UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`SERVICENOW, INC.
`Petitioner
`
`
`
`v.
`
`
`
`BMC SOFTWARE, INC.
`Patent Owner
`____________________
`
`
`Case IPR 2015‐01211
`
`Patent No. 7,617,073
`Filed February 28, 2003
`Issued November 10, 2009
`Title: System and method for assessing and indicating
`the health of components
`____________________
`
`Filed electronically via the Patent Review Processing System (PRPS) on
`September 1, 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. 7,617,073 ............................................ 2
`A.
`Background of the Technology ............................................................. 2
`B.
`The ’073 Inventors, Jean-Marc Trinon and Olivier
`Pignault, were Pioneers in the Field of Enterprise
`Management .......................................................................................... 3
`BMC Today ........................................................................................... 4
`C.
`D. Overview of the Claimed Invention of the ’073 Patent ........................ 5
`III. RESPONSE
`TO
`SERVICENOW’S
`CLAIM
`CONSTRUCTIONS ...................................................................................... 11
`A.
`Claim 1 of the ’073 Patent is Representative of the Use of
`Terms for Construction ....................................................................... 12
`IT Component ...................................................................................... 13
`B.
`IT Subcomponent ................................................................................ 14
`C.
`Processor ............................................................................................. 15
`D.
`IV. THE PETITION DOES NOT SHOW A REASONABLE
`LIKELIHOOD OF SUCCESS ON
`ITS
`INVALIDITY
`GROUND ...................................................................................................... 17
`A.
`Legal Standard ..................................................................................... 17
`B.
`Overview of the Prior Art - Lewis ...................................................... 17
`C.
`At the threshold, Figure 35 of Lewis as presented by
`ServiceNow should be excluded because it is unreadable .................. 18
`Lewis does not teach or suggest “an IT component
`processor adapted to compute a component health status
`of the IT component” as recited in claim 1 ......................................... 19
`Lewis fails to disclose “a renderer adapted to 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, wherein the first and
`
`D.
`
`E.
`
`
`
`i
`
`

`
`a.
`
`second indicators are each separately visible at the same
`time on a single display window of a display unit” as
`recited in claim 1 ................................................................................. 23
`Lewis does not disclose a “first indicator” and a “second
`indicator” that convey independent and separate health
`statuses corresponding to an IT component and an IT
`subcomponent, respectively ................................................................ 24
`i.e.,
`Lewis
`requires additional affirmative action,
`navigation between windows, to ascertain the health
`statuses of components ........................................................................ 25
`CONCLUSION .............................................................................................. 27
`
`b.
`
`V.
`
`
`
`ii
`
`

`
`TABLE OF AUTHORITIES
`
`
`CASES
`In re Cuozzo Speed Techs., LLC,
`2015 U.S. App. LEXIS 11714 (Fed. Cir. July 8, 2015) ..................................... 11
`
`Page(s)
`
`In re Translogic Tech., Inc.,
`504 F.3d 1249 (Fed. Cir. 2007) .......................................................................... 11
`
`Verdegaal Bros., Inc. v. Union Oil Co. of Cal.,
`814 F.2d 628 (Fed. Cir. 1987) ............................................................................ 17
`
`STATUTES
`
`35 U.S.C. § 102(b) ..................................................................................................... 1
`
`35 U.S.C. § 313 .......................................................................................................... 1
`
`35 U.S.C. § 314 .......................................................................................................... 1
`
`35 U.S.C. § 314(a) ............................................................................................... 1, 18
`
`35 U.S.C. § 324 .......................................................................................................... 1
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.6(e) ................................................................................................... 29
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`37 C.F.R. § 42.107(a) ................................................................................................. 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
`
`AOL, Inc. and Cloudera, Inc. v. COHO Licensing LLC,
`IPR2014-00771, 2014 Pat. App. LEXIS 7783 (P.T.A.B. Nov. 20,
`2014) ................................................................................................................... 12
`
`
`
`iii
`
`

`
`Conopco, Inc. v. Proctor & Gamble Co.,
`IPR2014-00506, 2014 Pat. App. LEXIS 9077 (P.T.A.B. Dec. 10,
`2014) ................................................................................................................... 19
`
`Intelligent Bio-Sys. v. Illumina Cambridge Ltd.,
`IPR2013-00266, 2014 Pat. App. LEXIS 8332 (P.T.A.B. Oct. 28,
`2014) ................................................................................................................... 19
`
`
`
`
`
`iv
`
`

`
`List of Exhibits
`
`Description
`BMC Software Acquires IT Masters for $42 Million, available
`at http://www.wsj.com/articles/SB104856648021382500 (last
`accessed August 31, 2015)
`About BMC Software, available at
`http://www.bmc.com/corporate/about-bmc-software.html (last
`accessed August 31, 2015)
`Excerpts of Markman Opinion, 14-cv-903-JRG, ECF No. 131
`(E.D. Tex. Aug. 13, 2015)
`U.S. Application No. 10/377,092, June 5, 2008 Office Action
`Response
`Excerpts of Dr. Mark Jones Declaration in Support of BMC’s
`Opening Claim Construction Brief, 14-cv-903-JRG, ECF No.
`99-9 (E.D. Tex. May 29, 2015)
`
`
`No.
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`
`
`
`
`v
`
`

`
`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,
`
`responding to the Petition for Inter Partes Review (“the Petition”) filed by
`
`ServiceNow, Inc. (“ServiceNow”) regarding claims of U.S. Patent No. 7,617,073
`
`(“the ’073 patent”). The Board should decline to institute inter partes review.
`
`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). 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). 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 reasons for denying institution of 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
`
`herein preclude trial on the single ground asserted in the Petition: anticipation by
`
`prior art under 35 U.S.C. § 102(b). ServiceNow does not raise any other ground or
`
`
`
`1
`
`

`
`theory.
`
`II. OVERVIEW OF U.S. PATENT NO. 7,617,073
`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.
`
`And, there was a need for network management technology to provide
`
`increased automation and efficiency that would be easy to implement and yet
`
`maintain flexibility as such systems grew. To manage these complex and growing
`
`computer networks accordingly, companies often relied on the 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 a human administrator can only do so much,
`
`companies needed to hire more and more personnel to handle the larger and more
`
`complex networks that existed. In response, software vendors began offering
`
`“system management” software products that could help administrators monitor
`
`
`
`2
`
`

`
`computer networks. One such vendor was IT Masters Technologies S.A., the
`
`original assignee of the ’073 patent.
`
`B. The ’073 Inventors, Jean-Marc Trinon and Olivier Pignault, were
`Pioneers in the Field of Enterprise Management
`
`Prior to the ’073 patent, IT management systems were limited to processing
`
`and monitoring events at the component level. These systems therefore lacked the
`
`capability to assess the impact that component-level events had on the business
`
`because component-level events were not correlated to business services. As a
`
`result, administrators did not have the tools to optimally prioritize resources in an
`
`enterprise system.
`
`When the industry began looking for solutions to monitor enterprise systems
`
`from the business service perspective, Messrs. Trinon and Pignault, who were IT
`
`Masters employees, were on the front line of developing products that moved away
`
`from component-specific monitoring to providing business context to the event-
`
`processing feature of enterprise systems.
`
`In or about 2001, Messrs. Trinon and Pignault first formed the initial
`
`concept of a management tool that modeled the impact of IT service level
`
`degradation on business processes. In the context of IT, service levels can be the
`
`expectations of a business regarding identification of risks, prioritization of
`
`resources, and delivery of services to meet business demands. Messrs. Trinon and
`
`Pignault developed software that assessed IT service levels on business services, in
`
`3
`
`

`
`real time. This concept was incorporated into the ’073 patent, and it formed the
`
`basis of IT Masters’ flagship product—Master Cell.
`
`BMC in 2003 acquired IT Masters, for $42 million. (Ex. 2001, BMC
`
`Software
`
`Acquires
`
`IT Masters
`
`for
`
`$42 Million,
`
`available
`
`at
`
`http://www.wsj.com/articles/SB104856648021382500 (last accessed August 31,
`
`2015).) With this acquisition, BMC sought to improve its capability of providing
`
`real-time service modelling, root cause analysis and business service level
`
`management. To that end, Master Cell was immediately incorporated into existing
`
`BMC platforms.
`
`C. BMC Today
`
`By developing and acquiring leading technologies, BMC has been able to
`
`provide its customers the foundational technology in IT management. Presently,
`
`approximately 6,000 BMC employees support more than 20,000 customers across
`
`the globe. More than 80% of Fortune 500 companies rely on BMC for innovative
`
`and
`
`industrialized
`
`IT
`
`solutions.
`
`
`
`(Ex. 2002, About BMC Software,
`
`http://www.bmc.com/corporate/about-bmc-software.html (last accessed August 31,
`
`2015).)
`
`BMC’s IT management systems enable companies to easily manage, track,
`
`and service the ever-increasing number of network servers, computers, printers,
`
`software applications, and other computing resources needed across an enterprise,
`
`
`
`4
`
`

`
`to ensure its customers are not disrupted in their business activities. Helping build
`
`the IT management industry through the design and development of modern IT
`
`management systems was no small feat. BMC made enormous investments over
`
`many years in research and development, as well as significant acquisitions. From
`
`these investments, BMC invented or acquired, and further developed the
`
`technologies needed to make modern IT management system a reality. For
`
`example, BMC has invested approximately $8 billion in research and development
`
`during the past 34 years to help build many of today’s leading IT management
`
`solutions. The results of these efforts are highly valuable and include patented
`
`innovations such as the ’073 patent.
`
`D. Overview of the Claimed Invention of the ’073 Patent
`
`The ’073 patent generally is directed to systems and methods for
`
`visualization of the components of an enterprise system and/or the rendering of
`
`information related to the health or status of the enterprise system, its components,
`
`and subcomponents. (Ex. 1001, ’073, Abstract.) In particular, claim 1 generally is
`
`directed to a system that includes a renderer adapted to display indicators
`
`associated with the health statuses of IT components in an enterprise system on a
`
`single display.
`
`The ’073 patent explains that IT components may consist of computers,
`
`computer peripherals, computer programs, networking equipment, and
`
`
`
`5
`
`

`
`manufacturing equipment. (’073, 1:27-29.) IT components are also described as
`
`virtual IT components like business processes that can be combined into a business
`
`system. (’073, 1:29-31.) The IT components in enterprise systems relate to each
`
`other in different ways. (’073, 1:31-32.) For example, some IT components can
`
`be parts of other components. (’073, 1:32-33.) Still, other IT components may
`
`depend on services provided by other IT components. (’073, 1:33-35.) The ’073
`
`patent provides IT personnel managing the availability of business processes and
`
`IT systems a way of assessing the “health” of the various IT components or non-IT
`
`components that are combined into a complex system delivering IT services. (‘073,
`
`1:14-20). The ’073 patent teaches a particular visualization of the manner in which
`
`these components relate and depend on each other’s “health” or status. (’073,
`
`1:55-57.)
`
`The ’073 patent discusses several “common representations” of IT
`
`components using graphical user interfaces (“GUI”):
`
`A single view showing the components at one level, such as the
`window seen when a user double clicks on the icon representing
`the computer on his or her desktop;
`An expandable tree (like in the left window of the WINDOWS®
`EXPLORER); and
`An [sic] star tree, such as the technology from Inxight Software
`Inc.
`
`
`
`
`
`6
`
`

`
`(’073, 1:39-45.) Through such interfaces and representations of IT components,
`
`the ’073 patent explains “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,” which “typically results in showing more
`
`details over the selected component.” (’073, 1:46-49.) “In doing so, the user can
`
`see the components that are part of the selected component or components that the
`
`selected component is depending upon.” (’073, 1:49-52.)
`
`The ’073 patent discusses rendering health or status information about the
`
`displayed IT components by relying on color. (’073, 1:61-66.) Coloration is
`
`associated with a severity level, which is associated with the health of the
`
`corresponding IT component. (’073, 1:64-2:2.) These health conditions are
`
`conveyed as alarms, alerts, events, Simple Network Management Protocol (SNMP)
`
`traps, or equivalent forms. (’073, 2:2-6.) Accordingly, the ’073 patent discusses
`
`“two common ways” of determining the corresponding colors of IT components:
`
`(1) associating an IT component with the color of the most severe event related to
`
`the IT component; and (2) computing a status of the underlying events related to
`
`the IT component, and determining the corresponding color to be displayed
`
`indicating the level of severity of the status computed. (’073, 2:9-16.)
`
`A problem arises however when a single color code is displayed per
`
`component because it may indicate the health of an IT component or the IT
`
`
`
`7
`
`

`
`component’s subparts or the components depending on it, i.e., IT subcomponent.
`
`In such a system, information can be lost, because when an IT component is
`
`assigned a color code, it is not possible to know if the color code is due to the IT
`
`components’ own status or alerts or due to the statuses/alerts of its IT
`
`subcomponents. (’073, 2:24-30.) Such a process of aggregating the severities to
`
`one single color would require a user to further manipulate the user interface for
`
`more information. (’073, 2:44-48.) The ’073 patent therefore explains that a need
`
`exists to be able to provide more health information of IT components, which is
`
`otherwise lost through a conglomeration of information into a single indicator.
`
`(’073, 2:48-50.) The ’073 patent provides a representative example:
`
`[C]omponent A is composed of components B and C or depends
`on components B and C. For the purposes of this example, a
`green indicator is used when a component is healthy and a red
`one when it is not. If A is healthy and B or/and C is not, then a
`red indicator is used for A in these systems, even if A is not
`actually impacted.
`
`If A is not healthy and B and C are healthy, then a red indicator
`is used for A. The same color indicator is used and it does not
`enable to distinguish between the two situations in these systems.
`These systems and their methods of use require additional
`navigation through the GUI to distinguish these different
`situations.
`
`
`
`8
`
`

`
`
`(’073, 3:16-28.) The ’073 patent addresses this problem.
`
`The ’073 patent remedies the disadvantages of using a single color code or
`
`indicator by claiming a system that uses at least two colors for a single component,
`
`whose information about the component and information about the underlying
`
`subcomponents can be conveyed separately and independently. Figure 1 illustrates
`
`the use of two-color indicators in a tree presentation:
`
`
`
`9
`
`
`
`

`
`As the ’073 patent provides, using two-color indicators allows the user to
`
`know whether it is the IT component or its subcomponents that are healthy. (’073,
`
`3:36-38.) The health status of an IT component can be completely independent
`
`from the health status of its subcomponents. (’073, 3:39-41.) The invention
`
`described in the ’073 patent enables the user to derive the health of an IT
`
`component from the events received on the IT component itself as well as from the
`
`events received for its subcomponents. (’073, 3:41-46.)
`
`To further illustrate the invention, Figure 1 describes IT components with at
`
`least two indicators: a green indicator used when a component is healthy; and a red
`
`indicator used when it is unhealthy. Following Figure 1(as modified below),
`
`component FO@biz is composed of
`
`components
`
`ca_os@FO@biz
`
`and
`
`ny_os@FO@biz.
`
`
`
`(’073, 4:13-15.)
`
`FO@biz includes a green indicator in
`
`the foreground and a red indicator in the
`
`background. Accordingly, FO@biz is
`
`healthy while an underlying component
`
`is not healthy.
`
`Following
`
`the
`
`branch
`
`to
`
`component
`
`ny_os@FO@biz,
`
`both
`
`
`
`10
`
`

`
`indicators are green, and it does not have a subcomponent depending from it. As a
`
`result, a user may assess that any health problems shown by the indicator in the
`
`background of component FO@biz is not related to ny_os@FO@biz. (’073, 4:20-
`
`26.)
`
`Following the branch to component ca_os@FO@biz, both the indicators in
`
`the foreground and the background are red, and thus the user may assess that
`
`ca_os@FO@biz is not healthy and at least one component depending from the
`
`component ca_os@FO@biz is unhealthy. (’073, 4:27-32.) Thus, the unhealthy
`
`background of component FO@biz is related to ca_os@FO@biz. The ’073 patent
`
`claims precisely the concept discussed above without being limited to any specific
`
`visualization or graphical user interface. (’073, 5:53-61.)
`
`III. RESPONSE TO SERVICENOW’S CLAIM CONSTRUCTIONS
`For purposes of this proceeding, the claims of the ’073 patent must be given
`
`their broadest reasonable construction. In re Cuozzo Speed Techs., LLC, 2015 U.S.
`
`App. LEXIS 11714, at *24 (Fed. Cir. July 8, 2015). Consistent with the broadest
`
`reasonable construction, claim terms are presumed to have their ordinary and
`
`customary meaning, as understood by a person of ordinary skill in the art, in the
`
`context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
`
`1257 (Fed. Cir. 2007).
`
`
`
`11
`
`

`
`The Petition identifies three terms for construction: “IT component,” “IT
`
`subcomponent” and “processor.” (Pet. 11.) As a preliminary matter, BMC
`
`submits that no construction is necessary in addressing the ground proposed in this
`
`Petition because plain and ordinary meaning controls as to all the terms the Petition
`
`identifies. See AOL, Inc. and Cloudera, Inc. v. COHO Licensing LLC, IPR2014-
`
`00771, 2014 Pat. App. LEXIS 7783, at *5 (P.T.A.B. Nov. 20, 2014) (“[W]e do not
`
`discern a need to construe expressly any of the claim terms . . . .”). For example,
`
`Judge Gilstrap in a parallel litigation issued a Markman decision construing “IT
`
`subcomponent” and “processor” to have their plain and ordinary meaning. (Ex.
`
`2003, Markman Opinion, 14-cv-903-JRG, ECF No. 131 at 96-101 (E.D. Tex. Aug.
`
`13, 2015).) Likewise, at the district court, the parties agreed that “IT component”
`
`should be given its plain and ordinary meaning. Accordingly, BMC urges the
`
`Board to conclude similarly here. In any event, BMC provides the following
`
`objections to the Petition’s identification of terms for construction.
`
`A. Claim 1 of the ’073 Patent is Representative of the Use of Terms
`for Construction
`
`Independent Claim 1 of the ’073 patent reads:
`
`A system for indicating the health status of an IT component and
`at least one IT subcomponent comprising:
`an IT component processor adapted to compute a component
`health status of the IT component;
`
`
`
`12
`
`

`
`to compute a
`least one
`IT
`
`IT subcomponent processor adapted
`an
`subcomponent health
`status
`for
`the at
`subcomponent; and
`a renderer adapted to 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, wherein
`the first and second indicator are each separately visible at the
`same time on a single display window of a display unit.
`
` (’073, 9:25‐41 (Claim 1)).
`
`B. IT Component
`
`BMC disputes ServiceNow’s proposal
`
`that
`
`the broadest reasonable
`
`construction of “IT component” is “part of an information technology system, i.e. a
`
`system that relies at least in part on storing, retrieving, transmitting or
`
`manipulating data or information.” (Pet. at 14.) The ’073 patent is directed to a
`
`system and method of visualization of components of an enterprise system. (’073,
`
`Abstract.) Within the enterprise system, “IT components” are described as
`
`encompassing computers, computer peripherals, computer programs, networking
`
`equipment, and manufacturing equipment. (’073, 1:27-29.) IT components are
`
`also described as virtual IT components like business processes that can be
`
`combined into a business system. (’073, 1:29-31.) Simply, the broadest
`
`reasonable construction for “IT component” is its plain meaning, which is a
`
`“component of an IT enterprise system.” Substituting “component” with “part”
`
`13
`
`

`
`unduly broadens the scope of “IT component” to any part of an IT enterprise
`
`system. Although extensive, the list of examples of “IT components” does not
`
`include any part of an IT enterprise system.
`
`C. IT Subcomponent
`
`BMC disputes ServiceNow’s proposal
`
`that
`
`the broadest reasonable
`
`construction of “IT subcomponent” is “IT component (a) that is part of another IT
`
`component, or (b) that is used or depended upon by another IT component.” (Pet.
`
`at 15.) As mentioned, the district court agreed with BMC by affording “IT
`
`subcomponent” its plain and ordinary meaning, explaining that the term includes
`
`“components that are parts of other components, as well as components depending
`
`on other components.” (Ex. 2003, Markman Opinion at 96-99.) To the extent
`
`ServiceNow proposes to construe “IT subcomponent” as a component that is used
`
`by another component, its proposal fails to adhere to the intrinsic evidence of the
`
`’073 patent.
`
`Specifically, the broadest reasonable construction of “IT subcomponent”
`
`does not contemplate a component that is merely used by other components.
`
`Rather, the plain meaning of “IT subcomponent” in view of the ’073 patent
`
`suggests “IT subcomponent” can be a part of an “IT component” or have a
`
`dependency relationship with an “IT component.” Indeed, as the district court
`
`recognized, the prosecution history of the ’073 patent recites a “conventional”
`
`
`
`14
`
`

`
`definition for “subcomponent” consistent with this plain meaning interpretation.
`
`(Ex. 2004, (6/5/08 Office Action Response) at 13 (“The prefix ‘sub’ is used in its
`
`conventional manner. That is: ‘subcomponent used in its conventional manner.”);
`
`(quoting a dictionary definition for “sub”: “sub- 1: under : beneath : below… 2 a :
`
`subordinate : secondary : next lower than or inferior to…b : subordinate portion of
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`: subdivision of: derived from….” (citing Webster’s Ninth New Collegiate
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`Dictionary (1984).) Accordingly and consistent with the district court’s Markman
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`Opinion, BMC urges the Board to adopt a plain meaning construction of “IT
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`subcomponent” as follows: an “IT component (a) that is part of another IT
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`component, or (b) depended upon by another IT component.”
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`D. Processor
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`BMC disputes ServiceNow’s proposal
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`that
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`the broadest reasonable
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`construction of “processor” is “any combination of software and/or hardware.”
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`(Pet. 17.) (emphasis added) First, a skilled artisan would construe “processor” in
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`the context of its surrounding terms. (Ex 2003, Markman Opinion at 100 (Judge
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`Gilstrap explaining that “‘processor should be considered with the terms ‘IT
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`component processor’ and ‘IT subcomponent processor’ . . . .”).) As such, the
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`operative term here is not “processor” alone, but rather, “IT component processor”
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`and “IT subcomponent processor.”
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`Next, the claim language expressly provides that “an IT component
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`processor” is “adapted to compute a component health status of the IT
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`component,” and that “an IT subcomponent processor” is “adapted to compute a
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`subcomponent health status for at least one IT subcomponent.” (’073, 7:11-15.) In
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`addition, as ServiceNow notes, the specification explains the invention “enables
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`health/status of a component from the events/alerts received on the component
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`itself (if any) and the events/alerts received for its subcomponents or components
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`the user to have very complex algorithms or rules‐based systems that derive the
`depending from it.” (’073, 3:41‐46.) In view of the intrinsic evidence, even the
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`broadest construction applicable here cannot be any combination of hardware
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`and/or software. ServiceNow’s proposal therefore is not within the ambit of the
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`broadest reasonable construction.
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`Rather, consistent with the intrinsic evidence, the combination of hardware
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`and/or software that make up the “IT component processor” and “IT subcomponent
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`processor” must be “adapted to compute a component health status of the IT
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`component” and “adapted to compute a subcomponent health status for at least one
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`IT subcomponent,” respectively. (See Ex. 2005, Dr. Mark Jones Declaration ¶ 21.)
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`The district court concluded the same in its Markman Opinion. (Ex. 2003,
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`Markman Opinion at 101 (“[T]he claim language itself defines the terms ‘IT
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`component processor’ and ‘IT subcomponent processor.’ Specifically, claim 1
`
`recites that the ‘IT component processor’ is ‘adapted to compute a component
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`health status of the IT component.’ Likewise, claim 1 recites that the ‘IT
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`subcomponent processor’ is ‘adapted to compute a subcomponent health status for
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`the at least one IT subcomponent.’”).) BMC thus urges the Board to adopt a plain
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`meaning interpretation accordingly.
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`IV. THE PETITION DOES NOT SHOW A REASONABLE
`LIKELIHOOD OF SUCCESS ON ITS INVALIDITY GROUND
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`ServiceNow contends that claims 1-4 of the ’073 patent are anticipated by
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`International Patent Application Pub. No. WO 00/72183 A2 to Lundy Lewis. (Ex.
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`1004, “Lewis”). Inter partes review however should not be granted. The Petition
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`fails to demonstrate a reasonable likelihood of success because Lewis does not
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`teach or suggest every element of every asserted claim of the ’073 patent.
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`A. Legal Standard
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`
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`A claim is anticipated only if each and every element as set forth in the
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`claim is found, either expressly or inherently described, in a single prior art
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`reference. Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed.
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`Cir. 1987).
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`B. Overview of the Prior Art - Lewis
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`Lewis, entitled “Service Level Management,” discloses a method and
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`apparatus for service level management. (Lewis, Abstract.) Figure 35 depicts an
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`embodiment of Lewis on which the Petition focuses:
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`Lewis describes this figure as showing a graphical user interface screen shot
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`of a service along with its supporting network devices, computer systems, and
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`applications. (Lewis, 77:28-29.) Icons 271, 272, and 273 represent services: the
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`ICS Web site service 271, Internet access 272 and the backbone 273. (Lewis,
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`76:1.) ICS Web site service 271 includes subservices HTTP daemon 274 and a
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`Web server 275. (Lewis, 76:1-3.) The light colored icons 276 represent low-level
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`enterprise elements. (Lewis, 76:3-4.)
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`C. At the threshold, Figure 35 of Lewis as presented by ServiceNow should
`be excluded because it is unreadable
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`As an initial matter, Figure 35 is unreadable. This legibility issue is fatal to
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`ServiceNow as the burden is on the petitioner to present sufficient evidence
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`supporting its proposed grounds. 35 U.S.C. §314(a). In particular, ServiceNow
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`fails to present sufficient evidence by petitioning for review on the basis of a prior
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`art that is, in relevant part, illegible. The impropriety of submitting such prior art
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`goes against the spirit of these inter partes proceedings, and it allows petitioners to
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`strategically unveil their prior art here and at the district courts at the expense of
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`the Board’s, the district courts’, and patent owners’ resources.1 See Conopco, Inc.
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`v. Proctor & Gamble Co., IPR2014-00506, 2014 Pat. App. LEXIS 9077, at *6
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`(P.T.A.B. Dec. 10, 2014) (“That approach would allow petitioners to unveil
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`strategically their best prior art and arguments in serial petitions, using our
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`decisions on institution as a roadmap, until a ground is advanced that results in
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`review--a practice that would tax Board resources, and force patent owners to
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`defend multiple attacks.”). Hence, at a minimum, Figure 35 of Lewis should be
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`excluded, and the Petition should be denied on this basis alone. Intelligent Bio-
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`Sys. v. Illumina Cambridge Ltd., IPR2013-00266, 2014 Pat. App. LEXIS 8332, at
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`*40 (P.T.A.B. Oct. 28, 2014) (“[W]e agree with Illumina that the fi