UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`
`
`SERVICENOW, INC.
`Petitioner
`
`
`
`v.
`
`
`
`BMC SOFTWARE, INC.
`Patent Owner
`____________________
`
`Case CBM 2015-00107
`Patent No. 7,062,683
`____________________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`

`
`Table of Contents
`
`Page
`
`I.
`II.
`III.
`
`V.
`
`INTRODUCTION ........................................................................................... 1
`STATEMENT OF THE ISSUES .................................................................... 4
`SERVICENOW HAS NOT SHOWN THAT THE PETITIONED CLAIMS
`ARE ELIGIBLE FOR CBM REVIEW AS A “FINANCIAL PRODUCT OR
`SERVICE” ....................................................................................................... 5
`IV. RESPONSE TO SERVICENOW’S CLAIM CONSTRUCTIONS .............. 10
`A. Node .................................................................................................... 10
`B.
`Fault Model ......................................................................................... 12
`C.
`Enterprise ............................................................................................. 13
`D.
`Impact Value ....................................................................................... 15
`E.
`Up-stream Analysis ............................................................................. 16
`F.
`Down-stream Analysis ........................................................................ 17
`G. Other Terms ......................................................................................... 18
`SERVICENOW HAS NOT SHOWN THAT THE PETITIONED CLAIMS
`ARE ELIGIBLE FOR CBM REVIEW AS NOT A “TECHNOLOGICAL”
`INVENTION ................................................................................................. 19
`VI. SERVICENOW HAS NOT SHOWN A LIKELIHOOD THAT IT WILL
`PREVAIL ON ITS SECTION 101 CHALLENGE ...................................... 29
`A.
`The Petition Should Be Denied Because ServiceNow Does Not Show
`That The Claims Are Abstract ............................................................ 30
`The Petition Should Be Denied Because The Claims Recite an
`Inventive Concept Relating to Two-Phase Root Cause Analysis on
`Operatively Coupled Monitored Components .................................... 33
`The Board Should Not Institute Trial On The Programmable Control
`Device Claims 24-26, 35, 37, 44, 45, and 90 For Additional
`Reasons………………………..…………………………………….35
`VII. CONCLUSION .............................................................................................. 37
`
`
`B.
`
`C.
`
`
`
`i
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`

`
`TABLE OF AUTHORITIES
`
`
`CASES
`Alice Corp. Pty Ltd. v. CLS Bank Int’l,
`134 S. Ct. 2347 (2014) .................................................................................. 29, 30
`
`Page(s)
`
`Apple, Inc. v. ContentGuard Holdings, Inc..
`CBM2015-00046, Paper 12 (June 3, 2015) .................................................. 27, 28
`
`Bilski v. Kappos,
`130 S. Ct. 3218 (2010) ........................................................................................ 32
`
`Cal. Institute of Tech. v. Hughes Commcn’s Inc.,
`2014 U.S. Dist. LEXIS 156763 (C.D. Cal. Nov. 3, 2014) ................................. 28
`
`DDR Holdings LLC v. Hotels.com, Inc.,
`773 F.3d 1245 (Fed. Cir. 2014) .............................................................. 30, 31, 34
`
`Epsilon Data Management, LLC v. RPost Communications,
`CBM2014-00017, Paper 21 (Apr. 22, 2014) ...............................................passim
`
`GSI Commerce Solutions, Inc. v. Lakshmi Arunachalam,
`CBM2014-00101, Paper 10 (Oct. 7, 2014) .................................................. 27, 28
`
`Par Pharmaceutical, Inc. v. Jazz Pharmaceuticals, Inc.
`CBM 2014-00149, Paper 12 (Jan. 13, 2015) ................................................ 5, 7, 8
`
`PNC Financial Services Group, Inc. v. Intellectual Ventures I LLC,
`CBM 2014-00032, Paper 13 (May 22, 2014) ................................................... 8, 9
`
`Salesforce.com v. Applications in Internet Time LLC,
`Case CBM2014-00162, Paper 11 (Feb. 2, 2015) ......................................... 5, 8, 9
`
`Ultramercial, Inc. v. Hulu, LLC,
`772 F.3d 709 (Fed. Cir. Nov. 14, 2014) ............................................................. 29
`
`STATUTES
`
`35 U.S.C. § 101 .................................................................................................... 1, 29
`
`35 U.S.C. § 324(a) ................................................................................................... 29
`
`
`
`ii
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`

`
`OTHER AUTHORITIES
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.6(e) ................................................................................................... 40
`37 C.F.R. § 42.6(e) ................................................................................................. ..4O
`
`37 C.F.R. § 42.208(b) .............................................................................................. 35
`37 C.F.R. § 42.208(b) ............................................................................................ ..35
`
`37 C.F.R. § 42.301(a) ................................................................................... 1, 2, 5, 19
`37 C.F.R. §42.301(a) ................................................................................. ..1, 2, 5, 19
`
`37 C.F.R. § 42.301(b) ........................................................................................ 10, 19
`37 C.F.R. § 42.301(b) ...................................................................................... ..10, 19
`
`
`
`
`
`iii
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`iii
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`

`
`List of Exhibits
`
`Description
`Class Definition for Class 714, last visited June 16, 2015
`(http://www.uspto.gov/web/patents/classification/uspc714/defs714.htm)
`Declaration of Dr. Hugh Smith in Support of BMC’s Opening Claim
`Construction Brief (’683 and ’898 Patents), Dkt. 99-19, from BMC
`Software, Inc. v. ServiceNow, Inc., Civil Action No. 2:14-cv-00903
`(EDTX)
`Excerpts from the Prosecution History of U.S. Patent No. 7,062,683
`(Excerpts of Patent Application and Original Claims)
`Excerpts of Exhibit B to the Joint Claim Construction and Prehearing
`Statement (Defendant’s P.R. 4-3 Disclosures), Dkt. 67-2, from BMC
`Software, Inc. v. ServiceNow, Inc., Civil Action No. 2:14-cv-00903
`(EDTX)
`The Joint Claim Construction and Prehearing Statement, Dkt. 67, from
`BMC Software, Inc. v. ServiceNow, Inc., Civil Action No. 2:14-cv-
`00903 (EDTX)
`
`
`
`No.
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`
`
`
`
`iv
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`

`
`I.
`
`INTRODUCTION
`
`Patent Owner BMC Software, Inc. (“BMC”) respectfully submits this
`
`Preliminary Response to the Corrected Petition for Covered Business Method
`
`(“CBM”) Review (the “Petition”) filed by ServiceNow, Inc. (“ServiceNow”)
`
`regarding 28 claims1 of United States Patent No. 7,062,683 (“the ’683 patent”) as
`
`allegedly being abstract and invalid under 35 U.S.C. § 101 (“Section 101”). BMC
`
`respectfully requests that the Board not institute CBM review for several reasons.
`
`First, the claims are not drawn to a “financial product or service” and are
`
`thus ineligible for CBM review. 37 C.F.R. § 42.301(a). The petitioned claims
`
`recite a two-phase root cause analysis device and method for identifying fault in a
`
`computer system, identifying a root cause operatively coupled monitored
`
`component (such as a router, database, etc.) and identifying impact on other
`
`operatively coupled monitored components.
`
`ServiceNow argues that the claimed invention is a “financial product or
`
`service” because the specification, rather than the claims, identifies ATM devices
`
`as exemplary devices on which the claimed invention may be applied.
`
`ServiceNow’s specification-based argument is inconsistent with the requirements
`
`
`
`1 These are claims 1-3, 12, 14, 21, 22, 24-26, 35, 37, 44, 45, 56-58, 67, 69, 76, 77,
`
`79, 80, 83, 85, 88-90 (hereinafter the “petitioned claims”).
`
`
`
`1
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`

`
`of 37 CFR § 42.301(a) and with the Board’s precedent that analysis of CBM-
`
`eligibility is “firmly rooted” in the claims. With regard to the claims, ServiceNow
`
`admits that the claims “do not expressly recite ATM devices” (Petition at 15) and
`
`does not identify any claim limitation that requires, or is particular to, a “financial
`
`product or service.” Even if the Board were to entertain ServiceNow’s
`
`specification argument, the specification describes a technical problem and
`
`solution (not a financial product or service) ─ analyzing and diagnosing fault in a
`
`computer network or system, such as a router failure that results in other
`
`components communicating with the router experiencing lost connectivity. Ex.
`
`1001 at 1:42-52, 1:5-20.
`
`Second, even if one could overlook the absence of a “financial product or
`
`service” in the petitioned claims, CBM review would still remain unavailable
`
`because a “technological” invention is excluded from the scope of CBM review.
`
`37 C.F.R. § 42.301(a). ServiceNow’s assertion that the claimed root cause analysis
`
`is abstract rests on contrived claim constructions and a failure to consider the claim
`
`language as a whole, including at least three technological features in each
`
`petitioned claim that ServiceNow does not meaningfully address or identify as
`
`existing in the prior art ─ i) “receive an event notification from a first node,”2 ii)
`
`
`
`2 In some claims “from” is replaced by “for” or “associated with.” See infra fn. 7.
`
`
`
`2
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`

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`“nodes … whose impact values indicate an impacted performance condition,” and
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`iii) “second node having a status value modified during the up-stream analysis.”
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`In addition, ServiceNow does not establish that the claimed invention does
`
`not solve a technical problem using a technical solution. ServiceNow’s hand-
`
`waving that the claims recite “a business method that can be performed entirely by
`
`a human being without a computer” (Petition at 21) or with “generic computer
`
`technologies” (Id.), without any specific showing of how the ’683 patent allegedly
`
`does not solve a technical problem using a technical solution and/or what alleged
`
`business or financial problem the ’683 patent allegedly solves, does not carry its
`
`burden. For this additional reason, i.e., that ServiceNow has not shown that the
`
`petitioned claims are not drawn to a “technological invention,” the Board should
`
`not institute CBM review.
`
`Third, ServiceNow does not show a likelihood that it will prevail on its
`
`Section 101 challenge, which depends on erroneous claim constructions and a far-
`
`fetched and improper comparison of the petitioned claims to a group of people
`
`attempting to boost team morale after a company merger with markers, self-stick
`
`notes, and banner paper. In contrast to ServiceNow’s musings, each petitioned
`
`claim is drawn to a concrete two-phase root cause analysis on “nodes,” which the
`
`patentee expressly defines as “operatively coupled monitored components” (Ex.
`
`1001 at 14:62-64), a definition that ServiceNow ignores, in a computer system.
`
`
`
`3
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`

`
`For the additional reason that ServiceNow does not show that it is more likely than
`
`not to prevail on its Section 101 challenge, the Board should not institute CBM
`
`review.
`
`II.
`
`STATEMENT OF THE ISSUES
`
`The following issues are before the Board:
`
`1.
`
`Despite the fact that ServiceNow does not show that any particular claim
`
`limitation is drawn to a financial product or service, has ServiceNow established
`
`that the petitioned claims are eligible for CBM review as a “financial product or
`
`service” by pointing to an embodiment with ATMs in the specification?
`
`2.
`
`Despite the fact that it does not meaningfully address at least three
`
`technological features of each petitioned claim or the technological problem solved
`
`by the claimed invention, has ServiceNow established that the petitioned claims
`
`are eligible for CBM review as not technological?
`
`3.
`
`Has ServiceNow satisfied its burden of showing a likelihood that it will
`
`prevail on its Section 101 challenge by showing each petitioned claim is abstract
`
`and can be done with pen and paper, is not “necessarily rooted in computer
`
`technology” and does not recite any “inventive concept”?
`
`4.
`
`Should the Petition be denied at least with respect to apparatus claims 24-26,
`
`35, 37, 44, 45, and 90, which are directed to a “programmable control device” with
`
`specialized computer instructions for performing certain tasks, or has ServiceNow
`
`
`
`4
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`

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`shown that these limitations are performed by any generic, off-the-shelf computer?
`
`III. SERVICENOW HAS NOT SHOWN THAT THE PETITIONED
`CLAIMS ARE ELIGIBLE FOR CBM REVIEW AS A “FINANCIAL
`PRODUCT OR SERVICE”
`
`A “covered business method patent” is defined as follows:
`
`that claims a method or corresponding
`A patent
`apparatus for performing data processing or other
`operations used
`in
`the practice, administration, or
`management of a financial product or service, except
`that the term does not include patents for technological
`inventions.
`
`37 C.F.R. § 42.301(a) (emphasis added).
`
`The burden is on ServiceNow, the petitioner, to establish that the ’683 patent
`
`is eligible for CBM review. 37 C.F.R. § 42.304(a). In making the determination
`
`of whether a given patent is eligible for CBM review, the Board’s focus is “firmly
`
`on the claims.” Par Pharmaceutical, Inc. v. Jazz Pharmaceuticals, Inc. CBM
`
`2014-00149, Paper 12 at 9 (Jan. 13, 2015) (“Par Pharmaceutical”); Salesforce.com
`
`v. Applications in Internet Time LLC, Case CBM2014-00162, Paper 11 at 7 (Feb.
`
`2, 2015) (“we focus on the claims”) (“Internet Time”); Epsilon Data Management,
`
`LLC v. RPost Communications, CBM2014-00017, Paper 21 at 5 (Apr. 22, 2014)
`
`(“Epsilon”) (same).
`
`ServiceNow does not identify a single claim limitation that requires, or is
`
`
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`5
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`

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`particular to, a “financial product or service.” This is not surprising because the
`
`claims are not financial or business in nature, nor do they solve a financial or
`
`business problem. Indeed, the ’683 patent is classified in Class 714, which is
`
`directed to a “process or apparatus for detecting and recovering from faults in
`
`electrical computers and digital data processing systems, as well as logic level
`
`based systems.” Ex. 2001 at 1.
`
`The petitioned claims solve the technical problem of efficiently and reliably
`
`analyzing fault by determining a root cause operatively connected monitored
`
`component (e.g. a router in a computer network that has gone down) and reporting
`
`it and its impact through the claimed two-phase analysis on nodes having specific
`
`modifiable values ─ a “status value” (up-stream analysis) and “impact values”
`
`(down-stream analysis). Ex. 1001 at 1:38-47. This problem represents “enormous
`
`operational losses for organizations,” which can be “80% of a [computer]
`
`network’s down-time.” Ex. 1001 at 1:47-52.
`
`According to ServiceNow, the ’683 patent is eligible for CBM review
`
`because the claimed invention is directed to “diagnosing and identifying error
`
`conditions associated with a bank’s automatic teller machines (ATMs).” Petition
`
`at 4 (emphasis added). ServiceNow admits, however, that “the claim limitations
`
`do not expressly recite ATM devices.” Petition at 14. While the patent teaches
`
`diagnosing and identifying error conditions and discloses an embodiment with
`
`
`
`6
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`

`
`ATMs, the claimed invention is not directed to ATMs or any particular system for
`
`that matter. Ex. 2002, Smith Decl. at ¶51. Indeed, any system, including “a
`
`mechanical system comprising pumps, valves and motors may benefit from the
`
`claimed fault analysis method” so long as system has operatively coupled
`
`monitored components that can communicate with a computer module that
`
`performs an analysis. Ex. 1001 at 11:33-40; Ex. 2002, Smith Decl. at ¶51. In
`
`addition, the claimed invention may be used to analyze fault in a computer network
`
`when a router fails and a number of components that communicate through the
`
`failed router report a loss of connectivity. Ex. 1001 at 1:45-50; Ex. 2002, Smith
`
`Decl. at ¶51.
`
`Most inventions can be useful for commercial purposes, yet this is not the
`
`standard for CBM eligibility, lest the exception swallow the rule. For example, a
`
`“method of hammering a nail” may be useful for manufacturing or repairing ATMs
`
`as well as many other systems, or may be relevant to the mechanism of pushing
`
`money out of an ATM, but this does not mean the “method of hammering a nail” is
`
`necessarily a “financial product or service” eligible for CBM review.
`
`For example, in Par Pharmaceutical, a case ServiceNow does not address,
`
`the claims were drawn to a “computerized method of distributing a prescription
`
`drug.” Par Pharmaceutical at 7. The petitioner pointed to the specification’s
`
`teaching of verification of a patient’s ability to pay for a prescription in arguing
`
`
`
`7
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`

`
`that the claimed invention requires a “financial transaction” and is thus drawn to a
`
`“financial product or service.” Id. at 11. The Board rejected petitioner’s argument,
`
`holding that the petitioner had not explained “why any of the claimed method steps
`
`should be considered ‘financial’ when considered in the context of the claim
`
`language as a whole.” Id. at 13-14 (emphasis added). The Board further stated
`
`that “Congress did not say in the statute that a business method patent ‘used in
`
`commerce’ or covering ‘core activities’ of running a business is eligible for CBM
`
`review.” Id. at 17. Like the petitioner in Par Pharmaceuticals, ServiceNow has
`
`not explained why any of the claimed limitations should be considered financial or
`
`rise to a level above having use in commerce.
`
`Likewise, in Internet Time the Board did not institute CBM review for
`
`claims to web browser technology because they were not drawn to a “financial
`
`product or service.” Internet Time at 5. The Board held that “the claims on their
`
`face are directed to technology ‘common in business environments across
`
`sectors’ with ‘no particular relation to the financial services sector’ . . . which the
`
`legislative history says indicates is outside the scope of covered business method
`
`patent review.” Id. at 9 (emphasis added).
`
`Similarly, in PNC Financial, the claims recited “computer administration
`
`operations” for identifying unauthorized files on a computer. PNC Financial
`
`Services Group, Inc. v. Intellectual Ventures I LLC, CBM 2014-00032, Paper 13
`
`
`
`8
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`

`
`(May 22, 2014) at 5. The Board denied the petition, submitted by two banks
`
`accused of infringement based on their “Payment Card Industry Data Security
`
`Standard,” as not drawn to a “financial product or service” because the claims
`
`“describe software systems that have general utility not specific to any
`
`application.” Id. at 10 (emphasis added).
`
`Just like the petitioners in Par Pharmaceutical, Internet Time and PNC
`
`Financial, ServiceNow does not show that the claims have “particular relation
`
`limited to the financial services sector,” and the Petition should be denied. Id. at 7
`
`(emphasis added).
`
`ServiceNow argues that the Board must look to the specification to
`
`determine whether the claims are directed to a “financial product or service,” citing
`
`as its lone authority Salesforce.com.3 Petition 16-17. However, in that decision,
`
`the Board concluded that the claims necessarily “include financial aspects or
`
`activities of an organization.” Salesforce.com at 8. Here, in contrast, ServiceNow
`
`has made no showing that any claim limitation includes “financial aspects.”
`
`Accordingly, ServiceNow has not shown that the petitioned claims are
`
`drawn to a “financial product or service,” and the Board should deny the Petition.
`
`
`
`3 Salesforce.com v. VirtualAgility, Inc., CBM2013-0024 (Paper No. 47) (PTAB
`
`Sept. 16, 2014).
`
`
`
`9
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`

`
`IV. RESPONSE TO SERVICENOW’S CLAIM CONSTRUCTIONS
`Even if one could overlook the absence of a “financial product or service” in
`
`the petitioned claims, CBM review would still remain unavailable because
`
`“technological” inventions are excluded from the scope of CBM review. 37 C.F.R.
`
`§ 42.301(b). Before analyzing whether the claimed invention is “technological,”
`
`as discussed infra in Section V, BMC addresses the proper claim constructions.
`
`ServiceNow’s argument that the claimed inventions are not “technological” is
`
`based on erroneous claim constructions that attempt to construe the petitioned
`
`claims as abstract. BMC’s constructions are faithful to the intrinsic record and
`
`further confirm that the claims are rooted in computer technology and solve a
`
`technical problem. With the proper claim constructions, ServiceNow’s argument
`
`that the petitioned claims are abstract collapses.
`
`A. Node
`The term “node,” according to the intrinsic record, is an “operatively
`
`coupled monitored component.” Ex. 2002, Smith Decl. at ¶¶26-32. This
`
`construction has express definitional support in the specification, namely, from
`
`original claim 47, which is part of the specification. See Ex. 1001 at 14:62-64
`
`(“[Claim] 47. An enterprise including a plurality of operatively coupled monitored
`
`components, hereinafter, referred to as nodes, comprising:”); Ex. 2003 (Original
`
`claims) at 27.
`
`
`
`10
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`

`
`ServiceNow ignores the patentee’s express definition and provides a
`
`construction (“representation of a condition in a fault model”) that is inconsistent
`
`with the specification in several respects. With regard to ServiceNow’s attempt to
`
`limit “node” to a “condition,” first, the claims recite “receive an event notification
`
`from a first node,” Ex. 1001 at 13:16-18, and ServiceNow has not explained how a
`
`notification could be received from a “condition” in ServiceNow’s construction of
`
`“node.”
`
`Second, ServiceNow’s attempt to limit “node” to a “condition” misinterprets
`
`the specification. Although the patent teaches one embodiment where a node may
`
`“represent a ‘condition’ of a modeled component” (Ex. 1001 at 3:59-62), nodes
`
`still must be “operatively coupled monitored components.” Id. at 2:53-59
`
`(“communicatively coupled nodes”); Id. at 9:18-22 (“node that received the
`
`alarm”).
`
`Furthermore, ServiceNow’s inclusion of “in a fault model” in the definition
`
`of “node” is erroneous because nodes are “operatively coupled monitored
`
`components,” not limited to existing in a fault model. Ex. 1001 at abstract (“nodes
`
`in the enterprise whose operational conditions are impacted”). In addition, “nodes”
`
`may exist in an Impact Graph. Ex. 1001 at 4:9-11 (“nodes in an Impact Graph”).
`
`Moreover, ServiceNow’s including “in a fault model” into the definition of “node”
`
`would be redundant and circular in view of the claim language, for example, “node
`
`
`
`11
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`

`
`in a fault model” (Ex. 1001 at 17:31-32) and “fault model having a plurality of
`
`nodes” (Ex. 1001 at 11:51, 15:64-65).
`
`Finally, ServiceNow’s construction of “up-stream analysis” requires a “node
`
`receiving the event notification.” Thus, even ServiceNow appears to acknowledge
`
`that a “node” must be an “operatively coupled monitored component,” as BMC
`
`proposes for “node,” that can receive an event notification and not a “condition.”
`
`ServiceNow provides no explanation as to how a “condition” can receive an “event
`
`notification.”
`
`Accordingly, the Board should adopt the patentee’s express definition of
`
`“node” as an “operatively coupled monitored component.”
`
`Fault Model
`
`B.
`The term “fault model,” according to the intrinsic record, is a “directed
`
`graph (aka digraph) for monitoring faults.” Ex. 2002, Smith Decl. at ¶¶33-38. The
`
`specification correlates a fault model with a directed graph: for example, “a Fault
`
`Model (a directed graph or digraph) may be determined. . . .” Ex. 1001 at 3:59-
`
`67, 2:25-29. BMC’s construction further specifies that the “fault model” is “for
`
`monitoring faults,” consistent with the intrinsic record (see, e.g., Ex. 1001 at 1:5-
`
`10, 1:21-52) and the language of the claim term itself – “fault model.”
`
`ServiceNow’s current construction for “fault model” (“representation of
`
`conditions for modeled components”) in this Petition differs from ServiceNow’s
`
`
`
`12
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`

`
`construction in BMC Software, Inc., v. ServiceNow, Inc., Civil Action No. 2:14-cv-
`
`903 (EDTX) (hereafter “Pending Litigation”), which defines “fault model” as a
`
`“directed graph (aka digraph)…,” as BMC proposes. Ex. 2004 at 14. The only
`
`passages ServiceNow cites (Ex. 1001 at 2:25-29, 3:59-67) do not define “fault
`
`model” according to ServiceNow’s construction and, in fact, correlate “fault
`
`model” with a “directed graph (aka digraph),” as BMC proposes. Petition at 43-
`
`44.
`
`Further, inserting ServiceNow’s current construction of “fault model” into
`
`its construction of “node” yields the following circular and unintelligible
`
`construction for “node”: “representation of a condition in a representation of
`
`conditions for modeled components.” Finally, to the extent ServiceNow’s
`
`construction seeks to define “fault model” as an abstract “representation,” it is
`
`inconsistent with claim language requiring a computer-implemented fault model
`
`analyzed by a “programmable control device.” Ex. 1001 at 13:19-20 (“causing the
`
`programmable control device to . . . perform an up-stream analysis of the fault
`
`model”).
`
`For at least these reasons, the Board should construe “fault model” as a
`
`“directed graph (aka digraph) for monitoring faults.”
`
`C. Enterprise
`The term “enterprise,” according to the intrinsic record, is a “collection of
`
`
`
`13
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`

`
`hardware and software entities in a computer network.” Ex. 2002, Smith Decl. at
`
`¶¶48-53. This construction has express definitional support from the patent. Ex.
`
`1001 at 1:11-20 (“Contemporary computer networks comprise a plurality of
`
`different computer platforms and software applications . . . The collection of such
`
`entities ─ hardware and software ─ is often referred to as an ‘enterprise.’”)
`
`ServiceNow argues that the Board should re-define “enterprise” as
`
`“collection of components that can be monitored” because in one passage the
`
`specification states that a mechanical system can benefit from the claimed
`
`invention. Petition at 51-52. The passage ServiceNow identifies, however, does
`
`not even use the term “enterprise” (Ex. 1001 at 11:32-40), let alone re-define.
`
`Many of the ’683 patent claims do not include the term “enterprise,” such as claims
`
`56-90, further showing ServiceNow’s reliance on a statement related to the
`
`“claimed invention” as somehow defining “enterprise” is improper. Finally,
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`ServiceNow ignores the teaching in the passage that even in a mechanical system,
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`computer components are still necessary. Id. (“[I]f a ‘system’ comprises at least
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`some components
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`that are monitored and
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`these monitored components
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`communicate (in any desired fashion) to a module that performs the analysis,
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`such a system can benefit from the claimed invention.”); Ex. 2002, Smith Decl. at
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`¶51.
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`ServiceNow further attempts to re-define the patentee’s definition of
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`“enterprise” by arguing, without any explanation, that the specification teaches an
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`“enterprise” including ATM devices with “mechanical cash dispensing devices
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`[that] do not qualify as the type of computer hardware or software described in the
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`Background.” Petition at 50-51. The specification teaches, in one example, that an
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`enterprise may consist of ATMs that are operatively coupled to communicate in a
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`network “via a satellite communications system.” Ex. 1001 at 7:31-34.
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`Moreover, the specification teaches that monitored components in an
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`enterprise are “communicatively coupled” with each other (Id. at 2:56-60) and are
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`able to receive alarms (Id. at 9:18-20) and convey alarm information (Id. at 13:16-
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`18). ServiceNow’s argument that the enterprise described in this embodiment does
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`not contain hardware or software is thus inconsistent with the intrinsic evidence.
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`Ex. 2002, Smith Decl. at ¶53.
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`Accordingly, the Board should construe “enterprise” as “collection of
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`hardware and software entities in a computer network.”
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`Impact Value
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`D.
`The term “impact value,” according to the intrinsic record, is “value
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`representing the extent of impact.” Ex. 2002, Smith Decl. at ¶¶74-77. ServiceNow
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`narrowly construes “impact value” as a value indicating only whether a node is
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`“impacted” or “not impacted.” Petition at 47-48 (construing “impact value” as a
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`“value indicating whether or not a node is impacted by its up-stream neighboring
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`
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`15
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`nodes”). BMC proposes more broadly that an “impact value” represents the
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`“extent of impact” and is not limited to the Boolean embodiment (“impacted” or
`
`“not impacted”). BMC’s proposal is consistent with the intrinsic record, which
`
`provides that an “impact value” may be a Boolean value indicating “impacted” or
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`“not impacted” or “any real number between 0.00 and 1.00” representing a more
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`specific extent of impact, such as “0.51.” Ex. 1001 at 10:53-59, 4:22-30. The ’683
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`patent also claims both the Boolean and real-number embodiments. Id. at 12:59-
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`62. The only passage ServiceNow cites (Id. at 4:22-30) refers to the real number
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`embodiment, but ServiceNow defines the term according to this passage’s
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`description of the Boolean embodiment only. Petition at 47. Therefore,
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`ServiceNow’s construction, which excludes the real number embodiment described
`
`in the specification, should be rejected.
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`Accordingly, the Board should construe “impact value” as a “value
`
`representing the extent of impact.”
`
`E. Up-stream Analysis
`The term “up-stream analysis,” according to the intrinsic record, is “analysis
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`in the direction of cause.” Ex. 2002, Smith Decl. at ¶¶57-66. This construction is
`
`consistent with the claim language. Ex. 1001 at 11:54-67 (reciting “performing an
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`up-stream analysis” in the direction of cause and reporting a “root cause”).
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`16
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`ServiceNow’s construction (“analysis of the nodes up-stream from the node
`
`receiving the event notification”) does not construe “up-stream” or “analysis” and
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`merely adds additional and unnecessary words. Petition at 44-45. The only
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`specification passage ServiceNow cites provides an observation, not a definition,
`
`caveated by “[g]enerally speaking.” Ex. 1001 at 6:1-7. ServiceNow’s construction
`
`is further erroneous to the extent it requires an analysis of “nodes” (plural), which
`
`is not required by the intrinsic record and in fact contradicted by it (see, e.g., Ex.
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`1001 at abstract (“up-stream analysis is performed . . . to identify one or more
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`nodes”)) and more
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`importantly contradicted by ServiceNow’s proposed
`
`construction in the Pending Litigation which requires an up-stream analysis of only
`
`“one or more nodes.”4
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`Accordingly, the Board should construe “up-stream analysis” as a
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`“analysis in the direction of cause.”
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`F. Down-stream Analysis
`The term “down-stream analysis,” according to the intrinsic record, is
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`“analysis in the direction of impact.” Ex. 2002, Smith Decl. at ¶¶62-66. This
`
`
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`4 ServiceNow proposes in the Pending Litigation that “performing an up-stream
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`analysis of the fault model” means “conducting an analysis of one or more nodes
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`upstream from the first node.” Ex. 2004 at 16.
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`17
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`construction is consistent with the claim language. Ex. 1001 at 11:59-12:3
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`(reciting “performing a down-stream analysis” in the direction of impact and
`
`reporting “nodes as impacted”). ServiceNow’s construction (“analysis of nodes
`
`down-stream from the second node”) does not construe “down-stream” or
`
`“analysis” and merely adds additional and unnecessary words. Petition at 45-46.
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`The only specification passage ServiceNow cites provides an observation, not a
`
`definition, caveated by “[g]enerally speaking.”
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` Ex. 1001 at 6:53-60.
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`ServiceNow’s construction is further erroneous to the extent it requires an analysis
`
`of “nodes” (plural), which is not required by the intrinsic record and in fact would
`
`be contradicted by it (Ex. 1001 at 4:60-63) and contradicted by ServiceNow’s
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`construction in the Pending Litigation which requires a down-stream analysis of
`
`only “one or more nodes.”5
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`Accordingly, the Board should construe “down-stream analysis” as
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`“analysis in the direction of impact.”
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`G. Other Terms
`With respect to the terms “status