Takeaway: A petitioner’s obviousness argument should be consistent with its claim construction proposal.

In its Decision, the Board declined to institute inter partes review as to any of the challenged claims (1, 4, and 7) of the ’586 Patent. The ’586 Patent is directed to a method for managing one or more networked computer systems (an “enterprise”).

The Board began with claim construction, stating that terms are given their broadest reasonable interpretation in light of the patent specification. The only term which required construction was “object,” which is defined in the ’586 Patent. Therefore, the Board agreed with the parties that the term “object” should be construed as defined in the ’586 Patent.

The Board then turned to the asserted ground of unpatentability––obviousness of claims 1, 4, and 7 over Glasser and Davis. Petitioner argued that Glasser discloses the “objects” of the ’586 Patent. Patent Owner argued that Glasser fails to disclose ACLs that are self-contained within folders or files, and, therefore, does not disclose an “object.” The Board agreed with Patent Owner that Petitioner evidence does not establish that the ACLs in Glasser’s system are stored in a folder or file within a hierarchical namespace. The Board found that the evidence shows that Glasser stores the ACLs in a registry separate from the hierarchically organized arrangement of folders and files that Petitioner identified as the asserted “objects” defined in the ’586 Patent.

ServiceNow, Inc. v. BMC Software, Inc., IPR2015-01329

Paper 10: Decision Denying Institution of Inter Partes Review

Dated: December 18, 2015

Patent 6,895,586 B1

Before: Justin T. Arbes, Brian P. Murphy, and John A. Hudalla

Written by: Murphy

Related Proceeding: BMS Software, Inc. v. ServiceNow, Inc., No. 14-cv-00903 JRG (E.D. Tex.)