PTAB

IPR2015-01555

ServiceNow Inc v. BMC Software Inc

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1. Case Identification

2. Patent Overview

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

3. Grounds for Unpatentability

Ground 1: Obviousness over Meyer, Best Practice, and Addy - Claims 1, 5, 10, and 16 are obvious over Meyer in view of Best Practice and Addy.

  • Prior Art Relied Upon: Meyer (Patent 6,810,389), Best Practice (an IT Infrastructure Library (ITIL) publication, 2003), and Addy (an ITIL textbook, 2007).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of references teaches all limitations of independent claims 1 and 16. Best Practice, an industry-standard guide, taught using a CMDB to store organized information about IT assets. This included creating a "first model" of deployed software and license contracts using distinct configuration items (CIs) for each—a CI for the software product and a CI for the license contract. Meyer disclosed a software licensing system that performs the core evaluation and enforcement functions. Meyer’s system generated a "license certificate" (the claimed "second model") from license contract data, stored it in a license database, and evaluated compliance by comparing software usage requests against the certificate's attributes (e.g., license count, expiration date). If non-compliance was detected, Meyer's system generated an "exception indication," such as a warning message or by terminating the application.
    • Motivation to Combine: A POSITA would combine these references to integrate a known license enforcement mechanism (Meyer) with an industry-standard IT asset management framework (Best Practice). Petitioner asserted Meyer's system was designed to be flexible, receiving license data from an "external file or other input source," making the well-known CMDB from Best Practice an obvious input source. Addy provided a further, express motivation by explaining that a central purpose of a CMDB is to serve as a federated, centralized repository that integrates with specialized tools (like Meyer's system) to provide a "holistic view" of IT assets, thereby improving management and interoperability. The combination simply applied the known benefits of a CMDB to Meyer's known licensing system.
    • Expectation of Success: A POSITA would have had a high expectation of success because the combination involved using a standard database structure (CMDB from Best Practice) as an information source for a conventional software licensing system (Meyer), which was a straightforward integration of known elements for their intended purposes.

Ground 2: Obviousness over Meyer, Best Practice, Addy, and Bruchlos - Claims 11-13 are obvious over Meyer in view of Best Practice, Addy, and in further view of Bruchlos.

  • Prior Art Relied Upon: Meyer (Patent 6,810,389), Best Practice (ITIL publication, 2003), Addy (ITIL textbook, 2007), and Bruchlos (Application # 2005/0071276).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds upon the combination in Ground 1, adding Bruchlos to teach the additional limitations of dependent claims 11-13. These claims add functionality related to license types, specifically: receiving a selection of a license type (claim 11), providing a plurality of predetermined license types (claim 12), and allowing a user to define a custom license type (claim 13). Petitioner argued that Bruchlos, which is in the analogous field of software license management, explicitly taught offering a "plurality of different license types" for selection to best meet customer needs. Bruchlos also disclosed that existing "atomic" license types could be combined to create new, custom license models.
    • Motivation to Combine (for §103 grounds): A POSITA would be motivated to incorporate the teachings of Bruchlos into the base system of Ground 1 to enhance its commercial flexibility and utility. Providing multiple license types and the ability to customize them was a known method for adapting a software product to diverse customer needs and billing models. Adding this known feature to the combined Meyer/Best Practice system was presented as a predictable and desirable improvement.
    • Expectation of Success (for §103 grounds): Success was expected because implementing selectable and customizable license types was a well-understood concept in software licensing at the time, and Bruchlos provided a clear roadmap for doing so.

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 specification's statement that a license certificate "indicates the right to deploy software" and was broad enough to encompass the "license record" disclosed in the Meyer reference.
  • "model" and "modeling": Petitioner proposed that "model" means "an organized collection of information about an object" and "modeling" means "creating a model." This construction was argued to be consistent with the patent's examples, which simply describe storing information in database tables (CIs), and avoids any narrower requirement of a mathematical or graphical representation.
  • "exception indication": Petitioner proposed the construction "indication of a condition or warning." This broad construction was based on specification language stating that an exception could be an "error message or report" but could also be a "warning" triggered even when a system is technically still in compliance (e.g., when approaching a license limit).

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1, 5, 10-13, and 16 of the ’093 patent as unpatentable.