VMware Inc v. Cirba IP Inc

1. Case Identification

• Case #: PGR2021-00098
• 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: System for Calculating Computer System Consolidation Solutions
• Brief Description: The ’459 patent discloses techniques for calculating "consolidation solutions" to improve the efficiency of a computing environment. The system analyzes technical, business, and workload parameters to generate recommendations for moving applications and data from "source systems" to "target systems," with the goal of reducing the total number of systems in operation.

3. Grounds for Unpatentability

Ground 1: Claims 1-63 are unpatentable under 35 U.S.C. §112(a) for lacking written description support in the priority applications.

• Prior Art Relied Upon: The petition’s argument relies on demonstrating a lack of support in the patent’s own alleged priority applications, primarily the ’936 application (Application # 11/738,936) and its incorporated references: the ’355 application (Application # 11/535,355), the ’308 application (Application # 11/535,308), and the ’322 application (Application # 60/745,322).
• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that the ’459 patent is eligible for Post-Grant Review (PGR) because its claims contain subject matter not described in its pre-AIA priority applications. This alleged lack of support breaks the priority chain, giving the patent an effective filing date of November 19, 2019, and simultaneously renders claims 1-63 invalid under §112(a). The core of the argument focused on two key limitations added during prosecution that Petitioner contended are absent from the entire priority chain:

    1. Evaluating "already placed" systems: The independent claims require evaluating a source system against other source systems that are "either already placed on the specific target system" or being evaluated for placement. Petitioner asserted that the priority applications, including the ’936 application, exclusively describe a prospective consolidation process. The disclosed analyses (1-to-1, N-to-1, N-by-N) evaluate systems that are candidates to be transferred. Once a system is designated for transfer in the disclosed analytical models, it is removed from the pool of available systems for subsequent iterations. Therefore, the priority documents allegedly never describe a scenario where a system is evaluated against another that has already been placed or consolidated, as the process inherently prevents such a condition.
    2. "Issuing instructions to place" a system: The independent claims require "issu[ing] instructions to place" a source system on a target system based on a determined placement. Petitioner argued that the priority applications describe a purely analytical technique that concludes with the generation of a report, roadmap, or compatibility score for a user's consideration. The disclosures consistently stop short of describing any implementation step, such as generating or issuing software instructions to automatically execute the recommended transfers or placements. The output is a set of recommendations, not executable commands. Petitioner contended that implementing such transfers would have been a complex, non-trivial step requiring specific disclosure, which is absent from the priority documents.

  • Motivation to Combine (for §103 grounds): Not applicable. This ground is based on 35 U.S.C. §112.

  • Expectation of Success (for §103 grounds): Not applicable.

  • Key Aspects: The central thesis is that Patent Owner amended the claims to include new concepts not present in the original specification or its priority chain, rendering the patent subject to PGR and invalid under §112. The argument is that the priority applications describe only a theoretical analysis of potential future transfers, whereas the claims encompass the evaluation of systems post-transfer and the automated implementation of those transfers.

4. Key Claim Construction Positions

• "source system" / "target system": Petitioner argued that the specification of the priority applications, such as the ’936 application, expressly defines these terms in a prospective manner. A "source system" is defined as "a system from which applications and/or data are to be moved," and a "target system" is one "to which [they] are to be moved." Petitioner asserted this forward-looking definition is fundamentally incompatible with the claims' concept of a source system that has "already been placed," as a system whose data has been moved is no longer a "source" under the specification's own definition.

5. Relief Requested

• Petitioner requests institution of post-grant review and cancellation of claims 1-63 as unpatentable for lacking written description support under 35 U.S.C. §112(a).