VirtaMove Corp. v. Google LLC

VirtaMove Corp. has initiated patent infringement litigation against Google LLC in the U.S. District Court for the Northern District of California. VirtaMove Corp. is a Canadian operating company that develops software for migrating server applications to modern operating systems, including cloud environments, without requiring extensive recoding. While an operating company, VirtaMove has been identified by some sources, such as Unified Patents, as a Non-Practicing Entity (NPE) or Patent Assertion Entity (PAE) due to its pattern of asserting patents against major tech companies. Google LLC is a global technology operating company. VirtaMove accuses Google's products, including Google Container Registry, Google Artifact Registry, and Google Cloud Platform, of infringing its patents related to containerization technology. The case initially involved U.S. Patent No. 7,784,058, which broadly covers operating system libraries and instanced computing environments for portable application execution. However, claims specifically related to the '058 patent have since been voluntarily dismissed without prejudice by VirtaMove.

The litigation began with a complaint filed by VirtaMove in the U.S. District Court for the Western District of Texas on January 31, 2024, under case number 7:24-cv-00033. Google successfully moved to transfer the case to the U.S. District Court for the Northern District of California, where it is now presided over by Judge Noel Wise in the San Jose Division (Case No. 5:25-cv-00860). The Federal Circuit upheld this transfer, rejecting VirtaMove's mandamus petitions challenging the move, primarily noting the concentration of Google's engineers involved in the accused products in the San Francisco Bay Area. The case has seen a partial dismissal, where some of VirtaMove's allegations, specifically for induced and contributory infringement, were dismissed, though the central claim of direct infringement survived. Furthermore, this case (referred to as "VirtaMove I") has been consolidated for all purposes with a related case ("VirtaMove II", Case No. 5:26-CV-00704), which asserts U.S. Patent Nos. 7,519,814 and 7,774,762, both members of the same patent family and also relating to containerization systems and methods.

This case is notable for several reasons. Beyond the ongoing patent infringement claims, it highlights patterns of patent assertion by companies like VirtaMove against major technology providers in the cloud and containerization space. Critically, the case has direct linkage to a significant inter partes review (IPR) dispute. Google filed IPR petitions against a VirtaMove patent, but the U.S. Patent and Trademark Office (PTO) denied institution based on its controversial "settled expectations" doctrine, which presumes against IPR institution for patents in force for over six years. Google has since petitioned the U.S. Supreme Court for a writ of certiorari, challenging the PTO's statutory authority to deny IPRs on this basis and the reviewability of such denials, making this litigation a touchstone for administrative power and judicial review under the America Invents Act. The Federal Circuit's decisions upholding the venue transfer also contribute to the evolving jurisprudence on patent venue in the Fifth Circuit.

Here's a chronological overview of the key legal developments and outcome for the patent infringement litigation of VirtaMove Corp. v. Google LLC, with a specific focus on U.S. Patent 7,784,058.

Key Legal Developments and Outcome:

1. Filing & Initial Pleadings

• 2024-01-31: Initial Complaint Filed. VirtaMove Corp. initially filed a patent infringement lawsuit against Google LLC in the U.S. District Court for the Western District of Texas, Midland/Odessa Division, Case No. 7:24-cv-00033. The complaint asserted infringement of U.S. Patent Nos. 7,519,814 ('814 patent) and 7,784,058 ('058 patent).
• 2024-05-21: First Amended Complaint. VirtaMove filed a First Amended Complaint for Patent Infringement, continuing to assert infringement of both the '814 and '058 patents by Google's containerization products and services, including Google Kubernetes Engine, Cloud Run, and Migrate to Containers.
• 2024-10-01: Google's Proposed Claim Terms for Construction. In the Western District of Texas case (7:24-cv-00033), Google submitted a list of proposed claim terms for construction, including terms from both the '814 and '058 patents. VirtaMove, at that time, had not proposed any terms for construction, stating that for many, "No construction necessary; plain and ordinary meaning".

2. Pre-trial Motions of Substance

• 2025-01-27: Case Transferred to N.D. Cal. The case was transferred from the Western District of Texas to the U.S. District Court for the Northern District of California and assigned Case No. 5:25-cv-00860.
• 2025-08-08: Google's Motion to Dismiss Reply. Google LLC filed a reply in support of its motion to dismiss the complaint in the Texas Western District Court (7:25-cv-00347), which was likely before its transfer or a related action.
• 2025-11-28: Motion to Dismiss Partially Granted. Judge Noel Wise of the Northern District of California partially granted Google's motion to dismiss. The ruling dismissed some allegations, specifically finding that VirtaMove did not sufficiently allege induced or contributory infringement based on pre-suit knowledge or how Google conducted contributory infringement. However, the court rejected Google's arguments that VirtaMove failed to sufficiently allege direct infringement and that one asserted patent was ineligible for protection, allowing the central claim of direct infringement to survive. While the specific patent is not definitively stated in relation to the eligibility argument, this motion impacted the scope of the remaining claims.
• Post-2025-11-28: Voluntary Dismissal of '058 Patent Claims. Following the partial dismissal, VirtaMove filed a voluntary dismissal without prejudice for claims related to the '058 patent. The exact date of this voluntary dismissal is not specified in the provided search results but occurred after the partial grant of the motion to dismiss and prior to consolidation with the later-filed case.

3. Claim Construction (Markman) Outcomes

• 2026-09-16: Claim Construction Hearing Scheduled. A claim construction hearing is scheduled for September 16, 2026, for the consolidated case (5:25-cv-00860 and 5:26-cv-00704). It is understood that following the voluntary dismissal of the '058 patent claims, this hearing would primarily pertain to the '814 patent.

4. Discovery Milestones

• 2026-04-15: Consolidated Discovery Limits. In the consolidated cases (5:25-cv-00860 and 5:26-cv-00704), the parties stipulated to and the court ordered consolidated discovery limits, including 35 interrogatories, 50 requests for admission, 85 requests for production, and 80 hours of fact depositions. These limits apply to the remaining active claims, which would not include the '058 patent claims after their dismissal.

5. Settlement, Dismissal, Judgment, or Appeal

• 2026-04-15: Case Consolidation. VirtaMove Corp. v. Google LLC, Case No. 5:25-cv-00860, was consolidated for all purposes with VirtaMove Corp. v. Google LLC, Case No. 5:26-CV-00704, with the latter being administratively closed. The consolidation also covered VirtaMove I (related to the '814 patent) and VirtaMove II (related to the '762 patent), suggesting that the '058 patent was already dismissed by this point. The '762 patent claims priority to the '814 patent and accuses overlapping Google products.
• Present Posture: The case is currently active in the Northern District of California, proceeding towards a claim construction hearing, but without claims related to the '058 patent.

6. Parallel PTAB IPR/PGR Proceedings

• 2025-01-30: Google Files IPR Petitions. Google LLC filed multiple Inter Partes Review (IPR) petitions against VirtaMove's patents. Specifically, IPR2025-00487 challenged U.S. Patent No. 7,519,814 ('814 patent). Another petition, IPR2025-00488, was also filed against VirtaMove's patent (though the specific patent number is not explicitly stated in the provided snippets, it likely also targeted a patent asserted in the litigation).
• 2025-07-10/11: PTAB Discretionary Denial of IPRs. The Patent Trial and Appeal Board (PTAB) discretionarily denied institution of Google's IPR petitions (including IPR2025-00487). The PTAB reasoned that the patents had been in force for a significant period (over 14 years), creating "strong settled expectations," and that Google had not demonstrated that review would be an appropriate use of PTO resources.
• 2026-01-27: Federal Circuit Denies Mandamus Petition. Google sought a writ of mandamus from the U.S. Court of Appeals for the Federal Circuit, requesting the PTO's decision denying IPR institution be vacated and reconsidered without considering "settled expectations." The Federal Circuit denied the mandamus petition, citing its prior rejections of similar challenges and Google's failure to demonstrate a right to a different conclusion.
• 2026-04-27: Petition for Writ of Certiorari to Supreme Court. Google LLC filed a petition for a writ of certiorari with the U.S. Supreme Court, challenging the PTO's denial of IPR institution based on "settled expectations." Google raised questions regarding the PTO's statutory authority to deny institution on such grounds and the courts' power to review such decisions. The response to this petition is due May 29, 2026.

The '058 patent was initially part of the asserted patents and claim construction discussions but was later voluntarily dismissed without prejudice by VirtaMove. Therefore, the subsequent key developments like the claim construction hearing and the ongoing IPR challenges primarily concern the '814 patent and other related patents (like the '762 patent in the consolidated cases), not the '058 patent.

Due to the limitations of public web search without direct PACER access for case number 4:24-cv-00624 in the U.S. District Court for the Northern District of California, definitively identifying the current counsel of record and their specific roles (lead, local, in-house) for VirtaMove Corp. is challenging. Filings that would explicitly list appearances are not directly accessible through general web searches.

However, based on information from related patent infringement cases filed by VirtaMove Corp. against Google LLC in other districts that were later transferred or are parallel proceedings, VirtaMove Corp. has been represented by attorneys from Russ August & Kabat.

While this information pertains to related cases (such as 7:24-cv-33 in the Western District of Texas and 7:25-cv-00347 also in the Western District of Texas), it is highly probable that counsel from this firm would continue their representation or facilitate the engagement of local counsel in the transferred Northern District of California case.

Based on these related proceedings, the following attorneys from Russ August & Kabat have been associated with representing VirtaMove Corp.:

• Reza Mirzaie (Lead Counsel)
  • Firm: Russ August & Kabat (Los Angeles, CA)
  • Note: Mr. Mirzaie is a partner at Russ August & Kabat with extensive experience in patent litigation, including representing VirtaMove in cases against Google. He was listed as counsel in VirtaMove's disclosure of proposed claim constructions in a case in the Eastern District of Texas.

Other attorneys from Russ August & Kabat who have appeared in related VirtaMove v. Google cases include:

• Christian W. Conkle (Counsel)
  • Firm: Russ August & Kabat
• Neil A. Rubin (Counsel)
  • Firm: Russ August & Kabat
• Jonathan Ma (Counsel)
  • Firm: Russ August & Kabat
• Qi (Peter) Tong (Counsel)
  • Firm: Russ August & Kabat
• Daniel B. Kolko (Counsel)
  • Firm: Russ August & Kabat
• James S. Tsuei (Counsel)
  • Firm: Russ August & Kabat
• James Milkey (Counsel)
  • Firm: Russ August & Kabat
• Jacob R. Buczko (Counsel)
  • Firm: Russ August & Kabat
• Marc A. Fenster (Counsel)
  • Firm: Russ August & Kabat
• Jefferson Cummings (Counsel)
  • Firm: Russ August & Kabat
• Mackenzie Paladino (Counsel)
  • Firm: Russ August & Kabat

It is important to note that the specific roles (e.g., lead counsel, local counsel) of these additional attorneys for the 4:24-cv-00624 case cannot be definitively determined without direct access to the docket entries for that specific Northern District of California case. Their presence in related cases suggests their potential involvement or continued representation.

Due to the nature of public docket information and the consolidation and transfer of related cases, identifying the precise, currently active counsel of record for Google LLC in the consolidated U.S. District Court for the Northern District of California case (5:25-cv-00860) has proven challenging through direct web search for N.D. Cal. docket entries. While Google LLC is actively involved in the N.D. Cal. proceedings, as evidenced by filings like a "Reply Claim Construction Brief", the specific attorneys and their appearances for this particular N.D. Cal. case are not explicitly detailed in the provided search snippets.

However, counsel for Google LLC in a related case, VirtaMove, Corp. v. Google LLC (7:25-cv-00347) in the Western District of Texas, which was the originating district for some of VirtaMove's claims, included:

• Nathaniel St. Clair, II
  • Role: Lead Counsel (Likely, given his role as head of IP practice group and patent litigation experience). [cite: 2, 5 (from previous round)]
  • Firm: Jackson Walker LLP, Dallas, Texas. [cite: 2, 3 (from previous round)]
  • Experience: Mr. St. Clair is the head of Jackson Walker's Intellectual Property practice group and focuses on patent litigation, patent portfolio licensing and management, and IP counseling in electrical and mechanical arts. He has been recognized among the top 100 patent attorneys in Patexia's Patent Intelligence Report and shortlisted for Managing IP's Litigator of the Year – Texas award. [cite: 2, 7 (from previous round), 8 (from previous round), 10 (from previous round)]
• Erica Benites Giese
  • Role: Counsel (Likely, given her participation in the W.D. Tex. case). [cite: 7 (from previous round)]
  • Firm: Jackson Walker LLP, San Antonio, Texas. [cite: 7 (from previous round), 11 (from previous round)]
  • Experience: Ms. Giese is co-chair of Jackson Walker's Investigations & White Collar Defense practice and has experience in complex civil and criminal litigation, including government investigations. While her primary focus appears to be white-collar defense, Jackson Walker's IP litigation group handles a wide array of intellectual property matters. [cite: 12 (from previous round), 13 (from previous round), 15 (from previous round), 16 (from previous round), 17 (from previous round)]

It should be noted that Jackson Walker LLP is a Texas-based firm with all its offices located in Texas. [cite: 7 (from previous round), 11 (from previous round)] If these attorneys are indeed representing Google LLC in the Northern District of California, they would likely be doing so in coordination with local counsel admitted to practice in that district, or through pro hac vice admission, as Jackson Walker does not appear to have a California office.

A motion to withdraw as attorney was also filed on behalf of Katharine Lee Carmona of Richards Rodriguez & Skeith, LLP in a Western District of Texas case (7:25-cv-00347) for Google LLC. [cite: 7 (from previous round)] Her firm is located in Austin, Texas, and her practice areas include intellectual property and commercial litigation. [cite: 11 (from previous round), 20 (from previous round)]

Google LLC also employs in-house counsel specializing in patent litigation and policy, such as Laura Sheridan (Head of Patent Policy) [cite: 5 (from previous round), 12 (from previous round)] and Halimah DeLaine Prado (General Counsel) [cite: 10 (from previous round), 11 (from previous round)]. While these individuals manage Google's overall patent strategy and legal affairs, the request specifically asks for counsel of record, typically referring to external litigation counsel.

As of the current date, specific docket entries directly listing the counsel of record who have filed appearances for Google LLC in the consolidated N.D. Cal. case 5:25-cv-00860 are not readily available through the conducted web searches.