[00:00:00] Speaker 05:
Next case for argument is 23-1312, Daedalus, blue versus Vidal.

[00:00:08] Speaker 04:
How do you pronounce the name of your company?

[00:00:12] Speaker 04:
Daedalus.

[00:00:13] Speaker 05:
Sorry, I messed that up.

[00:00:17] Speaker 01:
Greek mythology, inventor, all of those things.

[00:00:22] Speaker 01:
And blue, IBM.

[00:00:24] Speaker 01:
Daedalus, blue.

[00:00:33] Speaker 01:
Please proceed.

[00:00:33] Speaker 01:
Thank you.

[00:00:35] Speaker 01:
Good morning, Your Honors.

[00:00:36] Speaker 01:
Denise Damore here on behalf of Daedalus Blue.

[00:00:40] Speaker 01:
So we are here on an appeal from a PTAP decision of a patent that I think the place to start is the original idea of the patent expressed in the specification, which is to address the user's loss of control over scaling the number of virtual machines running an application

[00:01:02] Speaker 01:
which was currently carried out manually by a system administrator.

[00:01:07] Speaker 01:
So the patent is all about effectively controlling the number of VMs across which a specific workload can happen.

[00:01:16] Speaker 01:
And so it says, the invention says, the claim says, create a template for this VM.

[00:01:24] Speaker 01:
That template says what memory I have, what CPUs I use, and what applications are running on it.

[00:01:30] Speaker 01:
I create that template.

[00:01:31] Speaker 01:
And then I deploy that template.

[00:01:34] Speaker 01:
I then monitor that template against certain criteria.

[00:01:37] Speaker 01:
If I get to a certain threshold, I deploy, I create another copy of myself.

[00:01:44] Speaker 01:
So the flag that exists here, flagging for autonomic scaling, is a flag that tells the system this particular instance of this VM can either be cloned, duplicated, you can add another one of me, or you can terminate me.

[00:02:01] Speaker 01:
which hopefully isn't going to happen to me anytime soon.

[00:02:04] Speaker 01:
But the context of it is you have a machine that can be replicated, added, and taken away.

[00:02:14] Speaker 01:
And it is a very elegant system for solving the problem of, at the time, not being able to control the number of virtual machines on which a particular workload was running.

[00:02:29] Speaker 01:
So I mean, just to give it an example, in the context of a law firm, I have a machine processing documents that are produced by the other side.

[00:02:38] Speaker 01:
I get a dump of documents.

[00:02:40] Speaker 01:
I have depositions in three days.

[00:02:42] Speaker 01:
The system knows that it can scale up.

[00:02:45] Speaker 01:
It can add virtual machines.

[00:02:47] Speaker 01:
And when the load is no longer there, I terminate those virtual machines.

[00:02:52] Speaker 01:
What's critical here, this is the context of cloud computing.

[00:02:55] Speaker 01:
So of course, you're paying for these resources.

[00:02:57] Speaker 01:
They don't pre-exist.

[00:02:58] Speaker 01:
They get created in your template.

[00:03:01] Speaker 01:
And then once they're no longer needed, they're terminated.

[00:03:05] Speaker 01:
And you don't have to pay for them anymore.

[00:03:07] Speaker 01:
That is the entire context of the patent.

[00:03:11] Speaker 01:
So when we look at these two features that are sort of deploying an instance of a VM and terminating, flagging for termination, that are the two claim elements that are critical here.

[00:03:24] Speaker 01:
And our challenges here are claim construction issues.

[00:03:28] Speaker 05:
And I think both instances, the board contended it was sticking with the plain and ordinary meaning and what you were advocating deported from the plain and ordinary meaning.

[00:03:40] Speaker 05:
Is that the way you understand it as well?

[00:03:42] Speaker 01:
I mean, I understand there's a hint of that.

[00:03:45] Speaker 01:
I don't think that's actually what happened in the board's decision.

[00:03:49] Speaker 01:
So if we start with the deploying term,

[00:03:53] Speaker 01:
And we go to the board's actual decision, and I believe that is at appendix page 17.

[00:04:01] Speaker 01:
The board actually starts with, petitioner in turn contends that the patent owner improperly proposes changing the word deploy to create new into the claims.

[00:04:16] Speaker 01:
And so they say the plain meaning of deploy is, and they quote, a dictionary.

[00:04:22] Speaker 01:
And they say, the dictionary is bring into effective action, which is unrelated to this.

[00:04:28] Speaker 01:
It's not in the specification.

[00:04:30] Speaker 01:
It's a dictionary definition.

[00:04:32] Speaker 01:
And ironically, when I reread this, it goes on to say, petitioner further contends that the specification consistently uses the term deploy to describe the process of setting up the VM.

[00:04:45] Speaker 01:
So it is creating.

[00:04:47] Speaker 01:
I mean, it's setting up the VM.

[00:04:48] Speaker 01:
It doesn't exist before you get there.

[00:04:51] Speaker 01:
That's the whole point of having a template.

[00:04:53] Speaker 04:
There's, you know, you have a general purpose computer and the template is... I thought when I was reading the patent spec and looking at the figures, it seemed to suggest there were like a bank of VMs waiting on the sidelines and then ready to be activated when called upon, which is therefore deploying the instances of virtual machines.

[00:05:15] Speaker 01:
Yeah, that's the priority.

[00:05:17] Speaker 04:
That is, I mean, that is absolutely not what the sixth one... So you're saying that your patent

[00:05:22] Speaker 04:
describes your claimed invention in the sense that once a threshold is passed, the system is going to create a virtual machine from scratch?

[00:05:32] Speaker 01:
Yeah.

[00:05:33] Speaker 01:
I mean, that's how most cloud computing happens, right?

[00:05:36] Speaker 01:
So you have a Blade server.

[00:05:38] Speaker 04:
Well, I don't know if that's how all these occur.

[00:05:42] Speaker 01:
Yeah.

[00:05:42] Speaker 01:
I mean, it's not only what the spec describes.

[00:05:45] Speaker 01:
So let's just start with the specification.

[00:05:47] Speaker 01:
I mean, we can just go directly to the point.

[00:05:50] Speaker 03:
Why didn't you say creating?

[00:05:52] Speaker 03:
I mean, those two words don't mean the same thing.

[00:05:55] Speaker 01:
So let's actually just look at the claim.

[00:05:58] Speaker 01:
I mean, this is something that has not really been the focus here.

[00:06:02] Speaker 01:
But when we look at the claim, there's deploying.

[00:06:06] Speaker 01:
And then it says, the final element says, and deploying an instance of a VM further comprises.

[00:06:12] Speaker 05:
Do you want to tell us what you're looking at?

[00:06:14] Speaker 01:
The claim one, the final element of claim one of the 612 patent, which you can look on the front cover of the blue brief.

[00:06:25] Speaker 01:
But the final element says, deploying an instance of a VM further comprises passing by the self-service portal user specifications for the instance of the VM.

[00:06:36] Speaker 01:
So those user specifications are, I want a virtual machine

[00:06:41] Speaker 01:
with a certain amount of memory, and we can see this in figure two, which the office relies on.

[00:06:48] Speaker 01:
I want it with a certain kind of memory, with certain applications running on it, et cetera.

[00:06:53] Speaker 01:
That doesn't exist.

[00:06:54] Speaker 01:
It's not out there in the world.

[00:06:55] Speaker 01:
There's a template for it, just like there's a template for ordering.

[00:07:01] Speaker 01:
If I wanted another copy of my computer, I could go on the Apple site and order the same one again.

[00:07:06] Speaker 01:
It doesn't exist.

[00:07:07] Speaker 01:
What exists is computing resources.

[00:07:10] Speaker 01:
So passing by the self-service portal user specifications for the instance of a VM to the deployment engine.

[00:07:18] Speaker 01:
Implementing and passing to the data center administrator by the deployment engine a VM template with the user specifications.

[00:07:26] Speaker 01:
And calling by the data center a hypervisor on a cloud computer to install the VM template as an instance of a VM on a cloud computer.

[00:07:37] Speaker 01:
That's deployment.

[00:07:39] Speaker 01:
That's in the claim.

[00:07:41] Speaker 01:
That is create.

[00:07:41] Speaker 01:
I mean, whether you use the word creating, installing, it doesn't pre-exist.

[00:07:46] Speaker 01:
They're not just out there waiting to be picked up.

[00:07:49] Speaker 01:
How do we know that from what you just read us?

[00:07:51] Speaker 03:
It doesn't use the word create.

[00:07:53] Speaker 03:
It doesn't use the word new or anything like that.

[00:07:56] Speaker 03:
How do we know this isn't all just predetermined templates and you're just calling up an additional version of it?

[00:08:04] Speaker 01:
Because it says install the template.

[00:08:07] Speaker 01:
And even if we read the director's version of what happened.

[00:08:12] Speaker 03:
How is install inconsistent with having a previous one that you just deployed?

[00:08:17] Speaker 01:
Let's look at the template.

[00:08:19] Speaker 01:
Let's look at figure two of the patent itself.

[00:08:23] Speaker 03:
So are you now saying there's nothing in the plain language of the claims that we're looking at?

[00:08:31] Speaker 03:
determined that there's a difference between the claim theory.

[00:08:35] Speaker 01:
No, I'm not saying that at all, because I'm reading the claim here, and it says.

[00:08:39] Speaker 03:
Well, you're moving on from the claim language.

[00:08:42] Speaker 03:
So I take it you don't have anything further to add in response to how the claim supports your argument.

[00:08:49] Speaker 01:
I was answering your question, which is how do we know that the template is not something that, I mean, the template exists.

[00:08:56] Speaker 01:
And the template is a thing that is not disputed.

[00:08:59] Speaker 01:
And the template, I mean, we can read it from the director's brief.

[00:09:02] Speaker 01:
We can read it from whatever.

[00:09:03] Speaker 01:
The template is depicted in the specification of the patent.

[00:09:08] Speaker 01:
It's not something that's ever been subject to dispute.

[00:09:11] Speaker 01:
Figure two, there's a VM record.

[00:09:14] Speaker 05:
Let me ask you, what the board said about this at 19, I think we're talking about the same issue, maybe not.

[00:09:20] Speaker 05:
It says the specification does not support Pan owner's contention that deploying requires creating a new instance of a VM, but rather suggests that an existing VM can be deployed by moving it from one cloud computer on another.

[00:09:34] Speaker 01:
Yeah, so I mean that moving reference there has nothing to do with what the hypervisor does with installing.

[00:09:39] Speaker 01:
There is one reference to moving in the specification.

[00:09:43] Speaker 01:
But it's not even the piece in the claim that we just read that actually installs the VM.

[00:09:51] Speaker 01:
So the data center AVM can be moved somewhere in the data center.

[00:09:57] Speaker 01:
But that moving quote bears no relationship to the language in the claim that we were just looking at, which is calling by the data center administrator

[00:10:09] Speaker 01:
hypervisor on a cloud computer so the hypervisor on the cloud computer installs the VM template as an instance of the VM on the cloud computer does this specification use the word create and move deploy it doesn't I mean so it could be install I mean the point is that the install doesn't mean create either right

[00:10:33] Speaker 01:
Well, we're talking about a computer.

[00:10:35] Speaker 01:
So it's not writing the software for the first time.

[00:10:39] Speaker 01:
But it is a cloud computer system.

[00:10:42] Speaker 01:
And it's just a bunch of generic resources, memory, CPUs, et cetera.

[00:10:47] Speaker 01:
The template is, I want a MacBook, essentially.

[00:10:51] Speaker 01:
It doesn't have a screen or anything.

[00:10:52] Speaker 01:
But I want a certain kind of processor.

[00:10:55] Speaker 01:
I want a certain kind of memory.

[00:10:57] Speaker 01:
And I want certain applications running on it.

[00:10:59] Speaker 01:
That's the template.

[00:11:00] Speaker 01:
And so we're talking about,

[00:11:04] Speaker 01:
We have generic resources, and then we create an instance of the thing Denise wants her application to run on.

[00:11:12] Speaker 01:
To create that, we have to install the software on there.

[00:11:15] Speaker 01:
We have to say, run this operating system.

[00:11:19] Speaker 01:
Add Denise's eDiscovery tool to the system so that it can share this workload.

[00:11:25] Speaker 01:
And we know it's not just existing out there.

[00:11:28] Speaker 01:
It says, install the VM template as an instance

[00:11:33] Speaker 01:
on the cloud computer.

[00:11:34] Speaker 04:
How do you understand VM template as opposed to an instance of a VM?

[00:11:41] Speaker 04:
I mean, it could well be that the VM template is like, here's the type of virtual machine instance that the user is looking for, and then

[00:11:54] Speaker 04:
the system will go back into the back room and look at all the available VM instances that are in there and say, ah, I found one in aisle 13 off of shelf number three that looks just like the requested specifications for what an instance of a VM the user needs.

[00:12:17] Speaker 01:
I think Kigi even helps us with this.

[00:12:18] Speaker 01:
I mean, if you read the background of Kigi, it talks about exactly this, which is

[00:12:22] Speaker 04:
Well, I guess we're just a little bit lost here in this patent, because you're asking us to, you know, like the board was confronted with the same problem, which is the claim says deploy, you're interpreting deploy to mean create, and now

[00:12:42] Speaker 04:
The board is trying to figure out, OK, what is it in the specification that can make us feel good about the idea that deploying a VM instance is really all about creating from scratch a VM instance?

[00:12:58] Speaker 04:
I don't see it in figure one, that kind of a feeling.

[00:13:02] Speaker 01:
In figure one.

[00:13:04] Speaker 01:
Let's go ahead and look at the figures then.

[00:13:07] Speaker 01:
And even if you look at the figures

[00:13:11] Speaker 01:
The director's description of it, but I think it's it's more So it's figure two is the one that the director director uses in his in there in her brief actually Appendix seven seven nine So you start

[00:13:40] Speaker 01:
And you receive through the user interface exposed by a self-service portal user specifications of a VM.

[00:13:48] Speaker 01:
And user specifications are 174, which is the template.

[00:13:52] Speaker 01:
And then if we go to, we look at how, I mean, the director walks through Figure 2 and says exactly the words that I've just pointed you to on the claim.

[00:14:03] Speaker 01:
In order to set up, this is on page 6 of the red brief, in order to set up

[00:14:10] Speaker 01:
This is the director describing how it works.

[00:14:14] Speaker 01:
A user provides a VM specification to a deployment engine, which selects an existing VM template from a catalog and installs the VM in accordance with the template.

[00:14:27] Speaker 01:
And when an additional instance needs to be deployed, the system installs this additional instance.

[00:14:33] Speaker 01:
I mean, I really think we're talking about a semantic difference between creating

[00:14:38] Speaker 01:
And I mean, installing, making it happen.

[00:14:42] Speaker 04:
I mean, there are... Installing could mean activating.

[00:14:47] Speaker 04:
IE, deploying.

[00:14:49] Speaker 04:
I mean, I don't see anything in that description from the director's brief that suggests, OK, we've got to go into the kitchen and figure out how to cook up a brand new virtual machine that is tailored to exactly what the user wants.

[00:15:06] Speaker 04:
We've got to put in a little of this.

[00:15:07] Speaker 04:
We've got to put a little of that.

[00:15:09] Speaker 04:
We've got to mix it together.

[00:15:10] Speaker 04:
We've got to bake it.

[00:15:11] Speaker 04:
And now we've got a new virtual machine.

[00:15:13] Speaker 04:
that's tailored, customized for the user.

[00:15:16] Speaker 04:
This figure doesn't say that, it says the user wants what the user wants, that gets plugged into the system, and then bam-o, the system deploys an instance of the VM.

[00:15:27] Speaker 01:
By installing what the user wants on it, so like if the user wants Word, so if the user wants four CPUs and 32 megabytes of memory,

[00:15:38] Speaker 01:
on a Blade server, the system has to go and allocate particular CPUs, allocate particular memory, segregate it from everybody else that's using the resources on that thing, and receive the user specifications, and then install Windows or Mac OS, install whatever programs the user wants on there.

[00:16:00] Speaker 01:
I mean, I don't think this is actually in dispute from the director's perspective.

[00:16:05] Speaker 04:
So then you're saying the director is conceding that your claim construction is correct?

[00:16:09] Speaker 01:
No, I'm saying that the director is conceded by this description, that there is a template.

[00:16:15] Speaker 01:
The template includes the resources that the user wants, plus the software that the user wants running on those resources.

[00:16:24] Speaker 03:
I mean, it sounded to me like you're saying this is all going to be customized and each user is going to have very specific requirements, but does this exclude standardized templates where the user just gets to pick and say, I want this version A, this version B, this version C?

[00:16:42] Speaker 01:
Well, I mean, that's not what the patent describes.

[00:16:44] Speaker 01:
I mean, I don't think this aspect of the patent...

[00:16:52] Speaker 03:
describe this as creating something?

[00:16:55] Speaker 01:
I mean, I think the claim itself says the steps that are required.

[00:16:59] Speaker 01:
Pass?

[00:16:59] Speaker 03:
You can keep saying the steps, but you want us to use a different word or a different definition than the claims actually use.

[00:17:10] Speaker 03:
So does the specification somewhere suggest that deploy was actually meant to be defined as create?

[00:17:20] Speaker 01:
I think everything, everything, the word create.

[00:17:24] Speaker 03:
Is the word create ever used in the specification to describe deploying something?

[00:17:30] Speaker 01:
The word is not, it's a summary word to describe the process.

[00:17:36] Speaker 01:
The word create is not used.

[00:17:38] Speaker 01:
The process is

[00:17:40] Speaker 01:
Pass specifications.

[00:17:42] Speaker 01:
So there is a front end where the user tests the specifications.

[00:17:46] Speaker 01:
They put it in.

[00:17:47] Speaker 01:
Pass it to somebody.

[00:17:48] Speaker 01:
Implement it in the data center.

[00:17:50] Speaker 01:
So allocate resources for it.

[00:17:53] Speaker 01:
Call the hypervisor.

[00:17:54] Speaker 01:
And then install all the stuff that the user wants, that the user has specified on it.

[00:17:59] Speaker 01:
That is the process of deploying that is set forth specifically in the claim.

[00:18:04] Speaker 01:
I am way over time.

[00:18:05] Speaker 01:
Yes, you are.

[00:18:06] Speaker 05:
Thank you.

[00:18:06] Speaker 05:
Let's hear from the other side on what we started with.

[00:18:28] Speaker 02:
Thank you your honors Peter on behalf of the United States Patent and Trademark Office and I'd like to go first to Judge Prost's point because I think that's really the salient one here and that is that the board ascribed

[00:18:42] Speaker 02:
these claims, they're plain and ordinary meaning.

[00:18:44] Speaker 02:
And the patent owner in this case wants to argue for some kind of idiosyncratic definition.

[00:18:52] Speaker 05:
Well, except can you be a little more specific?

[00:18:53] Speaker 05:
I mean, she pointed to at least two things.

[00:18:55] Speaker 05:
One, explicitly the claim language.

[00:18:58] Speaker 05:
Yes.

[00:18:58] Speaker 05:
And two, figure two.

[00:19:01] Speaker 05:
So why do those not individually or collectively lead us to some sort of

[00:19:08] Speaker 05:
morphing, deploying into creating.

[00:19:11] Speaker 02:
Certainly, Your Honor.

[00:19:12] Speaker 02:
And the reason is that even if we credit all that we've heard here today about how the 612 patent describes this invention, that is merely the preferred embodiment.

[00:19:25] Speaker 02:
We see that on APPX 783, column 2, when describing these figures, it says,

[00:19:33] Speaker 02:
Figure 1 sets forward the functional block diagram of example apparatus.

[00:19:39] Speaker 02:
Figures 2 through 5, which was the focus of the argument, set forth flow charts illustrating example methods of autonomic scaling.

[00:19:52] Speaker 02:
And then go down further in the detailed description of the exemplary embodiments.

[00:19:57] Speaker 02:
Column 2, starting at line 46,

[00:20:01] Speaker 02:
Example methods apparatus and products for automating autonomic scaling of virtual machines are described in those figures and the question is Should we read the limitations of the preferred embodiments as shown in those figures?

[00:20:18] Speaker 02:
Into the claim and the answer is no because there's no clear reason to do so and ironically

[00:20:26] Speaker 02:
The definition that patent owner ascribes to deploying doesn't even do the most important thing that deploying should do, and that is putting it to work, making it do something.

[00:20:40] Speaker 02:
They just want it to be created, and they stop there.

[00:20:44] Speaker 04:
Are you saying that there's something in the spec that is a preferred embodiment that in fact is creating?

[00:20:52] Speaker 02:
No, they do not.

[00:20:54] Speaker 04:
I mean, I understood your argument to be, oh, well, this passage is just a preferred embodiment.

[00:20:59] Speaker 04:
That's not included in the claim.

[00:21:00] Speaker 04:
And I couldn't tell if what you were essentially implying is, OK, this passage, it may, in fact, be about creating a virtual machine instance.

[00:21:10] Speaker 02:
I was crediting their argument, giving it its full, strong support.

[00:21:17] Speaker 02:
But the patent itself does not actually use creating.

[00:21:22] Speaker 02:
you know, passing a template, installing all the things that were discussed.

[00:21:25] Speaker 02:
It doesn't.

[00:21:26] Speaker 04:
And so that takes us to this where in clause at the very end of the claim.

[00:21:30] Speaker 02:
That's right.

[00:21:30] Speaker 04:
All of this, you know, various steps.

[00:21:35] Speaker 04:
And, you know, this feels a little bit like a late plot twist in the show.

[00:21:42] Speaker 04:
Because I don't remember this being that much of a focus in the briefing.

[00:21:50] Speaker 04:
set of claim language and explain why, in your view, this either individually or collectively doesn't amount to the actual act of grabbing various existing resources to essentially manufacture a new virtual machine from them?

[00:22:13] Speaker 02:
Certainly, Your Honor.

[00:22:14] Speaker 02:
I think it's important.

[00:22:15] Speaker 02:
There's been some discussion about the file history, and if you go back and look at the

[00:22:20] Speaker 02:
the claims as they existed, as they were on appeal.

[00:22:23] Speaker 02:
They did not include the wear-in limitation.

[00:22:26] Speaker 02:
That was added by Examiner's amendment after the appeal.

[00:22:30] Speaker 02:
All of this was in a dependent claim, further narrowing what deployment meant.

[00:22:37] Speaker 02:
And imagine if this case had been presented to this court with that claim as a dependent claim.

[00:22:43] Speaker 02:
We'd be in here arguing that this is claim differentiation.

[00:22:47] Speaker 02:
And that's essentially what we have here.

[00:22:49] Speaker 02:
We don't dispute that deploying has a number of different

[00:22:53] Speaker 02:
Sub steps to it.

[00:22:55] Speaker 02:
We see that in the flowchart.

[00:22:56] Speaker 04:
We see that we walk through these certainly sub steps Yes, that's that's really what I'm interested in understanding as a technical matter Yes, what is going on with this self-service portal?

[00:23:07] Speaker 04:
What is going on with this data center administration center?

[00:23:11] Speaker 04:
Well, what is going on with this hypervisor, right?

[00:23:15] Speaker 02:
Well, we don't dispute that

[00:23:17] Speaker 02:
that these VMs are tailored to the individual user.

[00:23:21] Speaker 02:
If you want a virtual machine that runs Mac OS, you need to specify, OK, I need Mac OS.

[00:23:28] Speaker 02:
So those are the user specifications that

[00:23:32] Speaker 02:
And then there is a template that's associated with that.

[00:23:34] Speaker 02:
You might need a Intel processor.

[00:23:36] Speaker 02:
You might need one gigabyte of memory.

[00:23:39] Speaker 02:
You might need a certain I.O.

[00:23:42] Speaker 02:
input output in order to access a certain legacy system or something like that.

[00:23:46] Speaker 02:
We don't dispute that you have to make those specifications.

[00:23:50] Speaker 02:
And they have apparently prefabbed templates that you can use to sort of construct your template.

[00:23:58] Speaker 02:
And I don't think there's any dispute that at some point,

[00:24:01] Speaker 02:
These virtual machines have to be assembled and created in some form.

[00:24:06] Speaker 04:
OK, so that's the buzzword, created.

[00:24:09] Speaker 04:
Are you saying that what this claim language here at the end of the claim amounts to is assembling a virtual machine, creating a virtual machine?

[00:24:23] Speaker 02:
sub-steps of deploying a virtual machine.

[00:24:27] Speaker 04:
The issue is... And do the sub-sets include actually creating the virtual machine?

[00:24:33] Speaker 02:
Your Honor, with all due respect, we think that that's a red herring because the claim does not use creating and we also know that in the prior art, those virtual machines have to be created at some point as well, right?

[00:24:49] Speaker 02:
They don't just appear out of thin air.

[00:24:51] Speaker 02:
The virtual machines

[00:24:53] Speaker 02:
also were created in Miller and in Keighy at some point.

[00:24:57] Speaker 02:
The only question is, is part of this claimed deployment, must they be an essential part of this step?

[00:25:07] Speaker 02:
Or could they have been created somewhere in the past and just be sitting there waiting to be deployed, not unlike an army that's being deployed just in its ordinary use?

[00:25:19] Speaker 04:
I'm waiting for you to talk to me about this passing subset, this implementing subset, this calling subset at the very end of claim one, and walk through it, and give us your view of what's the right understanding of any of that, and why

[00:25:43] Speaker 04:
Those steps, either individually or collectively, still do not amount to the action of creating a VM instance.

[00:25:51] Speaker 04:
Because in your view, this is really about other activity, I guess, dealing with an already existing virtual machine.

[00:26:00] Speaker 04:
Or not.

[00:26:02] Speaker 04:
I mean, if you want to tell us this is part and parcel to actually creating the virtual machine, then tell us that.

[00:26:13] Speaker 02:
We would concede that, Bob.

[00:26:15] Speaker 02:
We don't care, and the claims don't care, whether or not it previously existed.

[00:26:22] Speaker 04:
I'm getting worried because this claim, earlier in the middle of the claim, it says, of course, deploying an additional instance of the VM.

[00:26:31] Speaker 04:
And then later calls back to that limitation, says we're in,

[00:26:36] Speaker 04:
blah, blah, blah, deploying an instance of a VM further comprises colon, and then all these further steps.

[00:26:43] Speaker 04:
So whatever these steps are, if you're saying that they encompass the creation of that virtual machine instance, that's necessarily part of the act of deploying the instance of the virtual machine.

[00:26:58] Speaker 04:
And so therefore, deploying

[00:27:01] Speaker 04:
now has embedded inside of it, right, inside of the claim language, the notion of creating said instance of virtual machine.

[00:27:09] Speaker 02:
We don't dispute that these sub-steps are part of that deploying step.

[00:27:16] Speaker 02:
And the Patnaw, in their case, conceded that these steps were satisfied by the prior art.

[00:27:25] Speaker 02:
They did not dispute that those elements were satisfied.

[00:27:29] Speaker 02:
And I could point you to the

[00:27:31] Speaker 02:
the board's final decision where they didn't dispute it.

[00:27:35] Speaker 05:
Well, I guess I'm getting more and more confused.

[00:27:37] Speaker 05:
I mean, that's a different answer.

[00:27:39] Speaker 05:
It could be that the prior art had creating as well.

[00:27:42] Speaker 05:
And that's why this case goes down.

[00:27:44] Speaker 05:
But that's not the way I thought this was being argued.

[00:27:50] Speaker 02:
The question is really, did these have to?

[00:27:52] Speaker 02:
Could these virtual machines have pre-existed, the deployment?

[00:27:59] Speaker 02:
or not?

[00:28:00] Speaker 02:
And the answer is yes, that the claims are broad enough to deploy pre-existing virtual machines.

[00:28:08] Speaker 02:
They don't have to be created at the time.

[00:28:11] Speaker 05:
And I didn't hear you respond to Judge Chen, but I thought the difference, and I'm not sure how much of a difference it was, but you were saying bring into effective action.

[00:28:21] Speaker 05:
So I guess the opposite of that was they weren't effectively in action beforehand.

[00:28:29] Speaker 05:
And the board said and the petitioner said, that's different than bringing it into existence.

[00:28:34] Speaker 02:
That's right, Your Honor.

[00:28:36] Speaker 02:
That's right.

[00:28:36] Speaker 02:
And there's no dispute that in the Miller reference, that those

[00:28:41] Speaker 02:
that those virtual machines existed.

[00:28:44] Speaker 05:
And the only question was- Well, how do we know, though, that that bringing into effective action is what's going on here in the claims versus bringing it into existence?

[00:28:54] Speaker 05:
How do we know that that's the difference between the two of those?

[00:28:58] Speaker 04:
Let me be very clear.

[00:29:00] Speaker 04:
I thought I heard you say that these final sub-steps

[00:29:05] Speaker 04:
do encompass creating a virtual machine at the time that the user is requesting resources in order to do some processing.

[00:29:18] Speaker 04:
And if you admit and agree that these final subsets do encompass the act of creating a virtual machine, then you've given the game away.

[00:29:27] Speaker 04:
Then I can't do anything except the idea that deploying necessarily includes creating.

[00:29:36] Speaker 04:
So did I misunderstand you?

[00:29:39] Speaker 02:
I believe you did, your honor.

[00:29:40] Speaker 02:
I certainly didn't give the game away.

[00:29:42] Speaker 02:
What I said was that deploying includes, as we can see from the claim, these additional subsidiaries.

[00:29:52] Speaker 02:
Whether that means creating us that they have used it in the term, to me is sort of beside the point.

[00:30:00] Speaker 02:
That's not what the claim says.

[00:30:03] Speaker 02:
It admittedly requires these additional steps as part of the deploying.

[00:30:08] Speaker 02:
And in fact,

[00:30:09] Speaker 02:
As I said, they can see that the prior art performs these additional steps.

[00:30:14] Speaker 02:
So those are not in dispute.

[00:30:16] Speaker 02:
And so presumably that could be done with these existing virtual machines, whether they're created in the first instance or not.

[00:30:26] Speaker 04:
I still haven't heard you explain what these sub-steps are.

[00:30:30] Speaker 04:
Are you familiar with these sub-steps?

[00:30:32] Speaker 04:
I don't know if they've really been highlighted adequately through the briefing and ventilated.

[00:30:42] Speaker 04:
In order for me to affirm the board's claim construction, I have to reach a conclusion that these sub-steps don't encompass and are not directed to creating a new virtual machine instance at the time a user requests resources to do some workload processing.

[00:31:05] Speaker 04:
So you are telling me whatever's going on in these sub-steps

[00:31:10] Speaker 04:
is not creating a new virtual machine at that time.

[00:31:14] Speaker 04:
So if it's not doing creating a new virtual machine, what are these actions doing?

[00:31:23] Speaker 02:
They could be fulfilled by existing virtual machines.

[00:31:30] Speaker 02:
They don't dispute that.

[00:31:32] Speaker 02:
OK, so by definition, that is.

[00:31:34] Speaker 04:
If they do dispute that, their argument is no.

[00:31:38] Speaker 04:
you know, taking in all these user specifications, requesting a virtual machine instance, and then you are, you know, doing something at the deployment engine with a VM template, and then you're calling a hypervisor to install the VM template as an instance of a VM on the cloud computer.

[00:32:10] Speaker 02:
Well, if I, yeah.

[00:32:12] Speaker 04:
Can you translate that for me?

[00:32:17] Speaker 02:
I mean, I can do my best to explain it, Your Honor.

[00:32:20] Speaker 02:
But before I do, I would just point the court to APPX 50, where this whole wherein clause is discussed.

[00:32:30] Speaker 02:
And then we go to APPX 51, and it says, at an owner, does not directly dispute petitioner's contention.

[00:32:38] Speaker 02:
The only thing that they're contending is whether or not deploy in the first instance requires creating it out of whole cloth.

[00:32:49] Speaker 02:
But it doesn't dispute that these virtual machines can satisfy these later, or at least as described in Miller, do satisfy these later elements.

[00:32:59] Speaker 02:
But I can describe this further.

[00:33:03] Speaker 02:
But I think it is helpful to understand, to step back for a moment and think,

[00:33:07] Speaker 02:
What if these steps were in the dependent claim still, as they were presented?

[00:33:14] Speaker 02:
We wouldn't be limiting, even if that does describe creating.

[00:33:23] Speaker 02:
We wouldn't read those limitations into deploying.

[00:33:28] Speaker 02:
And that's effectively what they're arguing here, is that you should narrow deploying to creating,

[00:33:37] Speaker 02:
What they're saying is that these more specific steps are what implement creating.

[00:33:44] Speaker 02:
Certainly, we wouldn't read those into.

[00:33:47] Speaker 02:
We wouldn't read create in if those limitations appeared in a dependent claim.

[00:33:52] Speaker 02:
That's how they were presented.

[00:33:54] Speaker 04:
I guess what I'm trying to figure out is, in the end, when it says install the VM template as an instance of a VM, why aren't you just saying install doesn't mean create?

[00:34:08] Speaker 02:
Again, I don't know what they mean by create.

[00:34:11] Speaker 02:
Apparently they mean by create what's recited in these steps.

[00:34:19] Speaker 02:
And perhaps more.

[00:34:21] Speaker 02:
I don't know.

[00:34:21] Speaker 02:
And that's the problem with reading the limitations from the specification.

[00:34:26] Speaker 02:
There might be other steps that are also described in the specification that are part and parcel of deploying a virtual machine in this scheme.

[00:34:38] Speaker 02:
And yet, where do we stop?

[00:34:40] Speaker 02:
And that's why we have the rule that we don't read limitations from the specification

[00:34:45] Speaker 02:
into the claim, absent some compelling reason to do so, and they've given you none.

[00:34:51] Speaker 02:
They said this is what the preferred embodiment describes.

[00:34:55] Speaker 02:
That's not enough to read those limitations into the claim.

[00:35:02] Speaker 05:
I'm looking back at your brief now, because I recall that at least for the first issue, for the flagging issue, you made an alternative argument that even if you accept Pat Noner's claims instructions, the prior art still leads on it.

[00:35:16] Speaker 05:
Did you make a similar argument?

[00:35:18] Speaker 05:
I mean, today, in responding to this deploying thing, you've been making comments about how all this stuff was in the prior art.

[00:35:25] Speaker 05:
Is there an alternative argument presented that even accepting the Pat Noner's construction

[00:35:32] Speaker 05:
or not differentiating between creating and deploying, whatever it is, it still reads on the prior art.

[00:35:40] Speaker 02:
There is an argument, well...

[00:35:45] Speaker 02:
As I understand it, there were two theories presented.

[00:35:48] Speaker 02:
One was kegi alone describes adding and terminating, because it describes scaling up the resources of the virtual M to sort of an unlimited extent, which

[00:36:07] Speaker 02:
down to zero, resulting in termination.

[00:36:10] Speaker 02:
I don't know that that directly answers your question, your honor, about whether we presented an alternative that goes directly to this deploying.

[00:36:26] Speaker 02:
But I think that the board's claim constructions are correct, both flagging and deploying,

[00:36:36] Speaker 02:
We haven't really talked about in Ray Smith.

[00:36:39] Speaker 02:
And I think that that really sort of shows the extent to which they're trying to reach in this case to claim something that the claim language itself doesn't subscribe.

[00:36:52] Speaker 02:
And I'm happy to discuss that and why that case is not a point.

[00:36:57] Speaker 05:
But can I ask a very basic, ignorant question, which is you've got two different terms in the claim.

[00:37:04] Speaker 05:
Does the board's analysis on both of those have to prevail in order for these claims to go down?

[00:37:10] Speaker 05:
Or is one of them sufficient?

[00:37:13] Speaker 05:
Are they independent claims?

[00:37:14] Speaker 04:
They're independent.

[00:37:15] Speaker 04:
Yes.

[00:37:15] Speaker 05:
They're independent?

[00:37:16] Speaker 05:
Yes.

[00:37:17] Speaker 05:
OK, because they were in different claims.

[00:37:19] Speaker 02:
They're in the same claim, but either one of them, if absent from the prior, would be grounds for vacating the board's decision.

[00:37:30] Speaker ?:
OK.

[00:37:32] Speaker 02:
Any further questions?

[00:37:36] Speaker 05:
No, thank you.

[00:37:38] Speaker 02:
I'm dissatisfied with my answers.

[00:37:42] Speaker 02:
Thank you, Your Honor.

[00:37:42] Speaker 05:
Thank you.

[00:37:46] Speaker 05:
OK, will we store three minutes of rebuttal?

[00:37:55] Speaker 01:
Your Honors, I think what we just heard actually

[00:37:58] Speaker 01:
establishes my point perfectly.

[00:38:01] Speaker 01:
Those final three elements, they are not in a dependent claim.

[00:38:04] Speaker 01:
They are in the independent claim.

[00:38:06] Speaker 01:
They are further elements of the word deploying.

[00:38:09] Speaker 01:
So they must be part of deploying.

[00:38:12] Speaker 01:
And to start with, if we look at APPX 51, which is where the office just pointed us, and it talked about how we conceded that these elements were in the prior arc.

[00:38:25] Speaker 01:
But if you look at what the petition says the elements mean, it says petitioner contends that Miller's LBM receives VM configurations from the self-service portal and uses them to create new VMs with those configurations.

[00:38:43] Speaker 01:
So in the petition to meet these final three elements, which define deploying, the petitioner pointed to using a self-service portal to create

[00:38:55] Speaker 01:
Now, if we go to the specification, we were asked about, like, you know, we asked the director, the solicitor's office, you know, what do these elements mean?

[00:39:09] Speaker 01:
Well, the specification, there is no other embodiment.

[00:39:11] Speaker 01:
There aren't alternative embodiments.

[00:39:13] Speaker 01:
There's one description of how this works with the templates.

[00:39:16] Speaker 01:
And I will tell the court I'm not going to read it all, but it starts at the bottom of column four, page 8PPX 784.

[00:39:25] Speaker 01:
on line 63, and it says... Hold on.

[00:39:30] Speaker 01:
Column four.

[00:39:31] Speaker 01:
Column four.

[00:39:31] Speaker 01:
So it starts with, in the example of the cloud computing system of figure one, self-service portal... I'm sorry, what line in column four?

[00:39:38] Speaker 01:
I'm sorry, 63.

[00:39:40] Speaker 01:
Okay.

[00:39:42] Speaker 01:
In the example, figure one, self-service portal exposes the user interface for access who is authorized to install a VM on the user system.

[00:39:53] Speaker 01:
Let me go over to the next column.

[00:39:55] Speaker 01:
And we can move to line, I'm just doing this quickly because we don't have much time, page seven.

[00:39:59] Speaker 01:
The user specification includes for each- I'm sorry, where are you now?

[00:40:03] Speaker 01:
Column five, line seven.

[00:40:05] Speaker 04:
Five, line seven, okay.

[00:40:07] Speaker 01:
The user, so this is using the portal.

[00:40:09] Speaker 01:
The user specifications include each VM specifications of the computer resources to be provided as the VM.

[00:40:16] Speaker 01:
Types of different processors, quantity of random access memory, hard disk storage, input output, applications, et cetera.

[00:40:25] Speaker 01:
And it describes that.

[00:40:26] Speaker 01:
Then you move down to the next paragraph, and now it describes what happens.

[00:40:30] Speaker 01:
And this parallels the language and the specification and the claim that I just read.

[00:40:34] Speaker 03:
So your view is basically that this entire process and the entire invention here could never use already created virtual machines.

[00:40:44] Speaker 03:
The way it works is when you need more resources,

[00:40:48] Speaker 03:
somebody puts in a request, or it's automated, however it's done, with what it needs.

[00:40:55] Speaker 03:
And that process will always result in the creation and deployment of a new one.

[00:41:00] Speaker 01:
Yeah, I mean, that's what the patent is all about.

[00:41:02] Speaker 04:
I mean, it says we'll- But we're looking for the best language that tells us that.

[00:41:06] Speaker 01:
The best language, yes.

[00:41:08] Speaker 01:
So here I was, column five.

[00:41:09] Speaker 01:
Beginning line 20 it starts with the self-service portal it describes and this in this paragraph I will just point the court to it, but the self-service portal and it describes how it passes The deployment engine selects a VM template that matches these specifications And it describes if it's an Intel processor Etc etc exactly what I said in my opening thing then the data center administrator at line 34

[00:41:37] Speaker 01:
The data center administrator server then calls the hypervisor on a cloud computer, same language in the claim, to install the instance of the VM specified by the selected completed VM template.

[00:41:50] Speaker 01:
The data center administrator server records a network address assigned to the new instance of the VM, as well as a unique identifier.

[00:42:01] Speaker 01:
Each time it does this, the whole patent is about specify what I want,

[00:42:05] Speaker 04:
Right.

[00:42:06] Speaker 01:
And then clone me.

[00:42:07] Speaker 04:
This new instance, I mean, there aren't many.

[00:42:12] Speaker 04:
This might be the only reference to a new instance in this sentence.

[00:42:15] Speaker 04:
And it could just mean newly deployed instance.

[00:42:22] Speaker 04:
And this is the question mark for me all along, which is we're talking about all these user specifications

[00:42:32] Speaker 04:
and then get a design of exactly what it is that the user wants.

[00:42:36] Speaker 04:
And then all of a sudden, the patent talks about, then you deploy the instance of the specified VM.

[00:42:45] Speaker 04:
And it doesn't itself explain how it got from A to B. How did it get from the receipt of the user specifications to the now deployment of the instance?

[00:42:59] Speaker 04:
That is, there's a gap in this patent in terms of how we get from one point to the other.

[00:43:06] Speaker 04:
Did you have an expert declaration that says, here's what's going on here?

[00:43:12] Speaker 01:
I don't recall the expert declaration that describes this exactly, but I think if you go to page 51 of the final written decision and you look at how the petition meets those claim elements,

[00:43:25] Speaker 01:
In each case, I mean, when the petitioner is talking about, just like the office did here, when the petitioner is meeting those final three elements of the claim, it's always talking about creating.

[00:43:39] Speaker 01:
And the petitioner actually uses the word creating.

[00:43:42] Speaker 05:
Where are you on page 51?

[00:43:45] Speaker 01:
It was appendix page 51, I believe.

[00:43:50] Speaker 01:
which the Solicitor's Office pointed us to.

[00:43:53] Speaker 01:
It's the discussion of how the petition describes meeting these final three elements of the claim.

[00:44:05] Speaker 01:
Let's see, where is it?

[00:44:13] Speaker 05:
But that's just talking about Miller.

[00:44:16] Speaker 05:
They contend that Miller and then uses them to create VMs with these configurations.

[00:44:20] Speaker 01:
Right.

[00:44:20] Speaker 01:
So I guess my point is, if we just back up for a second, how do you meet these final three elements of the claim?

[00:44:30] Speaker 03:
Let's say there's a hypothetical system out there that doesn't allow the user to ask for specific customized VMs.

[00:44:43] Speaker 03:
you're given a menu, and the menu is option A gives you this kind of resources, option B gives you this, option C gives you that.

[00:44:53] Speaker 03:
The user does that and picks one of them, and then the hypervisor or whatever already pre-stored a bunch of different versions of A, B, and C, and all they do is deploy already pre-stored.

[00:45:09] Speaker 03:
Would your patent cover that, or if that's

[00:45:13] Speaker 03:
The system, it doesn't infringe the patent.

[00:45:16] Speaker 01:
I don't think so, because this deploying... You don't think what?

[00:45:19] Speaker 01:
I don't think it would cover that, because this deploying step says, I mean, this is cloud resources.

[00:45:26] Speaker 01:
The cloud provider, this is in Keagy, this is in the expert declarations.

[00:45:29] Speaker 01:
I don't think this is disputed.

[00:45:31] Speaker 01:
The cloud provider wants the resources to be available and paid for by as many people as possible.

[00:45:36] Speaker 01:
So we don't just set aside Intel processors for people to come along and use with Word installed on them.

[00:45:42] Speaker 01:
It's just not the way the systems work in the first place.

[00:45:45] Speaker 01:
But second, the actual deploying step says not just go grab something, but install the things that I want.

[00:45:56] Speaker 01:
And when you read the, I went because- Right, right.

[00:45:57] Speaker 03:
What I was trying to get at is,

[00:45:59] Speaker 03:
If the install the things I want are limited to choices that have already been pre-selected, then it could be the fact that they're just deploying instances of already created VM terminals.

[00:46:12] Speaker 03:
Do you think that your patent can't be read so broadly as to include that?

[00:46:17] Speaker 01:
I do not.

[00:46:18] Speaker 01:
I don't think it is to include that.

[00:46:20] Speaker 01:
And I think the whole purpose of the patent was before a system administrator had to sit there and specify

[00:46:26] Speaker 01:
I want this process, or I want this stuff.

[00:46:27] Speaker 01:
And then the system would go allocate the resources.

[00:46:30] Speaker 01:
This is all about autonomical scaling.

[00:46:32] Speaker 01:
So it's saying, I have a workload.

[00:46:34] Speaker 01:
I need all these documents processed.

[00:46:36] Speaker 01:
I want it done on this computer.

[00:46:38] Speaker 01:
If this one gets too busy, clone it.

[00:46:41] Speaker 01:
If it gets too busy again, clone it.

[00:46:43] Speaker 01:
If it's not busy anymore, terminate it.

[00:46:45] Speaker 01:
I don't want to pay for it anymore.

[00:46:46] Speaker 01:
Terminate it.

[00:46:47] Speaker 01:
I don't want to pay for it.

[00:46:48] Speaker 04:
But what did the board say about these final clauses of claim one?

[00:46:51] Speaker 01:
The board didn't really address it it is and well did you argue it it was in the patent owner response it absolutely wasn't a response Page nine of the patent owner response

[00:47:28] Speaker 01:
I mean, I do believe the director was being forthright and conceding.

[00:47:32] Speaker 01:
I mean, these final steps are about creating a VM.

[00:47:36] Speaker 01:
The same thing goes with regard to flagging for terminating, which we haven't really got to, I would say, very briefly.

[00:47:41] Speaker 04:
But no, you're not going to get the flagging now.

[00:47:44] Speaker 04:
But why do we have to read the word install at the end of the claim as necessarily meaning creating?

[00:47:55] Speaker 04:
I guess I'm still.

[00:47:58] Speaker 04:
You know, just like, creating is not a natural synonym of deploying.

[00:48:06] Speaker 04:
And I don't know why.

[00:48:08] Speaker 04:
Creating is necessarily the same thing as installing.

[00:48:13] Speaker 01:
Well, so I think deploying here is bigger.

[00:48:15] Speaker 01:
So I think this is one thing that the director was saying.

[00:48:17] Speaker 04:
Well, just assume for now that the most natural understanding of deploy doesn't include create.

[00:48:23] Speaker 04:
Now I've got to ask myself, what does the word install mean?

[00:48:28] Speaker 04:
Does that somehow?

[00:48:29] Speaker 04:
and understanding that we're doing some creating here.

[00:48:33] Speaker 01:
So I think I went very quickly through the end of column four and column five.

[00:48:37] Speaker 01:
But it really does talk about the entire process that I described in my opening argument, which is you have a bunch of processors out there.

[00:48:46] Speaker 01:
You have a bunch of memory.

[00:48:47] Speaker 01:
This whole patent is about pick the specific template that you want, run a workload on it.

[00:48:55] Speaker 01:
If it gets too busy, clone it.

[00:48:59] Speaker 01:
If it gets too light, delete it.

[00:49:01] Speaker 01:
That's what the whole patent is about.

[00:49:02] Speaker 01:
The claim doesn't say clone anything.

[00:49:05] Speaker 01:
I understand the point.

[00:49:06] Speaker 01:
I'm simplifying, for sure.

[00:49:08] Speaker 01:
But if you read column five, that's exactly it.

[00:49:11] Speaker 01:
So when it's creating, it actually is allocating a particular processor.

[00:49:15] Speaker 01:
I mean, it's described here.

[00:49:16] Speaker 01:
It allocates a processor.

[00:49:17] Speaker 01:
It allocates an IO bus.

[00:49:19] Speaker 01:
And these are physical resources that it has to pick.

[00:49:24] Speaker 01:
And then I guess my very final comment is deploying in the claim is these final three elements plus putting the workload on it.

[00:49:34] Speaker 01:
So in that context, it is deploying.

[00:49:38] Speaker 01:
It creates it and puts it to work.

[00:49:41] Speaker 01:
So thank you.