`
`
`
`IPR2021-00832
`U.S. Patent No. 8,381,209
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`DAEDALUS BLUE, LLC,
`Patent Owner.
`
`
`
`Case IPR2021-00832
`Patent No. 8,381,209
`
`
`
`
`PATENT OWNER’S
`PRELIMINARY RESPONSE
`UNDER 37 C.F.R. §42.107
`
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`IPR2021-00832
`U.S. Patent No. 8,381,209
`
`
`Page
`
`V.
`
`
`I.
`Introduction ...................................................................................................... 1
`The ’209 Patent ................................................................................................ 5
`II.
`File History ....................................................................................................10
`III.
`IV. Claim Construction ........................................................................................13
`A.
`Legal Standard .....................................................................................13
`B.
`Level of ordinary skill .........................................................................14
`C.
`“enforcing network security and routing at the hypervisor
`layer via dynamic updating of routing controls” ................................15
`Institution should be denied because Petitioner has failed to show a
`reasonable likelihood of success on any challenged claim ...........................16
`A.
`Petitioner’s cited references ................................................................16
`B.
`There is no reasonable likelihood that Petitioner will prevail in
`its contention that the challenged claims are rendered obvious
`by Dhawan in view of Clark and the “knowledge of a
`POSITA” (Ground 1). .........................................................................22
`1.
`Petitioner has not shown that Dhawan discloses “a
`computer implemented method of controlling network
`security of a virtual machine” [Element 1pre]. .........................23
`a)
`The preamble is limiting because it provides an
`antecedent basis for the claimed “said virtual
`machine.” ........................................................................24
`The file history further demonstrates that the
`preamble is limiting. .......................................................25
`Dhawan does not disclose the preamble [Element
`1pre]. ...............................................................................27
`
`b)
`
`c)
`
`i
`
`

`

`3.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`2.
`
`Petitioner has not shown that Dhawan alone or in view of
`Clark and the “knowledge of a POSITA” discloses or
`renders obvious Element 1A (Ground 1). .................................29
`Petitioner has not shown that a POSITA would have been
`motivated to combine Dhawan and Clark as argued. ...............40
`VI. The Board should exercise its discretion to deny institution under
`Section 314(a) ................................................................................................42
`A.
`The investment of the court and the parties in the district court
`litigation, addressing identical issues to be decided before the
`Board’s Final Written Decision, warrants discretionary denial
`under 35 U.S.C. §314(a). .....................................................................43
`1.
`Petitioner’s admissions in the district court indicate that
`no stay will issue (Fintiv factor 1). ...........................................44
`The district court has set a trial date—not an
`“estimate”—which precedes this Board’s Final Written
`Decision (Fintiv factor 2). .........................................................44
`The substantial investment in the parallel proceeding by
`the court and the parties favors institution denial (Fintiv
`factor 3). ....................................................................................45
`The overlap of issues raised in the Petition favors
`institution denial (Fintiv factor 4). ............................................47
`The petitioner and the defendant are the same party
`(Fintiv factor 5). ........................................................................49
`Discretionary denial is appropriate where, as here, merits
`of the lone ground are lacking and antedating issues
`should be addressed at the district court (Fintiv factor 6). .......49
`VII. Conclusion .....................................................................................................52
`
`
`
`IPR2021-00832
`U.S. Patent No. 8,381,209
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`ii
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`

`

`IPR2021-00832
`U.S. Patent No. 8,381,209
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`
`Cases
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019 (P.T.A.B. Mar. 20, 2020) .................................................. passim
`ATI Techs. ULC v. Iancu,
`920 F.3d 1362 (Fed. Cir. 2019) ............................................................................50
`Bio-Rad Labs., Inc. v. 10X Genomics Inc.,
`967 F.3d 1353 (Fed. Cir. 2020) ............................................................................24
`Brassica Prot. Prods. LLC v. Sunrise Farms (In re Cruciferous Sprout Litig.),
`301 F.3d 1343 (Fed. Cir. 2002) .......................................................................... 25,
`General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha,
`IPR2016-01357 (P.T.A.B. Sept. 6, 2017) (Precedential) ....................................42
`Harmonic Inc. v. Avid Tech., Inc.,
`815 F.3d 1356 (Fed. Cir. 2016) ................................................................................
`In re Fought,
`941 F.3d 1175 (Fed. Cir. 2019) ............................................................................24
`NHK Spring Co., Ltd. v. Intri-Plex Technologies, Inc.,
`IPR2018-00752 (P.T.A.B. Sept. 12, 2018) ........................................................ 42,
`
`On Demand Mach. Corp. v. Ingram Indus.,
`442 F.3d 1331 (Fed. Cir. 2006) ............................................................................25
`Perfect Surgical Techniques, Inc. v. Olympus Am., Inc.,
`841 F.3d 1004 (Fed. Cir. 2016) ................................................................................
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ............................................................................13
`Sandoz Inc. v. Abbvie Biotechnology Ltd.,
`IPR2017-01987, 2018 WL 1230583 (P.T.A.B. Mar. 9, 2018) ............................14
`
`iii
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`

`

`IPR2021-00832
`U.S. Patent No. 8,381,209
`
`
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795 (Fed. Cir. 1999) ..............................................................................14
`Statutes
`35 U.S.C. §121 .........................................................................................................11
`35 U.S.C. §314(a) .....................................................................................................4,
`Regulations
`83 Fed. Reg. 51341 ..................................................................................................13
`
`
`
`iv
`
`

`

`IPR2021-00832
`U.S. Patent No. 8,381,209
`
`
`Patent Owner’s Exhibit List
`RESERVED
`RESERVED
`RESERVED
`Order Governing Proceedings, Daedalus Blue, LLC v.
`Microsoft Corporation, Case No. 6:20-CV-1152-ADA,
`Dkt. No. 23 (W.D. Tex. June 30, 2021)
`Microsoft Corporation’s Notice of Filing Petitions for
`Inter Partes Review, Daedalus Blue, LLC v. Microsoft
`Corporation, Case No. 6:20-cv-1152-ADA, Dkt. No. 19
`(W.D. Tex. May 7, 2021)
`Defendant’s Invalidity Contentions, Daedalus Blue, LLC
`v. Microsoft Corporation, Case No. 6:20-cv-1152-ADA
`Chart D-1 from Defendant’s Invalidity Contentions,
`Daedalus Blue, LLC v. Microsoft Corporation, Case No.
`6:20-cv-1152-ADA
`Chart D-2 from Defendant’s Invalidity Contentions,
`Daedalus Blue, LLC v. Microsoft Corporation, Case No.
`6:20-cv-1152-ADA
`Chart D-5 from Defendant’s Invalidity Contentions,
`Daedalus Blue, LLC v. Microsoft Corporation, Case No.
`6:20-cv-1152-ADA
`Defendant’s Revised Proposed Claim Constructions,
`Daedalus Blue, LLC v. Microsoft Corporation, Case No.
`6:20-cv-1152-ADA, dated August 11, 2021
`
`
`
`EX2001
`EX2002
`EX2003
`EX2004
`
`EX2005
`
`EX2006
`
`EX2007
`
`EX2008
`
`EX2009
`
`EX2010
`
`
`
`v
`
`

`

`Patent Owner Daedalus Blue, LLC. (“Daedalus” or “Patent Owner”)
`
`IPR2021-00832
`U.S. Patent No. 8,381,209
`
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`respectfully submits this Preliminary Response to Microsoft Corporation’s
`
`(“Microsoft” or “Petitioner”) above-captioned Petition for Inter Partes Review of
`
`United States Patent No. 8,381,209 (“the ’209 Patent”).
`
`I.
`
`INTRODUCTION
`Institution should be denied because Petitioner has failed to establish it has
`
`a reasonable likelihood of demonstrating that even a single challenged claim is
`
`unpatentable.
`
`The ’209 Patent relates to a method of controlling network security of a
`
`Virtual Machine (VM) during migration. To the end user, a VM is like a typical
`
`computer; it appears to have its own processor, memory, and other resources but
`
`VMs are actually comprised of virtualized hardware that has been emulated in
`
`software and runs on shared hardware resources. A secure component called a
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`hypervisor allows a server (the host) to run multiple VMs (guests), which results
`
`in more efficient use of the resources. The hypervisor maps resources to and
`
`thereby isolates guest VMs on a shared host, and each guest VM can belong to
`
`different users or entities, isolated from each other.
`
`Sometimes VMs need to be moved from one server to another (to perform
`
`maintenance on the server or in event of a hardware failure), which
`
`conventionally involved shutting down the VM and copying it to another server.
`
`1
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`

`

`But doing so required complicated schemes to maintain the network-entangled
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`IPR2021-00832
`U.S. Patent No. 8,381,209
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`state of the VM and created significant security risks. As discussed further below,
`
`the ’209 Patent discloses inventive techniques that control network security of
`
`VMs as they are migrated from one host to another by utilizing the hypervisor in a
`
`way that conventional systems did not. In particular, network security and routing
`
`are enforced at a hypervisor layer at which a virtual machine partition is executed
`
`and which is independent of guest operating systems. See, e.g., EX1001,
`
`Abstract.
`
`Petitioner challenges the sole independent claim as allegedly obvious based
`
`on Dhawan as its primary reference, supplemented by Clark and the knowledge of
`
`a POSITA for portions of certain claim elements. Petitioner also challenges the
`
`seven dependent claims using this same combination or variations that add
`
`additional references. But none of the cited references, combined or otherwise,
`
`disclose the claimed inventions.
`
`Dhawan is concerned with data migration but does not address the claimed
`
`use of a hypervisor layer to enforce network security and routing. Dhawan
`
`discloses encapsulating data in a carrier VM and migrating the carrier VM using a
`
`predetermined route. In this process, the Dhawan hypervisor fulfills exactly the
`
`conventional role: allocating and mapping physical resources to a particular
`
`carrier VM. Dhawan does not teach, suggest, or otherwise render obvious the
`
`2
`
`

`

`’209 Patent’s “enforcing network security and routing at a hypervisor layer via
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`IPR2021-00832
`U.S. Patent No. 8,381,209
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`dynamic updating of routing controls initiated by a migration of said virtual
`
`machine from a first device to a second device” as required by the challenged
`
`claims here.
`
`Petitioner adds Clark to address the challenged claims’ “dynamically
`
`updating routing controls.” But Clark’s advertisement of a changed address
`
`following migration does not remedy the shortcomings of Dhawan. Clark’s
`
`address advertisement is neither sent by nor effectuates a change at the Clark
`
`hypervisor. It simply tells the network where the VM was delivered—another
`
`conventional step that must occur to route network traffic after a migration. But
`
`this does not solve any of the security issues or other network routing
`
`shortcomings that the ’209 claims resolve.
`
`Because the conventional hypervisor of Dhawan, with or without Clark or
`
`the knowledge of a POSITA, cannot meet the functions of the hypervisor as
`
`claimed in the ’209 Patent, Petitioner is forced to break up the claim elements and
`
`address select words in isolation and out of order to attempt to map these the cited
`
`references to the claims. Petitioner’s approach glosses over the crucial role of the
`
`claimed hypervisor in the ’209 Patent.
`
`Because the Petition fails to address these novel and critical requirements
`
`of the challenged claims, the Petition has no reasonable likelihood of prevailing
`
`3
`
`

`

`on any challenged claim. Neither Dhawan nor Clark disclose or would have
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`IPR2021-00832
`U.S. Patent No. 8,381,209
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`rendered obvious the challenged claims.
`
`The Petition’s lack of merit further supports Patent Owner’s request that the
`
`Board deny institution in exercise of its discretion under 35 U.S.C. §314(a). The
`
`Board should exercise discretionary denial because the scheduled jury trial in the
`
`related district court case will determine the same issues as raised in the
`
`Petition—and that district court trial is scheduled to be completed before any
`
`Final Written Decision here. The case has not been stayed, and Petitioner has not
`
`moved for a stay. Further, a stay is very unlikely, because Petitioner has filed
`
`inter partes review petitions on only three of five patents asserted in the related
`
`litigation, and has informed the court it will not challenge the other two patents.
`
`The challenged claims here are asserted in the district court litigation. Claim
`
`construction proceedings are well underway and the Markman hearing will be
`
`completed before the statutory deadline for the Board’s institution decision. The
`
`court and the parties have invested and will continue to invest substantial
`
`resources even before the institution decision deadline. Parallel proceedings on
`
`this timeline, with a complete overlap of issues, would waste resources, and risk
`
`inconsistent results. Under these circumstances, discretionary denial under
`
`§314(a) is warranted.
`
`4
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`

`

`II. THE ’209 PATENT
`To move a VM from one physical device to another (e.g., from hardware 1
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`IPR2021-00832
`U.S. Patent No. 8,381,209
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`to hardware 2), some conventional methods and systems prior to the ’209 Patent
`
`would merely shut down and copy from hardware 1 to hardware 2. Id., 5:30-37.
`
`Peripheral state information and security could be maintained in this scenario, but
`
`it was not ideal and quite complicated. In order to perform maintenance on, or
`
`provide a fail-over for, a physical device hosting one or more VMs, it is desirable
`
`to move or migrate such VMs to another hardware device, but doing so can create
`
`significant network security risks. EX1001, 2:27-31.
`
`When a VM is running and connected to a network, it can be described as
`
`having a network entangled state, and various network components impact the
`
`routing and security of the VM. For example, Figures 2-3 of the patent depict
`
`conventional systems where each VM is linked to a network interface card (NIC),
`
`virtual NIC, switches and firewalls. And these network routing and security
`
`issues may be impacted by migration in conventional systems. Id., 2:41-45, 3:6-
`
`9. Various routing controls that relate to security and routing including, for
`
`example, VLAN TAGs and network ACLs. E.g., EX1001, 1:19-23. Networking
`
`access control lists (ACLs) are used to tell the networking components which
`
`types of traffic can access the network or parts of the network, and/or which
`
`activity is allowed.
`
`5
`
`

`

`Conventionally, ACLs are installed in the “real”1 network components,
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`IPR2021-00832
`U.S. Patent No. 8,381,209
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`such as switches, routers, or firewalls. E.g. id., 1:21-23. However, as shown in
`
`Figure 2, some conventional systems did not use ACLs and thus if a VM were
`
`migrated to a system without ACLs, it provided the VM with very little security.
`
`Id., 2:24-59. In other conventional systems, such as shown in Figure 3, the target
`
`device might have an ACL installed on a real network switch and have further
`
`restrictions in the firewall. Thus, when migrating a virtual machine from one
`
`device to another device, a complex update scheme was required to update the
`
`ACLs in the real switches and the filters in the firewalls. Id., 3:6-9.
`
`
`
`
`
`
`
`
`1 Traditionally, physical components such as the switches and firewalls are called
`
`“real” devices, to distinguish from logical or virtualized devices (e.g., switches,
`
`routers or firewalls implemented in software that run on shared hardware).
`
`6
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`

`

`The ’209 patent describes improvements over systems that existed for
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`IPR2021-00832
`U.S. Patent No. 8,381,209
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`migrating VMs. For example, the technique of using the logical partition
`
`manager to manage migration was known. When utilizing this technique, known
`
`as “paravirtualization,” the logical partition manager trusts a partition OS to
`
`cooperate with other partitions. See EX1001, 3:58-4:10. But this created a
`
`serious security flaw because an undermined OS can manipulate an operating
`
`system in another partition. EX1001, 3:64-4:2. Other migration techniques, such
`
`as those available in local area network environments, did not address the need to
`
`update ACLs. Id., 4:11-18. Yet other systems could capture the state of the VM
`
`in a mass storage device, but could not capture the state external to addressable
`
`memory, such as the network state. Id., 3:40-33. Thus, there was a need for
`
`techniques for migrating VMs connected to a public network that use ACLs such
`
`that they remained secure. The claims of the ’209 Patent provide a solution to this
`
`problem.
`
`The ’209 Patent (entitled “Moveable Access Control List (ACL)
`
`mechanisms for hypervisors and virtual machines and virtual port firewalls”)
`
`enforces network security and routing at the hypervisor by dynamically updating
`
`routing controls, initiated by migration of the VM. The ’209 invention can
`
`initiate migration from one machine to another and in doing so, also capture an
`
`application state, such as the state of a firewall or routing pertaining to a particular
`
`7
`
`

`

`VM partition. EX1001, 10:1-11. The system can also establish logical rules that
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`IPR2021-00832
`U.S. Patent No. 8,381,209
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`govern the interaction of a migrated VM with the network infrastructure. Id.,
`
`10:11-13. This allows a logical device to be bootstrapped and allows a device
`
`state to be easily revoked upon migration. Id., 10:13-16. The invention can
`
`achieve these advantages by implementing such controls in the hypervisor layer.
`
`Id., 10:17-27. As shown in Figures 5 and 6, for example (annotated below),
`
`ACLs for the migrated VM can be stored with the serialized representation of the
`
`VM (Fig. 5) or in some other central repository (FIG. 6). Id., 11:24-33. And a
`
`hypervisor secured network layer can be used to provide filtered network
`
`connectivity. Id., 10:28-35.
`
`
`
`
`
`As noted above, the patent discusses how network access controls may
`
`have to be reset when copying a virtual machine from one computer. EX1001,
`
`4:5-10. Figures 12 and 13 further describe exemplary methods that may be used
`
`when VMs suspend/stop and start. Upon suspend, the method collects the
`
`8
`
`

`

`security and routing information for the VM and serializes them into a data
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`IPR2021-00832
`U.S. Patent No. 8,381,209
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`structure, meaning it converts the information into a more efficient form for
`
`storage, such as XML. EX1001, 12:54-67. When a new VM is started, the
`
`system may first create dummy virtual network interfaces it then can deserialize
`
`the security and routing information and install them in the hypervisor. EX1001,
`
`12:34-54.
`
`In one embodiment, the patent explains that VM network configurations
`
`can be updated at the hypervisor while the VM is running, and in a serialized
`
`representation of the VM. EX1001, 13:4-11; FIG 15B.
`
`By dynamically updating the routing controls at the hypervisor, the ’209
`
`invention can beneficially enforce network security and routing under the
`
`protection of the hypervisor. See EX1001, 6:3-15. For example, because
`
`operating systems running on the VM cannot alter or store any state at the
`
`hypervisor, the hypervisor layer can be trusted. Id., 10:36-40. Further, by
`
`utilizing the hypervisor layer for security and routing, the user will see no
`
`difference in operation between running the virtual machine on hardware 1 or
`
`hardware 2. Id., 5:38-46; 9:25-31. And, by enforcing network security and
`
`routing at the hypervisor layer, the real switches also would not need to be
`
`updated. Id., 5:59-62; 10:65-67. Additionally, the hypervisor security
`
`architecture is designed to provide a secure foundation, strong isolation, mediated
`
`9
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`

`

`sharing and communication between VMs. Id., 4:55-60. These properties can be
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`IPR2021-00832
`U.S. Patent No. 8,381,209
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`strictly controlled by a flexible access control enforcement engine at the
`
`hypervisor, which can also enforce mandatory policies as disclosed in the ’209.
`
`Id., 4:60-62.
`
`Challenged Independent claim 1 of the ’209 Patent recites:
`
`[pre] A computer implemented method of controlling
`network security of a virtual machine, the method
`comprising
`
`[A] 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.
`
`EX1001, Cl. 1 (with brackets indicating the element numbering used in the
`
`Petition for clarity).
`
`Petitioner’s Grounds all rely on Dhawan as a primary reference. But as
`
`discussed below, Dhawan does not teach or suggest either the preamble or
`
`Element 1A, which is required by every challenged claim. Nor do Petitioner’s
`
`proposed combinations likewise remedy these shortcomings.
`
`III. FILE HISTORY
`Patent Owner herein addresses certain omissions in Petitioner’s summary
`
`of the ’209 Patent prosecution history for this stage in the proceedings. If the
`
`10
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`

`

`Board chooses to institute trial, Patent Owner reserves the right to provide further
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`IPR2021-00832
`U.S. Patent No. 8,381,209
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`context from, and argument about, the prosecution that gave rise to the challenged
`
`claims in its §42.120 Response.
`
`The file history demonstrates that the Applicant relied on the preamble as a
`
`necessary and defining aspect of the invention, as well as to distinguish the Traut
`
`reference cited by the Examiner. As will be discussed below in Section V.A.3,
`
`the preamble is limiting, including based on these instances of reliance during
`
`prosecution.
`
`Following the May 27, 2010 Non-Final Rejection, and Applicant’s
`
`August 27, 2010 response, on November 8, 2010, the patent office required
`
`Applicant to make a claim election under 35 U.S.C. §121. EX1002, 123-126. At
`
`that time, the patent office noted that two sets of distinct inventions were
`
`identified—claims directed to “controlling network security” and claims directed
`
`to “virtual machine migration.” EX1002, 124-126. Comparison of the then-
`
`pending claims is recited below:
`
`“controlling network security”
`(Claim 1) A computer implemented
`method of controlling network security
`of a virtual machine,
`
`comprising enforcing network security
`and routing at a hypervisor layer via
`dynamic updating of routing controls
`initiated by a migration of said virtual
`
`“virtual machine migration”
`(Claim 2) A computer implemented
`method of virtual machine migration
`with filtered network connectivity,
`
`comprising enforcing network security
`and routing at a hypervisor layer which
`is independent of guest operating
`systems via dynamic updating of
`
`11
`
`

`

`“controlling network security”
`machine from a first device to a second
`device.
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`IPR2021-00832
`U.S. Patent No. 8,381,209
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`“virtual machine migration”
`routing controls initiated by a
`migration of said virtual machine from
`a first device to a second device.
`
`EX1002, 107. On November 11, 2010, Applicant elected to pursue the claims
`
`drawn to controlling network security. EX1002, 127-128.
`
`In a June 6, 2012, Non-Final Rejection, Examiner did not refer to Kurien,
`
`but relied on a different reference—Traut (U.S. Patent Application Pub. No.
`
`2006/0136653). EX1002, 185-88. In the Aug. 31, 2012 amendment, Applicant
`
`distinguished Traut by emphasizing that claim 1 was “directed to a method of
`
`controlling network security of a virtual machine, the method including enforcing
`
`network security and routing at a hypervisor layer via dynamic updating of
`
`routing controls initiated by a migration from one device to a second device.”
`
`EX1002, 200 (emphasis in original).
`
`In Response, Applicant again reemphasized that claim 1 recites, among
`
`other things “a computer implemented method of controlling network security…”
`
`with original emphasis on the preamble language, EX1002, 201, and further noted
`
`that the claimed invention exemplarily provides a hypervisor security architecture
`
`designed to provide a secure foundation for server platforms…” EX1002, 201.
`
`Applicant continued to distinguish Traut on grounds that it did not relate to
`
`security or secure foundations, and that it “completely faile[d] to disclose or
`
`12
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`

`

`suggest the claimed “computer implemented method of controlling network
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`IPR2021-00832
`U.S. Patent No. 8,381,209
`
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`security of a virtual machine the method including enforcing network security and
`
`routing at a hypervisor layer via dynamic updating of routing controls initiated by
`
`a migration from one device to a second device.” The examiner found
`
`Applicant’s arguments persuasive and issued the claims without opinion.
`
`Accordingly, in order to distinguish its claims over Traut, Applicant
`
`emphasized and relied on the “controlling network security” language of the
`
`preamble.
`
`IV. CLAIM CONSTRUCTION
`A. Legal Standard
`Under Phillips, patent claims should be interpreted in light of the intrinsic
`
`evidence, including the specification and file history, and “the ordinary and
`
`customary meaning of a claim term is the meaning that the term would have to a
`
`person of ordinary skill in the art in question at the time of the invention, i.e., as
`
`of the effective filing date of the patent application.” Phillips v. AWH Corp., 415
`
`F.3d 1303, 1313, 1317 (Fed. Cir. 2005); see also 83 Fed. Reg. 51341 (Oct. 11,
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`2018) (adopting Phillips standard for AIA proceedings before the Board).
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`Below, Patent Owner addresses one issue regarding Petitioner’s proposed
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`construction of a term in the related district court proceeding. However, for all
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`other terms, the plain and ordinary meaning of those terms is sufficient for the
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`Board to analyze Petitioner’s Grounds at this stage. While Patent Owner notes
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`that construction of other terms in the challenged claims may be appropriate if the
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`Board chooses to institute inter partes review, such constructions are not
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`necessary at this juncture. See, e.g., Sandoz Inc. v. Abbvie Biotechnology Ltd.,
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`IPR2017-01987, 2018 WL 1230583, at *5 (P.T.A.B. Mar. 9, 2018) (“[B]ecause
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`neither of those phrases requires construction for us to resolve the instant dispute,
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`we decline to construe them. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
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`F.3d 795, 803 (Fed. Cir. 1999) (‘only those terms need be construed that are in
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`controversy, and only to the extent necessary to resolve the controversy’).”). The
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`Petition fails to demonstrate a reasonable likelihood that it would prevail under
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`the plain meaning of the claims.
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`Level of ordinary skill
`B.
`The Petition indicates that a person of ordinary skill in the art (“POSITA”)
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`“would have had at least a Bachelor’s degree in computer science or computer
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`engineering (or equivalent) and at least three years of work experience in the field
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`of cloud computing, virtual machines, computer networks and systems, and/or a
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`similar field.” Petition, 21. For the purpose of this Preliminary Response,
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`applying this level of skill is sufficient for the Board to evaluate the Petition
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`Grounds. Should the Board institute trial, Patent Owner reserves the right to
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`provide its own POSITA definition and support for that definition in its §42.120
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`Response, including expert testimony regarding the appropriate definition along
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`with that Response.
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`C.
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`“enforcing network security and routing at the hypervisor layer
`via dynamic updating of routing controls”
`In its Petition, Petitioner does not advance any terms for construction and
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`contends that it gives each claim term its plain and ordinary meaning. Petition,
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`21. However, at the district court, Petitioner Microsoft identified the following
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`term for construction: “enforcing…routing at the hypervisor layer via dynamic
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`updating of routing controls.” See EX2010, 4.2 Microsoft contends that the term
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`should be construed as: “upon migration, automatically changing the routing
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`controls at a hypervisor layer to rout network traffic for the virtual machine to
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`the second device.” 3 See EX2010, 4.
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`Patent Owner does not believe the Board needs to construe this term to
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`assess Petitioner’s Grounds at this stage, and further disputes that Microsoft’s
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`2 Patent Owner notes that this term improperly omits “network security and” from
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`the phrase for construction and is addressing that issue with Petitioner’s proposed
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`construction at the district court, but for purposes of its analysis, the Board need
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`not address that omission because the term does not require construction for
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`purposes of this Preliminary Response.
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`3 All bold italic emphasis herein added.
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`construction is the plain and ordinary meaning. However, Patent Owner notes
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`that Microsoft’s proposed construction highlights the way its arguments here
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`conflict with the claim language “enforcing network security and routing at the
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`hypervisor layer via dynamic updating of routing controls.” Petitioner’s
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`arguments sidestep the claim language “at a hypervisor layer” and are also
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`misaligned with its proposed construction at the district court referencing
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`“network traffic for the virtual machine.”
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`V.
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`INSTITUTION SHOULD BE DENIED BECAUSE
`PETITIONER HAS FAILED TO SHOW A REASONABLE
`LIKELIHOOD OF SUCCESS ON ANY CHALLENGED CLAIM
`Petitioner’s cited references
`A.
`Dhawan discloses a system where data is migrated to new hardware across
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`a network in an encapsulated form by what Dhawan calls a carrier VM. EX1005,
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`[Abstract]. Critically, however, the hypervisor (which the Petition maps to the
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`virtual machine monitor (VMM) of Dhawan) is used purely in its conventional
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`role of allocating and mapping physical resources to a particular carrier VM.
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`In Dhawan, data to be transported is encapsulated (and sometimes
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`encrypted) in a carrier VM. EX1005, [0018]. That data is then transported across
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`a network to its new location using the carrier VM; when it is being transferred,
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`Dhawan refers to the data as “payload” just as any other network data transfer is
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`referred to as “payload.” A carrier VM must be allocated new hardware resources
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`at its new hardware location.
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`Dhawan explains that the job of the virtual machine monitor (VMM) is to
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`“map and remap carrier virtual machine 120 to available hardware resources as it
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`is migrated across different physical machines.” EX1005, [0050]; see also id.,
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`[0008], [0009] (job of VMM is to “create, quiesce, and destroy virtual machines”
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`and map and remap VM to available physical resources.). Dhawan explains that
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`the “VMM-managed resources can include processors, memory, network
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`bandwidth, and I/O bandwidth, all aggregated into a single, unified resource
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`pool.” EX1005, [0008]. In other words, the VMM in Dhawan acts in a
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`conventional manner to assign the physical resources to the VMs. Indeed, the
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`claims Dhawan set forth in its disclosure do not purport to claim any novel use of
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`the VMM. See EX1005, claims 1-20. And Dhawan contemplates that its system
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`could be implemented using known “infrastructure, such as that provided by
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`VMware or the Xen open source environment, to create and manage virtual
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`machines.” EX1005, [0018].
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`Dha