Unreported / Non-Citable
Background
VirtaMove sued Google and Amazon in two 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 and isolating applications in secure containers to avoid resource conflicts. The cases were transferred from the Western District of Texas. After a technology tutorial and Markman hearing on October 1, 2026, the Court addressed five disputed claim terms the parties agreed were dispositive. The Court found at least one term indefinite in each asserted claim, rendering claims 17–20 of the ‘762 Patent and claims 1–30 of the ‘814 Patent invalid for indefiniteness under 35 U.S.C. § 112.
The Court’s Holding
The Court construed five disputed terms. For the ‘762 Patent: (1) ‘an incompatible computer platform in which the first software application is not intended to execute’ was held indefinite as to both ‘incompatible’ (because VirtaMove’s construction contradicted the claim by requiring the application cannot run without change, yet the claim runs it without change) and ‘not intended to execute’ (because it is either subjective or redundant); (2) ‘the second incompatible computer platform’ was corrected to ‘the incompatible computer platform’ by striking ‘second’ as an obvious drafting error confirmed by the prosecution history; (3) ‘the local operating system libraries’ was construed to mean the operating system of the incompatible computer platform, with ‘libraries’ given its plain meaning.
For the ‘814 Patent: (4) ‘disparate computing environments’ was held indefinite because the patentee’s lexicography (‘stand-alone or unrelated computers’) is either contradictory (servers in a system are connected) or unbounded (no objective criteria for ‘stand-alone’ ability); (5) ‘an operating system’s root file system’ was construed to mean ‘each of the operating systems’ root file systems’ of the plurality of servers. Because ‘disparate computing environments’ in independent claim 1 of the ‘814 Patent is indefinite, all asserted dependent claims are also invalid. 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’ is indefinite because VirtaMove’s construction (‘cannot run without change’) contradicts the claim’s requirement that the application runs on that platform without changing the application itself.
- The phrase ‘not intended to execute’ is indefinite because it relies on subjective designer intent with no objective boundaries in the specification or prosecution history.
- The term ‘disparate computing environments’ is indefinite because the patentee’s definition (‘stand-alone or unrelated computers’) either contradicts the claim’s requirement of a connected multi-server system or lacks any discernible boundaries for what ‘stand-alone’ means.
- The Court corrected an obvious antecedent-basis error in the ‘762 Patent (‘second incompatible computer platform’) by striking ‘second,’ but this did not save the claim due to other indefinite terms.
Why It Matters
This order invalidates all asserted claims in two patent infringement actions against major cloud providers. The decision underscores that patentee lexicography must provide objective boundaries; a definition that is disjunctive but where one alternative contradicts the claim and the other is unbounded renders the term indefinite. It also illustrates the Federal Circuit’s Nautilus standard: a claim is indefinite if it fails to inform those skilled in the art about the scope of the invention with reasonable certainty.
The ruling highlights the danger of using subjective terms like ‘intended’ without functional limitations tied to objective claim scope, and the risk of drafting errors that create antecedent-basis problems. The Court’s willingness to correct an obvious error (‘second’) while invalidating the claim on other grounds shows the interplay between claim construction and indefiniteness as legal questions. The order resolves only the motion and issues described above. Any claims, defenses, or later approval questions not decided by the order remain for further proceedings in the trial court.