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
`
`
`
`
`
`PETITION FOR COVERED BUSINESS METHOD (CBM) PATENT
`REVIEW OF U.S. PATENT NO. 8,646,093
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`

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`Table of Contents
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`
`Page
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`2.
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`B.
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`I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) ....................... 1
`A.
`Real Party-In-Interest under 37 C.F.R. § 42.8(b)(1) ............................ 1
`B.
`Related Matters Under 37 C.F.R. § 42.8(b)(2) .................................... 1
`C.
`Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3) .................. 1
`D.
`Service Information .............................................................................. 2
`E.
`Power of Attorney ................................................................................ 2
`PAYMENT OF FEES - 37 C.F.R. § 42.203 .................................................. 2
`II.
`III. REQUIREMENTS FOR CBM PATENT REVIEW ...................................... 3
`A. Grounds for Standing Under 37 C.F.R. § 42.304(a) ............................ 3
`1.
`The Petitioner Has Been Sued For Alleged Infringement
`of the ’093 Patent In Pending Litigation and Is Not
`Estopped ..................................................................................... 3
`The ’093 Patent Qualifies for CBM Review ............................. 4
`a.
`“Covered Business Method Patent” Prong ...................... 4
`b.
`“Technological Invention” Prong .................................. 11
`Identification of Challenge under 37 C.F.R. § 42.304(b) and
`Statement of Precise Relief Requested .............................................. 18
`Claim Construction Under 37 C.F.R. § 42.304(b)(3) ........................ 19
`C.
`IV. BRIEF BACKGROUND OF THE STATE OF THE ART ......................... 19
`V.
`SUMMARY OF THE CLAIMED SUBJECT MATTER ............................ 25
`A.
`The Specification of the ’093 Patent .................................................. 25
`B.
`The Claims of the ’093 Patent ............................................................ 29
`VI. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.304(B)(3)| ................ 30
`A.
`“license certificate” ............................................................................ 31
`B.
` “model” and “modeling” ................................................................... 33
`VII. CLAIMS 1, 5, 10-13, AND 16 ARE UNPATENTABLE UNDER 35
`U.S.C. § 101 .................................................................................................. 34
`A.
`The Challenged Claims Are Directed to an Abstract Idea ................. 35
`-i-
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`Table of Contents
`(continued)
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`Page
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`
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`Claim 1 (Independent) ............................................................. 35
`1.
`Claim 5 ..................................................................................... 41
`2.
`Claim 10 ................................................................................... 41
`3.
`Claims 11-13 (“License Type” Claims) ................................... 42
`4.
`Claim 16 (Independent) ........................................................... 43
`5.
`The Challenged Claims Do Not Recite Meaningful Limitations ....... 44
`1.
`Claim 1 (Independent) ............................................................. 45
`2.
`Dependent Claims 5, and 10-13 ............................................... 51
`3.
`Claim 16 (Independent) ........................................................... 52
`VIII. CONCLUSION ............................................................................................. 53
`
`B.
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`-ii-
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`Petition for Covered Business Method (CBM)
`Review of U.S. Patent No. 8,646,093
`
`
`
`Ex. No
`
`
`List of Exhibits
`
`Description of Document
`
`1001 U.S. Patent No. 8,646,093 to Anthony George Myers et al.
`
`1002 Declaration of Tal Lavian, Ph.D.
`
`1003
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`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`Best Practice for Software Asset Management, published by the IT
`Infrastructure Library, 2003
`
`Introduction to ITIL, published by the IT Infrastructure Library, 2005
`
`A Guide to Software Asset Management, published by Microsoft
`Corporation, 2004
`
`Excerpts from Microsoft Computer Dictionary (5th ed. 2002)
`
`Provisional Application No. 61/165,505 (incorporated by reference
`into the ’093 patent).
`
`Complaint for Patent Infringement in Case No. 14-CV-00903 JRG
`(E.D. Tex. filed September 23, 2014)
`
`1009 Affidavit of Christopher Butler, Office Manager of the Internet
`Archive, dated August 4, 2015
`
`
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`-iii-
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`Petition for Covered Business Method (CBM)
`Review of U.S. Patent No. 8,646,093
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`Petitioner ServiceNow, Inc. (“Petitioner”) respectfully submits this Petition
`
`for Covered Business Method (CBM) Review of claims 1, 5, 10-13, and 16 of U.S.
`
`Patent No. 8,646,093 [Ex. 1001] (“’093 patent”).
`
`I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1)
`
`A. Real Party-In-Interest under 37 C.F.R. § 42.8(b)(1)
`
`The Petitioner, ServiceNow, Inc., is the real party-in-interest.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`The Petitioner was sued for alleged infringement of the ’093 patent in BMC
`
`Software, Inc. v. ServiceNow, Inc., Case No. 14-CV-00903 JRG (E.D. Tex. filed
`
`Sept. 23, 2014). A copy of the Complaint filed in that action is attached as Exhibit
`
`1008. The Petitioner has denied infringement and contends that the patent is
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`invalid. That action remains pending. On July 3, 2015, the Petitioner filed a
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`petition for inter partes review (IPR) of the ’093 patent (Case No. IPR2015-
`
`01555). That IPR also remains pending.
`
`C.
`
`Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3)
`
`Petitioner provides the following designation of counsel.
`
`Lead Counsel
`Heidi L. Keefe (Reg. No. 40,673)
`hkeefe@cooley.com
`zpatdcdocketing@cooley.com
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`
`
`
`
`Back-Up Counsel
`Phillip E. Morton (Reg. No. 57,835)
`pmorton@cooley.com
`zpatdcdocketing@cooley.com
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
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`Petition for Covered Business Method (CBM)
`Review of U.S. Patent No. 8,646,093
`
`
`Back-Up Counsel
`Washington D.C. 20004
`
`T: (703) 456‐8668
`F: (703) 456‐8100
`
`Lead Counsel
`Washington, DC 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`
`Andrew C. Mace (Reg. No. 63,342)
`amace@cooley.com
`zpatdcdocketing@cooley.com
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (650) 843-5808
`Fax: (650) 849-7400
`
`
`Service Information
`
`D.
`
`This Petition is being served by Priority Mail Express to the current
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`correspondence address for the ’093 patent, BRAKE HUGHES BELLERMAN LLP, c/o
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`CPA Global, P.O. Box 52050, Minneapolis, MN 55402.
`
`The Petitioner may be served at the addresses provided above for lead and
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`back-up counsel, and consents to electronic service at those addresses.
`
`E.
`
`Power of Attorney
`
`Filed concurrently herewith in accordance with 37 C.F.R. § 42.10(b).
`
`II.
`
`PAYMENT OF FEES - 37 C.F.R. § 42.203
`
`This Petition requests covered business method (CBM) review of seven (7)
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`claims of the ’093 patent. Accordingly, a payment of $30,000 is submitted
`
`herewith, which is calculated based on a $12,000 CBM Review Petition Fee and an
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`$18,000 Post‐Institution Fee.
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`Petition for Covered Business Method (CBM)
`Review of U.S. Patent No. 8,646,093
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`
`III. REQUIREMENTS FOR CBM PATENT REVIEW
`
`A. Grounds for Standing Under 37 C.F.R. § 42.304(a)
`1.
`
`The Petitioner Has Been Sued For Alleged Infringement of
`the ’093 Patent In Pending Litigation and Is Not Estopped
`
`Pursuant to 37 C.F.R. § 42.302(a), Petitioner certifies that it has been sued
`
`for infringement of the ’093 patent. More specifically, the Petitioner was named as
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`a defendant in BMC Software, Inc. v. ServiceNow, Inc., Case No. 14-CV-00903
`
`JRG (E.D. Tex. filed Sept. 23, 2014). The Complaint in that litigation accuses the
`
`Petitioner of infringing the ’093 patent. (See Complaint, Ex. 1008, ¶¶ 28, 56-60.)
`
`The Petitioner has denied infringement. The case is pending.
`
`The Petitioner certifies that the ’093 patent is available for covered business
`
`method (CBM) review and that the Petitioner is not estopped from challenging
`
`claims 1, 5, 10-13, and 16 on the grounds identified herein. The Petitioner is
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`unaware of any post-grant review (PGR) or prior petition for Covered Business
`
`Method (CBM) review with respect to the ’093 patent. On July 3, 2015, the
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`Petitioner filed a petition for inter partes review (IPR) of the ’093 patent (Case No.
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`IPR2015-01555), but that petition has not resulted in any final decision by the
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`Board. Moreover, the present Petition raises issues of subject matter eligibility
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`under 35 U.S.C. § 101 that were not (and cannot be) raised in IPR2015-01555.
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`Petition for Covered Business Method (CBM)
`Review of U.S. Patent No. 8,646,093
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`2.
`The ’093 Patent Qualifies for CBM Review
`Determining whether a patent qualifies for CBM review entails a two prong
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`inquiry. First, the Board determines whether the patent meets the definition of a
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`“covered business method patent” under Section 18(d) of the AIA. Second, the
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`Board determines whether the patent is excluded from CBM review because it
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`covers a “technological invention.” Each prong is addressed below.
`
`a.
`The AIA defines a “covered business method patent” as “a patent that claims
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`“Covered Business Method Patent” Prong
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`a method or corresponding apparatus for performing data processing or other
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`operations used in the practice, administration, or management of a financial
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`product or service.” AIA § 18(d)(1). The USPTO has interpreted “covered
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`business method patent” broadly to encompass patents claiming activities that are
`
`financial in nature, incidental to a financial activity or complementary to a
`
`financial activity. See Fed. Reg. Vol. 77, No. 157 at 48734-35. The Board may
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`find a patent subject to CBM review even if only one claim meets the definition.
`
`See Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., Case CBM2012-
`
`00002 (Paper No. 66), at p. 6 (PTAB January 23, 2014) (“Therefore, a patent is
`
`eligible for a covered business method patent review if the subject matter of at
`
`least one claim is directed to a covered business method.”) (italics in original).
`
`The Board may also find that a patent is subject to CBM review even if a financial
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`Petition for Covered Business Method (CBM)
`Review of U.S. Patent No. 8,646,093
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`activity is not explicitly recited in the patent. See Google Inc. v. ContentGuard
`
`Holdings, Inc., Case CBM2015-00040 (Paper 9), at pp. 8-9 (PTAB June 24, 2015)
`
`(“[T]he definition of a covered business method patent should be interpreted
`
`broadly
`
`to encompass patents claiming activities
`
`that are
`
`incidental or
`
`complementary to a financial activity. ContentGuard does not direct us to a
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`statutory or regulatory provision, much less legislative history, which would
`
`require a covered business method patent to recite explicitly a financial product or
`
`service.”) (italics in original; internal citation omitted).
`
`The ’093 patent qualifies as a “covered business method patent” under these
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`principles. The claims challenged in this Petition are directed at a way to monitor
`
`compliance with software license contracts. As this Petition will explain in detail
`
`below, this technique is clearly incidental or complementary to a financial activity,
`
`e.g., purchasing licenses for software products.
`
`As explained in the Summary of the Invention, the basic technique for
`
`managing license compliance is straightforward.
`
` It involves (a) storing
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`information about the deployment of a software product and information about the
`
`product’s license contract, and (b) comparing the deployment information against
`
`the license contract to assess compliance:
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`In one embodiment, a method is disclosed. The method
`comprises storing a first model of deployment of a software
`
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`Petition for Covered Business Method (CBM)
`Review of U.S. Patent No. 8,646,093
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`product in a configuration management database (CMDB);
`storing a second model of a software license contract for the
`software product
`in a
`license database; and evaluating
`compliance of
`the software
`license contract. Evaluating
`compliance comprises connecting the first model and the
`second model; comparing the first model and the second model;
`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.
`
`(’093, Ex. 1001, 2:13-22.) This method is generally reflected in representative
`
`independent claim 1, which recites in its entirety:
`
`[b]
`
`[c]
`
`1. A computer-implemented method, comprising:
`[a] 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
`
`[d]
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`Petition for Covered Business Method (CBM)
`Review of U.S. Patent No. 8,646,093
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`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.
`
`(’093, 13:44-14:3 (Claim 1).)
`
`The specification makes clear that the method of claim 1 covers a technique
`
`for informing an organization that it needs to purchase more software licenses. For
`
`instance, the information reflected in the “license certificate” recited in claim 1 can
`
`include the number of licenses purchased for a particular software product. (’093,
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`9:30-36 (“For example, the license engine 250 when creating a per copy license
`
`certificate may ask how many licenses were purchased. . . . For a per copy per
`
`device license, the license engine 250 may ask how many licenses were purchased
`
`and how many copies per device are allowed under each license.”).) The number
`
`of purchased licenses is expressly recorded for several different types of software
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`licenses, including “per instance,” “per copy per device,” and “per copy” licenses.
`
`(’093, 7:35 (“Number of licenses purchased?”), 7:57 (same; per copy per device
`
`license type), 8:24 (same; per copy license type).)
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`
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`The ’093 patent explains that, in the event of a non-compliance exception,
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`an error message may be presented or specific actions may be taken or suggested
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`to cure the non-compliance – including buying more software licenses. (’093,
`
`10:54-11:8.) “For example, in one embodiment, a noncompliance exception
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`Petition for Covered Business Method (CBM)
`Review of U.S. Patent No. 8,646,093
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`indicating that more instances of a particular software are deployed than are
`
`licensed may automatically trigger a request to purchase sufficient additional
`
`license to bring the enterprise 100 back into compliance.” (’093:10:65-11:3
`
`(underlining added), 12:18-20 (“To bring company 610 back into compliance . . .
`
`one new license may be purchased . . . .”).) This type of suggested action is
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`covered by dependent claim 10, which recites:
`
`10. The method of claim 1, wherein the act of evaluating
`compliance further comprises: indicating a suggested action for
`achieving compliance if the act of comparing the first model
`and the second model indicates non-compliance with the
`software license contract.
`
`(’093, 14:44-49.)
`
`In addition, the specification describes various embodiments in which the
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`claimed method is employed to determine whether an enterprise has purchased an
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`insufficient number of licenses to cover the deployment of the software product.
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`For example, Figure 10 shows a scenario in which an enterprise has purchased two
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`licenses for a software product, but has deployed the product on three computers.
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`(’093, 12:7-20, Fig. 10.) In this scenario, according to the specification, “the
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`software license contract 660 is not in compliance, and license engine 250
`
`generates a non-compliance exception, indicating that company 610 is out of
`
`compliance with the license. To bring the company 610 back into compliance,
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`either one new license may be purchased, or one of the three instances 650, 654,
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`Petition for Covered Business Method (CBM)
`Review of U.S. Patent No. 8,646,093
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`and 652 removed.” (’093, 12:15-20 (underlining added).) This scenario is also
`
`reflected in the provisional application, which is incorporated by reference into the
`
`’093 patent. (’093, 1:10-14; Ex. 1007, at 276.) In that scenario, the system
`
`presents an error message and advises the system administrator that it may buy
`
`more licenses to cure the non-compliance exception. (See Ex. 1007, at 276
`
`(“ERROR – CERT1 is out of compliance by 3 licenses. Please investigate and
`
`either purchase more licenses or uninstall to ensure compliance.”).)
`
`As the analysis above demonstrates, the ’093 patent is directed at a financial
`
`activity of an organization. The method described and claimed in the ’093 patent
`
`involves comparing the deployment of a software product against “license
`
`certificate” information that can include, among other things, the number of
`
`licenses that the organization has purchased. (’093, e.g., 9:30-36, 7:35, 7:57, 8:24.)
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`Non-compliance with the license contract can trigger an exception that directs the
`
`organization to purchase sufficient additional licenses to bring the enterprise into
`
`compliance. (’093, 10:65-11:3, 12:18-20.)
`
`The technique described and claimed in the patent is financial in nature, or
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`incidental or complementary to a financial activity, because it is used to direct an
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`organization’s software purchasing decisions. As the specification confirms, the
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`claimed non-compliance “exception” is often caused by an organization purchasing
`
`too few licenses, and the claimed “suggested action” in this situation can include
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`Petition for Covered Business Method (CBM)
`Review of U.S. Patent No. 8,646,093
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`directing the organization to buy more licenses. Purchasing of software licenses is
`
`a financial activity because it involves, at the very least, obtaining the software
`
`licenses in exchange for payment of a license fee. The incorporated provisional
`
`application, in fact, specifically discusses the ability to record the payment
`
`associated with the software license. (Ex. 1007, at 231 (“The Software Contract
`
`form displays the following information: . . . ■ Record payment for the contract.”);
`
`id. at 068, § 1.2.9 (table showing software contract payment record including
`
`“Date Payment Sent,” “Payment Amount Sent,” “Payment Type,” “Date Payment
`
`Due,” and other payment-related fields).) Because the methods of claim 1 and
`
`claim 10 are directed to a technique for prompting an organization to buy more
`
`software licenses, the patent covers activities that are financial in nature, or that are
`
`incidental or complementary to financial activities.
`
`The Petitioner anticipates that the patent owner may assert that the ’093
`
`patent is not eligible for CBM review because the claim language does not
`
`expressly recite purchase of or payment for software licenses. But the Petitioner is
`
`aware of no decision by the Board restricting CBM review to patents that explicitly
`
`recite financial limitations. The Board has in fact rejected this argument. See
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`Google Inc. v. ContentGuard Holdings, Inc., supra, Case CBM2015-00040 (Paper
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`9), at pp. 8-9 (“[T]he definition of a covered business method patent should be
`
`interpreted broadly to encompass patents claiming activities that are incidental or
`
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`Petition for Covered Business Method (CBM)
`Review of U.S. Patent No. 8,646,093
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`complementary to a financial activity. ContentGuard does not direct us to a
`
`statutory or regulatory provision, much less legislative history, which would
`
`require a covered business method patent to recite explicitly a financial product or
`
`service.”) (italics in original; internal citation omitted). The Petitioner respectfully
`
`submits that such a narrow interpretation of AIA § 18(d) would be contrary to the
`
`Congressional purpose behind CBM review. An invention expressly described in a
`
`specification as applying to a financial activity, such as prompting an organization
`
`to buy software licenses, could evade CBM review by simply omitting express
`
`mention of that activity from the claims. Accordingly, the Petitioner requests that
`
`the Board adhere to its more holistic position, expressed in ContentGuard and
`
`other cases, that looks to the entirety of a patent to determine whether it claims an
`
`activity that is financial in nature, incidental to a financial activity or
`
`complementary to a financial activity. The ’093 patent qualifies as such a patent.
`
`b.
`The definition of a “covered business method patent” in § 18(d)(1) of the
`
`“Technological Invention” Prong
`
`AIA excludes patents for “technological inventions.” To determine whether a
`
`patent covers a “technological invention,” the USPTO considers “whether the
`
`claimed subject matter as a whole 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
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`Petition for Covered Business Method (CBM)
`Review of U.S. Patent No. 8,646,093
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`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. 48756, 48763-64 (Aug. 14,
`
`2012).) The ’093 patent clearly satisfies the “technological invention” prong of
`
`§ 18(d)(1) because the claims recite no technological feature that is novel and non-
`
`obvious over the prior art. The claims instead recite the use of known prior art
`
`technology to carry out a method of evaluating compliance with license contracts.
`
`Referring again to representative claim 1 discussed in detail above, the claim
`
`recites the steps in largely functional language without regard to the use of any
`
`particular “technological” feature. The only limitations of the claim that are
`
`remotely technological recite known existing technologies such as databases:
`
`1. A computer-implemented method, comprising:
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`[b]
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`[c]
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`Petition for Covered Business Method (CBM)
`Review of U.S. Patent No. 8,646,093
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`[a] 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.
`(’093, 13:44-14:3 (Claim 1).)
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`[d]
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`
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`None of these steps, individually or taken together, recite any technological
`
`feature that is novel or non-obvious. In particular, the claims recite storage of
`
`information in “configuration items” (CIs) of a “configuration management
`
`database” (CMDB). But the ’093 patent specifically admits that CIs and CMDBs
`
`are known in the art, and used to manage deployment of software assets. (’093,
`
`1:24-26, 1:18-44.) As explained in Introduction to ITIL (Ex. 1004), published
`
`several years before the application for the ’093 patent was filed, a CMDB was a
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`Petition for Covered Business Method (CBM)
`Review of U.S. Patent No. 8,646,093
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`well-known storage concept and not necessarily even “technological” in nature:
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`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).)
`
`Moreover, the ’093 specification specifically disavows any suggestion that
`
`the applicants intended to claim any “technological invention” relating to the
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`storage of information about software contracts and license contracts in a CMDB.
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`In fact, the specification states that “the techniques for discovering and storing the
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`information modeled by CIs for hardware and software components in the CMDB
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`server 110 is outside the scope of the present invention.” (’093, 3:46-49
`
`(underlining added).) This is consistent with the fact that, as explained in the
`
`accompanying declaration of Dr. Lavian, the existence of CMDBs and CIs, and
`
`using them to model deployment of software products and license contracts, was
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`known. (Lavian Decl., Ex. 1002, ¶¶ 34-37, 84-88.) Accordingly, steps [a] and [b]
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`merely reflect “[r]eciting the use of known prior art technology to accomplish a
`
`process or method,” which is not a “technological invention” under the regulations
`
`governing CBM eligibility. (77 Fed. Reg. 48756, 48763-64 (Aug. 14, 2012).)
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`Petition for Covered Business Method (CBM)
`Review of U.S. Patent No. 8,646,093
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`Step 1[c] recites the generation of a “second model” with a “license
`
`
`certificate” corresponding to the software license contract, stored in a “license
`
`database.” There is little if anything “technological” in this claim step. This step
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`does not require any particular programming or technical implementation. (Lavian
`
`Decl. ¶ 89.) In fact, the patent states that the “license database” in step 1[c] (which
`
`is referred to as a “license datastore” in the specification) can be implemented
`
`using any generic storage technology, including conventional database techniques
`
`such as the standard structured query language (SQL). (’093, 4:17-20 (“The
`
`CMDB datastore 260 and the license datastore 270 may be implemented as a
`
`collection of flat files, a structured query language database, or in any other way
`
`desired.”).) As explained by Dr. Lavian, the term “structured query language”
`
`(SQL) in the patent is a reference to a well-known and standard technique for
`
`accessing and updating information in databases, which was known long before the
`
`’093 patent. (Lavian Decl. ¶ 90 (citing Microsoft Computer Dictionary (5th ed.
`
`2002), Ex. 1006, at p. 501).) Because step 1[c] merely “[r]ecit[es] the use of
`
`known prior art technology to accomplish a process or method,” it provides no
`
`technological invention. (77 Fed. Reg. 48756, 48763-64 (Aug. 14, 2012).)
`
`
`
`The remaining limitations in step 1[d] recite how the information in the
`
`“first model” and “second model” is used to perform the claimed compliance
`
`evaluation, but there is nothing “technological” about these claim limitations.
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`Petition for Covered Business Method (CBM)
`Review of U.S. Patent No. 8,646,093
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`These claim limitations do not require any particular technical implementation, and
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`the specification makes clear that the “computer-implemented” method of claim 1
`
`can be carried out using generic server hardware, such as an Intel-based computer
`
`with standard components such as a keyboard, mouse, display, network interface,
`
`and storage device. (’093, Fig. 3, 4:21-59; Lavian Decl., Ex. 1002, ¶¶ 83, 97.)
`
`Accordingly, nothing in the limitations of claim 1 provides any technological
`
`invention that could preclude CBM review of the ’093 patent.
`
`As noted above, the Board may find a patent subject to CBM review even if
`
`only one claim satisfies the “covered business method patent” definition. Because
`
`claim 1 recites nothing more than use of known prior art technology to accomplish
`
`a process or method, it satisfies the second step of the inquiry under § 18. But
`
`even if the Board consults other claims challenged in this Petition, they similarly
`
`fail to recite any “technological invention.” First, the dependent claims challenged
`
`here (i.e. claims 5, 10-13) recite further details for the method of claim 1, but do
`
`not add technological limitations, let alone recite any technological invention.
`
`They simply add details to the functional and non-technological aspects of claim 1.
`
`Second, the other independent claim challenged in this Petition, claim 16, is
`
`little more than a system claim that surrounds the method steps of claim 1 with
`
`generic computer components:
`
`16. A system, comprising:
`
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`Petition for Covered Business Method (CBM)
`Review of U.S. Patent No. 8,646,093
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`a server computer, comprising:
`a processor;
`a configuration database, coupled to the processor;
`a license database, coupled to the processor; and
`a program store, coupled to the processor, on
`which is stored instructions for the processor,
`wherein the instructions cause the processor to
`perform the method of claim 1.
`
`(’093, 16:1-9 (Claim 16).)
`
`These additional limitations merely recite known technologies. (Lavian
`
`Decl., Ex. 1002, ¶¶ 97-100.) For example, the “processor” in claim 16 could be
`
`“any programmable
`
`controller device,”
`
`including
`
`standard
`
`Intel-based
`
`microprocessors commonly found in servers and personal computers. (’093, 4:44-
`
`50; Lavian Decl. ¶ 97.) The specification also states that the “configuration
`
`database” and the “license database” can be implemented using known database
`
`programming techniques. (’093, 4:17-20; Lavian Decl. ¶¶ 98, 90.) With respect to
`
`the claimed “program store,” the specification explains that it could take the form
`
`of a standard hard disk drive. (’093, 4:25-27.) Accordingly, the “server,”
`
`processor,” “configuration database,” “license database,” and “program store”
`
`limitations in claim 16 do not reflect any technological limitations and therefore
`
`provide no technological invention.
`
`As explained above, a patent may qualify as being eligible for CBM review
`
`
`
`