throbber
Trials@uspto.gov
`571.272.7822
`
`Paper No. 11
`Entered: January 14, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SERVICENOW,INC.,
`Petitioner,
`
`Vv.
`
`BMC SOFTWARE,INC.,
`Patent Owner.
`
`Case IPR2015-01555
`Patent 8,646,093 B2
`
`Before JUSTIN T. ARBES, BRIAN P. MURPHY,and
`JOHN A. HUDALLA,Administrative Patent Judges.
`
`HUDALLA,Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 CFR. § 42.108
`
`Petitioner ServiceNow,Inc. (“ServiceNow’) filed a Petition (“Pet.”’)
`
`(Paper 1) to institute an inter partes review of claims 1, 5, 10-13, and 16 of
`
`Patent 8,646,093 B2 (“the 093 patent’) (Ex. 1001) pursuant to 35 U.S.C.
`
`§§ 311-319. Patent Owner BMCSoftware,Inc. (“BMC”)filed a
`Preliminary Response(“Prelim. Resp.”) (Paper 10) to the Petition. We have
`
`jurisdiction under 35 U.S.C. § 314.
`
`

`

`IPR2015-01555
`Patent 8,646,093 B2
`
`Under35 U.S.C. § 314(a), the Director may not authorize an inter
`
`partes review unless the information in the petition and preliminary response
`
`“showsthat there is a reasonablelikelihood that the petitioner would prevail
`
`with respect to at least 1 of the claims challenged in the petition.” For the
`
`reasonsthat follow, we have decided notto institute an inter partes review.
`
`A.
`
`Related Proceedings
`
`I. BACKGROUND
`
`The parties identify the following proceeding related to the ’093
`
`patent (Pet. 1; Paper 6, 1): BMC Software, Inc. v. ServiceNow, Inc., Case No.
`
`2:14-CV-00903 JRG (E.D. Tex. Sept. 23, 2014). The ’093 patent is also the
`
`subject of a petition for covered business method review in CBM2015-
`
`00170.
`
`B.
`
`The '093 Patent
`
`The 7093 patent is directed to a software license system that “allows
`
`an enterprise to model software license contracts and evaluate deployment of
`software for compliance with the software license contracts.” Ex. 1001,
`Abstract. Figure 2 of the ’093 patent is reproduced below.
`
`

`

`IPR2015-01555
`
`Patent 8,646,093 B2
`
`Figure 2 depicts system 200 having Configuration Management Database
`
`(CMDB) 260, which “contains data about managed resources known as
`
`Configuration Items (CIs).” Jd. at 1:29-30. Information about the software
`
`contracts, which mayinclude the informationlisted in Table 1 of the
`
`specification, may be stored as CIs in CMDB 260. /d. at 5:1—2, 9-55 (Table
`
`1).
`
`License datastore 270, which may be separate from or a part of
`
`CMDB260, provides storage for license certificates “to model software
`
`contracts, including rules against which the Cls are evaluated for software
`
`license compliance and other information necessary for processing those
`
`rules.” Jd. at 4:11-17, 9:37-40. “A license certificate indicates the right to
`
`deploy software in the environment managed by the CMDBserver 110,” and
`
`

`

`IPR2015-01555
`Patent 8,646,093 B2
`
`an exemplary license certificate may include the informationlisted in Table
`
`3 of the specification. Jd. at 8:61-63, 9:1—20 (Table 3).
`
`C.
`
`Claim 1
`
`Claim 1 of the ’093 patent recites:
`
`1.
`
`A computer-implemented method, comprising:
`modeling deployment of a software product and a
`software license contract for the software product;
`storing a first model of the modeled deployment of the
`software product
`in a configuration management database
`(CMDB) bystoring information related to the software product
`as a first configuration item in the CMDB and bystoring
`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 comparingthe first model and the
`second model by comparing the first configuration item
`with the license certificate and connecting the license
`certificate with the second configuration item responsive
`to comparing the first configuration item with the license
`certificate; and
`
`generating an exception indication if the act of
`comparing the first model and the second modelindicates
`non-compliance with the software license contract.
`
`

`

`IPR2015-01555
`Patent 8,646,093 B2
`
`D.
`
`The Prior Art
`
`ServiceNowrelies on the following priorart:
`
`to Meyer, filed Nov. 8,
`U.S. Patent No. 6,810,389 Bl
`2000, issued Oct. 26, 2004 (Ex. 1003, “Meyer’’);
`Excerpts from United Kingdom Office of Government
`Commerce,
`BEST
`PRACTICE
`FOR
`SOFTWARE
`ASSET
`MANAGEMENT, IT Infrastructure"Library (ITIL) (2003) (Ex.
`1004, “Best Practice”);
`Excerpts
`from Rob Addy, EFFECTIVE IT SERVICE
`MANAGEMENT, TO ITIL AND BEYOND!
`(2007)
`(Ex. 1005,
`“Addy’); and
`U.S. Patent Application Publication No. 2005/0071276
`Al to Bruchlos, filed June 24, 2004, published Mar. 31, 2005
`(Ex. 1006, “Bruchlos”).
`
`E.
`
`The Asserted Grounds
`
`ServiceNow challenges claims 1, 5, 10—13, and 16 of the ’093 patent
`
`on the following grounds (Pet. 4):
`References | BASE ue]Claims Challenged.
`ee ge ee a ee em 2 os
`Meyer, Best
`35 U.S.C. § 103(a) |1,5,10,16.
`Practice, Addy
`
`Bruchlos
`
`Meyer, Best 35 U.S.C. § 103(a)|11-13
`
`Practice, Addy,
`
`F.
`
`Claim Interpretation
`
`In an inter partes review, we construe claims by applying the broadest
`
`reasonable interpretationin light of the specification. 37 C.F.R. § 42.100(b);
`
`see In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275-78 (Fed. Cir.
`
`2015). Under the broadest reasonable interpretation standard, and absent
`
`any special definitions, claim termsare given their ordinary and customary
`
`

`

`IPR2015-01555
`Patent 8,646,093 B2
`
`meaning, as would be understoodby one ofordinary skill in the art in the
`
`context of the entire disclosure. See In re Translogic Tech. Inc., 504 F.3d
`
`1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms or
`phrases must be set forth “with reasonable clarity, deliberateness, and
`precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
`ServiceNow identifies three terms for construction: “license
`
`certificate,” “model’/“modeling,” and “exception indication.” Pet. 15-20.
`
`1.
`
`“license certificate”
`
`ServiceNow and BMCbothagree “license certificate” should be
`
`construed as “information relating to the right to deploy software.” Pet. 16—
`
`17 (emphasis omitted); Prelim. Resp. 7-8. Wefind this construction is
`
`consistent with the use of “license certificate” in the ’093 patent, so we
`
`apply this construction for purposes of this Decision.
`
`2.
`
`“model’/“modeling”’
`
`ServiceNow and BMCalso agree on constructions of “model”as “an
`
`organized collection of information about an object” and of “modeling” as
`
`“creating a model.” Pet. 17-18 (emphasis omitted); Prelim. Resp.8.
`
`Because wefind the proposed constructions of these terms are consistent
`
`with their use in the ’093 patent, we apply these constructions for purposes
`
`of this Decision.
`
`3.
`
`“exception indication”
`
`The parties propose different constructions for the term “exception
`
`indication.” See Pet. 19-20; Prelim. Resp. 8-10. For purposesofthis
`
`decision, we decline to construe this term, because it has no bearing on our
`
`

`

`IPR2015-01555
`Patent 8,646,093 B2
`
`disposition below. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`
`795, 803 (Fed. Cir. 1999) (“{O]nly those terms need be construedthat are in
`
`controversy, and only to the extent necessary to resolve the controversy”’).
`
`Il. ANALYSIS
`
`Wenow consider ServiceNow’s asserted groundsin its Petition and
`
`BMC’s arguments in its Preliminary Response to determine whether
`
`ServiceNowhas met the threshold standard of 35 U.S.C. § 314(a).
`
`ServiceNow submitted a declaration from Tal Lavian, Ph.D., to accompany
`
`its Petition. See Pet. 4 (citing Ex. 1002).
`
`A.
`
`Obviousness Ground Based on Meyer, Best Practice, and Addy
`
`ServiceNow contends claims 1, 5, 10, and 16 would have been
`
`obvious over the combination of Meyer, Best Practice, and Addy. Pet. 26—
`
`52. BMCdisputes ServiceNow’s contentions. Prelim. Resp. 16—29.
`
`1.
`
`Meyer
`
`.
`
`Meyerrelates to “providing licenses to client computer systems to
`
`allow the client computer systemsto use licensed software products.” Ex.
`
`1003, 3:62—64. Figure 1 of Meyeris reproduced below.
`
`

`

`IPR2015-01555
`Patent 8,646,093 B2
`
`i
`
`10 \
`
`Software Licensing System {SLS)
`
`|
`
`15
`
`
`40
`
`
`
`
`
`Client
`Licensing
`Library
`
`
`
`
` Licensing
`Library
`
`
`
`Figure 1 depicts a software licensing system (SLS) having licensing server
`25, which holdslicensefile 65 of licenses 60. Jd. at 1:42—2:5. Applications
`
`15, 20 make license requests 40, 45, which are also knownas “checkout”
`requests, from licensing server 25. Id. at 1:44—49. Licensing server 25
`either grants or denies (50, 55) these requests based onthe result of a
`
`verification “that the license is intended to allow the operation of the
`
`application in the current configuration, environment, and at the current
`
`time.” Jd. at 1:49-60.
`
`Meyeralso describes exemplary license 200 as containing license
`
`count 205, feature name 215, end date 225, and license version number235.
`
`Td. at Fig. 3, 2:6—23.
`
`2.
`
`Best Practice
`
`Best Practice is a publication of the IT Infrastructure Library (ITIL),
`
`whichis affiliated with the Office of Government Commerceof the United
`
`

`

`IPR2015-01555
`Patent 8,646,093 B2
`
`Kingdom government. Ex. 1004, 16. Among otherthings, the publication is
`directed to software asset management (SAM)via the use of a CMDB.Id.
`at 16, 96. Best Practice describes that “each component contained within the
`
`CMDBisreferred to as a Configuration Item (C]),” and “[e]ach CI record
`
`within the CMDBcontainsall of the attributes and information relating to a
`
`componentnecessary for managing it, whether software, hardware,
`contracts, etc.” Id. at 96-97. Exemplary contents of a CMDB,including
`exemplary CIs, are disclosed in Appendix D of Best Practice. Jd. at 134—
`
`140.
`
`3.
`
`Addy
`
`Addyis a textbook related to the management of IT services. Ex.
`1005. Addystates that“the CMDB should be an embeddedpart of every IT
`process and should be used by every memberofthe IT function onadaily, if
`
`not hourly basis.” Jd. at 239.
`
`Claim I Obviousness Analysis —
`4.
`Claim 1 is unpatentable “if the differences between the subject matter
`
`[claimed] andtheprior art are such that the subject matter as a whole would
`
`have been obviousat the time the invention was madeto a person having
`
`ordinary skill in the art to which said subject matter pertains.” 35 U.S.C.
`§ 103(a).' ServiceNow proposes combining certain exemplary configuration
`
`’ The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the °093
`patent has an effective filing date before the effective date of the applicable
`AIA amendments,throughout this Decision we refer to the pre-AIA versions
`of 35 U.S.C. §§ 102 and 103.
`
`

`

`IPR2015-01555
`Patent 8,646,093 B2
`
`items from a CMDBasdisclosed in Best Practice with Meyer’s teachings on
`
`creating and checkinglicense records to teach the limitations of claim 1. See
`
`Pet. 26-48. ServiceNow contends an ordinarily skilled artisan would have
`
`had reason to combine these teachings based on various commonalities in
`the references themselves and additionally based on Addy’s statements
`
`encouraging the use of CMDBs. Seeid. at 33-38, 41-47. Considering
`
`ServiceNow’s obviousness analysis and BMC’s Preliminary Response, and
`
`based on the present record, we are not persuaded that ServiceNow has
`
`established a reasonablelikelihood of prevailing on its obviousness
`
`challenge of claim 1 for the reasons explained below.
`
`In its unpatentability contentions, ServiceNow mapscertain software
`modeling information from Best Practice to the recited “first model ofthe
`modeled deploymentof the software product in a configuration management
`
`database (CMDB)”of claim 1. /d. at 29-30. Specifically, ServiceNow
`
`contends Best Practice’s CI for software products in Table D.2 teaches
`
`“information related to the software product”in the “first configuration
`
`item,” whereas Best Practice’s CI for software license contracts in Table D.1
`
`teaches “information related to the software license”in the “second
`configuration item.” Jd. (citing Ex. 1004, 134-38).
`
`Correspondingly, ServiceNow maps Meyer’s license recordsstored in
`the license database to the recited “second model of the modeled software
`
`license contract for the software product in a license database”of claim 1.
`
`Id. at 30-31 (citing Ex. 1003, Figs. 1, 3; 2:10-21). ServiceNow contendsthe
`
`recited “license certificates” are generated when Meyer’s license server 760
`
`creates license records by examining externalfiles that contain information
`
`about underlying software license contracts. Jd. at 32-33 (citing Ex. 1003,
`
`7:40-61). Citing Best Practice, ServiceNow contendsit would have been
`
`10
`
`

`

`IPR2015-01555
`Patent 8,646,093 B2
`
`obvious to modify the software license system of Meyerto include“the
`ability to maintain a CMDB with Cls for storing information relating to ‘the
`
`software product’ and ‘the software license contract,’ respectively.” Jd. at
`
`34 (citing Ex. 1002 F¥ 81-84).
`
`The “evaluating” step of claim 1 comprises “connecting and
`
`comparing”and “generating” substeps directed to interactions ofthe “first
`
`model” and the “second model.” Specifically, the “first configuration item”
`
`of the first model is comparedto the “license certificate” of the second
`
`model. To teach this limitation, ServiceNowrelies on Meyer’s comparing of
`
`key/value attributes in a licensing request with the license record attributes
`
`in the license record. See Pet. 40-41 (citing Ex. 1003, 2:6—23). ServiceNow
`
`acknowledges Meyerdoesnot disclose configuration items or a CMDB,see
`
`id. at 42, but ServiceNowcites claim 1’s earlier recitation that “information
`
`related to the software product”is stored “as a first configuration item.” Jd.
`
`at 40. As stated above, ServiceNow proposes adding a CMDBto the
`
`software licensing system of Meyer; ServiceNow contends“this
`
`combination would have predictably resulted” in Meyer’s system comparing
`
`“the attributes in the license record (the ‘license certificate’) .
`
`.
`
`. against
`
`information aboutthe software from the ‘first configuration item’ in the
`
`CMDB,rather than the licensing request in Meyer.” Jd. at 41-42 (emphasis
`
`omitted) (citing Ex. 1002 J 101).
`
`BMCcontends ServiceNow’s analysis of “comparingthefirst
`
`configuration item with the license certificate” is flawed because Meyer
`
`does not expressly disclose a “first configuration item” that can be compared
`
`to a licensecertificate. See Prelim. Resp. 22.. Specifically, BMC cites
`
`ServiceNow’s analysis of Meyer whereby “the ‘first configuration item’is
`
`merely ‘the license request issued to the licensing server’” in Meyer. Jd.
`
`11
`
`

`

`
`
`IPR2015-01555
`Patent 8,646,093 B2
`
`(citing Pet. 40). BMCnotes an apparent contradiction in this analysis,
`because ServiceNow elsewhere relies on Best Practice, rather than Meyer,
`for teaching the “first configuration.item.” Jd. (citing Pet. 29). BMC further
`
`criticizes ServiceNow’s analysis by noting it would be “nonsensical” for
`
`Meyer’s system—as modified to include a CMDB—to comparethe CI of a
`CMDB,ratherthan a licensing request, with Meyer’s licensefile. Jd. at 22—
`23. BMC contendsthereis no cited teaching of how “‘requests’ could be
`
`generated from a CMDBthat merely reflects the deployment of software in
`
`an enterprise and does not consist of actual running applicationsor license
`
`clients.” Jd.; see also id. at 17 (“Meyer’s architecture [w]ould be completely
`
`changed to read software modeled in a CMDB,wherenoclients or requests
`
`exist.”).
`
`Weare persuaded by BMC’s arguments. ServiceNow’s proposed
`modification of Meyer conflicts with ServiceNow’s mapping of Best
`Practice to the “first model of the modeled deploymentof the software
`
`product” and Meyerto the “second model of the modeled software license
`
`contract for the software product.” See Pet. 29-32. ServiceNow would have
`
`us supplant (or disregard) its own asserted use of Best Practice for teaching
`the “first configuration item”elsewhere in claim 1, see id. at 29 (citing Ex.
`
`1004, Table D.2), and substitute Meyer’s “information related to the
`
`software product” simply to reach the “comparing” step. See id. at 41-44.
`
`Wefind ServiceNow’s shifting application of the references to the “first
`
`configuration item” of claim 1 to be irreconcilable.
`
`Moreover, evenif it were feasible, ServiceNow’s proposed
`
`modification of Meyerto include CIs ina CMDB wouldrelate to stored
`
`data, namely, the license records that ServiceNow mapsto the recited
`
`“license certificate.” See id. at 34 (“Under this combination, the claimed
`
`12
`
`

`

`IPR2015-01555
`Patent 8,646,093 B2
`
`‘license certificate’ .
`
`.
`
`. is generated based on the license information in the
`
`CMDB ....”). But, inconsistently, ServiceNowalso likens CIs in the
`
`CMDBto Meyer’s license request issued to the licensing server. See id. at
`
`40 (relating the “first configuration item”to a “license request issued to the
`
`licensing server”). The result would be a system that no longerissues a
`
`license request, as taught by Meyer, because Meyer’s licensing request
`
`would have been replaced by a CI. As noted by BMC, ServiceNow does not
`
`address how such a modified system in Meyer would operate in the absence
`
`of licensing requests. See Prelim. Resp. 17, 22-23. ServiceNow cannot
`both rely on the license request to initiate the “comparing”action andat the
`
`same time replace the license request with a data structure,thefirst
`
`configuration item, which is not associated with any request or “comparing”
`
`action.
`
`For these reasons, and because ServiceNow’s citations to Addy do not
`
`cure the deficiencies noted above, ServiceNow has not established the
`
`combination of Meyer, Best Practice, and Addy teaches or suggests
`
`“comparing the first configuration item with the license certificate,” as
`
`recited in claim 1. Therefore, ServiceNow has not demonstrated a
`
`reasonable likelihood of prevailing on its assertion that Meyer, Best Practice,
`
`and Addy would have rendered obviousthe subject matter of claim 1.
`
`5.
`
`Claims 5, 10, and 16
`
`Claims 5 and 10 depend from claim 1, so ServiceNow’s obviousness
`
`ground with respect to these claimsis deficient for the same reasons as with
`
`claim 1. Independent claim 16 is a system claim comprising a “server
`
`computer” having a processorthat “perform[s] the method of claim 1.”
`
`ServiceNow contends“claim 16 adds nothing ofsignificance over claim 1”
`
`13
`
`

`

`IPR2015-01555
`Patent 8,646,093 B2
`and relies on the same analysisthat it puts forth for claim 1. Pet. 51-52.
`ServiceNow’s obviousness ground with respect to claim 16 is therefore
`
`deficient for the same reasons as with claim 1. Accordingly, ServiceNow
`
`has not demonstrated a reasonablelikelihood of prevailing on its assertion
`
`that Meyer, Best Practice, and Addy would have rendered obvious claims5,
`
`10, and 16.
`
`B.
`
`Obviousness Ground Based on Meyer, Best Practice, Addy, and
`Bruchlos
`ServiceNow contends claims 11-13 would have been obvious over
`
`the combination of Meyer, Best Practice, Addy, and Bruchlos. Pet. 53-58.
`
`BMCdisputes ServiceNow’s contentions. Prelim. Resp. 25-29.
`Claims 11-13 depend directly or indirectly from claim 1.
`
`ServiceNowrelies on the same analysis for the limitations in the base claim,
`
`and ServiceNow’s use of Bruchlos does not cure the deficienciesin that
`analysis. See Pet. 53-58. Accordingly, for the same reasons set forth above
`with respect to claim 1, ServiceNow has not demonstrated a reasonable
`
`likelihood of prevailing on its assertion that Meyer, Best Practice, Addy, and
`
`Bruchlos would have rendered obvious claims 11—13.
`
`Ill. CONCLUSION
`
`Weconclude that ServiceNowhas not demonstrated a reasonable
`
`likelihood of prevailing with respect to at least one claim of the ’093 patent
`
`challenged in the Petition. Therefore, we do notinstitute an inter
`
`partes review on any ofthe asserted groundsas to any of the challenged
`
`claims.
`
`14
`
`

`

`IPR2015-01555
`Patent 8,646,093 B2
`
`IV. ORDER
`
`Accordingly,it is
`
`ORDEREDthatthe Petition is denied asto all challenged claims of
`
`the ’093 patent.
`
`
`
`15
`
`

`

`IPR2015-01555
`Patent 8,646,093 B2
`
`PETITIONER:
`
`Heidi L. Keefe
`Phillip E. Morton
`Andrew C. Mace
`Mark Weinstein
`COOLEY LLP
`hkeefe@cooley.com
`pmorton@cooley.com
`amace@cooley.com
`mweinstein@cooley.com
`zpatdcdocketing@cooley.com
`
`PATENT OWNER:
`
`Robert A. Cote
`Pierre Hubert
`Robert Auchter
`Kevin Schubert
`MCKOOLSMITH P.C.
`rcote@mckoolsmith.com
`phubert@mckoolsmith.com
`rauchter@mckoolsmith.com
`kschubert@mckoolsmith.com
`
`16
`
`

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