Trials@uspto.gov
`571.272.7822
`
` Paper No. 9
`
`
` Entered: February 16, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SERVICENOW, INC.,
`Petitioner,
`
`v.
`
`BMC SOFTWARE, INC.,
`Patent Owner.
`____________
`
`Case CBM2015-00170
`Patent 8,646,093 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, BRIAN P. MURPHY, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`Petitioner’s Motion for Pro Hac Vice Admission
`37 C.F.R. § 42.10
`
`Petitioner ServiceNow, Inc. (“ServiceNow”) filed a Petition (“Pet.”)
`(Paper 1) requesting covered business method patent review of claims 1, 5,
`10–13, and 16 of U.S. Patent No. 8,646,093 B2 (“the ’093 patent”) (Ex.
`1001) pursuant to 35 U.S.C. §§ 321–329. Patent Owner BMC Software, Inc.
`
`
`
`
`571.272.7822
`
` Paper No. 9
`
`
` Entered: February 16, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SERVICENOW, INC.,
`Petitioner,
`
`v.
`
`BMC SOFTWARE, INC.,
`Patent Owner.
`____________
`
`Case CBM2015-00170
`Patent 8,646,093 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, BRIAN P. MURPHY, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`Petitioner’s Motion for Pro Hac Vice Admission
`37 C.F.R. § 42.10
`
`Petitioner ServiceNow, Inc. (“ServiceNow”) filed a Petition (“Pet.”)
`(Paper 1) requesting covered business method patent review of claims 1, 5,
`10–13, and 16 of U.S. Patent No. 8,646,093 B2 (“the ’093 patent”) (Ex.
`1001) pursuant to 35 U.S.C. §§ 321–329. Patent Owner BMC Software, Inc.
`
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`(“BMC”) filed a Preliminary Response (“Prelim. Resp.”) (Paper 8) to the
`Petition. We have jurisdiction under 35 U.S.C. § 324.
`
`Pursuant to 35 U.S.C. § 324(a), the Director may not authorize a
`covered business method patent review unless the information in the
`petition, if unrebutted, “would demonstrate that it is more likely than not that
`at least 1 of the claims challenged in the petition is unpatentable.” For the
`reasons that follow, we institute a covered business method patent review as
`to claims 1, 5, 10–13, and 16 of the ’093 patent.
`
`
`I. BACKGROUND
`
`Related Proceedings
`A.
`The parties identify the following proceeding related to the ’093
`
`patent (Pet. 1; Paper 5, 1): BMC Software, Inc. v. ServiceNow, Inc., Case No.
`
`2:14‐CV‐00903 JRG (E.D. Tex. Sept. 23, 2014). The ’093 patent was also
`
`the subject of a petition for inter partes review in IPR2015-01555. See Pet.
`1; Paper 5, 1. In that case, the Board denied institution of an inter partes
`review in a Decision dated January 14, 2016.
`
`
`The ’093 Patent
`B.
`The ’093 patent is directed to a software license system that “allows
`
`an enterprise to model software license contracts and evaluate deployment of
`software for compliance with the software license contracts.” Ex. 1001,
`Abstract. Figure 2 of the ’093 patent is reproduced below.
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`Figure 2 depicts system 200 having Configuration Management Database
`(CMDB) 260, which “contains data about managed resources known as
`Configuration Items (CIs).” Id. at 1:29–30. Information about the software
`contracts, which may include the information listed in Table 1 of the
`specification, may be stored as CIs in CMDB 260. Id. at 5:1–2, 9–55 (Table
`1).
`License datastore 270, which may be separate from or a part of
`
`CMDB 260, provides storage for license certificates “to model software
`contracts, including rules against which the CIs are evaluated for software
`license compliance and other information necessary for processing those
`rules.” Id. at 4:11–17, 9:37–40. “A license certificate indicates the right to
`deploy software in the environment managed by the CMDB server 110,” and
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`an exemplary license certificate may include the information listed in Table
`3 of the specification. Id. at 8:61–63, 9:1–20 (Table 3).
`
`C.
`
`Claim 1
`Claim 1 of the ’093 patent recites:
`1.
`A computer-implemented method, comprising:
`modeling deployment of a software product and a software
`license contract for the software product;
`storing a first model of the modeled deployment of the
`software product in a configuration management database
`(CMDB) by storing information related to the software product
`as a first configuration item in the CMDB and by storing
`information related to the software license contract as a second
`configuration item in the CMDB;
`storing a second model of the modeled software license
`contract for the software product in a license database by
`generating a license certificate corresponding to the software
`license contract and storing the license certificate in the license
`database; and
`evaluating the deployment of the software product for
`compliance with the software license contract, comprising:
`connecting and comparing the first model and the
`second model by comparing the first configuration item
`with the license certificate and connecting the license
`certificate with the second configuration item responsive
`to comparing the first configuration item with the license
`certificate; and
`generating an exception indication if the act of
`comparing the first model and the second model indicates
`non-compliance with the software license contract.
`
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`D.
`Exhibit Description
`ServiceNow relies on, inter alia, the following declaration and
`references in support of its ground of unpatentability:
`
`Declaration of Tal Lavian, Ph.D. (Ex. 1002);
`Excerpts from United Kingdom Office of Government
`Commerce, BEST
`PRACTICE
`SOFTWARE ASSET
`FOR
`MANAGEMENT, IT Infrastructure Library (ITIL) (2003) (Ex.
`1003, “Best Practice”);1
`Excerpts from United Kingdom Office of Government
`Commerce, INTRODUCTION TO ITIL, IT Infrastructure Library
`(ITIL) (2005) (Ex. 1004, “Introduction to ITIL”); and
`Microsoft Corporation, A GUIDE TO SOFTWARE ASSET
`MANAGEMENT (2004) (Ex. 1005, “Microsoft Guide”).
`
`
`E.
`
`The Asserted Ground
`ServiceNow challenges claims 1, 5, 10–13, and 16 of the ’093 patent
`as unpatentable under 35 U.S.C. § 101. Pet. 18.
`
`
`F.
`
`Claim Interpretation
`In a covered business method patent review, we construe claims by
`applying the broadest reasonable interpretation in light of the specification.
`37 C.F.R. § 42.300(b); see Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,766 (Aug. 14, 2012) (“Trial Practice Guide”). Under the
`broadest reasonable interpretation standard, and absent any special
`definitions, claim terms are given their ordinary and customary meaning, as
`would be understood by one of ordinary skill in the art in the context of the
`
`
`1 When citing to non-patent references, we refer to the page numbers
`ServiceNow added to the bottom center of each page. See 37 C.F.R.
`§ 42.63(d)(2).
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`entire disclosure. See In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed.
`Cir. 2007). Any special definitions for claim terms or phrases must be set
`forth “with reasonable clarity, deliberateness, and precision.” In re Paulsen,
`30 F.3d 1475, 1480 (Fed. Cir. 1994).
`ServiceNow identifies two terms for construction: “license
`certificate” and “model”/“modeling.” Pet. 30–34.
`
`
`“license certificate”
`1.
`ServiceNow and BMC both agree “license certificate” should be
`construed as “information relating to the right to deploy software.” Pet. 31–
`33; Prelim. Resp. 12. We find this construction is consistent with the use of
`“license certificate” in the ’093 patent, so we apply this construction for
`purposes of this Decision.
`
`“model”/“modeling”
`2.
`ServiceNow and BMC also agree on constructions of “model” as “an
`organized collection of information about an object” and of “modeling” as
`“creating a model.” Pet. 33–34; Prelim. Resp. 12. Because we find the
`proposed constructions of these terms are consistent with their use in the
`’093 patent, we apply these constructions for purposes of this Decision.
`
`II. ANALYSIS
`
`A.
`
`Standing
`Section 18 of the Leahy-Smith America Invents Act, Pub. L.
`No. 112-29, 125 Stat. 284 (2011) (“AIA”), provides for the creation of a
`transitional program for reviewing covered business method patents, and
`limits reviews to persons or their privies that have been sued or charged with
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`infringement of a “covered business method patent,” which does not include
`patents for “technological inventions.” AIA §§ 18(a)(1)(B), 18(d)(1); see 37
`C.F.R. § 42.302. ServiceNow asserts it has standing to file a Petition for
`covered business method patent review of the ’093 patent. Pet. 3–18. BMC
`challenges ServiceNow’s assertion of standing. Prelim. Resp. 1–11. We
`conclude ServiceNow has standing to file the Petition for covered business
`method patent review of the ’093 patent for the reasons that follow.
`
`Sued for Infringement of the ’093 Patent
`1.
`ServiceNow was sued for infringement of the ’093 patent on
`September 23, 2014, in BMC Software, Inc. v. ServiceNow, Inc., Case No.
`
`2:14‐CV‐00903 JRG (E.D. Tex.). Pet. 3 (citing Ex. 1008). The district
`
`court case is pending. Id.
`
`Financial Product or Service Analysis
`2.
`We now consider whether ServiceNow has shown the ’093 patent
`satisfies the “financial product or service” prong for covered business
`method patent eligibility. A “covered business method patent” is a patent
`that “claims a method or corresponding 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.” AIA § 18(d)(1); see 37 C.F.R.
`§ 42.301(a). For purposes of determining whether a patent is eligible for a
`covered business method patent review, the focus is on the claims. See
`Transitional Program for Covered Business Method Patents—Definitions of
`Covered Business Method Patent and Technological Invention; Final Rule,
`77 Fed. Reg. 48,734, 48,736 (Aug. 14, 2012). A patent need have only one
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`claim directed to a covered business method to be eligible for review. Id. In
`promulgating rules for covered business method patent reviews, the Office
`considered the legislative intent and history behind the AIA’s definition of
`“covered business method patent.” Id. at 48,735–36. The “legislative
`history explains that the definition of covered business method patent was
`drafted to encompass patents ‘claiming activities that are financial in nature,
`incidental to a financial activity or complementary to a financial activity.’”
`Id. (citing 157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011) (statement of Sen.
`Schumer)) (emphasis added). The legislative history indicates that
`“financial product or service” should be interpreted broadly such that, “[a]t
`its most basic, a financial product is an agreement between two parties
`stipulating movements of money or other consideration now or in the
`future.” 157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011) (statement of Sen.
`Schumer).
`ServiceNow contends the challenged claims “are directed at a way to
`monitor compliance with software license contracts,” which is a “technique
`[that] is clearly incidental or complementary to a financial activity, e.g.,
`purchasing licenses for software products.” Pet. 5, 9. Citing passages from
`the Specification of the ’093 patent, ServiceNow contends the “license
`certificate” recited in claim 1 reflects “the number of licenses purchased for
`a particular software product.” Id. at 7 (citing Ex. 1001, 7:35, 57, 8:24,
`9:30–36).
`BMC contends the ’093 patent’s “claims are not drawn to a ‘financial
`product or service’ and are thus ineligible for CBM review.” Prelim. Resp.
`2, 7. Specifically, BMC contends the Petition should be denied because
`“ServiceNow does not show that the claims have ‘particular relation limited
`to the financial services sector.’” Id. at 11 (quoting 157 Cong. Rec. S5441
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`(daily ed. Sept. 8, 2011) (statement of Sen. Leahy)) (emphasis omitted).2
`Yet a direct link to the financial services industry is not required for standing
`under AIA § 18. See SightSound Techs., LLC v. Apple Inc., 809 F.3d 1307,
`1315–16 (Fed. Cir. 2015) (rejecting appellant’s argument that “to ‘relate to a
`financial product or service the invention as a whole must be directed to the
`management of money, banking, or investment or credit’”); Versata Dev.
`Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1325 (Fed. Cir. 2015) (“as a
`matter of statutory construction, the definition of ‘covered business method
`patent’ is not limited to products and services of only the financial industry,
`or to patents owned by or directly affecting the activities of financial
`institutions such as banks and brokerage houses”). The suggestion to adopt
`a definition limiting financial services or products to the financial services
`industry was considered but not adopted during rulemaking. 77 Fed. Reg. at
`48736.
`Considering Congressional intent for a broad interpretation of
`“financial product or service,” and most importantly, the language of claim
`1, we are satisfied on this record that ServiceNow establishes a claimed link
`to a financial product or activity, namely, “software license contracts.” See
`Pet. 7–10. Claim 1 recites “modeling deployment of a software product and
`a software license contract for the software product,” “evaluating the
`deployment of the software product for compliance with the software license
`contract,” and generating an exception indication if there is “non-
`compliance with the software license contract,” among other things. The
`
`
`2 Although BMC cites PNC Financial Services Group, Inc. v. Intellectual
`Ventures I LLC, Case CBM2014-00032, slip op. at 7 (PTAB May 22, 2014)
`(Paper 13), for the quoted language, see Prelim. Resp. 11, this language
`ultimately arises from Senator Leahy’s statement.
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`focus of claim 1 is thus on managing and processing data related to software
`license contracts; such license contracts qualify as a “financial product” or
`“financial activity” because they represent “an agreement between two
`parties stipulating movements of money or other consideration now or in the
`future.” See 157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011) (statement of
`Sen. Schumer).
`The Specification of the ’093 patent also confirms the claimed
`method’s connection to financial activities. The Specification describes that
`software licenses are purchased on various bases. See Pet. 7 (citing Ex.
`1001, 7:35, 57, 8:24 for “‘per instance,’ ‘per copy per device,’ and ‘per
`copy’ licenses”). Information related to the terms of the purchased licenses
`can be included in the recited “license certificate” of claim 1. See id. (citing
`Ex. 1001, 9:30–36). The Specification also describes how these license
`terms are evaluated “to determine whether each of the software CIs complies
`with the terms of the software contract.” Id. at 28–29 (quoting Ex. 1001,
`10:49–53); see also Ex. 1001, Abstract (stating that the ’093 patent is
`directed to “[a] software license engine [that] allows an enterprise to model
`software license contracts and evaluate deployment of software for
`compliance with the software license contracts”). On the current record, we
`find claim 1 recites a method for performing data processing or other
`operations used in the practice, administration, or management of a financial
`product or service, namely, the provision and administration of, and
`monitoring for compliance with, software license contracts.
`
`Technological Invention Analysis
`3.
`We now consider the “technological invention” exclusion in
`§ 18(d)(1) of the AIA, i.e., “whether the claimed subject matter as a whole
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`recites a technological feature that is novel and unobvious over the prior art;
`and solves a technical problem using a technical solution.” 37 C.F.R.
`§ 42.301(b). The following claim drafting techniques, for example, typically
`do not render a patent a “technological invention”:
`(a) Mere recitation of known technologies, such as
`computer hardware, communication or computer networks,
`software, memory, computer-readable
`storage medium,
`scanners, display devices or databases, or specialized machines,
`such as an ATM or point of sale device.
`(b) Reciting the use of known prior art technology to
`accomplish a process or method, even if that process or method
`is novel and non-obvious.
`(c) Combining prior art structures to achieve the normal,
`expected, or predictable result of that combination.
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,763–64 (Aug.
`14, 2012).
`
`ServiceNow contends “[t]he only limitations of [claim 1] that are
`remotely technological recite known existing technologies such as
`databases,” and characterizes the recited “storage of information in
`‘configuration items’ (CIs) of a ‘configuration management database’
`(CMDB)” as admitted prior art. Pet. 12–13 (citing Ex. 1001, 1:18–44).
`ServiceNow also cites Introduction to ITIL for the proposition that “a
`CMDB could consist of paper forms or a set of spreadsheets.” Id. at 14
`(quoting Ex. 1004, 8). Regarding the generation and storage of a “license
`certificate” in claim 1, ServiceNow asserts the Specification discloses
`known implementations for license datastore 270, such as “a collection of
`flat files” or “structured query language database,” id. at 15 (citing Ex. 1001,
`4:17–20); therefore, ServiceNow contends “[t]his step does not require any
`particular programming or technical implementation.” Id. (citing Ex. 1002
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`¶ 89). Additionally, ServiceNow contends the “evaluating” step, which has
`subsidiary “connecting and comparing” and “generating” steps, “can be
`carried out using generic server hardware” such as that described in column
`4 of the Specification with reference to Figure 3. Id. at 16 (citing Ex. 1001,
`Fig. 3, 4:21–59, Ex. 1002 ¶¶ 83, 97).
`BMC contends:
`[There are] at least two technological features in each petitioned
`claim that ServiceNow does not meaningfully address or identify
`as existing in the prior art—(i) “generating a license certificate
`corresponding to the software license contract and storing the
`license certificate;” and (ii) “comparing the first configuration
`item with the license certificate and connecting the license
`certificate with the second configuration item responsive to
`comparing the first configuration item with the license
`certificate.”
`Prelim. Resp. 4 (citing Ex. 1001, claim 1), 14–16. BMC also contends
`“ServiceNow does not meaningfully address the license certificate limitation
`or show that it existed in the prior art.” Id. at 15. Regarding the
`“evaluating” step, BMC contends “‘connecting’ a license certificate with a
`second configuration item and ‘comparing’ a license certificate with a first
`configuration item require particularized data structures and processes that
`are not known in the prior art or a part of generic server hardware.” Id. at
`15–16.
`We are not persuaded by BMC’s arguments, and we determine
`ServiceNow has sufficiently established that claim 1 as a whole does not
`recite a technological feature that is novel and unobvious over the prior art.
`See Pet. 11–18. Although BMC argues ServiceNow has not established
`“generating a license certificate” and the “evaluating” steps are in the prior
`art, ServiceNow has at least established that these method steps may be
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`accomplished using known prior art technology. See Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756, 48,763–64 (Aug. 14, 2012) (examples
`a and b).
`Specifically, claim 1 recites a license certificate comprising
`information stored in a generically-recited database. We agree with
`ServiceNow that “generating” such information and storing it in a database
`was well-known and “provides no technological invention.” See Pet. 15
`(citing Ex. 1002 ¶¶ 89–90). Regarding the “comparing” step of claim 1, the
`step similarly recites known prior art technology, namely license certificates
`and configuration items. ServiceNow further cites Best Practice as teaching
`“[p]erform[ing] regular reconciliations of (a) what [software] is actually
`installed against (b) what is recorded against (c) licences owned (for licensed
`software), and resolv[ing] any identified exceptions promptly.” Ex. 1003,
`29 (quoted at Pet. 22, 49–50). Dr. Lavian testifies this comparison is
`commonly performed by “human beings using pen and paper.” Ex. 1002
`¶¶ 32–33, 67–68 (emphasis omitted) (cited at Pet. 39). Thus, we agree with
`ServiceNow that comparing a first model of information about software
`deployment with a license certificate is not a technological invention. See
`Pet. 15–16, 49–50. We also agree that connecting the license certificate to a
`second model represents standard, known data manipulation as it is carried
`out in the general-purpose computer hardware described in the ’093 patent.
`See id. at 15–16 (citing Ex. 1001, Fig. 3, 4:21–59, Ex. 1002 ¶¶ 83, 97), 50.
`Therefore, we agree with ServiceNow that “nothing in the limitations of
`claim 1 provides any technological invention that could preclude CBM
`review of the ’093 patent.” Id. at 16.
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`Conclusion on Standing
`4.
`For the reasons above, we determine that at least claim 1 of the ’093
`patent recites a covered business method under § 18(d)(1) of the AIA. We
`therefore find the ’093 patent is eligible for covered business method patent
`review.
`
`Ground Based on 35 U.S.C. § 101
`ServiceNow contends claims 1, 5, 10–13, and 16 are unpatentable
`under 35 U.S.C. § 101 because they are directed to ineligible subject matter.
`Pet. 35–53. BMC disputes ServiceNow’s contentions. Prelim. Resp. 18–29.
`Our analysis begins with the statute. Section 101 provides that
`“[w]hoever invents or discovers any new and useful process, machine,
`manufacture, or composition of matter, or any new and useful improvement
`thereof, may obtain a patent therefor, subject to the conditions and
`requirements of this title.” “‘In choosing such expansive terms . . . modified
`by the comprehensive ‘any,’ Congress plainly contemplated that the patent
`laws would be given wide scope.’” Bilski v. Kappos, 561 U.S. 593, 601
`(2010) (quoting Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980)). There
`are, however, three limited, judicially created exceptions to the broad
`categories of patent-eligible subject matter in § 101: laws of nature, natural
`phenomena, and abstract ideas. Mayo Collaborative Servs. v. Prometheus
`Labs., Inc., 132 S. Ct. 1289, 1293 (2012). Although an abstract idea by
`itself is not patentable, a practical application of an abstract idea may be
`deserving of patent protection. Id. at 1293–94; Bilski, 561 U.S. at 609–11;
`Diamond v. Diehr, 450 U.S. 175, 187 (1981). To be patent-eligible, a claim
`cannot simply state the abstract idea and add the words “apply it.” See
`Mayo, 132 S. Ct. at 1294. The claim must incorporate enough meaningful
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`limitations to ensure that it claims more than just an abstract idea and is not
`merely a “drafting effort designed to monopolize the [abstract idea] itself.”
`See id. at 1297.
`In Alice Corp. Pty., Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), the
`United States Supreme Court clarified the process for analyzing claims to
`determine whether they are directed to patent-ineligible subject matter. The
`Court applied the framework set forth previously in Mayo “for
`distinguishing patents that claim laws of nature, natural phenomena, and
`abstract ideas from those that claim patent-eligible applications of those
`concepts.” Id. at 2355. The first step in the analysis is to “determine
`whether the claims at issue are directed to one of those patent-ineligible
`concepts.” Id. If the claims are directed to a patent-ineligible concept, the
`second step in the analysis is to consider the elements of the claims
`“individually and ‘as an ordered combination’” to determine whether there
`are additional elements that “‘transform the nature of the claim’ into a
`patent-eligible application.” Id. (citation omitted). In other words, the
`second step is to “search for an ‘inventive concept’—i.e., an element or
`combination of elements that is ‘sufficient to ensure that the patent in
`practice amounts to significantly more than a patent upon the [ineligible
`concept] itself.’” Id. (citation omitted). Limiting the claims to a particular
`technological environment or field of use, or adding insignificant pre- or
`post-solution activity, does not constitute meaningful limitations. See Bilski,
`561 U.S. at 609–11; Diehr, 450 U.S. at 191–92; Parker v. Flook, 437 U.S.
`584, 595 n.18 (1978). And, even when a claim requires the use of a
`computer, the claim may nonetheless be directed to patent-ineligible subject
`matter if it can be performed using a pen and paper or in the human mind.
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`See Versata, 793 F.3d at 1335; CyberSource Corp. v. Retail Decisions, Inc.,
`654 F.3d 1366, 1372–73 (Fed. Cir. 2011).
`
`Abstract Idea Analysis
`1.
`ServiceNow contends “the challenged claims are directed generally to
`the abstract idea of ensuring that an enterprise is in compliance with its
`software license contracts.” Pet. 35. With reference to claim 1, ServiceNow
`breaks the purported abstract idea into three parts:
`(1) gathering information about how a software product has been
`installed in an enterprise, (2) locating the license contract for that
`product; and (3) comparing the product installations against the
`license contract to determine compliance or non-compliance
`with the license.
`Id. at 35–36.
`BMC contends “the petitioned claims are necessarily rooted in
`computer technology in order to overcome a problem specifically arising in
`the realm of computer networks.” Prelim. Resp. 20 (citing DDR Holdings
`LLC v. Hotels.com, Inc., 773 F.3d 1245, 1257 (Fed. Cir. 2014)). In
`particular, BMC contends
`all petitioned claims recite a “configuration management
`database,” “configuration items,” “license databases,” and
`“license certificates,” all of which are physical components
`having attendant hardware and software and not abstract ideas,
`and where physical transformations occur in at least “storing”
`and “connecting” components and “generating an exception
`indication” responsive to comparing components.
`Id. at 21. BMC also takes issue with ServiceNow’s contention that a CMDB
`could consist of paper forms or a set of spreadsheets, see Pet 46, based on
`the fact claim 1 recites a “computer-implemented method” and claim 16
`requires “a server computer,” among other things. Prelim. Resp. 22–23
`
`16
`
`
`
`CBM2015-00170
`Patent 8,646,093 B2
`
`
`(citing Ex. 1001, Fig. 3, 3:34–37, 4:21–22, 13:25–30). BMC argues that
`“claims ‘necessarily rooted in computer technology in order to overcome a
`problem specifically arising in the realm of computer networks’ satisf[y] the
`requirements of Section 101.” Id. at 19–21 (quoting DDR, 773 F.3d at
`1257).
`
`We are persuaded, on the present record, that ServiceNow’s
`arguments (as supported by various references and Dr. Lavian’s testimony)
`sufficiently establish the claims are directed to an abstract concept, namely,
`ensuring compliance with a software license contract by gathering
`information about how a software product has been installed and comparing
`the product installations against the license contract. ServiceNow contends
`that these steps are simply abstract concepts that can be performed by a
`human being using pen and paper. Pet. 36. “For example, a person could
`create an installation inventory for a software product by walking from
`computer-to-computer and jotting down the computers on which the
`software product is installed, and then, gather the applicable software license
`contract.” Id. As evidence that doing so can be done by hand, ServiceNow
`cites the Microsoft Guide, which describes a written table “that an
`administrator could manually create listing the installed software, the
`number of installations, the number [of] licenses, etc.” Id. at 36–37 (citing
`Ex. 1005, 9). The Microsoft Guide instructs how to “perform a manual
`[software] inventory simply by going to each PC” and determining “exactly
`what programs are running on that particular PC.” Ex. 1005, 8 (cited at Pet.
`23, 36). The Microsoft Guide also advises to “match[] software licenses
`with software installed” by “collect[ing] all of your company’s license
`documentation,” comparing the license information with the installation
`information, and preparing a “database or spreadsheet” to “see where your
`
`17
`
`
`
`CBM2015-00170
`Patent 8,646,093 B2
`
`
`company is over-licensed and/or under-licensed.” Id. at 9. The chart at page
`9 of the Microsoft Guide is reproduced below.
`
`
`
`This chart demonstrates how, for each software program, software
`installations are tallied in one column and matched against owned licenses in
`another. Id. The excess or deficiencies in licenses are then shown in yet
`another column. Id. In the event of a deficiency, the Microsoft Guide
`advises to “acquire additional licenses through an authorised Microsoft
`software reseller.” Id. (quoted at Pet. 40). ServiceNow additionally cites the
`Microsoft Guide and Dr. Lavian’s testimony to demonstrate that comparison
`of software installations against available licenses “is commonly performed
`by a human being using pen and paper.” Pet. 39 (citing Ex. 1002 ¶¶ 32–33,
`67–68, Ex. 1005, 9). ServiceNow’s arguments are persuasive based on the
`current record.
`
`Regarding claim 1’s limitation of storing software deployment model
`information in a CMDB as configuration items, ServiceNow cites
`Introduction to ITIL to show that such storage in a CMDB “is itself an
`abstraction that does not even necessarily require a technical
`implementation,” with supporting testimony from Dr. Lavian. Id. at 37
`(citing Ex. 1002 ¶ 63, Ex. 1004, 8). Specifically, Introduction to ITIL states
`that “[i]n its most basic form, a CMDB could consist of paper forms or a set
`of spreadsheets.” Ex. 1004, 8 (emphasis added). This same reasoning
`
`18
`
`
`
`CBM2015-00170
`Patent 8,646,093 B2
`
`
`applies equally to storage of “license certificate” information in a license
`database. See Ex. 1002 ¶ 64–65. Again, ServiceNow’s arguments regarding
`the abstract nature of the claim 1 method are persuasive based on the current
`record.
`We also are not persuaded, on this record, by BMC’s attempt to
`characterize the challenged claims as being “necessarily rooted in computer
`technology in order to overcome a problem specifically arising in the realm
`of computer networks.” Prelim. Resp. 20. ServiceNow has shown, with
`supporting testimony and documentation, that claim 1 is directed to the
`abstract idea of ensuring compliance with a software license contract by
`gathering information about how a software product has been installed and
`comparing the product installations against the license contract, albeit in a
`“computer-implemented method.” But reciting a computer implementation
`does not remove automatically claim 1 from the realm of abstract ideas:
`“[I]f a patent’s recitation of a computer amounts to a mere instruction to
`implement an abstract idea on a computer, that addition cannot impart patent
`eligibility.” Alice, 134 S. Ct. at 2358 (internal quotations and alterations
`omitted); see also Versata, 793 F.3d at 1335 (“Courts have examined claims
`that required the use of a computer and still found that the underlying,
`patent-ineligible invention could be performed via pen and paper or in a
`person’s mind.”). For these reasons, we find claim 1 to be directed to an
`abstract idea based on the present record. The same reasoning also applies
`to claim 16, which additionally recites “generic computer components” in a
`system for performing the abstract idea in claim 1 (e.g., “server computer,”
`“processor,” “configuration database,” “license database”). See Pet. 43–44;
`DDR, 773 F.3d at 1256 (“[A]fter Alice, there can remain no doubt: recitation
`
`19
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`
`
`CBM2015-00170
`Patent 8,646,093 B2
`
`
`of generic computer limitations does not make an otherwise ineligible claim
`patent-eligible.”).
`Further, we are persuaded, based on the current record, that the
`dependent claims of the ’093 patent likewise do not recite any limitations
`that turn the abstract idea of claim 1 into something concrete. Claim 5,
`which depends from claim 1, recites “the act of evaluating is performed on
`demand,” but specifying when the abstract idea of claim 1 must be
`implemen
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