PTAB

CBM2015-00170

ServiceNow Inc v. BMC Software Inc

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Petition
petition Intelligence

1. Case Identification

2. Patent Overview

  • Title: Method and System for Configuration Management Database Software License Compliance
  • Brief Description: The ’093 patent discloses a computer-implemented method and system for monitoring and verifying software license compliance. The system uses a configuration management database (CMDB) to store models of software deployment and a separate license database to store models of software license contracts, then compares the two to identify and report non-compliance.

3. Grounds for Unpatentability

Ground 1: Claims 1, 5, 10-13, and 16 are unpatentable under 35 U.S.C. §101.

  • Supporting Documents Relied Upon: Best Practice for Software Asset Management (ITIL, 2003), Introduction to ITIL (ITIL, 2005), and A Guide to Software Asset Management (Microsoft Corp., 2004).
  • Core Argument: Petitioner argued that the challenged claims were unpatentable under the two-step framework from Alice Corp. v. CLS Bank International.
    • Step 1 (Directed to an Abstract Idea): Petitioner contended the claims were directed to the abstract idea of managing software license compliance. This fundamental business practice was described as a three-part process: (1) gathering information on installed software, (2) gathering information on the corresponding licenses, and (3) comparing the two to check for compliance. Petitioner asserted that this entire process was a longstanding, conventional activity that could be performed manually using pen and paper. To support this, Petitioner cited Microsoft's A Guide to Software Asset Management, which explicitly described a manual inventory and comparison process using tables to track installations versus licenses owned. Petitioner mapped the limitations of independent claim 1 to these abstract steps: "modeling" corresponded to gathering data, storing models in databases corresponded to recording the data, and "evaluating" corresponded to the final comparison.
    • Step 2 (Lacks Inventive Concept): Petitioner argued the claims lacked an inventive concept sufficient to transform the abstract idea into a patent-eligible application. The claims merely recited implementing the abstract compliance check using generic, conventional computer components. The use of a "configuration management database" (CMDB) and "configuration items" (CIs) was not inventive, as the patent’s own specification and prior art publications like ITIL showed these were well-known tools for asset management before the patent's filing date. Petitioner highlighted that the ’093 patent specification disclaimed the underlying techniques for discovering and storing information in the CMDB as being "outside the scope of the present invention." Furthermore, the use of a "license database," a "processor," and a "program store" were all implementations on generic computer hardware that added no meaningful limitations beyond the abstract idea itself. Dependent claims 5 and 10-13 were argued to add only trivial functional details—such as performing the evaluation "on demand" or suggesting an action (e.g., "buy more licenses")—that did not alter the abstract nature of the underlying process. Similarly, system claim 16 merely recited a generic server computer programmed to perform the abstract method of claim 1.

4. Key Claim Construction Positions

  • "license certificate": Petitioner proposed the construction "information relating to the right to deploy software." This construction was based on the patent's specification, which states a license certificate "indicates the right to deploy software." By defining the term as pure information, Petitioner supported its argument that the claims were directed to an abstract concept.
  • "model" and "modeling": Petitioner proposed construing "model" as "an organized collection of information about an object" and "modeling" as "creating a model." These constructions were intended to frame the core claimed steps as abstract processes of organizing information, rather than a specific technical implementation, thereby reinforcing the §101 challenge.

5. Arguments Regarding CBM Eligibility

  • Petitioner presented extensive arguments that the ’093 patent qualified for Covered Business Method (CBM) review and was not exempt as a "technological invention."
  • Covered Business Method Prong: Petitioner argued the patent was a CBM patent because its claims were directed at activities incidental and complementary to a financial activity. Specifically, the claimed method of monitoring license compliance was used to direct an organization's financial decisions regarding software purchasing. The specification and dependent claim 10 explicitly described that a non-compliance finding could trigger a "suggested action" to purchase additional licenses, directly linking the method to financial management.
  • Technological Invention Prong: Petitioner contended the patent was not a "technological invention" because the claims, taken as a whole, did not recite a technological feature that was novel and unobvious. Instead, the claims recited the use of well-known prior art technology (e.g., CMDBs, generic databases, processors) to accomplish the abstract process of license compliance. Petitioner asserted that the claims were drafted in largely functional language and did not solve a technical problem with a technical solution, making the patent eligible for CBM review.

6. Relief Requested

  • Petitioner requested that the Board institute a CBM review and find claims 1, 5, 10-13, and 16 of the ’093 patent unpatentable under 35 U.S.C. §101.