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ServiceNow, Inc. v. BMC Software, Inc.: Decision Denying Institution of Inter Partes Review

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.)

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The Intellectual Property Litigation Practice at Drinker Biddle & Reath LLP recognizes that a successful IP enforcement strategy can make an important contribution to a company's bottom line. Our attorneys help a wide variety of clients protect what is theirs and police the marketplace against infringements and unfair competitive practices.

Our attorneys have litigated infringement suits across a broad range of industries and technologies, including pharmaceuticals, medical devices, dental methods, computer software, automobile designs,...