HaShiCorp Inc v. Invincible IP LLC

1. Case Identification

• Case #: IPR2022-00565
• Patent #: 8,938,634
• Filed: February 14, 2022
• Petitioner(s): HashiCorp, Inc.
• Patent Owner(s): Invincible IP LLC
• Challenged Claims: 1-22

2. Patent Overview

• Title: Power Savings in Data Centers
• Brief Description: The ’634 patent relates to methods and systems for achieving power savings in data centers. The technology involves identifying "user-provided hardware independent power saving codes" from multiple virtual machines (VMs), converting them into device-specific power management messages, and providing those messages to a computing system to enable or disable specific hardware devices.

3. Grounds for Unpatentability

Ground 1: Claims 1-2, 5-6, 10, 12, 15-16, and 20 are obvious over Tewari and Jain.

• Prior Art Relied Upon: Tewari (Application # 2006/0005184) and Jain (Application # 2011/0239010).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Tewari disclosed all elements of the core method within a single computer hosting multiple VMs. Specifically, Tewari’s virtual machine monitor (VMM) identifies system management requests (the "power saving codes") from applications running in different VMs, aggregates potentially conflicting requests into a single hardware state, and issues a command (a "device power management message") to alter a device's power state. Petitioner asserted that Jain supplied the claimed "data center" context, teaching that hosting multiple VMs on networked servers was common and that managing power across these servers based on user policies was a known problem.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Tewari’s method for resolving conflicting power requests from multiple VMs with Jain’s disclosure of a typical data center environment. Tewari’s hardware-independent approach, which filters requests relevant to the specific underlying hardware, would be particularly beneficial in Jain's environment where VMs migrate between servers with different hardware configurations. This combination would predictably improve power management in a standard multi-tenant data center.
  • Expectation of Success: A POSITA would have a reasonable expectation of success, as combining Tewari’s VM management techniques with Jain's data center architecture involved applying known power management principles to a common, well-understood environment to achieve the predictable result of coordinated power savings.

Ground 2: Claims 3 and 13 are obvious over Tewari, Jain, and Malueg.

• Prior Art Relied Upon: Tewari (Application # 2006/0005184), Jain (Application # 2011/0239010), and Malueg (Patent 7,065,659).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground added Malueg to the base combination of Tewari and Jain to teach the limitations of claims 3 and 13, which require providing an Application Programming Interface (API) for a programmer to define and insert the power-saving codes into application code. Petitioner argued that Malueg explicitly disclosed a power management system with an "application interface" that allows applications to define custom power states and invoke them to control device power.
  • Motivation to Combine: A POSITA would be motivated to incorporate an API as taught by Malueg into the Tewari/Jain system as a standard and efficient way to implement the claimed functionality. Since Tewari’s system relies on application-provided codes, providing an API is a well-known, straightforward method to enable programmers to define and use those codes, thus facilitating the flexible power management central to Tewari and Jain.

Ground 3: Claims 7-8 and 17-18 are obvious over Tewari, Jain, and Papathanasiou.

• Prior Art Relied Upon: Tewari (Application # 2006/0005184), Jain (Application # 2011/0239010), and Papathanasiou ("Increasing Disk Burstiness for Energy Efficiency," a 2002 technical report).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground added Papathanasiou to the Tewari/Jain combination to address claims requiring codes that indicate a future need for a disabled device and a system operative to "warm up" the device in advance. Petitioner asserted Papathanasiou taught a predictive spin-down/spin-up policy for hard disk drives that saves energy by predicting future access needs and pre-emptively spinning up the disk so it is available just in time, avoiding latency.
  • Motivation to Combine: A POSITA would integrate Papathanasiou's predictive techniques to enhance the power-saving capabilities of the Tewari/Jain system. The goals of saving energy while improving performance, as taught by Papathanasiou, directly align with the objectives of the base combination, making this a logical extension for more fine-grained power management.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on the core Tewari/Jain combination in view of: Jackson (for adding a power simulator); Ewing (for logging power usage and providing monetary benefits); Fitzgerald (for using a web service); and Ben-Yehuda (for using paravirtualized drivers).

4. Key Claim Construction Positions

• Petitioner argued for a construction of the term "user-provided hardware independent power saving codes" based on its ordinary meaning and the patent’s specification.
  • "User-provided" was argued to encompass codes inserted into an application by a programmer, which are then provided to the data center for execution, rather than being limited to codes entered by a human user at runtime.
  • "Hardware independent" was argued to mean that the codes do not require specific knowledge of the underlying hardware, which is consistent with the nature of virtualization where applications in VMs are abstracted from the physical hardware.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be improper. It was contended that the primary references in the petition, Tewari and Jain, were never presented to or considered by the Examiner during prosecution. Furthermore, Petitioner argued the asserted prior art was not cumulative because it teaches the specific limitations that were added to the claims to overcome the Examiner’s rejections, such as identifying the "relevant" portion of codes and the use of paravirtualized drivers.

6. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) for claims 1-22 of Patent 8,938,634 and requests that all challenged claims be found unpatentable and canceled.