PTAB

IPR2018-00978

Cherwell Software, LLC v. BMC Software, Inc.

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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 without altering the base code. The invention uses "overlay groups" composed of "overlaid objects" to store alternative or supplemental definitions that are applied at runtime based on user permissions, preserving customizations when the underlying software is updated.

3. Grounds for Unpatentability

Ground 1: Claims 1-20 are obvious over Leung

  • Prior Art Relied Upon: Leung (Patent 7,734,999)
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that every element of claims 1-20 is disclosed by Leung, or would have been obvious in light of its teachings. Leung describes a system for customizing software applications, specifically for generating user "formsets" (e.g., online forms), using "overlays" to modify a "master formset" without changing the base code. Petitioner asserted that Leung’s "master formset," comprising discrete elements like data fields and workflow definitions, is analogous to the ’652 patent’s "base objects." Similarly, Leung’s "static overlays" (for role-based customization) and "dynamic overlays" (for user-specific customization) correspond directly to the ’652 patent’s "overlaid objects." The petition mapped how Leung discloses associating these overlays with the master formset and configuring the system to execute the customized version based on user roles and permissions, satisfying the core limitations of independent claims 1 and 11. For dependent claims, Petitioner argued Leung teaches layered customizations (static then dynamic overlays), user-specific permissions, and storing object definitions in a server datastore, anticipating the claimed features.
    • Motivation to Combine: As a single-reference obviousness challenge, the motivation was presented as inherent to Leung’s own disclosure. Petitioner contended that a person of ordinary skill in the art (POSITA), upon reading Leung's description of a system for customizing applications via overlays, would have found it obvious to apply all the disclosed features as claimed in the ’652 patent. For elements not explicitly named but functionally present, such as a "dictionary," Petitioner argued a POSITA would be motivated to use standard, well-known programming constructs (like an associative array or map data structure) to implement Leung’s system for storing and retrieving object definitions, as it is a conventional solution to a known problem.
    • Expectation of Success: Petitioner asserted that a POSITA would have had a high expectation of success. The combination of Leung's teachings with common programming knowledge involved applying known techniques (e.g., overlaying, role-based access, dictionary data structures) in their conventional manner to achieve predictable results in software customization.
    • Key Aspects: The core of the challenge rested on the direct analogy between Leung's "formset/overlay" architecture for customizing forms and the ’652 patent's more general "object/overlay" system. The argument heavily relied on the expert declaration of Dr. Weissman to establish that a POSITA would view Leung's "formsets," "components," and "overlays" as functionally equivalent to the claimed "objects" and "overlaid objects."

4. Key Claim Construction Positions

  • "object": Petitioner proposed construing "object" as "a definition, construct, or component of a software application, written or recorded in software code." This broad construction was argued to be supported by the specification's use of terms like "construct" and "component" and was critical for mapping the "formset components" of Leung to the claimed "objects."
  • "overlaid object": Petitioner proposed this term means "an alternate version of an existing object that is maintained in parallel with, and separately from, the existing object." This construction emphasized the "separate" and "parallel" nature described in the ’652 patent's background, which aligned with Leung’s disclosure of applying overlays to a distinct master formset.
  • "dictionary": Petitioner proposed construing "dictionary" as "a searchable location in a computer or server memory where object definitions may be stored." Petitioner argued that although Leung does not use the word "dictionary," its disclosure of storing formset versions and definitions in a server memory that is queried (searched) to build the final application view inherently teaches this limitation. This construction was supported by arguing it reflects the common understanding of dictionary-like data structures in programming.

5. Relief Requested

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