Case 1:17-cv WJM Document 1 Filed 06/08/17 USDC Colorado Page 1 of 10 IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLORADO

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1 Case 1:17-cv WJM Document 1 Filed 06/08/17 USDC Colorado Page 1 of 10 Civil Action No. CHERWELL SOFTWARE, LLC, v. Plaintiff, BMC SOFTWARE, INC., Defendant. IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLORADO COMPLAINT FOR DECLARATORY RELIEF WITH JURY DEMAND Plaintiff Cherwell Software, LLC hereby alleges for its Complaint against Defendant BMC Software, Inc. as follows: THE PARTIES 1. Plaintiff Cherwell Software, LLC ( Cherwell ) is a limited liability company organized under the laws of Delaware, with its headquarters and principal place of business located at Federal Drive, Suite 100, Colorado Springs, Colorado On information and belief, Defendant BMC Software, Inc. ( BMC ) is incorporated in Delaware with its headquarters located at 2103 City West Boulevard, Houston, Texas JURISDICTION AND VENUE 3. This Court has subject-matter jurisdiction over this action pursuant to 28 U.S.C and 1338(a) because Cherwell s claims arise under the patent laws of the United States, 1

2 Case 1:17-cv WJM Document 1 Filed 06/08/17 USDC Colorado Page 2 of U.S.C. 1, et seq., and under the Federal Declaratory Judgment Act, 28 U.S.C and As alleged more fully below, there is a substantial controversy of sufficient immediacy and reality between Cherwell and BMC regarding non-infringement of the patents-in-suit to warrant the issuance of a declaratory judgment. 4. This Court has personal jurisdiction over BMC because, on information and belief, BMC has continuous and systematic contacts with the State of Colorado and this judicial district. BMC is registered to transact business in Colorado. Upon information and belief, BMC sells software into Colorado and provides services to customers in Colorado. Upon information and belief, BMC also has employees based in Colorado. 5. Venue is proper in this district under 28 U.S.C. 1391(b). BACKGROUND AND NATURE OF ACTION 6. Founded in 2004, Cherwell is a cutting-edge company that offers its customers a suite of Information Technology ( IT ) and IT Service Management ( ITSM ) services. Through the use of intuitive and easy-to-configure technology, Cherwell s software products enable customers to more effectively achieve their business purposes by automating routine IT maintenance tasks and simplifying the delivery of IT services, all without the need to manage code or develop new resources. An example is Cherwell s innovative platform known as Cherwell Service Management ( CSM ). Although Cherwell has offices in the United Kingdom, Australia, and Germany as well as in Seattle, Washington, and Tampa, Florida the majority of its employees, and the vast majority of its technical and engineering employees, operate out of Cherwell s headquarters in Colorado Springs, Colorado and/or its Denver, Colorado office. 2

3 Case 1:17-cv WJM Document 1 Filed 06/08/17 USDC Colorado Page 3 of Defendant BMC has asserted that it is the owner by assignment of U.S. Patent No. 6,895,586 ( the 586 patent ), entitled Enterprise Management System and Method Which Includes a Common Enterprise-Wide Namespace and Prototype-Based Hierarchical Inheritance ; U.S. Patent No. 8,082,222 ( the 222 patent ), entitled CMDB Federation Method and Management System ; U.S. Patent No. 6,168,898 ( the 898 patent ), entitled Interfacing External Metrics into a Performance Management System ; U.S. Patent No. 7,877,783 ( the 783 patent ), entitled System and Method for Secure Communications with a Remote Software Program ; U.S. Patent No. 9,239,857 ( the 857 patent ), entitled System and Method for Building Business Service Model ; U.S. Patent No. 8,832,652 ( the 652 patent ), entitled Method for Customizing Software Applications ; and U.S. Patent No. 9,363,252 ( the 252 patent ), also entitled Method for Customizing Software Applications (collectively, the patents-in-suit ). 8. On April 28, 2017, BMC filed a complaint with the United States District Court for the Eastern District of Texas accusing Cherwell of directly and indirectly infringing one or more claims of the patents-in-suit. See BMC Software, Inc. v. Cherwell Software, LLC et al., No. 2:17-cv-374 (E.D. Tex.) (the E.D. Texas Action ). In its complaint, BMC alleges that Cherwell directly infringes the patents-in-suit by making, using, offering to sell, and/or selling allegedly infringing products, including the Cherwell Service Management platform. BMC also accuses Cherwell of inducing infringement of the patents-in-suit by providing installation services, operational support, and instructions for allegedly infringing products, including the Cherwell Service Management platform. BMC further accuses Cherwell of contributory infringement of the patents-in-suit by providing customers with products, including the Cherwell Service 3

4 Case 1:17-cv WJM Document 1 Filed 06/08/17 USDC Colorado Page 4 of 10 Management platform, which, when combined with portions of other Cherwell products or portions of other companies products, allegedly infringe one or more of the patents-in-suit. 9. In light of the Supreme Court s recent decision in TC Heartland LLC v. Kraft Foods Group Brands LLC, U.S. (Slip Op. May 22, 2017), venue as to Cherwell is improper in the Eastern District of Texas, and Cherwell intends to file a Rule 12(b)(3) motion to dismiss that complaint on grounds of improper venue. 10. Immediately following the Supreme Court s decision in TC Heartland, BMC filed a complaint against Cherwell in the Northern District of Texas that was nearly identical to the complaint in the E.D. Texas Action. See BMC Software, Inc. v. Cherwell Software, LLC et al., No. 3:17-cv (N.D. Tex.) (the N.D. Texas Action ) (together with the E.D. Texas Action, the Texas Actions ). As of the date of the filing of this complaint, BMC has not served the complaint from the N.D. Texas Action on Cherwell. For the same reasons that venue is improper in the Eastern District of Texas, venue is improper in the Northern District of Texas, and, if BMC serves that complaint upon Cherwell, Cherwell intends to file a Rule 12(b)(3) motion to dismiss the N.D. Texas Action on the same grounds. 11. In its complaints for infringement against Cherwell, BMC sought, among other forms of relief, a permanent injunction, damages, and attorneys fees. Thus, a substantial controversy exists between Cherwell and BMC regarding the alleged infringement of the patentsin-suit, and this controversy is of sufficient immediacy and reality to warrant the issuance of a declaratory judgment. FIRST CLAIM FOR RELIEF (Declaratory Judgment of Non-Infringement of U.S. Patent No. 6,895,586) 4

5 Case 1:17-cv WJM Document 1 Filed 06/08/17 USDC Colorado Page 5 of Cherwell incorporates by reference paragraph 1 through 11, inclusive, as though 13. BMC has sued Cherwell in the Texas Actions alleging infringement of the Cherwell has never infringed and is not currently infringing whether directly or indirectly, contributorily or by inducement, literally or otherwise any claims of the Accordingly, an actual and justiciable controversy has arisen and exists between Cherwell and BMC relating to the non-infringement of the 586 Cherwell seeks a judicial SECOND CLAIM FOR RELIEF (Declaratory Judgment of Non-Infringement of U.S. Patent No. 8,082,222) 16. Cherwell incorporates by reference paragraph 1 through 15, inclusive, as though 17. BMC has sued Cherwell in the Texas Actions alleging infringement of the Cherwell has never infringed and is not currently infringing whether directly or indirectly, contributorily or by inducement, literally or otherwise any claims of the Accordingly, an actual and justiciable controversy has arisen and exists between Cherwell and BMC relating to the non-infringement of the 222 Cherwell seeks a judicial 5

6 Case 1:17-cv WJM Document 1 Filed 06/08/17 USDC Colorado Page 6 of 10 THIRD CLAIM FOR RELIEF (Declaratory Judgment of Non-Infringement of U.S. Patent No. 6,168,898) 20. Cherwell incorporates by reference paragraph 1 through 19, inclusive, as though 21. BMC has sued Cherwell in the Texas Actions alleging infringement of the Cherwell has never infringed and is not currently infringing whether directly or indirectly, contributorily or by inducement, literally or otherwise any claims of the Accordingly, an actual and justiciable controversy has arisen and exists between Cherwell and BMC relating to the non-infringement of the 898 Cherwell seeks a judicial FOURTH CLAIM FOR RELIEF (Declaratory Judgment of Non-Infringement of U.S. Patent No. 7,877,783) 24. Cherwell incorporates by reference paragraph 1 through 23, inclusive, as though 25. BMC has sued Cherwell in the Texas Actions alleging infringement of the 783 6

7 Case 1:17-cv WJM Document 1 Filed 06/08/17 USDC Colorado Page 7 of Cherwell has never infringed and is not currently infringing whether directly or indirectly, contributorily or by inducement, literally or otherwise any claims of the Accordingly, an actual and justiciable controversy has arisen and exists between Cherwell and BMC relating to the non-infringement of the 783 Cherwell seeks a judicial FIFTH CLAIM FOR RELIEF (Declaratory Judgment of Non-Infringement of U.S. Patent No. 9,239,857) 28. Cherwell incorporates by reference paragraph 1 through 27, inclusive, as though 29. BMC has sued Cherwell in the Texas Actions alleging infringement of the Cherwell has never infringed and is not currently infringing whether directly or indirectly, contributorily or by inducement, literally or otherwise any claims of the Accordingly, an actual and justiciable controversy has arisen and exists between Cherwell and BMC relating to the non-infringement of the 857 Cherwell seeks a judicial SIXTH CLAIM FOR RELIEF (Declaratory Judgment of Non-Infringement of U.S. Patent No. 8,832,652) 7

8 Case 1:17-cv WJM Document 1 Filed 06/08/17 USDC Colorado Page 8 of Cherwell incorporates by reference paragraph 1 through 31, inclusive, as though 33. BMC has sued Cherwell in the Texas Actions alleging infringement of the Cherwell has never infringed and is not currently infringing whether directly or indirectly, contributorily or by inducement, literally or otherwise any claims of the Accordingly, an actual and justiciable controversy has arisen and exists between Cherwell and BMC relating to the non-infringement of the 652 Cherwell seeks a judicial SEVENTH CLAIM FOR RELIEF (Declaratory Judgment of Non-Infringement of U.S. Patent No. 9,363,252) 36. Cherwell incorporates by reference paragraph 1 through 35, inclusive, as though 37. BMC has sued Cherwell in the Texas Actions alleging infringement of the Cherwell has never infringed and is not currently infringing whether directly or indirectly, contributorily or by inducement, literally or otherwise any claims of the Accordingly, an actual and justiciable controversy has arisen and exists between Cherwell and BMC relating to the non-infringement of the 252 Cherwell seeks a judicial 8

9 Case 1:17-cv WJM Document 1 Filed 06/08/17 USDC Colorado Page 9 of 10 PRAYER FOR RELIEF WHEREFORE, Plaintiff Cherwell Software, LLC requests entry of judgment in its favor and against the Defendant as follows: 1. A declaration that Cherwell has not infringed, willfully infringed, induced others to infringe, or contributed to the infringement of any claim of the 586 patent; 2. A declaration that Cherwell has not infringed, willfully infringed, induced others to infringe, or contributed to the infringement of any claim of the 222 patent; 3. A declaration that Cherwell has not infringed, willfully infringed, induced others to infringe, or contributed to the infringement of any claim of the 898 patent; 4. A declaration that Cherwell has not infringed, willfully infringed, induced others to infringe, or contributed to the infringement of any claim of the 783 patent; 5. A declaration that Cherwell has not infringed, willfully infringed, induced others to infringe, or contributed to the infringement of any claim of the 857 patent; 6. A declaration that Cherwell has not infringed, willfully infringed, induced others to infringe, or contributed to the infringement of any claim of the 652 patent; 7. A declaration that Cherwell has not infringed, willfully infringed, induced others to infringe, or contributed to the infringement of any claim of the 252 patent; 8. A declaration that Cherwell is the prevailing party, and that this case is exceptional within the meaning of 35 U.S.C. 285, and an award granting Cherwell its reasonable attorneys fees, and costs, as permitted by law; and 9

10 Case 1:17-cv WJM Document 1 Filed 06/08/17 USDC Colorado Page 10 of Any other and further relief that this Court may deem just and proper. JURY DEMAND 10. Cherwell hereby demands a jury trial for all issues so triable. Dated: June 8, 2017 Respectfully submitted, By: /s/ JD Schneider Scott R. Bialecki JD Schneider FAEGRE BAKER DANIELS LLP 3200 Wells Fargo Center 1700 Lincoln Street Denver, CO Telephone: (303) Facsimile: (303) scott.bialecki@faegrebd.com jd.schneider@faegrebd.com Robert A. Van Nest Eugene M. Paige Warren A. Braunig Sharif E. Jacob William S. Hicks Philip J. Tassin KEKER, VAN NEST & PETERS LLP 633 Battery Street San Francisco, CA Telephone: (415) Facsimile: (415) rvannest@keker.com epaige@keker.com wbraunig@keker.com sjacob@keker.com whicks@keker.com ptassin@keker.com Attorneys for Plaintiff Cherwell Software, LLC 10