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
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,646,093
`
`

`
`Table of Contents
`
`
`Page
`
`
`I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) ....................... 1
`A.
`Real Party-In-Interest under 37 C.F.R. § 42.8(b)(1) ............................ 1
`B.
`Related Matters under 37 C.F.R. § 42.8(b)(2) ..................................... 1
`C.
`Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3) .................. 1
`D.
`Service Information .............................................................................. 2
`E.
`Power of Attorney ................................................................................ 2
`PAYMENT OF FEES - 37 C.F.R. § 42.103 .................................................. 2
`II.
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37
`C.F.R. §§ 42.104 AND 42.108 ....................................................................... 3
`A. Grounds for Standing under 37 C.F.R. § 42.104(a) ............................. 3
`B.
`Identification of Challenge under 37 C.F.R. § 42.104(b) and
`Statement of Precise Relief Requested ................................................ 3
`Requirements for Inter Partes Review 37 C.F.R. § 42.108(c) ............. 4
`C.
`IV. BRIEF BACKGROUND OF THE UNDERLYING TECHNOLOGY ......... 4
`V.
`SUMMARY OF THE CLAIMED SUBJECT MATTER .............................. 9
`A.
`The Specification of the ’093 Patent .................................................... 9
`B.
`The Challenged Claims of the ’093 Patent ........................................ 14
`VI. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3) ................. 15
`A.
`“license certificate” ............................................................................ 16
`B.
`“model” and “modeling” .................................................................... 17
`C.
`“exception indication” ........................................................................ 19
`VII. CLAIMS 1, 5, 10-13, AND 16 ARE UNPATENTABLE ........................... 20
`A.
`Brief Summary and Date Qualification of the Prior Art .................... 21
`1.
`Brief Overview of Meyer (Ex. 1003) ....................................... 21
`2.
`Brief Overview of Best Practice (Ex. 1004) ............................ 24
`3.
`Brief Overview of Addy (Ex. 1005) ........................................ 25
`4.
`Brief Overview of Bruchlos (Ex. 1006) ................................... 26
`
` 
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`

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`Table of Contents
`(continued)
`
`Page
`
`b.
`
`B. Ground 1: Claims 1, 5, 10, and 16 Are Obvious Over Meyer in
`View of Best Practice and Addy ........................................................ 26
`1.
`Claim 1 ..................................................................................... 26
`a.
`“modeling deployment of a software product and a
`software license contract for the software product”
`(Claim 1[a]) ................................................................... 26
`“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]) ..................................................... 29
`“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]) ................................................... 30
`“evaluating the deployment of the software
`product for compliance with the software license
`contract, comprising . . .” (Claim 1[d]) ......................... 38
`(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” (Claim 1[d][1]) ......................... 39
`
`c.
`
`d.
`
`‐ii‐
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`

`
`Table of Contents
`(continued)
`
`Page
`
`
`
`(2)
`
`“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]) ......... 47
`Claim 5 ..................................................................................... 49
`2.
`Claim 10 ................................................................................... 49
`3.
`Claim 16 ................................................................................... 51
`4.
`C. Ground 2: Claims 11-13 Are Obvious Over Meyer in View of
`Best Practice, Addy and Bruchlos ...................................................... 53
`1.
`Claim 11 ................................................................................... 53
`2.
`Claim 12 ................................................................................... 56
`3.
`Claim 13 ................................................................................... 56
`VIII. CONCLUSION ............................................................................................. 58
`
` 
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`‐iii‐
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,646,093
`
`
`
`Ex. No
`
`List of Exhibits
`
`Description of Document
`
`1001 U.S. Patent No. 8,646,093 to Anthony George Myers et al.
`
`1002 Declaration of Tal Lavian, Ph.D.
`
`1003 U.S. Patent No. 6,810,389 B1 to Marc A. Meyer
`
`1004
`
`1005
`
`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)
`
`1006 U.S. Patent Application Publication No. 2005/0071276 A1 to Joachim
`Bruchlos et al.
`
`1007
`
`Excerpts from Joint Claim Construction Chart filed in BMC Software,
`Inc. v. ServiceNow, Inc., Case No. 14-CV-00903 JRG (E.D. Tex.), on
`June 26, 2015, ECF No. 109
`
` 
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`‐iv‐
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`

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`Petition for Inter Partes Review of
`U.S. Patent No. 8,646,093
`
`ServiceNow, Inc. submits this Petition for Inter Partes Review of claims 1,
`
`5, 10-13, and 16 of U.S. Patent No. 8,646,093 (Ex. 1001) (“’093 patent”).
`I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1)
`
`A. Real Party-In-Interest under 37 C.F.R. § 42.8(b)(1)
`The Petitioner, ServiceNow, Inc. (“Petitioner”), is the real party-in-interest.
`
`B. Related Matters under 37 C.F.R. § 42.8(b)(2)
`The ’093 patent is the subject of one pending litigation involving the
`
`Petitioner: BMC Software, Inc. v. ServiceNow, Inc., Case No. 14-CV-00903 JRG
`
`(E.D. Tex. Sept. 23, 2014), in which the patent owner contends that the Petitioner
`
`infringes the claims of the ’093 patent challenged in this Petition.
`
`C. Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3)
`Petitioner provides the following designation of counsel.
`
`LEAD COUNSEL
`Heidi L. Keefe (Reg. No. 40,673)
`hkeefe@cooley.com
`zpatdcdocketing@cooley.com
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`
`BACK-UP COUNSEL
`Phillip E. Morton (Reg. No. 57,835)
`pmorton@cooley.com
`zpatdcdocketing@cooley.com
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington D.C. 20004
`T: (703) 456(cid:31)8668
`F: (703) 456(cid:31)8100
`Andrew C. Mace (Reg. No. 63,342)
`amace@cooley.com
`zpatdcdocketing@cooley.com
`COOLEY LLP
`ATTN: Patent Group
`
` 
`
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`‐1‐
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,646,093
`
`
`LEAD COUNSEL
`
`BACK-UP COUNSEL
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (650) 843-5808
`Fax: (650) 849-7400
`
`
`
`Service Information
`
`D.
`This Petition is being served to the current correspondence address for the
`
`’093 patent, BRAKE HUGHES BELLERMANN LLP, c/o CPA Global, P.O. Box 52050,
`
`Minneapolis, MN 55402.
`
`The Petitioner may be served at the addresses provided above for lead and
`
`back-up counsel, and consents to electronic service at those addresses.
`
`Power of Attorney
`
`E.
`Filed concurrently with this Petition in accordance with 37 C.F.R.
`
`§ 42.10(b).
`II.
`
`PAYMENT OF FEES - 37 C.F.R. § 42.103
`
`This Petition requests review of seven (7) claims of the ’093 patent.
`
`Accordingly, a payment of $23,000 is submitted herewith. This payment is
`
`calculated based on a $9,000 request fee (for up to 20 claims), and a post-
`
`institution fee of $14,000 (for up to 15 claims). See 37 C.F.R. § 42.15(a). This
`
`Petition meets the fee requirements of 35 U.S.C. § 312(a)(1).
`
` 
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`
`
`‐2‐
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,646,093
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R. §§ 42.104
`AND 42.108
`
`A. Grounds for Standing under 37 C.F.R. § 42.104(a)
`The Petitioner certifies that the ’093 patent is available for inter partes
`
`review and that the Petitioner is not barred or otherwise estopped from requesting
`
`inter partes review on the ground identified in the present Petition. The Petitioner
`
`is unaware of any previous petition for inter partes review or request for
`
`reexamination with respect to the ’093 patent.
`
`B.
`
`Identification of Challenge under 37 C.F.R. § 42.104(b) and
`Statement of Precise Relief Requested
`The Petitioner respectfully requests that the Board initiate inter partes
`
`review of claims 1, 5, 10-13, and 16 of the ’093 patent. This Petition cites the
`
`following prior art references, included as Exhibits 1003 through 1006:
`
`Ex. No.
`1003
`1004
`
`1005
`
`1006
`
`Description of Prior Art Reference
`U.S. Patent No. 6,810,389 B1 to Marc A. Meyer (“Meyer”)
`Excerpts from Best Practice for Software Asset Management, IT
`Infrastructure Library (ITIL) (2003) (“Best Practice”)
`Excerpts from Rob Addy, Effective IT Service Management, to ITIL
`and Beyond! (2007) (“Addy”)
`U.S. Patent Application Publication No. 2005/0071276 A1 to
`Joachim Bruchlos et al. (“Bruchlos”)
`
`As explained in Part VII.A below (discussion under “Prior Art and Date
`
`Qualification”), each of the references listed above qualifies as prior art to the ’093
`
`patent. The grounds on which this Petition is based are listed below:
` 
`‐3‐
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,646,093
`
`
`
`Ground
`1
`
`2
`
`Basis for Challenge
`Claims
`1, 5, 10, 16 Unpatentable over Meyer in view of Best Practice and
`Addy, under 35 U.S.C. § 103(a)
`Unpatentable over Meyer in view of Best Practice and
`Addy, in further view of Bruchlos, under 35 U.S.C. §
`103(a)
`
`11-13
`
`Part VII below provides a detailed explanation as to why claims 1, 5, 10-13,
`
`and 16 are unpatentable based on the grounds identified above. The Petitioner has
`
`also submitted an accompanying Declaration of Tal Lavian, Ph.D. (“Lavian
`
`Decl.”) (Exhibit 1002), a technical expert with more than two decades of relevant
`
`experience, including extensive experience in computer programming and software
`
`development. (Lavian Decl., Ex. 1002, ¶¶ 4-13, Ex. A.)
`
`C. Requirements for Inter Partes Review 37 C.F.R. § 42.108(c)
`The Board should institute inter partes review of claims 1, 5, 10-13, and 16
`
`because this Petition establishes a reasonable likelihood of prevailing. Each
`
`limitation of claims 1, 5, 10-13, and 16 is disclosed and/or suggested by the prior
`
`art, as explained in detail in Part VII.
`IV. BRIEF BACKGROUND OF THE UNDERLYING TECHNOLOGY
`
`The ’093 patent generally discloses a method and system for monitoring
`
`compliance with software license contracts. This section will provide a brief
`
` 
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`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,646,093
`
`background of the state of software license contract compliance technology prior to
`
`March 2009 pertinent to the ’093 patent.1
`
`A. Managing Software License Compliance
`By March 2009, computer software had become a common fixture of
`
`everyday life, and integral to the functioning of most business enterprises.
`
`Computer software has long been made available to customers pursuant to a
`
`contract known generally as a “software license,” which governs the customer’s
`
`use of the software. A software license may specify, among other things, the
`
`number of users within an enterprise who are permitted to use the licensed
`
`software, or how long the licensed software may be used before the license expires.
`
`License contracts can also be one component of a larger service contract with the
`
`provider, and thus, can include a number of complex provisions. (Lavian Decl. ¶
`
`21.)
`
`
`1 As explained by Dr. Lavian, a person of ordinary skill in the art as of March
`
`2009 would have had at least at least a bachelor’s degree in computer science (or
`
`equivalent degree or experience) with at least four years of practical experience or
`
`coursework in the design or development of systems for management of network-
`
`based systems and network management databases, such as configuration
`
`management databases (CMDBs). (Lavian Decl., Ex. 1002, ¶ 17.)
`
` 
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,646,093
`
`It is important for a number of reasons for an enterprise to comply with the
`
`terms of software license contracts. (Id. ¶ 22.) Violating a software license
`
`contract could not only expose the enterprise to liability for breach of contract, but
`
`in some cases, civil or criminal liability for copyright infringement. (Best Practice
`
`for 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.)
`
`But monitoring compliance with software licenses is not always a simple
`
`task. Larger enterprises may have hundreds of software products governed by
`
`different software license contracts, each presenting varying terms. (Lavian Decl.
`
`¶ 23.) Additionally, software products “typically have complex legal conditions
`
`that can be misunderstood even by people working in the area.” (Best Practice, Ex.
`
`1004, at 20.) To respond to these concerns, industry developed a variety of
`
`techniques for managing compliance with software licenses. Some of these
`
`techniques involve common sense processes of taking an inventory of installed
`
`software and comparing it against the governing software license contracts, and
`
`taking corrective action if violations are found. (Lavian Decl. ¶ 23.)
`
`‐6‐
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,646,093
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`B. Managing Software Licenses with CMDBs
`As the number and variety of software licenses increased, industry
`
`recognized a need for a more automated and computer-assisted approach to
`
`manage software assets and compliance with software license contracts. One
`
`solution was to use a database known as a “Configuration Management
`
`Database” or “CMDB,” to keep track of these licenses. Generally speaking,
`
`“CMDB” is an industry-standard term referring to a database that stores
`
`information about the Information Technology (“IT”) assets used by an enterprise,
`
`such as servers, workstations, software programs, documentation, and other
`
`computing resources. The CMDB contains a series of records, known as
`
`“configuration items” or “CIs,” for storing information about the IT assets.
`
`(Lavian Decl., Ex. 1002, ¶ 24.)
`
`The Background of the ’093 patent acknowledges that CMDBs and CIs are
`
`not an invention of the patent. (’093, Ex. 1001, 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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`Petition for Inter Partes Review of
`U.S. Patent No. 8,646,093
`
`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”); Lavian Decl. ¶ 26.) ITIL is a division of
`
`the Office of Government Commerce of the United Kingdom government. (Best
`
`Practice, Ex. 1004, at 1 (under “The IT Infrastructure Library”).) ITIL
`
`publications, such as Best Practice, provide industry standards and practices for
`
`managing IT assets, and are often considered authoritative by many persons of
`
`ordinary skill in the art. (Lavian Decl. ¶ 26.) In fact, 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.)
`
`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 (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. (Id., at pp. 50-51, § 5.4.) “Licensing
`
`compliance processes are responsible for ensuring that the use of 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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`Petition for Inter Partes Review of
`U.S. Patent No. 8,646,093
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`CMDB/CI schema for storing information about the organization’s software assets
`
`and their corresponding software license contracts. (Id. at 121-23, Appendix D.)
`
`Further discussion of Best Practice is set forth in Part VII.A.2 below.
`V.
`
`SUMMARY OF THE CLAIMED SUBJECT MATTER
`
`A. The Specification of the ’093 Patent
`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.)
`
`Figure 2 provides a general overview of one embodiment of the computer-
`
`implemented method and system described in the ’093 patent:
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,646,093
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`
`
`
`(’093, Ex. 1001, Fig. 2.)
`
`Figure 2 includes management system 200 that has a Configuration
`
`Management Database (“CMDB”) 260. As noted above, the patent acknowledges
`
`that 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.)
`
`The patent uses these configuration items (CIs) to store information about
`
`software products and their associated software contracts. “Information about the
`
` 
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,646,093
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`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.)
`
`The management system in Figure 2 also includes a license datastore 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 license
`
`datastore 270 provides storage for [sic] to model software contracts, 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 ’093
`
`patent identifies at least two types of information used to evaluate compliance with
`
`a software license contract: (1) information about the software license contract,
`
`and (2) a license certificate corresponding to the license.
`
`First, configuration information about a software license contract may be
`
`stored in the CMDB, including the term of a license contract, its current status, and
`
`other information associated with 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 the characteristics of a software license
`
`contract. (’093, 6:1, 6:33-35.) Exemplary “license types” include “enterprise,”
`
`“site,” and “per instance,” each having certain pre-defined characteristics. (’093,
`
`6:40-55 (Table 2).) The user can also create new license types, if needed. (’093,
`
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,646,093
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`Fig 4 (step 420).) As shown in Part VII.B below, this information relating to the
`
`software license contract is part of the “first model” recited in the claims.
`
`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
`
`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.
`
`Once these two categories of information – software license contract and
`
`license certificate information – are collected and stored, the system uses them to
`
`evaluate the status of the licenses:
`
`Returning to FIG. 4, after the license certificates are created, then in
`block 440, the license engine 250 is run. The license engine evaluates
`
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,646,093
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`the status of the software licenses modeled in the CMDB 260 against
`the license certificates created in block 430.
`
`(’093, 10:28-32.)
`
`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. 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 include
`
`producing an error message or report. (’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.)
`
`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
`the 2 instances of the software found installed in the CMDB 260
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,646,093
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`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.)
`
`The Challenged Claims of the ’093 Patent
`
`B.
`This Petition addresses claims 1, 5, 10-13, and 16. The two independent
`
`claims addressed in this Petition—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 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
`compliance with the software license contract, comprising:
`
`[c]
`
`[d]
`
` 
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,646,093
`
`[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 indicates
`non-compliance with the software license contract.
`
`[d][2]
`
` (’093, 13:44-14:3 (Claim 1).) The bracketed notations above (e.g., “[a],”
`
`“[b],” etc.) were added for the purpose of more easily identifying these limitations
`
`in the analysis provided below. Dependent claims 5, 10, 11, 12, and 13 depend
`
`from independent claim 1 listed above, and are addressed in more detail in Part
`
`VII below. The second independent claim addressed in this Petition is claim 16,
`
`which generally recites a system claim for performing the method of independent
`
`claim 1.
`VI. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3)
`
`“A claim in an unexpired patent shall be given its broadest reasonable
`
`construction in light of the specification of the patent in which it appears.” 37
`
`C.F.R. § 42.100(b). As the Federal Circuit has recognized, the “broadest
`
`reasonable construction” standard is different from the manner in which the scope
`
`of a claim is determined in litigation. See In re Swanson, 540 F.3d 1368, 1377-78
`
` 
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`

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`Petition for Inter Partes Review of
`U.S. Patent No. 8,646,093
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`(Fed. Cir. 2008). The parties in the concurrent litigation have also exchanged
`
`claim construction positions for these terms and filed them with the district court.
`
`Although they are not binding on the Board, they are nonetheless included
`
`herewith so the Board is aware of the positions taken by the parties. (See Joint
`
`Claim Construction Chart, Ex. 1007.)2
`
`“license certificate”
`
`A.
`The term “license certificate” is recited multiple times in claim 1. The
`
`broadest reasonable construction of “license certificate” to one of ordinary skill in
`
`the art is “information relating to the right to deploy software.” (Lavian Decl.
`
`¶¶ 41, 42.) This definition flows from the following passage of the specification:
`
`After any new license types are created to handle the terms of the new
`software contracts terms, license certificates may be created in block
`430, to link software contracts to CIs. A license certificate indicates
`the right to deploy software in the environment managed by the
`CMDB server 110. In one embodiment, a license certificate comprises
`the information listed in Table 3 below.
`
`
`2 Exhibit 1007 is a copy of a joint claim chart filed with the district court in which
`
`the patent owner and the Petitioner set forth positions on the meaning of certain
`
`terms. Because the district court litigation involves patents beyond the ’093 patent,
`
`Exhibit 1007 was redacted to remove portions related to those other patents.
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` 
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,646,093
`
`(’093, Ex. 1001, 8:59-65 (underlining added).) Table 3 in the specification
`
`provides an exemplary license certificate that includes a number of fields or
`
`attributes including a summary description of the certificate, the expiration date of
`
`the license, and other fields. (’093, 9:1-20 (Table 3).)
`
`Based on the disclosures in the specification, the broadest reasonable
`
`construction of “license certificate” to one of ordinary skill in the art is
`
`“information relating to the right to deploy software,” which is derived from
`
`the underlined sentence quoted above. (’093, 8:61-63 (“A license certificate
`
`indicates the right to deploy software in the environment managed by the CMDB
`
`server 110.”) (underlining added).) This proposed construction removes a portion
`
`of that sentence, “in the environment managed by the CMDB server 110,” because
`
`claim 1 does not recite a server, let alone a “CMDB server.” The claim does recite
`
`a CMDB itself, but does not require a CMDB server.
`
`“model” and “modeling”
`
`B.
`The terms “model” and “modeling” are used throughout the challenged
`
`claims. Claim 1, for example, recites the step of “modeling deployment of a
`
`software product and a software license contract for the software product,” and
`
`storage of a “first model” and a “second model” containing information about a
`
`software product and its software license contract. The broadest reasonable
`
` 
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`

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`Petition for Inter Partes Review of
`U.S. Patent No. 8,646,093
`
`construction of “model” is “an organized collection of information about an
`
`object.” The verb form of that term, “modeling,” means “creating a model.”
`
`The specification does not define “model” but provides examples of how a
`
`software license contract can be modeled. (’093, 2:13-17.) For example, the
`
`specification explains that “the CMDB server 110 may model the software product
`
`packages or components installed on each of the computer systems 120, as well as
`
`the software contracts under which that software is licensed.” (’093, 3:42-45
`
`(underlining added).) Table 1 of the ’093 patent provides an illustration of such a
`
`model for a particular license, which includes fields for the licensee ID, Summary,
`
`Term, Status, Expiration Date, and other fields. (’093, 5:3-5, 5:10-57.) This
`
`example illustrates an example of creating a “model” of a software license contract
`
`that involves nothing more than storage of an organized collection of information
`
`about that the license. (Lavian Decl. ¶ 44.)
`
`As explained by Dr. Lavian, the term “model” in other contexts has been
`
`used to describe a mathematical or graphical representation of an object, but the
`
`specification does not suggest any such requirement. (Id. ¶ 44.) The broadest
`
`reasonable construction of “model” is therefore “an organized collection of
`
`information about an object,” and “modeling” means “creating a model.”
`
` 
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`

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`Petition for Inter Partes Review of
`U.S. Patent No. 8,646,093
`
`C.
`“exception indication”
`The term “exception indication” appears in the final limitation of claim 1,
`
`which recites the step of “generating an exception indication if the act of
`
`comparing the first model and the second model indicates non-compliance with the
`
`software license contract.” The term “exce