PTAB

IPR2018-00977

Cherwell Software LLC v. BMC Software Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method for Customizing Software Applications
  • Brief Description: The ’652 patent discloses methods and systems for customizing software applications by using "overlaid objects" that are stored separately from the application's "base objects." This overlay architecture allows customizations to be applied at runtime based on user permissions and to persist through software upgrades without being overwritten or requiring recoding.

3. Grounds for Unpatentability

Ground 1: Obviousness over Heinke - Claims 1-20 are obvious over Heinke

  • Prior Art Relied Upon: Heinke (Patent 7,721,259).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Heinke, which was not considered during prosecution, identifies and solves the exact same problems as the ’652 patent using a nearly identical technical approach. Heinke teaches a system for customizing software that allows modifications to persist after upgrades and enables different customizations for different users. Heinke discloses "Base Metadata" and "Custom Metadata," which Petitioner asserted are analogous to the ’652 patent's "base objects" and "overlaid objects," respectively. Heinke’s "Custom Metadata" is overlaid on "Base Metadata" to add, modify, or negate base definitions at runtime. These customizations are grouped into "metadata variants" (equivalent to "overlay groups") that are associated with specific users or contexts (e.g., location, business unit). Upon a user request, Heinke’s system evaluates the "execution context" to determine which "metadata variant" to apply, causing the "Custom Metadata" definitions to prevail over the "Base Metadata" where they conflict. This process maps directly to the limitations of independent claims 1, 11, and 16, which recite determining a base object has a corresponding overlaid object and configuring the application to execute the overlaid object instead of the base object.
    • Motivation to Combine (for §103 grounds): As this is a single-reference obviousness challenge, the argument was not one of combination. Instead, Petitioner asserted that Heinke discloses every element of the challenged claims. To the extent any minor element was not explicitly disclosed, a person of ordinary skill in the art (POSITA) would have found it obvious to implement based on Heinke's detailed teachings for creating a configurable and customizable software system. The motivation was to apply the known principles for software customization comprehensively taught by Heinke to achieve the predictable results described therein.
    • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success in implementing the claimed invention based on Heinke. Heinke describes a complete, functional system for managing software customizations via metadata overlays, providing a clear blueprint that would lead to the claimed methods and systems with predictable results.

4. Key Claim Construction Positions

  • "object": Petitioner proposed the construction "a definition, construct, or component of a software application, written or recorded in software code." This construction was argued to be supported by the specification's description of overlaying any "construct" or "component" of an application and was central to mapping the patent's "object" terminology to Heinke's disclosure of "metadata" and "definition objects."
  • "overlaid object": Petitioner proposed the construction "an alternate version of an existing object that is maintained in parallel with, and separately from, the existing object." This construction was based on the patent’s emphasis on preserving the original definition while applying a separate, parallel, and alternate definition, which aligns with Heinke’s teachings of maintaining "Custom Metadata" separate from "Base Metadata."
  • "dictionary": Petitioner proposed the construction "a searchable location in a computer or server memory where object definitions may be stored." This construction was argued as necessary to map the claim term to Heinke’s "Data Management System," which stores various types of metadata (base and custom) in a database and is queried to retrieve the appropriate definitions for runtime execution.

5. Relief Requested

  • Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-20 of the ’652 patent as unpatentable under 35 U.S.C. §103.