throbber
Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
` Paper No. 11
`
` 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 IPR2015-01211
`Patent 7,617,073 B2
`____________
`
`
`
`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 claims 1–4 of Patent 7,617,073
`B2 (“the ’073 patent”) (Ex. 1001) pursuant to 35 U.S.C. §§ 311–319. Patent
`Owner BMC Software, Inc. (“BMC”) filed a Preliminary Response
`
`
`
`

`
`IPR2015-01211
`Patent 7,617,073 B2
`
`
`(“Prelim. Resp.”) (Paper 10) to the Petition. We have jurisdiction under
`35 U.S.C. § 314.
`
`Pursuant to 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 claims 1–4 of the ’073 patent on the asserted ground of unpatentability.
`
`
`
`I. BACKGROUND
`
`Related Proceeding
`A.
`The parties identify the following proceeding related to the ’073
`
`patent (Pet. 1; Paper 6, 1): BMC Software, Inc. v. ServiceNow, Inc., Case
`
`No. 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 this action. See Ex. 2003.1
`
`
`The ’073 Patent
`B.
`The ’073 patent is directed to “visualization of the components of an
`
`enterprise system and the rendering of information about the health or status
`of the enterprise system, its components, and/or its subcomponents.”
`Ex. 1001, Abstract. Examples of such components include “computers,
`computer peripherals, computer programs, networking equipment, . . .
`
`
`1 BMC filed only excerpts of the district court’s order as Exhibit 2003. To
`ensure a complete record, we enter a copy of the entire order into the record
`as Exhibit 3001. The parties are encouraged to do so, when possible, for
`future materials filed in this proceeding as well.
`
`2
`
`

`
`IPR2015-01211
`Patent 7,617,073 B2
`
`
`manufacturing equipment,” and “virtual components like business processes
`that can be combined into a business system.” Id. at 1:27–31.
`Figure 1 of the ’073 patent is reproduced below:
`
`
`
`Figure 1 illustrates the use of color codes or indicators of component health
`presented in “a tree structure and a branching hierarchy.” Id. at 3:29–38,
`3:65–4:11. An algorithm can compute the health statuses associated with
`components in the hierarchy, including “the ‘self-severity’ based on the
`health/status of the component itself” and the “‘sub-severity’ based on the
`health/status of the subcomponents or the components that the component
`depends upon.” Id. at 2:13–16, 3:48–57. The ’073 patent also teaches “the
`health/status of a component can be completely independent from the
`health/status of its sub-components or components depending from it.” Id.
`at 3:39–41.
`
`
`
`
`
`
`3
`
`

`
`IPR2015-01211
`Patent 7,617,073 B2
`
`C.
`
`
`
`Illustrative Claim
`Claim 1 of the ’073 patent recites:
`1.
`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;
`an IT subcomponent processor adapted to compute a
`subcomponent health status
`for
`the at
`least one
`IT
`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.
`
`D.
`
`
`The Prior Art
`ServiceNow relies on the following prior art:
`International Patent Application Publication No.
`WO 00/72183 A2 to Lundy Lewis, published Nov. 30, 2000
`(Ex. 1004, “Lewis”).
`
`The Asserted Ground
`ServiceNow challenges claims 1–4 of the ’073 patent under 35 U.S.C.
`§ 102(b) over Lewis. Pet. 3.
`
`Claim Interpretation
`In an inter partes review, we construe claims by applying the broadest
`reasonable interpretation in light of the specification. 37 C.F.R. § 42.100(b);
`see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275–78 (Fed. Cir.
`2015). Under the broadest reasonable interpretation standard, and absent
`
`E.
`
`F.
`
`4
`
`

`
`IPR2015-01211
`Patent 7,617,073 B2
`
`
`any special definitions, claim terms are given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in the
`context of the entire disclosure. See In re Translogic Tech. Inc., 504 F.3d
`1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms or
`phrases must be set forth “with reasonable clarity, deliberateness, and
`precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`ServiceNow identifies three terms for construction: “IT component,”
`“IT subcomponent,” and “processor.” Pet. 11–17. In response, “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.” Prelim. Resp. 12. BMC likewise notes that
`the district court’s claim construction order applied the plain and ordinary
`meaning to all of these terms. Id. (citing Ex. 2003, 96–101). For purposes
`of this decision, we agree that none of these terms requires explicit
`construction at this time. 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 are in controversy, and only to the extent necessary to resolve the
`controversy.”).
`
`
`II. ANALYSIS
`We turn now to ServiceNow’s asserted ground of unpatentability and
`BMC’s arguments in its Preliminary Response to determine whether
`ServiceNow has met the threshold standard of 35 U.S.C. § 314(a).
`
`The Lewis Reference
`ServiceNow argues that claims 1–4 of the ’073 patent are anticipated
`by Lewis. Pet. 23–38. Lewis qualifies as prior art to the ’073 patent under
`
`A.
`
`5
`
`

`
`IPR2015-01211
`Patent 7,617,073 B2
`
`
`35 U.S.C. § 102(b), because Lewis’s November 30, 2000, publication date
`predates the earliest possible priority date of the ’073 patent, which is the
`March 1, 2002, filing date of the provisional application to which the ’073
`patent claims priority. See Pet. 4–5, 5 n.1, 17–18.
`Lewis is directed to “service level management (SLM), whereby an
`entity . . . may . . . map components of a network (i.e., network devices,
`transmission media, computer systems, and applications) into services in
`
`order to assess the state of those services.” Ex. 1004, 1:29–2:3. Monitoring
`agents identify faults in these network components, see id. at 39:17–18, and
`
`an alarm correlation agent receives alarms from the monitoring agents to
`determine the state of a service. See id. at 10:2–3.
`Figure 35 of Lewis is reproduced below.
`
`
`
`6
`
`

`
`IPR2015-01211
`Patent 7,617,073 B2
`
`B.
`
`
`Figure 35 depicts an exemplary screen shot from an enterprise management
`system showing various icons representing “a service decomposed into
`supporting network devices, computer systems, and applications.” Id. at
`75:28–76:4. These icons can turn red to indicate an alarm in response to
`detection of a fault. See id. 76:7–9.
`
`The Legibility of the Lewis Reference
`BMC argues a seminal drawing figure in Lewis, Figure 35, is
`“unreadable” and that “[t]his legibility issue is fatal to ServiceNow as the
`burden is on the petitioner to present sufficient evidence supporting its
`proposed grounds.” Prelim. Resp. 18. BMC also contends Figure 35 should
`be excluded. Id.
`Although the quality of Figure 35 is substandard, we are not
`persuaded that it should not be considered. The drawing figure still conveys
`relationships among various numbered icons depicted therein, and these
`icons and relationships are explained in the accompanying text of Lewis.
`See Ex. 1004, 75:28–76:4. Because ServiceNow’s unpatentability
`contentions are readily understandable with reference to Figure 35 and its
`accompanying text, we turn to the merits of those contentions.
`
`Anticipation by Lewis
`To anticipate a patent claim under 35 U.S.C. § 102, “a reference must
`describe, either expressly or inherently, each and every claim limitation and
`enable one of skill in the art to practice an embodiment of the claimed
`invention without undue experimentation.” Am. Calcar, Inc. v. Am. Honda
`Motor Co., 651 F.3d 1318, 1341 (Fed. Cir. 2011) (citing In re Gleave, 560
`F.3d 1331, 1334 (Fed. Cir. 2009)). Considering ServiceNow’s analysis and
`
`C.
`
`7
`
`

`
`IPR2015-01211
`Patent 7,617,073 B2
`
`
`submitted evidence, we are satisfied there is a reasonable likelihood that
`each and every limitation in claims 1–4 is found expressly in Lewis. We add
`the following for emphasis.
`ServiceNow explains in its Petition how Lewis allegedly discloses
`each of the limitations of claims 1–4 and relies on the testimony of Tal
`Lavian, Ph.D., in support. See Pet. 17–38. Specifically, ServiceNow maps
`Lewis’s ICS Web site service 271 to the recited “IT component” and
`Lewis’s Web server 275 to the recited “IT subcomponent.” See Pet. 23–26;
`Ex. 1004, Fig. 35, 75:28–76:4. ServiceNow contends Lewis’s “alarm
`correlation agent” computes the operational status or health status of ICS
`Web site service 271, thereby acting as the “IT component processor,”
`whereas one of Lewis’s “monitoring agents” computes the health status of
`Web server 275, thereby acting as the “IT subcomponent processor.” See
`Pet. 26–30; Ex. 1004, Fig. 18, 10:2–3, 48:9–13.
`BMC contends “Lewis does not disclose computing the health
`statuses of IT components separately and independently from the health
`statuses of IT subcomponents, i.e., computing the self-severity of IT
`components.” Prelim. Resp. 20 (emphasis added), 24. More specifically,
`BMC contends Lewis’s alarm correlation agent does not “compute[] a self-
`severity, i.e., the health or status of an IT component from the events
`pertaining to the IT component itself” and instead “computes statuses based
`on the detected events of the subcomponents only.” Id. at 23 (citing
`Ex. 1004, 10:1–10).
`Even if BMC’s contentions were correct, claims 1–4 do not require
`that IT component health or status must be computed separately and
`independently from the health or status of the subcomponent. Although the
`written description of the ’073 patent states that the “health/status” of the IT
`
`8
`
`

`
`IPR2015-01211
`Patent 7,617,073 B2
`
`
`component and the IT subcomponent “can be completely independent,” see
`Ex. 1001, 3:39–41 (emphasis added), such health or status independence is
`not required by the written description or the language in claims 1–4.
`Moreover, BMC does not cite any prosecution history supporting its reading
`of claims 1–4 as requiring separate and independent health or status. Thus,
`based on the current record, we decline to read in such a limitation. As a
`result, the fact that the health or status of Lewis’s IT component may be
`dependent on the health or status of an IT subcomponent does not undermine
`ServiceNow’s anticipation analysis, contrary to BMC’s contentions. At this
`stage, we determine ServiceNow has established sufficiently that Lewis
`describes the “compute . . . a health status” limitations of claims 1–4.
`Consonant with its mapping of the IT component and IT
`subcomponent, ServiceNow maps the icons of ICS Web service 271 and
`Web server 275 in Figure 35 of Lewis to the recited “first indicator” and
`“second indicator” of claims 1–4. Pet. 33. According to ServiceNow, “if
`the monitoring agent for Web server 275 detected a fault that affected ICS
`Web site service 271, then both icons ‘might turn red, indicating an alarm.’”
`Id. at 34 (quoting Ex. 1004, 76:7–9). In response, BMC contends “that
`displaying the status of ICS Web site service 271 and Web server 275 is
`actually implemented by a single indicator.” Prelim. Resp. 25. We are not
`persuaded by this argument, however, because Lewis’s alarm-indicating
`icons 271 and 275 are separately visible at the same time in Figure 35. See
`Ex. 1004, Fig. 35, 75:28–76:9. BMC also reprises its argument from above
`that the recited indicators must independently and separately indicate status,
`so the cited teaching from Lewis in which both icons respond to an alarm by
`turning red does not reflect the separateness of the first and second
`indicators. Prelim. Resp. 24–25. Nevertheless, for the same reasons stated
`
`9
`
`

`
`IPR2015-01211
`Patent 7,617,073 B2
`
`
`above, we are not persuaded that the icons must indicate separate and
`independent statuses to meet the language of claims 1–4.
`BMC also reads Lewis to require an affirmative action—in this case, a
`click on an icon—to obtain more information about the status of an icon.
`Prelim. Resp. 25–26 (citing Ex. 1004, 76:5–15). In this way, BMC contends
`Lewis does not describe health status indicators that are “each separately
`visible at the same time on a single display window of a display unit,” as
`recited in claims 1–4. However, we understand Lewis to disclose a user
`click option that triggers “a list of actions specific to the component,” which
`is not necessarily status information. See Ex. 1004, 76:6–7. And, even if a
`user click would indeed trigger the display of additional status information,
`this does not supplant Lewis’s description of colored (i.e., red) icons to
`convey health status information for the IT component and the IT
`subcomponent. See id. at 76:7–9. Thus, at this stage of the proceeding,
`ServiceNow has shown sufficiently that, in the exemplary screen shot of
`Figure 35, Lewis describes the color-indicating icons for ICS Web service
`271 and Web server 275 that are each separately visible at the same time.
`See id. at Fig. 35, 75:28–76:9.
`Based on these reasons and the current record, ServiceNow has
`established a reasonable likelihood that claims 1–4 are anticipated by Lewis.
`
`
`III. CONCLUSION
`ServiceNow has demonstrated a reasonable likelihood of prevailing
`
`with respect to the claims challenged in its Petition. At this stage of the
`proceeding, the Board has not made a final determination as to the
`patentability of any challenged claims.
`
`
`10
`
`

`
`IPR2015-01211
`Patent 7,617,073 B2
`
`
`IV. ORDER
`
`Accordingly, it is
`
`ORDERED that pursuant to 35 U.S.C. § 314, inter partes review is
`
`instituted as to claims 1–4 of the ’073 patent on the following ground of
`unpatentability:
`
`Claims 1–4 of the ’073 patent as anticipated by Lewis under
`35 U.S.C. § 102(b).
`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.
`
`11
`
`

`
`IPR2015-01211
`Patent 7,617,073 B2
`
`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
`Phillip Lee
`McKOOL SMITH, P.C.
`rcote@mckoolsmith.com
`phubert@mckoolsmith.com
`rauchter@mckoolsmith.com
`kschubert@mckoolsmith.com
`plee@mckoolsmith.com
`
`
`
`12

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