UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`
`
`SERVICENOW, INC.
`Petitioner
`
`
`
`v.
`
`
`
`BMC SOFTWARE, INC.
`Patent Owner
`____________________
`
`Case CBM 2015-00170
`Patent No. 8,646,093
`____________________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`
`
`SERVICENOW, INC.
`Petitioner
`
`
`
`v.
`
`
`
`BMC SOFTWARE, INC.
`Patent Owner
`____________________
`
`Case CBM 2015-00170
`Patent No. 8,646,093
`____________________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`
`
`Table of Contents
`
`Page
`
`I.
`II.
`III.
`
`V.
`
`INTRODUCTION ........................................................................................... 1
`STATEMENT OF THE ISSUES .................................................................... 5
`SERVICENOW HAS NOT SHOWN THAT THE PETITIONED
`CLAIMS ARE ELIGIBLE FOR CBM REVIEW AS A “FINANCIAL
`PRODUCT OR SERVICE” ............................................................................. 6
`IV. RESPONSE TO SERVICENOW’S CLAIM CONSTRUCTIONS .............. 12
`A.
`“license certificate” ............................................................................. 12
`B.
`“model” and “modeling” ..................................................................... 12
`SERVICENOW HAS NOT SHOWN THAT THE PETITIONED
`CLAIMS ARE ELIGIBLE FOR CBM REVIEW AS NOT A
`“TECHNOLOGICAL” INVENTION ........................................................... 13
`VI. SERVICENOW HAS NOT SHOWN A LIKELIHOOD THAT IT
`WILL PREVAIL ON ITS SECTION 101 CHALLENGE ........................... 18
`A.
`The Petition Should Be Denied Because ServiceNow Does Not Show
`That The Claims Are Abstract ............................................................ 20
`The Petition Should Be Denied Because The Claims Recite an
`Inventive Concept Relating To Determining Software License
`Compliance In A Computer Network Using A License Certificate ... 25
`VII. CONCLUSION .............................................................................................. 29
`
`B.
`
`
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`
`CASES
`Alice Corp. Pty Ltd. v. CLS Bank Int’l,
`134 S. Ct. 2347 (2014) ........................................................................................ 19
`
`Page(s)
`
`Apple, Inc. v. ContentGuard Holdings, Inc.,
`CBM2015-00046, Paper 12 (June 3, 2015) .................................................. 16, 17
`
`Bilski v. Kappos,
`130 S. Ct. 3218 (2010) ........................................................................................ 21
`
`BMC Software, Inc. v. ServiceNow, Inc.,
`No. 2:14-cv-903 (E.D. Tex.) ............................................................................... 27
`
`Cal. Institute of Tech. v. Hughes Commcn’s Inc.,
`2014 U.S. Dist. LEXIS 156763 (C.D. Cal. Nov. 3, 2014) ................................. 18
`
`DDR Holdings LLC v. Hotels.com, Inc.,
`773 F.3d 1245 (Fed. Cir. 2014) ...................................................................passim
`
`Epsilon Data Management, LLC v. RPost Communications,
`CBM2014-00017, Paper 21 (Apr. 22, 2014) ............................................ 7, 16, 17
`
`GSI Commerce Solutions, Inc. v. Lakshmi Arunachalam,
`CBM2014-00101, Paper 10 (Oct. 7, 2014) ........................................................ 17
`
`Par Pharmaceutical, Inc. v. Jazz Pharmaceuticals, Inc.,
`CBM 2014-00149, Paper 12 (Jan. 13, 2015) .............................................. 7, 9, 10
`
`PNC Financial Services Group, Inc. v. Intellectual Ventures I LLC,
`CBM 2014-00032, Paper 13 (May 22, 2014) ............................................... 10, 11
`
`Salesforce.com v. Applications in Internet Time LLC,
`CBM2014-00162, Paper 11 (Feb. 2, 2015) .................................................... 7, 10
`
`Sega of Am., Inc. v. Uniloc USA, Inc.,
`CBM2014-00183, slip op. (PTAB Mar. 10, 2015) ............................................. 11
`
`ServiceNow, Inc. v. BMC Software, Inc.,
`CBM2015-00107 .................................................................................................. 1
`
`
`
`ii
`
`
`
`ServiceNow, Inc. v. Hewlett-Packard, Inc.,
`CBM2015-00108 .................................................................................................. 2
`
`Sony Corp. of Am. V. Network-1 Techs., Inc.,
`CBM2015-00078 slip op. (PTAB July 1, 2015) ................................................. 11
`
`Ultramercial, Inc. v. Hulu, LLC,
`772 F.3d 709 (Fed. Cir. Nov. 14, 2014) ............................................................. 19
`
`STATUTES
`
`35 U.S.C. § 101 .................................................................................................... 1, 19
`
`35 U.S.C. § 324(a) ................................................................................................... 19
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.6(e) ................................................................................................... 33
`
`37 C.F.R. § 42.301(a) ........................................................................................passim
`
`37 C.F.R. § 42.301(b) ........................................................................................ 12, 13
`
`
`
`
`
`iii
`
`
`
`List of Exhibits
`
`Description
`Class Definition for Class 726, last visited Nov. 15, 2015
`(http://www.uspto.gov/web/patents/classification/uspc726/defs726.htm)
`Complaint for Patent Infringement, BMC Software, Inc. v. ServiceNow,
`Inc., No. 2:14-cv-903 (E.D. Tex.)
`BMC’s January 6, 2015 Infringement Contentions to ServiceNow,
`BMC Software, Inc. v. ServiceNow, Inc., No. 2:14-cv-903 (E.D. Tex.)
`
`
`No.
`
`2001
`
`2002
`
`2003
`
`
`
`
`
`iv
`
`
`
`I.
`
`INTRODUCTION
`
`Patent Owner BMC Software, Inc. (“BMC”) respectfully submits this
`
`Preliminary Response to the Petition for Covered Business Method (“CBM”)
`
`Review of the U.S. Patent No. 8,646,093 (the “Petition”) filed by ServiceNow, Inc.
`
`(“ServiceNow”) regarding claims 1, 5, 10-13, and 16 of United States Patent No.
`
`8,646,093 (“the ’093 patent”) as allegedly being abstract and invalid under 35
`
`U.S.C. § 101 (“Section 101”).
`
`ServiceNow previously filed a petition for CBM review on BMC’s U.S.
`
`Patent No. 7,062,683, rationalizing that the two-phase fault analysis claimed for
`
`identifying a root cause of faults in a computer network was directed to a
`
`“financial product or service” because the exemplary embodiment—not the
`
`claims—discussed the patent’s use in an Automatic Teller Machine. The Board
`
`denied to institute the CBM, explaining that “ultimately, the focus of the analysis
`
`must remain on the claims. Here, the absence of any finance-related limitation in
`
`the claims is the primary driver of our determination that the ’683 patent is not a
`
`covered business method . . . .” ServiceNow, Inc. v. BMC Software, Inc., Case
`
`CBM2015-00107, Paper 12 at 15 (Sept. 11, 2015). ServiceNow also filed a
`
`petition for CBM review on Hewlett-Packard’s U.S. Patent No. 7,945,860,
`
`rationalizing that the patent was directed to systems or computer program products
`
`for managing a conversation in a Web service that was useful in “online
`
`
`
`1
`
`
`
`shopping,” even while the claims contained no finance-related terminology or
`
`limitations. The Board denied to institute the CBM, explaining that the
`
`“[s]pecification of the ’860 patent is devoted to a general description of the
`
`claimed conversation management system and computer program, without
`
`reference to the particular application to financial activities.” ServiceNow, Inc. v.
`
`Hewlett-Packard, Inc., Case CBM2015-00108, Paper 10 at 16 (Oct. 7, 2015).
`
`The instant case presents even more of a stretch, where neither the
`
`specification nor the claims of the ’093 patent discusses financial products or
`
`services. Instead, the ’093 patent relates to evaluating installed software for
`
`license compliance in a computer network, and ServiceNow posits that this may
`
`motivate a user to engage in some commercial activity as a result of the claimed
`
`method and system: i.e., buying more software licenses. As with ServiceNow’s
`
`previous CBM petitions, the Board should not institute CBM review of the ’093
`
`patent for several reasons.
`
`First, the claims are not drawn to a “financial product or service” and are
`
`thus ineligible for CBM review. 37 C.F.R. § 42.301(a). The petitioned claims
`
`recite a system and computer-implemented method for modeling deployment of
`
`software in an enterprise using a configuration management database and a license
`
`database and evaluating the deployment of software for compliance with a
`
`software license contract.
`
`
`
`2
`
`
`
`ServiceNow argues that the claimed invention is a “financial product or
`
`service” on a tenuous theory that the claimed invention may motivate a user of the
`
`claimed system or method to “purchase[] licenses for software products” if the
`
`deployed software is found not to be compliant with the software license contract.
`
`(E.g., Petition at 5). ServiceNow’s argument is inconsistent with the requirements
`
`of 37 CFR § 42.301(a) and with the Board’s precedent that analysis of CBM-
`
`eligibility be “firmly rooted” in the claims. With regard to the claims, ServiceNow
`
`seemingly acknowledges that the “the claim language does not expressly recite
`
`purchase of or payment for software licenses” (Petition at 10) and does not identify
`
`any claim limitation that requires, or is particular to, a “financial product or
`
`service.” 37 C.F.R. § 42.301(a). Moreover, the ’093 specification discusses that
`
`compliance can be achieved by simply removing software in the event that the
`
`deployed software exceeds the available license rights, rather than purchasing
`
`additional licenses. Ex. 1001, ’093 at 10:64-11:8; 12:15-20. How a user of the
`
`claimed system or method chooses to react to an indication of non-compliance or a
`
`suggested action for achieving compliance is simply not the subject of the claims,
`
`and the claims have nothing to do with a financial product or service.
`
`Even
`
`if
`
`the Board were
`
`to entertain ServiceNow’s argument,
`
`the
`
`specification describes a technical problem and solution (not a financial product or
`
`service)—modeling deployment of software in an enterprise using a configuration
`
`
`
`3
`
`
`
`management database and a license database and evaluating the deployment of
`
`software for compliance with software licenses. Ex. 1001, ’093 at Abstract.
`
`Second, even if one could overlook the absence of a “financial product or
`
`service” in the petitioned claims, CBM review would still remain unavailable
`
`because a “technological” invention is excluded from the scope of CBM review.
`
`37 C.F.R. § 42.301(a). ServiceNow’s assertion, that the claimed software license
`
`compliance system and method are abstract, rests on a failure to consider the claim
`
`language as a whole, including 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.” Ex. 1001, ’093 at Claim 1.
`
`In addition, ServiceNow does not establish that the claimed invention does
`
`not solve a technical problem using a technical solution. ServiceNow’s hand-
`
`waving that the claims can be performed with “generic” computer technologies
`
`(Petition at 11-18), without any specific showing of how the ’093 patent allegedly
`
`does not solve a technical problem using a technical solution and/or what alleged
`
`business or financial problem the ’093 patent allegedly solves, does not carry its
`
`
`
`4
`
`
`
`burden. For this additional reason, i.e., that ServiceNow has not shown that the
`
`petitioned claims are not drawn to a “technological invention,” the Board should
`
`not institute CBM review.
`
`Third, ServiceNow does not show a likelihood that it will prevail on its
`
`Section 101 challenge. Each petitioned claim is drawn to assessing software
`
`license compliance in a computer network, and 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. Ex. 1001, ’093 at
`
`Claim 1; Claim 16 (referring to the method of Claim 1). For the additional reason
`
`that ServiceNow does not show that it is more likely than not to prevail on its
`
`Section 101 challenge, the Board should not institute CBM review.
`
`II.
`
`STATEMENT OF THE ISSUES
`
`The following issues are before the Board:
`
`1.
`
`Despite the fact that ServiceNow does not show that any particular claim
`
`limitation is drawn to a financial product or service, has ServiceNow established
`
`that the petitioned claims are eligible for CBM review as a “financial product or
`
`service” by pointing to the possibility that a user of the claimed method and system
`
`
`
`5
`
`
`
`might be motivated to buy software licenses if the claimed method and system
`
`determines that the enterprise is not in compliance?
`
`2.
`
`Despite the fact that it does not meaningfully address at least two
`
`technological features of each petitioned claim or the technological problem solved
`
`by the claimed invention, has ServiceNow established that the petitioned claims
`
`are eligible for CBM review as not technological?
`
`3.
`
`Has ServiceNow satisfied its burden of showing a likelihood that it will
`
`prevail on its Section 101 challenge by showing each petitioned claim is abstract
`
`and can be done with pen and paper, is not “necessarily rooted in computer
`
`technology” and does not recite any “inventive concept”?
`
`III. SERVICENOW HAS NOT SHOWN THAT THE PETITIONED
`CLAIMS ARE ELIGIBLE FOR CBM REVIEW AS A “FINANCIAL
`PRODUCT OR SERVICE”
`
`A “covered business method patent” is defined as follows:
`
`that claims a method or corresponding
`A patent
`apparatus for performing data processing or other
`operations used
`in
`the practice, administration, or
`management of a financial product or service, except
`that the term does not include patents for technological
`inventions.
`
`37 C.F.R. § 42.301(a) (emphasis added).
`
`
`
`6
`
`
`
`The burden is on ServiceNow, the petitioner, to establish that the ’093 patent
`
`is eligible for CBM review. 37 C.F.R. § 42.304(a). In making the determination
`
`of whether a given patent is eligible for CBM review, the Board’s focus is “firmly
`
`on the claims.” Par Pharmaceutical, Inc. v. Jazz Pharmaceuticals, Inc.,
`
`CBM2014-00149, Paper 12 at 9 (Jan. 13, 2015) (“Par Pharmaceutical”);
`
`Salesforce.com v. Applications in Internet Time LLC, Case CBM2014-00162,
`
`Paper 11 at 7 (Feb. 2, 2015) (“we focus on the claims”) (“Internet Time”); Epsilon
`
`Data Management, LLC v. RPost Communications, CBM2014-00017, Paper 21 at
`
`5 (Apr. 22, 2014) (“Epsilon”) (same).
`
`ServiceNow does not identify a single claim limitation that requires, or is
`
`particular to, a “financial product or service.” This is not surprising because the
`
`claims are not financial or business in nature, nor do they solve a financial or
`
`business problem. Indeed, the ’093 patent is classified in Class 726, which is
`
`directed to “protection of data processing systems, apparatus, and methods as well
`
`as protection of information and services.” Ex. 2001 at 1.
`
`The petitioned claims solve the technical problem of efficiently and reliably
`
`analyzing software that has been installed on computers in an enterprise against
`
`available license rights and generating exception indications if the deployment is
`
`non-compliant. Ex. 1001, ’093 at 2:11-41. This technical problem is one of
`
`software asset management which “is a core component of an overall asset
`
`
`
`7
`
`
`
`management policy” and where “[c]onventional CMDBs [did] not provide
`
`adequate capability for that [sic] an enterprise is in compliance with the terms of its
`
`software license contracts.” Ex. 1001, ’093 at 1:49-51; 2:6-8.
`
`According to ServiceNow, the ’093 patent is eligible for CBM review
`
`because the claimed invention is “incidental or complementary to a financial
`
`activity, e.g., purchasing licenses for software products.”
`
` Petition at 5.
`
`ServiceNow seemingly admits, however, that the “claim language does not
`
`expressly recite purchase of or payment for software licenses.” Petition at 10. The
`
`patent merely claims that there is non-compliance: “generating an exception
`
`indication if the act of comparing the first model and the second model indicates
`
`non-compliance with the software license contract.” Ex. 1001, ’093 at Claim 1.
`
`The claimed invention does not involve purchasing licenses. Even where
`
`dependent claim 10 requires “indicating a suggested action for achieving
`
`compliance,” the act of purchasing licenses is not claimed—and the patent teaches
`
`that compliance could be accomplished by simply removing software rather than
`
`buying licenses. Id. at Claim 10; 11:3-11:8 (“In another embodiment, the same
`
`situation may trigger an analysis to attempt to determine which, if any, of the
`
`existing instances of the software may exceed the need of the enterprise 100 need
`
`for the software, and in a further embodiment, may trigger the removal of a
`
`software package from one or more computer systems 120.”); 12:15-20 (“To bring
`
`
`
`8
`
`
`
`the company 610 back into compliance, either one new license may be purchased,
`
`or one of the three instances 650, 654, and 652 removed.”).
`
`Even if the claimed invention did require the purchase of licenses if the
`
`software deployment is out of license compliance as a whole, the claims still would
`
`not be related to a financial product or service. Indeed, the patent relates to
`
`evaluating the software license compliance using CMDBs that “contain data about
`
`managed resources known as Configuration Items (CIs)” that are “[a]ny
`
`[c]omponent that needs to be managed in order to deliver an IT Service.”
`
`Ex. 1001, ’093 at 1:27-32. The claimed invention has benefits in any computing
`
`enterprise where software is deployed and is not related particularly to financial
`
`products or services. Id. at 1:15-2:41. Most inventions may have some attenuated
`
`effect on commerce, however, this is not the standard for CBM eligibility, lest the
`
`exception swallow the rule. For example, a “method for indicating an empty tank
`
`of gas in an automobile” may one day motivate a user of the method to buy more
`
`gasoline, but this does not mean the “method for indicating an empty tank” is
`
`necessarily a “financial product or service” eligible for CBM review.
`
`For example, in Par Pharmaceutical, a case ServiceNow does not address,
`
`the claims were drawn to a “computerized method of distributing a prescription
`
`drug.” Par Pharmaceutical at 7. The petitioner pointed to the specification’s
`
`teaching of verification of a patient’s ability to pay for a prescription in arguing
`
`
`
`9
`
`
`
`that the claimed invention requires a “financial transaction” and is thus drawn to a
`
`“financial product or service.” Id. at 11. The Board rejected petitioner’s argument,
`
`holding that the petitioner had not explained “why any of the claimed method steps
`
`should be considered ‘financial’ when considered in the context of the claim
`
`language as a whole.” Id. at 13-14 (emphasis added). The Board further stated
`
`that “Congress did not say in the statute that a business method patent ‘used in
`
`commerce’ or covering ‘core activities’ of running a business is eligible for CBM
`
`review.” Id. at 17. Like the petitioner in Par Pharmaceuticals, ServiceNow has
`
`not explained why any of the claimed limitations should be considered financial or
`
`rise to a level above having use in commerce.
`
`Likewise, in Internet Time the Board did not institute CBM review for
`
`claims to web browser technology because they were not drawn to a “financial
`
`product or service.” Internet Time at 5. The Board held that “the claims on their
`
`face are directed to technology ‘common in business environments across
`
`sectors’ with ‘no particular relation to the financial services sector’ . . . which the
`
`legislative history says indicates is outside the scope of covered business method
`
`patent review.” Id. at 9 (emphasis added).
`
`Similarly, in PNC Financial, the claims recited “computer administration
`
`operations” for identifying unauthorized files on a computer. PNC Financial
`
`Services Group, Inc. v. Intellectual Ventures I LLC, CBM 2014-00032, Paper 13
`
`
`
`10
`
`
`
`(May 22, 2014) at 5. The Board denied the petition, submitted by two banks
`
`accused of infringement based on their “Payment Card Industry Data Security
`
`Standard,” as not drawn to a “financial product or service” because the claims
`
`“describe software systems that have general utility not specific to any
`
`application.” Id. at 10 (emphasis added).
`
`Just like the petitioners in Par Pharmaceutical, Internet Time, and PNC
`
`Financial, ServiceNow does not show that the claims have “particular relation
`
`limited to the financial services sector,” and the Petition should be denied. Id. at 7
`
`(emphasis added). See also Sony Corp. of Am. V. Network-1 Techs., Inc., Case
`
`CBM2015-00078 slip op. at 12 (PTAB July 1, 2015) (Paper 7) (“Petitioner’s
`
`position, in essence, would mean that any patent claiming something that can be
`
`used in connection with a financial service (e.g., an Ethernet cable, a generic
`
`computer monitor, or even a ballpoint pen) would be eligible for covered business
`
`method patent review, regardless of what the patent claims.”); Sega of Am., Inc. v.
`
`Uniloc USA, Inc., Case CBM2014-00183, slip op. at 11–13 (PTAB Mar. 10, 2015)
`
`(Paper 11) (claims were “directed to technology that restricts the use of software”
`
`where the software had “no particular relationship to a financial product or
`
`service”).
`
`Accordingly, ServiceNow has not shown that the petitioned claims are
`
`drawn to a “financial product or service,” and the Board should deny the Petition.
`
`
`
`11
`
`
`
`IV. RESPONSE TO SERVICENOW’S CLAIM CONSTRUCTIONS
`Even if one could overlook the absence of a “financial product or service” in
`
`the petitioned claims, CBM review would still remain unavailable because
`
`“technological” inventions are excluded from the scope of CBM review. 37 C.F.R.
`
`§ 42.301(b). Before analyzing whether the claimed invention is “technological,”
`
`as discussed infra in Section V, BMC addresses ServiceNow’s proposed claim
`
`constructions.
`
`“license certificate”
`
`A.
`ServiceNow proposes that the term “license certificate” means “information
`
`relating to the right to deploy software.” (Pet. at 16). While BMC reserves the
`
`right to contest ServiceNow’s construction, BMC does not dispute ServiceNow’s
`
`proposed construction for the purpose of this preliminary response.
`
`“model” and “modeling”
`
`B.
`ServiceNow proposes that the term “model” means “an organized collection
`
`of information about an object.” (Pet. at 18). ServiceNow further proposes that
`
`the term “modeling” means “creating a model.” (Id.). While BMC reserves the
`
`right to contest ServiceNow’s construction, BMC does not dispute ServiceNow’s
`
`proposed construction for the purpose of this preliminary response.
`
`
`
`12
`
`
`
`V.
`
`SERVICENOW HAS NOT SHOWN THAT THE PETITIONED
`CLAIMS ARE ELIGIBLE FOR CBM REVIEW AS NOT A
`“TECHNOLOGICAL” INVENTION
`
`The term “covered business method patent” by definition excludes “patents
`
`for technological inventions.” 37 C.F.R § 42.301(a) (emphasis added). To
`
`determine whether a patent is for a technological invention, the Board 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).
`
`Here, the petitioned claims recite technological features of a computer-
`
`implemented method and system for software compliance where a modeled
`
`deployment of a software product is stored in a configuration management
`
`database (CMDB) by storing software product information and software license
`
`contract information as a first and second configuration item in the CMDB,
`
`respectively, and where a second model of the license contract is stored in a license
`
`database by generating a license certificate. ’093 at Claim 1. The claims require
`
`evaluating the deployment for compliance with the contract by “connecting and
`
`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.” Id. The petitioned claims
`
`
`
`13
`
`
`
`recite technological features and solve a technical problem, not a financial or
`
`business problem.
`
`The petitioned claims solve a technical problem related to efficiently and
`
`reliably analyzing deployed software (e.g. software that has been installed on
`
`computers in an enterprise) against available license rights and generating
`
`exception indications if the deployment is non-compliant. Ex. 1001, ’093 at 2:11-
`
`41. This technical problem is one of software asset management which “is a core
`
`component of an overall asset management policy” and where “[c]onventional
`
`CMDBs [did] not provide adequate capability for that [sic] an enterprise is in
`
`compliance with the terms of its software license contracts.” Ex. 1001, ’093 at
`
`1:49-51; 2:6-8.
`
`ServiceNow’s only argument that the claims are not directed to a
`
`“technological invention” is that “a CMDB could consist of paper forms or a set of
`
`spreadsheets,” and that the claims “[r]ecite the use of known prior art technology
`
`to accomplish a process or method” because the method and system can be
`
`implemented on standard computing hardware. Petition at 14-18. The Petition
`
`provides only conclusory statements in the relevant section. See Section of
`
`Petition at 11-18 (entitled, “Technological Invention” Prong”).
`
`Each petitioned claim includes at least two “technological features” that
`
`ServiceNow does not meaningfully address or identify in any prior art. First, each
`
`
`
`14
`
`
`
`petitioned
`
`independent claim
`
`requires “generating a
`
`license certificate
`
`corresponding to the software license contract and storing the license certificate.”
`
`Ex. 1001, ’093 at Claim 1 (emphasis added); Claim 16 (referring to the method of
`
`Claim 1). For example, “[a]fter any new license types are created to handle the
`
`terms of the new software contracts terms, license certificates may be created . . . ,
`
`to link software contracts to CIs. A license certificate indicates the right to deploy
`
`software in the environment managed by the CMDB server 110.” Ex. 1001, ’093
`
`at 8:58-63. ServiceNow does not meaningfully address the license certificate
`
`limitation or show that it existed in the prior art. See Petition at 15 (discussing
`
`step 1[c]).
`
`Second, each petitioned independent claim requires “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.” Ex. 1001, 093 at Claim 1; Claim 16 (referring to
`
`the method of Claim 1). ServiceNow does not meaningfully address this language
`
`or show any teaching of this feature in any prior art. Instead, ServiceNow
`
`concludes that the step can be “carried out using generic server hardware,” even
`
`though “connecting” a license certificate with a second configuration item and
`
`“comparing” a license certificate with a first configuration item require
`
`
`
`15
`
`
`
`particularized data structures and processes that are not known in the prior art or a
`
`part of generic server hardware. Petition at 16.
`
`Thus, ServiceNow fails to establish that the petitioned claims are not
`
`directed to a “technological invention.” Epsilon is in accord. Epsilon Data
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`Management, LLC v. RPost Communications, CBM2014-00017, Paper 21 (Apr.
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`22, 2014). There, the Board dismissed a CBM petition after finding that the
`
`petitioner had not shown that the claimed invention was not directed to a
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`technological invention. More specifically, although the Board found that the
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`claimed invention was directed to a well-known concept, the petitioner failed to
`
`present persuasive evidence that one step of the claimed method was known in the
`
`prior art. Id. at 8.
`
`Likewise, the Board recently denied a CBM petition because the
`
`“Petitioner’s analysis regarding whether the claimed subject matter of the
`
`[petitioned] Patent, as a whole, recites a technological feature that is novel and
`
`unobvious over the prior art is conclusory and fails to address . . . technical
`
`features.” Apple, Inc. v. ContentGuard Holdings, Inc., CBM2015-00046, Paper 12
`
`(June 3, 2015) (“ContentGuard”) at 10.
`
`ServiceNow presents no evidence that the technological features discussed
`
`above existed in the prior art. The technological features addressed above are
`
`interrelated, novel technical features of the software compliance method and
`
`
`
`16
`
`
`
`system of the claimed invention. For at least this reason, ServiceNow has not
`
`carried its burden to show the claimed invention is not a “technological invention,”
`
`and the Petition should be denied. Id.; Epsilon at 8.
`
`In addition, ServiceNow’s Petition should be denied because it fails to show
`
`that the claims are not drawn to solving a technical problem using a technical
`
`solution. GSI Commerce Solutions, Inc. v. Lakshmi Arunachalam, CBM2014-
`
`00101, Paper 10 (Oct. 7, 2014) at 11 (denying CBM petition because Petitioner
`
`addressed “only part of the analysis” and did not persuasively show that the claims
`
`were not “drawn to a technical problem using a technical solution”); ContentGuard
`
`at 10-11. ServiceNow’s hand-waving that the claims recite “generic” computer
`
`technologies (Petition at 15-17), without any specific showing of how the claimed
`
`inventions allegedly do not solve a technical problem using a technical solution
`
`and/or what alleged business or financial problem the claimed inventions allegedly
`
`solve, does not carry its burden. GSI at 11; ContentGuard at 10-11. For this
`
`additional reason, the Petition should be dismissed.
`
`ServiceNow’s Petition should also be denied because it does not address the
`
`claim elements in combination with each other. Epsilon at 9 (denying petition
`
`because it “failed to demonstrate that the use of the electronic message systems,
`
`per the claimed processes, only would achieve the normal, expected, or predictable
`
`result of the combination.”). Even if ServiceNow meaningfully addressed the
`
`
`
`17
`
`
`
`claim language in its entirety, which it does not, ServiceNow makes no showing
`
`that the patents are devoid of inventiveness “as an ordered combination” when
`
`considered alongside other limitations recited by the claims. Cal. Institute of Tech.
`
`v. Hughes Commcn’s Inc., 2014 U.S. Dist. LEXIS 156763, *10 (C.D. Cal. Nov. 3,
`
`2014) (“When viewing claim elements as an ordered combination, the court should
`
`not ignore the presence of any element, even if the element, viewed separately, is
`
`abstract.”); DDR (“[T]he creation of new compositions and products based on
`
`combining elements from different sources has long been a basis for patentable
`
`inventions.”). Rather, ServiceNow discusses the CMDBs, configuration items, and
`
`known computing hardware, but it never shows that the petitioned claims as a
`
`whole were taught in the prior art by any specific reference, individually, or by
`
`specific references in combination with each other.
`
`For all of these reasons, ServiceNow has not met its burden of showing that
`
`the petitioned claims are not drawn to a “technological invention,” and the Petition
`
`should be denied.
`
`VI. SERVICENOW HAS NOT SHOWN A LIKELIHOOD THAT IT
`WILL PREVAIL ON ITS SECTION 101 CHALLENGE
`
`Even if one were to overlook ServiceNow’s failure to show that the
`
`petitioned claims are drawn to a “financial product or service” and do not cover a
`
`“technological invention,” ServiceNow bears the burden of showing that it is more
`
`
`
`18
`
`
`
`likely than not that it will prevail on its Section 101 challenge, which it has not
`
`done. 35 U.S.C. § 324(a).
`
`Challenges under 35 U.S.C. § 101 are analyzed under a two-step test. First,
`
`one
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