Declaration of Tal Lavian, Ph.D., in Support of Petition
`for Inter Partes Review of U.S. Patent No. 8,646,093
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`ServiceNow, Inc.
`Petitioner
`
`v.
`
`BMC Software, Inc.
`Patent Owner
`
`U.S. Patent No. 8,646,093
`Filing Date: December 9, 2009
`Issue Date: February 4, 2014
`
`TITLE: METHOD AND SYSTEM FOR CONFIGURATION MANAGEMENT
`DATABASE SOFTWARE LICENSE COMPLIANCE
`
`DECLARATION OF TAL LAVIAN, PH.D.
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`Table of Contents
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`Page
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`I.
`II.
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`V.
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`BRIEF SUMMARY OF MY OPINIONS ...................................................... 1
`INTRODUCTION AND QUALIFICATIONS .............................................. 2
`A. Qualifications and Experience ............................................................. 2
`B. Materials Considered ............................................................................ 6
`III. PERSON OF ORDINARY SKILL IN THE ART ......................................... 7
`IV. STATE OF THE ART OF THE RELEVANT TECHNOLOGY AT
`THE TIME OF THE ALLEGED INVENTION ............................................ 9
`A. Managing Software License Compliance ............................................ 9
`B. Using Configuration Management Databases to Manage
`Software .............................................................................................. 10
`THE ’093 PATENT’S TECHNIQUE FOR SOFTWARE LICENSE
`COMPLIANCE ............................................................................................ 13
`A.
`The Specification ................................................................................ 13
`B.
`The Claims of the ’093 Patent ............................................................ 19
`C.
`Claim Construction ............................................................................ 21
`1.
`“license certificate” .................................................................. 21
`2.
`“model” and “modeling” .......................................................... 23
`3.
`“exception indication” ............................................................. 24
`VI. APPLICATION OF THE PRIOR ART TO THE CLAIMS OF THE
`’093 PATENT ............................................................................................... 27
`A.
`Brief Summary of the Prior Art Applied in this Declaration ............. 27
`1. Meyer [Ex. 1003] ..................................................................... 27
`2.
`Best Practice [Ex. 1004] .......................................................... 31
`3.
`Addy [Ex. 1005] ....................................................................... 32
`4.
`Bruchlos [Ex. 1006] ................................................................. 33
`B. All Limitations of Claim 1 Are Disclosed or Suggested by
`Meyer in view of Best Practice and Addy ......................................... 34
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`-i-
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`Table of Contents
`(continued)
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`Page
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`(ii)
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`-ii-
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`(a)
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`(b)
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`(c)
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`(d)
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`“modeling deployment of a software product and a
`software license contract for the software product”
`(Claim 1[a]) ................................................................... 34
`“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” (Claim 1[b]) ..................................................... 37
`“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” (Claim 1[c]) ................................................... 38
`“evaluating the deployment of the software
`product for compliance with the software license
`contract, comprising . . .” (Claim 1[d]) ......................... 45
`(i)
`“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” (Claim 1[d][1]) ......................... 47
`“generating an exception indication if the act
`of comparing the first model and the second
`model indicates non-compliance with the
`software license contract” (Claim 1[d][2]) ......... 55
`C. All Limitations of Claim 5 Are Disclosed or Suggested by
`Meyer in View of Best Practice and Addy ......................................... 57
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`Table of Contents
`(continued)
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`Page
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`D. All Limitations of Claim 10 Are Disclosed or Suggested by
`Meyer in View of Best Practice and Addy ......................................... 57
`Claims 11-13 (the “License Type” dependent claims) ...................... 59
`1.
`Claim 11 ................................................................................... 59
`2.
`Claim 12 ................................................................................... 62
`3.
`Claim 13 ................................................................................... 62
`All Limitations of Claim 16 Are Disclosed or Suggested by
`Meyer, Best Practice, and Addy ......................................................... 64
`VII. CONCLUSION ............................................................................................. 67
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`E.
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`F.
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`-iii-
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`Declaration of Tal Lavian, Ph.D., in Support of Petition
`for Inter Partes Review of U.S. Patent No. 8,646,093
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`I, Tal Lavian, Ph.D., declare as follows:
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`1.
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`I have been retained by counsel for ServiceNow, Inc. (Petitioner) in
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`this case as an expert in the relevant art.
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`2.
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`I have been asked to provide my opinions relating to claims 1, 5, 10-
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`13, and 16 of U.S. Patent No. 8,646,093 to Myers et al. (“the ’093 patent”), which I
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`understand is owned by BMC Software, Inc.
`
`I.
`
`BRIEF SUMMARY OF MY OPINIONS
`3.
`
`Claims 1, 5, 10-13, and 16 purport to recite a method and system for
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`managing software license compliance. They do not describe anything new or
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`non-obvious when the earliest application for the ’093 patent was filed in March
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`2009. As explained in detail in Part VI of this Declaration, the features described
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`in these claims are nothing more than the combination of two known prior art
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`technologies: (1) a system for determining compliance with software license
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`contracts; and (2) a configuration management database (CMDB) for storing
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`information about software assets. Each of these features is described or suggested
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`by Meyer (Ex. 1003) and Best Practice (Ex. 1004). Because claims 1, 5, 10-13,
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`and 16 do not recite anything inventive or non-obvious, and each limitation is
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`disclosed or suggested by the prior art as described below, each of those claims is
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`obvious. The bases for my opinions are set forth below.
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`
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`1
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`Declaration of Tal Lavian, Ph.D., in Support of Petition
`for Inter Partes Review of U.S. Patent No. 8,646,093
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`II.
`
`INTRODUCTION AND QUALIFICATIONS
`A. Qualifications and Experience
`4.
`I possess the knowledge, skills, experience, training and the education
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`to form an expert opinion and testimony in this case. A detailed record of my
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`professional qualifications, including a list of patents and academic and
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`professional publications, is set forth in my curriculum vitae attached to this
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`declaration as Exhibit A.
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`5.
`
`I have more than 25 years of experience in the networking,
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`telecommunications, Internet, and software fields. I received a Ph.D. in Computer
`
`Science from the University of California at Berkeley in 2006 and obtained a
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`Master’s of Science (“M.Sc.”) degree in Electrical Engineering from Tel Aviv
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`University, Israel, in 1996. In 1987, I obtained a Bachelor of Science (“B.Sc.”) in
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`Mathematics and Computer Science, also from Tel Aviv University.
`
`6.
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`I am currently employed by the University of California at Berkeley
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`and was appointed as a lecturer and Industry Fellow in the Center of
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`Entrepreneurship and Technology (“CET”) as part of UC Berkeley College of
`
`Engineering. I have been with the University of California at Berkeley since 2000
`
`where I served as Berkeley Industry Fellow, Lecturer, Visiting Scientist, Ph.D.
`
`Candidate, and Nortel’s Scientist Liaison, where some positions and projects were
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`done concurrently, others sequentially.
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`Declaration of Tal Lavian, Ph.D., in Support of Petition
`for Inter Partes Review of U.S. Patent No. 8,646,093
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`7.
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`I have more than 25 years of experience as a scientist, educator and
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`technologist, and much of my experience relates to computer networking
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`technologies. For eleven years from 1996 to 2007, I worked for Bay Networks and
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`Nortel Networks. Bay Networks was in the business of making and selling
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`computer network hardware and software. Nortel Networks acquired Bay
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`Networks in 1998, and I continued to work at Nortel after the acquisition.
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`Throughout my tenure at Bay and Nortel, I held positions including Principal
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`Scientist, Principal Architect, Principal Engineer, Senior Software Engineer, and
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`led the development and research involving a number of networking technologies.
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`I led the efforts of Java technologies at Bay network and Nortel Networks. In
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`addition, during 1999-2001, I served as the President of the Silicon Valley Java
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`User Group with over 800 active members from many companies in the Silicon
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`Valley.
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`8.
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`Prior to that, from 1994 to 1995, I worked as a software engineer and
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`team leader for Aptel Communications, designing and developing mobile wireless
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`devices and network software products. From 1990 to 1993, I worked as a software
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`engineer and team leader at Scitex Ltd., where I developed system and network
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`communications tools (mostly in C and C++).
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`9.
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`I have extensive experience in the area of network communications
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`and Internet technologies including design and implementation of computer-based
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`
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`Declaration of Tal Lavian, Ph.D., in Support of Petition
`for Inter Partes Review of U.S. Patent No. 8,646,093
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`systems for managing communications networks, including the ability to monitor
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`and provision networks. While with Nortel Networks and Bay Networks
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`(mentioned above) my work involved the research and development of these
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`technologies. For example, I wrote software for Bay Networks and Nortel
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`Networks Web based network management for Bay Networks switches. I
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`developed Simple Network Management Protocol (SNMP) software for Bay
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`Network switches and software interfaces for Bay Networks’ Optivity Network
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`Management System. I wrote software for Java based device management
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`including software interface to the device management and network management
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`for the Accelar routing switch family network management system.
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`10.
`
`I have extensive experience in network communications, including
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`control and management of routing and switching architectures and protocols in
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`layers 1-7 of the OSI model. Much of my work for Nortel Networks (mentioned
`
`above) involved the research and development of network communications
`
`technologies. For example, I wrote software for Bay Networks and Nortel
`
`Networks switches and routers, developed network technologies for the Accelar
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`8600 family of switches and routers, the OPTera 3500 SONET switches, the
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`OPTera 5000 DWDM family, and the Alteon L4-7 switching product family. In
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`my lab, I installed, configured, managed and tested many network communications
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`equipment of competitors such as Cisco Systems, Juniper Networks, Extreme
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`Declaration of Tal Lavian, Ph.D., in Support of Petition
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`Networks, Lucent and Alcatel.
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`11.
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`I am named as a co-inventor on more than 80 issued patents and I co-
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`authored more than 25 scientific publications, journal articles, and peer-reviewed
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`papers. Furthermore, I am a Senior Member of the Institute of Electrical and
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`Electronics Engineers (“IEEE”).
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`12.
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`I currently serve as a Principal Scientist at my company Telecomm
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`Net Consulting Inc., where I develop network communication technologies and
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`provide research and consulting in advanced technologies, mainly in computer
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`networking and Internet technologies. In addition, I serve as a Co- Founder and
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`Chief Technology Officer (CTO) of VisuMenu, Inc., where I design and develop
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`architecture of visual IVR technologies for smartphones and wireless mobile
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`devices in the area of network communications. The system is based on cloud
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`networking and cloud computing utilizing Amazon Web Services.
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`13. Additional details of my background are set forth in my curriculum
`
`vitae, attached as Exhibit A to this Declaration, which provides a more complete
`
`description of my educational background and work experience. I am being
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`compensated for the time I have spent on this matter. My compensation does not
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`depend in any way upon the outcome of this proceeding. I hold no interest in the
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`Petitioner (ServiceNow, Inc.) or the patent owner (BMC Software, Inc.).
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`Declaration of Tal Lavian, Ph.D., in Support of Petition
`for Inter Partes Review of U.S. Patent No. 8,646,093
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`
`B. Materials Considered
`14. The analysis provided in this Declaration is based on my education
`
`and experience in the field of computer systems and service management tools, as
`
`well as the documents I have considered including U.S. Patent No. 8,646,093
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`(“’093 patent”) [Ex. 1001]. The ’093 patent states on its face that it issued from an
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`application filed on December 9, 2009. The ’093 patent also claims priority to and
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`incorporates by reference U.S. Provisional Application Ser. No. 61/165,505 filed
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`on March 31, 2009, which I have reviewed. (’093, Ex. 1001, 1:9-12; see also Ex.
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`1007 (provisional application).) For purposes of my analysis, I have assumed
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`March 2009 as the priority date for the ’093 patent.
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`15. The prior art documents I rely upon in this Declaration are:
`
`Exhibit
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`1003
`1004
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`1005
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`1006
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`Description of Document
`
`U.S. Patent No. 6,810,389 B1 to Marc A. Meyer
`Excerpts from Best Practice for Software Asset Management, IT
`Infrastructure Library (ITIL) (2003)
`Excerpts from Rob Addy, Effective IT Service Management, to ITIL
`and Beyond! (2007)
`U.S. Patent Application Publication No. 2005/0071276 A1 to
`Joachim Bruchlos et al.
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`6
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`Declaration of Tal Lavian, Ph.D., in Support of Petition
`for Inter Partes Review of U.S. Patent No. 8,646,093
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`III. PERSON OF ORDINARY SKILL IN THE ART
`16.
`I understand that an assessment of claims of the ’093 patent should be
`
`undertaken from the perspective of a person of ordinary skill in the art as of the
`
`earliest claimed priority date, which I understand is March 31, 2009.
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`17.
`
`In my opinion, a person of ordinary skill in the art as of March 2009
`
`would have possessed at least a bachelor’s degree in computer science (or
`
`equivalent degree or experience) with at least four years of practical experience or
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`coursework in the design or development of systems for management of network-
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`based systems and network management databases, such as configuration
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`management databases (CMDBs). Such a person would also have general
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`familiarity with service management tools, software license contracts and
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`techniques for ensuring compliance with those licenses. As I will explain below,
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`all of these areas were well-developed and mature well before March 2009.
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`18. My opinions regarding the level of ordinary skill in the art are based
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`on, among other things, my over 25 years of experience in the field of network
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`communications, computer science and engineering, my understanding of the basic
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`qualifications that would be relevant to an engineer or scientist tasked with
`
`investigating methods and systems in the relevant area, and my familiarity with the
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`backgrounds of colleagues and co-workers, both past and present.
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`19. Although my qualifications and experience exceed those of the
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`
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`Declaration of Tal Lavian, Ph.D., in Support of Petition
`for Inter Partes Review of U.S. Patent No. 8,646,093
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`hypothetical person having ordinary skill in the art defined above, my analysis and
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`opinions regarding the ’093 patent have been based on the perspective of a person
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`of ordinary skill in the art as of March 2009.
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`Declaration of Tal Lavian, Ph.D., in Support of Petition
`for Inter Partes Review of U.S. Patent No. 8,646,093
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`IV. STATE OF THE ART OF THE RELEVANT TECHNOLOGY AT
`THE TIME OF THE ALLEGED INVENTION
`20. The ’093 patent generally discloses a method and system for
`
`monitoring compliance with software license contracts. In this section, I provide a
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`brief background of the state of software license contract compliance technology
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`prior to March 2009 pertinent to the ’093 patent.
`
`A. Managing Software License Compliance
`21. By March 2009, computer software had become a common fixture of
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`everyday life, and integral to the functioning of most business enterprises.
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`Computer software has long been made available to customers pursuant to a
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`contract known generally as a “software license,” which governs the customer’s
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`use of the software. A software license may specify, among other things, the
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`number of users within an enterprise who are permitted to use the licensed
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`software (including the number of users who may use the software concurrently),
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`or how long the licensed software may be used before the license must be renewed.
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`Software license contracts can also be one component of a larger service contract
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`with the provider, and thus, can include a number of complex provisions.
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`22.
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`It is important for a number of reasons for an enterprise to comply
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`with the terms of software license contracts. Violating a software license contract
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`could not only expose the enterprise to liability for breach of contract, but in some
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`Declaration of Tal Lavian, Ph.D., in Support of Petition
`for Inter Partes Review of U.S. Patent No. 8,646,093
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`cases, civil or criminal liability for copyright infringement. (Best Practice for
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`Software Asset Management (2003) (“Best Practice”), Ex. 1004, at 20-21.)
`
`Although violations of software license contracts are often unintentional, those
`
`violations can still carry significant consequences for the enterprise. (Id. at 21.)
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`23. However, monitoring compliance with software licenses is not always
`
`a straightforward endeavor. Larger enterprises may have hundreds of software
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`products governed by different software license contracts, each presenting varying
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`terms. Additionally, software products “typically have complex legal conditions
`
`that can be misunderstood even by people working in the area.” (Id. at 20.) To
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`respond to these concerns, industry has developed a variety of techniques for
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`monitoring and managing compliance with software license contracts. Some of
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`these techniques involve common sense processes of taking an inventory of
`
`installed software and comparing it against the governing software license
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`contracts, and taking corrective action if violations are found.
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`B. Using Configuration Management Databases to Manage Software
`24. As the number and variety of software licenses increased, industry
`
`recognized a need for a more automated and computer-assisted approach to
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`manage software assets and compliance with software license contracts. One
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`solution was to use a database known as a “Configuration Management
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`Database” or “CMDB,” to keep track of these licenses. Generally speaking,
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`Declaration of Tal Lavian, Ph.D., in Support of Petition
`for Inter Partes Review of U.S. Patent No. 8,646,093
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`“CMDB” is an industry-standard term referring to a database that stores
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`information about the Information Technology (“IT”) assets used by an enterprise,
`
`such as servers, workstations, software programs, documentation, and other
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`computing resources. The CMDB contains a series of records, known as
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`“configuration items” or “CIs,” for storing information about the IT assets.
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`25. The Background of the ’093 patent acknowledges that CMDBs and
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`CIs are not an invention of the patent. (’093, 1:18-42.) The Background further
`
`acknowledges that CMDBs “are emerging as a prominent technology for
`
`Enterprise Management software.” (’093, 1:24-26.) “The CMDB serves as a point
`
`of integration between various IT management processes,” including software
`
`asset management, which is a “core component of an overall asset management
`
`policy.” (’093, 1:39-40; 1:49-51.) The patent acknowledges that “[o]ne kind of CI
`
`that may be managed in a CMDB is a software asset.” (’093, 1:43-44.)
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`26. Many of the processes and techniques for managing software assets
`
`using CMDBs were described in Best Practice for Software Asset Management
`
`(2003), a well-known publication in the field published by the IT Infrastructure
`
`Library (“ITIL”). (Ex. 1004 (“Best Practice”).) ITIL is a division of the Office of
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`Government Commerce of the United Kingdom government. (Id. at 1 (under “The
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`IT Infrastructure Library”).) The publications disseminated by ITIL, such as Best
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`Practice, provide industry standards and practices for managing IT assets. ITIL’s
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`Declaration of Tal Lavian, Ph.D., in Support of Petition
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`standards are often considered authoritative by many persons of ordinary skill in
`
`the art. For example, the entire Background section of the ’093 patent is devoted
`
`to discussing and discussing ITIL CMDBs and ITIL-defined processes for
`
`management of software assets. (’093, 1:18-2:8.)
`
`27. As its name implies, the Best Practice publication defines a set of
`
`preferred processes for managing software assets. (Best Practice, Ex. 1004, at p. xi
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`(stating that ITIL “is the most widely accepted approach to IT Service
`
`Management in the world.”).) Best Practice provides a comprehensive guide to
`
`management of software assets, including guidance on how to establish processes
`
`to track and monitor software license compliance. (Best Practice, pp. 50-51, §
`
`5.4.) “Licensing compliance processes are responsible for ensuring that the use of
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`all software within the organisation remains within all legal and contractual terms
`
`and conditions.” (Id. at p. 52, § 5.4.2.) Best Practice also provides an exemplary
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`CMDB/CI schema for storing information about the organization’s software assets
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`and their corresponding software license contracts. (Id. at 121-23, Appendix D.)
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`Declaration of Tal Lavian, Ph.D., in Support of Petition
`for Inter Partes Review of U.S. Patent No. 8,646,093
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`V. THE ’093 PATENT’S TECHNIQUE FOR SOFTWARE LICENSE
`COMPLIANCE
`A. The Specification
`28. The ’093 patent generally describes a method and a system to
`
`“monitor and verify software license compliance in an enterprise.” (’093, Ex.
`
`1001, 2:66-67.) The patent discusses managing software license compliance by
`
`using databases and modeling to compare the deployment of software within an
`
`enterprise to the enterprise’s software license contracts. (’093, Abstract.)
`
`29. Figure 2 provides a general overview of one embodiment of the
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`computer-implemented method and system described in the ’093 patent:
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`(’093, Fig. 2.)
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`Declaration of Tal Lavian, Ph.D., in Support of Petition
`for Inter Partes Review of U.S. Patent No. 8,646,093
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`30. Figure 2 includes management system 200 that has a Configuration
`
`Management Database (“CMDB”) 260. As explained in the Background and
`
`noted above, the CMDBs were well-known and “a prominent technology for
`
`Enterprise Management Software.” (’093, 1:18-26.) A CMDB “contains data
`
`about managed resources known as Configuration Items (CIs).” (’093, 1:29-30.).
`
`31. The patent uses these configuration items (CIs) to store information
`
`about software products and their associated software contracts. “Information
`
`about the software contracts is stored as CIs in the CMDB datastore 260 [of Figure
`
`2] using one or more of the clients 210/220.” (’093, 5:1-3.)
`
`32. The management system in Figure 2 also includes a license datastore
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`270. Although shown as a separate database in Figure 2 above, license datastore
`
`270 “may be integrated with the CMDB datastore 260.” (’093, 4:11-13.) “The
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`license datastore 270 provides storage for [sic] to model software contracts,
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`including rules against which the CIs are evaluated for software license compliance
`
`and other information necessary for processing those rules.” (’093, 4:13-17.) The
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`’093 patent identifies at least two types of information used to evaluate compliance
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`with a software license contract: (1) information about the software license
`
`contract, and (2) a license certificate corresponding to the license.
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`33. First, configuration information about a software license contract
`
`may be stored in the CMDB, including the term of the license, its current status
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`Declaration of Tal Lavian, Ph.D., in Support of Petition
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`(draft, executed, expired, etc.), the company and other information associated with
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`the contract. (’093, 5:10-56 (Table 1).) The CMDB may also provide a number of
`
`pre-defined “license types” that can be essentially used as templates in identifying
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`the characteristics of a software license contract. (’093, 6:1, 6:33-35.) Exemplary
`
`“license types” include “enterprise,” “site,” and “per instance” software licenses
`
`(among others), each having certain pre-defined characteristics. (’093, 6:40-55
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`(Table 2).) The user can also create new license types, if needed. (’093, Fig 4
`
`(step 420).) As shown in Part V.B below, this information relating to the software
`
`license contract is part of the “first model” recited in the claims.
`
`34. Second, the ’093 patent describes a “license certificate” that is linked
`
`to its corresponding software license contract. (’093, 3:1-2.) “A license certificate
`
`indicates the right to deploy software in the environment managed by the CMDB
`
`server 110.” (’093, 8:59-63.) A “license certificate” may comprise a variety of
`
`information relating to the right to use the software, including the license category
`
`(client, server, mainframe), effective date and expiration date, among other
`
`information. (’093, 9:1-20 (Table 3).) The system may ask the user to enter
`
`additional information such as “how many licenses were purchased and how many
`
`copies per device are allowed under each license.” (’093, 9:35-36.) “Other
`
`questions may be asked depending typically on the license type. The additional
`
`information supplied in response to those questions may be included in the license
`
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`Declaration of Tal Lavian, Ph.D., in Support of Petition
`for Inter Partes Review of U.S. Patent No. 8,646,093
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`certificate as it is stored in the license datastore 270.” (’093, 9:36-40.) This
`
`license certificate information is part of the “second model” in the claims.
`
`35. Once these two categories of information – software license contract
`
`and license certificate information – are compiled, the system uses them to
`
`evaluate the status of the licenses:
`
`FIG. 4 is a flowchart illustrating a technique 400 for preforming
`software license compliance monitoring and verification. . . . [A]fter
`the license certificates are created, then in block 440, the license
`engine 250 is run. The license engine evaluates the status of the
`software licenses modeled in the CMDB 260 against the license
`certificates created in block 430.
`
`(’093, 4:58-59, 10:28-32.)
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`
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`Declaration of Tal Lavian, Ph.D., in Support of Petition
`for Inter Partes Review of U.S. Patent No. 8,646,093
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`(’093, Fig. 4.)
`
`36. One exemplary process for comparing the licenses against the
`
`certificate is shown in Figure 5. (’093, Fig. 5.) That process involves, among
`
`other steps, evaluation of “compliance rules” in order “to determine whether each
`
`of the software CIs complies with the terms of the software contract. In block 560,
`
`if any CI is not in compliance, then any desired exception processing may be
`
`performed.” (’093, 10:49-53.) This exception processing “in one embodiment
`
`may be simply producing an error message or report indicating the exception.”
`
`(’093, 10:55-56.) “Where the organization is not in compliance, the license engine
`
`identifies the non-compliance and provides information that may allow the contract
`
`or asset manager to address the problems and bring the organization into
`
`compliance.” (’093, 13:20-24.)
`
`
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`Declaration of Tal Lavian, Ph.D., in Support of Petition
`for Inter Partes Review of U.S. Patent No. 8,646,093
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`(’093, Fig. 5.)
`
`
`
`
`
`37. The specification provides a specific example of evaluating
`
`compliance with a “per copy per device license.”
`
`In FIG. 6, a graph 600 illustrates compliance with a per copy per
`device license. Company 610 has purchased two licenses for some
`software, which is used at two different sites (620 and 622) by four
`users. In this example, the software contracts do not limit the number
`of users that may use a given copy of the licensed software. . . . The
`license engine 250 connects certificate 670 to contract 660. Because
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`Declaration of Tal Lavian, Ph.D., in Support of Petition
`for Inter Partes Review of U.S. Patent No. 8,646,093
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`the 2 instances of the software found installed in the CMDB 260
`match the 2 licenses purchased by company 610, only 2 licenses are in
`use, and the company 610 complies with software license contract
`660.
`
`(’093, 10:28-42.)
`
`B.
`The Claims of the ’093 Patent
`38. The two independent claims addressed in this Declaration—i.e.,
`
`claims 1 and 16—purport to recite a method and a system, respectively, for
`
`managing software license contracts. The first independent claim addressed in this
`
`Declaration is claim 1, which recites:
`
`[b]
`
`1. A computer-implemented method, comprising:
`[a] 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
`
`[c]
`
`[d]
`
`
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`Declaration of Tal Lavian, Ph.D., in Support of Petition
`for Inter Partes Review of U.S. Patent No. 8,646,093
`
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`compliance with the software license contract, comprising:
`[d][1]
`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
`the act of
`if
`indication
`generating an exception
`comparing the first model and the second model indica