches "moving" an underperforming application instance to a new host to improve performance, which constitutes a migration event. Masters' RMA continuously monitors performance before and after such moves. The system's "Path Displays" (FIGS. 8A-8B) show performance changes when a new instance is created on a different host, thereby correlating performance data to the migration. Petitioner also argued that Masters teaches tracking application instances via a process ID (PID) and hostname, satisfying the "instance ID" limitation of claims 8 and 16.
  • Motivation to Combine (for §103 grounds): As this ground relies on a single reference, Petitioner argued that Masters itself teaches all limitations. Alternatively, to the extent any limitation was found to be missing, a person of ordinary skill in the art (POSITA) would have been motivated to modify Masters' system to include it. For example, a POSITA would correlate performance data with life cycle events to verify that resource allocation decisions made by the RMA (such as migrating an instance) actually resolved the performance issue that triggered the action. This was presented as a routine design choice to ensure system stability and effectiveness.
  • Expectation of Success (for §103 grounds): Petitioner asserted that a POSITA would have had a high expectation of success because Masters already discloses all the necessary tools for the claimed invention, including modules for collecting performance data, detecting life cycle events, correlating the data, and displaying the results.

4. Key Claim Construction Positions

• Petitioner contended that key terms did not require extrinsic construction because they are explicitly defined within the patent’s claims.
• "application instance": Defined in the claims as "a computer program executing on a computer system."
• "life cycle events": Defined in the claims to mean "at least one of: the creation of at least one of said one or more application instances, the destruction of at least one of said one or more application instances, and the migration of at least one of said one or more application instances."

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate under multiple frameworks.
• §314(a) / Fintiv Factors: Petitioner argued the parallel district court case was in its infancy, with no discovery or claim construction having occurred. It was noted that the presiding judge has previously been willing to grant stays pending inter partes review (IPR), weighing in favor of institution.
• §325(d): Petitioner asserted that denial under §325(d) was unwarranted because the sole prior art reference, Masters, was not before the Examiner during prosecution. Furthermore, Masters was argued to be substantially different from and more pertinent than the art of record (Casati), as Masters explicitly teaches collecting performance data and correlating it with life cycle events—the very features Applicants used to overcome the Examiner's rejections.
• General Plastic Factors: Although this was Petitioner’s second IPR against the ’722 patent, Petitioner argued it was not a true "follow-on" petition. This petition was filed promptly to challenge a new set of claims that the Patent Owner asserted in district court litigation after the first IPR was filed, making it a necessary response rather than an attempt to gain a tactical advantage.

6. Relief Requested

• Petitioner requests institution of IPR and cancellation of claims 4, 6-8, 12, 14-16, 20, and 22 of the ’722 patent as unpatentable.