UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`SERVICENOW, INC.
`Petitioner
`
`v.
`
`BMC SOFTWARE, INC.
`Patent Owner
`____________________
`
`
`Case IPR 2015‐01176
`
`Patent No. 5,978,594
`Filed March 6, 1997
`Issued November 2, 1999
`Title: System for managing computer resources across a distributed
`computing environment by first reading discovery information about how to
`determine system resources presence
`____________________
`
`Filed electronically via the Patent Review Processing System (PRPS) on
`February 22, 2016
`
`
`
`
`PATENT OWNER’S RESPONSE
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`
`
`

`
`
`
`I.
`II.
`
`III.
`
`IV.
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`
`
`TABLE OF CONTENTS
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`Patent Owner’s Response
`IPR2015-01176
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`Page
`
`INTRODUCTION ...............................................................................................................1
`OVERVIEW OF U.S. PATENT NO. 5,978,594. ................................................................1
`Background of the Technology ................................................................................1
`A.
`
`The
`’594 Patent
`Inventions Revolutionized Enterprise
`B.
`
`Management. ............................................................................................................3
`C.
`Overview of the Claimed Invention of the ’594 Patent ...........................................8
`
`CLAIM CONSTRUCTION ...............................................................................................12
`Claim 1 of the ’594 Patent .....................................................................................12
`A.
`
`Determine ...............................................................................................................13
`B.
`
`Discovery Information ...........................................................................................15
`C.
`
`D.
`Uninterpreted Form ................................................................................................16
`
`Interpreting the instructions and Interpretable high-level computer
`E.
`
`programming language ..........................................................................................19
`CLAIM 1 OF THE ’594 PATENT IS NOT OBVIOUS OVER THE PRIOR
`ART....................................................................................................................................20
`Legal Standards ......................................................................................................20
`A.
`
`Overview of the Alleged Prior Art .........................................................................23
`B.
`
`
`1.
`
`2.
`
`U.S. Patent No. 5,410,681 (“Jessen”) ....................................................... 23
`
`Stephen Coffin, UNIX System V, Release 4: The Complete
`Reference (1990) (“Coffin”) ..................................................................... 31
`
`C.
`
`
`D.
`
`
`
`It Would Not Have Been Obvious To A Person of Ordinary Skill
`in the Art in 1994 to Combine Jessen, Coffin and Inside Macintosh
`to Achieve the Invention of Claim 1 of the ’594 Patent ........................................32
`Jessen fails to suggest “discovery information about how to
`determine whether the resource is present on the computer system” ....................33
`
`1.
`
`The Jessen command line invocation is not “discovery
`information” because there is no teaching of commands
`that could referred to for discovering the presence of
`resources. .................................................................................................. 33
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`
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`The Jessen command line invocation is not “discovery
`information” because it does not refer to any instructions
`regarding “how to” discover the presence of resources. ........................... 36
`
`2.
`
`E.
`
`
`
`F.
`
`
`
`Jessen fails to suggest “finding, on the storage device, instructions
`that are referred to in the discovery information.” .................................................41
`Jessen in view of Coffin fails to suggest “reading, from a storage
`device . . . , discovery information.” ......................................................................41
`
`1.
`
`2.
`
`3.
`
`Jessen does not disclose “reading, from a storage device . . .
`, discovery information.” .......................................................................... 41
`
`There is no motivation to combine Coffin with Jessen. ............................ 41
`
`Jessen teaches away from the combination of Coffin and
`Jessen. ....................................................................................................... 44
`
`G.
`
`
`H.
`
`
`
`I.
`
`
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`Jessen fails to suggest “interpreting the instructions for the purpose
`of collecting data for use in determining whether the resource is
`present on the computer system.” ..........................................................................45
`Jessen fails to suggest “determining, responsive to the collected
`data, whether the resource is present on the computer system.” ...........................46
`Secondary Considerations ......................................................................................52
`
`1.
`
`2.
`
`3.
`
`4.
`
`Commercial Success ................................................................................. 52
`
`Copying ..................................................................................................... 55
`
`Praise by Others ........................................................................................ 57
`
`Long-Felt Need and Failure of Others ...................................................... 58
`
`V.
`
`CONCLUSION ..................................................................................................................60
`
`
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`ii
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`CASES
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`
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`TABLE OF AUTHORITIES
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`Patent Owner’s Response
`IPR2015-01176
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`Page(s)
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`BMC Software, Inc. v. ServiceNow, Inc.,
`No. 2:14-cv-903 (E.D. Tex.) ....................................................................................................55
`
`Dominion Dealer Solutions, LLC v. Autoalert, Inc.,
`IPR2013-00223 ........................................................................................................................23
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ...............................................................................................................21, 32
`
`Heart Failure Tech. v. Cardiokinetix, Inc.,
`IPR2013-00183 ........................................................................................................................22
`
`In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig.,
`676 F.3d 1063 (Fed. Cir. 2012)................................................................................................21
`
`In re Dow Chem. Co.,
`837 F.2d 469 (Fed. Cir. 1988)..................................................................................................21
`
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011)................................................................................................22
`
`In re Rambus, Inc.,
`694 F.3d 42 (Fed. Cir. 2012)....................................................................................................12
`
`In re Wright,
`866 F.2d 422 (Fed. Cir. 1989)..................................................................................................21
`
`Intri-Plex Techs. v. St. Gobain,
`IPR2014-00309 ........................................................................................................................21
`
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) ...........................................................................................................22, 32
`
`Panduit Corp. v. Dennison Mfg. Co.,
`774 F.2d 1082 (Fed. Cir. 1985)................................................................................................21
`
`Power Integrations, Inc. v. Lee,
`
`797 F.3d 1318 (Fed. Cir. 2015) ...............................................................................................12
`
`Sony Corp. of Am. v. Network-1 Sec. Solutions, Inc.,
`IPR2013-00092 ........................................................................................................................22
`
`
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`Square, Inc. v. J. Carl Cooper,
`IPR2014-00157 ........................................................................................................................12
`
`Star Scientific, Inc. v. R.J. Reynolds Tobacco Co.,
`655 F.3d 1364 (Fed. Cir. 2011)................................................................................................22
`
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996)..................................................................................................19
`
`STATUTES
`
`35 U.S.C. § 103 ..............................................................................................................1, 20, 32, 59
`
`
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`
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`List of Exhibits
`
`Description
`
`No.
`
`2022 Declaration of Dr. Ben Bederson
`
`2023 Excerpt from Webster’s II New College Dictionary, 2001, 1999, 1995
`
`2024 Excerpt from Microsoft Press Computer Dictionary, 2d Ed., 1994
`
`
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`v
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`I.
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`Patent Owner’s Response
`IPR2015-01176
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`
`
`INTRODUCTION
`The Board instituted inter partes review of claim 1 of U.S. Patent No.
`
`5,978,5941 over the combination of Jessen, Coffin and Inside Macintosh under 35
`
`U.S.C. § 103(a). The Board should deny the petition because the cited prior art
`
`does not teach or suggest determining whether a resource is present, discovery
`
`information, or any of the limitations of claim 1 of the ’594 patent when it is
`
`properly construed. Even if these limitations were taught or suggested by the prior
`
`art, a finding of obviousness would be improper in view of the uncontroverted
`
`evidence of the commercial success, copying, praise by others and an unsatisfied
`
`long-felt need for the inventions of the ’594 patent.
`
`II. OVERVIEW OF U.S. PATENT NO. 5,978,594.
` Background of the Technology A.
`
`
`Almost every company in the world in 1994 had to learn to cope with a
`
`distributed computing network of interconnected but geographically remote
`
`heterogeneous computers. It is very difficult to manage such a diverse and widely-
`
`dispersed network because, inter alia, servers installed in the wide area network
`
`are frequently not all of the same variety. One office may be using an IBM
`
`machine with a UNIX operating system, while another office is using a WANG
`
`
`
`1 Ex. 1001, “the ’594 patent”
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`1
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`machine with a VMS operating system. Applications present on the servers
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`throughout the network vary not only in terms of type, but also version number,
`
`and the applications present are changed frequently by users throughout the
`
`network. Failure events in such a network are usually difficult to catch until after a
`
`failure has already occurred. See Ex. 1001, 1:20–40; see Declaration of Dr. Ben
`
`Bederson, ¶¶ 23, 107.
`
`In order to manage these complex and growing computer networks,
`
`companies often relied on Information Technology (“IT”) department personnel to
`
`monitor their networks, but the sheer size and variety of the networks made manual
`
`monitoring impracticable. In an effort to address the problem, software vendors
`
`began offering “system management” software products to help administrators
`
`monitor computer networks, but the system management products could not cope
`
`with the challenges posed by the range of products in the growing networks. See
`
`Bederson Decl., ¶ 24.
`
`Prior to the inventions of the ’594 patent, there was a long felt but unsolved
`
`need for an efficient automated network management system that was less complex
`
`then existing systems but could identify new and changed resources on the network
`
`and was both easy to implement and maintained flexibility as installed applications
`
`and computers in the enterprise inevitably grew and changed. Id., 1:56-60; see
`
`Bederson Decl., ¶ 25.
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`2
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`The ’594 patent and its commercially successful commercial embodiment,
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`PATROL 2.0, satisfied that long-felt need. See Bederson Decl., ¶ 109.
`
`B.
`
`
`’594 Patent
`The
`Management.
`
`Inventions Revolutionized Enterprise
`
`The inventors of the ’594 patent were developing cutting-edge enterprise
`
`management software throughout the 1990s. In 1990, Martin Picard left Oracle
`
`Corporation and sailed from San Francisco to Sydney, Australia. He apparently
`
`kept himself occupied by inventing pioneering software innovations. See Ex.
`
`2001, Patrolling the software sea, Informatics, May 1993, at 19.
`
`Picard formed a company that became Patrol Software with two other
`
`software developers, David Bonnell and Kirill Tatarinov. BMC acquired Patrol
`
`Software in January 1994 and continued development and enhancement of the
`
`PATROL product. In June 1994, BMC announced the release of the enterprise
`
`management PATROL version 2.0.
`
` In a typical PATROL version 2.0
`
`implementation, a human operator could view a graphical user interface generated
`
`by the PATROL console program to monitor and manage various computer
`
`systems in the computer network. In order to monitor and manage various
`
`resources in a network, it is necessary to first discover what resources were present
`
`on the network.
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`A key feature of PATROL version 2.0 that is covered by the claims of the
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`’594 patent was the ability of the PATROL system to read discovery information
`
`about how to determine whether a resource is present on a computer system, find
`
`instructions in their uninterpreted form that are referred to in the discovery
`
`information, interpret those instructions to collect data for use in determining
`
`whether a resource is present on the computer system, and determine whether a
`
`resource is present in response to the collected data. See Ex. 2002, Excerpt from
`
`’594 Prosecution History, Declaration of K. Tatarinov at ¶ 6. This novel approach
`
`provided flexibility that was absent from the prior art. Administrators could, for
`
`the first time, discover disparate heterogeneous resources in an enterprise network
`
`using customized instructions as applications were installed on the network and
`
`computers in the enterprise changed. See Bederson Decl., ¶¶ 29, 114.
`
`The PATROL 2.0 product introduced the PATROL Scripting Language
`
`(“PSL”) – customizable instructions to discover resources, the use of which is
`
`demonstrated in the ’594 patent. See Ex. 1001, Figs. 6a, 6b. “PSL is a built-in
`
`application management language for writing scripts to customize PATROL.” Ex.
`
`2012 at 2. BMC recognized the PATROL product’s use of “customized modules”
`
`and “PATROL Script Language (PSL)” as a “key differentiator[]” in the
`
`marketplace. See Id. at 1-2. Independent software reviewers heralded this feature
`
`even years after PATROL 2.0’s release, noting that “[p]robably the biggest single
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`advantage of PATROL is its extensibility via an embedded authoring environment
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`based on the Patrol Script Language (PSL).” Ex. 2009, Data Management Review,
`
`June 1996. See Bederson Decl., ¶ 115. Industry analysts also praised the
`
`PATROL product, noting that:
`
`As a pioneer in the field of application management, BMC Software
`has one of the first product sets to address [Hurwitz Consulting
`Group]’s requirements for an application management infrastructure.
`BMC Software has also taken the intelligent route of designing their
`product to flexibly accommodate other software environments rather
`than attempting to define a standard to which others must adhere.
`
`Ex. 2011, Application Management: The Next Frontier
`
`in Client/Server
`
`Management, Hurwitz Consulting Group, Inc., May 1995.
`
`The importance of PSL was also recognized by BMC as being “[o]ne of the
`
`keys to PATROL’s extensibility” and capable of “managing complex management
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`scenarios not easily handled by other programming languages.” Ex. 2010 at 4; see
`
`Bederson Decl., ¶ 116. BMC relied on the flexibility of the PSL approach in
`
`comparing other solutions available from other vendors in the marketplace:
`
`Perhaps the best way to understand the benefits of PATROL’s unique
`approach is to consider the alternative approach taken by other
`vendors. With other application or database management tools, the
`knowledge about the technology is hard coded into the base product
`together with the rules for knowledge propagation, parameter
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`
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`5
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`
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`execution and application discovery. This means that each time a
`product is required to support a new technology or different
`technology, it has to be reconstructed from the ground up. This creates
`a significant task for the supplier and, for the end-user, rules out any
`opportunity for extending the product. The net result is that the
`organization ends up with only a partial solution.
`
`. . .
`
`Application discovery rules and parameters can be written using any
`language. However, BMC Software has developed a sophisticated, yet
`easy to use application management language called PATROL Script
`Language (PSL) which caters to complex management scenarios not
`easily handled by conventional programming languages.
`
`Ex. 2013 at 8.
`
`Following the release of PATROL 2.0, BMC “reported record earnings”
`
`citing “market acceptance of its PATROL open systems management software . . .
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`. .” Ex. 2003, BMC Software reports record earnings per share; strong
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`international growth and market acceptance of PATROL highlighted, Business
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`Wire, October 24, 1994, at 1. As reported by Business Wire in October of 1994,
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`“PATROL continues to show rapid market acceptance as revenue for the product
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`increased approximately 60 percent in the second quarter, compared to the first
`
`quarter of fiscal 1995. The record backlog for PATROL reflects both a strong
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`demand for the PATROL product and acceptance by customers of BMC
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`Software’s comprehensive strategy for managing, monitoring and increasing the
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`efficiency of open systems environments.” See Id. at 2; see Bederson Decl., ¶ 117.
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`The success of the PATROL product was felt at BMC, with Max Watson, then
`
`chairman, president, and chief executive officer of BMC, explaining that:
`
`“Rapid customer acceptance of PATROL in the open systems market,
`as a product and as an underlying architecture for our client/server
`strategy, not only broadens our customer base, but also underscores
`the confidence and trust customers place in us. This confidence has
`put us on top of the competition, and we intend to stay there by
`continuing to meet and exceed customers’ expectations.”
`Id. at 2.
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`In the decades following the release of PATROL 2.0, BMC continues to
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`offer its successful PATROL line of enterprise management products utilizing the
`
`very technique claimed in the ’594 patent. (See e.g., Ex. 2004, PATROL and
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`ProactiveNet Performance Management
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`(BPPM), http://www.bmc.com/it-
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`solutions/brands/patrol-proactivenet.html (last accessed July 22, 2015)). The
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`success of BMC’s PATROL product has contributed in no small way to BMC’s
`
`evolution from a company with its primary expertise in mainframe computing to a
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`global leader in networked enterprise computing. See Ex. 2005, BMC Software
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`Acquires Patrol Software, Marks Entry Into Networked Computing, Business
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`Wire, January 17, 1994 (“The PATROL architecture is ideally suited to the
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`integration of additional data management utilities and administrative tools and
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`represents a key element in BMC Software’s strategy for expanding into
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`networked enterprise computing . . . .”)).
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`
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` Overview of the Claimed Invention of the ’594 Patent C.
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`Innovations underlying the success of the Patrol 2.0 product are protected by
`
`BMC with the ’594 patent. Claim 1 is directed to a method for determining what
`
`resources are found on a computer network with interpretable high-level computer
`
`programming instructions.
`
`The claimed invention addresses problems arising during management of an
`
`enterprise with various networked computer systems. An organization might have
`
`computing resources distributed over a network, where resources such as
`
`computers and software may be located remotely from one another and may
`
`consist of many different kinds of hardware and software. In such systems, it
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`becomes a challenge to identify precisely what resources are parts of the enterprise.
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`See Bederson Decl., ¶ 26.
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`As an example, the ’594 patent describes a common enterprise setup in
`
`which a client/server network installed in remotely located regional offices
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`contains a high-capacity computer system operating as the server supporting many
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`lower-capacity desktop computers. See Ex. 1001, 1:31 – 34. The servers in such a
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`business entity are also commonly connected to one another by a higher-level
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`network known as a wide area network. See Id., 1:35 – 38. In this manner, users
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`at any location within the business entity can theoretically access resources present
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`in the company’s network regardless of where the resource is located. See Id., 1:37
`
`– 40. In such a setup, the resources that constitute the enterprise are typically not
`
`all the same and are not all located in one place, and the makeup of part or all of
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`the enterprise may be unknown. See Id., 1:42 – 54. In order to determine what
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`resources exist throughout an enterprise, the ’594 patent inventors recognized that
`
`it would be helpful to utilize a discovery process wherein one or more computers
`
`in the system act to probe the devices on the enterprise in order to determine what
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`resources exist.
`
`One challenge in performing an enterprise-wide discovery process is that the
`
`discovery system needs to know how to identify a wide variety of hardware and
`
`software resources in order to accurately describe what resources exist. See Ex.
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`1001, 1:42-54. Anticipating the types of resources that might exist is difficult to
`
`do without some allowance for customization: computers may have different
`
`hardware, different software, or even new hardware or software developed after the
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`discovery system was deployed. See Id. at 3:14-33. For example, the network
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`may contain both Windows and Unix computers that need to be identified. The
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`discovery system needs to “speak the language” of both in order to identify them,
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`and also needs to be flexible in the event that the systems have been customized
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`from their known configurations. See Bederson Decl., ¶ 28.
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`To solve these problems, the ’594 patent introduces an improved system for
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`discovery on a computer network. In particular, the ’594 patent teaches the use of
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`an “interpretable high-level computer programming language stored in its
`
`uninterpreted form” to accomplish the discovery. See Id. at 6:32-65. The
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`uninterpreted form of the programming language is sometimes stored as ASCII
`
`text in the form of a script. Id. Using a high-level interpretable programming
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`language allows the implementer to define a syntax and script program language to
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`meet their needs. See Id. at 6:51-65. Preferably, the language would be able to
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`execute external commands, access file systems, communicate information about
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`the existence and status of resources, allow the exchange of information between
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`processes, and query and update a knowledge database. Id.; see Bederson Decl., ¶¶
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`29, 107.
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`In order to run on a given system, interpretable languages need only be
`
`capable of being interpreted on that system. Languages that are not interpretable,
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`by contrast, must be compiled to machine code that is executable for a particular
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`system, which introduces compatibility issues given the different machine
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`languages that may be present on devices in the enterprise. See Bederson Decl., ¶
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`30.
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`To conduct discovery on a given system, a discovery system practicing the
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`method of Claim 1 would first read information about how to discover whether a
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`resource is present. See Ex. 1001, 9:25‐41 (Claim 1). This is referred to in the
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`claims as “discovery information.” This discovery information would contain a set
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`of
`
`instructions
`
`that are written
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`in an
`
`interpretable high-level computer
`
`programming language. Next, these instructions would be interpreted for the
`
`purpose of collecting data that the discovery system can use to determine whether a
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`resource is present on a computer system. Id.. Finally, the discovery process
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`would use the collected data to determine whether the resource is present. Id.
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`Figure 8 of
`
`the ’594 patent
`
`illustrates how one embodiment of the
`
`invention
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`performs
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`discovery
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`in
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`accordance with the above. See Id., Fig.
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`8; see Bederson Decl., ¶ 31.
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`By using the claimed method
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`throughout the enterprise, a system
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`administrator
`
`can determine what
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`resources,
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`including hardware and
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`software, are present in the network.
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`The method also has the benefit of flexibility, allowing easier customization of
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`how the discovery is being conducted by altering the scripts which are stored in an
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`uninterpreted form—thereby enabling the system administrator to discover
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`resources more quickly. See Bederson Decl., ¶ 32.
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`III. CLAIM CONSTRUCTION
`Because the ’594 patent is expired, the claims must be construed according
`
`to their ordinary meaning, as would be understood by a person of ordinary skill in
`
`the art at the time of the invention in view of the specification. In re Rambus, Inc.,
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`694 F.3d 42, 46 (Fed. Cir. 2012); Square, Inc. v. J. Carl Cooper, IPR2014-00157,
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`Paper 17 at 2 (June 23, 2014). The Board is obligated to acknowledge and
`
`evaluate the district court’s interpretation in conjunction with its determination of
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`the proper construction of the claims. See Power Integrations, Inc. v. Lee, 797 F.3d
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`1318, 1327-28 (Fed. Cir. 2015).
`
`
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` Claim 1 of the ’594 Patent A.
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`Independent Claim 1 of the ’594 patent reads:
`
`1. A method of determining whether a resource is present on a computer
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`system, comprising the steps of:
`
`(a) reading, from a storage device coupled to the computer system,
`
`discovery information about how to determine whether the resource is
`
`present on the computer system;
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`(b) finding, on the storage device, instructions that are referred to in
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`the discovery information, that are written in an interpretable high‐level
`
`computer programming language, and that are stored on the storage device
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`in their uninterpreted form;
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`(c) interpreting the instructions for the purpose of collecting data for
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`use in determining whether the resource is present on the computer system;
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`and
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`(d) determining, responsive to the collected data, whether the resource
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`is present on the computer system.
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`Ex. 1001, 9:25‐41 (Claim 1).
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` Determine B.
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`Claim 1 recites “[a] method for determining whether a resource is present on
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`a computer system.” The word “determine” (or its participle form, determining) is
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`used throughout claim 1. It also appears throughout the specification of the ’594
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`patent. See, e.g., Ex. 1001, 5:17 (“the input information used to determine whether
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`certain resources are present…”), 7:17 – 18 (“searches the knowledge database 47
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`to determine what knowledge therein will be pertinent…), 7:38 – 39 (“database
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`manager 74 determines whether the knowledge stored in the created knowledge
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`database indicates …”), and 8:26 – 27 (“command execution manager 68
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`determines that the job presented is for the purpose of monitoring a resource, …”);
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`see Bederson Decl., ¶ 35.
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`Patent Owner’s Response
`IPR2015-01176
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`Every use of “determine” in the ’594 patent is consistent with its customary
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`meaning to a person of ordinary skill in the art – To establish or ascertain
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`definitely, as after consideration, investigation or calculation. See Ex. 2022,
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`Bederson Decl., ¶ 36 and Ex. 2023, Webster’s II New College Dictionary. This is
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`also consistent with other variants of “determine” in computer science. For
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`example, “determinism” is the ability to know in advance how data will be
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`manipulated in a processing system. For example, a deterministic simulation is
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`one in which a certain input always produces the same output. See Ex. 2024,
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`Microsoft Press Computer Dictionary, 2nd Ed., 1994.
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`A person of ordinary skill in the art of computer science would not consider
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`approximation to be determination. To the contrary, something is only determined
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`if it is definitely known. Guessing and approximation, which are inherently
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`indefinite, cannot constitute determination when that term is properly construed.
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`Similarly, receiving partial information which must then undergo additional
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`processing to complete the determining step cannot constitute determination when
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`that term is properly construed. See Bederson Decl., ¶ 37.
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`Accordingly, the Board should construe “determine” as “to establish or
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`ascertain definitely.”
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` Discovery Information C.
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`Patent Owner’s Response
`IPR2015-01176
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`Claim 1(a) recites “reading, from a storage device coupled to the computer
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`system, discovery information about how to determine whether the resource is
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`present on the computer system.” With respect to the term “discovery
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`information,” the Board should construe that term as “information about how to
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`determine whether the resource is present on the computer system.”
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`In view of this interpretation, it should be noted that discovery information
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`requires information about “how to” determine whether a resource is present, and
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`requires more than simply referring to instructions that lack any description of
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`what must be done to search for a resource. This is how the phrase is used in the
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`’594 patent. For example,: “[d]iscovery information relates to which application
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`classes are desired to be searched for, and also to the names and locations of the
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`script programs required to do the searching. See Ex. 1001, 5:58‐61. Thus
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`discovery information is more than merely the names and locations of script
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`programs. See Bederson Decl., ¶ 38.
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`This clarification is also consistent with the prosecution history of the ’594
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`patent. The applicants distinguished discovery information from a Bauer
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`configuration file because a configuration file merely contains information about a
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`computer software object already known to be present on a computer system. See
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`Ex. 2008 at 6. As the applicants noted, “[t]he present invention uses this
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`information to interrogate the computer system to determine whether a computer
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`Patent Owner’s Response
`IPR2015-01176
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`resource or application is actually present on the computer system.” Id. at 7; see
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`Bederson Decl., ¶ 39.
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`In other words, discovery information must instruct how to discover a
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`resource and is therefore more than simply the location of extant script files that
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`are used to identify objects that are already known. If something is known then it
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`does not have to be discovered. See Bederson Decl., ¶ 40.
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` Uninterpreted Form D.
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`“Uninterpreted form” simply means “a form not interpreted” according to its
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`plain meaning. Petitioner’s proposed construction requiring that “uninterpreted
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`form” be restricted to “text file[s],” was rejected by the District Court in the
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`underlying litigation giving rise to this Petition. See Ex. 2006 at 61-65 (“the Court
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`does not adopt Defendant’s construction because it improperly limits the scope of
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`the claims to ‘text files.’”); see Bederson Decl., ¶¶ 41, 49.
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`Petitioner’s construction is also directly contrary to the intrinsic evidence.
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`See Ex. 2007 at ¶¶ 22-23. The ’594 patent and