Case 2:14-cv-00903-JRG Document 131 Filed 08/13/15 Page 1 of 123 PageID #: 6479
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`Civil Action No. 2:14-CV-903-JRG
`
`§§§§§§§§§§§
`
`BMC SOFTWARE, INC.,
`
`Plaintiff,
`
`v.
`
`SERVICENOW, INC.,
`
`
`
`Defendant.
`
`MEMORANDUM OPINION AND ORDER
`
`On July 10, 2015, the Court held a hearing to determine the proper construction of the
`
`disputed claim terms in United States Patent Nos. 5,978,594 (“the ’594 Patent”), 6,816,898 (“the
`
`’898 Patent”), 6,895,586 (“the ’586 Patent”), 7,062,683 (“the ’683 Patent”), 7,617,073 (“the ’073
`
`Patent”), 8,646,093 (“the ’093 Patent”), and 8,674,992 (“the ’992 Patent”) (collectively, the
`
`“Asserted Patents”). After considering the arguments made by the parties at the hearing and in
`
`the parties’ claim construction briefing (Dkt. Nos. 99, 106, and 108), the Court issues this Claim
`
`Construction Memorandum and Order.
`
`(cid:3)
`(cid:3)
`
`(cid:3)
`
`Page 1 of 123(cid:3)
`(cid:3)
`
`

`
`Case 2:14-cv-00903-JRG Document 131 Filed 08/13/15 Page 91 of 123 PageID #: 6569
`
`term to encompass any “condition,” as Plaintiff argues. (Dkt. No. 99 at 24.) As discussed above,
`
`the intrinsic evidence indicates that an “exception indication” provides an “indication of a non-
`
`compliance condition or an unresolved connection.” Accordingly, the Court does not adopt
`
`Defendant’s construction.
`
`
`
`c) Court’s Construction
`
`In light of the evidence presented by the parties, the Court construes the term “an
`
`exception indication” to mean “indication of a non-compliance condition or an unresolved
`
`connection.”
`
`F. The ’073 Patent
`
`The parties’ dispute focuses on the meaning and scope of three terms/phrases in the ’073
`
`Patent.
`
`
`
`Disputed Term
`“display the health
`status of the IT
`component by
`showing a first
`indicator for the IT
`component and a
`second indicator for
`the at least one IT
`subcomponent”
`
`1. “wherein the first and second indicator are each separately visible at
`the same time on a single display window of a display unit”
`
`Plaintiff’s Proposal
`This phrase should be construed
`according to the meaning of the
`terms therein (see “IT
`subcomponent”) and otherwise
`according to plain meaning
`
`Defendant’s Proposal
`“show a first indicator for the IT
`component, and a second indicator for
`the at least one IT subcomponent, to
`display the health status of the IT
`component. The indicators are
`displayed via a single act of rendering,
`displaying both component and
`subcomponent health status indicators
`without requiring the user to perform
`any affirmative action, so that the first
`and second indicator are each
`separately visible at the same time on a
`single display window of a display
`unit”
`
`a) The Parties’ Position
`
`The parties dispute whether the phrase “display the health status of the IT component by
`
`showing a first indicator for the IT component and a second indicator for the at least one IT
`
` 
` 
`
` 
`
`Page 91 of 123 
` 
`
`

`
`Case 2:14-cv-00903-JRG Document 131 Filed 08/13/15 Page 92 of 123 PageID #: 6570
`
`subcomponent” requires construction. Plaintiff contends that Defendant’s construction must be
`
`rejected as unintelligible. (Dkt. 99 at 20–21.) Defendant responds that during prosecution of the
`
`’073 Patent, the patentees made clear statements in order to overcome the prior art. (Dkt. No.
`
`106 at 28) (citing Dkt. No. 106-17 at 12). Defendant argues that the patentee must be held to
`
`their representations. (Dkt. No. 106 at 29.) Defendant further argues that a skilled artisan would
`
`have relied on these statements in ascertaining the claim scope. (Id.)
`
`Plaintiff replies that there is no clear and unambiguous statement of narrowing scope.
`
`(Dkt. No. 108 at 10.) Plaintiff contends that Defendant misreads the prosecution history. (Id.)
`
`Plaintiff argues that the applicant explained that a difference with the prior art reference was that
`
`“[the prior art] explicitly teaches that the user must navigate through plural windows.” (Id.)
`
`According to Plaintiff, there is no clear and unambiguous disavowal. (Id.)
`
`For the following reasons, the Court finds that the phrase “wherein the first and second
`
`indicator are each separately visible at the same time on a single display window of a
`
`display unit” should be construed to mean “wherein the first and second indicator are each
`
`separately visible at the same time on a single display window of a display unit without
`
`requiring the user to perform any affirmative action (i.e., ‘navigate’).”
`
`
`
`b) Analysis
`
`As an initial matter, the parties presented the phrase “display the health status of the IT
`
`component by showing a first indicator for the IT component and a second indicator for the at
`
`least one IT subcomponent” for construction. The Court finds that the parties’ dispute is
`
`properly resolved by construing the phrase “wherein the first and second indicator are each
`
`separately visible at the same time on a single display window of a display unit,” which appears
`
`in claim 1 of the ’073 Patent. The Court further finds that the claims language is unambiguous
`
` 
` 
`
` 
`
`Page 92 of 123 
` 
`
`

`
`Case 2:14-cv-00903-JRG Document 131 Filed 08/13/15 Page 93 of 123 PageID #: 6571
`
`and easily understandable by a jury. Thus, the only issue before the Court is whether the
`
`intrinsic evidence indicates that the patentees further limited claim 1. The Court finds that the
`
`patentees did further limit claim 1 by amending claim 13 as follows:
`
`
`(Dkt. 106-16 at 7 (1/12/09 Office Action Response)) (highlighting added).12 As indicated, the
`
`patentees amended claim 13 to include “wherein the first and second indicator are each
`
`separately visible at the same time on a single display window of a display unit.” Regarding this
`
`amendment and the prior art, the patentees argued the following:
`
`                                                            
`12  Pending claim 13 referenced in the passage above ultimately issued as claim 1. 
`Page 93 of 123 
` 
`
` 
` 
`
` 
`
`

`
`Case 2:14-cv-00903-JRG Document 131 Filed 08/13/15 Page 94 of 123 PageID #: 6572
`
`
`
`(Dkt. 106-16 at 12 (1/12/09 Office Action Response)) (highlighting added). As indicated, the
`
`patentees distinguished the claims form the prior art by arguing that the prior art required a user
`
`to “drill down to the subcomponent level” and “navigate to a second screen.” Id. The patentees
`
`contrasted this with the amended claims that “provide the health status of an IT component and a
`
`subcomponent via a single act of rendering – displaying both component and subcomponent
`
`health status indicators without requiring the user to perform an affirmative action i.e.
`
`‘navigate’.” Id. (emphasis in original). Accordingly, a person of ordinary skill in the art would
`
`understand that the phrase “wherein the first and second indicator are each separately visible at
`
`the same time on a single display window of a display unit” means that the indicators are visible
`
`“without requiring the user to perform any affirmative action (i.e., ‘navigate’).”
`
`This is further confirmed by the specification that states that in the prior art “[t]he users
`
`can navigate through the representation of the systems by expanding parts of the tree or by
`
`selecting the icons representing the component they want to explore further.” ’073 Patent at
`
` 
` 
`
` 
`
`Page 94 of 123 
` 
`
`

`
`Case 2:14-cv-00903-JRG Document 131 Filed 08/13/15 Page 95 of 123 PageID #: 6573
`
`1:46–49. The specification further states that “[t]he invention remedies the disadvantages of
`
`using a single color code or indicator for providing feedback on the health/status or components
`
`in a complex Enterprise System.” Id. at 2:64–67. Thus, given the intrinsic evidence, the Court
`
`finds that the patentee clearly and unambiguously limited the phrase “wherein the first and
`
`second indicator are each separately visible at the same time on a single display window of a
`
`display unit” to “without requiring the user to perform any affirmative action (i.e., ‘navigate’).”
`
`Turning to the parties’ arguments, Plaintiff contends that there is no clear and
`
`unambiguous disavowal. Plaintiff argues that the patentees explained that a difference with the
`
`Ridalfo reference was that “Ridalfo explicitly teaches that the user must navigate through plural
`
`windows.” (Dkt. No. 108 at 10). Plaintiff’s argument fails to address the patentees’ statement of
`
`what amended claim 13 actually included, which was “displaying both component and
`
`subcomponent health status indicators without requiring the user to perform an affirmative
`
`action i.e. ‘navigate’.” Accordingly, the Court disagrees with Plaintiff’s conclusory analysis.
`
`Turning to Defendant’s construction, the Court finds that it unnecessarily rewrites the
`
`clear and unambiguous claim language. As discussed, the Court finds that the patentees did
`
`further limit claim 1, and thus, includes the limitation at the end of the unambiguous phrase.
`
`Accordingly, the Court does not adopt either party’s construction.
`
`
`
`c) Court’s Construction
`
`In light of the evidence presented by the parties, the Court construes “wherein the first
`
`and second indicator are each separately visible at the same time on a single display
`
`window of a display unit” should be construed to mean “wherein the first and second
`
`indicator are each separately visible at the same time on a single display window of a
`
`display unit without requiring the user to perform any affirmative action (i.e., ‘navigate’).”
`
` 
` 
`
` 
`
`Page 95 of 123 
` 
`
`

`
`Case 2:14-cv-00903-JRG Document 131 Filed 08/13/15 Page 96 of 123 PageID #: 6574
`
`2. “subcomponent” and “IT subcomponent”
`
`
`
`Plaintiff’s Proposal
`Disputed Term
`“subcomponent” plain meaning
`
`“IT
`subcomponent”
`
`plain meaning
`
`a) The Parties’ Position
`
`Defendant’s Proposal
`Indefinite. Alternatively, “a part or
`portion of a component”
`Indefinite. Alternatively, “a part or
`portion of an IT component”
`
`The parties dispute whether the terms “subcomponent” and “IT subcomponent” require
`
`construction. Plaintiff contends that the terms are not indefinite and should be given their plain
`
`meaning. (Dkt. No. 99 at 19.) Plaintiff argues that the “subcomponent” terms merely introduces
`
`a “sub” prefix, such that, consistent with plain meaning, a “subcomponent” is part of or has a
`
`dependency relationship with a “component.” (Id.) (citing ’073 Patent at 7:9–10, 7:16–21, 2:24–
`
`30). Plaintiff argues that the prosecution history is in full accord, describing “components” and
`
`“subcomponents” to have their “conventional” meaning, including dictionary definition. (Dkt.
`
`No. 99 at 20) (citing Dkt. No. 99-11 at 13 (6/5/08 Office Action Response)). According to
`
`Plaintiff, the intrinsic evidence indicates that the term “subcomponent” is not indefinite.
`
`Regarding Defendant’s alternate construction, Plaintiff contends that it appears to apply one
`
`restrictive definition and ignores the contemplation of a dependency relationship. (Dkt. No. 99 at
`
`20.)
`
`Defendant responds that the scope of “subcomponent” was rendered unclear when the
`
`patentee responded to an objection regarding the antecedent basis for the term “IT
`
`subcomponent.” (Dkt. No. 106 at 29) (citing Dkt. 106-18 at 14 (6/5/08 Office Action
`
`Response)). Defendant argues that the patentees use of three distinct definitions with several
`
`exemplary usages clouded the term “subcomponent” with uncertainty. (Dkt. No. 106 at 30.)
`
`According to Defendant, it is unclear which definition should apply to the claimed
`
`“subcomponent.” (Id.) Defendant argues that these multiple definitions render the claim
`Page 96 of 123 
` 
`
` 
` 
`
` 
`
`

`
`Case 2:14-cv-00903-JRG Document 131 Filed 08/13/15 Page 97 of 123 PageID #: 6575
`
`indefinite because something that qualifies as a “subcomponent” under one definition may not
`
`qualify under either of the other two. (Id.) Defendant further contends that the patentees
`
`provided no guidance on which ones are applicable. (Id.)
`
`Plaintiff replies that the dictionary definitions provided to the examiner show a consistent
`
`meaning for the prefix “sub.” (Dkt. No. 108 at 10.) Plaintiff argues that rather than causing
`
`confusion, the definition inform a skilled artisan of the scope of asserted claims. (Id.)
`
`For the following reasons, the Court finds that the terms “subcomponent” and “IT
`
`subcomponent” are not indefinite, and should be given their plain and ordinary meaning.
`
`
`
`b) Analysis
`
`The term “subcomponent” and “IT subcomponent” appear in asserted claims 1 and 4 of
`
`the ’073 Patent. The Court finds that the term is used consistently in the claims and is intended
`
`to have the same meaning in each claim. The Court further finds that the claim language
`
`“viewed in light of the specification . . ., inform[s] those skilled in the art about the scope of the
`
`invention with reasonable certainty.” Nautilus, 134 S. Ct. at 2129. For example, the
`
`specification states that “components can be computers, computer peripherals, computer
`
`programs, networking equipment, and manufacturing equipment. Components can also be virtual
`
`components like business processes that can be combined into a business system.” ’073 Patent at
`
`1:27–31. The specification further states that “[t]he different components relate to each other in
`
`different ways. Some components are being parts of others, while some components are using
`
`the service provided by other components in some way.” Id. at 1:32–36. Thus, the Court finds
`
`that the intrinsic evidence provides a number of examples of components and possible
`
`relationships between these components, one of which is a component-subcomponent
`
`relationship.
`
` 
` 
`
` 
`
`Page 97 of 123 
` 
`
`

`
`Case 2:14-cv-00903-JRG Document 131 Filed 08/13/15 Page 98 of 123 PageID #: 6576
`
`In further describing the relationship between components, the specification states
`
`“[u]sing this technique, the health/status of a component can be completely independent from the
`
`health/status of its subcomponents or components depending from it.” Id. at 3:39–41. The
`
`specification further describes computing a “‘sub-severity’ based on the health/status of the
`
`subcomponents or the components that the component depends upon.” Id. at 3:52–54. The
`
`specification further provides one example where “both the indicator in the foreground and the
`
`indicator in the background are red, and thus the user may assess that the component
`
`ca_os@FO@biz is not healthy and at least one component depending from the component
`
`ca_os@FO@biz is unhealthy.” Id. at 4:27–32. Thus, a person of ordinary skill in the art would
`
`understand, with reasonable certainty, the scope of the terms “subcomponent” and “IT
`
`subcomponent.”
`
`The prosecution history further informs, with reasonable certainty, the scope of the terms
`
`“subcomponent” and “IT subcomponent.” Specifically, the patentees provides the following
`
`dictionary definition to the examiner:
`
`(Dkt. 106-18 at 14 (6/5/08 Office Action Response)). Contrary to Defendant’s contention, this
`
`dictionary definition is consistent with the specification’s description of subcomponents as being
`
`a subpart of a component or depending from another component. Nothing in the intrinsic
`
`
`
`records limits the recited “subcomponent” to just one subpart of the cited dictionary definition.
`Page 98 of 123 
` 
`
` 
` 
`
` 
`
`

`
`Case 2:14-cv-00903-JRG Document 131 Filed 08/13/15 Page 99 of 123 PageID #: 6577
`
`Thus, the Court disagrees with Defendant’s argument that the patentee provided no guidance on
`
`which one of the three definitions are applicable. (Dkt. No. 106 at 30.) Instead, the Court finds
`
`that the dictionary definition provided to the examiner show a consistent meaning for the prefix
`
`“sub” and informs a person of ordinary skill in the art about the scope of the asserted claims.
`
`Regarding Defendant’s alternate construction, the Court finds that it is inconsistent with
`
`the intrinsic evidence. Specifically, Defendant’s construction appears to limit the term
`
`“subcomponents” to only those components that are a part of a component and would exclude
`
`“subcomponents” that depend on another component. As discussed above, the intrinsic evidence
`
`indicates that the recited “subcomponent” includes components that are parts of other
`
`components, as well as components depending on other components. ’073 Patent at 1:32–36.
`
`
`
`c) Court’s Construction
`
`In light of the evidence presented by the parties, the Court finds that the terms
`
`“subcomponent” and “IT subcomponent” are not indefinite, and will be given their plain and
`
`ordinary meaning.
`
`
`
`Disputed Term
`“IT component
`processor”
`
`“IT
`subcomponent
`processor”
`“processor”
`
`3. “IT component processor,” “IT subcomponent processor,” and
`“processor”
`
`Plaintiff’s Proposal
`“a processor that computes the
`health status of an IT
`component”
`a processor that computes the
`health status of an IT
`subcomponent
`Plain meaning.
`
`a) The Parties’ Position
`
`Defendant’s Proposal
`plain meaning
`
`plain meaning
`
`plain meaning, which is
`“hardware and/or software for
`processing”
`
`The parties dispute whether the terms “IT component processor,” “IT subcomponent
`
` 
` 
`
` 
`
`Page 99 of 123 
` 
`
`

`
`Case 2:14-cv-00903-JRG Document 131 Filed 08/13/15 Page 100 of 123 PageID #: 6578
`
`processor,” and “processor” require construction. Plaintiff contends that its construction comes
`
`from the intrinsic record. (Dkt. No. 99 at 21.) Plaintiff argues that the claim language expressly
`
`provides that “an IT component processor” is “adapted to compute a component health status of
`
`the IT component,” and that “an IT subcomponent processor” is “adapted to compute a
`
`subcomponent health status for at least one IT subcomponent.” (Id.) (citing ’073 Patent at 7:11–
`
`15). Plaintiff argues that Defendant’s construction seeks to give an unnecessary construction to
`
`the plain meaning term “processor,” and then fails to provide a construction for the specialized
`
`term “IT component processor.” (Dkt. No. 99 at 21.) Plaintiff argues that Defendant’s approach
`
`is exactly backwards to a correct claim construction approach based on the intrinsic evidence.
`
`(Id.)
`
`Defendant responds that Plaintiff does not dispute that “processor” can be left to plain
`
`meaning, which is hardware and/or software for processing. (Dkt. No. 106 at 31.) Defendant
`
`further argues that “IT component processor” and “IT subcomponent processor” can also be left
`
`to plain meaning because Plaintiff does not show any need to construe them. (Id.)
`
`For the following reasons, the Court finds that the terms “IT component processor” and
`
`“IT subcomponent processor” should be given their plain and ordinary meaning.
`
`
`
`b) Analysis
`
`As an initial matter, the Court finds that the term “processor” is not recited by itself in the
`
`claims. Instead, the term “processor” is preceded by either “IT component” or “IT
`
`subcomponent.” Thus, the Court finds that the term “processor” should be considered with the
`
`terms “IT component processor” and “IT subcomponent processor.” The term “IT component
`
`processor” appears in claims 1, 3, 5, and 7-9 of the ’073 Patent. The Court finds that the term is
`
`used consistently in the claims and is intended to have the same meaning in each claim. The
`
` 
` 
`
` 
`
`Page 100 of 123 
` 
`
`

`
`Case 2:14-cv-00903-JRG Document 131 Filed 08/13/15 Page 101 of 123 PageID #: 6579
`
`term “IT subcomponent processor” appears in claims 1, 4, 5, and 7-9 of the ’073 Patent. The
`
`Court finds that the term is used consistently in the claims and is intended to have the same
`
`meaning in each claim.
`
`The Court further finds that the claim language itself defines the terms “IT component
`
`processor” and “IT subcomponent processor.” Specifically, claim 1 recites that the “IT
`
`component processor” is “adapted to compute a component health status of the IT component.”
`
`Likewise, claim 1 recites that the “IT subcomponent processor” is “adapted to compute a
`
`subcomponent health status for the at least one IT subcomponent.” Accordingly, the Court finds
`
`that in light of the claim language, the terms “IT component processor” and “IT subcomponent
`
`processor” should be given their plan and ordinary meaning. Indeed, Plaintiff’s construction is
`
`redundant of the claim language and would not be helpful to a jury. Likewise, the recited
`
`“processor” is “adapted to compute a health status of a component/subcomponent. Accordingly,
`
`the Court does not adopt either party’s proposal.
`
`
`
`c) Court’s Construction
`
`In light of the evidence presented by the parties, the terms “IT component processor”
`
`and “IT subcomponent processor” will be given their plain and ordinary meaning.
`
`G. The ’992 Patent
`
`The parties’ dispute focuses on the meaning and scope of four terms/phrases in the ’992
`
`Patent.
`
`
`
`Disputed Term
`“importance”
`
`1. “importance” and “importance of the corresponding service”
`
`Plaintiff’s Proposal
`plain meaning. Alternatively:
`the fact of being important, or
`the degree to which something
`is important
`
`Defendant’s Proposal
`Indefinite
`
` 
` 
`
` 
`
`Page 101 of 123 
`