PTAB

IPR2018-00978

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 without altering the base code. The invention uses "overlay groups" comprised of "overlaid objects" to store alternative or supplemental definitions that are applied at runtime based on user permissions, preserving customizations when the underlying application 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 the challenged claims was disclosed by Leung, which teaches a system for customizing a software application that generates user forms ("formsets"). Leung discloses a "master formset" containing base objects (generic definitions) and the use of overlays to customize these objects without changing the underlying base code. Petitioner asserted that Leung’s system of applying a role-based "static overlay" and a more granular user-based "dynamic overlay" directly corresponds to the ’652 patent’s concept of layered, permission-based overlay groups. Leung further disclosed that the customization process occurs at runtime, initiated by a user request, which results in the execution of the appropriate overlay objects instead of the base objects, depending on the user's role or category. The petition contended that Leung’s disclosure of operating in both interpreted (Java applet) and compiled (Windows/Unix) environments meets the limitations of claim 1.
    • Motivation to Combine: As a single-reference ground, the petition asserted that Leung itself provides all necessary elements. To the extent any minor differences existed, Petitioner argued a person of ordinary skill in the art (POSITA) would have found it obvious to apply Leung’s specific method for customizing formsets to the customization of general software applications. This was presented as a predictable application of a known technique (overlaying) to a known problem (preserving software customizations). The petition also noted that to the extent a "dictionary" was not expressly disclosed, it was well within the common knowledge of a POSITA to use a dictionary data structure to store and associate object definitions as described in Leung.
    • Expectation of Success: Petitioner contended that a POSITA would have had a reasonable expectation of success in applying Leung’s teachings to achieve the claimed invention. The use of overlays was a known software development technique, and its application as taught by Leung was straightforward, involving 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 broad construction was argued to be supported by the specification’s description of overlaying "any construct" or "some component" of an application.
  • "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 was based on specification language describing overlays as creating changes that are "separate from but related to the original definition" and making customizations "in a parallel space."
  • "dictionary": Petitioner proposed the construction "a searchable location in a computer or server memory where object definitions may be stored." This was derived from the specification’s disclosure that a "dictionary of overlaid objects and application objects may be stored in a data store" and from claims that refer to querying the dictionary.

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.