DCT

1:17-cv-03127

BMC Software Inc v. Cherwell Software LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:17-cv-01074, E.D. Va., 09/22/2017
  • Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Virginia based on Defendant operating a datacenter in Ashburn, Virginia, and regularly conducting business in the state, including holding conferences for Virginia-based customers.
  • Core Dispute: Plaintiff alleges that Defendant’s Information Technology Service Management (ITSM) software platform infringes seven patents related to foundational technologies for managing enterprise IT resources, including database architecture, data federation, secure communications, and application customization.
  • Technical Context: The technology domain is enterprise-level IT Service Management (ITSM), a market focused on software platforms that allow large organizations to monitor, manage, track, and service their complex IT infrastructure.
  • Key Procedural History: The complaint alleges that Defendant had actual notice of the patents-in-suit no later than April 2017, when an initial complaint was filed. It also notes that two of the asserted patents, U.S. Patent Nos. 6,895,586 and 6,816,898, were unsuccessfully challenged in Inter Partes Review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB) in 2015.

Case Timeline

Date Event
2000-08-16 Priority Date for U.S. Patent No. 6,816,898
2000-08-30 Priority Date for U.S. Patent No. 6,895,586
2002-09-12 Priority Date for U.S. Patent No. 7,877,783
2004-11-09 Issue Date for U.S. Patent No. 6,816,898
2005-05-17 Issue Date for U.S. Patent No. 6,895,586
2005-12-21 Priority Date for U.S. Patent No. 9,239,857
2009-08-28 Priority Date for U.S. Patent No. 8,082,222
2010-03-26 Priority Date for U.S. Patent No. 9,363,252
2010-07-14 Priority Date for U.S. Patent No. 8,832,652
2011-01-25 Issue Date for U.S. Patent No. 7,877,783
2011-12-20 Issue Date for U.S. Patent No. 8,082,222
2014-09-09 Issue Date for U.S. Patent No. 8,832,652
2015-01-01 PTAB rejects IPR petition for ’586 Patent
2015-01-01 PTAB rejects IPR petition for ’898 Patent
2016-01-19 Issue Date for U.S. Patent No. 9,239,857
2016-06-07 Issue Date for U.S. Patent No. 9,363,252
2017-04-01 Defendant allegedly receives actual notice of patents-in-suit
2017-09-22 Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 6,895,586 - "Enterprise Management System and Method which includes a Common Enterprise-Wide Namespace and Prototype-Based Hierarchical Inheritance"

  • Patent Identification: U.S. Patent No. 6,895,586, "Enterprise Management System and Method which includes a Common Enterprise-Wide Namespace and Prototype-Based Hierarchical Inheritance," issued May 17, 2005 (Compl. ¶27).

The Invention Explained

  • Problem Addressed: The patent addresses the challenge of organizing and accessing data from numerous, geographically dispersed computer systems within a large enterprise network. Existing directory services like LDAP were described as lacking advanced features such as the inheritance of attributes from one data entry to another (ʼ586 Patent, col. 3:5-9).
  • The Patented Solution: The invention proposes a hierarchical, enterprise-wide "namespace" to logically organize objects representing IT resources. The core of the solution is "prototype-based hierarchical inheritance," a mechanism where an "instance" object automatically inherits characteristics, such as data values or child objects, from a designated "prototype" object. This allows for efficient data modeling, as a change to a single prototype can dynamically propagate to all associated instances (ʼ586 Patent, Abstract; col. 4:9-12).
  • Technical Importance: This object-oriented inheritance model provided a flexible and scalable method for managing the complex and constantly changing relationships between IT components in an enterprise (Compl. ¶28).

Key Claims at a Glance

  • Independent claim 1 is asserted in the complaint (Compl. ¶47).
  • Essential elements of claim 1 include:
    • A method for managing an enterprise comprising providing a hierarchical namespace.
    • Adding a plurality of objects to the namespace that relate to software and hardware.
    • Sharing the objects with computer systems of the enterprise.
    • Wherein at least one object is a "prototype" and at least one is an "instance" that dynamically inherits traits from the prototype.
    • Wherein the values of the inherited traits change dynamically.
  • The complaint reserves the right to assert other claims (Compl. ¶47, n.15).

U.S. Patent No. 8,082,222 - "CMDB Federation Method and Management System"

  • Patent Identification: U.S. Patent No. 8,082,222, "CMDB Federation Method and Management System," issued December 20, 2011 (Compl. ¶30).

The Invention Explained

  • Problem Addressed: Data relevant to IT management is often stored in multiple, disparate databases, referred to as Management Data Repositories (MDRs). The patent identifies a need for a solution to organize and "federate" this data to present it to a user in a single, integrated view, as if it were all stored in one central database (ʼ222 Patent, col. 1:41-49).
  • The Patented Solution: The invention provides a method for creating a "federated data class" within a central Configuration Management Database (CMDB). This class acts as a virtual representation of data stored in an external MDR. A user provides interface connection information for the external MDR and defines "join conditions" that link the external data to data already within the CMDB. This allows applications to query data from disparate sources through a single, unified interface (’222 Patent, Abstract; col. 2:54-61).
  • Technical Importance: This federation technology allows a central CMDB to act as an integration hub, providing a unified view across various IT systems without requiring complex and costly data migration projects (Compl. ¶31).

Key Claims at a Glance

  • Independent claim 1 is asserted in the complaint (Compl. ¶54).
  • Essential elements of claim 1 include:
    • A data federation method for a CMDB.
    • Receiving information from a CMDB client comprising: a selection of a federated data class, interface connection information for one or more MDRs, and a selection of one or more join conditions.
    • Sending a query to the MDRs based on the received information.
    • Receiving a query result set.
    • Providing the query result set to the CMDB client.
  • The complaint reserves the right to assert other claims (Compl. ¶54, n.24).

Multi-Patent Capsule: U.S. Patent No. 6,816,898

  • Patent Identification: U.S. Patent No. 6,816,898, "Interfacing External Metrics into a Performance Management System," issued November 9, 2004 (Compl. ¶32).
  • Technology Synopsis: This patent describes a performance management system with two key innovations. The first is a metadata-driven architecture for flexibly configuring data collection tools to meet specific enterprise monitoring needs. The second is a method for extending the system's discovery capabilities by allowing a user to provide a script-based program that defines and collects custom data types not included "out of the box" (Compl. ¶33).
  • Asserted Claims: Representative claims 1 and 6 are asserted (Compl. ¶¶ 62, 65).
  • Accused Features: The complaint alleges infringement by Cherwell’s "meta-data driven designed" architecture and by the FireScope DDM and Stratis products, which are allegedly "capable of being extended to collect your own custom metrics" using a script-based program (Compl. ¶¶ 62, 65).

Multi-Patent Capsule: U.S. Patent No. 7,877,783

  • Patent Identification: U.S. Patent No. 7,877,783, "System and Method for Secure Communications with a Remote Software Program," issued January 25, 2011 (Compl. ¶35).
  • Technology Synopsis: This patent addresses secure communication between a computer outside an enterprise firewall (e.g., in the cloud) and a computer inside the firewall. The invention teaches a method where the internal computer initiates a connection using a one-way protocol (like HTTP/HTTPS), and the external computer responds with configuration data over that same connection, thereby avoiding the need to open inbound firewall ports (Compl. ¶36).
  • Asserted Claims: Representative claim 1 is asserted (Compl. ¶¶ 71, 73).
  • Accused Features: The complaint accuses the communication architecture between an internal "Scanning/Scheduling Server" and an external "Cherwell SaaS server," as well as the architecture of the FireScope products where an internal "Edge device" initiates communication with cloud components (Compl. ¶¶ 71, 73).

Multi-Patent Capsule: U.S. Patent No. 9,239,857

  • Patent Identification: U.S. Patent No. 9,239,857, "System and Method for Building Business Service Model," issued January 19, 2016 (Compl. ¶37).
  • Technology Synopsis: The patent is directed to a system for modeling the relationships between IT resources and the business services they support. The system includes a database for storing resource information and a graphical user interface (GUI) application that allows a user to create and edit business service models, visually representing how underlying IT resources impact business services (Compl. ¶38).
  • Asserted Claims: Representative claim 1 is asserted (Compl. ¶80).
  • Accused Features: The complaint accuses Cherwell's products of providing "service model editors that accept queries from users and show impact relationships" between network assets. The "About Visualizations" feature, which provides a "graphical representation of related data," is specifically identified (Compl. ¶¶ 81-82).

Multi-Patent Capsule: U.S. Patent No. 8,832,652

  • Patent Identification: U.S. Patent No. 8,832,652, "Method for Customizing Software Applications," issued September 9, 2014 (Compl. ¶39).
  • Technology Synopsis: The patent describes a method for customizing a software application by "overlaying" objects onto the base objects of the application. This technique allows for modifications and extensions to be applied without altering the original base software, which simplifies the process of applying upgrades from the software vendor while preserving customizations (Compl. ¶40).
  • Asserted Claims: Representative claim 16 is asserted (Compl. ¶90).
  • Accused Features: The complaint alleges infringement by Cherwell's "mergeable application ('mApp')" technology, which allegedly allows definitions to be added through "merge or overwrite actions" and uses a system of "software application overlaid objects" that execute instead of base objects (Compl. ¶¶ 90-91).

Multi-Patent Capsule: U.S. Patent No. 9,363,252

  • Patent Identification: U.S. Patent No. 9,363,252, "Method for Customizing Software Applications," issued June 7, 2016 (Compl. ¶41).
  • Technology Synopsis: As a continuation of the ’652 patent, this patent adds further technology for customizing software using object overlays. The invention includes determining user authorization associated with an "overlay group," allowing the application to be configured to execute using a specific overlaid object based on the user's permissions (Compl. ¶¶ 42, 98).
  • Asserted Claims: Representative claim 17 is asserted (Compl. ¶97).
  • Accused Features: The complaint again accuses Cherwell's "mApp" technology, alleging it uses overlaid objects and further determines "a user authorization associated with the use of a first software application overlaid object based on a permission associated with a first overlay group" (Compl. ¶¶ 97-98).

III. The Accused Instrumentality

Product Identification

  • The complaint names Cherwell Service Management, Cherwell Service Management with Discovery and Inventory, FireScope Discovery and Dependency Mapping (“DDM”), and FireScope Stratis Enterprise Monitoring (“Stratis”), among others (Compl. ¶44).

Functionality and Market Context

  • The accused products constitute an ITSM platform used by enterprises to manage their IT infrastructure (Compl. ¶4). The complaint alleges these products provide core functionalities that are the subject of BMC’s patents, including a Configuration Management Database (CMDB) with hierarchical inheritance, data federation capabilities, metadata-driven discovery tools, secure mid-server communications, business service visualization, and mergeable application technology (Compl. ¶43). The complaint includes a chart from partner FireScope that explicitly maps its and Cherwell's products as replacements for specific BMC products, positioning them as direct competitors (Compl. p. 9). Plaintiff alleges Defendant markets these products as a "cost effective alternative" to BMC's offerings, leveraging BMC's patented technology without having incurred the associated research and development costs (Compl. ¶12).

IV. Analysis of Infringement Allegations

6,895,586 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a method for managing an enterprise...comprising: providing a hierarchical namespace; Cherwell’s CMDB provides a hierarchical namespace using objects that are instances of a defined class hierarchy schema. ¶47 col. 3:60-62
adding a plurality of objects to the namespace, wherein the objects relate to software and hardware of the one or more computer systems; Objects relating to software and hardware (e.g., "Config-Computer," "Config-Mobile Device") are added to Cherwell's CMDB. ¶48 col. 4:62-67
sharing the plurality of objects with a plurality of the one or more computer system... Cherwell's CMDB objects are shared with other computer systems via user interfaces and application programming interfaces such as REST and SOAP. ¶48 col. 4:1-8
wherein at least one of the objects is a prototype and at least one of the objects is an instance, wherein the instance dynamically inherits traits from the prototype; The objects in the CMDB allegedly exhibit dynamic inheritance, where changes to traits in a prototype object are immediately inherited by instance objects. ¶48 col. 4:9-12
and wherein the values of the traits inherited from the prototype change dynamically. This element is met by the allegation that changes to a prototype are "immediately inherited by instance objects." ¶48 col. 7:45-48

A screenshot from the Cherwell Object Manager is provided as evidence of a CMDB schema with parent and child objects (Compl. p. 17).

  • Identified Points of Contention:
    • Scope Questions: A central issue may be whether Cherwell's alleged use of a "class hierarchy schema" falls within the scope of the claim term "prototype-based hierarchical inheritance." The defense may argue that class-based inheritance is technically distinct from the prototype-based model described in the patent.
    • Technical Questions: What is the specific mechanism of inheritance in the accused CMDB? The complaint alleges changes are "immediately inherited," which maps to the "dynamically" limitation. The case will require evidence demonstrating that a change to a parent object in the Cherwell system automatically and without delay propagates to instance objects, as claimed.

8,082,222 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
receiving information from a CMDB client, the information comprising: a selection of a federated data class; interface connection information for one or more [MDRs]...; and a selection of one or more join conditions... A user of the "CSM Administrator" client selects a federated data class by identifying an external connection and a specific table or view to link to the CMDB via an "External Data Wizard." The user also defines join conditions via mapping. ¶¶55, 56 col. 2:54-61
sending a query to the one or more MDRs based on at least a portion of the received information; When an External Business Object is created, the user can define how the Management Data Repository (MDR) can be queried. ¶56 col. 3:1-5
receiving a query result set; and This functionality is an inherent part of linking external data into the CMDB, though not explicitly detailed in the complaint's factual allegations. ¶56 col. 3:6-8
providing at least a portion of the query result set to the CMDB client. The overall alleged function is to make external data appear integrated to the end user, which requires providing the results of the external query to the client. ¶55 col. 3:9-12

The complaint provides documentation describing how to manage external connections, which allegedly shows the user defining the data source, provider, and location for an external database (Compl. p. 20).

  • Identified Points of Contention:
    • Scope Questions: Does Cherwell's "external business object" created via the "External Data Wizard" constitute a "federated data class" as claimed? The analysis may turn on whether the accused feature is merely a link or if it functions as a virtual class that is integrated into the CMDB's data model.
    • Technical Questions: The complaint's allegations are less detailed on the dynamic "sending a query" and "receiving a query result set" steps. A key question for discovery will be to determine if the accused product performs a live query to the external MDR based on the defined join conditions each time the data is accessed, as contemplated by the patent, or if it performs a one-time import or a more limited form of data linking.

V. Key Claim Terms for Construction

For the ’586 Patent:

  • The Term: "prototype-based hierarchical inheritance"
  • Context and Importance: This term describes the core inventive concept of the ’586 Patent. The infringement dispute will likely center on whether Cherwell’s system, which the complaint describes as using a "class hierarchy schema," falls within the scope of this term. Practitioners may focus on this term because the distinction between prototype-based and class-based inheritance is a known concept in computer science.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The Abstract describes the invention as one where "an instance inherits traits from a prototype, such as attribute values and/or child objects," a high-level functional description that a plaintiff may argue covers any system achieving that result (ʼ586 Patent, Abstract).
    • Evidence for a Narrower Interpretation: The detailed description illustrates the concept with a specific structure where an instance object is explicitly linked to a prototype object (e.g., the dashed line in Fig. 7). A defendant may argue this specific implementation limits the claim scope to systems that do not rely on traditional class definitions (ʼ586 Patent, Fig. 7; col. 13:50-56).

For the ’222 Patent:

  • The Term: "federated data class"
  • Context and Importance: This is the central entity created and used by the claimed method. Whether Cherwell's "external business object" meets the definition of a "federated data class" is critical to the infringement analysis.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification states that one step is to "Define federated class(es) to model the remote data," suggesting a broad, functional definition (ʼ222 Patent, col. 8:35-37).
    • Evidence for a Narrower Interpretation: The Abstract and Summary state the goal is to make external data "appear as if they were native instances stored in the CMDB" and accessible via "already existing CMDB interfaces." A defendant could argue that a feature which merely links to external data without making it fully queryable through all native interfaces does not meet the claim limitations (ʼ222 Patent, Abstract; col. 2:51-53).

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement of infringement for all seven patents. The allegations are based on Defendant’s marketing materials, product documentation, user manuals, instructional videos, and customer success stories, which allegedly instruct and encourage customers to use the accused products in an infringing manner (Compl. ¶¶ 49, 57, 66, 75, 85, 92, 99).
  • Willful Infringement: The complaint alleges willfulness based on both pre- and post-suit knowledge. It alleges pre-suit knowledge due to Defendant’s hiring of key former BMC employees, including its CEO, and its status as a direct competitor allegedly copying BMC's functionality (Compl. ¶¶ 105-108). It alleges post-suit knowledge based on an initial complaint filed in April 2017, after which Defendant allegedly continued its infringing activities (Compl. ¶109).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A central issue will be one of technical equivalence: Across multiple patents, do Cherwell's specific implementations—such as its "class hierarchy schema," "external business objects," and "mApp" technology—operate in a manner that falls within the scope of BMC's patent claims, which use distinct terms like "prototype-based inheritance," "federated data class," and "object overlay"? The resolution will likely depend on detailed claim construction and expert testimony comparing the technical operation of the respective systems.
  • A key question of intent will permeate the case: Does the evidence of Cherwell's hiring of former BMC executives and its direct, "replacement" marketing strategy support a finding of willful infringement, or can Defendant demonstrate independent development? The answer could significantly impact potential damages.
  • An evidentiary question will be one of system functionality: The complaint accuses a platform combining Cherwell's software with products from its partner, FireScope. The case may require demonstrating precisely how these components work together to practice the claimed methods and establishing Cherwell's legal responsibility for any infringement that results from this combination.