Trials@uspto.gov
`571.272.7822
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` Paper No. 10
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` Entered: November 16, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SERVICENOW, INC.,
`Petitioner,
`
`v.
`
`BMC SOFTWARE, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01176
`Patent 5,978,594
`____________
`
`
`
`Before JUSTIN T. ARBES, BRIAN P. MURPHY, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`Petitioner ServiceNow, Inc. (“ServiceNow”) filed a Petition (“Pet.”)
`(Paper 1) to institute inter partes review of claim 1 of Patent 5,978,594 (“the
`’594 patent”) (Ex. 1001) pursuant to 35 U.S.C. §§ 311–319. Patent Owner
`BMC Software, Inc. (“BMC”) filed a Preliminary Response (“Prelim.
`
`
`
`
`571.272.7822
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`
`
`
` Paper No. 10
`
` Entered: November 16, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SERVICENOW, INC.,
`Petitioner,
`
`v.
`
`BMC SOFTWARE, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01176
`Patent 5,978,594
`____________
`
`
`
`Before JUSTIN T. ARBES, BRIAN P. MURPHY, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`Petitioner ServiceNow, Inc. (“ServiceNow”) filed a Petition (“Pet.”)
`(Paper 1) to institute inter partes review of claim 1 of Patent 5,978,594 (“the
`’594 patent”) (Ex. 1001) pursuant to 35 U.S.C. §§ 311–319. Patent Owner
`BMC Software, Inc. (“BMC”) filed a Preliminary Response (“Prelim.
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`Resp.”) (Paper 9) to the Petition. We have jurisdiction under 35 U.S.C.
`§ 314.
`Under 35 U.S.C. § 314(a), the Director may not authorize an inter
`
`partes review unless the information in the petition and preliminary 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.” For the
`reasons that follow, we institute an inter partes review as to claim 1 of the
`’594 patent on the asserted ground of unpatentability.
`
`
`
`I. BACKGROUND
`
`Related Proceeding
`A.
`The parties identify the following proceeding related to the ’594
`
`patent (Pet. 1; Paper 5, 1): BMC Software, Inc. v. ServiceNow, Inc., Case
`
`No. 2:14‐CV‐00903 JRG (E.D. Tex. Sept. 23, 2014). On August 13, 2015,
`
`the U.S. District Court for the Eastern District of Texas issued a claim
`construction order in that action. See Ex. 2006.
`
`
`The ’594 Patent
`B.
`The ’594 patent is directed to managing a computer network,
`
`including “discovering which resources and applications are present on [a]
`computer system.” Ex. 1001, 1:64–2:14. The process of discovering such
`resources may utilize a “script program that will search for the particular
`resource in question.” Id. at 7:45–62. The script program can be written in
`a “high-level interpretable language” and compiled prior to execution if it
`has not previously been compiled. Id. at 7:45–8:2.
`Figure 8 of the ’594 patent is reproduced below.
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`Figure 8 illustrates an exemplary process flow for discovering resources on a
`computer system using a script program. See id. at 7:45–8:13.
`The ’594 patent issued on November 2, 1999, from an application
`filed March 6, 1997, and claims priority to a continuation application filed
`September 30, 1994. Ex. 1001, [11], [22], [63]. The ’594 patent has
`expired. Pet. 13; Prelim. Resp. 12.
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`C.
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`Claim 1
`Claim 1 of the ’594 patent recites:
`1.
`A method of determining whether a resource is present
`on a computer 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;
`(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;
`(c) interpreting the instructions for the purpose of
`collecting data for use in determining whether the resource is
`present on the computer system; and
`(d) determining, responsive to the collected data, whether
`the resource is present on the computer system.
`Ex. 1001, 9:25–41.
`
`The Prior Art
`ServiceNow relies on the following prior art:
`U.S. Patent No. 5,410,681, which is a continuation of
`application 07/795,913 filed on Nov. 20, 1991, issued Apr. 25,
`1995 (Ex. 1003, “Jessen”);1
`Stephen Coffin, UNIX SYSTEM V, RELEASE 4: THE
`COMPLETE REFERENCE 45–74, 209–52 (1990) (Ex. 1004,
`“Coffin”); and
`Apple Computer, Inc., INSIDE MACINTOSH: FILES 2-14–
`15, 2-23–24, 2-31–32, 2-38–43 (1992) (Ex. 1005, “Inside
`Macintosh”).
`
`
`D.
`
`
`
`
`1 Jessen is prior art under 35 U.S.C § 102(e). Pet. 3–4, 21–22.
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`E.
`The Asserted Ground
`ServiceNow challenges claim 1 of the ’594 patent under 35 U.S.C.
`§ 103(a) over Jessen, Coffin, and Inside Macintosh. Pet. 3–4.
`
`F.
`
`
`Claim Interpretation
`The Board interprets claims of unexpired patents using the “broadest
`reasonable construction in light of the specification of the patent in which
`[they] appear[].” 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC,
`793 F.3d 1268, 1278 (Fed. Cir. 2015). For claims of an expired patent,
`however, the Board’s claim interpretation analysis is similar to that of a
`district court. See In re Rambus Inc., 694 F.3d 42, 46 (Fed. Cir. 2012).
`Claim terms are given their plain and ordinary meaning as would be
`understood by a person of ordinary skill in the art at the time of the invention
`and in the context of the entire patent disclosure. Phillips v. AWH Corp.,
`415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “There are only two
`exceptions to this general rule: 1) when a patentee sets out a definition and
`acts as his own lexicographer, or 2) when the patentee disavows the full
`scope of a claim term either in the specification or during prosecution.”
`Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir.
`2012). We apply this standard to the claims of the expired ’594 patent.
`ServiceNow identifies three terms for construction (i.e., “resource,”
`“discovery information,” and “uninterpreted form”), Pet. 13–20, and BMC
`provides responses to each of ServiceNow’s proposed constructions. Prelim.
`Resp. 14–19. We find that, at this stage of the proceeding, we need only
`construe “resource.” See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that
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`are in controversy, and only to the extent necessary to resolve the
`controversy.”).
`The ’594 patent expressly states that the word “resource” is “intended
`in its broadest sense to include, without limitation, hardware such as
`computers, printers, memory or other network devices, applications such as
`database management systems, and logical devices such as logical disk
`drives or filing systems.” Ex. 1001, 3:4–9. Citing this express definition,
`ServiceNow proposes the following construction of “resource”: “any
`hardware or software including, without limitation, hardware such as
`computers, printers, memory, or other network devices, applications such as
`database management systems, and logical devices such as logical disk
`drives or filing systems.” Pet. 15. Because ServiceNow’s proposed
`construction is consonant with the express definition in the Specification,
`and because BMC does not dispute this proposed construction, Prelim. Resp.
`14, we adopt it for purposes of this Decision.
`
`Level of Ordinary Skill in the Art
`ServiceNow’s declarant, Mr. David Klausner, testifies that, based on
`his experience in the areas of computer networking, security, and software, a
`person of ordinary skill in the art at the time of the invention “would [have]
`possess[ed] at least a bachelor’s degree in electrical engineering or computer
`science (or equivalent degree or experience) with at least two years of
`experience in computer programming.” Ex. 1002 ¶¶ 1, 11. BMC
`acknowledges this testimony, but nonetheless characterizes Mr. Klausner’s
`statement as “conclusory” and argues the Petition itself “provides no
`discussion whatsoever about the level of ordinary skill in the art.” Prelim.
`Resp. 34 & n.2.
`
`G.
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`We are not persuaded by BMC’s argument, because ServiceNow has
`proffered sufficient evidence to establish the level of ordinary skill at this
`stage of the proceeding. Specifically, the Petition cites to and explains
`specific portions of Mr. Klausner’s declaration that support the asserted
`ground of unpatentability (see, e.g., Pet. 30–31, 31 n.3 (citing Ex. 1002 ¶ 61
`three times), and Mr. Klausner applies the level of ordinary skill stated
`above in analyzing the asserted prior art. See Ex. 1002 ¶ 12. Mr. Klausner
`also provides a detailed technology background reflecting the knowledge of
`a person of ordinary skill in the computer networking art as of September
`30, 1994, the priority date for the ’594 patent. Id. ¶¶ 13–26. We
`additionally observe BMC does not dispute Mr. Klausner’s opinion
`regarding the level of ordinary skill in the art. Therefore, based on the
`current record, we adopt the level of ordinary skill in the art identified by
`Mr. Klausner, which is consistent with the prior art of record. See Okajima
`v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can
`reflect the appropriate level of ordinary skill in the art).
`
`
`II. ANALYSIS
`In the sole asserted ground of unpatentability in this case, ServiceNow
`contends claim 1 is unpatentable over Jessen, Coffin, and Inside Macintosh
`under 35 U.S.C. § 103(a). Pet. 26–59. ServiceNow’s contentions are
`supported by the testimony of Mr. Klausner. See Ex. 1002. We now
`consider ServiceNow’s asserted ground and BMC’s arguments in its
`Preliminary Response to determine whether ServiceNow has met the
`threshold standard of 35 U.S.C. § 314(a).
`
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`A.
`
`Jessen
`Jessen “relates to remotely testing computer systems having a variety
`of hardware/software combinations.” Ex. 1003, 1:11–13. A preferred
`embodiment of Jessen is “a testing environment wherein a ‘host’ computer
`system issues commands to ‘target’ computer systems, the target computer
`systems returning the results of those operations back to the host.” Id. at
`4:56–60. As part of the testing, “tasks are described in a high level script or
`command language interpreted and executed by host machine 100,” which
`“directs target machines 121 through 125 to perform certain actions and
`respond to the host with the results of those actions.” Id. at 5:17–23. A
`“command line scheme” may be used to launch these actions, including
`invoking a script that is named in the command line. Id. at 6:54–60.
`Jessen’s preferred embodiment is implemented with Apple Macintosh
`computers. Id. at 5:3–7.
`
`Jessen also teaches the use of “[d]escriptor expressions [as] the means
`by which a script describes something that exists on a target machine.” Id.
`at 11:54–56. Examples of descriptor expressions in Jessen relate to various
`aspects of the target machine, including the type of keyboard, name of an
`active application, computer model, and size of random access memory,
`among other things. See id. at 17:27–43, 18:21–29, 18:44–53. Jessen also
`describes the use of “match” and “collect” expressions that may be used to
`return information about an item or items that have a descriptor evaluating to
`a specified value. See id. at 19:44–66, 20:38–44.
`
`Coffin
`Coffin is a textbook related to the UNIX operating system that
`describes the creation and storage of a file of commands. Ex. 1004, 73, 213.
`
`B.
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`The stored file allows for execution of a sequence of commands that is
`“identical to typing the commands directly.” Id. at 213 (emphasis omitted).
`
`Inside Macintosh
`Inside Macintosh is a reference book about Apple Macintosh
`computers that describes “AppleShare, Apple’s file-server application,
`[which] allows users to share . . . disk storage over a network.” Ex. 1005,
`2-14.
`
`C.
`
`
`D. Obviousness Based on Jessen, Coffin, and Inside Macintosh
`Claim 1 is unpatentable “if the differences between the subject matter
`[claimed] and the prior art are such that the subject matter as a whole would
`have been obvious at the time the invention was made to a person having
`ordinary skill in the art to which said subject matter pertains.” 35 U.S.C.
`§ 103(a).2 Considering ServiceNow’s obviousness analysis and BMC’s
`Preliminary Response, and based on the present record, we are satisfied
`there is a reasonable likelihood that ServiceNow would prevail in its
`assertion that claim 1 would have been obvious over the combination of
`Jessen, Coffin, and Inside Macintosh.
`
`
`
`
`
`
`
`2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the ’594
`patent has an effective filing date before the effective date of the applicable
`AIA amendments, throughout this Decision we refer to the pre-AIA versions
`of 35 U.S.C. §§ 102 and 103.
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`“discovery information about how to determine whether the
`resource is present on the computer system”
`In its obviousness analysis, ServiceNow contends Jessen’s “command
`line text used to invoke [a] script program” teaches the recited “discovery
`information about how to determine whether the resource is present on the
`computer system,” as recited in step (a) of claim 1. Pet. 30–34.
`Specifically, ServiceNow cites Jessen’s command string text, which
`“identifies the target machine ‘TargetMac’ (the ‘computer system’), and the
`name of the script program ‘Script.vu’ that will be used to determine if the
`resource is present on the target machine.” Id. at 33 (emphasis omitted); see
`
`also Ex. 1002 ¶ 66; Ex. 1003, 6:51–60 (cited at Pet. 31–33 for the same
`high‐level programming language instructions for obtaining information
`of applications running on the computer.” Pet. 33 (citing Ex. 1003, 11:19–
`28, 11:54–61, 18:51–68, 20:36–68).
`
`proposition). ServiceNow contends the referenced script program “contains
`
`about the target computer, such as how much memory it has and the names
`
`BMC argues Jessen’s “exemplary command contains no information
`regarding ‘how to’ discover the presence of resources because there is no
`teaching in Jessen of commands that could be used in the ‘Script.vu’ file to
`discover the presence of any resources.” Prelim. Resp. 35. In particular,
`BMC argues Jessen does not disclose how the target system’s agent would
`populate various data structures (i.e., “descriptors”) in the script program.
`Id.
`
`Based on the present record, we are not persuaded by BMC’s
`arguments. As we discuss in more detail below, Jessen teaches expressions
`and descriptors that can elicit resource information about a target system.
`See infra Section II.D.3. Accordingly, we are persuaded by ServiceNow that
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`a reference to a particular script file containing these instructions and
`descriptors may be regarded as the recited “discovery information” of claim
`1. In addition, the “discovery information” recitation does not require
`information about how to program the referenced script file, as BMC’s
`argument implies; rather, it only requires information about how to
`determine the presence of resources. An appropriately programmed script
`file can provide the recipe for how to make this determination. See Pet. 52–
`
`53 (quoting Ex. 1003, 19:44–48, 19:65–66), 54–55 (citing, inter alia, Ex.
`
`1002 ¶¶ 97–100). Therefore, Jessen’s teaching on referencing such a script
`file in a command line is sufficient, on the present record, to establish the
`recited “discovery information.”
`
`“instructions that are referred to in the discovery information”
`2.
`We likewise are not persuaded by BMC’s arguments related to the
`“instructions” recitation in step (b) of claim 1, which rely on the same
`arguments discussed above from step (a). See Prelim. Resp. 43–44.
`Moreover, ServiceNow quotes Jessen as teaching “[s]cript files [that]
`contain a sequence of instructions which cause actions to occur on the target
`machine for . . . checking the state of the target machine.” Pet. 44 (quoting
`7:22–28) (emphasis omitted). ServiceNow also quotes Jessen as teaching
`the instructions can be written in “a high level script or command language
`interpreted and executed by host machine 100.” Id. at 46 (quoting Ex. 1003,
`5:17–23); see also Ex. 1003, 11:19–36 (stating the script language is
`“interpretive” and provides functions “such as those used in the BASIC
`and/or C++ or other high level programming languages”). Thus,
`ServiceNow has shown sufficiently that Jessen teaches instructions written
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`in an “interpretable high-level computer programming language” and stored
`in “uninterpreted form.”
`
`“interpreting” and “determining” steps
`3.
`For “interpreting” step (c) and “determining” step (d) in claim 1,
`ServiceNow cites Jessen’s teachings on “match” and “collect” instructions
`
`that can be included in a script program. Pet. 50 (citing Ex. 1003, 19:43–
`20:35, 20:36–68), 57–59. ServiceNow contends “the ‘match’ and ‘collect’
`50 (quoting Ex. 1003, 28:24–36). More specifically, ServiceNow contends
`
`expressions cause the host to ‘request[] information from the target
`machine(s),’ which can include the ‘state of the target machine(s).’” Id. at
`
`“[m]atch expressions may be used to gather information about any item in
`the target machine with a ‘descriptor.’” Id. at 51 (citing Ex. 1003, 19:44–
`46). ServiceNow highlights Jessen’s teachings on descriptors covering
`various aspects of the target computer, including, inter alia, size of the
`random access memory, the type of keyboard, and computer model name.3
`
`Id. at 28–29 (citing Ex. 1003, 17:27–43, 18:44–47, 18:51–53). Therefore,
`
`according to ServiceNow, “[i]nterpreting the script file instructions (such as
`the ‘match’ and ‘collect’ instructions) . . . causes the host computer to collect
`state information about the target machine.” Id. at 52 (emphasis omitted).
`Furthermore, ServiceNow contends “‘determining’ for purposes of claim
`1(d) in Jessen takes place when the script interpreter, running in the host
`computer, determines what will be displayed as the output of the match
`instruction based on the information returned from the target.” Id. at 57
`(citing Ex. 1003, 20:21–24).
`
`3 In accordance with our construction above, these aspects serve as the
`recited “resources” in ServiceNow’s obviousness analysis. Pet. 28–30.
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`BMC argues “Jessen is bereft of any teaching on how to actually
`obtain the information that would be formatted by the[] particular
`descriptors” cited by ServiceNow. Prelim. Resp. 37. Similarly, BMC
`argues “Jessen does not disclose how a target system’s agent would go about
`populating the descriptors with information.” Id. at 35.
`Based on the present record, we are persuaded by ServiceNow’s
`arguments. Jessen teaches that descriptors are used in conjunction with
`“match” and “collect” expressions in scripts. See Ex. 1003, 12:9–22, 19:42–
`20:68. In turn, Jessen devotes several pages to showing how various
`permutations of descriptors would be formatted in scripts. See id. at 12:25–
`19:24. Therefore, we are persuaded by ServiceNow that these teachings
`establish that, in Jessen, instructions are interpreted “for the purpose of
`collecting data for use in determining whether the resource is present on the
`computer system” in accordance with part (c) of claim 1.
`BMC also argues “the ‘match’ and ‘collect’ expressions discussed in
`Jessen are predefined at the host application according to a heuristic
`matching algorithm.” Prelim. Resp. 39. According to BMC, “[t]his
`behavior of returning a ‘best guess’ is different than and unsuitable for”
`determining step (d) in claim 1 “because the matched data is merely an
`approximation or ‘guess’ as to what user interface objects are present on the
`target.” Id. at 52. Based on the present record, we are not persuaded that the
`heuristic nature of Jessen’s matching algorithm undermines Jessen’s
`teaching of determining the presence of a resource on a target computer.
`Even though the matching algorithm may need to be programmed with exact
`references to desired data to obtain a perfect match, see Prelim. Resp. 49–52,
`we are persuaded that Jessen nonetheless teaches that the matching
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`algorithm can be utilized to determine the presence of a resource in that
`instance.
`
`“a storage device coupled to the computer system”
`4.
`ServiceNow acknowledges “Jessen is silent on whether the ‘vu’
`command string (the ‘discovery information’) is stored on or read from ‘a
`storage device coupled to the computer system,’ as recited in claim 1(a).”
`Pet. 34 (emphasis omitted). ServiceNow therefore relies on Coffin for
`teaching that a “sequence of commands . . . can be stored in a file and
`executed from the file.” Id. at 35 (quoting Ex. 1004, 213). BMC argues
`there is no motivation to combine Coffin with Jessen because Coffin is
`directed to the UNIX operating system, whereas Jessen is directed to the
`Macintosh operating system. Prelim. Resp. 44. BMC also calls into
`question (Prelim. Resp. 45–47) ServiceNow’s assertion that Jessen’s and
`Coffin’s mutual teachings on frequent, regular, and/or repetitive commands
`supports the combination. See Pet. 36 (citing Ex. 1003, 2:34–36; Ex. 1004,
`73).
`
`Based on the current record, we are not persuaded UNIX was so
`different from the Macintosh operating system that a person of ordinary skill
`in the art would not have considered combining the teachings of Jessen and
`Coffin. In addition, we are satisfied that ServiceNow has shown at this stage
`some articulated reasoning with some rational underpinning that would
`support the legal conclusion of obviousness, see KSR Int’l Co. v. Teleflex
`Inc., 550 U.S. 398, 417–18 (2007), based on Jessen’s and Coffin’s common
`teachings on executing commands regularly and/or repetitively, and that
`storing a command string in a command file, rather than typing manually,
`would save time and avoid errors. See Pet. 36–38. This reasoning is
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`supported by the declaration of Mr. Klausner, who opines that the references
`could be combined with predictable success. See Ex. 1002 ¶¶ 70–73 (cited
`at Pet. 36–38). We are also not persuaded by BMC’s argument that Jessen’s
`“interactive window interface invocation” teaches away from the
`combination. See Prelim. Resp. 46–47. Jessen’s “mere disclosure of
`alternative designs does not teach away.” In re Fulton, 391 F.3d 1195, 1201
`(Fed. Cir. 2004). And BMC has not established Jessen criticizes, discredits,
`or otherwise discourages ServiceNow’s posited combination. See id. Thus,
`based on the current record, ServiceNow has established a sufficient
`rationale for combining Jessen and Coffin.
`Although BMC “does not contend that ‘coupled to’ requires any direct
`or local connection between the ‘computer system’ and the ‘storage
`device,’” Prelim. Resp. 33, ServiceNow cites Inside Macintosh for the
`proposition that it would have been obvious to couple the recited “storage
`device” of claim 1 to the computer system through a network connection.
`See Pet. 40–44 (citing, inter alia, Ex. 1004, 2-14). In the absence of
`argument to the contrary by BMC, and in view of the rationale set forth at
`pages 40–44 of the Petition as supported by paragraphs 78–84 of the
`Klausner Declaration, we are satisfied of a sufficient rationale for combining
`Jessen, Coffin, and Inside Macintosh to reach networked storage devices.
`
`Sufficiency of ServiceNow’s Obviousness Showing
`5.
`Under the four-factor framework for assessing obviousness in
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966), the question of
`obviousness is resolved on the basis of underlying factual determinations
`including: (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of ordinary
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`skill in the art; and (4) objective evidence of nonobviousness. In light of
`this framework, BMC contends “[ServiceNow]’s obviousness allegations
`lack the minimum factual inquiry necessary to support a conclusion of
`obviousness.” Prelim. Resp. 34.
`Our reviewing Court does not require a separate enumeration of each
`of the Graham factors in an obviousness determination as long as the record
`establishes the requisite evidence has been considered properly. See
`MySpace, Inc. v. GraphOn Corp., 672 F.3d 1250, 1263 (Fed. Cir. 2012). As
`stated above, we are able to determine the appropriate level of ordinary skill
`in the art based on the current record. See supra Section I.G. Moreover, as
`discussed in the foregoing sections, ServiceNow’s Petition includes
`sufficient analysis regarding the scope and content of Jessen, Coffin, and
`Inside Macintosh, wherein ServiceNow addresses the differences between
`the teachings of these references and the method of claim 1. Thus, we do
`not agree with BMC that the Petition should be denied based on
`“fundamental shortcomings” in ServiceNow’s analysis of these factors. See
`Prelim. Resp. 34.
`Regarding objective indicia of nonobviousness, BMC argues various
`secondary considerations demonstrate that the challenged claims would not
`have been obvious to a person of ordinary skill in the art. Prelim. Resp. 53–
`60. Specifically, BMC puts forth evidence purportedly showing commercial
`success of its PATROL product, copying by ServiceNow, praise by others,
`and long-felt need/failure of others. See id. (citing Exs. 1002, 2003, 2009–
`13, 2015–17, 2019–21).
`The issue of secondary considerations is highly fact-specific. We
`have reviewed the evidence submitted by BMC, but at this stage of the
`proceeding, the record regarding such secondary considerations is
`
`16
`
`
`
`IPR2015-01176
`Patent 5,978,594
`
`
`incomplete, and ServiceNow has not had an opportunity to respond to
`BMC’s initial evidence.4 We anticipate that secondary considerations of
`nonobviousness will be more completely evaluated in the context of a trial
`when the ultimate determination of obviousness is made. We additionally
`observe BMC has the burden to show a “nexus between the evidence and the
`merits of the claimed invention” in order for evidence of secondary
`considerations to be persuasive at trial. In re GPAC Inc., 57 F.3d 1573,
`1580 (Fed. Cir. 1995). Therefore, based on the record before us, we
`determine that BMC’s evidence of secondary considerations is insufficient
`to preclude trial.
`
`Obviousness Conclusion
`6.
`ServiceNow has demonstrated, on this record, a reasonable likelihood
`of prevailing on its assertion that claim 1 is unpatentable over the
`combination of Jessen, Coffin, and Inside Macintosh under 35 U.S.C.
`§ 103(a).
`
`
`III. CONCLUSION
`Based on the ground asserted and discussed above, ServiceNow has
`
`demonstrated a reasonable likelihood of prevailing with respect to the claim
`
`
`4 Although BMC faults ServiceNow for not putting forth evidence related to
`BMC’s objective indicia of nonobviousness from the related district court
`action, see Prelim. Resp. 34, we do not view this as a deficiency in the
`Petition. In general, BMC would first adduce such evidence in response to
`ServiceNow’s prima facie case of obviousness, as BMC has done here. Cf.
`Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1360 (Fed. Cir. 2007) (holding
`that “once a challenger has presented a prima facie case of invalidity, the
`patentee has the burden of going forward with rebuttal evidence,” but the
`burden of persuasion never shifts from the party challenging the patent).
`
`17
`
`
`
`IPR2015-01176
`Patent 5,978,594
`
`
`challenged in this Petition. At this stage of the proceeding, the Board has
`not made a final determination as to the patentability of the challenged
`claim.
`
`
`IV. ORDER
`
`Accordingly, it is
`
`ORDERED that pursuant to 35 U.S.C. § 314, inter partes review is
`
`instituted as to claim 1 of the ’594 patent on the following ground of
`unpatentability:
`
`Claim 1 of the ’594 patent as obvious over Jessen, Coffin, and Inside
`Macintosh pursuant to 35 U.S.C. § 103(a).
`FURTHER ORDERED that inter partes review is commenced on the
`
`entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
`§ 42.4, notice is hereby given of the institution of a trial; and
`
`FURTHER ORDERED that the trial is limited to the ground of
`unpatentability listed above, and no other grounds of unpatentability are
`authorized for inter partes review.
`
`18
`
`
`
`IPR2015-01176
`Patent 5,978,594
`
`
`PETITIONER:
`Heidi L. Keefe
`Phillip E. Morton
`Andrew C. Mace
`Mark R. Weinstein
`COOLEY LLP
`hkeefe@cooley.com
`pmorton@cooley.com
`amace@cooley.com
`mweinstein@cooley.com
`
`PATENT OWNER:
`
`Robert Cote
`Pierre Hubert
`Robert Auchter
`Kevin Schubert
`McKOOL SMITH, P.C.
`rcote@mckoolsmith.com
`phubert@mckoolsmith.com
`rauchter@mckoolsmith.com
`kschubert@mckoolsmith.com
`
`19
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