UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________________________
`
`MICROSOFT CORPORATION,
`
`Petitioner,
`
`v.
`
`DAEDALUS BLUE, LLC,
`
`Patent Owner.
`
`____________________________________
`
`Case No. IPR2021-00832
`U.S. Patent No. 8,381,209
`Original Issue Date: February 19, 2013
`
`Title: MOVEABLE ACCESS CONTROL LIST (ACL) MECHANISMS FOR
`HYPERVISORS AND VIRTUAL MACHINES AND VIRTUAL PORT
`FIREWALLS
`___________________________________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,381,209
`PURSUANT TO 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,381,209
`
`TABLE OF CONTENTS
`
`Page
`
`INTRODUCTION ........................................................................................... 1
`I.
`II. MANDATORY NOTICES (§ 42.8(B)) .......................................................... 4
`A.
`Notice of Real Parties-in-Interest (37 C.F.R. § 42.8(b)(1)) .................. 4
`B.
`Notice of Related Matters (37 C.F.R. § 42.8(b)(2)) .............................. 4
`C.
`Notice of Lead and Back-Up Counsel and Service Information (37
`C.F.R. § 42.8(b)(3-4), 41.10(a)) ............................................................ 4
`III. REQUIREMENTS FOR INTER PARTES REVIEW (37 C.F.R. § 104) ........ 5
`A.
`Grounds for Standing (37 C.F.R. § 42.104(A)) .................................... 5
`B.
`Identification of Claims Being Challenged (37 C.F.R. § 42.104(B))
`and Relief Requested ............................................................................. 6
`IV. THE BOARD SHOULD NOT EXERCISE ITS DISCRETION TO DENY
`INSTITUTION ..............................................................................................10
`V. THE ʼ209 PATENT AND ITS PROSECUTION HISTORY .......................14
`A.
`Summary of the ʼ209 Patent ................................................................14
`B.
`Summary of the Prosecution History ..................................................19
`VI. CLAIM CONSTRUCTION ..........................................................................21
`VII. STATE OF THE ART ...................................................................................21
`A.
`Level of Ordinary Skill in the Art .......................................................21
`B.
`General Information Known to a POSITA .........................................21
`VIII. DESCRIPTION OF THE PRIOR ART ......................................................26
`A.
`Dhawan ................................................................................................26
`B.
`Clark ....................................................................................................29
`C. Warfield ...............................................................................................31
`D.
`Chandika ..............................................................................................34
`
`i
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,381,209
`
`2.
`
`B.
`1.
`
`IX. GROUND 1: DHAWAN IN VIEW OF CLARK AND THE
`KNOWLEDGE OF A POSITA RENDERS OBVIOUS CLAIMS 1, 3, AND
`6. ....................................................................................................................36
`A.
`Claim 1: ...............................................................................................36
`1.
`[1.PRE] “A computer implemented method of controlling network
`security of a virtual machine” .............................................................36
`[1.A] “the method comprising enforcing network security and routing
`at a hypervisor layer via dynamic updating of routing controls
`initiated by a migration of said virtual machine from a first device to a
`second device.” ....................................................................................36
`Claim 3: “The method according to claim 1, further comprising:” ....41
`[3.A] “copying network security and routing for said virtual machine
`to said hypervisor layer” .....................................................................41
`[3.B] “migrating said virtual machine from a first hardware device to
`a second hardware device” ..................................................................43
`Claim 6: “The method according to claim 1, further comprising
`adding a network section to a Virtual Machine Description File.” .....43
`X. GROUND 2: DHAWAN IN VIEW OF CLARK AND FURTHER IN
`VIEW OF WARFIELD AND THE KNOWLEDGE OF A POSITA
`RENDERS OBVIOUS CLAIMS 2, 4 AND 5. .............................................45
`A.
`Claim 2: “The method according to claim 1, further comprising:” ....45
`1.
`[2.A] “routing traffic for the virtual machine to the second device at
`the hypervisor layer” ...........................................................................45
`[2.B] “setting firewalls to permit a network traffic for the virtual
`machine to go to the second device at the hypervisor layer” ..............48
`Claim 4: “The method according to claim 3, further comprising:” ....51
`[4.A] “updating routing controls for said virtual machine at the
`hypervisor level” .................................................................................51
`
`B.
`1.
`
`2.
`
`C.
`
`2.
`
`ii
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,381,209
`
`2.
`
`3.
`
`C.
`
`[4.B] “updating traffic filters for said virtual machine at the
`hypervisor level” .................................................................................51
`[4.C] “advertising said migration of said virtual machine from said
`first hardware device to said second hardware device” ......................53
`Claim 5: “The method according to claim 1, further comprising
`setting firewalls to permit network traffic for the virtual machine to go
`to the second hardware device at the hypervisor layer.” .....................55
`XI. GROUND 3: DHAWAN IN VIEW OF CLARK AND FURTHER IN
`VIEW OF CHANDIKA AND THE KNOWLEDGE OF A POSITA
`RENDERS OBVIOUS CLAIMS 7-8. ...........................................................55
`A.
`Claim 7: “The method according to claim 1, further comprising
`storing network access control lists.” ..................................................55
`Claim 8: “The method according to claim 7, further comprising
`adding a command line interface to a Virtual Switch configuration to
`set and unset a respective one of the access control lists.” .................58
`XII. CONCLUSION ..............................................................................................61
`
`B.
`
`iii
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,381,209
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH,
`IPR2019-01469, Paper 6, 8 (Feb. 13, 2020) ....................................................... 14
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11, 5-6 (PTAB Mar. 20, 2020) ................................ 11, 13
`Nvidia Corp. v. Invensas Corp.,
`IPR2020-00603, Paper 11, 23 (PTAB Sept. 3, 2020)......................................... 13
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) .......................................................... 21
`Sand Revolution II, LLC v. Continental Intermodal Group5 Trucking
`LLC,
`IPR2019-01393, Paper 24, 7 (PTAB June 16, 2020) ......................................... 12
`Statutes
`35 U.S.C. § 102(b) ........................................................................................... 6, 7, 20
`35 U.S.C. § 102(e) ........................................................................................... 6, 7, 19
`35 U.S.C. §287 ......................................................................................................... 11
`35 U.S.C. § 311 .......................................................................................................... 6
`35 U.S.C. §§ 311-319................................................................................................. 1
`35 U.S.C. §315(b) .............................................................................................. 11, 13
`Other Authorities
`37 C.F.R. § 42 ............................................................................................................ 1
`37 C.F.R. § 42.10(b) .................................................................................................. 5
`37 C.F.R. § 42.104(A) ............................................................................................... 5
`
`iv
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,381,209
`
`37 C.F.R. § 42.104(B) ................................................................................................ 6
`37 C.F.R. § 104 .......................................................................................................... 5
`157 Cong. Rec. S1363 (Mar. 8, 2011) ..................................................................... 12
`157 Cong. Rec. S5429 (Sept. 8, 2011) ..................................................................... 13
`77 Fed. Reg. 48759-60 ............................................................................................... 4
`
`v
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,381,209
`
`LISTING OF EXHIBITS
`
`DESCRIPTION
`
`U.S. Patent No. 8,381,209 to Reumann et al. (the “209 Patent”)
`
`File History of U.S. Patent No. 8,381,209 (the “209 FH”)
`
`Declaration of Dr. Markus Jakobsson (“Jakobsson”) re U.S. Patent
`No. 8,381,209
`
`Curriculum Vitae of Dr. Markus Jakobsson
`
`U.S. Patent Publication No. 2007/0079307 to Dhawan et al.
`(”Dhawan”)
`
`C. Clark et al, Live Migration of Virtual Machines, NSDI ’05: 2nd
`Symposium on Networked Systems Design & Implementation
`(May 2-4, 2005) (“Clark”)
`
`Isolation of Shared Network Resources in XenoServers to Warfield
`et al. (“Warfield”)
`
`U.S. Patent No. 8,107,370 to Chandika et al. (“Chandika”).
`
`Declaration of Diana Friedrich, German National Library of
`Science and Technology re: Proceedings of the 2nd Symposium on
`Networked Systems Design & Implementation (NSDI ’05) (May 2-
`4, 2005)
`
`Complaint for Patent Infringement, Daedalus Blue, LLC v.
`Microsoft Corporation, Case No. 6:20-cv-01152-ADA (Dec. 16,
`2020 W.D. Tex.)
`
`EXHIBIT
`NO.
`1001
`1002
`
`1003
`
`1004
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`U.S. Patent No. 7,484,208 to Nelson (“Nelson”)
`
`1012
`
`Chen et al., When Virtual Is Better Than Real, The Eighth IEEE
`Workshop on Hot Topics in Operating Systems, HotOS-VIII,
`pp.116-121 (May 20-23, 2001)
`
`1013
`
`U.S. Patent Application No. 2005/0268298 to Hunt (“Hunt”)
`
`vi
`
`

`

`EXHIBIT
`NO.
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`Petition for Inter Partes Review of U.S. Patent No. 8,381,209
`
`DESCRIPTION
`
`U.S. Patent No. 6,397,242 to Devine (“Devine”)
`
`Karger, Multi-Level Security Requirements for Hypervisors, IBM
`Search Report, RC 23624 (W0506-041), June 6, 2005 (rev. Oct. 19,
`2005), 21st Annual Computer Security Applications Conference,
`Tucson, AZ (Dec. 5-9, 2005) (“Karger”).
`
`Sailer et al., Building a MAC-Based Security Architecture for the
`Xen Open-Source Hypervisor, Proceedings of the 21st Annual
`Computer Security Applications Conference (ASCAC 2005)
`
`U.S. Patent No. 6,182,226 to Reid et al. (“Reid”)
`
`Eck, Access Control Lists to Protect a Network from Worm/DoS
`Attacks, SANS Institute (2004)
`
`Huang et al., A Case for High Performance Computing with Virtual
`Machines, ICS ’06 June 28-30, Cairns, Queensland, Australia
`
`Keahey et al., Virtual Workspaces in the Grid, 11th International
`Euro-Par Conferences, Lisbon, Portugal (Sept. 2005)
`
`R. Siles, Real World ARP Spoofing, SANS Institute (August 2003)
`
`V. Antoine et al, Router Security Configuration Guide, Router
`Security Guidance Activity of the System and Network Attack
`Center (SNAC) (Sept. 27, 2002)
`
`Jiang et al., VIOLIN: Virtual Internetworking on Overlay
`Infrastructure, In: Cao J., Yang L.T., Guo M., Lau F. (eds) Parallel
`and Distributed Processing and Applications (ISPA 2004), Lecture
`Notes in Computer Science, vol 3358. Springer, Berlin, Heidelberg
`
`Karlin, PlanetLab: A Blueprint for Introducing Disruptive
`Technology into the Internet (Nov. 20, 2003), available at
`https://web.archive.org/web/20031208153742/http://www.planet-
`lab.org/pubs/2003-11-20-PlanetLab-IEEE.pdf
`
`vii
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,381,209
`
`EXHIBIT
`NO.
`
`DESCRIPTION
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`
`1032
`
`1033
`
`1034
`
`Welcome to PlanetLab website (2002), available at
`https://web.archive.org/web/20021212060940/http:l/planet-
`lab.org/php/top.php
`
`PlanetLab – About, available at
`https://planetlab.cs.princeton.edu/about.html
`
`PlanetLab front page (2006), available at
`https://web.archive.org/web/20061007191534/http://www.planet-
`lab.org/
`
`Declaration of Dr. Timothy L. Harris regarding Isolation of Shared
`Network Resources in XenoServers to Warfield et al. (“Warfield”)
`
`PlanetLab Design Notes (2002), available at
`https://web.archive.org/web/20021212035424/http:/planet-
`lab.org:80/php/pdn.php
`
`PlanetLab Consortium (2006), available at
`https://web.archive.org/web/20061007234024/http://www.planet-
`lab.org/consortium/overview.php
`
`Email from Andrew Warfield submitting Isolation of Shared
`Network Resources in XenoServers to Warfield et al. (“Warfield”)
`to PlanetLab for publication (Oct. 30, 2002)
`
`PlanetLab Design Notes (PDNs) (2003), available at
`https://web.archive.org/web/20031002004416/http://planet-
`lab.org/php/pdn.php
`
`PlanetLab Design Note 02-2006 (2006), available at
`https://web.archive.org/web/20060129235541/http://www.planet-
`lab.org/PDN/PDN-02-006/
`
`Web capture from
`https://web.archive.org/web/20070715165444/http://planet-
`lab.org/files/pdn/PDN-02-006/pdn-02-006.pdf
`
`viii
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,381,209
`
`EXHIBIT
`NO.
`
`DESCRIPTION
`
`1035
`
`1036
`
`1037
`
`1038
`
`1039
`
`1040
`
`1041
`
`1042
`
`1043
`
`PlanetLab Design Notes (2008), available at
`https://web.archive.org/web/20081021030221%20/http://www.plan
`et-lab.org/doc/pdn
`
`PlanetLab Design Notes (2014), available at
`https://web.archive.org/web/20140531154741/http://www.planet-
`lab.org/doc/pdn
`
`Planet Law Design Notes (2021), available at
`https://planetlab.cs.princeton.edu/doc/pdn.html
`
`Cocciarini, Meccanismi Scalabili di Accesso a Content Distribution
`Network: Uno Studio Speriomentale, Undergraduate Thesis
`submitted at the University of Bologna, Italy (2005)
`
`University of Bologna’s listing of Cocciarini, Meccanismi Scalabili
`di Accesso a Content Distribution Network: Uno Studio
`Speriomentale, Undergraduate thesis submitted to the University of
`Bologna, Italy (2005), available at
`http://www.cs.unibo.it/~ghini/tesisti/MarcoCocciarini/
`
`University of Cambridge, listing of NetOS publications (2003),
`available at web.archive.org/web/2003112410371
`O/http://www.cl.cam.ac.uk/Research/SRG/netos/papers/
`
`University of Cambridge, listing of NetOS publications (2004),
`available at web.archive.org/web/200411230357
`40/http://www.cl.cam.ac.uk/Research/SRG/netos/papers/
`
`University of Cambridge, listing of NetOS publications (2006),
`available at
`http://web.archive.org/web/20061008131740/http://www.cl.cam.ac.
`uk/research/srg/netos/papers/#2002
`
`University of Cambridge, listing of NetOS publications (2021),
`available at https://www.cl.cam.ac.uk/research/srg/netos/papers/
`
`ix
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,381,209
`
`EXHIBIT
`NO.
`
`DESCRIPTION
`
`1044
`
`University of Cambridge, listing of Xenoservers publications
`(2021), available at
`https://www.cl.cam.ac.uk/research/srg/netos/projects/archive/xeno/
`publications.html
`1045 Warfield, Virtual Devices for Machines, Ph.D. dissertation
`submitted to the University of Cambridge (May 5, 2006)
`
`1046
`
`1047
`
`Varian, VM and the VM Community: Past, Present, and Future,
`Office of Computing and Information Technology, Princeton
`University, Princeton, NJ, 1, 19-22 (April 1991) (“Varian”)
`
`Email from Jun Zheng dated May 4, 2021 in Daedalus Blue, LLC
`v. Microsoft Corporation, Case No. 6:20-cv-01152-ADA (W.D.
`Tex.)
`
`x
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,381,209
`
`I.
`
`INTRODUCTION
`Microsoft Corporation (“Petitioner”) respectfully requests inter partes review
`
`(“IPR”) of claims 1-8 (“the Challenged Claims”) of U.S. Patent No. 8,381,209 (Ex.
`
`1001, the “ʼ209 patent”) under 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42. There is
`
`more than a reasonable likelihood that Petitioner will prevail on at least one claim.
`
`The ’209 patent describes a method of migrating virtual machines and
`
`securing them at a hypervisor layer. The patent acknowledges that virtual machine
`
`migration was well-known and in existence long before its filing. It further concedes
`
`that conventional methods enforced network security and routing in virtual
`
`environments. However, the ʼ209 patent purports to improve on these methods by
`
`dynamically updating routing controls at the hypervisor layer, which allegedly
`
`simplifies conventional security and routing schemes. The patent contends that
`
`decentralizing the updating scheme by using the hypervisor layer for security and
`
`routing is an important advantage because then, supposedly, only two software
`
`components require updating while the conventional methods require updating every
`
`component of the system.
`
`Long before the ’209 patent’s filing, enhanced virtual-machine security and
`
`dynamic routing schemes—including those possessing the very same “improved”
`
`features referenced in the ’209 patent—were well-known in the prior art. Indeed,
`
`this petition discusses four exemplary prior art references demonstrating that fact:
`
`-1 -
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,381,209
`
`U.S. Patent Publication No. 2007/0079307 to Dhawan et al. (Ex. 1005, “Dhawan”),
`
`non-patent publication Live Migration of Virtual Machines to Clark et al. (Ex. 1006,
`
`“Clark”), non-patent publication Isolation of Shared Network Resources in
`
`XenoServers to Warfield et al. (Ex. 1007, “Warfield”), and U.S. Patent No.
`
`8,107,370 to Chandika et al. (Ex. 1008, “Chandika”).
`
`Like the ’209 patent, Dhawan relates to a method for securing and routing
`
`virtual machines that migrate between physical hosts. The virtual machines carry
`
`payloads, including data, applications, or other virtual machines. Once the virtual
`
`machines migrate to a new physical location, the routing tables update with the new
`
`IP address. Moreover, Dhawan teaches network security and routing enforcement
`
`at the hypervisor layer.
`
`Clark, like Dhawan and the ʼ209 patent, teaches dynamic updating of routing
`
`controls initiated by a virtual machine migration. Specifically, Clark discloses
`
`running post-migration code to advertise the moved IP addresses, which triggers a
`
`reconfiguration to re-direct data traffic to the virtual machine’s new physical
`
`address. Such advertising, according to Clark, occurs through broadcasts or
`
`unsolicited direct replies. A person of ordinary skill in the art when the ʼ209 patent
`
`was filed would have known that dynamically updating data traffic routes in this
`
`manner allows senders to learn the virtual machine’s post-migration location, even
`
`if that location deviates from a predetermined destination. The person of ordinary
`
`2
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,381,209
`
`skill would have found it obvious to use Clark’s teaching of advertisement methods
`
`with the security and routing method of Dhawan with a reasonable expectation of
`
`success.
`
`Further, network security measures, such as access control lists (ACLs) and
`
`firewalls, were old and well known at the time of the alleged invention. In fact, they
`
`are common to every prior art reference in the grounds of this petition. Warfield,
`
`for instance, discloses a virtual firewall router, controlled at the hypervisor layer,
`
`that bars access to certain privileged ports. Additionally, Chandika discloses using
`
`ACLs to dynamically configure access restrictions via a command line interface,
`
`which simplifies ensuring network security and reliability.
`
`Given the proliferation of virtual machine migration at the time of the ’209
`
`patent and the known mechanisms for securing virtual networks, one of ordinary
`
`skill in the art would have considered it obvious and exceedingly uncomplicated to
`
`combine the teachings of Dhawan in view of Clark, Warfield, and/or Chandika—
`
`none of which was considered by the examiner. This petition, alongside the expert
`
`declaration of Dr. Markus Jakobsson—a research scientist with over twenty years of
`
`experience in computer security—explains how these prior art references render the
`
`Challenged Claims obvious.
`
`These claims are unpatentable and should be canceled.
`
`3
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,381,209
`
`II. MANDATORY NOTICES (§ 42.8(B))
`A.
`Notice of Real Parties-in-Interest (37 C.F.R. § 42.8(b)(1))
`Petitioner Microsoft Corporation is the real party-in-interest. No other parties
`
`exercised or could have exercised control over this Petition; no other parties funded
`
`or directed this Petition. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48759-
`
`60.
`
`Notice of Related Matters (37 C.F.R. § 42.8(b)(2))
`B.
`To the best of Petitioner’s knowledge, the ʼ209 patent is, or has been, involved
`
`in the following district court litigations:
`
`Name
`
`Number
`
`Court
`
`Filed
`
`6-20-cv-01152 WDTX December 16, 2020
`
`Daedalus Blue, LLC v.
`Microsoft Corp.
`Daedalus Blue, LLC v.
`Oracle Corp. and Oracle
`America, Inc.
`
`6-20-cv-00428 WDTX May 26, 2020
`(terminated July 24,
`2020)
`Notice of Lead and Back-Up Counsel and Service Information (37
`C.F.R. § 42.8(b)(3-4), 41.10(a))
`
`C.
`
`Lead Counsel
`
`Back-up Counsel
`
`Donald Daybell
`Registration No. 50,877
`ddaybell@orrick.com
`
`Jared Bobrow
`Pro Hac Vice to be submitted
`jbobrow@orrick.com
`
`Postal and Hand-Delivery Address:
`Orrick, Herrington, & Sutcliffe LLP
`2050 Main St., Ste. # 1100
`Irvine, California 92614
`
`Postal and Hand-Delivery Address:
`Orrick, Herrington, & Sutcliffe LLP
`1000 Marsh Rd.
`Menlo Park, California 94025
`4
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,381,209
`
`Telephone: (949) 657-6700
`Fax: (949) 657-6710
`
`Telephone: (650) 614-7400
`Fax: (650) 614-7401
`
`Petitioner consents to service by electronic mail at the following addresses:
`
`D2DPTABDocket@orrick.com,
`
`PTABDocketJ3B3@orrick.com
`
`and
`
`Microsoft-Daedalus_OHS_Only@orrick.com. Pursuant to 37 C.F.R. § 42.10(b),
`
`Petitioner’s Power of Attorney is attached.
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW (37 C.F.R. § 104)
`A.
`Grounds for Standing (37 C.F.R. § 42.104(A))
`Petitioner certifies that the ʼ209 patent is available for IPR and that Petitioner
`
`is not barred or estopped from seeking IPR of the Challenged Claims on the grounds
`
`identified herein. Petitioner (1) does not own the ʼ209 patent, (2) has not filed a civil
`
`action challenging the validity of any claim of the ʼ209 patent, and (3) has filed this
`
`Petition within one year of service of the Complaint against Petitioner alleging
`
`infringement of the ʼ209 patent.
`
`5
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,381,209
`
`B.
`
`Identification of Claims Being Challenged (37 C.F.R. § 42.104(B))
`and Relief Requested
`In view of the prior art and evidence, claims 1-8 of the ʼ209 patent are
`
`unpatentable and should be canceled under 35 U.S.C. § 311. Petitioner Microsoft
`
`relies on the following references as part of its grounds1:
`
`(1) U.S. Patent Publication No. 2007/0079307 (Ex. 1005, “Dhawan”):
`
`Dhawan was filed on September 30, 2005 and is therefore prior art under at least 35
`
`U.S.C. § 102(e).
`
`(2)
`
`Clark et al., Live Migration of Virtual Machines, NSDI ʼ05: 2nd
`
`Symposium on Networked Systems Design & Implementation 273 (May 2-4, 2005)
`
`(Ex. 1006, “Clark”): Clark was published on May 3, 2005 and is therefore prior art
`
`under at least 35 U.S.C. § 102(b). See Clark, 17-18. The public accessibility of
`
`Clark is further established by librarian records from the German National Library
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`of Science and Technology, which notes that the Proceedings of the 2nd Symposium
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`on Networked Systems Design & Implementation (NSDI ’05) was incorporated
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`under a shelf mark for public access on February 28, 2006. Ex. 1009.
`
`1 This Petition also relies on the knowledge of a person having ordinary skill in the
`
`art (“POSITA”), which the prior art cited herein and Dr. Jakobsson’s testimony
`
`demonstrate. Ex. 1003.
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`6
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`Petition for Inter Partes Review of U.S. Patent No. 8,381,209
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`(3) Warfield et al., Isolation of Shared Network Resources in XenoServers,
`
`Computer Laboratory, University of Cambridge, PlanetLab 1 (November 2002) (Ex.
`
`1007, “Warfield”): Warfield was published in November 2002 and is therefore prior
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`art under at least 35 U.S.C. § 102(b). The public accessibility of Warfield is
`
`discussed below.
`
`(4) U.S. Patent No. 8,107,370 (Ex. 1008, “Chandika”): Chandika was filed
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`on April 6, 2005 and is therefore prior art under at least 35 U.S.C. § 102(e).
`
`Ground Claim(s)
`1
`
`1, 3, and 6
`
`2
`
`3
`
`2, 4, and 5
`
`7-8
`
`Asserted Prior Art
`
`Dhawan in view of Clark and the knowledge of a
`POSITA (obviousness)
`
`Dhawan in view of Clark and further in view of
`Warfield and
`the knowledge of a POSITA
`(obviousness)
`
`Dhawan in view of Clark and further in view of
`Chandika and
`the knowledge of a POSITA
`(obviousness)
`
`Warfield is a scientific article that was publicly available before the January
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`3, 2007 filing date of the ’209 patent. Ex. 1028 (Declaration of Dr. Timothy L.
`
`Harris, hereinafter “Harris Decl.,”) ¶¶ 5-9. Warfield was published by PlanetLab,
`
`an international consortium of academic researchers that was active from 2002 –
`
`2020. As of November 2003, PlanetLab had 62 member institutions. Ex. 1024,
`
`35. PlanetLab’s mission was to provide “an open testbed for developing,
`
`deploying, and accessing planetary-scale services”. Ex. 1025. PlanetLab focused
`7
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`Petition for Inter Partes Review of U.S. Patent No. 8,381,209
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`on developing a distributed virtualized platform that any interested academic
`
`researcher could use to conduct planetary-scale network experiments. Ex. 1026.
`
`By October 2006, their platform was installed at 340 sites. Ex. 1027. PlanetLab
`
`was a well-known source of information in the distributed computing and
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`virtualization space. Harris Decl. ¶¶ 7-8.
`
`As part of its mission, PlanetLab collected and made publicly available a
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`series of PlanetLab Design Notes. Ex. 1029; Ex. 1026, Harris Decl. ¶ 8.
`
`PlanetLab’s Design Notes were available on the PlanetLab website. Ex. 1029.
`
`Their research papers were also available to all members of PlanetLab. Ex. 1030,
`
`2. As discussed below, Warfield was available on PlanetLab’s publicly accessible
`
`website as early as December 2002.
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`Warfield was submitted to PlanetLab for publication by e-mail on October
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`30, 2002 by its principal author, Dr. Andrew Warfield. Ex. 1031; Harris Decl. ¶ 9.
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`This e-mail was transmitted to the editor of the PlanetLab Design Notes, Dr. Larry
`
`Peterson (Ex. 1029), and copied to the other authors of the paper. Ex. 1031; Harris
`
`Decl. ¶ 9. The authors of Warfield expected that Dr. Peterson would post Warfield
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`on the public PlanetLab website as well as make Warfield available to PlanetLab
`
`members. Harris Decl. ¶ 10. Warfield was posted on PlanetLab’s website at least
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`as early as December 12, 2002, when the Internet Archive’s Wayback Machine
`
`crawled that site’s PlanetLab Design Notes page, which lists Warfield and provides
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`8
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`Petition for Inter Partes Review of U.S. Patent No. 8,381,209
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`a link to the document. Ex. 1029. At least as early as January 2006, an abstract of
`
`Warfield was also available on the PlanetLab website.2 Ex. 1033. Warfield was
`
`and remains available on PlanetLab’s website to the present date. Exs. 1029, 1033,
`
`1035, 1036, 1037.3 The PDF file available from PlanetLab currently is
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`substantively identical to the version that was provided to PlanetLab by the
`
`authors. Harris Decl., ¶ 9; compare Ex. 1007 with Ex. 1031.
`
`In addition, Warfield was cited by third parties before the January 3, 2007
`
`filing date of the ’209 patent. For example, Warfield was cited by Marco
`
`Cocciarini in an undergraduate thesis authored in 2005, and submitted to the
`
`University of Bologna, Italy. Ex. 1038. This thesis is available to this day from
`
`2 The PlanetLab website was identified in a 2003 IEEE conference presentation as
`
`a resource for conference members to visit to get additional information on topics
`
`of interest relating to PlanetLab’s work. Ex. 1024, at 37. As of the date of this
`
`presentation, Warfield was included in the PlanetLab Design Notes available to
`
`anyone from this site. Ex. 1032.
`
`3 The earliest date that the Internet Archive has a copy of the actual PDF file
`
`containing Warfield is July 15, 2007. Ex. 1034. It appears that while the Internet
`
`Archive crawled the PDN listings page which recites Warfield at numerous dates
`
`beginning December 2002, it did not collect the actual article until July 2007.
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`9
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`Petition for Inter Partes Review of U.S. Patent No. 8,381,209
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`the University of Bologna’s website. The document listing on the University of
`
`Bologna website for this thesis states that this document was last modified on June
`
`10, 2005. Ex. 1039. Additionally, at least as early as November 24, 2003 and
`
`continuing to the present date, the University of Cambridge, England, Department
`
`of Computer Science lists Warfield amongst the “2002 Publications” authored by
`
`members of the Department, with a link to the article. Exs. 1040-1043; see also
`
`Ex. 1044. Warfield was also cited in Dr. Andrew Warfield’s Ph.D. dissertation,
`
`which was authored on May 5, 2006. Ex. 1045, 21-23. Warfield was listed in the
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`“published results” section of this dissertation as an aspect of Dr. Warfield’s work
`
`that was published prior to his dissertation.4 Id., 21. The evidence is conclusive
`
`that Warfield was available to any interested members of the public at least as
`
`early as December 2002, more than four years prior to the filing date of the ’209
`
`patent.
`
`IV. THE BOARD SHOULD NOT EXERCISE ITS DISCRETION TO
`DENY INSTITUTION
`Although the ’209 Patent is asserted in a case before Judge Albright in the
`
`Western District of Texas, there is no basis to deny institution under §314. Ex. 1010.
`
`4 Disclosure of previously published works that reflect aspects of a doctoral
`
`dissertation is necessary to establish a record of which aspects of the dissertation
`
`reflect the original research typically required of a dissertation. Harris Decl., ¶ 11.
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`Petition for Inter Partes Review of U.S. Patent No. 8,381,209
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`This proceeding is still in its very early stages. No case schedule order has been
`
`entered. The Court has not set a trial date yet. Discovery has not yet commenced.
`
`The Patent Owner has not even served preliminary infringement contentions.
`
`Meanwhile, Petitioner diligently filed this Petition about four and a half
`
`months after service of the complaint and about seven and a half months prior to
`
`expiration of the one-year filing period. There is no allegation in Patent Owner’s
`
`complaint that it provided pre-suit notice to Petitioner under 35 U.S.C. §287 or that
`
`it engaged in pre-suit license negotiations with Petitioner. Policy favors institution
`
`here because Petitioner had no pre-suit knowledge of the alleged infringement and
`
`reacted quickly to the complaint. Denying institution would negate Congress’ intent
`
`in providing a one-year filing period under 35 U.S.C. §315(b) and would make
`
`PTAB review essentially unavailable in certain jurisdictions, thereby encouraging
`
`forum shopping.
`
`In addition, the balance of the Fintiv factors weighs in favor of institution.
`
`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11, 5-6 (PTAB Mar. 20, 2020)
`
`(taking a “holistic view of whether efficiency and integrity of the system are best
`
`served by denying or instituting review.”) Denying institution would damage the
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`efficiency and integrity of the system and encourage forum shopping.
`
`The first factor, potential for a district court stay, is neutral or favors
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`institution. Neither party has yet requested a stay, so at worst this factor is neutral
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`11
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`Petition for Inter Partes Review of U.S. Patent No. 8,381,209
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`because the Board “will not attempt to predict” how the district court will proceed.