UNITED STATES DISTRICT COURT

WESTERN DISTRICT OF TEXAS

WACO DIVISION

)

Intellectual Ventures II LLC, ) Civil Action No. 6:20-cv-220

)

Plaintiff, )

)

v. )

)

VMware, Inc. )

)

Defendant. ) JURY TRIAL DEMANDED

)

COMPLAINT FOR PATENT INFRINGEMENT

Plaintiff, Intellectual Ventures II LLC (“IV”), for its complaint against defendant,

VMware, Inc. (“VMware”), hereby alleges as follows:

THE PARTIES

1. Intellectual Ventures II LLC (“Intellectual Ventures II”) is a Delaware limited

liability company having its principal place of business located at 3150 139th Avenue SE, Bellevue,

Washington 98005.

2. Upon information and belief, VMware is a Delaware corporation with its

headquarters located at 3401 Hillview Avenue, Palo Alto, California. VMware has regular and

established places of business in this District, including two in Austin, Texas with over 700

employees. VMware also has at least two other offices in Texas—one in Coppell, Texas, and the

other in Farmers Branch, Texas. Defendant may be served with process through its registered

agent, Corporation Service Company, d/b/a CSC-Lawyers Incorporating Service Company, 211

E. 7

th Street, Ste. 620, Austin, Texas 78701-3136

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JURISDICTION

3. This is a civil action for patent infringement under the patent laws of the United

States, 35 U.S.C. § 271, et seq. This Court has subject matter jurisdiction under 28 U.S.C. §§ 1331

and 1338(a).

4. This Court has general personal jurisdiction over VMware because VMware is

engaged in substantial and not isolated activity at its regular and established places of business

within this judicial district. This Court has specific jurisdiction over VMware because VMware

has committed acts of infringement giving rise to this action and has established more than

minimum contacts within this judicial district, such that the exercise of jurisdiction over VMware

in this Court would not offend traditional notions of fair play and substantial justice.

5. Venue is proper in this judicial district pursuant to 28 U.S.C. §§ 1391(b)-(c) and

1400(b) because VMware maintains regular and established places of business and has committed

acts of patent infringement within this judicial district.

FACTUAL BACKGROUND

6. Intellectual Ventures Management, LLC (“Intellectual Ventures”) was founded in

2000. Since then, Intellectual Ventures has been involved in the business of inventing. 

Intellectual Ventures fosters inventions and facilitates the filing of patent applications for those

inventions; collaborates with others to develop and patent inventions; and acquires and licenses

patents from individual inventors, universities, corporations, and other institutions. A significant

aspect of Intellectual Ventures’ business is managing the plaintiff in this case, Intellectual

Ventures II. 

7. One founder of Intellectual Venturesis Nathan Myhrvold, who worked at Microsoft

from 1986 until 2000 in a variety of executive positions, culminating in his appointment as the

company's first Chief Technology Officer (“CTO”) in 1996. While at Microsoft, Dr. Myhrvold

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founded Microsoft Research in 1991, and was one of the world’s foremost software experts. 

Between 1986 and 2000, Microsoft became the world’s largest technology company.

8. Under Dr. Myhrvold’s leadership, IV acquired more than 70,000 patents covering

some important inventions of the Internet era. Many of these inventions coincided with Dr.

Myhrvold’s successful tenure at Microsoft.

9. Two significant accomplishments of the Internet era are the related technologies of

cloud computing and virtualization. Cloud computing enables ubiquitous access to shared pools

of configurable computing system resources, such as memory, and higher-level services, such as

virtual desktops or applications that run on these system resources. These resources and services,

often collectively referred to as “the cloud,” can be rapidly provisioned with minimal management

effort, often over the Internet. Virtualization allows for the creation of multiple software

environments of dedicated resources that each simulate for its users a computing environment

that was traditionally physically distinct such as a server or an operating system.

10. Three of the many beneficial consequences of cloud computing and virtualization

are the consolidation of server resources that businesses require to run a varied suite of software

applications, the increased continuity of those server resources, and the outsourcing of those

server resources to companies that operate large server clouds. Server resources are consolidated

by replacing large numbers of physically distinct computer servers with a smaller number of

computer servers, where each can host many virtual servers (also known as virtual machines). 

Each virtual machine (or “VM”) can execute the functions previously delivered by an entire

computer server. Many VMs can run on a single physical server, which results in server

consolidation and promotes scalability. Increased continuity is achieved in large part by enabling

VMs to seamlessly move from one computer server to another computer server, for example, in

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the event that the first server becomes overloaded. Outsourcing of server resources requires

technology that provides several different customers (i.e., users) access to a pool of those

resources across a network, while providing each of those customers fault tolerance, performance

and security isolation from the other customers accessing that same pool of resources.

11. The consolidation of servers by replacing a physical server with a virtual server has

enabled services to migrate into giant centralized “clouds,” such as the Google or Amazon cloud,

and more generally allows access to shared pools of configurable computing resources and

services over the Internet. This enables services to be delivered to a given customer using

centralized servers that seem as though they were located just a few feet away from the user, even

if they are actually located hundreds or even thousands of miles away (hence the terms “virtual

service” and “virtual server”). 

12. The concept of transferring VMs, in the event of a computer server overload, to a

different computer server has made VMs far less prone to outages, which in turn has changed

how companies that provide virtualization technologies such as VMware are perceived. Such

virtualization technology companies were previously associated with the limited function of

server consolidation and thought of as relatively unreliable. With the more resilient architecture

afforded by VMs that can move from physical server to physical server, however, virtualization

companies are now also recognized as critical enablers of business continuity and availability.

13. Outsourcing of server resources to pools of physical servers, such as those found in

data centers, enables large-scale and inexpensive delivery of virtual server services to a wide

range of customers scattered across the Internet. The availability of large-scale and inexpensive

virtual server services to the public at large has further enabled customers to focus less on building

and maintaining their own network of physical computer servers and more on running their core

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businesses. It has also allowed small and mid-size businesses to enjoy the sorts of cutting-edge

computing technologies that were previously reserved for larger companies that could afford to

build and maintain their own sophisticated networks of physical servers. 

14. VMware provides virtualization solutions and services to its customers. VMware’s

product offerings include: vSphere (including vCenter Server, vMotion and ESX/ESXi

hypervisor), VMware’s foundational virtualization platform; Horizon/Horizon View; SDWAN/VeloCloud, VMware’s SD-WAN solution; NSX, VMware’s network virtualization

solution; and vSAN, VMware’s storage virtualization product. With 117 worldwide offices,

VMware markets and sells these solutions and services throughout the globe, including in the

United States and Texas.

THE PATENTS-IN-SUIT

15. On May 10, 2016, the Patent and Trademark Office (PTO) issued United States

Patent No. 9,338,217 (“the ’217 patent”), titled METHOD AND APPARATUS FOR

COMPUTING WITHIN A WIDE AREA NETWORK. The ’217 patent is valid and enforceable. 

A copy of the ’217 patent is attached as Exhibit A.

16. The ’217 patent relates to a system, method and/or apparatus for an improved way

to provide remotely hosted virtual machines to users.

17. On June 20, 2017, the PTO issued United States Patent No. 9,686,378 (“the ’378

patent”), titled CONTENT MANAGEMENT AND TRANSFORMATION SYSTEM FOR

DIGITAL CONTENT. The ’378 patent is valid and enforceable. A copy of the ’378 patent is

attached as Exhibit B.

18. On July 28, 2015, the PTO issued United States Patent No. 9,092,546 (“the ’546

patent”), titled CONTENT MANAGEMENT AND TRANSFORMATION SYSTEM FOR

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DIGITAL CONTENT. The ’546 patent is valid and enforceable. A copy of the ’546 patent is

attached as Exhibit C.

19. On March 21, 2006, the PTO issued United States Patent No. 7,016,963 (“the ’963

patent”), titled CONTENT MANAGEMENT AND TRANSFORMATION SYSTEM FOR

DIGITAL CONTENT. The ’963 patent is valid and enforceable. A copy of the ’963 patent is

attached as Exhibit D.

20. The ’546, ’378 and ’963 patents relate to systems, methods and/or apparatus for an

improved way to invoke and deliver server-based applications to remote client devices based on

unique client characteristics.

21. On November 9, 2004, the PTO issued United States Patent No. 6,816,464 (“the

’464 patent”), titled METHOD, SYSTEM, AND COMPUTER PROGRAM PRODUCT FOR

ROUTE QUALITY CHECKING AND MANAGEMENT. The ’464 patent is valid and

enforceable. A copy of the ’464 patent is attached as Exhibit E.

22. The ’464 patent relates to a system, method and/or apparatus for an improved way

to test candidate network routes and select a subset thereof for interconnecting gateways across a 

wide area network (WAN).

23. Intellectual Ventures II is the owner and assignee of all rights, title and interest in

and to the ’217 patent, the ’378 patent, the ’546 patent, the ’963 patent, and the ’464 patent, and

holds all substantial rights therein, including the rights to grant licenses, to exclude others, and to

enforce and recover past damages for infringement of those patents.

COUNT I

(VMware’s Infringement of U.S. Patent No. 9,338,217)

24. Paragraphs 1-23 are reincorporated by reference as if fully set forth herein.

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25. The elements claimed by the ’217 patent, taken alone or in combination, were not

well-understood, routine or conventional to one of ordinary skill in the art at the time of the

invention. Rather, the ’217 patent claims and teaches, inter alia, an improved way to provide

remotely hosted virtual machines to users, which was not present in the state of the art at the time

of the invention. The invention improved upon then existing remote computing technology by

providing a hosting platform capable of delivering virtual machines to remote clients over a

network that each appear to clients as a fully functional computer. The invention further improved

on prior art solutions by storing a user’s personal state on the remote hosting platform and

allowing migration of the virtual machine across hosts while maintaining said personal state. 

26. Instead of providing downloadable applets which had to be run on a user’s local

machine, or allowing limited remote control of conventional computers in a master/slave

configuration, the inventions of the ’217 patent allowed for delivery and use of remotely hosted

virtual machines via a network, which were able to maintain user personal state and migrate from

host to host. Thus, the resulting virtual machines were more reliable, untethered to a particular

host or client machine, and provided full functionality to users relative to the prior art systems

discussed above. 

27. The invention represented a technical solution to an unsolved technological

problem. The written description of the ’217 patent describes, in technical detail, each of the

limitations in the claims, allowing a person of skill in the art to understand what those limitations

cover, and therefore what was claimed, and also understand how the non-conventional and nongeneric ordered combination of the elements of the claims differ markedly from what had been

conventional or generic in the industry at the time of the inventions of the ’217 patent. More

specifically, the claims of the ’217 patent each recite receiving at a server from at least one

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network accessible computer a request, the host configured to implement a network accessible

stored personal state which is remotely stored at a remote server and accessible via the internet,

the network accessible stored personal state including a network accessible stored prior state of a

workspace from a previously used network accessible computer, the host computer being posted

for collaboration. Further, the claims recite that the server determines the workspace for the at

least one network accessible computer from the network accessible stored personal state, loads

the workspace into the at least one network accessible computer, wherein the workspace includes

one or more windows that were open at the time of previous use, receives another request via the

network from the client computer to collaborate with the host computer, and facilitate the

collaboration of the host computer and the client computer over the network.

28. The system covered by the asserted claims, therefore, differs markedly from the

conventional and generic systems in use at the time of this invention, which inter alia lacked the

claimed combination of network accessible computers capable of providing fully functional

virtual machines to remote clients. Further, the claimed inventions differ from prior art systems

by remotely storing a personal state allowing for failover and migration, and also facilitating

collaboration between the host computer and a client computer. 

29. As described above, the ’217 patent is drawn to solving a specific, technical

problem arising in the context of remotely hosted virtual machine delivery and operation. 

Consistent with the problem addressed being rooted in such remotely hosted virtual computing

environments, the ‘217 patent’s solutions consequently are also rooted in that same technology

and cannot be performed with pen and paper or in the human mind.

30. VMware has directly infringed, and continues to directly infringe, literally and/or

by the doctrine of equivalents, individually and/or jointly, at least claims 1, 2, 4, 7, 8, 14-17, and

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19 of the ’217 patent by making, using, testing, selling, offering for sale and/or importing into the

United States products and/or services covered by one or more claims of the ’217 patent. 

VMware’s products and/or services that infringe the ’217 patent include, but are not limited to,

vSphere, ESX/ESXi, Horizon/View, vCenter Server, Connection Server, vMotion and vSAN, and

any other VMware products and/or services, either alone or in combination, that operate in

substantially the same manner.

31. Claim 14 of the ’217 patent is reproduced below:

14. A method comprising:

receiving a first request over a network at a server from at least one network

accessible computer of a plurality of network accessible computers, the host

computer configured to:

implement a network accessible stored personal state, wherein the network

accessible stored personal state is remotely stored at a remote server such that the

network accessible stored personal state is accessible via internet, which permits

the at least one network accessible computer to operate as a host computer for a

client computer over the internet, the network accessible stored personal state

including a network accessible stored prior state of a workspace of a previously

used network accessible computer, and

post the host computer for collaboration;

determining, by the server, the workspace for the at least one network accessible

computer from the network accessible stored personal state;

loading, by the server, the workspace into the at least one network accessible

computer, wherein the workspace includes one or more windows that were open at

a time the previously used network accessible computer was previously used;

receiving a second request over the network at the server from the client computer to

collaborate with the host computer; and

facilitating by the server the collaboration of the host computer and the client

computer over the network.

32. As one non-limiting example, VMware Horizon as integrated with vSphere

practices a method of receiving a first request over a network at a server from at least one network

accessible computer of a plurality of network accessible computers. The vSphere back-end

infrastructure, such as the View Connection Server and vCenter Server facilitate the delivery of

virtual desktops and applications which run on ESX/ESXi servers. The ESX/ESXi hosts

communicate requests, over a network, to the View Connection Server and vCenter Server, as

seen below:

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33. VMware Horizon as integrated with vSphere includes a host computer configured

to implement a network accessible stored personal state, which is remotely stored at a remote

server such that it is accessible via the internet, which permits the at least one network accessible

computer to operate as a host computer for a client computer over the internet. For instance, the

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ESX/ESXi hosts and virtual machines hosted thereon, can use vSAN shared storage. The shared

storage allows for virtual machine state information, including personalized information, to be

stored at the vSphere back-end and available to all ESX/ESXi hosts and virtual machines they

host, as seen below:

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34. The network accessible stored personal state provided by VMware Horizon as

integrated with vSphere further includes a network accessible stored prior state of a workspace of

a previously used network accessible computer. The virtual machine state information stored on

the vSAN shared storage reflects stored personalized setting and preferences as well as the realtime state of running virtual machines, including all programs and processes running at that time,

as seen below:

35. VMware Horizon as integrated with vSphere further posts the host computer for

collaboration, as seen below:

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36. VMware Horizon as integrated with vSphere determines, by the server, the

workspace for the at least one network accessible computer from the network accessible stored

personal state. Each time a virtual machine is instantiated on an ESX/ESXi host the vSphere

back-end retrieves the stored state information from vSAN storage that corresponds with the

particular VM end user. The same process also occurs when recovering a VM from a failed state

or migrating a VM from one host to another using vMotion, as seen below:

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37. VMware Horizon as integrated with vSphere loads, by the server, the workspace

into the at least one network accessible computer, wherein the workspace includes one or more

windows that were open at a time the previously used network accessible computer was

previously used. The vSphere back-end infrastructure, such as the View Connection Server and

vCenter Server load the appropriate virtual machine state files stored in the vSAN shared storage

onto the virtual machine instantiated on the ESX/ESXi hosts. In the case of a recovery from a

failed state or a migration from one host to another, the stored state information includes all

programs, processes and windows being used at the time of the fail or migration, as seen below:

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38. VMware Horizon as integrated with vSphere receives a second request over the

network at the server from the client computer to collaborate with the host computer. The vSphere

back-end infrastructure, such as the View Connection Server and vCenter Server facilitate

connection and re-connection requests by a Horizon client, including after a migration or failure

situation, as seen below:

39. VMware Horizon as integrated with vSphere facilitate by the server the

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end infrastructure, such as the View Connection Server and vCenter Server facilitate connection

and re-connection requests by a Horizon client, which instantiates or re-instantiates the virtual

machines, including the stored personal state information, as seen below:

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40. Additionally, VMware has been, and currently is, an active inducer of infringement

of the ’217 patent under 35 U.S.C. § 271(b) and contributory infringement of the ’217 patent

under 35 U.S.C. § 271(c) either literally and/or by the doctrine of equivalents.

41. VMware has actively induced, and continues to actively induce, infringement of

the ’217 patent by intending that others use, offer for sale, or sell in the United States, products

and/or services covered by one or more claims of the ’217 patent, including but not limited to

vSphere, ESX/ESXi, Horizon/View, vCenter Server, Connection Server, vMotion and vSAN, and

any VMware product and/or service, alone or in combination, that operates in materially the same

manner. VMware provides these products and/or services to others, such as customers, resellers

and end-user customers, who, in turn, use, provision for use, offer for sale, or sell in the United

States products and/or services that directly infringe one or more claims of the ’217 patent. 

42. VMware has contributed to, and continues to contribute to, the infringement of the

’217 patent by others by knowingly providing products and/or services that, when installed and

configured result in a system as intended by VMware, directly infringes one or more claims of

the ’217 patent. 

43. VMware knew of the ’217 patent, or should have known of the ’217 patent, but was

willfully blind to its existence. Upon information and belief, VMware has had actual knowledge

of the ’217 patent since at least as early as the service upon VMware of this Complaint. By the

time of trial, VMware will have known and intended (since receiving such notice) that its

continued actions would infringe and actively induce and contribute to the infringement of one or

more claims of the ’217 patent.

44. VMware has committed, and continues to commit, affirmative acts that cause

infringement of one or more claims of the ’217 patent with knowledge of the ’217 patent and

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knowledge or willful blindness that the induced acts constitute infringement of one or more claims

of the ’217 patent. As an illustrative example only, VMware induces such acts of infringement

by its affirmative actions of intentionally providing hardware and or software components that

when used in their normal and customary way as desired and intended by VMware, infringe one

or more claims of the ’217 patent and/or by directly or indirectly providing instructions on how

to use its products and/or services in a manner or configuration that infringes one or more claims

of the ’217 patent, including those found at one or more of the following:

- https://docs.vmware.com/en/VMware-Horizon-7/7.1/view-71-setting-up-virtualdesktops.pdf

- https://docs.vmware.com/en/VMware-Horizon-7/7.2/view-72-architecture-planning.pdf

- https://www.vmware.com/products/vsphere.html

- https://www.vmware.com/content/dam/digitalmarketing/vmware/en/pdf/whitepaper/vmw

are-vsphere-vmfs-best-practices-whitepaper.pdf

- https://blogs.vmware.com/virtualblocks/2015/05/29/20-common-vsan-questions/

- https://techzone.vmware.com/quick-start-tutorial-series-vmware-horizon-7

45. VMware has also committed, and continues to commit, contributory infringement

by, inter alia, knowingly selling products and/or services that when used cause the direct

infringement of one or more claims of the ’217 patent by a third party, and which have no

substantial non-infringing uses, or include a separate and distinct component that is especially

made or especially adapted for use in infringement of the ’217 patent and is not a staple article or

commodity of commerce suitable for substantial non-infringing use.

46. As a result of VMware’s acts of infringement, Plaintiff has suffered and will

continue to suffer damages in an amount to be proved at trial.

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COUNT II

(VMWare’s Infringement of U.S. Patent No. 9,686,378)

47. Paragraphs 1-46 are reincorporated by reference as if fully set forth herein.

48. The elements claimed by the ’378 patent, taken alone or in combination, were not

well-understood, routine or conventional to one of ordinary skill in the art at the time of the

invention. Rather, the ’378 patent claims and teaches, inter alia, an improved way to deliver 

components of server-based applications to remote client devices that provide interfaces to the 

applications at the client devices based on unique client characteristics, which were not present

in the state of the art at the time of the invention. The invention improved upon existing serverbased application delivery technology by enabling the dynamic creation of customized

application interfaces adapted for compatibility with a variety of client platform types. 

49. Instead of storing one or more static versions of server-based applications to which

clients could be re-directed, the server-based applications of the present invention are customized

based on client variables so that components of the applications implementing interfaces are 

delivered to a remote client in a manner optimized for that client’s specific environment. For

example, the present invention allows for application component(s) residing on a server to be

invoked and transformed into an application interface presentable to clients, where said clients

would otherwise be incapable of or have difficulty displaying such components. Thus, the

resulting server-based application delivery systems and methods enabled a more flexible and

dynamic approach relative to prior art systems that were limited to providing static, preconfigured application content. 

50. The invention represented a technical solution to an unsolved technological

problem. The written description of the ’378 patent describes, in technical detail, each of the

limitations in the claims, allowing a person of skill in the art to understand what those limitations

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cover, and therefore what was claimed, and also understand how the non-conventional and nongeneric ordered combination of the elements of the claims differ markedly from what had been

conventional or generic in the industry at the time of the inventions of the ’378 patent. More

specifically, the claims of the ’378 patent each recite receiving, by a server, an indication of an

actuation of a user interface provided on a client device, wherein the client device is associated

with client variables indicating an environment of the client device, and in response to receiving

the indication, generating an updated version of the user interface for display in the environment

of the client device by invoking a version of an application component that is configured for the

environment of the client device, wherein the invoking of the application component processes

the indication of the actuation, and packaging the updated version of the user interface for

communication to the client device. Further embodiments claimed in the ’378 patent include

producing interim data in response to the invocation of the application component and using the

interim data to create an updated version of the user interface for display in the environment of

the client device. 

51. The system covered by the asserted claims, therefore, differs markedly from the

conventional and generic systems in use at the time of this invention, which inter alia lacked the

claimed combination of using client variables to determine a client environment and invoking an

application component of a server-based application from said variables and dynamically creating

a customized application interface based on the client’s specific environment. Embodiments of

the present invention further include updating the customized application interface in response to

a user actuation and using interim data to create the updated interface.

52. As described above, the ’378 patent is drawn to solving a specific, technical

problem arising in the context of server-based application delivery to remote clients. Consistent

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with the problem addressed being rooted in such server-based application delivery, the ’378

patent’s solutions consequently are also rooted in that same technology and cannot be performed

with pen and paper or in the human mind.

53. VMware has directly infringed, and continues to directly infringe, literally and/or

by the doctrine of equivalents, individually and/or jointly, at least claims 1, 3, 4, 5, 6, 9, 10, 12,

13, 15, 16, 17, 18, 19, 20 of the ’378 patent by making, using, testing, selling, offering for sale

and/or importing into the United States products and/or services covered by one or more claims

of the ’378 patent. VMware’s products and/or services that infringe the ’378 patent include, but

are not limited to, Horizon/View, Horizon Client/Horizon HTML 5 Client, vSphere, ESX/ESXi,

vCenter Server, Connection Server, and any other VMware products and/or services, either alone

or in combination, that operate in substantially the same manner.

54. Claim 1 of the ’378 patent is reproduced below:

1. A method implemented by a server, the method comprising:

receiving, by the server from a client device, an indication of an actuation of a user

interface provided on the client device, wherein the client device is associated with

client variables defining an environment of the client device; and

in response to receiving the indication of the actuation:

invoking, by the server, a version of an application component that is configured for

the environment of the client device, wherein the invoking of the application

component processes the indication of the actuation and, in response, produces

interim data representing results of the application component processing the

indication of the actuation;

creating, by the server, based on the determined environment of the client device and

using the interim data, an updated version of the user interface for display in the

environment of the client device; and

packaging, by the server, the updated version of the user interface for communication

to the client device.

55. As one non-limiting example, vSphere and ESX/ESXi in combination with

VMware Horizon practice a method implemented by a server, comprising receiving, by the server

from a client device, an indication of an actuation of a user interface provided by the client device,

wherein the client device is associated with client variables defining an environment of the client

device. For instance, when a Horizon Client interacts with the virtual machine or application

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which it is using (e.g., scroll, keyboard input or touch gestures) the vSphere back-end

infrastructure receives an indication of such interaction, which is specific to the client’s

environment, as seen below: 

56. vSphere and ESX/ESXi in combination with VMware Horizon also practice the

step of in response to receiving the indication of the actuation, invoking, by the server, a version

of an application component that is configured for the environment of the client device, wherein

the invoking of the application component processes the indication of the actuation and, in

response, produces interim data representing results of the application component processing the

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indication of the actuation. For example, actuation information can be sent to the vSphere backend infrastructure via the Blast protocol using a WebSocket packet. The vSphere back-end then

processes the actuation information and invokes the necessary components of the application that

have been selected based on client variables. Pixel data representing an updated interface based

on the actuation is then generated, as seen below:

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57. vSphere and ESX/ESXi in combination with VMware Horizon practice the step of

creating, by the server, based on the determined environment of the client device and using the

interim data, an updated version of the user interface for display in the environment of the client

device. As noted above, Blast uses pixel encoding to generate an updated version of the user

interface based on the actuation and client variables, which represents the updated view to be sent

to the client, as seen below:

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58. vSphere and ESX/ESXi in combination with VMware Horizon practice the step of

packaging, by the server, the updated version of the user interface for communication to the client

device. For example, the updated pixel data is encoded and transmitted to the client via the

network, as seen below:

Case 1:20-cv-00457-ADA Document 1 Filed 03/25/20 Page 25 of 70
26

59. Additionally, VMware has been, and currently is, an active inducer of infringement

of the ’378 patent under 35 U.S.C. § 271(b) and contributory infringement of the ’378 patent

under 35 U.S.C. § 271(c) either literally and/or by the doctrine of equivalents.

60. VMware has actively induced, and continues to actively induce, infringement of

the ’378 patent by intending that others use, offer for sale, or sell in the United States, products

and/or services covered by one or more claims of the ’378 patent, including but not limited to

Horizon/ Horizon View, Horizon HTML 5 Client, vSphere, ESX/ESXi, vCenter Server,

Connection Server, and any VMware product and/or service, alone or in combination, that

operates in materially the same manner. VMware provides these products and/or services to

others, such as customers, resellers and end-user customers, who, in turn, use, provision for use,

offer for sale, or sell in the United States products and/or services that directly infringe one or

more claims of the ’378 patent. 

Case 1:20-cv-00457-ADA Document 1 Filed 03/25/20 Page 26 of 70
27

61. VMware has contributed to, and continues to contribute to, the infringement of the

’378 patent by others by knowingly providing products and/or services that, when installed and

configured result in a system as intended by VMware, directly infringes one or more claims of

the ’378 patent. 

62. VMware knew of the ’378 patent, or should have known of the ’378 patent, but was

willfully blind to its existence. Upon information and belief, VMware has had actual knowledge

of the ’378 patent since at least as early as the service upon VMware of this Complaint. By the

time of trial, VMware will have known and intended (since receiving such notice) that its

continued actions would infringe and actively induce and contribute to the infringement of one or

more claims of the ’378 patent.

63. VMware has committed, and continues to commit, affirmative acts that cause

infringement of one or more claims of the ’378 patent with knowledge of the ’378 patent, and

knowledge or willful blindness that the induced acts constitute infringement of one or more claims

of the ’378 patent. As an illustrative example only, VMware induces such acts of infringement

by its affirmative actions of intentionally providing hardware and or software components that

when used in their normal and customary way as desired and intended by VMware, infringe one

or more claims of the ’378 patent and/or by directly or indirectly providing instructions on how

to use its products and/or services in a manner or configuration that infringes one or more claims

of the ’378 patent, including those found at one or more of the following:

• https://docs.vmware.com/en/VMware-vSphere/index.html

• https://my.vmware.com/web/vmware/info?slug=desktop_end_user_computing/vmware_

horizon_clients/4_0

Case 1:20-cv-00457-ADA Document 1 Filed 03/25/20 Page 27 of 70
28

• https://www.vmware.com/content/dam/digitalmarketing/vmware/en/pdf/products/horizon

/vmware-horizon-7-datasheet.pdf

• https://docs.vmware.com/en/VMware-Horizon-7/7.0/com.vmware.horizonview.planning.doc/GUID-5C5C9E6B-263E-4DA0-895F-4F1415F37947.html

• https://docs.vmware.com/en/VMware-Horizon-7/7.1/view-71-configuring-remotefeatures.pdf

• https://docs.vmware.com/en/VMware-Horizon-7/7.4/horizon-architectureplanning/GUID-CFAABEB9-9CF2-4098-A01D-1CA118D4B6BD.html

• https://blogs.vmware.com/euc/2016/09/story-of-vmware-blast.html

• https://docs.vmware.com/en/VMware-Horizon7/7.1/com.vmware.horizon.remote.features.doc/GUID-F23C9960-3399-4FBE-9910-

393D8E4A91F8.html

• https://docs.vmware.com/en/VMware-Horizon-Client-foriOS/4.6/com.vmware.horizon.ios-client-46-user-guide.doc/GUID-926E5CA8-6C40-

45B4-AB31-6579F3906CDA.html

64. VMware has also committed, and continues to commit, contributory infringement

by, inter alia, knowingly selling products and/or services that when used cause the direct

infringement of one or more claims of the ’378 patent by a third party, and which have no

substantial non-infringing uses, or include a separate and distinct component that is especially

made or especially adapted for use in infringement of the ’378 patent and is not a staple article or

commodity of commerce suitable for substantial non-infringing use.

65. As a result of VMware’s acts of infringement, Plaintiff has suffered and will

continue to suffer damages in an amount to be proved at trial.

Case 1:20-cv-00457-ADA Document 1 Filed 03/25/20 Page 28 of 70
29

COUNT III

(VMWare’s Infringement of U.S. Patent No. 9,092,546)

66. Paragraphs 1-65 are reincorporated by reference as if fully set forth herein.

67. The elements claimed by the ’546 patent, taken alone or in combination, were not

well-understood, routine or conventional to one of ordinary skill in the art at the time of the

invention. Rather, the ’546 patent claims and teaches, inter alia, an improved way to invoke and

deliver components of server-based applications to remote client devices that provide interfaces 

to the applications at the client devices based on unique client characteristics, which were not

present in the state of the art at the time of the invention. The invention improved upon existing

server-based application delivery technology by enabling the dynamic creation of customized

application interfaces adapted for compatibility with a variety of client platform types.

68. Instead of storing one or more static versions of server-based applications to which

clients could be re-directed, the server-based applications of the present invention are customized

based on client variables so that components of the applications implementing interfaces are 

delivered to a remote client in a manner optimized for that client’s specific environment. For

example, the present invention allows for application component(s) residing on a server to be

invoked and transformed into an application interface presentable to clients, where said clients

would otherwise be incapable of or have difficulty displaying such components. Thus, the

resulting server-based application delivery systems and methods enabled a more flexible and

dynamic approach relative to prior art systems that were limited to providing static, preconfigured application content. 

69. The invention represented a technical solution to an unsolved technological

problem. The written description of the ’546 patent describes, in technical detail, each of the

limitations in the claims, allowing a person of skill in the art to understand what those limitations

Case 1:20-cv-00457-ADA Document 1 Filed 03/25/20 Page 29 of 70
30

cover, and therefore what was claimed, and also understand how the non-conventional and nongeneric ordered combination of the elements of the claims differ markedly from what had been

conventional or generic in the industry at the time of the inventions of the ’546 patent. More

specifically, the claims of the ’546 patent each recite receiving at a server a request from a client

device that identifies an application and one or more client variables. In response, the server

obtains an application component configured to operate in a particular client environment based

on the client variable(s), invokes the application component resulting in interim data, and creates

an application interface tailored to the client environment using the interim data. In certain

claimed embodiments, the created application interface is further packaged and/or transmitted to

the remote client for delivery.

70. The system covered by the asserted claims, therefore, differs markedly from the

conventional and generic systems in use at the time of this invention, which inter alia lacked the

claimed combination of using client variables to determine a client environment and invoking an

application component of a server-based application from said variables and dynamically creating

a customized application interface based on the client’s specific environment. 

71. As described above, the ’546 patent is drawn to solving a specific, technical

problem arising in the context of server-based application delivery to remote clients. Consistent

with the problem addressed being rooted in such server-based application delivery, the ’546

patent’s solutions consequently are also rooted in that same technology and cannot be performed

with pen and paper or in the human mind.

72. VMware has directly infringed, and continues to directly infringe, literally and/or

by the doctrine of equivalents, individually and/or jointly, at least claims 1, 4-7, 9-11, 13-18, 19 

and 21 of the ’546 patent by making, using, testing, selling, offering for sale and/or importing

Case 1:20-cv-00457-ADA Document 1 Filed 03/25/20 Page 30 of 70
31

into the United States products and/or services covered by one or more claims of the ’546 patent. 

VMware’s products and/or services that infringe the ’546 patent include, but are not limited to,

Horizon View, vSphere, ESX/ESXi, vCenter Server, Connection Server, and any other VMware

products and/or services, either alone or in combination, that operate in substantially the same

manner.

73. Claim 1 of the ’546 patent is reproduced below:

1. A method implemented by a server, the method comprising:

receiving, by the server, a request for an application from a client device, the request

identifying one or more client variables that describe the client device;

in response to receiving the request, obtaining a version of an application component

of the application, the application component selected from among a plurality of

available versions of the application, the versions being configured to operate in

different environments, the obtained version of the application component being

selected for the client device based on at least the one of the client variables;

determining, by the server, a destination environment of the client device, the

determining based on at least one of the client variables;

invoking, by the server, the obtained version of the application component;

creating, by the server, based on the determined destination environment and using

interim data resulting from the server invoking the obtained version of the

application component, an application interface for the application component;

and

packaging, by the server, the application interface for communication to the client

device.

74. As one non-limiting example, vSphere and ESX/ESXi in combination with

VMware Horizon comprises a method, implemented by a server as claimed in the ’546 patent. 

For example, vSphere in conjunction with ESXi provides hosted virtual machine(s) (“VMs”) for

creating and delivering server-based application functionality to remote users via the Horizon

platform, as is explained further below:

Case 1:20-cv-00457-ADA Document 1 Filed 03/25/20 Page 31 of 70
32

75. vSphere and ESX/ESXi in combination with VMware Horizon receive, by the

server, a request for an application from a client device, the request identifying one or more client

variables that describe the client device. For instance, using Horizon Client, a user is presented

with various applications and desktops which are remotely hosted on VMware’s vSphere

Case 1:20-cv-00457-ADA Document 1 Filed 03/25/20 Page 32 of 70
33

platform. When a hosted application or desktop is selected via Horizon Client, the remote

vSphere platform receives a request which includes information relating to the client machine, as

shown below:

Case 1:20-cv-00457-ADA Document 1 Filed 03/25/20 Page 33 of 70
34

76. vSphere and ESX/ESXi in combination with VMware Horizon, in response to the

receiving the request, obtain a version of an application component of the application, the

application component selected from among a plurality of available versions of the application,

the versions being configured to operate in different environments, the obtained version of the

application component being selected for the client device based on at least one of the client

variables. When an application or desktop is selected via the Horizon Client, Horizon passes

client variables to the vSphere environment that hosts the selected application/desktop. Based on

these variables, a version of the application/desktop is selected for the specific client, for example,

Windows version supporting HD display and touch capable, as shown below:

Case 1:20-cv-00457-ADA Document 1 Filed 03/25/20 Page 34 of 70
35

77. vSphere and ESX/ESXi in combination with VMware Horizon determine, by the

server, a destination environment of the client device, the determining based on at least one of the

client variables. The vSphere platform uses the information about the client environment, such

Case 1:20-cv-00457-ADA Document 1 Filed 03/25/20 Page 35 of 70
36

as, client operating system, display capabilities, network capabilities or device type in order to

determine the specific client environment, as shown below:

78. vSphere and ESX/ESXi in combination with VMware Horizon invoke, by the

server, the obtained version of the application component. When the client environment has been

determined, the vSphere platform executes the application on the remote host, as seen below:

Case 1:20-cv-00457-ADA Document 1 Filed 03/25/20 Page 36 of 70
37

79. vSphere and ESX/ESXi in combination with VMware Horizon create, by the

server, based on the determined destination environment and using interim data resulting from

the server invoking the obtained version of the application component, an application interface

for the application component. For example, based on the determined environment and invoked

application component, the vSphere platform creates an application interface by encoding a

binary set of pixels resulting from said invocation, as illustrated below:

Case 1:20-cv-00457-ADA Document 1 Filed 03/25/20 Page 37 of 70
38

80. vSphere and ESX/ESXi in combination with VMware Horizon packages, by the

server, the application interface for communication to the client device. The encoded set of pixels

are sent to the client device over a network where it can be decoded and presented on the client

device in human-viewable form, as illustrated below:

Case 1:20-cv-00457-ADA Document 1 Filed 03/25/20 Page 38 of 70
39

81. Additionally, VMware has been, and currently is, an active inducer of infringement

of the ’546 patent under 35 U.S.C. § 271(b) and contributory infringement of the ’546 patent

under 35 U.S.C. § 271(c) either literally and/or by the doctrine of equivalents.

82. VMware has actively induced, and continues to actively induce, infringement of

the ’546 patent by intending that others use, offer for sale, or sell in the United States, products

and/or services covered by one or more claims of the ’546 patent, including but not limited to

Horizon View, vSphere, ESX/ESXi, vCenter Server, Connection Server, and any VMware

Case 1:20-cv-00457-ADA Document 1 Filed 03/25/20 Page 39 of 70
40

product and/or service, alone or in combination, that operates in materially the same manner.

VMware provides these products and/or services to others, such as customers, resellers and enduser customers, who, in turn, use, provision for use, offer for sale, or sell in the United States

products and/or services that directly infringe one or more claims of the ’546 patent. 

83. VMware has contributed to, and continues to contribute to, the infringement of the

’546 patent by others by knowingly providing products and/or services that, when installed and

configured result in a system as intended by VMware, directly infringes one or more claims of

the ’546 patent. 

84. VMware knew of the ’546 patent, or should have known of the ’546 patent, but was

willfully blind to its existence. Upon information and belief, VMware has had actual knowledge

of the ’546 patent since at least as early as the service upon VMware of this Complaint. By the

time of trial, VMware will have known and intended (since receiving such notice) that its

continued actions would infringe and actively induce and contribute to the infringement of one or

more claims of the ’546 patent.

85. VMware has committed, and continues to commit, affirmative acts that cause

infringement of one or more claims of the ’546 patent with knowledge of the ’546 patent and

knowledge or willful blindness that the induced acts constitute infringement of one or more claims

of the ’546 patent. As an illustrative example only, VMware induces such acts of infringement

by its affirmative actions of intentionally providing hardware and/or software components that

when used in their normal and customary way as desired and intended by VMware, infringe one

or more claims of the ’546 patent and/or by directly or indirectly providing instructions on how

to use its products and/or services in a manner or configuration that infringes one or more claims

of the ’546 patent, including those found at one or more of the following:

Case 1:20-cv-00457-ADA Document 1 Filed 03/25/20 Page 40 of 70
41

• https://docs.vmware.com/en/VMware-vSphere/index.html

• https://my.vmware.com/web/vmware/info?slug=desktop_end_user_computing/vmware_

horizon_clients/4_0

• https://www.vmware.com/content/dam/digitalmarketing/vmware/en/pdf/products/horizon

/vmware-horizon-7-datasheet.pdf

• https://docs.vmware.com/en/VMware-Horizon-7/7.0/com.vmware.horizonview.planning.doc/GUID-5C5C9E6B-263E-4DA0-895F-4F1415F37947.html

• https://docs.vmware.com/en/VMware-Horizon-7/7.1/view-71-configuring-remotefeatures.pdf

• https://www.youtube.com/watch?v=6ddJGbxpwxc

• https://www.youtube.com/watch?v=KQXB6Y_db28

86. VMware has also committed, and continues to commit, contributory infringement

by, inter alia, knowingly selling products and/or services that when used cause the direct

infringement of one or more claims of the ’546 patent by a third party, and which have no

substantial non-infringing uses, or include a separate and distinct component that is especially

made or especially adapted for use in infringement of the ’546 patent and is not a staple article or

commodity of commerce suitable for substantial non-infringing use.

87. As a result of VMware’s acts of infringement, Plaintiff has suffered and will

continue to suffer damages in an amount to be proved at trial.

COUNT IV

(VMWare’s Infringement of U.S. Patent No. 7,016,963)

88. Paragraphs 1-87 are reincorporated by reference as if fully set forth herein.

89. The elements claimed by the ’963 patent, taken alone or in combination, were not

well-understood, routine or conventional to one of ordinary skill in the art at the time of the

Case 1:20-cv-00457-ADA Document 1 Filed 03/25/20 Page 41 of 70
42

invention. Rather, the ’963 patent claims and teaches, inter alia, an improved way to invoke,

deliver, and transform interfaces to server-based applications that are delivered to remote client

devices based on unique client characteristics and real-time user inputs received by the client,

which were not present in the state of the art at the time of the invention. The invention improved

upon existing server-based application delivery technology by enabling the dynamic creation of

customized application interfaces adapted for compatibility with a variety of client platform types. 

90. Instead of storing one or more static versions of server-based applications to which

clients could be re-directed, the server-based applications of the present invention are customized

based on client variables so that components of the applications implementing interfaces are 

delivered to a remote client based on real-time user input received by the client and in a manner

optimized for that client’s specific environment. For example, the present invention allows for

application component(s) residing on a server to be invoked and transformed into an application

interface presentable to clients, where said clients would otherwise be incapable of or have

difficulty displaying such components. Thus, the resulting server-based application delivery

systems and methods enable a more flexible and dynamic approach relative to prior art systems

that were limited to providing static, pre-configured application content.

91. The invention represented a technical solution to an unsolved technological

problem. The written description of the ’963 patent describes, in technical detail, each of the

limitations in the claims, allowing a person of skill in the art to understand what those limitations

cover, and therefore what was claimed, and also understand how the non-conventional and nongeneric ordered combination of the elements of the claims differ markedly from what had been

conventional or generic in the industry at the time of the inventions of the ’963 patent. More

specifically, the claims of the ’963 patent each recite receiving an invocation request from a client

Case 1:20-cv-00457-ADA Document 1 Filed 03/25/20 Page 42 of 70
43

device, the invocation request identifying the client device and a server-based application,

selecting an application interface particular to the client device, providing rendering information

for the selected application interface to the client device, invoking the server-based application,

receiving an action request from the client device, interpreting the action request to identify

changes required to the application interface, providing rendering for the changes to the

application to the client device, and invoking a server-based application command in accordance

with the action request. 

92. The system covered by the asserted claims, therefore, differs markedly from the

conventional and generic systems in use at the time of this invention, which inter alia lacked the

claimed combination of receiving an invocation request identifying a client device and serverbased application, selecting an application interface particular to the client device, providing

rendering information for the interface, invoking the server-based application and receiving an

action request from the client device. Further the prior art additionally lacked interpreting the

action request from the client device to identify changes to the interface, providing rendering for

the changes to the interface and invoking the server-based application in accordance with the

action request.

93. As described above, the ’963 patent is drawn to solving a specific, technical

problem arising in the context of server-based application delivery to remote clients. Consistent

with the problem addressed being rooted in such server-based application delivery, the ’963

patent’s solutions consequently are also rooted in that same technology and cannot be performed

with pen and paper or in the human mind.

94. VMware has directly infringed, and continues to directly infringe, literally and/or

by the doctrine of equivalents, individually and/or jointly, at least claim 2 of the ’963 patent by

Case 1:20-cv-00457-ADA Document 1 Filed 03/25/20 Page 43 of 70
44

making, using, testing, selling, offering for sale and/or importing into the United States products

and/or services covered by one or more claims of the ’963 patent. VMware’s products and/or

services that infringe the ‘963 patent include, but are not limited to, Horizon View, vSphere,

ESX/ESXi, vCenter Server, Connection Server, and any other VMware products and/or services,

either alone or in combination, that operate in substantially the same manner.

95. Claim 2 of the ’963 patent is reproduced below:

2. A method for allowing various platforms to execute server-based applications through

a network, the method comprising the steps of:

receiving an invocation request from a client device, the invocation request

identifying the client device and a server-based application;

selecting an application interface particular to the client device;

providing rendering information for the selected application interface to the client

device;

invoking the server-based application;

receiving an action request from the client device;

interpreting the action request to identify changes required to the application

interface;

providing rendering for the changes to the application to the client device; and

invoking a server-based application command in accordance with the action request.

96. As one non-limiting example, vSphere and ESX/ESXi in combination with

VMware Horizon practice a method for allowing various platforms to execute server-based

applications through a network. For example, vSphere in conjunction with ESXi provide hosted

virtual machine(s) (“VMs”) for creating and delivering server-based application functionality to

remote users on a variety of client devices via the Horizon platform, as is explained further below:

Case 1:20-cv-00457-ADA Document 1 Filed 03/25/20 Page 44 of 70
45

97. vSphere and ESX/ESXi in combination with VMware Horizon practice the step of

receiving an invocation request from a client device, the invocation request identifying the client

device and a server-based application. For instance, using Horizon Client, a user is presented

with various applications and desktops which are remotely hosted on VMware’s vSphere

platform. When a hosted application or desktop is selected via Horizon Client, the remote

vSphere platform receives a request which includes information relating to the client machine and

selected application, as shown below:

Case 1:20-cv-00457-ADA Document 1 Filed 03/25/20 Page 45 of 70
46

Case 1:20-cv-00457-ADA Document 1 Filed 03/25/20 Page 46 of 70
47

98. vSphere and ESX/ESXi in combination with VMware Horizon also practice the

step of selecting an application interface particular to the client device. When an application or

desktop is selected via the Horizon Client, Horizon passes client variables to the vSphere platform

that hosts the selected application/desktop. Based on these variables, a version of the

application/desktop is selected for the specific client, for example, a Windows desktop supporting

an HD display and touch capable, as shown below:

Case 1:20-cv-00457-ADA Document 1 Filed 03/25/20 Page 47 of 70
48

99. vSphere and ESX/ESXi in combination with VMware Horizon further practice the

step of providing rendering information for the selected application interface to the client device. 

The vSphere platform uses the information about the client environment, such as, client operating

Case 1:20-cv-00457-ADA Document 1 Filed 03/25/20 Page 48 of 70
49

system, display capabilities, network capabilities or device type in order to provide information

regarding the rendering of the application interface to the client device, as shown below:

Case 1:20-cv-00457-ADA Document 1 Filed 03/25/20 Page 49 of 70
50

100. vSphere and ESX/ESXi in combination with VMware Horizon practice the step of

invoking the server-based application. For example, the application is launched on the vSphere

back-end and rendering information sent to the client device, as seen below:

Case 1:20-cv-00457-ADA Document 1 Filed 03/25/20 Page 50 of 70
51

101. vSphere and ESX/ESXi in combination with VMware Horizon practice the step of

receiving an action request from the client device. For instance, when a client device is using a

remotely hosted application or virtual machine, the display protocol can monitor user input

activity, such as mouse clicks and keyboard inputs, as seen below:

Case 1:20-cv-00457-ADA Document 1 Filed 03/25/20 Page 51 of 70
52

102. vSphere and ESX/ESXi in combination with VMware Horizon practice the step of

interpreting the action request to identify changes required to the application interface. When the

vSphere back-end receives information indicating interface actuation, such as mouse clicks and

keyboard input from the client device, it interprets how the application interface display must

change, as seen below:

Case 1:20-cv-00457-ADA Document 1 Filed 03/25/20 Page 52 of 70
53

103. vSphere and ESX/ESXi in combination with VMware Horizon practice the step of

providing rendering for the changes to the application interface to the client device. For example,

the application interface changes are rendered on the host side and then encoded and transmitted

to the client device for display, as seen below:

Case 1:20-cv-00457-ADA Document 1 Filed 03/25/20 Page 53 of 70
54

104. vSphere and ESX/ESXi in combination with VMware Horizon practice the step of

invoking a server-based application command in accordance with the action request. Once the

vSphere back-end has processed and rendered the change associated with the action request, the

host invokes the application command associated with the request, as seen below:

Case 1:20-cv-00457-ADA Document 1 Filed 03/25/20 Page 54 of 70
55

105. Additionally, VMware has been, and currently is, an active inducer of infringement

of the ’963 patent under 35 U.S.C. § 271(b) and contributory infringement of the ’963 patent

under 35 U.S.C. § 271(c) either literally and/or by the doctrine of equivalents.

106. VMware has actively induced, and continues to actively induce, infringement of

the ’963 patent by intending that others use, offer for sale, or sell in the United States, products

and/or services covered by one or more claims of the ’963 patent, including but not limited to

Horizon/ Horizon View, Horizon HTML 5 Client, vSphere, ESX/ESXi, vCenter Server,

Connection Server, and any VMware product and/or service, alone or in combination, that

operates in materially the same manner. VMware provides these products and/or services to

others, such as customers, resellers and end-user customers, who, in turn, use, provision for use,

offer for sale, or sell in the United States products and/or services that directly infringe one or

more claims of the ’963 patent. 

107. VMware has contributed to, and continues to contribute to, the infringement of the

’963 patent by others by knowingly providing products and/or services that, when installed and

configured result in a system as intended by VMware, directly infringes one or more claims of

the ’963 patent. 

108. VMware knew of the ’963 patent, or should have known of the ’963 patent, but was

willfully blind to its existence. Upon information and belief, VMware has had actual knowledge

of the ’963 patent since at least as early as the service upon VMware of this Complaint. By the

time of trial, VMware will have known and intended (since receiving such notice) that its

continued actions would infringe and actively induce and contribute to the infringement of one or

more claims of the ’963 patent.

Case 1:20-cv-00457-ADA Document 1 Filed 03/25/20 Page 55 of 70
56

109. VMware has committed, and continues to commit, affirmative acts that cause

infringement of one or more claims of the ’963 patent with knowledge of the ’963 patent and

knowledge or willful blindness that the induced acts constitute infringement of one or more claims

of the ’963 patent. As an illustrative example only, VMware induces such acts of infringement

by its affirmative actions of intentionally providing hardware and or software components that

when used in their normal and customary way as desired and intended by VMware, infringe one

or more claims of the ’963 patent and/or by directly or indirectly providing instructions on how

to use its products and/or services in a manner or configuration that infringes one or more claims

of the ’963 patent, including those found at one or more of the following:

• https://docs.vmware.com/en/VMware-vSphere/index.html

• https://my.vmware.com/web/vmware/info?slug=desktop_end_user_computing/vmware_

horizon_clients/4_0

• https://www.vmware.com/content/dam/digitalmarketing/vmware/en/pdf/products/horizon

/vmware-horizon-7-datasheet.pdf

• https://docs.vmware.com/en/VMware-Horizon-7/7.0/com.vmware.horizonview.planning.doc/GUID-5C5C9E6B-263E-4DA0-895F-4F1415F37947.html

• https://docs.vmware.com/en/VMware-Horizon-7/7.1/view-71-configuring-remotefeatures.pdf

• https://www.youtube.com/watch?v=6ddJGbxpwxc

• https://www.youtube.com/watch?v=KQXB6Y_db28

110. VMware has also committed, and continues to commit, contributory infringement

by, inter alia, knowingly selling products and/or services that when used cause the direct

infringement of one or more claims of the ’963 patent by a third party, and which have no

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substantial non-infringing uses, or include a separate and distinct component that is especially

made or especially adapted for use in infringement of the ’963 patent and is not a staple article or

commodity of commerce suitable for substantial non-infringing use.

111. As a result of VMware’s acts of infringement, Plaintiff has suffered and will

continue to suffer damages in an amount to be proved at trial.

COUNT V

(VMWare’s Infringement of U.S. Patent No. 6,816,464)

112. Paragraphs 1-111 are reincorporated by reference as if fully set forth herein. 

113. The elements claimed by the ’464 patent, taken alone or in combination, were not

well-understood, routine or conventional to one of ordinary skill in the art at the time of the

invention. Rather, the ’464 patent claims and teaches, inter alia, an improved way to test 

candidate network routes and select a subset thereof for interconnecting gateways across a wide 

area network (WAN), which were not present in the state of the art at the time of the invention. 

The invention improved upon existing route monitoring and selection techniques by providing

for automatic route monitoring, scoring, and evaluation on a per communication link basis and in

real time. The invention can further implement user-customizable routing preferences in the

course of providing said route scoring and evaluation, allowing for fine-grained user control over

the routing process.

114. Compared to the prior art, the claimed approach implements improved routing

intelligence by providing route monitoring, scoring, and evaluation that automatically accounts

for a plurality of candidate routes and measurements on a per communications link basis while

also considering user-customizable routing preferences.

115. The invention represented a technical solution to an unsolved technological

problem. The written description of the ’464 patent describes, in technical detail, each of the

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limitations in the claims, allowing a person of skill in the art to understand what those limitations

cover, and therefore what was claimed, and also understand how the non-conventional and nongeneric ordered combination of the elements of the claims differ markedly from what had been

conventional or generic in the industry at the time of the inventions of the ’464 patent. More

specifically, the claims of the ’464 patent recite methods and systems for assessing network routes

for use in establishing a communications link including identifying candidate routes and

associated terminal gateway(s), transmitting quality measurement packets to determine route

quality metrics on each candidate route, and receiving quality measurement packets to determine

route quality statistics from each candidate route. The claimed systems and methods further recite

determining route statistics based on routing information in the quality measurement packets,

configuring a route ordering schedule based on user input, and scoring the candidate routes based

on the routing statistics and the route ordering schedule to configure a scoring table that includes

a quality score and packet loss, jitter, and/or delay.

116. The system covered by the asserted claims, therefore, differs markedly from the

conventional and generic systems in use at the time of this invention, which inter alia lacked the

claimed combination of identifying a plurality of candidate routes, transmitting and receiving

quality measurement packets, determining route statistics, configuring a route ordering schedule

based on user input, and scoring the candidate routes to configure a scoring table that includes a

quality score and packet loss, jitter, and/or delay. Embodiments of the present invention further

teach operation across packet-switched networks (such as the Internet); inclusion of databases

that store and allow for consideration of historical routing information; graphical user interfaces

(“GUIs”) for accepting user routing preferences; and advanced settings for configuring route

measurement properties, timings, and statistical analysis. 

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117. As described above, the ’464 patent is drawn to solving a specific, technical

problem arising in the context of loss, latency and jitter sensitive route selection in packetswitched networks. Consistent with the problem addressed being rooted in such packet-switched

network environments, the ’464 patent’s solutions consequently are also rooted in that same

technology and cannot be performed with pen and paper or in the human mind.

118. VMware has directly infringed, and continues to directly infringe, literally and/or

by the doctrine of equivalents, individually and/or jointly, at least claims 1, 2, 4, 5, 6, 7, 8, 10, 11,

12, 13, 19, 20, 21, 22, of the ’464 patent by making, using, testing, selling, offering for sale and/or

importing into the United States products and/or services covered by one or more claims of the

’464 patent. VMware’s products and/or services that infringe the ’464 patent include, but are not

limited to, VMware NSX and SD-WAN by VeloCloud (“VeloCloud”), and any other VMware

products and/or services, either alone or in combination, that operate in substantially the same

manner.

119. Claim 1 of the ’464 patent is reproduced below:

1. A method for assessing network routes for use in establishing a communications link

within a communications network, comprising the steps of:

(1) identifying a plurality of candidate routes that can be used to establish said

communication link, wherein a terminating gateway associated with each of said

plurality of candidate routes is identified;

(2) transmitting quality measurement packets for each of said candidate routes,

wherein said quality measurement packets can be used to determine at least one

route quality metric;

(3)receiving returned quality measurement packets for each ofsaid candidate routes,

wherein said returned quality measurement packets can be used to determine route

statistics;

(4) determining route statistics, wherein said route statistics are based on routing

information contained within said quality measurement packets;

(5) configuring a route ordering schedule based on user set levels of route

characteristics; and

(6) scoring each of said candidate routes based on route statistics and said route

ordering schedule, wherein a scoring table is configured that includes a quality

score and one or more of packet loss, average delay, and average jitter.

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120. As one non-limiting example, VMware’s VeloCloud practices a method for

assessing network routes for use in establishing a network communications link.

121. VeloCloud further includes functionality for identifying a plurality of candidate

routes that can be used to establish said communication link, wherein a terminating gateway

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associated with each of said plurality of candidate routes is identified. For example, the dynamic

multi-path optimization (“DMPO”) functionality allows VeloCloud to monitor a plurality of

traffic paths across multiple available connection types (e.g., MPLS, broadband, LTE, etc.)

between VeloCloud-enabled customer endpoints (e.g., customer edge and gateway devices

including VCEs and VCGs), as illustrated below.

122. VeloCloud further includes functionality for transmitting quality measurement

packets for each of said candidate routes, wherein said quality measurement packets can be used

to determine at least one route quality metric. For example, DMPO is a monitoring protocol

capable of transmitting packets in the uplink direction to measure various link performance

attributes, as shown below.

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123. VeloCloud further includes functionality for receiving returned quality

measurement packets for each of said candidate routes, wherein said returned quality

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measurement packets can be used to determine route statistics. For example, DMPO is a

monitoring protocol capable of receiving packets in the downlink direction to measure various

link performance attributes, as shown below.

124. VeloCloud further includes functionality for determining route statistics, wherein

said route statistics are based on routing information contained within said quality measurement

packets. For example, VeloCloud can determine and display routing statistics for each available

path based on the DMPO monitoring, as shown below.

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125. VeloCloud further includes functionality for configuring a route ordering schedule

based on user set levels of route characteristics. For example, Dynamic Application Steering

functionality enables VeloCloud to store and automatically consider user-level preferences related

to route selection when performing path evaluation for particular application flows, as shown

below.

126. VeloCloud further includes functionality for scoring each of said candidate routes

based on route statistics and said route ordering schedule, wherein a scoring table is configured

that includes a quality score and one or more of packet loss, average delay, and average jitter. For

example, VeloCloud can assign scoring tables for available traffic paths based on the above

DMPO monitoring and Dynamic Application Steering intelligence, as shown below.

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127. Additionally, VMware has been, and currently is, an active inducer of infringement

of the ’464 patent under 35 U.S.C. § 271(b) and contributory infringement of the ’464 patent

under 35 U.S.C. § 271(c) either literally and/or by the doctrine of equivalents.

128. VMware has actively induced, and continues to actively induce, infringement of

the ’464 patent by intending that others use, offer for sale, or sell in the United States, products

and/or services covered by one or more claims of the ’464 patent, including but not limited to

VMware NSX and VeloCloud, and any VMware product and/or service, alone or in combination,

that operates in materially the same manner. VMware provides these products and/or services to

others, such as customers, resellers and end-user customers, who, in turn, use, provision for use,

offer for sale, or sell in the United States products and/or services that directly infringe one or

more claims of the ’464 patent.

129. VMware has contributed to, and continues to contribute to, the infringement of the

’464 patent by others by knowingly providing products and/or services that, when installed and

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configured result in a system as intended by VMware, directly infringes one or more claims of

the ’464 patent. 

130. VMware knew of the ’464 patent, or should have known of the ’464 patent, but was

willfully blind to its existence. Upon information and belief, VMware has had actual knowledge

of the ’464 patent since at least as early as the service upon VMware of this Complaint. By the

time of trial, VMware will have known and intended (since receiving such notice) that its

continued actions would infringe and actively induce and contribute to the infringement of one or

more claims of the ’464 patent.

131. VMware has committed, and continues to commit, affirmative acts that cause

infringement of one or more claims of the ’464 patent with knowledge of the ’464 patent and

knowledge or willful blindness that the induced acts constitute infringement of one or more claims

of the ’464 patent. As an illustrative example only, VMware induces such acts of infringement

by its affirmative actions of intentionally providing hardware and or software components that

when used in their normal and customary way as desired and intended by VMware, infringe one

or more claims of the ’464 patent and/or by directly or indirectly providing instructions on how

to use its products and/or services in a manner or configuration that infringes one or more claims

of the ’464 patent, including those found at one or more of the following:

- https://www.vmware.com/products/sd-wan-by-velocloud.html

- https://www.vmware.com/content/dam/digitalmarketing/vmware/en/pdf/product/vmwaredeliver-sd-wan-solution-overview.pdf

- https://www.vmware.com/content/dam/digitalmarketing/vmware/en/pdf/product/vmwareenterprise-wan-agility-solution-overview.pdf

- http://docs.hol.vmware.com/HOL-2019/hol-1940-01-net_html_en/

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- https://partners.lantelligence.com/wp-content/uploads/2018/07/dmpo-brief.pdf

132. VMware has also committed, and continues to commit, contributory infringement

by, inter alia, knowingly selling products and/or services that when used cause the direct

infringement of one or more claims of the ’464 patent by a third party, and which have no

substantial non-infringing uses, or include a separate and distinct component that is especially

made or especially adapted for use in infringement of the ’464 patent and is not a staple article or

commodity of commerce suitable for substantial non-infringing use.

133. As a result of VMware’s acts of infringement, Plaintiff has suffered and will

continue to suffer damages in an amount to be proved at trial.

PRAYER FOR RELIEF

Plaintiff requests that the Court enter judgment against VMware as follows:

(A) finding that VMware has infringed one or more claims of each of the

above patents-in-suit, directly and/or indirectly, literally and/or under the doctrine of

equivalents;

(B) awarding damages sufficient to compensate Plaintiff for VMware’s

infringement under 35 U.S.C. § 284;

(C) finding this case exceptional under 35 U.S.C. § 285 and awarding Plaintiff

its reasonable attorneys’ fees;

(D) awarding Plaintiff its costs and expenses incurred in this action;

(E) awarding Plaintiff prejudgment and post-judgment interest; and

(F) granting Plaintiff such further relief as the Court deems just and

appropriate.

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DEMAND FOR JURY TRIAL

Plaintiff demands trial by jury of all claims so triable under Federal Rule Of Civil

Procedure 38.

Date: March 25, 2020 Respectfully submitted,

/s/ Derek Gilliland

 DEREK GILLILAND

STATE BAR NO. 24007239

SOREY, GILLILAND & HULL, LLP

P.O. Box 4203

109 W. Tyler St.

Longview, Texas 75601

903.212.2822 (telephone)

903.212.2864 (facsimile)

derek@soreylaw.com

KARL RUPP 

State Bar No. 24035243

NIX PATTERSON L.L.P.

1845 Woodall Rodgers Fwy., Suite 1050

Dallas, Texas 75201

972.831.1188 (telephone)

972.444.0716 (facsimile)

krupp@nixlaw.com

OF COUNSEL:

Paul J. Hayes

phayes@princelobel.com

Matthew Vella

mvella@princelobel.com

Robert R. Gilman

rgilman@princelobel.com

Jonathan DeBlois

jdeblois@princelobel.com

Alex Breger

abreger@princelobel.com

PRINCE LOBEL TYE LLP

One International Place, Suite 3700

Boston, MA 02110

Tel: (617) 456-8000

Fax: (617) 456-8100

COUNSEL for PLAINTIFF

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