VMware Inc v. Cirba IP Inc

1. Case Identification

• Case #: IPR2021-01211
• 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
• Brief Description: The ’459 patent discloses techniques for improving computing efficiency by calculating "consolidation solutions" for moving applications and data from "source systems" to "target systems." The system analyzes technical, business, and workload parameters to determine system compatibility and generate a consolidation roadmap to reduce the total number of systems.

3. Grounds for Unpatentability

Ground 1: Claims 1-63 are obvious over Mateo in view of Sieroka

• Prior Art Relied Upon: Mateo (Patent 8,347,297) and Sieroka (Application # 2006/0107087).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Mateo, like the ’459 patent, discloses a method and system for optimizing the distribution of source servers onto a smaller number of target servers through virtualization. Mateo’s system collects data on source and target servers (e.g., hardware resources, utilization, functional characteristics) and uses an iterative process to determine compatible placements based on a set of rules and constraints (e.g., resource requirements, clustering rules, network zones, availability). This process allegedly meets the limitations of claim 1 regarding collecting data and evaluating compatibility based on rules against system attributes and resource utilization. Petitioner contended that while Mateo teaches calculating the optimal placement, it only suggests integrating this into a control algorithm. Sieroka, which addresses the same problem of data center consolidation, was asserted to cure this deficiency by disclosing a fully automated system. Sieroka’s “PowerOptimize” module suggests placements, which are then automatically implemented by its “PowerConvert” module that issues instructions to move systems.
  • Motivation to Combine: Petitioner asserted a POSITA would combine Mateo and Sieroka to automate the placement process suggested by Mateo. Mateo expressly suggests its method could be integrated into a "dynamic server allocation mechanism," and Sieroka provided a well-known, commercially available example of such a mechanism. Combining them would have been a predictable implementation of Mateo's suggestion to achieve the known benefits of automation, such as increased efficiency and fewer errors.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining these systems, as they addressed the same technical problem using similar virtualization and rule-based consolidation concepts.

Ground 2: Claims 1-63 are obvious over Mateo and Sieroka in view of Rolia

• Prior Art Relied Upon: Mateo (Patent 8,347,297), Sieroka (Application # 2006/0107087), and Rolia (“A capacity management service for resource pools,” July 2005).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground incorporated the combination of Mateo and Sieroka from Ground 1 and added Rolia to address claim limitations related to specific business considerations. Petitioner argued that Rolia, which describes a capacity management service for consolidating workloads, explicitly teaches using "placement constraints" during placement analysis. Specifically, Rolia discloses evaluating software licensing constraints as a factor in determining where to place virtual machines. Petitioner asserted this teaching directly maps to the evaluation of "business considerations" recited in claims such as claims 7 and 8, which list "software licensing agreements" as an example.
  • Motivation to Combine: A POSITA, seeking to build the automated consolidation system described in Ground 1, would have been motivated to incorporate Rolia’s teachings to further enhance the system's optimization capabilities. Adding software licensing as a constraint is a logical extension for a system designed to improve efficiency, as it directly addresses the known goal of reducing software licensing costs. Petitioner argued that both Mateo and Sieroka describe flexible systems designed to accommodate multiple parameters, making the addition of another known constraint from Rolia a simple and beneficial modification.
  • Expectation of Success: Incorporating an additional, known optimization parameter like software licensing constraints into the flexible, rule-based framework of Mateo would have been a straightforward modification with a high expectation of success.

4. Key Claim Construction Positions

• "source system" and "target system": Petitioner argued for adopting 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."
• "placed," "placing," and "placement": Petitioner noted these terms do not appear in the patent’s specification outside the claims. It proposed treating them consistently with the specification’s description of consolidation, which occurs via the transfer or movement of applications and data from a source system to a target system.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate. Although Mateo and Sieroka were disclosed to the USPTO during prosecution of the ’459 patent, Petitioner contended that the examiner never substantively discussed or applied either reference against the claims. Therefore, the petition raised new arguments and analysis not previously considered by the examiner.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-63 of Patent 10,951,459 as unpatentable.