PTAB

IPR2018-00980

Cherwell Software LLC v. BMC Software Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Customizing Software Applications Using Object Overlays
  • Brief Description: The ’252 patent relates to systems and methods for customizing software applications by using "overlay groups" comprised of "overlaid objects." This technique allows alternative or supplemental definitions to be applied at runtime based on user permissions, preserving the original application code and allowing customizations to persist through software updates.

3. Grounds for Unpatentability

Ground 1: Obviousness over Leung - 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 in Leung or would have been obvious from its teachings. Leung describes a system for customizing software applications, specifically for generating online forms ("formsets"), without altering the underlying base code. Petitioner asserted that Leung’s "master formset," comprised of discrete elements interchangeably called "objects" or "components" (e.g., XML definitions for data fields, workflow), corresponds to the ’252 patent's base application objects. Customization in Leung is achieved by applying overlays that can add, modify, or remove these base elements.

    • Petitioner mapped Leung’s two-tiered overlay system directly to the concepts in the challenged claims. A first "static overlay" provides role-based customizations, analogous to a first overlay group in the ’252 patent. A second "dynamic overlay" provides further user-specific or group-specific customizations on top of the role-based version, analogous to a second overlay group. Petitioner contended that Leung explicitly teaches associating these overlays with user roles and permissions ("user authorisations" and "formset access criteria") to control which customized formset is generated and rendered for a specific user upon request, which directly corresponds to the permission-based execution recited in independent claims 1 and 11. Leung's system is also described as operating in both interpreted (Java applet) and compiled (Windows/Linux OS) environments.

    • Motivation to Combine (for §103 grounds): As a single-reference obviousness challenge, Petitioner argued that Leung itself provides all necessary elements and motivations. Petitioner contended that to the extent any claimed element was not explicitly disclosed in Leung, it would have been an obvious modification to a person of ordinary skill in the art (POSITA) to implement Leung's disclosed overlay system. For example, while Leung may not have used the specific term "dictionary," a POSITA implementing Leung’s system for storing and retrieving object definitions would have found it obvious to use a standard dictionary data structure, a well-known tool in object-oriented programming for such purposes.

    • Expectation of Success (for §103 grounds): Petitioner argued that a POSITA would have had a reasonable expectation of success because Leung teaches a complete and functional system for overlay-based software customization. Implementing the claimed features using Leung's teachings involved applying known principles to achieve 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 and was critical for mapping Leung’s disclosure of modifying formset "components" and "XML definitions" to the claimed "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 central to Petitioner's argument that Leung’s system, which preserves the original "master formset" while applying separate overlay files, meets this claim limitation.
  • "dictionary": Petitioner proposed the construction "a searchable location in a computer or server memory where object definitions may be stored." Petitioner argued this was met by Leung's disclosure of storing various formset versions on a server. It further argued that even if not explicitly disclosed, using a formal dictionary data structure for this purpose was a common and obvious design choice for a POSITA at the time.

5. Key Technical Contentions (Beyond Claim Construction)

  • Generalization of a Specific System: A core technical contention was that Leung's system for customizing "formsets" is a specific embodiment of the broader, more generalized software customization system claimed in the ’252 patent. Petitioner argued that a POSITA would have readily understood that the principles of using permission-based overlays taught in Leung for forms were directly applicable to customizing any software application components, rendering the broader claims of the ’252 patent obvious.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-20 of the ’252 patent as unpatentable under 35 U.S.C. §103.