Paper 13
`Trials@uspto.gov
`571-272-7822 Date: August 26, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SERVICENOW, INC.,
`Petitioner,
`
`v.
`
`HEWLETT-PACKARD CO.,
`Patent Owner.
`____________
`
`Case IPR2015-00717
`Patent 7,027,411
`____________
`
`
`Before RAMA G. ELLURU, CHRISTOPHER L. CRUMBLEY, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`CRUMBLEY, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Date: August 26, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SERVICENOW, INC.,
`Petitioner,
`
`v.
`
`HEWLETT-PACKARD CO.,
`Patent Owner.
`____________
`
`Case IPR2015-00717
`Patent 7,027,411
`____________
`
`
`Before RAMA G. ELLURU, CHRISTOPHER L. CRUMBLEY, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`CRUMBLEY, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`IPR2015-00717
`Patent 7,027,411
`
`
`I.
`
`INTRODUCTION
`
`
`
`ServiceNow, Inc. filed a Petition seeking inter partes review of claims
`
`1 and 3 of U.S. Patent No. 7,027,411 (Ex. 1001, “the ’411 patent”). Paper 1,
`
`“Pet.” The owner of the ’411 patent, Hewlett-Packard Company (“HP”), did
`
`not file a Patent Owner’s Preliminary Response.
`
`Pursuant to 35 U.S.C. § 314(a), we may not institute an inter partes
`
`review “unless the Director[1] determines that the information presented in
`
`the petition . . . and any response . . . shows that there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the
`
`claims challenged in the petition.” Upon consideration of the briefing and
`
`supporting evidence, we determine that the information presented establishes
`
`that there is a reasonable likelihood that ServiceNow would prevail with
`
`respect to claims 1 and 3 of the ’411 patent. Accordingly, we institute an
`
`inter partes review of these claims.
`
`A. The ’411 Patent
`
`The ’411 patent relates to a system and method for “mapping the
`
`topology of a network having interconnected nodes by identifying changes
`
`in the network and updating a stored network topology based on the
`
`changes.” Ex. 1001, Abstract. According to the patent, the topology of a
`
`network is a description of the network including the location of nodes on
`
`the network and the interconnections between them. Id. at 1:31–33.
`
`
`
`1 “The Board institutes the trial on behalf of the Director.” 37 C.F.R.
`§ 42.4(a).
`
`2
`
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`
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`IPR2015-00717
`Patent 7,027,411
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`Knowing the topology of a network aids in intelligent routing of data
`
`
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`packets, resulting in a reduction in network congestion. Id. at 1:29–31.
`
`The method of the ’411 patent involves compiling “data tuples” which
`
`represent information about the nodes of the network, including host
`
`identifiers, connector interfaces, and port specifications. Id. at 3:6–9. An
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`existing topology of the network is stored in a topology database, which is
`
`used to create a list of current tuples. Id. at 3:9–12. A new set of tuples is
`
`calculated using a “connection calculator,” and a “topology converter”
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`receives the new tuples, identifies changes to the topology, and updates the
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`topology database using the new tuples. Id. at 3:12–25.
`
`1. Illustrative Claim
`
`Claim 1 is the sole challenged independent claim and reads as
`
`follows:
`
`1. In a network having interconnected nodes with data tuples that
`represent nodal connections, a method for mapping a network
`topology by identifying changes between an existing topology and
`a new topology, the method comprising:
`
`creating a list of existing tuples from an existing topology
`representing nodal connections of a network at a prior time;
`
`creating a new list of a plurality of tuples for a topology of the
`network at a current time, wherein the new list of tuples
`represent nodal connections of the network at the current time,
`and wherein each of the tuples comprises a host identifier,
`interface information, and a port specification;
`
`receiving new tuples list that represent new nodal connections; and
`
`comparing the list of existing tuples with the new tuples list to
`identify changes to the topology.
`
`Id. at 13:41–59.
`
`3
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`IPR2015-00717
`Patent 7,027,411
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`2. Related Proceedings
`
`
`
`According to ServiceNow, the ’411 patent has been asserted by HP in
`
`the Northern District of California in an action captioned Hewlett‐Packard
`
`Company v. ServiceNow, Inc., Case No. 14‐CV‐00570 BLF. Pet. 1.
`
`B. The Asserted Grounds
`
`ServiceNow asserts the following grounds of unpatentability:
`
`1. Whether claims 1 and 3 are unpatentable under 35 U.S.C. § 103 as
`having been obvious over Jones.2
`
`2. Whether claims 1 and 3 are unpatentable under 35 U.S.C. § 103 as
`having been obvious over Tonelli.3
`
`Pet. 3.
`
`ServiceNow contends that Jones is prior art to the ’411 patent under
`
`35 U.S.C. § 102(e) (pre-AIA), while Tonelli qualifies under 35 U.S.C.
`
`§ 102(b).4 Pet. 3.
`
`C. Claim Construction
`
`In an inter partes review, “[a] claim in an unexpired patent shall be
`
`given its broadest reasonable construction in light of the specification of the
`
`patent in which it appears.” 37 C.F.R. § 42.100(b); see also In re Cuozzo
`
`Speed Tech., LLC, No. 2014-1301, 2015 WL 4097949, at *7–*8 (Fed. Cir.
`
`
`
`2 U.S. Patent No. 6,701,327 (Mar. 2, 2004) (Ex. 1003).
`3 U.S. Patent No. 5,821,937 (Oct. 13, 1998) (Ex. 1004).
`4
` ServiceNow’s Petition recites 35 U.S.C. § 102(e) in connection with
`Tonelli, but this appears to be a typographical error; the explanation that
`follows (“it issued more than one year before the application filing date for
`the ’411 patent”) is pertinent to prior art status under § 102(b), not (e).
`4
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`IPR2015-00717
`Patent 7,027,411
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`July 8, 2015) (“Congress implicitly approved the broadest reasonable
`
`
`
`interpretation standard in enacting the [America Invents Act (“AIA”)],” and
`
`“the standard was properly adopted by PTO regulation”), reh’g en banc
`
`denied. Under this standard, we construe claim terms using “the broadest
`
`reasonable meaning of the words in their ordinary usage as they would be
`
`understood by one of ordinary skill in the art, taking into account whatever
`
`enlightenment by way of definitions or otherwise that may be afforded by
`
`the written description contained in the applicant’s specification.” In re
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`Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). We presume that claim terms
`
`have their ordinary and customary meaning. See In re Translogic Tech.,
`
`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary
`
`meaning is the meaning that the term would have to a person of ordinary
`
`skill in the art in question.”) (internal citation and quotation marks omitted).
`
`A patentee may rebut this presumption, however, by acting as his own
`
`lexicographer, providing a definition of the term in the specification with
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`“reasonable clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d
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`1475, 1480 (Fed. Cir. 1994).
`
`ServiceNow proffers claim constructions for three claim terms: tuple,
`
`topology, and host identifier. Pet. 8–10. Upon review of the record, we
`
`determine that only the claim term tuple requires an express construction at
`
`this stage of the proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`
`200 F.3d 795, 803 (Fed. Cir. 1999) (“only those terms need be construed that
`
`are in controversy, and only to the extent necessary to resolve the
`
`controversy.”).
`
`5
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`IPR2015-00717
`Patent 7,027,411
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`1. tuple
`
`
`
`ServiceNow contends that the specification of the ’411 patent sets
`
`forth an explicit definition of the term tuple: “As used herein, the term
`
`‘tuple’ refers to any collection of assorted data. Tuples may be used to track
`
`information about network topology by storing data from network nodes.”
`
`Pet. 8; Ex. 1001, 4:23–25. As such, ServiceNow asks that we construe tuple
`
`to mean “collection of assorted data.” Pet. 8. Upon review of the ’411
`
`patent, we agree that the specification sets forth a definition of tuple and
`
`adopt ServiceNow’s proffered construction.
`
`II. ANALYSIS OF GROUNDS
`
`A. Obviousness over Jones
`
`ServiceNow contends that claims 1 and 3 are unpatentable under
`
`35 U.S.C. § 103 as having been obvious over Jones. Pet. 15–27. The
`
`Petition sets forth where each element of the challenged claims is said to be
`
`disclosed by Jones. Id. ServiceNow also submits the Declaration of Tal
`
`Lavian, Ph.D., who testifies regarding Jones and maps the disclosure of the
`
`reference to the elements of the challenged claims. Ex. 1002 ¶¶ 39–69.
`
`Jones discloses a method “for providing a data set relating to a
`
`network by merging a first data set relating to the network at a first time and
`
`a second data set relating to the network at a [ ] second, later, time.” Ex.
`
`1003, Abstract. The first data set is acquired by interrogating the network to
`
`obtain information about the devices within the network and the links
`
`between them. Id. at 3:28–38. The interrogation results in information such
`
`as the unique MAC number of the device, port information about the device,
`
`6
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`IPR2015-00717
`Patent 7,027,411
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`and links between the devices. Id. Once two interrogations are performed at
`
`
`
`different times, resulting in a first and second data set, the information is
`
`merged to update the first data set to include additional information present
`
`in the second data set. Id. at 2:12–15, 2:30–35.
`
`Dr. Lavian concedes that while Jones discusses the types of data
`
`present in the first data set, it does not disclose explicitly the content of the
`
`second data set. Ex. 1002 ¶ 53. According to Dr. Lavian, however, a person
`
`of ordinary skill in the art would have understood that the second data set of
`
`Jones is created using the same interrogation process as the first data set, and
`
`therefore, would contain the same categories of information. Id.
`
`ServiceNow contends that Jones teaches or suggests all elements of
`
`claims 1 and 3. For example, with respect to claim 1, ServiceNow argues
`
`that the set of existing tuples representing nodal connections is met by
`
`Jones’ first data set, which contains information on the devices in the
`
`network as well as the links between them. Pet. 17–18. The Petition further
`
`asserts that Jones’ second data set, which comprises host identifiers (the
`
`MAC numbers of the devices), interface information (how the devices are
`
`connected), and port specifications (how many ports the devices have)
`
`teaches the “new list of a plurality of tuples” limitation of claim 1. Id. at 19–
`
`24. As for claim 3’s additional limitation of “taking action on the changes to
`
`the topology,” ServiceNow asserts that Jones discloses updating the first
`
`data set to incorporate data from the second data set. Id. at 27.
`
`ServiceNow’s analysis of how the elements of the challenged claims
`
`are disclosed by Jones is persuasive at this stage of the proceeding. We,
`
`therefore, conclude that there is a reasonable likelihood that ServiceNow
`
`7
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`IPR2015-00717
`Patent 7,027,411
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`will prevail in showing that claims 1 and 3 would have been obvious over
`
`
`
`Jones, and institute trial on this ground.
`
`B. Obviousness over Tonelli
`
`ServiceNow contends that claims 1 and 3 are unpatentable under
`
`35 U.S.C. § 103 as having been obvious over Tonelli. Pet. 28–44. The
`
`Petition sets forth where each element of the challenged claims is said to be
`
`disclosed by Tonelli. Id. Dr. Lavian testifies regarding Tonelli and maps
`
`the disclosure of the reference to the elements of the challenged claims. Ex.
`
`1002 ¶¶ 70–101.
`
`Tonelli discloses a method for auditing a network using “soft probes
`
`to discover topology, host and interface information on devices in the
`
`network.” Ex. 1004, 2:24–27. The probe is an SNMP probe that provides
`
`information on devices such as servers, personal computers, routers, and
`
`switches on the network, and obtains IP and MAC address information. Id.
`
`at 19:9–16, 19:21–40. The information obtained by the probe is
`
`consolidated and displayed on an information screen, as depicted in Figure
`
`51 below:
`
`8
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`IPR2015-00717
`Patent 7,027,411
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`
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`Figure 51 depicts tree list 554 which displays the discovered network
`
`configuration including MAC address 594, device type 596, host name 598,
`
`and IP address 600.
`
`
`
`Tonelli discloses that, typically, other information about the network,
`
`such as connection media type and port assignments, will need to be input
`
`manually by a network engineer. Id. at 20:60–65. The resulting network
`
`configuration can be compared with a previously generated network
`
`configuration, and the system flags devices not found in the prior
`
`configuration. Id. at 22:5–25.
`
`Dr. Lavian testifies that Tonelli does not disclose explicitly the
`
`process by which the second network configuration is generated; however,
`
`he states that a person of ordinary skill in the art would have understood that
`
`it “simply involves repeating the same process used to create” the first set.
`
`Ex. 1002 ¶ 87.
`
`9
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`IPR2015-00717
`Patent 7,027,411
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`
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`ServiceNow contends that Tonelli teaches or suggests all elements of
`
`claims 1 and 3. For example, with respect to claim 1, ServiceNow argues
`
`that the “set of existing tuples” is met by the combination of information
`
`automatically obtained by the probe, as supplemented by information
`
`entered manually by a network engineer. Pet. 33. According to
`
`ServiceNow, claim 1 does not specify that the set of tuples must be
`
`generated by computer, and therefore encompasses “creating a list of
`
`existing tuples through automatic processes, manual actions by a network
`
`engineer, or through some combination of both.” Id. (internal quotations
`
`omitted).
`
`According to ServiceNow, the “new list of a plurality of tuples”
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`limitation of claim 1 is met by Tonelli’s audit data created by a later audit of
`
`the network. Id. at 36. This audit is said to comprise host identifiers (the IP
`
`and MAC addresses of the devices), interface information (Tonelli explicitly
`
`recites “interface information”), and port specifications (manually entered
`
`port assignments). Id. at 38–40. As for claim 3’s additional limitation of
`
`“taking action on the changes to the topology,” ServiceNow asserts that
`
`Tonelli discloses flagging devices found in a second audit but not found in a
`
`prior design sheet. Id. at 43.
`
`ServiceNow’s analysis of how the elements of the challenged claims
`
`are disclosed by Tonelli is persuasive at this stage of the proceeding. We,
`
`therefore, conclude that there is a reasonable likelihood that ServiceNow
`
`will prevail in showing that claims 1 and 3 would have been obvious over
`
`Tonelli, and institute trial on this ground.
`
`10
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`IPR2015-00717
`Patent 7,027,411
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`III. CONCLUSION
`
`
`
`For the forgoing reasons, we determine that the information presented
`
`in the Petition establishes that there is a reasonable likelihood that
`
`ServiceNow would prevail with respect to claims 1 and 3 of the ’411 patent.
`
`At this stage of the proceeding, the Board has not made a final
`
`determination as to the patentability of any challenged claim.
`
`IV. ORDER
`
`Accordingly, it is
`
`ORDERED that pursuant to 35 U.S.C. § 314 and 37 C.F.R. § 42.4, an
`
`inter partes review is hereby instituted as to claims 1 and 3 of the ’411
`
`patent on the following grounds:
`
`1. Whether claims 1 and 3 are unpatentable under 35 U.S.C. § 103 as
`having been obvious over Jones.
`
`2. Whether claims 1 and 3 are unpatentable under 35 U.S.C. § 103 as
`having been obvious over Tonelli.
`
`FURTHER ORDERED that no other ground of unpatentability
`
`alleged in the Petition for any claim is authorized for this inter partes
`
`review;
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(d) and
`
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial, the trial
`
`commencing on the entry date of this Decision.
`
`
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`11
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`IPR2015-00717
`Patent 7,027,411
`
`FOR PETITIONER:
`
`Heidi L. Keefe
`Andrew C. Mace
`Phillip Morton
`Mark Weinstein
`Cooley LLP
`hkeefe@cooley.com
`amace@cooley.com
`pmorton@cooley.com
`mweinstein@cooley.com
`zpatdcdocketing@cooley.com
`
`
`
`FOR PATENT OWNER:
`
`Joseph Haag
`Evelyn Mak
`Wilmer Cutler Pickering Hale and Dorr LLP
`joseph.haag@wilmerhale.com
`Evelyn.Mak@wilmerhale.com
`
`
`
`12
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