PTAB

IPR2015-01176

ServiceNow Inc v. BMC Software Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: System for Managing Computer Resources Across a Distributed Computing Environment
  • Brief Description: The ’594 patent describes a method for centrally monitoring and managing resources, such as hardware components and software applications, within a distributed computer network. The method involves reading "discovery information" from a storage device, which identifies instructions that are then interpreted to collect data and determine whether a specific resource is present on a computer system.

3. Grounds for Unpatentability

Ground 1: Obviousness over Jessen, Coffin, and Inside Macintosh - Claim 1 is obvious over Jessen in view of Coffin and Inside Macintosh under 35 U.S.C. §103.

  • Prior Art Relied Upon: Jessen (Patent 5,410,681), Coffin (a 1990 textbook titled UNIX System V, Release 4: The Complete Reference), and Inside Macintosh (a 1992 Apple Computer, Inc. technical manual).
  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that the primary reference, Jessen, discloses nearly all limitations of claim 1. Jessen teaches a system where a "host" computer remotely tests a "target" computer by interpreting a "script program" written in an interpretable, high-level language. This script contains instructions that cause the host to collect state information from the target (e.g., RAM size, running applications), thereby determining the presence of resources. Petitioner contended that Jessen's command-line string, used to invoke the script, constitutes the claimed "discovery information." The script file itself contains the "instructions," which are stored as a text file in their "uninterpreted form."

      Petitioner asserted that the secondary references render the remaining limitations obvious. Coffin, a UNIX manual, was cited for the common practice of storing frequently used command-line strings in a file to be read and executed, rather than manually typed. Inside Macintosh, an official Apple technical manual, was cited to address the limitation of reading information from a storage device "coupled to" the target computer. Because Jessen's preferred embodiment uses Apple Macintosh computers, Petitioner argued it would have been obvious to use the standard AppleShare technology described in Inside Macintosh, which allows a host computer to seamlessly access files stored on a networked target computer as if they were local.

    • Motivation to Combine: Petitioner asserted that a person of ordinary skill in the art (POSITA) would combine Jessen with Coffin to improve efficiency and reduce errors. Coffin explicitly teaches storing command strings in files for "a frequently used sequence that you execute regularly," directly aligning with Jessen's purpose of "testing a computer system repetitively." This combination would avoid the need to manually re-type Jessen's potentially long and complex command strings.

      Furthermore, a POSITA implementing Jessen's Macintosh-based system would have been motivated to consult Apple's own documentation, Inside Macintosh, to understand its networking capabilities. This would lead to the use of AppleShare for remote file access, providing a simple and known method for the host to read script and command files from a storage device coupled to the target. This arrangement would also improve system management by allowing test configurations to be stored locally with the specific machine they are designed to test.

    • Expectation of Success: Petitioner argued that a POSITA would have had a high expectation of success. The proposed combination involved applying well-known and routine computer science principles: storing a command string in a file for execution (as taught by Coffin) and accessing that file over a standard network using the native file-sharing capabilities of the operating system (as taught by Inside Macintosh). These were predictable and conventional tasks, not experimental endeavors.

4. Key Claim Construction Positions

  • "resource": Petitioner argued this term should be construed according to its express definition in the ’594 patent's specification, which states it is "intended in its broad sense to include, without limitation, hardware such as computers, printers, memory or other network devices, applications such as database management systems, and logical devices such as logical disk drives or filing systems."
  • "discovery information": Petitioner contended this term should be construed as "information that tells the system how to locate the script program which, in turn, is used to determine the presence of a resource." This construction was based on the claim language itself, the specification's description, and statements made during prosecution.
  • "uninterpreted form": Based on the specification’s only illustrative use of the term—"stored...in their uninterpreted form (preferably in the form of an ASCII text file)"—Petitioner argued it means "in the form of a text file containing high level programming language instructions."

5. Relief Requested

  • Petitioner requests that the Board institute an inter partes review (IPR) of claim 1 of the ’594 patent and find the claim unpatentable as obvious under §103.