UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`
`
`SERVICENOW, INC.
`Petitioner
`
`
`
`v.
`
`
`
`BMC SOFTWARE, INC.
`Patent Owner
`____________________
`
`Case IPR 2015-01601
`Patent No. 6,816,898
`____________________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
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`
`
`

`
`Table of Contents
`
`Page
`
`B.
`
`C.
`
`D.
`
`INTRODUCTION ........................................................................................... 1
`I.
`STATEMENT OF THE ISSUES .................................................................... 3
`II.
`III. THE PETITION SHOULD BE DENIED BECAUSE IT FAILS SEVERAL
`PROCEDURAL REQUIREMENTS ............................................................... 3
`A.
`The Petition Should Be Denied Because It Fails to Address At Least
`One Graham Factor ............................................................................... 4
`The Petition Should Also be Denied Because it Fails to Articulate a
`Reason or Motivation to Modify or Combine Miller ............................ 7
`The Petition Should Also Be Denied With Respect to Ground 2
`Because ServiceNow Has Not Established that the Kernighan
`Reference is Prior Art ............................................................................ 9
`The Petition Should Also Be Denied Because it Fails to Provide a Full
`Statement of the Relevant Law, Rules, and Precedent ....................... 10
`IV. RESPONSE TO SERVICENOW’S CLAIM CONSTRUCTIONS ..............10
`A.
`Service Monitor ................................................................................... 10
`B.
`Performance Management Data .......................................................... 11
`C.
`Business-Oriented Performance Management Data ........................... 12
`D. Other Terms ......................................................................................... 12
`V. OVERVIEW OF THE ’898 PATENT ..........................................................13
`VI. OVERVIEW OF THE ALLEGED PRIOR ART ..........................................15
`A. Miller ................................................................................................... 15
`B.
`Kernighan ............................................................................................ 16
`C.
`O’Reilly ............................................................................................... 16
`VII. GROUND 1 SHOULD BE DENIED BECAUSE SERVICENOW FAILS
`TO SHOW SEVERAL LIMITATIONS OF CLAIMS 1-7 AND 9-12 ARE
`OBVIOUS UNDER MILLER ALONE ........................................................17
`A.
`Independent Claim 1 ........................................................................... 18
`B.
`Dependent Claim 2 .............................................................................. 21
`
`i
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`

`
`Dependent Claims 3-5 ......................................................................... 24
`C.
`Independent Claim 6 ........................................................................... 24
`D.
`Dependent Claim 7 .............................................................................. 26
`E.
`Dependent Claims 9, 11 ...................................................................... 27
`F.
`G. Dependent Claim 10 ............................................................................ 27
`H. Dependent Claim 12 ............................................................................ 28
`VIII. GROUND 2 SHOULD BE DENIED BECAUSE SERVICENOW FAILS
`TO SHOW SEVERAL LIMITATIONS OF CLAIM 8 ARE OBVIOUS
`UNDER MILLER IN VIEW OF KERNIGHAN AND O’REILLY .............29
`IX. SECONDARY CONSIDERATIONS OF NON-OBVIOUSNESS ..............32
`X.
`CONCLUSION ..............................................................................................32
`
`
`
`
`ii
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`

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`TABLE OF AUTHORITIES
`
`
`CASES
`Graham v. John Deer Co. of Kansas City,
`383 U.S. 1 (1966) .................................................................................................. 1
`
`Page(s)
`
`In re Cyclobenzaprine Hydrochloride Extended-Release Capsule
`Patent Litig.,
`676 F.3d 1063 (Fed. Cir. 2012) ............................................................................ 4
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2006) .............................................................................................. 7
`
`STATUTES
`
`35 U.S.C. § 101 .......................................................................................................... 1
`
`35 U.S.C. § 103 ...................................................................................................... 6, 7
`
`35 U.S.C. § 103(a) ..................................................................................................... 3
`
`35 U.S.C. § 312(a)(3) ................................................................................................. 3
`
`35 U.S.C. § 314(a) ..................................................................................................... 1
`
`35 U.S.C. § 324(a) ................................................................................................... 17
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.6(e) ................................................................................................... 34
`
`37 C.F.R. § 42.22(a)(2) ............................................................................................ 10
`
`37 C.F.R. § 42.104(b) ................................................................................................ 3
`
`37 C.F.R. § 42.107(a) ................................................................................................. 1
`
`37 C.F.R. § 42.108(b) ................................................................................................ 1
`
`37 C.F.R. § 42.108(c) ................................................................................................. 1
`
`37 C.F.R. § 42.301(a) ................................................................................................. 3
`
`
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`iii
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`

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`37 C.F.R. § 42.301(b) .............................................................................................. 10
`
`Apple, Inc. v. ContentGuard Holdings, Inc.,
`IPR2015-00355 ..................................................................................................... 2
`
`Cisco Sys., Inc. v. C-Cation Tech., LLC,
`IPR2014-00454 ..................................................................................................... 4
`
`Denso Corp. v. Beacon Navigation,
`IPR2013-00027 ..................................................................................................... 8
`
`Dominion Dealer Solutions, LLC v. Autoalert, Inc.,
`IPR2013-00223 ..................................................................................................... 8
`
`Google, Inc. v. Art+Com Innovation,
`IPR2015-00788 ................................................................................................... 10
`
`Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co.,
`CBM2012-00003 .................................................................................................. 5
`
`Tissue Transplant Tech. v. Mimedx Grp.,
`IPR2015-00320 ..................................................................................................... 4
`
`Wireless Seismic, Inc. v. Fairfield Indus., Inc.,
`IPR-2014-01205 .................................................................................................... 2
`
`
`
`
`
`
`
`iv
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`

`
`List of Exhibits
`
`Description
`Excerpts of Markman Opinion, 14-cv-903-JRG, ECF No. 131
`(E.D. Tex. Aug. 13, 2015)
`
`
`No.
`
`2001
`
`
`
`
`
`v
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`

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`I.
`
`INTRODUCTION
`
`Patent Owner BMC Software, Inc. (“BMC”) submits this Preliminary
`
`Response to the Petition for Inter Partes Review (“IPR”) Review (the “Petition”)
`
`filed by ServiceNow, Inc. (“ServiceNow”) regarding all 12 claims of United States
`
`Patent No. 6,816,898 (“the ’898 patent”). The Petition only challenges the claims
`
`under an obviousness theory under 35 U.S.C. § 103(a), not under an anticipation
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`theory. Petition at 3. The Petition challenges claims 1-7 and 9-12 as obvious
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`under the “Miller” reference alone and claim 8 as obvious under Miller in view of
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`the “Kernighan” and “O’Reilly” references. Id. BMC respectfully requests that
`
`the Board not institute IPR review for procedural and substantive reasons.
`
`The Board has discretion to deny grounds for unpatentability for some or all
`
`of the challenged claims. 37 C.F.R. § 42.108(b); 35 U.S.C. § 314(a). ServiceNow
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`bears the burden of showing that at least one challenged claim is unpatentable. 37
`
`C.F.R. § 42.108(c). Although BMC is not required to file a Preliminary Response
`
`(37 C.F.R. § 42.107(a)), BMC takes this limited opportunity to point out why the
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`Board should exercise its discretion and deny institution of a trial.
`
`Procedurally, the Petition does not adequately state a ground of obviousness
`
`because it fails to address one or more of the Graham factors, including the
`
`differences between the prior art and the claimed invention. Graham v. John
`
`Deere Co. of Kansas City, 383 U.S. 1 (1966) (“Graham”). Instead, the Petition
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`
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`1
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`

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`addresses Miller’s alleged teachings and concludes that Miller either “discloses or
`
`suggests each limitation” of the independent claims (claims 1 and 6), obscuring its
`
`precise legal theory and leaving it to the Board (and Patent Owner) to speculate
`
`about what gaps to fill, how Miller should be modified (and with what) to allegedly
`
`arrive at the claimed inventions. Petition at 28, 43. The Board routinely denies
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`these types of Petitions. See Wireless Seismic, Inc. v. Fairfield Indus., Inc., IPR-
`
`2014-01205, Paper 8, 28-29 (Jan. 14, 2015) (“Wireless Seismic”) (denying petition
`
`that stated a reference either disclosed or suggested each limitation without
`
`analyzing the differences); Apple, Inc. v. ContentGuard Holdings, Inc., IPR2015-
`
`00355, Paper 9, at 11-14 (June 26, 2015) (“ContentGuard”)(same).
`
`The Petition never once
`
`identifies which claim
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`limitations of the
`
`independent claims are missing from Miller, let alone how these unspecified
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`missing limitations allegedly existed in the prior art and the rationale for why a
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`person of ordinary skill would have modified Miller to arrive at the claimed
`
`invention as required under Graham. The Petition is procedurally improper and
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`should be denied under precedent from both the Federal Circuit and the Board.
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`Wireless Seismic at 28-29; ContentGuard at 11-14.
`
`Substantively, the Petition should also be dismissed because it fails to
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`demonstrate a likelihood that ServiceNow will prevail on its obviousness grounds
`
`with respect to numerous claim limitations that are neither disclosed nor suggested
`
`
`
`2
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`

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`by the alleged prior art, as will be explained.
`
`II.
`1.
`
`STATEMENT OF THE ISSUES
`Despite ServiceNow’s failure to address at least one Graham factor – the
`
`differences between the prior art and the claimed invention – for each of the
`
`independent claims, as well as ServiceNow’s failure to state a motivation to
`
`combine the unspecified differences, has ServiceNow adequately stated a ground
`
`of obviousness with respect to Grounds 1 and 2?
`
`2.
`
`Does the Kernighan reference asserted in Ground 2 qualify as prior art,
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`despite it bearing a publication date of “February 2014,” almost fourteen years
`
`after the filing date of the ’898 patent?
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`3.
`
`Has ServiceNow satisfied its burden of showing substantively that it is more
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`likely than not that each limitation, of each of the petitioned claims in Grounds 1
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`and 2, is obvious over the asserted references?
`
`III. THE PETITION SHOULD BE DENIED BECAUSE IT FAILS
`SEVERAL PROCEDURAL REQUIREMENTS
`
`The burden is on ServiceNow, the Petitioner, to establish that the ’898 patent
`
`is eligible for IPR review. 37 C.F.R. § 42.304(a). A petition must show how the
`
`challenged claims are unpatentable under the statutory grounds it identifies. 35
`
`U.S.C. § 312(a)(3); 37 C.F.R. § 42.104(b). The Petition only challenges the claims
`
`as obvious in violation of 35 U.S.C. § 103(a), not under an anticipation theory.
`
`Obviousness is resolved on the basis of underlying factual determinations,
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`
`
`3
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`

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`including: (1) the scope and content of the prior art, (2) the differences between the
`
`prior art and the claimed invention, (3) the level of ordinary skill in the art, and
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`(4) secondary considerations of nonobviousness.
`
` Wireless Seismic (citing
`
`Graham). Amidst these factual determinations, “a determination of unpatentability
`
`on the ground of obviousness must include articulated reasoning with some
`
`rational underpinning to support the legal conclusion of obviousness.” Tissue
`
`Transplant Tech. v. Mimedx Grp., IPR2015-00320, Paper No. 13 (June 29, 2015)
`
`(Tissue Transplant) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
`
`(2006)) (emphasis added).
`
`A. The Petition Should Be Denied Because It Fails to Address At
`Least One Graham Factor
`
`The Petition should be denied because it does not provide an identification
`
`of the differences between the claimed invention and the prior art as required by
`
`Graham factor 2. Instead, the Petition merely states that Miller “discloses or
`
`suggests each limitation of claim 1” and “discloses or suggests each limitation of
`
`claim 6.” Petition at 28, 43. 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);
`
`Wireless Seismic at 28 (denying Petition that failed to address a Graham factor);
`
`Cisco Sys., Inc. v. C-Cation Tech., LLC, IPR2014-00454, Paper 12 at 13-15
`
`(same); ContentGuard at 11-14 (same).
`
`
`
`4
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`

`
`Indeed, the “[d]ifferences between the claimed invention and the prior art
`
`are a critically important underlying factual inquiry for any obviousness
`
`analysis.” Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM2012-00003,
`
`Paper 7 (Oct. 12, 2012) (“Liberty Mutual”) (citing “Graham”). Therefore, a
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`Petition that does not state the differences between a challenged claim and the prior
`
`art, and relies instead on the Board and the Patent Owner to determine those
`
`differences, fails to adequately state a ground of obviousness and trial should not
`
`be instituted. Id. at 3.
`
`Wireless Seismic is in accord. There, the Petitioner argued that a reference
`
`(to “Gelvin”) either discloses or suggests each claim limitation, stating that to the
`
`extent the Board disagrees with its anticipation analysis, then, in the alternative,
`
`each claim would have been obvious under 103(a) over the single reference alone.
`
`Wireless Seismic at 28. The Board rejected the Petition stating that the petitioner
`
`failed to set forth a proper obviousness analysis because it failed to “identify the
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`differences between the subject matter of any claim and Gelvin’s disclosure.” Id.
`
`Arguing that a reference discloses or suggests each limitation “is conclusory
`
`and misguided. It is tantamount to proposing the desired result of an obviousness
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`conclusion, and then inviting the Board to arrive at that conclusion on its own by
`
`accounting, in whichever way the Board sees fit, for all the differences the Board
`
`might determine there may be between the claims and the prior art.” Id. The
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`
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`5
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`

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`Board further noted that this was improper burden shifting: “It is Wireless
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`Seismic, as Petitioner, who must establish a reasonable likelihood that claims 13-
`
`18 would have been obvious under 35 U.S.C. § 103, based on the factual inquiries
`
`under Graham. Wireless Seismic has not identified what it believes are all of the
`
`differences between each of claims 13-18 and the prior art.” Id.
`
`Further, in ContentGuard, the Board denied a petition challenging the claims
`
`on 103(a) grounds to a single reference (“Ireton”) because it was “devoid of
`
`reasoning that identifies any particular difference between a particular claimed
`
`feature and a particular disclosure of Ireton, followed by an explanation as to how
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`and why one of ordinary skill would have modified the particular feature of Ireton
`
`to bring it within the claim.” ContentGuard at 13-14. Instead, the petitioner
`
`improperly “le[ft] it to the Board to ascertain what gaps to fill, and then present[ed]
`
`vague statements regarding what the prior art suggests.” Id. at 11.
`
`The Petition here merely states that Miller “discloses or suggests” each
`
`limitation of the independent claims without providing any analysis of the
`
`differences between the prior art and the claimed invention. Petition at 28, 43.
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`Therefore, just as in Wireless Seismic and ContentGuard, the Petition should be
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`denied for failure to identify the “critically important” Graham factor of the
`
`differences between the claimed invention and alleged prior art.
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`
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`6
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`
`B.
`
`The Petition Should Also be Denied Because it Fails to Articulate
`a Reason or Motivation to Modify or Combine Miller
`Even if the Board were to overlook the Petition’s omission of the Graham
`
`factor noted above (the differences between the claimed invention and alleged
`
`prior art), the Petition is also fatally flawed because it does not articulate a
`
`motivation to modify the alleged prior art to arrive at the claimed invention. Under
`
`KSR, a proper obviousness analysis requires an “explicit” analysis supported by
`
`“some rationale underpinning” to modify/combine the purportedly known elements
`
`to arrive at the claimed inventions. KSR, 550 U.S. at 418.
`
`The Petition completely ignores this aspect of the obviousness inquiry in its
`
`discussion of both independent claims 1 and 6, providing only a conclusory
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`statement that Miller “discloses or suggests each limitation.” Petition at 28, 43.
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`The Petition does not state what is being combined into Miller as part of the
`
`obviousness challenge, let alone articulate any “explicit” reason or motivation to
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`modify/combine the reference to arrive at the independent claims.
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`The Board has previously denied petitions for precisely this kind of
`
`conclusory analysis. In rejecting the single reference 103(a) challenge in Wireless
`
`Seismic, the Board stated that because the petitioner had not clearly stated the
`
`differences between the prior art and the claimed invention, “it is a rather hollow
`
`endeavor, if not an impossible one, to perform an appropriate obviousness analysis
`
`under Graham and 35 U.S.C. 103. The reasons one with ordinary skill in the art
`
`
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`7
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`

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`would have to make modifications to the prior art to arrive at the claimed subject
`
`matter cannot be discussed sufficiently or rationally without specifically
`
`identifying all the differences between the claimed subject matter and the prior
`
`art.” Wireless Seismic at 29.
`
`
`
`In Dominion Dealer Solutions, LLC v. Autoalert, Inc., IPR2013-00223,
`
`Paper 9 (August 15, 2013) (“Dominion Dealer”), the Board denied a petition on
`
`obviousness grounds for failure to sufficiently articulate a motivation or reason to
`
`combine. As the Board stated, “Notably absent from [petitioner’s] stated rationale
`
`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,
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`and why the proffered combination accounts for all the features of each claim.”).
`
`Denso Corp. v. Beacon Navigation, IPR2013-00027, Paper 12 (April 2,
`
`2013) (“Denso”) is also in accord. In Denso, the Board did not institute trial on
`
`certain claims challenged as obvious under a single reference because of a lack of a
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`“detailed presentation of evidence” as
`
`to
`
`the reason or motivation
`
`to
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`modify/combine the single reference to arrive at the claimed invention. Denso at
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`*17-18 (emphasis added). The Denso petitioner included a conclusory statement
`
`of obviousness that “it would be predictable and obvious to one of ordinary skill in
`
`the area of navigation systems” to modify the reference.
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`Just as in Wireless Seismic, Dominion Dealer, and Denso, ServiceNow’s
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`8
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`

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`conclusory assertion here that Miller allegedly renders the independent claims
`
`obvious because it “discloses or suggests each limitation” (Petition at 28, 43) is
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`procedurally deficient because it does not articulate a reason or motivation to
`
`combine Miller. Accordingly, trial should not be instituted on any claim.
`
`C. The Petition Should Also Be Denied With Respect to Ground 2
`Because ServiceNow Has Not Established that the Kernighan
`Reference is Prior Art
`
`Ground 2 alleges that claim 8 of the ’898 patent is obvious over Miller in
`
`view of Kernighan and O’Reilly. Petition at 3. ServiceNow asserts that Kernighan
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`“qualif[ies] as prior art to the ’898 patent” (Petition at 19-20), but ServiceNow
`
`provides no explanation for any specific date which it contends Kernighan, in the
`
`form cited, was publicly-available. Moreover, the cited pages were printed on
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`February 2014, almost 14 years after the ’898 patent filing date. See Ex. 1004 at 2
`
`(“Text printed in the United States on recycled paper at Courier in Westford,
`
`Massachusetts. Fifty-Second Printing, February 2014.”) (emphasis added).
`
`While other dates also appear in Kernighan (See Ex. 1004 at 2), ServiceNow
`
`provides no showing that the February 2014 pages it cites existed in the form
`
`presented on an earlier date.
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`Accordingly, ServiceNow has not established that Kernighan, at least in the
`
`form cited, is prior art, and Ground 2 should be denied on this additional basis. It
`
`is the burden of the party seeking to introduce a reference to “produce sufficient
`
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`
`9
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`

`
`proof” it existed in the cited form in the prior art. Google, Inc. v. Art+Com
`
`Innovation, IPR2015-00788, Paper 7 at 5-6 (September 2, 2015) (“Google”). In
`
`Google, the petitioner did not prove that a reference having “multiple inconsistent
`
`dates” was prior art. Google at 9. As in Google, ServiceNow has not provided
`
`sufficient proof that Kernighan existed in the prior art in the form cited.
`
`D. The Petition Should Also Be Denied Because it Fails to Provide a
`Full Statement of the Relevant Law, Rules, and Precedent
`
`The Petition is further procedurally deficient because it does not provide a
`
`“full statement of the reasons for the relief, including a detailed explanation of the
`
`significance of the evidence including material facts, and the governing law, rules,
`
`and precedent.” 37 C.F.R. § 42.22(a)(2)(emphasis added). Aside from identifying
`
`its challenge as one of obviousness under 103(a), the Petition never identifies any
`
`“governing law, rules, and precedent” that purportedly supports its challenge, let
`
`alone provides a full statement as required. Not even Graham, perhaps the seminal
`
`Supreme Court case for analyzing obviousness, is cited or discussed. Such a bare-
`
`bones analysis of the “governing law, rules, and precedent” does not comport with
`
`37 C.F.R. § 42.22(a)(2). For this additional reason, the Petition is procedurally
`
`deficient and should be denied.
`
`IV. RESPONSE TO SERVICENOW’S CLAIM CONSTRUCTIONS
`Service Monitor
`A.
`The term “service monitor” should be construed as a “script-based
`
`
`
`10
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`

`
`program used by the performance management system to monitor a device,
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`application, or server” ─ the construction provided by the district court.
`
`Ex. 2001 (district court claim construction opinion) at 55. ServiceNow’s
`
`construction (“program for monitoring a device, application or server in a
`
`network”) (Petition at 16) was proposed in the district court litigation, but not
`
`adopted by the court. The district court held that “the intrinsic evidence indicates
`
`that [the] recited ‘service monitor’ is a script-based program used by the
`
`performance management system.” Ex. 2001 at 51-52 (citing various passages
`
`from the specification and claims) (emphasis added).
`
`One exemplary passage cited by the district court was the ’898 patent
`
`specification’s teaching that “[a]s soon as the new service monitor is added and
`
`activated, the network performance management system automatically uses it to
`
`collect the customized data from the components of the network.” Id. (citing ’898,
`
`Ex. 1001, 11:13-16). ServiceNow provides no reasoning for departing from the
`
`district court’s construction.
`
`Performance Management Data
`B.
`To the extent a construction is necessary, the term “performance
`
`management data” should be construed as “data pertaining to performance
`
`management.” ServiceNow’s proposed construction is “information regarding the
`
`operation or performance of the network environment.” Petition at 14. The
`
`
`
`11
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`

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`specification describes, for example, infrastructure data pertaining to performance
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`management (e.g., “CPU performance” or “memory utilization” of a device) (’898,
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`Ex. 1001, 5:39-42) and business-oriented data pertaining to performance
`
`management, such as “the number of tickets sold in an airline’s web site.” ’898,
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`Ex, 1001, 2:1-9. While BMC does not believe a construction is necessary, to the
`
`extent the Board disagrees, BMC’s construction is consistent with the term’s plain
`
`language.
`
`C. Business-Oriented Performance Management Data
`To the extent a construction is necessary, the term “business-oriented
`
`performance management data” should be construed as “business data
`
`pertaining
`
`to performance management.”
`
` ServiceNow’s construction
`
`(“performance management data relating to a business”) (Petition at 15) only
`
`construes “business-oriented,” which is readily understandable and does not need
`
`construction. Moreover, it is unclear what ServiceNow intends by re-writing the
`
`claim language as “relating to a business.” While BMC does not believe a
`
`construction is necessary, to the extent the Board disagrees, BMC’s proposal limits
`
`the term to “business data,” consistent with the term’s plain language and the
`
`specification. ’898, Ex. 1001, 1:63-2:9.
`
`D. Other Terms
`With respect to the other claim construction arguments raised by
`
`
`
`12
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`

`
`ServiceNow, BMC does not address ServiceNow’s constructions (Petition at 11-
`
`14) at this time because ServiceNow has not demonstrated a reasonable likelihood
`
`of success on any grounds of the Petition. BMC reserves its right to raise claim
`
`construction arguments on these and other terms not raised by ServiceNow should
`
`any part of the Petition be granted.
`
`V. OVERVIEW OF THE ’898 PATENT
`The ’898 patent pertains to the field of network management, including
`
`interfacing with network management. ’898, Ex. 1001, 1:6-8. The performance
`
`management system can collect performance management data, including in
`
`certain embodiments through the use of a script-based program that can be
`
`integrated into a larger performance management system. Id. at 7:28-30, 8:17-19.
`
`The data collected by the performance management system can include CPU
`
`performance and memory utilization of workstations and servers contained in the
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`network environment. Id. at 5:39-42. The system may also collect specific
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`business-oriented data useful in commercial applications that is not normally
`
`tracked, such as the number of tickets sold in an airline’s web site. Id. at 2:4-9.
`
`The ’898 patent teaches and claims a method for “receiving at least one
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`script-based program from the user” that defines “data types not provided by the
`
`performance management system.” Id. at 13:25-27. The ’898 patent also teaches
`
`and claims “integrating the program to the performance management system as a
`
`
`
`13
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`

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`service monitor, the performance management system using the service monitor to
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`periodically collect data of the defined data types from the components.” Id. at
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`13:28-32. Figure 3 from the ’898 patent is shown below:
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`
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`Id. at Fig. 3, Col. 2:41-42 (“Fig. 3 illustrates a data flow diagram of monitoring
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`system for monitoring a network of components.”). The script-based program
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`(shown in item 110 of Figure 3 above) can be in one embodiment a shell script,
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`such as the script-based program shown in Figure 4 (not pictured here). Id. at
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`9:52-56. The user may provide information (shown in item 120 above) such as
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`polling rate, IP address, names and types, and units of input and output variables of
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`the script-based program. Id. at 7:22-27. The script-based program may be
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`registered with the system as a new service monitor (shown in item 140 above).
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`Id. at 8:44-46. As soon as the new service monitor is added and activated, in one
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`embodiment, the network performance management system may use it to collect
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`customized data from network components. Id. at 11:13-16.
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`14
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`The performance management data in one embodiment may also have
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`accompanying meta data that indicates what it is that is being collected and what is
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`to be done with the data being collected. Id. at 4:15-17. In one embodiment, once
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`a data type is incorporated with meta data, network performance monitoring and
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`management can apply all its core functions, e.g., graphing, baselining, reporting,
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`alarming, data collecting, and system administrating. Id. at 11:20-24. Figure 9
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`from the ’898 patent is shown below.
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`
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` Id. at Fig. 9, 2:64-65 (“Fig. 9 shows a graph generated by a network monitor of
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`the data collected using an action request system monitor.”).
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`VI. OVERVIEW OF THE ALLEGED PRIOR ART
`A. Miller
`Miller teaches a system called “satool” with three independent parts: an
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`SNMP (Simple Network Management Protocol) agent that runs on various
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`15
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`

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`machines, a database, and a graphical user interface (GUI). Ex. 1003, at 119
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`(“Abstract”). Separate from these three components, Miller discloses that
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`“extending satool” is possible by writing a “traceroute-helper” script to do a
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`traceroute to a machine outside the network. Ex. 1003 at 125 (under “Extending
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`satool”). Miller does not disclose the “traceroute-helper” as collecting any
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`performance management data. Rather, “traceroute-helper” simply does a
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`traceroute to a machine outside the network and prints a number “1” if it was
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`successful in reaching the machine outside the network or a “0” if there was a
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`problem in reaching the machine outside the network (for example a rooting loop
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`or the host is unreachable). Id.
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`B. Kernighan
`Kernighan bears the title “The C Programming Language.” Ex. 1004 at 1.
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`As discussed above, ServiceNow has not established that Kernighan qualifies as
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`prior art. Indeed, the cited pages bear a date of “February 2014,” nearly 14 years
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`after the ’898 patent was filed. Ex. 1004 at 2. The Petition relies on a section of
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`Kernighan entitled “Command-Line Arguments”
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`that provides
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`that
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`in
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`environments that support C, there is a way to pass command-line arguments or
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`parameters to a program when it begins executing. Ex. 1004 at 31.
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`C. O’Reilly
`O’Reilly bears the title “Windows 98 In a Nutshell.” Ex. 1005 at 1. The
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`16
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`Petition relies on a section entitled “tracert” which relates to performing a trace
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`that internet protocol packets take between a local system and a remote system.
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`Ex. 1005 at 13.
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`VII. GROUND 1 SHOULD BE DENIED BECAUSE SERVICENOW FAILS
`TO SHOW SEVERAL LIMITATIONS OF CLAIMS 1-7 AND 9-12
`ARE OBVIOUS UNDER MILLER ALONE
`
`Even if one were to overlook the Petition’s procedural infirmities,
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`ServiceNow as the petitioner bears the burden of showing that it is more likely
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`than not that it will prevail on its Section 103 challenges. 35 U.S.C. § 324(a).
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`ServiceNow has not met its burden for the additional reason that numerous claim
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`limitations are neither disclosed nor suggested by ServiceNow’s asserted prior art
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`(i.e., “Miller”).
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`As noted above, ServiceNow alleges that Miller “discloses or suggests each
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`limitation of claim 1” (Petition at 28) and “discloses or suggests each limitation of
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`claim 6” (Petition at 43) and challenges the claims only under 35 U.S.C. § 103(a),
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`but ServiceNow does not make a proper obviousness challenge. ServiceNow does
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`not i) explain the differences between the alleged prior art (Miller) and the claimed
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`inventions of at least independent claims 1 and 6; or ii) provide a motivation or
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`reason for the unspecified modification or combination. In any event, BMC
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`addresses ServiceNow’s deficient obviousness challenge below and identifies
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`several significant distinctions between Miller and the claimed invention.
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`A.
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`Independent Claim 1
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`1. Miller fails to di