Trials@uspto.gov
`571.272.7822
`
`Paper No. 9
`Entered: February 16, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SERVICENOW,INC.,
`Petitioner,
`
`Vv.
`
`BMC SOFTWARE,INC.,
`Patent Owner.
`
`Case CBM2015-00170
`Patent 8,646,093 B2
`
`Before JUSTIN T. ARBES, BRIANP. MURPHY, and
`JOHN A. HUDALLA,Administrative Patent Judges.
`
`HUDALLA,Administrative Patent Judge.
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 CF.R. § 42.208
`
`Petitioner’s Motion for Pro Hac Vice Admission
`37 CFR. § 42.10
`
`Petitioner ServiceNow,Inc. (“ServiceNow’)filed a Petition (‘Pet.”)
`(Paper 1) requesting covered business method patent review of claims1, 5,
`10-13, and 16 of U.S. Patent No. 8,646,093 B2 (“the ’093 patent”) (Ex.
`
`1001) pursuant to 35 U.S.C. §§ 321-329. Patent Owner BMCSoftware,Inc.
`
`
`
`
`571.272.7822
`
`Paper No. 9
`Entered: February 16, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SERVICENOW,INC.,
`Petitioner,
`
`Vv.
`
`BMC SOFTWARE,INC.,
`Patent Owner.
`
`Case CBM2015-00170
`Patent 8,646,093 B2
`
`Before JUSTIN T. ARBES, BRIANP. MURPHY, and
`JOHN A. HUDALLA,Administrative Patent Judges.
`
`HUDALLA,Administrative Patent Judge.
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 CF.R. § 42.208
`
`Petitioner’s Motion for Pro Hac Vice Admission
`37 CFR. § 42.10
`
`Petitioner ServiceNow,Inc. (“ServiceNow’)filed a Petition (‘Pet.”)
`(Paper 1) requesting covered business method patent review of claims1, 5,
`10-13, and 16 of U.S. Patent No. 8,646,093 B2 (“the ’093 patent”) (Ex.
`
`1001) pursuant to 35 U.S.C. §§ 321-329. Patent Owner BMCSoftware,Inc.
`
`
`
`
`
`CBM2015-00170
`Patent 8,646,093 B2
`
`(“BMC”) filed a Preliminary Response (“Prelim. Resp.”) (Paper 8) to the
`
`Petition. We havejurisdiction under 35 U.S.C. § 324.
`
`Pursuant to 35 U.S.C. § 324(a), the Director may not authorize a
`
`covered business methodpatent review unless the information in the
`
`petition, if unrebutted, “would demonstrate that it is more likely than notthat
`
`at least 1 of the claims challengedin the petition is unpatentable.” Forthe
`
`reasonsthat follow, we institute a covered business methodpatent review as
`
`to claims1, 5, 10—13, and 16 of the ’093 patent.
`
`A,
`
`Related Proceedings
`
`I. BACKGROUND
`
`The parties identify the following proceeding related to the ’093
`
`patent (Pet. 1; Paper 5, 1): BMC Software, Inc. v. ServiceNow, Inc., Case No.
`
`2:14-CV-00903 JRG (E.D.Tex. Sept. 23, 2014). The ’093 patent was also
`
`the subject of a petition for inter partes review in IPR2015-01555. See Pet.
`
`1; Paper 5, 1. In that case, the Board deniedinstitution of an inter partes
`
`review in a Decision dated January 14, 2016.
`
`B.
`
`The ’093 Patent
`
`The ’093 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.
`
`
`
`CBM2015-00170
`
`Patent 8,646,093 B2
`
`Figure 2 depicts system 200 having Configuration Management Database
`
`(CMDB)260, which “contains data about managed resources knownas
`
`Configuration Items (Cls).” Jd. at 1:29-30. Information about the software
`contracts, which may include the informationlisted in Table 1 of the
`
`specification, may be stored as CIs in CMDB 260. Jd. at 5:1—2, 9-55 (Table
`
`1).
`
`License datastore 270, which maybe separate from or a part of
`
`CMDB260, providesstorage forlicense 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
`
`
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`CBM2015-00170
`Patent 8,646,093 B2
`
`an exemplary license certificate may include the information listed in Table
`
`3 of the specification. Jd. at 8:61-63, 9:1—20 (Table 3).
`
`C.
`
`Claim 1
`
`Claim | of the ’093 patentrecites:
`
`l.
`
`A computer-implemented method, comprising:
`modeling deploymentof 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 andbystoring
`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
`comparing the first model and the second model indicates
`non-compliance with the software license contract.
`
`
`
`CBM2015-00170
`Patent 8,646,093 B2
`
`D._Exhibit Description
`
`ServiceNowrelies on, inter alia, the following declaration and
`
`references in support of its ground of unpatentability:
`
`Declaration of Tal Lavian, Ph.D. (Ex. 1002); .
`Excerpts from United Kingdom Office of Government
`Commerce,
`BEST
`PRACTICE
`FOR
`SOFTWARE
`ASSET
`MANAGEMENT, IT Infrastructure Library (ITIL) (2003) (Ex.
`1003, “Best Practice”);!
`Excerpts from United Kingdom Office of Government
`Commerce, INTRODUCTION TO ITIL, IT Infrastructure Library
`(ITIL) (2005) (Ex. 1004, “Introduction to ITIL”); and
`Microsoft Corporation, A GUIDE TO SOFTWARE ASSET
`MANAGEMENT(2004) (Ex. 1005, “Microsoft Guide”).
`
`|
`
`E.
`
`The Asserted Ground
`
`ServiceNow challenges claims 1, 5, 10-13, and 16 of the ’093 patent
`
`as unpatentable under 35 U.S.C. § 101. Pet. 18.
`
`F.
`
`Claim Interpretation
`In a covered business methodpatent review, we construe claims by
`applying the broadest reasonable interpretation in light of the specification.
`37 C.F.R. § 42.300(b); see Office Patent Trial Practice Guide, 77 Fed. Reg.
`
`48,756, 48,766 (Aug. 14, 2012) (“Trial Practice Guide”). Under the
`
`broadest reasonable interpretation standard, and absent any special
`
`definitions, claim terms are given their ordinary and customary meaning,as
`would be understood by one ofordinary skill in the art in the context ofthe
`
`' When citing to non-patent references, we refer to the page numbers
`ServiceNow addedto the bottom center of each page. See 37 C.F.R.
`§ 42.63(d)(2).
`
`
`
`CBM2015-00170
`Patent 8,646,093 B2
`
`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 beset
`
`forth “with reasonable clarity, deliberateness, and precision.” Jn re Paulsen,
`30 F.3d 1475, 1480 (Fed. Cir. 1994).
`|
`ServiceNowidentifies two terms for construction: “license
`
`certificate” and “model’’/“modeling.” Pet. 30-34.
`
`1.
`
`“license certificate”’
`
`ServiceNow and BMCboth agree “license certificate” should be
`
`construed as “information relating to the right to deploy software.” Pet. 31-—
`
`33; Prelim. Resp. 12. 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. 33-34; Prelim. Resp. 12. Because wefind the
`proposed constructions of these terms are consistent with their usein the
`’093 patent, we apply these constructions for purposes of this Decision.
`
`A.
`
`Standing
`
`II. ANALYSIS
`
`Section 18 of the Leahy-Smith America Invents Act, Pub. L.
`
`No. 112-29, 125 Stat. 284 (2011) (“AIA”), provides for the creation of a
`
`transitional program for reviewing covered business methodpatents, and
`
`limits reviews to personsortheir privies that have been sued or charged with
`
`
`
`CBM2015-00170
`Patent 8,646,093 B2
`
`infringement of a “covered business method patent,” which does not include
`
`patents for “technological inventions.” AIA §§ 18(a)(1)(B), 18(d)(1); see 37
`
`C.F.R. § 42.302. ServiceNow asserts it has standingto file a Petition for
`
`covered business methodpatent review of the ’093 patent. Pet. 3-18. BMC
`
`challenges ServiceNow’s assertion of standing. Prelim. Resp. 1-11. We
`
`conclude ServiceNow hasstandingto file the Petition for covered business
`
`method patent review of the ’093 patent for the reasonsthat follow.
`
`1.
`
`Suedfor Infringementofthe '093 Patent
`
`.
`
`ServiceNow wassuedfor infringementof the ’093 patent on
`
`September 23, 2014, in BMC Software, Inc. v. ServiceNow, Inc., Case No.
`
`2:14-CV-00903 JRG (E.D. Tex.). Pet. 3 (citing Ex. 1008). The district
`
`court case is pending. Jd.
`
`2.
`
`Financial Product or Service Analysis
`
`Wenow consider whether ServiceNow has shown the ’093 patent
`
`satisfies the “financial product or service” prong for covered business
`
`method patenteligibility. A “covered business method patent”is a patent
`
`that “claims a method or corresponding apparatus for performing data
`
`processing or other operations usedin the practice, administration, or
`
`managementofa financial productor service, except that the term does not
`
`include patents for technological inventions.” AIA § 18(d)(1); see 37 C.F.R.
`
`§ 42.301(a). For purposes of determining whethera patentis eligible for a
`
`covered business method patent review,the focus is on the claims. See
`
`Transitional Program for Covered Business Method Patents—Definitions of
`
`Covered Business Method Patent and Technological Invention; Final Rule,
`
`77 Fed. Reg. 48,734, 48,736 (Aug. 14, 2012). A patent need have only one
`
`
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`CBM2015-00170
`Patent 8,646,093 B2
`
`claim directed to a covered business methodto be eligible for review. Jd. In
`
`promulgating rules for covered business method patent reviews, the Office
`
`considered the legislative intent and history behind the AIA’s definition of
`
`“covered business method patent.” Jd. at 48,735-36. The “legislative
`
`history explains that the definition of covered business method patent was
`
`drafted to encompasspatents ‘claiming activities that are financial in nature,
`incidental to a financial activity or complementary to a financialactivity.’”
`
`Id. (citing 157 Cong. Rec. $5432 (daily ed. Sept. 8, 2011) (statement of Sen.
`
`Schumer)) (emphasis added). Thelegislative history indicates that
`
`“financial product or service” should be interpreted broadly suchthat, “[a]t
`
`its most basic, a financial product is an agreement between twoparties
`
`stipulating movements of money or other consideration now orin the
`
`future.” 157 Cong. Rec. $5432 (daily ed. Sept. 8, 2011) (statement of Sen.
`
`Schumer).
`
`ServiceNow contendsthe challenged claims “are directed at a way to
`monitor compliance with software license contracts,” whichis a “technique
`
`[that] is clearly incidental or complementary toafinancial activity,e.g.,
`
`purchasing licenses for software products.” Pet. 5,9. Citing passages from
`the Specification of the ’093 patent, ServiceNow contends the “license
`certificate”recited in claim 1 reflects “the numberoflicenses purchased for
`a particular software product.” Jd. at 7 (citing Ex. 1001, 7:35, 57, 8:24,
`9:30-36).
`
`BMCcontendsthe ’093 patent’s “claims are not drawnto a ‘financial
`
`product or service’ andare thus ineligible for CBM review.” Prelim. Resp.
`' 2,7. Specifically, BMC contendsthe Petition should be denied because
`“ServiceNow does not show that the claims have ‘particular relation limited
`to the financial services sector.’” Jd. at 11 (quoting 157 Cong. Rec. $5441
`
`
`
`CBM2015-00170
`Patent 8,646,093 B2
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`(daily ed. Sept. 8, 2011) (statement of Sen. Leahy)) (emphasis omitted).?
`
`Yet a direct link to the financial services industry is not required for standing
`
`under AIA § 18. See SightSound Techs., LLC v. Apple Inc., 809 F.3d 1307,
`
`1315-16 (Fed. Cir. 2015) (rejecting appellant’s argument that “to ‘relate to a
`financial product or service the invention as a whole mustbedirected to the
`management of money,banking, or investmentor credit’”); Versata Dev.
`
`Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1325 (Fed. Cir. 2015) (“as a
`
`matter of statutory construction, the definition of ‘covered business method
`
`patent’ is not limited to products and services of only the financialindustry,
`
`or to patents ownedbyordirectly affecting the activities of financial
`
`institutions such as banks and brokerage houses”). The suggestion to adopt
`
`a definition limiting financial services or products to the financial services
`
`industry was considered but not adopted during rulemaking. 77 Fed. Reg.at
`
`48736.
`
`Considering Congressional intent for a broad interpretation of
`“financial product or service,” and most importantly, the language of claim
`
`1, we are satisfied on this record that ServiceNow.establishes a claimed link
`
`to a financial productor activity, namely, “software license contracts.” See
`
`Pet. 7-10. Claim 1 recites “modeling deployment of a software product and
`39 66
`
`a software license contractfor the software product,”
`
`“evaluating the
`
`deploymentof the software product for compliance with the softwarelicense
`
`contract,” and generating an exception indicationif there is “non-
`_ compliance with the softwarelicense contract,” among other things. The
`
`? Although BMCcites PNC Financial Services Group, Inc. v. Intellectual
`Ventures I LLC, Case CBM2014-00032, slip op. at 7 (PTAB May 22, 2014)
`(Paper 13), for the quoted language, see Prelim. Resp. 11, this language
`ultimately arises from Senator Leahy’s statement.
`
`9
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`CBM2015-00170
`Patent 8,646,093 B2
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`focus of claim 1 is thus on managingandprocessing data related to software
`license contracts; such license contracts qualify as a “financial product”or
`
`“financial activity” because they represent “an agreement between two
`
`parties stipulating movements of moneyor other consideration now orin the
`
`future.” See 157 Cong. Rec. $5432 (daily ed. Sept. 8, 2011) (statement of
`
`Sen. Schumer).
`
`The Specification of the ’093 patent also confirms the claimed
`method’s connection to financial activities. The Specification describes that
`software licenses are purchased on various bases. See Pet. 7 (citing Ex.
`
`1001, 7:35, 57, 8:24 for “‘per instance,’ ‘per copy per device,’ and ‘per
`
`copy’ licenses”). Information related to the terms of the purchased licenses
`
`can be includedin the recited “license certificate” of claim 1. See id. (citing
`
`Ex. 1001, 9:30-36). The Specification also describes how these license
`
`terms are evaluated “to determine whether each of the software CIs complies
`
`with the terms of the software contract.” Jd. at 28-29 (quoting Ex. 1001,
`
`10:49-53); see also Ex. 1001, Abstract(stating that the ’093 patentis
`directed to “[a] software license engine [that] allows an enterprise to model
`software license contracts and evaluate deployment of software for
`compliance with the software license contracts”). On the current record, we
`find claim 1 recites a method for performing data processing or other
`
`operations used in the practice, administration, or managementof a financial
`
`productor service, namely, the provision and administration of, and
`
`monitoring for compliance with, software license contracts.
`
`Technological Invention Analysis
`3.
`Wenowconsiderthe “technological invention” exclusion in
`
`§ 18(d)(1) of the AIA,i.e., “whether the claimed subject matter as a whole
`
`10
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`
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`CBM2015-00170
`Patent 8,646,093 B2
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`recites a technological feature that is novel and unobviousoverthe priorart;
`
`and solves a technical problem usinga technicalsolution.” 37 C.F.R.
`
`§ 42.301(b). The following claim drafting techniques, for example,typically
`
`do not render a patent a “technological invention”:
`
`(a) Mere recitation of known technologies, such as
`computer hardware, communication or computer networks,
`software, memory,
`computer-readable
`storage medium,
`scanners, display devices or databases, or specialized machines,
`such as an ATM orpointofsale device.
`(b) Reciting the use of known prior art technology to
`accomplish a process or method, even if that process or method
`is novel and non-obvious.
`
`(c) Combining prior art structures to achieve the normal,
`expected, or predictable result of that combination.
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,763—-64 (Aug.
`14, 2012).
`ServiceNow contends “[t]he only limitations of [claim 1] that are
`
`remotely technological recite known existing technologies such as
`
`databases,” and characterizes the recited “storage of information in
`‘configuration items’ (CIs) of a ‘configuration management database’
`(CMDB)”as admitted prior art. Pet. 12-13 (citing Ex. 1001, 1:18-44).
`
`ServiceNowalso cites Introduction to ITIL for the proposition that “a
`
`CMDBcould consist of paper formsor a set of spreadsheets.” Jd. at 14
`
`(quoting Ex. 1004, 8). Regarding the generation and storage of a “license
`certificate” in claim 1, ServiceNowasserts the Specification discloses
`known implementations for license datastore 270, such as “a collection of
`
`flat files” or “structured query language database,” id. at 15 (citing Ex. 1001,
`
`4:17-20); therefore, ServiceNow contends“[t]his step does not require any
`
`particular programmingor technical implementation.” Jd. (citing Ex: 1002
`
`
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`CBM2015-00170
`Patent 8,646,093 B2
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`4 89). Additionally, ServiceNow contendsthe “evaluating” step, which has
`
`subsidiary “connecting and comparing” and “generating”steps, “can be
`
`carried out using generic server hardware” such as that described in column
`
`4 of the Specification with reference to Figure 3.
`
`/d. at 16 (citing Ex. 1001,
`
`Fig. 3, 4:21-59, Ex. 1002 4¥ 83, 97).
`
`BMCcontends:
`
`[There are] at least two technological features in each petitioned
`claim that ServiceNow doesnot meaningfully addressor identify
`as existing in the prior art—{i) “generating a license certificate
`corresponding to the software license contract and storing the
`license certificate;” and (ii) “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.”
`Prelim. Resp.4 (citing Ex. 1001, claim 1), 14-16. BMCalso contends
`“ServiceNow doesnot meaningfully address the license certificate limitation
`
`or show thatit existed in the prior art.” Jd. at 15. Regarding the
`eee
`
`“evaluating” step, BMC contends
`
`“‘connecting’ a license certificate with a
`
`second configuration item and ‘comparing’ a license certificate withafirst
`
`configuration item require particularized data structures and processes that
`
`are not known in thepriorart or a part of generic server hardware.” Jd. at
`
`15-16.
`
`Weare not persuaded by BMC’s arguments, and we determine
`
`ServiceNowhassufficiently established that claim 1 as a whole does not
`
`recite a technological feature that is novel and unobviousoverthe priorart.
`
`See Pet. 11-18. Although BMCargues ServiceNowhasnotestablished
`
`“generating a license certificate” and the “evaluating” steps are in the prior
`
`art, ServiceNow hasatleast established that these method steps may be
`
`12
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`
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`CBM2015-00170
`Patent 8,646,093 B2
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`accomplished using knownpriorart technology. See Office Patent Trial
`
`Practice Guide, 77 Fed. Reg. 48,756, 48,763-64 (Aug. 14, 2012) (examples
`
`a and b).
`Specifically, claim 1 recites a license certificate comprising
`information stored in a generically-recited database. We agree with
`
`ServiceNowthat “generating” such information and storing it in a database
`waswell-known and“provides no technological invention.” See Pet. 15
`
`(citing Ex. 1002 4] 89-90). Regarding the “comparing”step of claim 1, the
`
`step similarly recites knownpriorart technology, namely license certificates
`
`and configuration items. ServiceNow further cites Best Practice as teaching
`
`“plerform[ing] regular reconciliations of (a) what [software] is actually
`
`installed against (b) what is recorded against (c) licences owned(for licensed
`
`software), and resolv[ing] any identified exceptions promptly.” Ex. 1003,
`
`29 (quoted at Pet. 22, 49-50). Dr. Laviantestifies this comparisonis
`
`commonly performed by “human beings using pen and paper.” Ex. 1002
`{{ 32-33, 67-68 (emphasis omitted) (cited at Pet. 39). Thus, we agree with
`
`ServiceNow that comparinga first model of information about software —
`
`deployment with a license certificate is not a technological invention. See
`
`Pet. 15-16, 49-50. Wealso agree that connecting the license certificate to a
`
`second model represents standard, known data manipulation asit is carried
`
`out in the general-purpose computer hardware described in the ’093 patent.
`See id. at 15—16 (citing Ex. 1001, Fig. 3, 4:21-59, Ex. 1002 {1 83, 97), 50.
`Therefore, we agree with ServiceNowthat “nothing in the limitations of
`
`claim 1 provides any technological invention that could preclude CBM
`
`review of the ’093 patent.” Jd. at 16.
`
`13
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`4.
`
`Conclusion on Standing
`
`For the reasons above, we determine that at least claim 1 of the ’093
`
`patent recites a covered business method under § 18(d)(1) of the AIA. We
`therefore find the °093 patent is eligible for covered business method patent
`review.
`
`B.—Ground Based on 35 U.S.C. $ 101
`
`ServiceNow contends claims 1, 5, 10-13, and 16 are unpatentable
`
`under 35 U.S.C. § 101 becausethey are directed to ineligible subject matter.
`Pet. 35-53. BMCdisputes ServiceNow’s contentions. Prelim. Resp. 18-29.
`Ouranalysis begins with the statute. Section 101 provides that
`
`“[w]hoever invents or discovers any new anduseful process, machine,
`
`manufacture, or composition of matter, or any new and useful improvement
`thereof, may obtain a patent therefor, subject to the conditions and
`|
`requirementsofthis title.” “‘In choosing such expansive terms .
`.
`. modified
`
`by the comprehensive ‘any,’ Congress plainly contemplated that the patent
`
`laws would be given wide scope.’” Bilski v. Kappos, 561 U.S. 593, 601
`(2010) (quoting Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980)). There
`are, however, three limited, judicially created exceptions to the broad
`
`laws of nature, natural
`categories of patent-eligible subject matter in § 101:
`phenomena,and abstract ideas. Mayo Collaborative Servs. v. Prometheus
`Labs., Inc., 132 8S. Ct. 1289, 1293 (2012). Although an abstract idea by
`itself is not patentable, a practical application of an abstract idea may be
`deserving ofpatent protection. Jd. at 1293-94; Bilski, 561 U.S. at 609-11;
`Diamond v. Diehr, 450 U.S. 175, 187 (1981). To be patent-eligible, a claim
`
`cannot simply state the abstract idea and add the words “applyit.” See
`Mayo,132 S. Ct. at 1294. The claim must incorporate enough meaningful
`
`14.
`
`
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`CBM2015-00170
`Patent 8,646,093 B2
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`limitations to ensure that it claims more than just an abstract idea andis not
`
`merely a “drafting effort designed to monopolize the [abstract idea] itself.”
`
`See id. at 1297.
`
`In Alice Corp. Pty., Ltd. v. CLS Bank Int'l, 134 8. Ct. 2347 (2014), the
`United States Supreme Court clarified the process for analyzing claims to
`
`determine whetherthey are directed to patent-ineligible subject matter. The
`Court applied the frameworksetforth previously in Mayo “for
`distinguishing patents that claim laws of nature, natural phenomena,and
`
`abstract ideas from those that claim patent-eligible applications of those
`concepts.” Id. at 2355. Thefirst step in the analysis is to “determine
`whetherthe claimsat issue are directed to one of those patent-ineligible
`concepts.” Jd. If the claims are directed to a patent-ineligible concept, the
`
`secondstep in the analysis is to consider the elements of the claims
`999
`
`to determine whether there
`
`“individually and ‘as an ordered combination’”
`G66
`
`are additional elementsthat
`
`“‘transform the nature of the claim’ into a
`
`patent-eligible application.” Jd. (citation omitted). In other words, the
`
`secondstep is to “search for an ‘inventive concept’—i.e., an elementor
`
`combination of elementsthatis ‘sufficient to ensure that the patent in
`
`practice amountsto significantly more than a patent uponthe[ineligible
`
`concept] itself.’” Jd. (citation omitted). Limiting the claimsto a particular
`
`technological environmentorfield of use, or adding insignificant pre- or
`
`post-solution activity, does not constitute meaningful limitations. See Bilski,
`
`561 U.S. at 609-11; Diehr, 450 U.S. at 191-92; Parker v. Flook, 437 U.S.
`
`584, 595 n.18 (1978). And, even when a claim requires the use of a
`
`computer, the claim may nonetheless be directed to patent-ineligible subject
`matter if it can be performed using a pen and paperor in the human mind.
`
`15
`
`
`
`CBM2015-00170
`Patent 8,646,093 B2
`
`See Versata, 793 F.3d at 1335; CyberSource Corp. v. Retail Decisions, Inc.,
`
`654 F.3d 1366, 1372-73 (Fed. Cir. 2011).
`
`1.
`
`Abstract Idea Analysis
`
`ServiceNow contends “the challenged claims are directed generally to
`
`the abstract idea of ensuring that an enterprise is in compliance with its
`
`software license contracts.” Pet. 35. With reference to claim 1, ServiceNow
`
`breaks the purported abstract idea into three parts:
`
`(1) gathering information about how a software product has been
`installed in an enterprise, (2) locating the license contract forthat
`product; and (3) comparing the productinstallations against the
`license contract to determine compliance or non-compliance
`with the license.
`
`Id. at 35-36.
`
`BMCcontends“the petitioned claims are necessarily rooted in
`
`computer technology in order to overcomea problem specifically arising in
`
`the realm of computer networks.” Prelim. Resp. 20 (citing DDR Holdings
`
`LLC v. Hotels.com, Inc., 773 F.3d 1245, 1257 (Fed. Cir. 2014)). In
`
`particular, BMC contends
`
`recite a “configuration management
`all petitioned claims
`database,” “configuration items,” “license databases,” and
`“license certificates,” all of which are physical components
`having attendant hardware and software and not abstract ideas,
`and where physical transformations occur in at least “storing”
`and “connecting” components and “generating an exception
`indication” responsive to comparing components.
`
`Id. at 21. BMCalsotakes issue with ServiceNow’s contention that a CMDB
`
`could consist of paper formsor a set of spreadsheets, see Pet 46, based on
`
`the fact claim | recites a “computer-implemented method”and claim 16
`
`requires “a server computer,” amongother things. Prelim. Resp. 22—23
`
`16
`
`
`
`CBM2015-00170
`Patent 8,646,093 B2
`
`(citing Ex. 1001, Fig. 3, 3:34-37, 4:21—22, 13:25-30). BMCarguesthat
`
`“claims ‘necessarily rooted in computer technologyin order to overcome a
`
`problem specifically arising in the realm of computer networks’ satisf[y] the
`requirements of Section 101.” Id.at 19-21 (quoting DDR, 773 F.3d at
`1257).
`|
`Weare persuaded, on the present record, that ServiceNow’s
`
`arguments (as supported by various references and Dr. Lavian’s testimony)
`sufficiently establish the claims are directed to an abstract concept, namely,
`ensuring compliance with a software license contract by gathering,
`information about how asoftware producthasbeeninstalled and comparing
`‘the productinstallations against the license contract. ServiceNow contends
`
`that these steps are simply abstract concepts that can be performed by a
`
`human being using pen and paper. Pet. 36. “For example, a person could
`
`create an installation inventory for a software product by walking from
`computer-to-computer and jotting down the computers on which the
`software productis installed, and then, gather the applicable software license
`
`contract.” Jd. As evidence that doing so can be done by hand, ServiceNow
`
`cites the Microsoft Guide, which describes a written table “that an
`
`administrator could manually create listing the installed software, the
`
`numberofinstallations, the number[of] licenses, etc.” Jd. at 36-37 (citing
`
`Ex. 1005, 9). The Microsoft Guide instructs how to “perform a manual
`
`[software] inventory simply by going to each PC” and determining “exactly
`
`what programsare running onthat particular PC.” Ex. 1005, 8 (cited at Pet.
`23, 36). The Microsoft Guide also advises to “match[] software licenses
`
`with software installed” by “collect[ing] all of your company’s license
`
`documentation,” comparing the license information with the installation
`
`information, and preparing a “database or spreadsheet”to “see where your
`
`17
`
`
`
`CBM2015-00170
`Patent 8,646,093 B2
`
`companyis over-licensed and/or under-licensed.” Jd. at 9. The chart at page
`9 ofthe Microsoft Guide is reproduced below.
`
`aaPicani
`|
`
`
`
`once|mow|
`
`
`
`
`
`outwindows|mmf
`
`ap
`
`en
`MmotaDeticiency,
`
`This chart demonstrates how, for each software program, software
`
`installations are tallied in one column and matched against ownedlicenses in
`
`another. Jd. The excessor deficienciesin licenses are then shownin yet
`
`another column.
`
`J/d.
`
`In the event of a deficiency, the Microsoft Guide
`
`advises to “acquire additional licenses through an authorised Microsoft
`
`software reseller.” Jd. (quoted at Pet. 40). ServiceNow additionally cites the
`
`Microsoft Guide and Dr. Lavian’s testimony to demonstrate that comparison
`of software installations against available licenses “is commonly performed
`by a human being using pen and paper.” Pet. 39 (citing Ex. 1002 {J 32-33,
`
`67-68, Ex. 1005, 9). ServiceNow’s arguments are persuasive based on the
`
`current record.
`
`Regarding claim 1’s limitation of storing software deployment model
`
`information in a CMDBasconfiguration items, ServiceNow cites
`
`Introduction to ITIL to show that such storage in a CMDB“isitself an
`
`abstraction that does not even necessarily require a technical
`implementation,” with supporting testimony from Dr. Lavian. Jd. at 37
`(citing Ex. 1002 § 63, Ex. 1004, 8). Specifically, Introduction to ITIL states
`that “[i]Jn its most basic form, a CMDBcould consist ofpaperformsoraset
`
`of spreadsheets.” Ex. 1004, 8 (emphasis added). This same reasoning
`
`18
`
`
`
`CBM2015-00170
`Patent 8,646,093 B2
`
`applies equally to storage of“license certificate” information in a license
`
`database. See Ex. 1002 § 64-65. Again, ServiceNow’s arguments regarding
`
`the abstract nature of the claim 1 methodare persuasive based on the current
`
`record.
`Wealso are not persuaded,on this record, by BMC’s attemptto
`
`characterize the challenged claimsas being “necessarily rooted in computer
`
`technology in order to overcomea problem specifically arising in the realm
`
`of computer networks.” Prelim. Resp. 20. ServiceNow has shown,with
`
`supporting testimony and documentation, that claim 1 is directed to the
`
`abstract idea of ensuring compliance with a software license contract by
`
`gathering information about how a software product has been installed and
`
`comparing the productinstallations against the license contract, albeit in a
`“computer-implemented method.” Butreciting a computer implementation
`does not remove automatically claim 1 from the realm of abstract ideas:
`“(Ijf a patent’s recitation of a computer amounts to a mere instruction to |
`implement an abstract idea on a computer, that addition cannot impart patent
`
`eligibility.” Alice, 134 S. Ct. at 2358 (internal quotations andalterations
`
`omitted); see also Versata, 793 F.3d at 1335 (“Courts have examined claims
`
`that required the use of a computerandstill found that the underlying,
`
`patent-ineligible invention could be performedvia pen and paperor in a
`
`person’s mind.”). For these reasons, we find claim 1 to be directed to an
`
`abstract idea based on the present record. The same reasoningalso applies
`
`to claim 16, which additionally recites “generic computer components”in a
`system for performingthe abstract idea in claim 1 (e.g., “server computer,”
`“processor,” “configuration database,” “license database”). See Pet. 43-44;
`
`DDR, 773 F.3d at 1256 (“[A]fter Alice, there can remain no doubt:recitation
`
`
`
`CBM2015-00170
`Patent 8,646,093 B2
`
`of generic computerlimitations does not make an otherwiseineligible claim
`
`patent-eligible.”).
`Further, we are persuaded, based on the current record, that the
`dependentclaimsof the 093 patent likewise do notrecite any limitations
`
`that turn the abstract idea of claim 1 into something concrete. Claim 5,
`
`which dependsfrom claim 1, recites “the act of evaluating is performed on
`
`demand,” but specifying whenthe abstract idea of claim 1 must be
`
`implemented does not changethe analysis put forth above. See Pet. 41.
`
`Claim 10, which also depends from claim 1, recites the evaluation of license
`
`terms further comprises “indicating a suggested action for achieving
`
`compliance”in the event of non-compliance with the license contracts, and
`
`the Specification states the suggested action can include purchasing
`
`additional licenses. See id. at 41-42 (citing Ex. 1001, 10:65-11:3, 12:18—
`
`20). As ServiceNow points out, “[t]his is the type of action that can be
`
`performed manually by a humanbeing,as described in” the Microsoft
`Guide, whichstates that one should buy additional licenses in the event of
`non-compliance. Jd. at 42 (citing Ex. 1005, 9). Claims 11-13 all ultimately
`
`depend from claim 1 andrecite limitations directed to using “license types”
`
`in the “second model” of claim 1. ServiceNow showsthat these claims are
`
`directed to an abstract idea as well. See id. at 42-43 (citing Ex. 1002 {
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