VMware Inc v. Cirba IP Inc

1. Case Identification

• Case #: IPR2021-01210
• Patent #: 10,951,459
• Filed: July 6, 2021
• Petitioner(s): VMware, Inc.
• Patent Owner(s): Cirba IP Inc.
• Challenged Claims: 1-63

2. Patent Overview

• Title: Techniques for Consolidating Systems in a Computing Environment
• Brief Description: The ’459 patent discloses methods and systems for determining consolidation solutions in a computing environment. The technology analyzes "source" and "target" computer systems, applying rule sets and workload stacking algorithms to technical and business parameters to assess compatibility and generate recommendations for moving applications and data to reduce the total number of systems.

3. Grounds for Unpatentability

Ground 1: Claims 1-63 are obvious over Taylor in view of Devanathan

• Prior Art Relied Upon: Taylor (Patent 7,836,452) and Devanathan (WO 2004/086185).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Taylor discloses the core limitations of the challenged claims. Taylor teaches a system for determining if multiple customer servers (source systems) can be consolidated onto fewer vendor servers (target systems). This system collects data on source systems (e.g., RAM, CPUs, OS, applications) and target systems, and evaluates compatibility based on technical parameters (e.g., CPU utilization, memory requirements) and business considerations (e.g., service level agreements (SLAs), geographic location). Petitioner asserted that Taylor’s analysis includes evaluating a specific source system against a specific target system, and also evaluating compatibility between multiple source systems being considered for placement on a single target. However, Petitioner contended Taylor is silent on issuing automated instructions to perform the consolidation. Devanathan allegedly remedies this gap by disclosing a deployment system that automatically installs applications on target machines that meet defined rules after a compatibility analysis is complete. Devanathan also explicitly teaches a user interface with a rules editor for defining compatibility rules, such as minimum disk space or memory, which corresponds to the user-definable rules limitation in claim 3.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Taylor's comprehensive analysis framework with Devanathan's automated deployment and enhanced rule-based evaluation features. The motivation would be to automate the well-known, manual process of server migration to gain recognized benefits like increased efficiency, speed, and reduced human error. Adding Devanathan’s specific rule-based checks would create a more robust and comprehensive analysis, which is a stated goal of Taylor.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in combining the references, as it involved implementing Devanathan’s known automation techniques into Taylor’s flexible analysis system to achieve the predictable result of an automated server consolidation platform.

Ground 2: Claims 1-63 are obvious over Taylor, Devanathan, and Rolia

• Prior Art Relied Upon: Taylor (Patent 7,836,452), Devanathan (WO 2004/086185), and Rolia ("A capacity management service for resource pools," July 2005).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination of Taylor and Devanathan by adding the teachings of Rolia. Petitioner argued Rolia discloses a capacity management service that places workloads onto shared resources based on "placement constraints." Critically, Rolia explicitly identified "software licensing constraints" as a key placement constraint that dictates which workloads must be associated with specific hardware resources. This teaching directly maps to business considerations recited in dependent claims, such as the evaluation of software licensing agreements.
  • Motivation to Combine: A POSITA, having already combined Taylor and Devanathan to create a server consolidation tool, would be motivated to incorporate Rolia's teachings to further enhance the system's business logic. Since reducing costs, including software licensing fees, is a primary driver for server consolidation, a POSITA would find it obvious to add evaluations for licensing constraints to make the consolidation analysis more commercially effective and comprehensive. Rolia expressly taught that its analysis could serve to lower software licensing costs.
  • Expectation of Success: Adding a specific, known business rule (licensing constraints) to the flexible and configurable analysis framework established by Taylor and Devanathan would be a straightforward implementation detail for a POSITA, leading to the predictable improvement of more cost-effective consolidation recommendations.

4. Key Claim Construction Positions

• "source system" and "target system": Petitioner adopted the patent’s explicit definitions: a "source system" is "a system from which applications and/or data are to be moved," and a "target system" is "a system to which [a source system's] applications and/or data are to be moved." This construction was central to mapping the "customer servers" in Taylor as source systems and "vendor servers" as target systems.
• "placed," "placing," and "placement": Petitioner argued that because these terms do not appear in the specification, they should be construed consistently with the patent's description of how consolidation occurs—namely, by "transferring" or "moving" applications and/or data from a source system to a target system. This interpretation allowed Petitioner to map prior art that discussed transferring and moving workloads onto the claim language.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under 35 U.S.C. §325(d), contending that the petition did not raise substantially the same art or arguments as those considered during prosecution. Although the primary reference, Taylor, was disclosed to the Examiner, Petitioner asserted it was never substantively discussed or applied against the claims. Furthermore, the key combination of Taylor with Devanathan was never before the Examiner. Petitioner maintained that the art in the petition was therefore not cumulative to the art applied during prosecution of the ’459 patent or its parent application.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-63 of the ’459 patent as unpatentable under 35 U.S.C. §103.