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
`August 18, 2015
`
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`
`
`

`
`Table of Contents
`
`Page
`
`I.
`
`II.
`
`INTRODUCTION ...............................................................................................................1
`
`OVERVIEW OF U.S. PATENT NO. 5,978,594. ................................................................2
`
`A.
`
`B.
`
`Background of the Technology ................................................................................2
`
`The ’594 Inventors, Martin Picard, David Bonnell, and Kirill
`Tatarinov, are Pioneers in the Field of Enterprise Management. ............................3
`
`C.
`
`Overview of the Claimed Invention of the ’594 Patent ...........................................8
`
`III.
`
`RESPONSE TO SERVICENOW’S CLAIM CONSTRUCTIONS ..................................12
`
`A.
`
`B.
`
`C.
`
`D.
`
`Claim 1 of the ’594 Patent .....................................................................................13
`
`Resource .................................................................................................................14
`
`Discovery Information ...........................................................................................14
`
`Uninterpreted Form ................................................................................................16
`
`IV.
`
`THE PETITION FAILS TO MEET SERVICENOW’S BURDEN TO
`SHOW A REASONABLE LIKELIHOOD OF SUCCESS ON ITS
`INVALIDITY GROUNDS. ...............................................................................................20
`
`A.
`
`B.
`
`C.
`
`
`
`Legal Standards ......................................................................................................20
`
`Overview of the Alleged Prior Art .........................................................................23
`
`1.
`
`2.
`
`3.
`
`U.S. Patent No. 5,410,681 (“Jessen”) ....................................................... 23
`
`Stephen Coffin, UNIX System V, Release 4: The Complete
`Reference (1990) (“Coffin”) ..................................................................... 32
`
`Inside Macintosh: Files, Apple Computer, Inc. (1992)
`(“Inside Macintosh”) ................................................................................. 33
`
`At the Threshold, ServiceNow’s Petition Fails to Follow the Proper
`Legal Framework for an Obviousness Analysis, and the Board
`Should Decline to Institute Proceedings on that Basis ..........................................33
`
`i
`
`

`
`D.
`
`Jessen fails to suggest “discovery information about how to
`determine whether the resource is present on the computer system” ....................35
`
`1.
`
`2.
`
`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. .................................................................................................. 35
`
`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. ........................... 38
`
`Jessen fails to suggest “finding, on the storage device, instructions
`that are referred to in the discovery information.” .................................................43
`
`Jessen in view of Coffin fails to suggest “reading, from a storage
`device . . . , discovery information.” ......................................................................44
`
`1.
`
`2.
`
`3.
`
`Jessen does not disclose “reading, from a storage device . . .
`, discovery information.” .......................................................................... 44
`
`There is no motivation to combine Coffin with Jessen. ............................ 44
`
`Jessen teaches away from the combination of Coffin and
`Jessen. ....................................................................................................... 46
`
`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.” ..........................................................................48
`
`Jessen fails to suggest “determining, responsive to the collected
`data, whether the resource is present on the computer system.” ...........................48
`
`E.
`
`F.
`
`G.
`
`H.
`
`I.
`
`Secondary Considerations ......................................................................................53
`
`1.
`
`2.
`
`3.
`
`4.
`
`Commercial Success ................................................................................. 53
`
`Copying ..................................................................................................... 55
`
`Praise by Others ........................................................................................ 58
`
`Long-Felt Need and Failure of Others ...................................................... 59
`
`V.
`
`CONCLUSION ..................................................................................................................60
`
`
`
`ii
`
`

`
`Table of Authorities
`
`
`CASES
`BMC Software, Inc. v. ServiceNow, Inc.,
`No. 2:14-cv-903 (E.D. Tex.) ............................................................................... 55
`
`Page(s)
`
`Dominion Dealer Solutions, LLC v. Autoalert, Inc.,
`IPR2013-00223 ................................................................................................... 22
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) .......................................................................................... 20, 34
`
`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) .......................................................................... 21
`
`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) ............................................................................................ 34
`
`Panduit Corp. v. Dennison Mfg. Co.,
`774 F.2d 1082 (Fed. Cir. 1985) .......................................................................... 21
`
`
`
`iii
`
`

`
`Sony Corp. of Am. v. Network-1 Sec. Solutions, Inc.,
`IPR2013-00092 ................................................................................................... 22
`
`Square, Inc. v. J. Carl Cooper,
`IPR2014-00157 ................................................................................................... 13
`
`Star Scientific, Inc. v. R.J. Reynolds Tobacco Co.,
`655 F.3d 1364 (Fed. Cir. 2011) .......................................................................... 21
`
`Travelocity.com L.P. et al. v. Cronos Techs., LLC,
`CBM2014-00082 .................................................................................................. 2
`
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996) ............................................................................ 19
`
`STATUTES
`
`35 U.S.C. § 103 ............................................................................................ 20, 33, 34
`
`35 U.S.C. § 313 .......................................................................................................... 1
`
`35 U.S.C. §§ 314, 324 ................................................................................................ 1
`
`35 U.S.C. § 314(a) ..................................................................................................... 1
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`37 C.F.R. § 42.108(b) ................................................................................................ 1
`
`37 C.F.R. § 42.108(c) ................................................................................................. 1
`
`77 Fed. Reg. at 48,756, 48,757 (Aug. 14, 2012)........................................................ 1
`
`
`
`
`
`iv
`
`

`
`No.
`
`List of Exhibits
`
`Description
`
`2001
`
`Patrolling the software sea, Informatics, May 1993
`
`2004
`
`2002
`
`2003
`
`Excerpt from ’594 Prosecution History, Declaration of K. Tatarinov
`BMC Software reports record earnings per share; strong international
`growth and market acceptance of PATROL highlighted, Business Wire,
`October 24, 1994
`PATROL and ProactiveNet Performance Management (BPPM),
`http://www.bmc.com/it-solutions/brands/patrol-proactivenet.html (last
`accessed July 22, 2015)
`BMC Software Acquires Patrol Software, Marks Entry Into Networked
`2005
`Computing, Business Wire, January 17, 1994
`2006 August 13, 2015 Markman Order, Dkt. 131, BMC Software, Inc. v.
`ServiceNow, Inc., No. 2:14-cv-903 (E.D. Tex.)
`2007 May 29, 2015 Declaration of Dr. Ben Bederson in BMC Software, Inc. v.
`ServiceNow, Inc., No. 2:14-cv-903 (E.D. Tex.)
`2008
`’594 File History at 9/20/96 Amendment
`
`2010
`
`2009 Data Management Review, June 1996
`BMC Software Announces Major Technology Enhancements to
`PATROL, Enabling it to Manage Thousands of Distributed Servers,
`Applications and Databases, BMC Software, News Release, June 12,
`1995
`Application Management: The Next Frontier in Client/Server
`Management, Hurwitz Consulting Group, Inc., May 1995
`PATROL Information, BMC Software Fact Sheet, May 1995
`
`2011
`
`2012
`
`2013
`
`BMC Software on Application Management, BMC Software, May 1995
`
`2014
`
`’594 File History, Sept. 20, 1996 Amendment
`
`2015 U.S. Pat. No. 6,367,635 to Bauer, et al.
`ServiceNow Discovery,
`http://www.servicenow.com/products/discovery.html (last accessed July
`25, 2015).
`
`2016
`
`
`
`v
`
`

`
`2017
`
`2018
`
`ServiceNow Discovery Data Sheet, ServiceNow, 2014, available at
`https://www.servicenow.com/content/dam/servicenow
`/documents/datasheets/ds-discovery-20130103.pdf.
`ServiceNow Case Study, “We can trust our CMDB now,” available at
`http://www.servicenow.com/content/dam/servicenow/documents/case-
`studies/cs-kimberlyclark-201210.pdf
`2019 Complaint for Patent Infringement, BMC Software, Inc. v. ServiceNow,
`Inc., No. 2:14-cv-903 (E.D. Tex.)
`2020 BMC’s January 6, 2015 Infringement Contentions to ServiceNow, BMC
`Software, Inc. v. ServiceNow, Inc., No. 2:14-cv-903 (E.D. Tex.)
`David Vellante, ServiceNow: Redefining Enterprise IT Service
`Management, Wikibon, Jan. 11, 2014, available at
`http://wikibon.org/wiki/v/ServiceNow:_Redefining_Enterprise_IT_Servi
`
`
`2021
`
`
`
`
`
`vi
`
`

`
`I.
`
`INTRODUCTION
`
`Patent Owner BMC Software, Inc. (“BMC”) respectfully submits this
`
`Preliminary Response in accordance with 35 U.S.C. § 313 and 37 C.F.R. § 42.107,
`
`to the Petition for Inter Partes Review (“the Petition”) filed by ServiceNow, Inc.
`
`(“ServiceNow”) regarding claim 1 of U.S. Patent No. 5,978,594 (“the ’594
`
`patent”). BMC respectfully requests that the Board not institute inter partes
`
`review.
`
`ServiceNow bears the burden of demonstrating that there is a reasonable
`
`likelihood that at least one of the claims challenged in the Petition is unpatentable.
`
`37 C.F.R. § 42.108(c). The Board has discretion to “deny some or all grounds for
`
`unpatentability for some or all of the challenged claims.” 37 C.F.R. § 42.108(b);
`
`see 35 U.S.C. § 314(a). Although BMC is not required to file a Preliminary
`
`Response to the Petition (37 C.F.R. § 42.107(a)), BMC takes this limited
`
`opportunity to point out why the Board should exercise its discretion and deny
`
`institution of a trial.
`
`As explained in the Office Trial Practice Guide, the Board “may not
`
`authorize a trial where the information presented in the petition, taking into
`
`account any patent owner preliminary response, fails to meet the requisite standard
`
`for instituting the trial.” 77 Fed. Reg. at 48,756, 48,757 (Aug. 14, 2012); see, e.g.,
`
`35 U.S.C. §§ 314, 324. BMC respectfully submits that the deficiencies addressed
`
`
`
`1
`
`

`
`herein preclude trial on any grounds asserted in the Petition.1
`
`II. OVERVIEW OF U.S. PATENT NO. 5,978,594.
`A. Background of the Technology
`
`Many companies began exploring alternatives to the use of mainframe or
`
`“mini” computers by 1990. Among other things, many companies moved to the
`
`use of “client/server” computer networks. In such situations, a “server” computer
`
`would run various applications or maintain databases that were accessible to
`
`“client” computers in the network. As the use of different computers, operating
`
`software, applications, and databases grew, so did the number of computers in the
`
`network, including both servers and clients.
`
`To manage these complex and growing computer networks, companies often
`
`relied on Information Technology (“IT”) department personnel to monitor their
`
`networks. Such personnel often needed to personally check on a server or client to
`
`see if it was operating properly. Because an individual administrator could only do
`
`
`
`1 It is neither possible nor necessary to fully address the numerous other
`
`deficiencies of the poorly articulated and underdeveloped grounds asserted in the
`
`Petition. See Travelocity.com L.P. et al. v. Cronos Techs., LLC, CBM2014-00082,
`
`Paper 12 at 10 (Oct. 16, 2014) (“nothing may be gleaned from the Patent Owner’s
`
`challenge or failure to challenge the grounds of unpatentability for any particular
`
`reason”).
`
`
`2
`
`

`
`so much, companies had to hire more and more personnel to handle the ever-
`
`growing, larger, and more complex networks that were developed. In response,
`
`software vendors began offering “system management” software products that
`
`could help administrators monitor computer networks. Nevertheless, these
`
`software products were unable to adequately address the problems facing
`
`administrators, and a long felt but unsolved need existed for a network
`
`management system that provided an increase in automation and efficiency for
`
`network management that was easy to implement and maintained flexibility as
`
`installed applications and computers in the enterprise grew and changed.
`
`B. The ’594 Inventors, Martin Picard, David Bonnell, and Kirill Tatarinov,
`are Pioneers in the Field of Enterprise Management.
`
`The inventors of the ’594 patent were on the front line of conquering the
`
`enterprise management issues that were facing the industry. In 1990, Martin
`
`Picard left the employment of Oracle Corporation (a major U.S. software vendor)
`
`and sailed from San Francisco to Sydney, Australia. While en route to Sydney, the
`
`initial concept of a software program to provide event-driven alerts was first
`
`formed. The basic idea for such a product came from a fishing line attached to the
`
`ship’s bell that would ring when a fish was hooked. As Picard later said in an
`
`interview, “When you are sailing, catching fish becomes an important event. I
`
`rigged up a fishing line attached to a bell, which you might call an event-driven
`
`alert. That ship’s bell was Patrol 1.0.” (Ex. 2001, Patrolling the software sea,
`
`
`
`3
`
`

`
`Informatics, May 1993, at 19).
`
`Once he arrived in Australia, Picard formed a company, which ultimately
`
`became Patrol Software, Inc., and acted as an independent Oracle consultant
`
`specializing in distributed systems. With the help of two software developers,
`
`David Bonnell and Kirill Tatarinov, Martin Picard developed a software product
`
`for “event-driven alerts.” Ultimately, Bonnell, Tatarinov, and Picard developed a
`
`software program named PATROL.
`
`In January 1994, BMC acquired Patrol Software, 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.
`
`Among other things, PATROL version 2.0 included a new feature covered
`
`by the claimed invention of the ’594 patent whereby the PATROL system could
`
`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
`
`
`
`4
`
`

`
`in determining whether a resource is present on the computer system, and
`
`determine whether a resource is present in response to the collected data. (Ex.
`
`2002, Excerpt from ’594 Prosecution History, Declaration of K. Tatarinov at ¶ 6).
`
`This approach allowed for flexibility: administrators could for the first time
`
`perform discovery of disparate resources in an enterprise network using
`
`customized instructions as applications were installed on the network and
`
`computers in the enterprise changed.
`
`The PATROL 2.0 product first introduced customizable instructions to
`
`discover resources in the form of the PATROL Scripting Language (“PSL”), the
`
`use of which is demonstrated in the ’594 patent. (’594 at 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. (Ex. 2012 at 1-2). Independent software
`
`reviewers heralded this feature even years after PATROL 2.0’s release, noting that
`
`“[p]robably the biggest single advantage of PATROL is its extensibility via an
`
`embedded authoring environment based on the Patrol Script Language (PSL).”
`
`(Ex. 2009, Data Management Review, June 1996). Industry analysts also praised
`
`the PATROL product, noting that:
`
`As a pioneer in the field of application management, BMC Software
`
`
`
`5
`
`

`
`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 the PSL approach was also recognized by BMC as being
`
`“[o]ne of the keys to PATROL’s extensibility” and capable of “managing complex
`
`management scenarios not easily handled by other programming languages.” (Ex.
`
`2010 at 4). 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
`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.
`
`
`
`. . .
`
`6
`
`

`
`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 . . .
`
`. .” (Ex. 2003, BMC Software reports record earnings per share; strong
`
`international growth and market acceptance of PATROL highlighted, Business
`
`Wire, October 24, 1994, at 1). As reported by Business Wire in October of 1994,
`
`“PATROL continues to show rapid market acceptance as revenue for the product
`
`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
`
`demand for the PATROL product and acceptance by customers of BMC
`
`Software’s comprehensive strategy for managing, monitoring and increasing the
`
`efficiency of open systems environments.” (Id. at 2). 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
`
`
`
`7
`
`

`
`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).
`
`Throughout the decades since the release of PATROL 2.0, BMC has
`
`continued to offer its successful PATROL line of enterprise management products
`
`utilizing the very technique claimed in the ’594 patent, and continues to offer
`
`PATROL to this very day. (See e.g., Ex. 2004, PATROL and ProactiveNet
`
`Performance
`
`Management
`
`(BPPM),
`
`http://www.bmc.com/it-
`
`solutions/brands/patrol-proactivenet.html (last accessed July 22, 2015)). Due in
`
`part to the success of its PATROL product, BMC was able to evolve from a
`
`company with its primary expertise in mainframe computing to a global leader in
`
`networked enterprise computing. (Ex. 2005, BMC Software Acquires Patrol
`
`Software, Marks Entry Into Networked Computing, Business Wire, January 17,
`
`1994 (“The PATROL architecture is ideally suited to the integration of additional
`
`data management utilities and administrative tools and represents a key element in
`
`BMC Software’s strategy for expanding into networked enterprise computing . . .
`
`.”)).
`
`C. Overview of the Claimed Invention of the ’594 Patent
`
`The success of the Patrol product over the years was protected by BMC in
`
`the ’594 patent. Ignoring the commercial success of the method embodied in the
`
`
`
`8
`
`

`
`’594 patent, ServiceNow’s petition challenges Claim 1 of that patent. Claim 1
`
`claims a method for discovering resources on a computer network through the use
`
`of 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
`
`becomes a challenge to identify precisely what resources are parts of the enterprise.
`
`As an example, the ’594 patent describes a common enterprise setup in which a
`
`client/server network installed in remotely located regional offices contains a high-
`
`capacity computer system operating as the server supporting many lower-capacity
`
`desktop computers. (Ex. 1001, ’594 at 1:31-34). The servers in such a business
`
`entity are also commonly connected to one another by a higher-level network
`
`known as a wide area network. (Id. at 1:35-38). In this manner, users at any
`
`location within the business entity can theoretically access resources present in the
`
`company’s network regardless of where the resource is located. (Id. at 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 the
`
`enterprise may be unknown. (Id. at 1:42-54). In order to determine what resources
`
`
`
`9
`
`

`
`exist throughout an enterprise, the ’594 patent 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 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. (Ex. 1001,
`
`’594 at 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
`
`discovery system was deployed. (Id. at 3:14-33). For example, the network may
`
`contain both Windows and Unix computers that need to be identified. The
`
`discovery system needs to “speak the language” of both in order to identify them,
`
`and also needs to be flexible in the event that the systems have been customized
`
`from their known configurations.
`
`To solve these problems, the ’594 patent introduces an improved system for
`
`discovery on a computer network. In particular, the ’594 teaches the use of an
`
`“interpretable high-level computer programming
`
`language stored
`
`in
`
`its
`
`uninterpreted form” to accomplish the discovery. (Id. at 6:32-65). The
`
`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
`
`
`
`10
`
`

`
`language allows the implementer to define a syntax and script program language to
`
`meet their needs. (Id. at 6:51-65). Preferably, the language would be able to
`
`execute external commands, access file systems, communicate information about
`
`the existence and status of resources, allow the exchange of information between
`
`processes, and query and update a knowledge database. (Id.).
`
`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,
`
`by contrast, must be compiled to machine code that is executable for a particular
`
`system, which introduces compatibility issues given the different machine
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`languages that may be present on devices in the enterprise.
`
`To conduct discovery on a given
`
`system, a discovery system practicing
`
`the method of Claim 1 would first read
`
`information about how
`
`to discover
`
`whether a resource is present. (Ex.
`
`1001, ’594 at Claim 1). This is referred
`
`to
`
`in
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`the
`
`claims
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`as
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`“discovery
`
`information.”
`
`
`
`This
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`discovery
`
`information would contain a set of
`
`instructions
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`that are written
`
`in an
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`
`
`11
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`

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`interpretable high-level computer programming language. Next, these instructions
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`would be interpreted for the purpose of collecting data that the discovery system
`
`can use to determine whether a resource is present on a computer system. (Id.).
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`Finally, the discovery process would use the collected data to determine whether
`
`the resource is present. (Id.). Figure 8 of the ’594 patent illustrates how one
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`embodiment of how the invention performs discovery in accordance with the
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`above. (Id. at Fig. 8).
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`By using the above-described method throughout the enterprise, an
`
`administrator can determine which resources, including hardware and software, are
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`present. The method also has the benefit of flexibility, allowing easier
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`customization of how the discovery is being conducted by altering the scripts
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`which are stored in an uninterpreted form—thereby enabling the administrator to
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`discover resources more quickly.
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`Ignoring secondary considerations of non-obviousness such as commercial
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`success of the method embodied in the ’594 patent, ServiceNow’s petition
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`challenges Claim 1 of that patent.
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`III. RESPONSE TO SERVICENOW’S CLAIM CONSTRUCTIONS
`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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`12
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`

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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).
`
`A. Claim 1 of the ’594 Patent
`
`Independent Claim 1 of the ’594 patent reads:
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`1. A method of determining whether a resource is present on a computer
`
`system, comprising the steps of:
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`(a) reading, from a storage device coupled to the computer system,
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`discovery information about how to determine whether the resource is
`
`present on the computer system;
`
`(b) finding, on the storage device, instructions that are referred to in
`
`the discovery information, that are written in an interpretable high‐level
`
`computer programming language, and that are stored on the storage device
`
`in their uninterpreted form;
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`(c) interpreting the instructions for the purpose of collecting data for
`
`use in determining whether the resource is present on the computer system;
`
`and
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`(d) determining, responsive to the collected data, whether the resource
`
`is present on the computer system.
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`(Ex. 1001, ’594 at 9:25‐41 (Claim 1)).
`
`
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`13
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`B. Resource
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`Claim 1 recites “[a] method for determining whether a resource is present on
`
`a computer system.” With respect to the term “resource,” BMC does not dispute
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`ServiceNow’s proposal that “resource” should “be understood as in its broad sense
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`to include, without limitation, any hardware or software including, without
`
`limitation, hardware such as computers, printers, memory, or other network
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`devices, applications such as database management systems, and logical devices
`
`such as logical disk drives or filing systems.” (Petition at 15 (quoting Ex. 1001,
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`’594 at 3:4‐9)).
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`C. Discovery Information
`
`Claim 1(a) recites “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.” With respect to the term “discovery
`
`information,” BMC does not dispute ServiceNow’s proposal that “discovery
`
`information” means “information about how to determine whether the resource is
`
`present on the computer system.” (Petition at 15-19).
`
`In view of this interpretation, it should be noted that discovery information
`
`requires information about “how to” determine whether a resource is present, and
`
`requires more than simply referring to instructions that lack any description of
`
`what must be done to search for a resource. This point is emphasized by
`
`
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`14
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`

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`ServiceNow in the Petition’s treatment of the term “discovery information.”
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`ServiceNow notes that: “[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. (’594, Ex. 1001, 5:58‐61 []).”
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`(Petition at 16 (emphasis altered)). ServiceNow also notes that discovery
`
`information should refer to