Declaration of Tal Lavian, Ph.D., in Support of Petition
`for Covered Business Method (CBM) Review of
`U.S. Patent No. 8,646,093
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`ServiceNow, Inc.
`Petitioner
`
`v.
`
`BMC Software, Inc.
`Patent Owner
`
`U.S. Patent No. 8,646,093
`Filing Date: December 9, 2009
`Issue Date: February 4, 2014
`
`TITLE: METHOD AND SYSTEM FOR CONFIGURATION MANAGEMENT
`DATABASE SOFTWARE LICENSE COMPLIANCE
`
`DECLARATION OF TAL LAVIAN, PH.D.
`
`
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`
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`ServiceNow's Exhibit No. 1002
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`001
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`

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`Table of Contents
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`Page
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`
`I.
`II.
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`V.
`
`BRIEF SUMMARY OF MY OPINIONS ...................................................... 1
`INTRODUCTION AND QUALIFICATIONS .............................................. 3
`A. Qualifications and Experience ............................................................. 3
`B. Materials Considered ............................................................................ 7
`III. PERSON OF ORDINARY SKILL IN THE ART ......................................... 8
`IV. STATE OF THE ART OF THE RELEVANT TECHNOLOGY AT
`THE TIME OF THE ALLEGED INVENTION .......................................... 10
`A.
`Software and Software License Contracts ......................................... 10
`B. Managing Compliance with Software License Contracts .................. 11
`C. Using a Configuration Management Database (CMDB) to
`Manage Compliance with Software Licenses .................................... 14
`The ’093 Patent’s Technique for software license compliance .................... 17
`A.
`The Specification ................................................................................ 17
`B.
`The Challenged Claims of the ’093 Patent ........................................ 22
`C.
`Claim Construction ............................................................................ 24
`1.
`“license certificate” .................................................................. 24
`2.
`“model” and “modeling” .......................................................... 27
`VI. OPINIONS REGARDING PATENT-ELIGIBLE SUBJECT
`MATTER ...................................................................................................... 28
`A. Are Claims 1, 5, 10-13, and 16 Directed to an Abstract Idea? .......... 29
`1.
`Claim 1 ..................................................................................... 29
`2.
`Claim 5 ..................................................................................... 35
`3.
`Claim 10 ................................................................................... 36
`4.
`Claims 11-13 (“License Type” Claims) ................................... 37
`5.
`Claim 16 ................................................................................... 39
`B. Do Claims 1, 5, 10-13, and 16 Provide Meaningful Limitations? ..... 39
`1.
`Claim 1 ..................................................................................... 40
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`-i-
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`ServiceNow's Exhibit No. 1002
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`Table of Contents
`(continued)
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`Page
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`Dependent Claims 5, and 10-13 ............................................... 45
`2.
`Independent Claim 16 .............................................................. 46
`3.
`VII. Conclusion .................................................................................................... 48
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`-ii-
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`Declaration of Tal Lavian, Ph.D., in Support of Petition
`for Covered Business Method (CBM) Review of
`U.S. Patent No. 8,646,093
`
`I, Tal Lavian, Ph.D., declare as follows:
`
`1.
`
`I have been retained by counsel for ServiceNow, Inc. (Petitioner) in
`
`this case as an expert in the relevant art.
`
`2.
`
`I have been asked to provide my opinions relating to claims 1, 5, 10-
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`13, and 16 of U.S. Patent No. 8,646,093 to Myers et al. (“the ’093 patent”), which I
`
`understand is owned by BMC Software, Inc.
`
`3.
`
`I have previously submitted a declaration in connection with a Petition
`
`for Inter Partes Review of the ’093 patent, IPR2015-01555 (filed July 3, 2015), in
`
`which I provided opinions regarding application of certain prior art references to
`
`claims 1, 5, 10-13, and 16 of the ’093 patent. My opinions here regarding the level
`
`of ordinary skill in the art and the construction of certain terms from the ’093
`
`patent are the same as those in my earlier Declaration in IPR2015-01555.
`
`
`
`I.
`
`BRIEF SUMMARY OF MY OPINIONS
`4.
`
`Claims 1, 5, 10-13, and 16 generally describe a method and system for
`
`ensuring that an organization has deployed a software product in a manner that is
`
`consistent with its software license contract. In my opinion, these claims are not
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`patentable because they are directed to an abstract idea.
`
`5.
`
`In particular, the challenged claims are directed to the abstract idea of
`
`
`
`1
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`Declaration of Tal Lavian, Ph.D., in Support of Petition
`for Covered Business Method (CBM) Review of
`U.S. Patent No. 8,646,093
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`ensuring that an enterprise is in compliance with its software license contracts.
`
`This abstract idea is composed of the abstract ideas of: (1) gathering information
`
`about how a software product has been installed in an enterprise, (2) locating the
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`license contract for the product; and (3) comparing the product installations against
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`the license contract to determine compliance or non-compliance. As I will show in
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`Part IV.B and Part VI.A.1 below, this abstract process is performed manually by
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`human beings who create a list of where a software product is installed in an
`
`enterprise, and compare that list against the product’s license contract.
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`6.
`
`As explained in detail in Part VI.B, claims 1, 5, 10-13, and 16 also
`
`fail to recite any limitations or technical requirements that could meaningfully
`
`transform them into something more than the abstract idea. The claims instead
`
`recite technologies that were conventional and routine to persons of ordinary skill
`
`in the art, such as the use of a standard Configuration Management Database
`
`(CMDB) to store information about software products and software contracts. The
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`bases for my opinions are set forth below.
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`2
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`ServiceNow's Exhibit No. 1002
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`Declaration of Tal Lavian, Ph.D., in Support of Petition
`for Covered Business Method (CBM) Review of
`U.S. Patent No. 8,646,093
`
`II.
`
`INTRODUCTION AND QUALIFICATIONS
`A. Qualifications and Experience
`7.
`I possess the knowledge, skills, experience, training and the education
`
`to form an expert opinion and testimony in this case. A detailed record of my
`
`professional qualifications, including a list of patents and academic and
`
`professional publications, is set forth in my curriculum vitae attached to this
`
`declaration as Exhibit A.
`
`8.
`
`I have more than 25 years of experience in the networking,
`
`telecommunications, Internet, and software fields. I received a Ph.D. in Computer
`
`Science from the University of California at Berkeley in 2006 and obtained a
`
`Master’s of Science (“M.Sc.”) degree in Electrical Engineering from Tel Aviv
`
`University, Israel, in 1996. In 1987, I obtained a Bachelor of Science (“B.Sc.”) in
`
`Mathematics and Computer Science, also from Tel Aviv University.
`
`9.
`
`I am currently employed by the University of California at Berkeley
`
`and was appointed as a lecturer and Industry Fellow in the Center of
`
`Entrepreneurship and Technology (“CET”) as part of UC Berkeley College of
`
`Engineering. I have been with the University of California at Berkeley since 2000
`
`where I served as Berkeley Industry Fellow, Lecturer, Visiting Scientist, Ph.D.
`
`Candidate, and Nortel’s Scientist Liaison, where some positions and projects were
`
`
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`3
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`Declaration of Tal Lavian, Ph.D., in Support of Petition
`for Covered Business Method (CBM) Review of
`U.S. Patent No. 8,646,093
`
`done concurrently, others sequentially.
`
`10.
`
`I have more than 25 years of experience as a scientist, educator and
`
`technologist, and much of my experience relates to computer networking
`
`technologies. For eleven years from 1996 to 2007, I worked for Bay Networks and
`
`Nortel Networks. Bay Networks was in the business of making and selling
`
`computer network hardware and software. Nortel Networks acquired Bay
`
`Networks in 1998, and I continued to work at Nortel after the acquisition.
`
`Throughout my tenure at Bay and Nortel, I held positions including Principal
`
`Scientist, Principal Architect, Principal Engineer, Senior Software Engineer, and
`
`led the development and research involving a number of networking technologies.
`
`I led the efforts of Java technologies at Bay network and Nortel Networks. In
`
`addition, during 1999-2001, I served as the President of the Silicon Valley Java
`
`User Group with over 800 active members from many companies in the Silicon
`
`Valley.
`
`11. Prior to that, from 1994 to 1995, I worked as a software engineer and
`
`team leader for Aptel Communications, designing and developing mobile wireless
`
`devices and network software products. From 1990 to 1993, I worked as a software
`
`engineer and team leader at Scitex Ltd., where I developed system and network
`
`communications tools (mostly in C and C++).
`
`
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`4
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`

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`Declaration of Tal Lavian, Ph.D., in Support of Petition
`for Covered Business Method (CBM) Review of
`U.S. Patent No. 8,646,093
`
`
`12.
`
`I have extensive experience in the area of network communications
`
`and Internet technologies including design and implementation of computer-based
`
`systems for managing communications networks, including the ability to monitor
`
`and provision networks. While with Nortel Networks and Bay Networks
`
`(mentioned above), my work involved the research and development of these
`
`technologies. For example, I wrote software for Bay Networks and Nortel
`
`Networks Web based network management for Bay Networks switches. I
`
`developed Simple Network Management Protocol (SNMP) software for Bay
`
`Network switches and software interfaces for Bay Networks’ Optivity Network
`
`Management System. I wrote software for Java based device management
`
`including software interface to the device management and network management
`
`for the Accelar routing switch family network management system.
`
`13.
`
`I have extensive experience in network communications, including
`
`control and management of routing and switching architectures and protocols in
`
`layers 1-7 of the OSI model. Much of my work for Nortel Networks (mentioned
`
`above) involved the research and development of network communications
`
`technologies. For example, I wrote software for Bay Networks and Nortel
`
`Networks switches and routers, developed network technologies for the Accelar
`
`8600 family of switches and routers, the OPTera 3500 SONET switches, the
`
`
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`5
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`Declaration of Tal Lavian, Ph.D., in Support of Petition
`for Covered Business Method (CBM) Review of
`U.S. Patent No. 8,646,093
`
`OPTera 5000 DWDM family, and the Alteon L4-7 switching product family. In
`
`my
`
`lab,
`
`I
`
`installed, configured, managed, and
`
`tested many network
`
`communications equipment of competitors such as Cisco Systems, Juniper
`
`Networks, Extreme Networks, Lucent and Alcatel.
`
`14.
`
`I am named as a co-inventor on more than 80 issued patents and I co-
`
`authored more than 25 scientific publications, journal articles, and peer-reviewed
`
`papers. Furthermore, I am a Senior Member of the Institute of Electrical and
`
`Electronics Engineers (“IEEE”).
`
`15.
`
`I currently serve as a Principal Scientist at my company Telecomm
`
`Net Consulting Inc., where I develop network communication technologies and
`
`provide research and consulting in advanced technologies, mainly in computer
`
`networking and Internet technologies. In addition, I serve as a Co- Founder and
`
`Chief Technology Officer (CTO) of VisuMenu, Inc., where I design and develop
`
`architecture of visual IVR technologies for smartphones and wireless mobile
`
`devices in the area of network communications. The system is based on cloud
`
`networking and cloud computing utilizing Amazon Web Services.
`
`16. Additional details of my background are set forth in my curriculum
`
`vitae, attached as Exhibit A to this Declaration, which provides a more complete
`
`description of my educational background and work experience. I am being
`
`
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`Declaration of Tal Lavian, Ph.D., in Support of Petition
`for Covered Business Method (CBM) Review of
`U.S. Patent No. 8,646,093
`
`compensated for the time I have spent on this matter. My compensation does not
`
`depend in any way upon the outcome of this proceeding. I hold no interest in the
`
`Petitioner (ServiceNow, Inc.) or the patent owner (BMC Software, Inc.).
`
`B. Materials Considered
`17. The analysis provided in this Declaration is based on my education
`
`and experience in the field of computer systems and service management tools, as
`
`well as the documents I have considered including U.S. Patent No. 8,646,093
`
`(“’093 patent”) [Ex. 1001]. The ’093 patent states on its face that it issued from an
`
`application filed on December 9, 2009. The ’093 patent also claims priority to and
`
`incorporates by reference U.S. Provisional Application Ser. No. 61/165,505 filed
`
`on March 31, 2009, which I have reviewed. (’093, Ex. 1001, 1:9-12; see also Ex.
`
`1007 (provisional application).) For purposes of my analysis, I have assumed
`
`March 2009 as the priority date for the ’093 patent.
`
`18. My Declaration cites the following documents for purposes of
`
`describing the relevant state of the art as of March 2009.
`
`19. The prior art documents I rely upon in this Declaration are:
`
`Exhibit
`
`1003
`
`
`
`Description of Document
`
`Best Practice for Software Asset Management, published by the IT
`Infrastructure Library, 2003
`
`7
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`

`
`Declaration of Tal Lavian, Ph.D., in Support of Petition
`for Covered Business Method (CBM) Review of
`U.S. Patent No. 8,646,093
`
`
`Exhibit
`
`1004
`
`1005
`
`Description of Document
`
`Introduction to ITIL, published by the IT Infrastructure Library,
`2005
`
`A Guide to Software Asset Management, published by Microsoft
`Corporation, 2004
`
`1006
`
`Excerpts from Microsoft Computer Dictionary (5th ed. 2002)
`
`
`
`III. PERSON OF ORDINARY SKILL IN THE ART
`20.
`I understand that an assessment of claims of the ’093 patent should be
`
`undertaken from the perspective of a person of ordinary skill in the art as of the
`
`earliest claimed priority date, which I understand is March 31, 2009.
`
`21.
`
`In my opinion, a person of ordinary skill in the art as of March 2009
`
`would have possessed at least a bachelor’s degree in computer science (or
`
`equivalent degree or experience) with at least four years of practical experience or
`
`coursework in the design or development of systems for management of network-
`
`based systems and network management databases, such as configuration
`
`management databases (CMDBs). Such a person would also have general
`
`familiarity with service management tools, software license contracts, and
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`techniques for ensuring compliance with those licenses. As I will explain below,
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`all of these areas were well-developed and mature well before March 2009.
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`Declaration of Tal Lavian, Ph.D., in Support of Petition
`for Covered Business Method (CBM) Review of
`U.S. Patent No. 8,646,093
`
`
`22. My opinions regarding the level of ordinary skill in the art are based
`
`on, among other things, my over 25 years of experience in the field of network
`
`communications, computer science, and engineering, my understanding of the
`
`basic qualifications that would be relevant to an engineer or scientist tasked with
`
`investigating methods and systems in the relevant area, and my familiarity with the
`
`backgrounds of colleagues and co-workers, both past and present.
`
`23. Although my qualifications and experience exceed those of the
`
`hypothetical person having ordinary skill in the art defined above, my analysis and
`
`opinions regarding the ’093 patent have been based on the perspective of a person
`
`of ordinary skill in the art as of March 2009.
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`Declaration of Tal Lavian, Ph.D., in Support of Petition
`for Covered Business Method (CBM) Review of
`U.S. Patent No. 8,646,093
`
`IV. STATE OF THE ART OF THE RELEVANT TECHNOLOGY AT
`THE TIME OF THE ALLEGED INVENTION
`24. The ’093 patent generally discloses a method and system for
`
`monitoring compliance with software license contracts. In this section, I provide a
`
`brief background of the state of software license contract compliance technology
`
`prior to March 2009 pertinent to the ’093 patent.
`
`A.
`Software and Software License Contracts
`25. By March 2009, computer software had become a common fixture of
`
`everyday life, and integral to the functioning of most business enterprises.
`
`Computer software has long been made available to customers pursuant to a
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`contract known generally as a “software license,” which governs the customer’s
`
`use of the software. A software license may specify, among other things, the
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`number of users within an enterprise who are permitted to use the licensed
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`software (including the number of users who may use the software concurrently),
`
`or how long the licensed software may be used before the license must be renewed.
`
`Software license contracts can also be one component of a larger service contract
`
`with the provider, and thus, can include a number of complex provisions.
`
`26.
`
`It is important for a number of reasons for an enterprise to comply
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`with the terms of software license contracts. Violating a software license contract
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`could not only expose the enterprise to liability for breach of contract, but in some
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`Declaration of Tal Lavian, Ph.D., in Support of Petition
`for Covered Business Method (CBM) Review of
`U.S. Patent No. 8,646,093
`
`cases, civil or criminal liability for copyright infringement. Although violations of
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`software license contracts are often unintentional, those violations may still result
`
`in significant consequences. Larger enterprises may have hundreds of software
`
`products governed by different software license contracts, each presenting a large
`
`number of potentially complex licensing terms.
`
`B. Managing Compliance with Software License Contracts
`27. The software industry responded to the concerns expressed above by
`
`developing processes to monitor and manage compliance with software license
`
`contracts. Many of these processes were described in Best Practice for Software
`
`Asset Management (2003), a well-known publication in the field published by the
`
`IT Infrastructure Library (“ITIL”). (Ex. 1003 (“Best Practice”).) ITIL is a division
`
`of the Office of Government Commerce of the United Kingdom government. (Id.
`
`at 1 (under “The IT Infrastructure Library”).) The publications disseminated by
`
`ITIL, such as Best Practice, provide industry standards and practices for managing
`
`IT assets. As its name implies, the Best Practice publication defines a set of
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`preferred processes for managing software assets. (Best Practice, Ex. 1003, at p. xi
`
`(stating that ITIL “is the most widely accepted approach to IT Service
`
`Management in the world.”).)
`
`28.
`
`ITIL’s standards are often considered authoritative by many persons
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`
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`Declaration of Tal Lavian, Ph.D., in Support of Petition
`for Covered Business Method (CBM) Review of
`U.S. Patent No. 8,646,093
`
`of ordinary skill in the art. The specification of the ’093 patent, in fact, specifically
`
`cites and discusses Best Practice. (’093, 1:51-2:8.) In fact, the entire Background
`
`section of the ’093 patent is devoted to discussing and discussing ITIL-defined
`
`processes for enterprise and software asset management. (’093, 1:18-2:8.)
`
`29. The overall process for ensuring license compliance is conceptually
`
`simple and little more than common sense: an organization must (1) obtain an
`
`inventory of the software products actually installed or deployed in the
`
`organization, (2) gather the licensing contracts governing those software products;
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`and then (3) compare the installation of the software products against the
`
`governing license contracts to identify instances, if any, of non-compliance with
`
`the software license contracts.
`
`30. Best Practice generally describes steps (1) and (2) of this process as
`
`“verification and audit,” and provides detailed guidance on how to carry out those
`
`steps. (Ex. 1003, at p. 51, § 5.4.1.) “The objective of the verification and audit
`
`process is to ensure that the SAM [Software Asset Management] records
`
`accurately reflect what is actually held, and that appropriate corrective actions are
`
`undertaken when discrepancies are identified.” (Id.) This involves obtaining an
`
`inventory of the software actually in use, and identifying the software license
`
`contracts and verifying that they are operative and authentic. (Id.) “Verifying the
`
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`Declaration of Tal Lavian, Ph.D., in Support of Petition
`for Covered Business Method (CBM) Review of
`U.S. Patent No. 8,646,093
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`integrity of records of licenses held is a manually intensive activity.” (Id.)
`
`31. Best Practice describes step (3) of the process above as “license
`
`compliance.”
`
` (Id., p. 52, § 5.4.2.)
`
` “Licensing compliance processes are
`
`responsible for ensuring that the use of all software within the organisation remains
`
`within all legal and contractual terms and conditions.” (Id.) This includes
`
`identification of any “exception conditions and non-conformances relating to the
`
`use of unlicensed software,” and the “correction and prevention of licensing
`
`shortfalls and the identification and highlighting of software overuse and
`
`redundancy situations.” (Id.; see also id., p. 14 (“Perform regular reconciliations
`
`of (a) what is actually installed against (b) what is recorded against (c) licences
`
`owned (for licensed software), and resolve any identified exceptions promptly.”).)
`
`32. This process can be done – and in fact is commonly done – by human
`
`beings using pen and paper. For example, Microsoft Corporation published a set
`
`of guidelines for verifying software contract compliance in 2004, A Guide to
`
`Software Asset Management. (Ex. 1005, at 017 (back page showing 2004
`
`document date).) The first step of ensuring license compliance, according to
`
`Microsoft, is to perform an inventory of installed software. “You can perform a
`
`manual inventory simply by going to each PC and viewing the Add or Remove
`
`Programs screen. This will tell you exactly what programs are running on that
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`Declaration of Tal Lavian, Ph.D., in Support of Petition
`for Covered Business Method (CBM) Review of
`U.S. Patent No. 8,646,093
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`particular PC.” (Ex. 1005, at p. 12.) The user can alternatively use a software
`
`inventory tool to automate the process of taking a software inventory. (Id.)
`
`33. For the second step, Microsoft advises the user to “[l]ocate the
`
`licensing documentation for each software program your organisation currently
`
`holds,” and “[o]nce you have collected all of your company’s
`
`license
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`documentation, record the information in a report.” (Id. at p. 14.) “Then compare
`
`this report with the software inventory report you prepared in SAM Step 1.” (Id.)
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`Microsoft even suggests that the user record his or her findings by creating a table
`
`listing the software products, total number of installations, and total licenses
`
`owned, to calculate the excess or deficiency. (Id. at p. 14.) “If your company is
`
`over-licensed, software assets are going to waste.” (Id. at p. 15.) But “[i]f your
`
`company is under-licensed, now is the time to acquire additional licenses through
`
`an authorised Microsoft software reseller.” (Id.)
`
`C. Using a Configuration Management Database (CMDB) to
`Manage Compliance with Software Licenses
`34. As the number and variety of software licenses increased, industry
`
`recognized a need for a more automated and computer-assisted approach to record
`
`information about software products and their corresponding and software license
`
`contracts. One solution was to use a database known as a “Configuration
`
`Management Database” or “CMDB,” to keep track of those licenses. Generally
`
`
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`Declaration of Tal Lavian, Ph.D., in Support of Petition
`for Covered Business Method (CBM) Review of
`U.S. Patent No. 8,646,093
`
`speaking, “CMDB” is an industry-standard term referring to a database that stores
`
`information about the Information Technology (“IT”) assets used by an enterprise,
`
`such as servers, workstations, software programs, documentation, and other
`
`computing resources. The CMDB contains a series of records, known as
`
`“configuration items” or “CIs,” for storing information about the IT assets.
`
`35. A CMDB is, at a conceptual level, little more than a database to keep
`
`track of components in an enterprise. As explained in Introduction to ITIL,
`
`published in 2005, that database need not even be computer-based:
`
`Configuration Management Database (CMDB)
`All CI’s are included in the Configuration Management Database
`(CMDB). The CMDB keeps track of all IT components, their
`versions and status and the relationships between them. In its most
`basic form, a CMDB could consist of paper forms or a set of
`spreadsheets.
`
`(Introduction to ITIL, Ex. 1004, § 6.1.1, at p. 58 (underlining added).)
`
`36. The Background of the ’093 patent acknowledges that CMDBs and
`
`CIs are not an invention of the patent and were, at the time of filing, “emerging as
`
`a prominent technology for Enterprise Management software.” (’093, 1:24-26,
`
`1:18-42.) “The CMDB serves as a point of integration between various IT
`
`management processes,” including software asset management, which is a “core
`
`component of an overall asset management policy.” (’093, 1:39-40; 1:49-51.) The
`15
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`ServiceNow's Exhibit No. 1002
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`Declaration of Tal Lavian, Ph.D., in Support of Petition
`for Covered Business Method (CBM) Review of
`U.S. Patent No. 8,646,093
`
`patent acknowledges that “[o]ne kind of CI that may be managed in a CMDB is a
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`software asset.” (’093, 1:43-44.)
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`37. Many of the techniques for managing compliance with software
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`contracts using CMDBs were described in Best Practice. As noted, the
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`Background section of the ’093 patent specifically cites Best Practice and discusses
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`ITIL CMDBs and ITIL-defined processes for management of software assets.
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`(’093, 1:18-2:8.) For example, Best Practice provides an exemplary CMDB/CI
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`schema for storing information about the organization’s software assets and their
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`corresponding software license contracts. (Ex. 1003, at pp. 119-23, Appendix D.)
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`ServiceNow's Exhibit No. 1002
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`Declaration of Tal Lavian, Ph.D., in Support of Petition
`for Covered Business Method (CBM) Review of
`U.S. Patent No. 8,646,093
`
`V. THE ’093 PATENT’S TECHNIQUE FOR SOFTWARE LICENSE
`COMPLIANCE
`A. The Specification
`38. The ’093 patent generally describes a method and a system to
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`“monitor and verify software license compliance in an enterprise.” (’093, Ex.
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`1001, 2:66-67.) The patent generally describes a technique for managing software
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`license compliance by (a) modeling the deployment of software products in an
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`enterprise, and (b) comparing that deployment against the software license
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`contracts for those products. (’093, Ex. 1001, Abstract.)
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`39. Figure 2 provides a general overview of one embodiment of the
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`computer-implemented method and system described in the ’093 patent:
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`Declaration of Tal Lavian, Ph.D., in Support of Petition
`for Covered Business Method (CBM) Review of
`U.S. Patent No. 8,646,093
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`
`
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`(’093, Fig. 2.)
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`40. Figure 2 includes management system 200 that has a Configuration
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`Management Database (“CMDB”) 260. As explained in the Background and
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`noted above, the CMDBs were well-known and “a prominent technology for
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`Enterprise Management Software.” (’093, 1:18-26.) A CMDB “contains data
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`about managed resources known as Configuration Items (CIs).” (’093, 1:29-30.).
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`41. The patent uses these configuration items (CIs) to store information
`18
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`ServiceNow's Exhibit No. 1002
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`Declaration of Tal Lavian, Ph.D., in Support of Petition
`for Covered Business Method (CBM) Review of
`U.S. Patent No. 8,646,093
`
`about software products and their associated software contracts. “Information
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`about the software contracts is stored as CIs in the CMDB datastore 260 [of
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`Figure 2] using one or more of the clients 210/220.” (’093, 5:1-3.)
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`42. The system in Figure 2 also includes a license datastore 270.
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`Although shown as a separate database in Figure 2 above, license datastore 270
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`“may be integrated with the CMDB datastore 260.” (’093, 4:11-13.) “The license
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`datastore 270 provides storage for [sic] to model software contracts, including
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`rules against which the CIs are evaluated for software license compliance and other
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`information necessary for processing those rules.” (’093, 4:13-17.) The ’093
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`patent identifies at least two types of information used to evaluate compliance with
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`a software license contract: (1) information about the software license contract,
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`and (2) a license certificate corresponding to the license.
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`43. First, configuration information about a software license contract
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`may be stored in the CMDB, including the term of the license, its current status
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`(draft, executed, expired, etc.), the company, and other information associated with
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`the contract. (’093, 5:10-56 (Table 1).) The license database may also store a
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`number of pre-defined “license types” that can be essentially used as templates in
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`identifying the characteristics of a software license contract. (’093, 6:1, 6:33-35.)
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`Exemplary “license types” include “enterprise,” “site,” and “per instance” software
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`19
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`ServiceNow's Exhibit No. 1002
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`
`Declaration of Tal Lavian, Ph.D., in Support of Petition
`for Covered Business Method (CBM) Review of
`U.S. Patent No. 8,646,093
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`licenses (among others), each having certain pre-defined characteristics. (’093,
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`6:40-55 (Table 2).) The user can also create new license types, if needed. (’093,
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`Fig 4 (step 420).) As shown in Part V.B below, this information relating to the
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`software license contract is part of the “first model” recited in the claims.
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`44. Second, the ’093 patent describes a “license certificate” that is linked
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`to its corresponding software license contract. (’093, 3:1-2.) “A license certificate
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`indicates the right to deploy software in the environment managed by the CMDB
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`server 110.” (’093, 8:59-63.) A “license certificate” may comprise a variety of
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`information relating to the right to use the software, including the license category
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`(client, server, mainframe), effective date and expiration date, among other
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`information. (’093, 9:1-20 (Table 3).) The system may ask the user to enter
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`additional information such as “how many licenses were purchased and how many
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`copies per device are allowed under each license.” (’093, 9:35-36.) “Other
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`questions may be asked depending typically on the license type. The additional
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`information supplied in response to those questions may be included in the license
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`certificate as it is stored in the license datastore 270.” (’093, 9:36-46.) This
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`license certificate information is part of the “second model” in the claims.
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`45. Once these two categories of information – software license contract
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`and license certificate information – are compiled, the system uses them to
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`Declaration of Tal Lavian, Ph.D., in Support of Petition
`for Covered Business Method (CBM) Review of
`U.S. Patent No. 8,646,093
`
`evaluate the status of the licenses:
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`Returning to FIG. 4, after the license certificates are created, then in
`block 440, the license engine 250 is run. The license engine evaluates
`the status of the software licenses modeled in the CMDB 260 against
`the license certificates created in block 430.
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`(’093, 10:28-32