ServiceNow Inc v. BMC Software Inc

1. Case Identification

• Case #: IPR2015-01601
• Patent #: 6,816,898
• Filed: July 17, 2015
• Petitioner(s): ServiceNow, Inc.
• Patent Owner(s): BMC Software, Inc.
• Challenged Claims: 1-12

2. Patent Overview

• Title: Interfacing External Metrics Into a Performance Management System
• Brief Description: The ’898 patent describes a method for managing computer networks by collecting performance data that is associated with accompanying metadata. The metadata defines the collected data and indicates operations to be performed on it, and the system can be extended using script-based programs.

3. Grounds for Unpatentability

Ground 1: Obviousness over Miller - Claims 1-7 and 9-12 are obvious over Miller

• Prior Art Relied Upon: Miller (a 1993 USENIX Conference paper describing the "satool" system).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Miller’s “satool” system, a tool for monitoring computers on a network, discloses every limitation of the challenged claims. Independent claim 1 recites collecting performance data with accompanying metadata. Petitioner mapped this to Miller’s example of using a "traceroute-helper" script to collect data on network gateway status (the performance data). The accompanying metadata is disclosed as MIB objects that define the script’s output (e.g., name, data type) and GUI configuration strings (e.g., “gateway_ok 0 X”) that define operations, such as displaying the data as text and triggering an alarm if the value is "0". The claim limitation of "generating output data" was mapped to Miller's GUI, which displays the performance data according to these metadata instructions.
  • Prior Art Mapping (Cont.): Independent claim 6 recites receiving a script-based program and integrating it as a "service monitor" to periodically collect data. Petitioner argued Miller discloses this by teaching that a user can write a "helper script" (the script-based program) and integrate it into the satool system to monitor network components. This integrated script functions as a "service monitor" by monitoring a device (the network gateway). Miller’s system then periodically polls agents to run these scripts and collect data, meeting the final limitations of claim 6. Dependent claims were argued to be obvious as they recite additional conventional features also disclosed in Miller, such as generating alarms based on thresholds, creating graphs and reports, and collecting "business-oriented" data (as network downtime has inherent business impact).
  • Motivation to Combine (for §103 grounds): As a single-reference ground, the argument was that Miller itself teaches all elements, and a person of ordinary skill in the art (POSITA) would have found it obvious to use the disclosed components of the satool system in the claimed manner.

Ground 2: Obviousness over Miller in view of Kernighan and O'Reilly - Claim 8 is obvious over Miller in view of Kernighan and O'Reilly

• Prior Art Relied Upon: Miller (a 1993 USENIX Conference paper), Kernighan (a 1988 textbook on the C programming language), and O’Reilly (a 1999 textbook on the Windows 98 operating system).
• Core Argument for this Ground:
  • Prior Art Mapping: Claim 8, which depends from claim 6, adds the limitation of receiving user input that specifies the "names, types and units" of input and output parameters for the script-based program. Petitioner asserted that while Miller teaches that a user writes a "helper script," it does not explicitly detail the process of defining these specific parameter attributes. This detail, however, represents basic, fundamental programming knowledge. Kernighan was cited for its teachings on defining input parameters (e.g., command-line arguments) with names and data types in the C language, which Miller’s system used. O’Reilly was cited for its description of the "tracert" program (a version of the "traceroute" program used in Miller's script), which shows input parameters having associated units (e.g., a timeout value specified in milliseconds).
  • Motivation to Combine (for §103 grounds): A POSITA extending Miller's system by writing a helper script would be motivated to use standard programming techniques to make the script configurable and robust. To implement this, the POSITA would naturally turn to foundational knowledge, as detailed in well-known resources like Kernighan and O'Reilly, to define input and output parameters with specific names, types, and units. This would have been a simple application of conventional programming principles to the known satool system to achieve a predictable result.
  • Expectation of Success: A POSITA would have had a very high expectation of success in applying such fundamental programming concepts to the helper scripts in Miller's system, as it involved no undue experimentation and was a routine part of software development.

4. Key Claim Construction Positions

• "meta data": Petitioner proposed the construction "data about other data," consistent with its ordinary meaning at the time, as evidenced by a 1997 computer dictionary. This broad construction allowed Petitioner to argue that various pieces of information in Miller—such as MIB object definitions, source code formatting strings, and GUI configuration variables—all qualified as the claimed "meta data."
• "accompanying": Petitioner argued for the construction "associated," asserting that the specification does not require the metadata and performance data to be physically transmitted together. This construction was crucial for arguing that metadata already present in Miller’s system (like a GUI configuration file) could be "associated" with later-collected performance data.
• "service monitor": Petitioner proposed the construction "a program for monitoring a device, application or server in a network." This allowed the "helper scripts" described in Miller, which monitor network components like gateways, to be characterized as the claimed "service monitor."
• "performance management data": Petitioner proposed the construction "information regarding the operation or performance of the network environment." This broad interpretation allowed data about the operational status of a single component, like the network gateway in Miller’s example, to qualify as performance data for the entire network environment.

5. Relief Requested

• Petitioner requests institution of inter partes review and cancellation of claims 1-12 of the ’898 patent as unpatentable.