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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SERVICENOW, INC.,
`Petitioner
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`v.
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`BMC SOFTWARE, INC.,
`Patent Owner
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`Case IPR2015-01176
`Patent 5,978,594
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`PETITIONER’S LIST OF PROPOSED MOTIONS
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`Petitioner’s List of Proposed Motions
`IPR2015-01176
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`Pursuant to the Patent Trial and Appeal Board instituting trial on
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`November 16, 2015, and in advance of the initial conference call scheduled
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`for December 18, 2015, Petitioner ServiceNow, Inc. hereby discloses the
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`following
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`regarding proposed motions
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`in
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`the above-captioned
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`IPR
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`proceeding:
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`Pursuant to 37 C.F.R. § 42.123(a), Petitioner requests authorization to
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`file a motion to submit supplemental information with respect to the Coffin1
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`and Inside Macintosh2 prior art references submitted with the petition for inter
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`partes review. The patent owner has objected to the admissibility of these
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`references as, among other things, lacking authentication and containing
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`hearsay, suggesting that the Petitioner’s record evidence is insufficient to
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`show that Coffin and Inside Macintosh qualify as prior art. The Petitioner
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`believes that the patent owner’s objections are without basis, but nevertheless,
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`the Petitioner requests authorization to bring a motion to submit additional
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`evidence that would remove any alleged evidentiary defect regarding the prior
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`art status of these references. The supplemental information will include
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`1 Stephen Coffin, UNIX System V, Release 4: The Complete Reference (1990)
`(“Coffin”) (Ex. 1004).
`2 Inside Macintosh: Files, Apple Computer, Inc. (1992) (“Inside Macintosh”)
`(Ex. 1005).
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`1
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`Petitioner’s List of Proposed Motions
`IPR2015-01176
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`date-stamped copies of excerpts of Coffin and Inside Macintosh as received
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`by the Library of Congress and an accompanying declaration regarding how
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`the Petitioner obtained those copies, as permitted by 37 C.F.R. § 42.63(a).
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`The supplemental information will be relevant to a claim for which the
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`trial has been instituted because the ground on which the Board instituted trial
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`includes the Coffin and Inside Macintosh references. (Paper 10 at 18.) The
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`request is timely because it is being made within one month of the date the
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`trial was instituted. The Board has previously authorized (and granted)
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`motions to submit supplemental information under 37 C.F.R. § 42.123(a) to
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`confirm the prior art status of references that serve as the basis of a ground of
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`unpatentability on which trial has been instituted. See, e.g., ServiceNow, Inc.
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`v. Hewlett-Packard Company, IPR2015-00523, Paper 21 at 3 (PTAB Aug. 31,
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`2015); Palo Alto Networks, Inc. v. Juniper Networks, Inc., IPR2013-00369,
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`Paper 37 at 2 (PTAB Feb. 5, 2014); Valeo N. Am., Inc. v. Magna Elecs., Inc.,
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`IPR2014-01204, Paper 26 at 2-3 (PTAB Apr. 10, 2015); Goertek, Inc. v.
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`Knowles Elecs., LLC, IPR2013-00614, Paper 25 at 2-3 (PTAB Apr. 8, 2014).
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`The Petitioner is aware of no other motions that it intends to file. The
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`Petitioner notes that the Board has authorized motions to exclude evidence,
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`motions for observations on cross-examination and motions to compel
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`Petitioner’s List of Proposed Motions
`IPR2015-01176
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`discovery. The Petitioner reserves its right to seek permission to file these or
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`additional motions as appropriate, based on the evidence or other materials
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`presented by the patent owner in this proceeding.
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`Dated: December 16, 2015
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`/Heidi Keefe/
`Heidi Keefe
`Registration No. 40,673
`Counsel for Petitioner
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`Cooley LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
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`Respectfully submitted,
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`3
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`Petitioner’s List of Proposed Motions
`IPR2015-01176
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`CERTIFICATE OF SERVICE
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`I hereby certify, pursuant to 37 C.F.R. § 42.6, that a copy of the
`attached PETITIONER’S LIST OF PROPOSED MOTIONS is being
`electronically served on the 16th day of December 2015, the same day as the
`filing of the above-identified document in the United States Patent and
`Trademark Office/Patent Trial and Appeal Board, upon counsel for the patent
`owner as follows:
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`Robert A. Cote, Reg. No. 34,570
`rcote@mckoolsmith.com
`Pierre Hubert, Reg. No. 45,826
`phubert@mckoolsmith.com
`Robert Auchter, Reg. No. 38,069
`rauchter@mckoolsmith.com
`Kevin Schubert, Reg. No. 59,232
`kschubert@mckoolsmith.com
`McKOOL SMITH, P.C.
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`/ Heidi L. Keefe /
`Heidi L. Keefe
`Reg. No. 40,673
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`
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`COOLEY LLP
`ATTN: Heidi L. Keefe
`Patent Group
`1299 Pennsylvania Ave. NW, Suite 700
`Washington, D.C. 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
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`4
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