IBM Corp v. VirtaMove Corp

1. Case Identification

• Case #: IPR2025-00599
• Patent #: 7,519,814
• Filed: February 7, 2025
• Petitioner(s): International Business Machines Corp.
• Patent Owner(s): Virtamove, Corp.
• Challenged Claims: 1, 2, 6, 9, and 10

2. Patent Overview

• Title: System for Deploying Software Containers Across Servers with Different Operating Systems
• Brief Description: The ’814 patent discloses a computer system architecture for managing and deploying server applications using software containers. The technology purports to solve application separation issues by packaging applications with necessary system files into containers that can run independently on multiple servers, even those with different operating systems, while sharing the kernel of the host operating system (OS).

3. Grounds for Unpatentability

Ground 1: Obviousness over McMillan - Claims 1, 2, 6, 9, and 10 are obvious over [McMillan](https://ai-lab.exparte.com/case/ptab/IPR2025-00599/doc/1005) alone or in view of [Gaines](https://ai-lab.exparte.com/case/ptab/IPR2025-00599/doc/1007) and/or [Tormasov](https://ai-lab.exparte.com/case/ptab/IPR2025-00599/doc/1011).

• Prior Art Relied Upon: McMillan (Patent 7,673,308), Gaines (Patent 5,961,582), and Tormasov (Application # 2002/0124072).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that McMillan discloses all limitations of the challenged claims. McMillan teaches "virtual OS environments" that function as the claimed "secure containers," which are stored on a central server accessible by multiple computers. These containers run independently, include applications and copies of OS files, and exclude their own kernel, instead relying on the host OS kernel. For dependent claims, Petitioner asserted McMillan teaches an execution file (claim 2) through its disclosure of application EXE files; teaches assigning a unique identity (claim 6) through its uniquely named environments (e.g., "Env1"); teaches associating hardware resource information (claim 9) as its environments share base OS attributes like hardware and networking information; and teaches isolation (claim 10) as its environments are described as independent and cannot affect the base OS or other environments.
  • Motivation to Combine: Although McMillan alone allegedly renders the claims obvious, Petitioner argued a person of ordinary skill in the art (POSITA) would also combine the references. McMillan suggests its approach is applicable to other OSs. A POSITA would combine McMillan with Gaines's explicit teaching of a distributed environment with servers running different OSs to improve system flexibility and versatility, a well-known design goal. Further, a POSITA would apply Tormasov’s teaching of using IP addresses for virtual environments as a known technique to identify and access McMillan’s networked containers.
  • Expectation of Success: The proposed modification of McMillan to support multiple OSs was described as a routine programming task. Combining known networking and identification techniques from Gaines and Tormasov with McMillan's container architecture would involve the application of known methods to achieve predictable results.

Ground 2: Obviousness over Schaefer - Claims 1, 2, 6, 9, and 10 are obvious over [Schaefer](https://ai-lab.exparte.com/case/ptab/IPR2025-00599/doc/1008) alone or in view of Gaines and/or Tormasov.

• Prior Art Relied Upon: Schaefer (Application # 2002/0174215), Gaines (Patent 5,961,582), and Tormasov (Application # 2002/0124072).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued Schaefer teaches "private contexts" created by an "OS Guard" that function as the claimed secure containers. Schaefer’s system is designed for networked environments, is explicitly applicable to different OSs (e.g., Windows, UNIX), and uses copies of system files to create isolated environments that run on top of the host OS, thereby excluding a kernel. Petitioner highlighted that the European counterpart to the ’814 patent was rejected over Schaefer. For dependent claims, Petitioner argued Schaefer's system implies an execution file is needed to start applications (claim 2); its "loader subsystem" requires a unique identity to manage containers (claim 6); it monitors "shared system resources" including hardware (claim 9); and its OS Guard isolates contexts from each other and the base OS (claim 10).
  • Motivation to Combine: A POSITA would combine Schaefer’s container technology with Gaines's explicit teachings on multi-OS server environments to achieve the known benefits of increased system versatility and an expanded user base. Likewise, Tormasov’s teaching of using IP addresses to identify virtual environments would be an obvious application of a known technique to improve Schaefer’s networked system by enabling container location and access.
  • Expectation of Success: Integrating the known concepts of a multi-OS architecture from Gaines and IP-based identification from Tormasov into Schaefer's system represented an application of known techniques to a known system to yield predictable improvements.

4. Key Claim Construction Positions

• The parties in related litigation agreed to several constructions, including that the preamble of claim 1 is limiting and defining "secure container" as an environment where application sets are insulated from each other.
• A key dispute exists over the term "disparate computing environments." Petitioner argued for the patent's own lexicographical definition: "environments where computers are stand-alone or where there are plural computers and where they are unrelated." The Patent Owner proposed a narrower construction in litigation: "environments run by standalone computers."

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under 35 U.S.C. § 325(d), asserting that the Examiner did not substantively consider the primary prior art references (McMillan and Schaefer) or the proposed combinations during prosecution. While Schaefer was on an Information Disclosure Statement, it was not relied upon or discussed.
• Petitioner also argued against discretionary denial under § 314(a) based on Fintiv factors. Petitioner stipulated that it will not pursue the asserted grounds in co-pending district court litigation if the inter partes review (IPR) is instituted. Petitioner further contended that the litigation is in an early stage and that the petition presents compelling evidence of unpatentability, which weighs in favor of institution.

6. Relief Requested

• Petitioner requests institution of an IPR and cancellation of claims 1, 2, 6, 9, and 10 of the ’814 patent as unpatentable.