Unreported / Non-Citable
Background
VirtaMove sued Google and Amazon in related actions alleging infringement of U.S. Patent Nos. 7,519,814 (‘814 Patent) and 7,774,762 (‘762 Patent). The ‘762 Patent is a continuation-in-part of the ‘814 Patent.
Both patents relate to running software applications on incompatible computer platforms or in secure containers using substitute system files instead of the host operating system’s local files. The ‘762 Patent addresses application-OS incompatibility by providing a ‘second group of files’ and runtime software with an ‘application filter library’ to intercept system calls. The ‘814 Patent addresses resource conflicts and security by storing ‘secure containers’ each with its own application(s) and associated system files, excluding a kernel, and each having a ‘unique root file system.’ The cases were transferred from the Western District of Texas. After a technology tutorial and Markman hearing on October 1, 2026, the Court identified five disputed terms as potentially dispositive and resolved them in this joint order.
The Court’s Holding
The Court construed five disputed claim terms. For the ‘762 Patent (Google Action only): (1) ‘an incompatible computer platform in which the first software application is not intended to execute’ was found indefinite in two respects—’incompatible’ and ‘not intended to execute’—rendering independent claim 17 and its dependent claims (17–20) invalid; (2) ‘the second incompatible computer platform’ contained an obvious drafting error (the word ‘second’) which the Court corrected to ‘the incompatible computer platform’ based on the specification and prosecution history, so the claim was not invalid on this ground; (3) ‘the local operating system libraries’ lacked an antecedent basis but was construed as ‘the operating system of the incompatible computer platform’ with ‘libraries’ given its plain meaning, so the claim was not invalid on this ground.
For the ‘814 Patent (both actions): (4) ‘disparate computing environments’ was defined by the patentee as ‘Environments where computers are stand-alone or where there are plural computers and where they are unrelated.’ The Court found the ‘stand-alone’ portion either contradictory (because the claimed servers form a connected system) or fatally ambiguous (no objective boundaries for ‘ability to operate independently’), rendering independent claim 1 and dependent claims 2, 4, 6–10, 13–14 invalid; (5) ‘an operating system’s root file system’ was construed as ‘each of the operating systems’ root file systems’ referring to the plurality of servers in claim 1, and was not indefinite. Because at least one term in each asserted independent claim was indefinite, all asserted claims of both patents were held invalid under 35 U.S.C. § 112. The Court set a status conference for October 27, 2026.
Key Takeaways
- Claims 17–20 of the ‘762 Patent and claims 1–30 of the ‘814 Patent are invalid for indefiniteness.
- The term ‘incompatible computer platform’ in the ‘762 Patent is indefinite because VirtaMove’s proposed construction (‘cannot run without change’) contradicts the claim language requiring the application to run on that platform without changing the application itself, and the alternative construction (‘without practicing the claimed invention’) is circular.
- The phrase ‘not intended to execute’ in the ‘762 Patent is indefinite because it relies on subjective intent/design with no objective boundaries in the specification or prosecution history, and substituting ‘designed’ would render it redundant with ‘incompatible.’
- The term ‘disparate computing environments’ in the ‘814 Patent is indefinite because the patentee’s own lexicography (‘stand-alone or unrelated computers’) is either contradictory to the claimed system of networked servers or lacks any discernible boundaries for what ‘stand-alone’ means in context.
- The Court corrected an obvious antecedent-basis error in the ‘762 Patent (‘second incompatible computer platform’ → ‘the incompatible computer platform’) based on the specification and prosecution history, but this did not save the claim because other terms were indefinite.
Why It Matters
This claim construction order disposes of all asserted claims in two related patent infringement actions by finding them invalid for indefiniteness under 35 U.S.C. § 112, ¶ 2 (pre-AIA) / § 112(b) (AIA). The decision illustrates how internal contradictions in claim language—particularly between a term’s proposed construction and other claim limitations—and patentee-defined terms that conflict with the claimed embodiment or lack objective boundaries can render claims invalid. The Court applied the Nautilus ‘reasonable certainty’ standard and held the challengers (Google and Amazon) met their clear-and-convincing burden. The ruling also demonstrates the limits of claim correction under Novo Industries: while obvious drafting errors can be fixed, the correction does not cure other independent indefiniteness defects.
The joint order ensures uniform claim construction across both cases for the commonly asserted ‘814 Patent, consistent with Federal Circuit guidance on uniformity. The ruling is case-specific and should be read with its procedural posture and, where applicable, its nonprecedential status in mind. The result is narrowly framed. Practitioners should distinguish the court’s actual disposition from issues it mentioned but expressly left unresolved.