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 No. 8,646,093
`Filed December 9, 2009
`Issued February 4, 2014
`Title: Method and system for configuration management database software
`license compliance
`____________________
`
`Filed electronically via the Patent Review Processing System (PRPS) on
`October 19, 2015
`
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`
`
`

`
`Table of Contents
`
`Page
`
`I.
`II.
`III.
`
`IV.
`
`INTRODUCTION ............................................................................................................1
`OVERVIEW OF U.S. PATENT NO. 8,646,093 ..............................................................2
`RESPONSE TO SERVICENOW’S CLAIM CONSTRUCTIONS .................................4
`A.
`Claims of the ’093 Patent ......................................................................................5
`B.
`Disputed Constructions .........................................................................................7
`
`1.
`
`2.
`
`3.
`
`“license certificate” ................................................................................... 7
`
`“model” and “modeling”........................................................................... 8
`
`“exception indication” .............................................................................. 8
`
`THE PETITION FAILS TO MEET SERVICENOW’S BURDEN TO
`SHOW A REASONABLE LIKELIHOOD OF SUCCESS ON ITS
`INVALIDITY GROUNDS ................................................................................................10
`A.
`Legal Standards ......................................................................................................10
`B.
`Overview of the Alleged Prior Art .........................................................................13
`
`1.
`
`2.
`
`3.
`
`4.
`
`U.S. Patent No. 6,810,389 (“Meyer”) (Ex. 1003) ..................................... 13
`
`Best Practice for Software Asset Management (2003)
`(“Best Practice”) (Ex. 1004) ..................................................................... 14
`
`Effective IT Service Management, To ITIL and Beyond!
`(2007) (“Addy”) (Ex. 1005) ...................................................................... 15
`
`U.S. Patent Application Publication No. 2005/0071276 A1
`to Joachim Bruchlos et al. (“Bruchlos”) (Ex. 1006) ................................. 15
`
`Ground 1: Claims 1, 5, 10, and 16 Are Not Obvious Over Meyer in
`View of Best Practice and Addy, Which are Combined Using
`Impermissible Hindsight. .......................................................................................16
`Meyer in View of Best Practice and Addy Fails to Suggest
`“generating a license certificate corresponding to the software
`license contract” .....................................................................................................19
`Meyer in View of Best Practice and Addy Fails to Suggest
`“evaluating the deployment of the software product” ...........................................20
`
`i
`
`C.
`
`D.
`
`E.
`
`
`
`

`
`F.
`
`G.
`
`H.
`
`Meyer in View of Best Practice and Addy Fails to Suggest
`“evaluating the deployment of the software product for compliance
`with the software license contract” ........................................................................21
`Meyer in View of Best Practice and Addy Fails to Suggest
`“comparing the first configuration item with the license certificate” ....................21
`Meyer in View of Best Practice and Addy Fails to Suggest
`“connecting the license certificate with the second configuration
`item responsive to comparing the first configuration item with the
`license certificate” ..................................................................................................23
`Meyer in View of Best Practice and Addy fails to suggest the
`limitations of Claim 16. .........................................................................................24
`Meyer in View of Best Practice and Addy fails to suggest the
`limitations of dependent claims 5, and 10-13. .......................................................25
`Secondary Considerations ......................................................................................25
`K.
`CONCLUSION ..................................................................................................................29
`
`
`I.
`
`J.
`
`V.
`
`
`
`ii
`
`

`
`
`CASES
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`BMC Software, Inc. v. ServiceNow, Inc.,
`No. 2:14-cv-903 (E.D. Tex.) ....................................................................................................26
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) .....................................................................................................................11
`
`In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig.,
`676 F.3d 1063 (Fed. Cir. 2012)................................................................................................11
`
`In re Dow Chem. Co.,
`837 F.2d 469 (Fed. Cir. 1988)..................................................................................................11
`
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011)................................................................................................12
`
`In re Wright,
`866 F.2d 422 (Fed. Cir. 1989)..................................................................................................11
`
`Panduit Corp. v. Dennison Mfg. Co.,
`774 F.2d 1082 (Fed. Cir. 1985)................................................................................................11
`
`Star Scientific, Inc. v. R.J. Reynolds Tobacco Co.,
`655 F.3d 1364 (Fed. Cir. 2011)................................................................................................11
`
`STATUTES
`
`35 U.S.C. § 103 ..............................................................................................................................10
`
`35 U.S.C. § 313 ................................................................................................................................1
`
`35 U.S.C. § 314 ................................................................................................................................1
`
`35 U.S.C. § 314(a) ...........................................................................................................................1
`
`35 U.S.C. § 324 ................................................................................................................................1
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.107 ...........................................................................................................................1
`
`37 C.F.R. § 42.108(b) ......................................................................................................................1
`
`37 C.F.R. § 42.108(c).......................................................................................................................1
`
`
`
`iii
`
`

`
`77 Fed. Reg. at 48,756 .....................................................................................................................1
`
`77 Fed. Reg. at 48,757 .....................................................................................................................1
`
`Dominion Dealer Solutions, LLC v. Autoalert, Inc.,
`IPR2013-00223 ........................................................................................................................12
`
`Heart Failure Tech. v. Cardiokinetix, Inc.,
`IPR2013-00183 ........................................................................................................................12
`
`Intri-Plex Techs. v. St. Gobain,
`IPR2014-00309 ........................................................................................................................11
`
`Sony Corp. of Am. v. Network-1 Sec. Solutions, Inc.,
`IPR2013-00092 ........................................................................................................................12
`
`Travelocity.com L.P., et al. v. Cronos Techs., LLC,
`CBM2014-00082 .......................................................................................................................2
`
`
`
`
`
`iv
`
`

`
`2002
`
`2005
`
`
`
`List of Exhibits
`
`Description
`No.
`2001 Markman Opinion, BMC Software, Inc. v. ServiceNow, Inc., 2:14-cv-903-
`JRG, ECF No. 131 (E.D. Tex. Aug. 13, 2015)
`Declaration of Dr. Ben Bederson in Support of BMC’s Opening Claim
`Construction Brief, BMC Software, Inc. v. ServiceNow, Inc., 2:14-cv-903-
`JRG, ECF No. 99-1 (E.D. Tex. May. 29, 2015)
`2003 BMC’s January 6, 2015 Infringement Contentions to ServiceNow, BMC
`Software, Inc. v. ServiceNow, Inc., 2:14-cv-903-JRG
`2004 Complaint for Patent Infringement, BMC Software, Inc. v. ServiceNow,
`Inc., No. 2:14-cv-903-JRG, ECF No. 1 (E.D. Tex. Sept. 23, 2014)
`ServiceNow: Redefining Enterprise IT Service Management – Wikibon,
`available at
`http://wikibon.org/wiki/v/ServiceNow:_Redefining_Enterprise_IT_Service
`_Management
`
`
`
`
`
`v
`
`

`
`I.
`
`INTRODUCTION
`
`Patent Owner BMC Software, Inc. (“BMC”) respectfully submits this
`
`Preliminary Response in accordance with 35 U.S.C. § 313 and 37 C.F.R. § 42.107,
`
`to the Petition for Inter Partes Review (“the Petition”) filed by ServiceNow, Inc.
`
`(“ServiceNow”) regarding claims 1, 5, 10-13, and 16 of U.S. Patent No. 8,646,093
`
`(“the ’093 patent”). BMC respectfully requests that the Board not institute inter
`
`partes review.
`
`The Board has discretion to “deny some or all grounds for unpatentability
`
`for some or all of the challenged claims.” 37 C.F.R. § 42.108(b); see 35 U.S.C.
`
`§ 314(a). ServiceNow bears the burden of demonstrating that there is a reasonable
`
`likelihood that at least one of the claims challenged in the Petition is unpatentable.
`
`37 C.F.R. § 42.108(c). Although BMC is not required to file a Preliminary
`
`Response to the Petition (37 C.F.R. § 42.107(a)), BMC takes this limited
`
`opportunity to point out why the Board should exercise its discretion and deny
`
`institution of a trial.
`
`As explained in the Office Trial Practice Guide, the Board “may not
`
`authorize a trial where the information presented in the Petition, taking into
`
`account any patent owner preliminary response, fails to meet the requisite standard
`
`for instituting the trial.” 77 Fed. Reg. at 48,756, 48,757 (Aug. 14, 2012); see, e.g.,
`
`35 U.S.C. §§ 314, 324. BMC respectfully submits that the deficiencies addressed
`
`
`
`1
`
`

`
`herein preclude trial on any grounds asserted in the Petition.1
`
`II. OVERVIEW OF U.S. PATENT NO. 8,646,093
`The ’093 patent teaches a method and system of leveraging the information
`
`in a Configuration Management Database, or CMDB, to determine software
`
`license compliance in the environment managed by the CMDB. (Ex. 1001 at
`
`2:12-41). In the IT Management space, CMDBs are specialized databases built to
`
`model the resources in a system — including hardware and software assets — that
`
`need to be managed to deliver the necessary level of quality, reliability, and
`
`security, for that system. (Ex. 1001 at 1:27-58). These managed resources are
`
`modeled as “Configuration Items,” or CIs, in the CMDB. (Id.).
`
`In addition to modelling hardware and software assets, the patent teaches
`
`that a CMDB can also model information about software contracts under which
`
`those software assets are licensed. (Ex. 1001 at 3:39-49). The ’093 patent
`
`
`
`1 It is neither possible nor necessary to fully address the numerous
`
`deficiencies of the poorly articulated and underdeveloped grounds asserted in the
`
`Petition. See Travelocity.com L.P., et al. v. Cronos Techs., LLC, CBM2014-
`
`00082, Paper 12 at 10 (Oct. 16, 2014) (“nothing may be gleaned from the Patent
`
`Owner’s challenge or failure to challenge the grounds of unpatentability for any
`
`particular reason”).
`
`
`
`2
`
`

`
`discloses many types of software contract information that can be modeled in the
`
`preferred embodiment of the claimed invention. (E.g., id. at 5:1-67).
`
`The ’093 patent also teaches that a second model of the software license
`
`contract can be created to store software license certificates in a license engine.
`
`(Ex. 1001 at 8:58-9:24). The software license certificates contain indications of
`
`the right to deploy software in the environment managed by the CMDB and are
`
`used to manage software license compliance checks. (Id.).
`
`Software license certificates in the ’093 patent are taught to encompass
`
`information about the applicable “License Type,” which is necessary to determine
`
`compliance with software licenses. (Ex. 1001 at 9:1-20, 9:41-52). Software
`
`license certificates can be thought of as counters, because they keep track of the
`
`rights a client has to install particular software applications, but depending on the
`
`license type, this counter can mean different things. For example, the ’093 Patent
`
`discloses license types such as per site, per user, per device, or per installation.
`
`(E.g., Ex. 1001 at 9:30-37). If the license type is specified on a “per installation”
`
`or “per instance” basis, then a single license allows a single install. (Ex. 1001 at
`
`12:30-51, Fig. 12). In other words, if a software application is installed on two
`
`places in the environment, then two licenses would be required. At the other end
`
`of the spectrum, a single “site license” would allow an unlimited number of
`
`installations so long as they were all located at a single site. (Ex. 1001 at 12:61-
`
`
`
`3
`
`

`
`13:3, Fig. 14).
`
`After comparing the counter in the software license certificate to the
`
`deployment information in the CMDB, using the applicable license type to ensure
`
`an “apples-to-apples” comparison, the ’093 patent teaches that the counter should
`
`be connected back to the appropriate CI in the CMDB. (Ex. 1001 at 10:33-48).
`
`For example, one embodiment teaches that the certificate should be connected to
`
`the contract. (E.g., Ex. 1001 at 11:28-42). This is achieved by storing the
`
`certificate results, compliance or non-compliance, in a persistent form in the
`
`CMDB. If the deployment is not in compliance, an exception will be generated
`
`indicating that the contract is out of compliance. (Ex. 1001 at 10:49-11:20).
`
`III. RESPONSE TO SERVICENOW’S CLAIM CONSTRUCTIONS
`For purposes of this proceeding, the claims of the ’093 patent must be given
`
`their broadest reasonable construction. In re Cuozzo Speed Techs., LLC, 2015 U.S.
`
`App. LEXIS 11714, at *24 (Fed. Cir. July 8, 2015). Consistent with the broadest
`
`reasonable construction, claim terms are presumed to have their ordinary and
`
`customary meaning, as understood by a person of ordinary skill in the art, in the
`
`context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
`
`1257 (Fed. Cir. 2007).
`
`The Petition identifies three terms for construction (1) “license certificate,”
`
`(2) “model” and “modeling,” (3) and “exception indication.”
`
`
`
`4
`
`

`
`A. Claims of the ’093 Patent
`
`Independent Claim 1 of the ’093 patent reads:
`
`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
`
`
`
`5
`
`

`
`comparing the first model and the second model indicates non-
`compliance with the software license contract.
`(Ex. 1001, ’093 at 13:43-14:3 (Claim 1)).
`
`Dependent Claim 5 of the ’093 patent reads:
`
`5. The method of claim 1, wherein the act of evaluating is performed on
`
`demand.
`
`(Ex. 1001, ’093 at 14:27-14:28 (Claim 5)).
`
`Dependent Claim 10 of the ’093 patent reads:
`
`10. The method of claim 1, wherein the act of evaluating compliance further
`
`comprises: indicating a suggested action for achieving compliance if the act of
`
`comparing the first model and the second model indicates non-compliance with the
`
`software license contract.
`
`(Ex. 1001, ’093 at 14:44-14:49 (Claim 10)).
`
`Dependent Claim 11 of the ’093 patent reads:
`
`11. The method of claim 1, further comprising: generating the second model,
`
`comprising: receiving a selection of a license type corresponding to the software
`
`license contract; and receiving license contract data corresponding to the selected
`
`license type.
`
`(Ex. 1001, ’093 at 14:50-14:55 (Claim 11)).
`
`
`
`6
`
`

`
`Dependent Claim 12 of the ’093 patent reads:
`
`12. The method of claim 11, wherein the act of generating the second model
`
`further comprises: providing a plurality of predetermined license types.
`
`(Ex. 1001, ’093 at 14:56-14:57 (Claim 12)).
`
`Dependent Claim 13 of the ’093 patent reads:
`
`13. The method of claim 11, wherein the act of generating the second model
`
`further comprises: allowing a user to define a custom license type.
`
`(Ex. 1001, ’093 at 14:59-14:60 (Claim 13)).
`
`Independent Claim 16 of the ’093 patent reads:
`
`16. A system, comprising: a server computer, comprising: a processor; a
`
`configuration database, coupled to the processor; a license database, coupled to the
`
`processor; and a program store, coupled to the processor, on which is stored
`
`instructions for the processor, wherein the instructions cause the processor to
`
`perform the method of claim 1.
`
`(Ex. 1001, ’093 at 16:1-16:8 (Claim 16)).
`
`B. Disputed Constructions
`
`1.
`
`“license certificate”
`
`ServiceNow proposes that the term “license certificate” means “information
`
`relating to the right to deploy software.” (Pet. at 16). While BMC reserves the
`
`right to contest ServiceNow’s construction, BMC does not dispute ServiceNow’s
`
`
`
`7
`
`

`
`proposed construction for the purpose of this preliminary response.
`
`2.
`
`“model” and “modeling”
`
`ServiceNow proposes that the term “model” means “an organized collection
`
`of information about an object.” (Pet. at 18). ServiceNow further proposes that
`
`the term “modeling” means “creating a model.” (Id.). While BMC reserves the
`
`right to contest ServiceNow’s construction, BMC does not dispute ServiceNow’s
`
`proposed construction for the purpose of this preliminary response.
`
`3.
`
`“exception indication”
`
`ServiceNow proposes that the term “exception indication” means “indication
`
`of a condition or warning.” (Pet. at 19). ServiceNow’s proposed construction has
`
`already been rejected by the Court in parallel proceedings in the Eastern District of
`
`Texas. (Ex. 2001, Markman Opinion, 14-cv-903-JRG, ECF No. 131 (E.D. Tex.
`
`Aug. 13, 2015)). The Court reasoned:
`
`The term “an exception indication” appears in asserted claim 1
`of the ’093 Patent. The Court finds that the claim language indicates
`that the recited “exception indication” is an “indication of a non-
`compliance condition or an unresolved connection.” Specifically,
`claim 1 recites that an “exception indication” is generated “if the act
`of comparing the first model and the second model indicates non-
`compliance with the software license contract.” Similarly, dependent
`claim 7 recites that an “exception indication” is generated “if the first
`model cannot be connected to the second model.” Dependent claim 8
`recites that an “exception indication” is generated “if the first model
`
`
`
`8
`
`

`
`can be connected to a plurality of models in the license database.”
`Thus, the claims indicate that the recited “exception indication” is an
`“indication of a noncompliance condition or unresolved connection.”
`Consistent with the claims, the specification states that “[i]n
`block 550, compliance rules may be evaluated 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 Patent at 10:49–53.
`The specification further states that “[t]he exception may indicate a
`Id. at 10:56–57. Consistent with
`non-compliance condition.”
`dependent claims 7 and 8, the specification describes a scenario where
`the CI “cannot be connected to a software contract through a license
`certificate. The license engine 250 may flag this as a connection
`exception (in block 540 of FIG. 5), requesting intervention by a
`contract or asset manager to resolve the connection exception.” Id. at
`12:41–45. Accordingly, the Court finds that the intrinsic evidence
`indicates that the recited “exception indication” is an “indication of a
`non-compliance condition or an unresolved connection.”
`
`(Id. at 89-90).
`
`
`
`The Court also rejected ServiceNow’s inclusion of the word “condition” in
`
`the proposed construction as inconsistent with the specification. “Defendant’s
`
`proposed ‘condition’ is broader than a ‘non-compliance condition’ and could
`
`expand the scope of the term to encompass any ‘condition’ . . . .” (Id. at 90-91.
`
`See also Ex. 2002, May 29, 2015 Decl. of B. Bederson at 25-27). For the purpose
`
`
`
`9
`
`

`
`of this response, BMC urges the adoption of the District Court’s construction as
`
`fully consistent with
`
`the broadest reasonable construction of “exception
`
`indication.” The Board should therefore construe the term “exception indication”
`
`to mean an “indication of a non-compliance condition or an unresolved
`
`connection.”
`
`IV. THE PETITION FAILS TO MEET SERVICENOW’S BURDEN TO
`SHOW A REASONABLE LIKELIHOOD OF SUCCESS ON ITS
`INVALIDITY GROUNDS
`Inter partes review should not be granted because the Petition does not
`
`demonstrate a reasonable likelihood of success on any of the proposed grounds of
`
`invalidity because the Petition fails to present any rational underpinning to support
`
`conclusions of obviousness.
`
`A. Legal Standards
`
`The Petition challenges claims 1, 5, 10-13, and 16 as invalid as allegedly
`
`directed to obvious subject matter. Under 35 U.S.C. § 103, the question is whether
`
`the claimed subject matter would have been obvious to a person of ordinary skill in
`
`the art at the time the invention was made. To assess the issue, the scope and
`
`content of the alleged prior art are to be determined; differences between the
`
`alleged prior art and the claims at issue are to be ascertained; and the level of
`
`ordinary skill in the pertinent art resolved. Graham v. John Deere Co., 383 U.S. 1,
`
`17 (1966). Secondary considerations such as commercial success, long felt but
`
`
`
`10
`
`

`
`unsolved needs, and failure of others should also be considered. Id. at 35-36. The
`
`commercial success of the infringer’s product is as relevant as that of the patentee.
`
`Panduit Corp. v. Dennison Mfg. Co., 774 F.2d 1082, 1099-1100 (Fed. Cir. 1985).
`
`A reference must be considered for all that it teaches, including disclosures
`
`that diverge and teach away from the invention at hand, as well as disclosures that
`
`point toward and teach the invention. In re Dow Chem. Co., 837 F.2d 469, 426
`
`(Fed. Cir. 1988). It is improper to take statements in the alleged prior art out of
`
`context and give them meanings they would not have had to a person of ordinary
`
`skill having no knowledge of the claimed invention. In re Wright, 866 F.2d 422
`
`(Fed. Cir. 1989).
`
`Each Graham factor must be addressed before a conclusion of obviousness
`
`can be reached. In re Cyclobenzaprine Hydrochloride Extended-Release Capsule
`
`Patent Litig., 676 F.3d 1063, 1077 (Fed. Cir. 2012); Intri-Plex Techs. v. St.
`
`Gobain, IPR2014-00309, Paper 83 at 19 (March 23, 2014); Cisco, IPR2014-00454,
`
`Paper 12 at 13-15 (denying petition’s obviousness grounds). Importantly, the
`
`obviousness inquiry must be taken without any “hint of hindsight,” Star Scientific,
`
`Inc. v. R.J. Reynolds Tobacco Co., 655 F.3d 1364, 1375 (Fed. Cir. 2011), so as to
`
`avoid “reconstruction by using the patent in suit as a guide through the maze of
`
`prior art references, combining the right references in the right way so as to
`
`
`
`11
`
`

`
`achieve the result of the claims in suit.” In re NTP, Inc., 654 F.3d 1279, 1299
`
`(Fed. Cir. 2011) (internal citation omitted).
`
`Conclusory allegations regarding obviousness are insufficient to establish a
`
`reasonable likelihood of unpatentability in an IPR petition. Sony Corp. of Am. v.
`
`Network-1 Sec. Solutions, Inc., IPR2013-00092, Paper 21 at 19, 28 (May 24, 2013)
`
`(denying obviousness grounds as insufficient where it relied upon a conclusory
`
`statement that adding a claim element not disclosed “is a predictable variation that
`
`could have been implemented by a person of ordinary skill in the art at the time of
`
`the alleged invention.”).
`
`The Petitioners “must show some reason why a person of ordinary skill in
`
`the art would have thought to combine particular available elements of knowledge,
`
`as evidenced by the prior art, to reach the claimed invention.” Heart Failure Tech.
`
`v. Cardiokinetix, Inc., IPR2013-00183, Paper. 12 at 9 (July 31, 2013) (citing KSR
`
`Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007), the Board denied petition on a
`
`patent relating to a device for dividing a human heart chamber because petitioner’s
`
`bare assertion that prior art related to human heart repair did not amount to “some
`
`articulated reasoning with some rational underpinning to support the legal
`
`conclusion of obviousness.”); Dominion Dealer Solutions, LLC v. Autoalert, Inc.,
`
`IPR2013-00223, Paper 9 at 19 (August 15, 2013) (Board denied petition on
`
`obviousness grounds, stating: “[n]otably absent from [petitioner’s] stated rationale
`
`
`
`12
`
`

`
`is a sufficient explanation of how the references may be combined, from the
`
`perspective of one with ordinary skill in the art, to arrive at the claimed invention,
`
`and why the proffered combination accounts for all the features of each claim”).
`
`B. Overview of the Alleged Prior Art
`
`1.
`
`U.S. Patent No. 6,810,389 (“Meyer”) (Ex. 1003)
`
`U.S. Patent No. 6,810,389 to Meyer is a patent addressing software license
`
`systems (SLS), which is a system that “typically counts the number of authorized
`
`licenses in use, and imposes a restriction on the number, or count, of licenses that
`
`may be in use contemporaneously.” (Ex. 1003 at 1:27-29). An SLS can also cause
`
`the application to wait for a license, or notify the application when a license
`
`becomes available. (Ex. 1003 at 1:30-32). An SLS may reside completely in the
`
`licensed application or operate in the form of a server-client architecture. (Ex.
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`1003 at 33-36).
`
`In an SLS system, each invocation of a software program requests a license
`
`from a licensing server. (Ex. 1003 at 1:42-47). The request from the software
`
`program is treated as a “checkout” of a license, and the license server is used to
`
`“verify that the license is intended to allow the operation of the application in the
`
`current configuration, environment, and at the current time.” (Ex. 1003 at 1:47-
`
`53). As a result of this process, the license server either “grants or denies” a
`
`
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`13
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`

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`license request and, if a request is denied, the application may not use the feature
`
`associated with the license request. (Ex. 1003 at 1:56-60).
`
`Meyer is a fundamentally different approach to managing software licensing
`
`than that discussed in the ’093 patent. The ’093 patent assesses software
`
`compliance by consulting a model of the enterprise known as a Configuration
`
`Management Database (CMDB), rather than communicating with each running
`
`instance of a program and “checking out” licenses upon request as in Meyer.
`
`There is no discussion in Meyer of CMDBs, and there is no discussion in Meyer of
`
`any motivation to combine Meyer with a CMDB. Importantly, Meyer contains no
`
`technical description of how Meyer might be integrated with a CMDB in view of
`
`the fact that Meyer relies on a “client-server architecture” where the software
`
`instance subject to a license is in direct communication with the license server.
`
`Meyer’s client-server architecture is irreconcilable with a CMDB architecture that
`
`merely “contains data about managed resources known as Configuration Items
`
`(CIs)” (Ex. 1001 at 1:28-30) and only where no clients are present and no
`
`applications are running.
`
`2.
`
`Best Practice for Software Asset Management (2003) (“Best
`Practice”) (Ex. 1004)
`
`Best Practice for Software Asset Management (2003) was published by the
`
`IT Infrastructure Library (“ITIL”) six years prior to the priority date of the ’093
`
`patent. Best Practice generally attempts to describe a set of preferred processes for
`
`
`
`14
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`

`
`managing software assets in an organization and doing so in conjunction with a
`
`CMDB using Configuration Items (CIs). While Best Practice describes preferred
`
`processes for managing software in an enterprise, Best Practice does not describe
`
`any particular implementation that would be required to achieve those processes.
`
`3.
`
`Effective IT Service Management, To ITIL and Beyond! (2007)
`(“Addy”) (Ex. 1005)
`
`Addy is a textbook relating to IT service management but does not describe
`
`any systems relating to software license compliance. Addy is instead relied upon
`
`by ServiceNow not for any particular disclosure relating to the claims of the ’093
`
`patent, but because ServiceNow relies on the general desirability of CMDBs as
`
`supposed motivation to combine a CMDB with other systems.
`
`4.
`
`U.S. Patent Application Publication No. 2005/0071276 A1 to
`Joachim Bruchlos et al. (“Bruchlos”) (Ex. 1006)
`
`U.S. Patent Application Publication No. 2005/0071276 A1 to Joachim
`
`Bruchlos et al., entitled “Method for Automatic Creation and Configuration of
`
`License Models and Policies” is relied upon by ServiceNow in connection with
`
`Ground 2 and dependent claims 11-13, which relate to selection of a “license type”
`
`for the software license contract. However, because claims 11-13 depend from
`
`claim 1, which is not obvious as discussed herein, claims 11-13 are also not
`
`obvious. As such, BMC does not address the Bruchlos reference for purposes of
`
`this preliminary response.
`
`
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`15
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`

`
`C. Ground 1: Claims 1, 5, 10, and 16 Are Not Obvious Over Meyer in View
`of Best Practice and Addy, Which are Combined Using Impermissible
`Hindsight.
`
`In arguing that the ’093 patent is invalid, ServiceNow attempts to engineer a
`
`hypothetical system using impermissible hindsight. ServiceNow employs two
`
`systems that are not designed to interoperate. First, Best Practice teaches about
`
`CMDBs generally and their ability to model software using configuration items.
`
`Such capabilities were known in the prior art and discussed in the background
`
`section of the ’093 patent itself. (Ex. 1001 at 1:17-2:8). In fact, the ’093 patent
`
`discusses ITIL’s Software Asset Management book and what was known about
`
`CMDBs at the time of the invention and explains that “[c]onventional CMDBs,
`
`however, do not provide adequate capability for [determining] that an enterprise is
`
`in compliance with the terms of its software license contracts.” (Ex. 1001 at 2:6-
`
`8). ServiceNow attempts to combine this first software asset management
`
`approach, which was considered by the examiner, with a second Meyer system that
`
`was not designed to interoperate with CMDBs whatsoever. ServiceNow argues,
`
`without merit, that even though Meyer is not designed to work with CMDB
`
`systems, that significant redesign would have enabled it to do so.
`
`Among the redesign expressly acknowledged by ServiceNow:
`
`(1) instead of merely reading license files from a file, Meyer could be
`
`changed to read configur