`571.272.7822
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` Paper No. 11
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` Entered: January 14, 2016
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`
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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 IPR2015-01555
`Patent 8,646,093 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, BRIAN P. MURPHY, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`Petitioner ServiceNow, Inc. (“ServiceNow”) filed a Petition (“Pet.”)
`(Paper 1) to institute an inter partes review of claims 1, 5, 10–13, and 16 of
`Patent 8,646,093 B2 (“the ’093 patent”) (Ex. 1001) pursuant to 35 U.S.C.
`§§ 311–319. Patent Owner BMC Software, Inc. (“BMC”) filed a
`Preliminary Response (“Prelim. Resp.”) (Paper 10) to the Petition. We have
`jurisdiction under 35 U.S.C. § 314.
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`Under 35 U.S.C. § 314(a), the Director may not authorize an inter
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`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 have decided not to institute an inter partes review.
`
`
`
`I. BACKGROUND
`
`Related Proceedings
`A.
`The parties identify the following proceeding related to the ’093
`
`patent (Pet. 1; Paper 6, 1): BMC Software, Inc. v. ServiceNow, Inc., Case No.
`
`2:14‐CV‐00903 JRG (E.D. Tex. Sept. 23, 2014). The ’093 patent is also the
`
`subject of a petition for covered business method review in CBM2015-
`00170.
`
`
`
`The ’093 Patent
`B.
`The ’093 patent is directed to a software license system that “allows
`
`an enterprise to model software license contracts and evaluate deployment of
`software for compliance with the software license contracts.” Ex. 1001,
`Abstract. Figure 2 of the ’093 patent is reproduced below.
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`Figure 2 depicts system 200 having Configuration Management Database
`(CMDB) 260, which “contains data about managed resources known as
`Configuration Items (CIs).” Id. at 1:29–30. Information about the software
`contracts, which may include the information listed in Table 1 of the
`specification, may be stored as CIs in CMDB 260. Id. at 5:1–2, 9–55 (Table
`1).
`License datastore 270, which may be separate from or a part of
`
`CMDB 260, provides storage for license certificates “to model software
`contracts, including rules against which the CIs are evaluated for software
`license compliance and other information necessary for processing those
`rules.” Id. at 4:11–17, 9:37–40. “A license certificate indicates the right to
`deploy software in the environment managed by the CMDB server 110,” and
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`an exemplary license certificate may include the information listed in Table
`3 of the specification. Id. at 8:61–63, 9:1–20 (Table 3).
`
`C.
`
`Claim 1
`Claim 1 of the ’093 patent recites:
`1.
`A computer-implemented method, comprising:
`modeling deployment of a software product and a
`software license contract for the software product;
`storing a first model of the modeled deployment of the
`software product in a configuration management database
`(CMDB) by storing information related to the software product
`as a first configuration item in the CMDB and by storing
`information related to the software license contract as a second
`configuration item in the CMDB;
`storing a second model of the modeled software license
`contract for the software product in a license database by
`generating a license certificate corresponding to the software
`license contract and storing the license certificate in the license
`database; and
`evaluating the deployment of the software product for
`compliance with the software license contract, comprising:
`connecting and comparing the first model and the
`second model by comparing the first configuration item
`with the license certificate and connecting the license
`certificate with the second configuration item responsive
`to comparing the first configuration item with the license
`certificate; and
`generating an exception indication if the act of
`comparing the first model and the second model indicates
`non-compliance with the software license contract.
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`D.
`The Prior Art
`ServiceNow relies on the following prior art:
`U.S. Patent No. 6,810,389 B1 to Meyer, filed Nov. 8,
`2000, issued Oct. 26, 2004 (Ex. 1003, “Meyer”);
`Excerpts from United Kingdom Office of Government
`Commerce, BEST
`PRACTICE
`SOFTWARE ASSET
`FOR
`MANAGEMENT, IT Infrastructure Library (ITIL) (2003) (Ex.
`1004, “Best Practice”);
`Excerpts from Rob Addy, EFFECTIVE IT SERVICE
`MANAGEMENT, TO ITIL AND BEYOND! (2007) (Ex. 1005,
`“Addy”); and
`U.S. Patent Application Publication No. 2005/0071276
`A1 to Bruchlos, filed June 24, 2004, published Mar. 31, 2005
`(Ex. 1006, “Bruchlos”).
`
`The Asserted Grounds
`ServiceNow challenges claims 1, 5, 10–13, and 16 of the ’093 patent
`on the following grounds (Pet. 4):
`References
`Basis
`
`Claims Challenged
`
`E.
`
`Meyer, Best
`Practice, Addy
`Meyer, Best
`Practice, Addy,
`Bruchlos
`
`35 U.S.C. § 103(a)
`
`1, 5, 10, 16
`
`35 U.S.C. § 103(a)
`
`11–13
`
`F.
`
`
`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 In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275–78 (Fed. Cir.
`2015). Under the broadest reasonable interpretation standard, and absent
`any special definitions, claim terms are given their ordinary and customary
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`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: “license
`certificate,” “model”/“modeling,” and “exception indication.” Pet. 15–20.
`
`“license certificate”
`1.
`ServiceNow and BMC both agree “license certificate” should be
`construed as “information relating to the right to deploy software.” Pet. 16–
`17 (emphasis omitted); Prelim. Resp. 7–8. We find this construction is
`consistent with the use of “license certificate” in the ’093 patent, so we
`apply this construction for purposes of this Decision.
`
`“model”/“modeling”
`2.
`ServiceNow and BMC also agree on constructions of “model” as “an
`organized collection of information about an object” and of “modeling” as
`“creating a model.” Pet. 17–18 (emphasis omitted); Prelim. Resp. 8.
`Because we find the proposed constructions of these terms are consistent
`with their use in the ’093 patent, we apply these constructions for purposes
`of this Decision.
`
`“exception indication”
`3.
`The parties propose different constructions for the term “exception
`indication.” See Pet. 19–20; Prelim. Resp. 8–10. For purposes of this
`decision, we decline to construe this term, because it has no bearing on our
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`disposition below. 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 now consider ServiceNow’s asserted grounds in its Petition and
`BMC’s arguments in its Preliminary Response to determine whether
`ServiceNow has met the threshold standard of 35 U.S.C. § 314(a).
`ServiceNow submitted a declaration from Tal Lavian, Ph.D., to accompany
`its Petition. See Pet. 4 (citing Ex. 1002).
`
`Obviousness Ground Based on Meyer, Best Practice, and Addy
`ServiceNow contends claims 1, 5, 10, and 16 would have been
`obvious over the combination of Meyer, Best Practice, and Addy. Pet. 26–
`52. BMC disputes ServiceNow’s contentions. Prelim. Resp. 16–29.
`
`A.
`
`
`
`1. Meyer
`Meyer relates to “providing licenses to client computer systems to
`allow the client computer systems to use licensed software products.” Ex.
`1003, 3:62–64. Figure 1 of Meyer is reproduced below.
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`Figure 1 depicts a software licensing system (SLS) having licensing server
`25, which holds license file 65 of licenses 60. Id. at 1:42–2:5. Applications
`15, 20 make license requests 40, 45, which are also known as “checkout”
`requests, from licensing server 25. Id. at 1:44–49. Licensing server 25
`either grants or denies (50, 55) these requests based on the result of a
`verification “that the license is intended to allow the operation of the
`application in the current configuration, environment, and at the current
`time.” Id. at 1:49–60.
`Meyer also describes exemplary license 200 as containing license
`count 205, feature name 215, end date 225, and license version number 235.
`Id. at Fig. 3, 2:6–23.
`
`
`Best Practice
`2.
`Best Practice is a publication of the IT Infrastructure Library (ITIL),
`which is affiliated with the Office of Government Commerce of the United
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`Kingdom government. Ex. 1004, 16. Among other things, the publication is
`directed to software asset management (SAM) via the use of a CMDB. Id.
`at 16, 96. Best Practice describes that “each component contained within the
`CMDB is referred to as a Configuration Item (CI),” and “[e]ach CI record
`within the CMDB contains all of the attributes and information relating to a
`component necessary for managing it, whether software, hardware,
`contracts, etc.” Id. at 96–97. Exemplary contents of a CMDB, including
`exemplary CIs, are disclosed in Appendix D of Best Practice. Id. at 134–
`140.
`
`
`Addy
`3.
`Addy is a textbook related to the management of IT services. Ex.
`1005. Addy states that “the CMDB should be an embedded part of every IT
`process and should be used by every member of the IT function on a daily, if
`not hourly basis.” Id. at 239.
`
`Claim 1 Obviousness Analysis
`4.
`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).1 ServiceNow proposes combining certain exemplary configuration
`
`
`1 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 ’093
`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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`items from a CMDB as disclosed in Best Practice with Meyer’s teachings on
`creating and checking license records to teach the limitations of claim 1. See
`Pet. 26–48. ServiceNow contends an ordinarily skilled artisan would have
`had reason to combine these teachings based on various commonalities in
`the references themselves and additionally based on Addy’s statements
`encouraging the use of CMDBs. See id. at 33–38, 41–47. Considering
`ServiceNow’s obviousness analysis and BMC’s Preliminary Response, and
`based on the present record, we are not persuaded that ServiceNow has
`established a reasonable likelihood of prevailing on its obviousness
`challenge of claim 1 for the reasons explained below.
`In its unpatentability contentions, ServiceNow maps certain software
`modeling information from Best Practice to the recited “first model of the
`modeled deployment of the software product in a configuration management
`database (CMDB)” of claim 1. Id. at 29–30. Specifically, ServiceNow
`contends Best Practice’s CI for software products in Table D.2 teaches
`“information related to the software product” in the “first configuration
`item,” whereas Best Practice’s CI for software license contracts in Table D.1
`teaches “information related to the software license” in the “second
`configuration item.” Id. (citing Ex. 1004, 134–38).
`
`Correspondingly, ServiceNow maps Meyer’s license records stored in
`the license database to the recited “second model of the modeled software
`license contract for the software product in a license database” of claim 1.
`Id. at 30–31 (citing Ex. 1003, Figs. 1, 3; 2:10–21). ServiceNow contends the
`recited “license certificates” are generated when Meyer’s license server 760
`creates license records by examining external files that contain information
`about underlying software license contracts. Id. at 32–33 (citing Ex. 1003,
`7:40–61). Citing Best Practice, ServiceNow contends it would have been
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`obvious to modify the software license system of Meyer to include “the
`ability to maintain a CMDB with CIs for storing information relating to ‘the
`software product’ and ‘the software license contract,’ respectively.” Id. at
`34 (citing Ex. 1002 ¶¶ 81–84).
`
`The “evaluating” step of claim 1 comprises “connecting and
`comparing” and “generating” substeps directed to interactions of the “first
`model” and the “second model.” Specifically, the “first configuration item”
`of the first model is compared to the “license certificate” of the second
`model. To teach this limitation, ServiceNow relies on Meyer’s comparing of
`key/value attributes in a licensing request with the license record attributes
`in the license record. See Pet. 40–41 (citing Ex. 1003, 2:6–23). ServiceNow
`acknowledges Meyer does not disclose configuration items or a CMDB, see
`id. at 42, but ServiceNow cites claim 1’s earlier recitation that “information
`related to the software product” is stored “as a first configuration item.” Id.
`at 40. As stated above, ServiceNow proposes adding a CMDB to the
`software licensing system of Meyer; ServiceNow contends “this
`combination would have predictably resulted” in Meyer’s system comparing
`“the attributes in the license record (the ‘license certificate’) . . . against
`information about the software from the ‘first configuration item’ in the
`CMDB, rather than the licensing request in Meyer.” Id. at 41–42 (emphasis
`omitted) (citing Ex. 1002 ¶ 101).
`BMC contends ServiceNow’s analysis of “comparing the first
`configuration item with the license certificate” is flawed because Meyer
`does not expressly disclose a “first configuration item” that can be compared
`to a license certificate. See Prelim. Resp. 22. Specifically, BMC cites
`ServiceNow’s analysis of Meyer whereby “the ‘first configuration item’ is
`merely ‘the license request issued to the licensing server’” in Meyer. Id.
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`(citing Pet. 40). BMC notes an apparent contradiction in this analysis,
`because ServiceNow elsewhere relies on Best Practice, rather than Meyer,
`for teaching the “first configuration item.” Id. (citing Pet. 29). BMC further
`criticizes ServiceNow’s analysis by noting it would be “nonsensical” for
`Meyer’s system—as modified to include a CMDB—to compare the CI of a
`CMDB, rather than a licensing request, with Meyer’s license file. Id. at 22–
`23. BMC contends there is no cited teaching of how “‘requests’ could be
`generated from a CMDB that merely reflects the deployment of software in
`an enterprise and does not consist of actual running applications or license
`clients.” Id.; see also id. at 17 (“Meyer’s architecture [w]ould be completely
`changed to read software modeled in a CMDB, where no clients or requests
`exist.”).
`
`We are persuaded by BMC’s arguments. ServiceNow’s proposed
`modification of Meyer conflicts with ServiceNow’s mapping of Best
`Practice to the “first model of the modeled deployment of the software
`product” and Meyer to the “second model of the modeled software license
`contract for the software product.” See Pet. 29–32. ServiceNow would have
`us supplant (or disregard) its own asserted use of Best Practice for teaching
`the “first configuration item” elsewhere in claim 1, see id. at 29 (citing Ex.
`1004, Table D.2), and substitute Meyer’s “information related to the
`software product” simply to reach the “comparing” step. See id. at 41–44.
`We find ServiceNow’s shifting application of the references to the “first
`configuration item” of claim 1 to be irreconcilable.
`Moreover, even if it were feasible, ServiceNow’s proposed
`modification of Meyer to include CIs in a CMDB would relate to stored
`data, namely, the license records that ServiceNow maps to the recited
`“license certificate.” See id. at 34 (“Under this combination, the claimed
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`‘license certificate’ . . . is generated based on the license information in the
`CMDB . . . .”). But, inconsistently, ServiceNow also likens CIs in the
`CMDB to Meyer’s license request issued to the licensing server. See id. at
`40 (relating the “first configuration item” to a “license request issued to the
`licensing server”). The result would be a system that no longer issues a
`license request, as taught by Meyer, because Meyer’s licensing request
`would have been replaced by a CI. As noted by BMC, ServiceNow does not
`address how such a modified system in Meyer would operate in the absence
`of licensing requests. See Prelim. Resp. 17, 22–23. ServiceNow cannot
`both rely on the license request to initiate the “comparing” action and at the
`same time replace the license request with a data structure, the first
`configuration item, which is not associated with any request or “comparing”
`action.
`For these reasons, and because ServiceNow’s citations to Addy do not
`cure the deficiencies noted above, ServiceNow has not established the
`combination of Meyer, Best Practice, and Addy teaches or suggests
`“comparing the first configuration item with the license certificate,” as
`recited in claim 1. Therefore, ServiceNow has not demonstrated a
`reasonable likelihood of prevailing on its assertion that Meyer, Best Practice,
`and Addy would have rendered obvious the subject matter of claim 1.
`
`Claims 5, 10, and 16
`5.
`Claims 5 and 10 depend from claim 1, so ServiceNow’s obviousness
`
`ground with respect to these claims is deficient for the same reasons as with
`claim 1. Independent claim 16 is a system claim comprising a “server
`computer” having a processor that “perform[s] the method of claim 1.”
`ServiceNow contends “claim 16 adds nothing of significance over claim 1”
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`and relies on the same analysis that it puts forth for claim 1. Pet. 51–52.
`ServiceNow’s obviousness ground with respect to claim 16 is therefore
`deficient for the same reasons as with claim 1. Accordingly, ServiceNow
`has not demonstrated a reasonable likelihood of prevailing on its assertion
`that Meyer, Best Practice, and Addy would have rendered obvious claims 5,
`10, and 16.
`
`B.
`
`Obviousness Ground Based on Meyer, Best Practice, Addy, and
`Bruchlos
`ServiceNow contends claims 11–13 would have been obvious over
`the combination of Meyer, Best Practice, Addy, and Bruchlos. Pet. 53–58.
`BMC disputes ServiceNow’s contentions. Prelim. Resp. 25–29.
`Claims 11–13 depend directly or indirectly from claim 1.
`ServiceNow relies on the same analysis for the limitations in the base claim,
`and ServiceNow’s use of Bruchlos does not cure the deficiencies in that
`analysis. See Pet. 53–58. Accordingly, for the same reasons set forth above
`with respect to claim 1, ServiceNow has not demonstrated a reasonable
`likelihood of prevailing on its assertion that Meyer, Best Practice, Addy, and
`Bruchlos would have rendered obvious claims 11–13.
`
`
`III. CONCLUSION
`We conclude that ServiceNow has not demonstrated a reasonable
`
`likelihood of prevailing with respect to at least one claim of the ’093 patent
`challenged in the Petition. Therefore, we do not institute an inter
`partes review on any of the asserted grounds as to any of the challenged
`claims.
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`IV. ORDER
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`Accordingly, it is
`
`ORDERED that the Petition is denied as to all challenged claims of
`
`the ’093 patent.
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`PETITIONER:
`Heidi L. Keefe
`Phillip E. Morton
`Andrew C. Mace
`Mark Weinstein
`COOLEY LLP
`hkeefe@cooley.com
`pmorton@cooley.com
`amace@cooley.com
`mweinstein@cooley.com
`zpatdcdocketing@cooley.com
`
`
`
`PATENT OWNER:
`
`Robert A. Cote
`Pierre Hubert
`Robert Auchter
`Kevin Schubert
`MCKOOL SMITH P.C.
`rcote@mckoolsmith.com
`phubert@mckoolsmith.com
`rauchter@mckoolsmith.com
`kschubert@mckoolsmith.com