PTAB

IPR2018-00979

Cherwell Software LLC v. BMC Software Inc

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: System and Method for Customization of Computer Software Applications
  • Brief Description: The ’252 patent relates to a system and method for customizing software applications using "overlaid objects" organized into "overlay groups." The technology is designed to preserve user-specific customizations when the underlying software application is updated and to allow different customizations for different users or groups based on permissions.

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, discloses every element of the challenged claims and addresses the exact same problems as the ’252 patent: preserving software customizations through upgrades and providing different customizations to different users. Petitioner asserted a direct correspondence between the terminology and functionality of Heinke and the ’252 patent. Heinke’s "base metadata" and "custom metadata" were argued to be the same as the ’252 patent’s "base objects" and "overlaid objects." Heinke’s "custom metadata" is similarly overlaid on "base metadata" to add to, modify, or negate base definitions.
    • Furthermore, Petitioner contended that Heinke’s concept of "metadata variants"—sets of custom metadata—is functionally identical to the ’252 patent’s "overlay groups." Heinke teaches that these variants can be associated with different "execution contexts," such as user identity, security level, or organizational division, to generate a customized application at runtime. This was presented as a direct parallel to the ’252 patent's method of using permissions and user authorizations to determine which overlay group to apply. The petition detailed how Heinke’s system of maintaining custom metadata separately from base metadata inherently solves the problem of preserving customizations during software upgrades, just as claimed in the ’252 patent. Arguments for system claims (e.g., 11, 17) followed the same logic, mapping Heinke’s disclosed networked computer system, datastore, and processor to the claimed system elements.
    • Motivation to Combine (Rationale for Obviousness): As a single-reference obviousness challenge, the petition argued that Heinke itself provides the blueprint for the claimed invention. A person of ordinary skill in the art (POSITA), facing the well-known problem of managing software customizations, would have recognized that Heinke's described system directly addressed this problem. Therefore, a POSITA would have been motivated to apply the teachings of Heinke to create the system and methods claimed in the ’252 patent, as Heinke discloses all the necessary components and functionalities for their intended purpose.
    • Expectation of Success: Petitioner asserted that a POSITA would have had a reasonable expectation of success in implementing the claimed invention based on Heinke. Heinke does not present a theoretical concept but describes a complete, coherent, and functional system for generating and executing customized software variants, providing a clear path for implementation with predictable results.

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 construction was argued to be consistent with the specification and necessary to encompass the "metadata" disclosed in Heinke, which functions as a definition or component of the software.
  • "overlaid object": Petitioner proposed construing "overlaid object" as "an alternate version of an existing object that is maintained in parallel with, and separately from, the existing object." This construction was central to mapping Heinke’s "custom metadata," which is described as being separate from and altering the "base metadata," to the claimed invention.
  • "dictionary": Petitioner proposed construing "dictionary" as "a searchable location in a computer or server memory where object definitions may be stored." This broad construction was used to argue that Heinke’s disclosed "Data Management System," which stores base and custom metadata, meets the "dictionary" limitation of the claims.

5. Relief Requested

  • Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-20 of Patent 9,363,252 as unpatentable under 35 U.S.C. §103.