2:15-cv-00528
Corel Software v. Microsoft
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Corel Software, LLC (Delaware)
- Defendant: Microsoft Corporation (Washington)
- Plaintiff’s Counsel: Parr Brown Gee & Loveless
- Case Identification: 2:15-cv-00528, D. Utah, 07/27/2015
- Venue Allegations: Plaintiff alleges venue is proper in the District of Utah because Defendant transacts substantial business in the state, has committed acts of infringement there, and the named inventors on the patents-in-suit resided in the district during the invention's creation.
- Core Dispute: Plaintiff alleges that Defendant’s "Live Preview" feature, incorporated in its Office suite and other software products, infringes patents related to "RealTime Preview" technology originally developed for the WordPerfect application.
- Technical Context: The technology at issue involves user interface methods in productivity software that allow a user to preview the effect of formatting changes on an entire document in real-time, prior to committing to the change.
- Key Procedural History: The complaint alleges that the parties engaged in communications in 2011, 2014, and 2015 regarding a potential sale of the patents-in-suit from Plaintiff to Defendant. It further alleges that Defendant was aware of the patents through its own patent prosecution activities, where the patents-in-suit were cited as prior art. Subsequent to the filing of this complaint, the patents-in-suit were the subject of post-grant proceedings. U.S. Patent No. 6,731,309 had its independent claim 1 cancelled in an ex parte reexamination. U.S. Patent No. 7,827,483 had its asserted claims confirmed in an ex parte reexamination. U.S. Patent No. 8,700,996 had all of its independent claims cancelled in an inter partes review proceeding and subsequently disclaimed, a development that may significantly affect the scope of this litigation.
Case Timeline
| Date | Event |
|---|---|
| 1998-08-28 | Earliest Priority Date for ’309, ’483, and ’996 Patents |
| 2004-05-04 | U.S. Patent 6,731,309 Issued |
| 2007-01-01 | Alleged First Infringement via release of Microsoft Office 2007 (approx.) |
| 2010-11-02 | U.S. Patent 7,827,483 Issued |
| 2011-01-01 | Alleged Pre-Suit Communications Between Parties (approx.) |
| 2014-04-15 | U.S. Patent 8,700,996 Issued |
| 2014-01-01 | Alleged Pre-Suit Communications Between Parties (approx.) |
| 2015-01-01 | Alleged Pre-Suit Communications Between Parties (approx.) |
| 2015-07-27 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,731,309 - “Real Time Preview”
The Invention Explained
- Problem Addressed: The patent’s background describes the conventional process of applying formatting in software as inefficient and burdensome, requiring a user to select a command, execute it, view the result, and then use an "undo" function if the result is undesirable, a "slow" process involving "multiple keystrokes" (’309 Patent, col. 1:23-30). Prior art preview windows were also deficient, as they typically showed the formatting change on a small, generic sample of text, failing to represent the impact on the user's actual, entire document (’309 Patent, col. 1:38-54).
- The Patented Solution: The invention is a method that executes a formatting command as soon as the user "identifies" it (e.g., by hovering a cursor over a menu option), rather than waiting for an explicit execution step like a mouse click (’309 Patent, Abstract). This action applies the change to the entire active document, allowing the user to see the full impact in real-time while the selection menu remains open, facilitating rapid comparison of different options (’309 Patent, col. 3:11-23; Fig. 1b).
- Technical Importance: This approach aimed to streamline the document editing workflow by eliminating the repetitive "apply-and-undo" cycle and providing a more accurate, full-document preview than was previously available (’309 Patent, col. 2:32-37).
Key Claims at a Glance
The complaint asserts one or more claims of the ’309 Patent (Compl. ¶162). Independent claim 1 was cancelled during reexamination. Independent claim 7 is representative of the invention’s application to document margins and guidelines.
- Independent Claim 7: A method for providing real time preview of changes to guidelines or margins, comprising:
- Storing an active document and displaying it in a display window.
- Tracking a cursor position.
- Responding to a guideline or margin being "grabbed and relocated" by moving the cursor, followed by the cursor remaining stationary for a "predetermined period of time."
- This response involves performing the steps of inserting code for the new guideline/margin location into the document and removing the code for the old location.
The complaint reserves the right to assert other claims, including dependent claims (Compl. ¶162).
U.S. Patent No. 7,827,483 - “Real Time Preview”
The Invention Explained
- Problem Addressed: As a continuation of the ’309 Patent, the ’483 patent addresses the same fundamental problem: the slow, "trial-and-error" process of selecting and applying formatting changes in software applications (’483 Patent, col. 1:29-34).
- The Patented Solution: The patent describes a method focused specifically on font changes, where hovering the cursor over a font option in a menu for a "predetermined period of time" triggers a real-time preview of that font on the text in the active document (’483 Patent, cl. 1). The preview is applied "without confirmation being received from the user," and the system is designed to replace the preview with a new one as the user hovers over other options, or to revert the change if the user moves away or does not confirm (’483 Patent, Abstract; col. 6:40-50).
- Technical Importance: This patent directly applied the real-time preview concept to font selection, one of the most common formatting tasks in word processing, aiming to make design choices faster and more intuitive (’483 Patent, col. 8:51-55).
Key Claims at a Glance
The complaint asserts one or more claims of the ’483 Patent (Compl. ¶167). Independent claim 1 is central to the allegations regarding font previews.
- Independent Claim 1: A method for providing a real-time preview of font changes, comprising:
- Storing and displaying an active document with text.
- Tracking a user-controlled cursor position.
- Identifying a font by the cursor hovering over a menu/toolbar option for a predetermined time.
- Inserting the corresponding font command code into the document and updating the display "without confirmation being received from the user."
- Pushing the command code to an undo stack upon subsequent user confirmation.
- Removing the command code if confirmation is not received or if another font is identified for preview.
The complaint reserves the right to assert other claims, including dependent claims (Compl. ¶167).
U.S. Patent No. 8,700,996 - “Real Time Preview”
Technology Synopsis
This patent continues the same family and addresses the same technical problem of inefficient document formatting workflows (’996 Patent, col. 2:45-53). It describes a system for providing a real-time preview of commands on the entire active document by executing the command when it is merely identified (e.g., via cursor hover), rather than after a distinct user action to execute it (’996 Patent, Abstract).
Asserted Claims
The complaint asserts "one or more claims," which would have likely included independent claims 1, 14, and 22 (Compl. ¶172). However, these claims were subsequently cancelled during an inter partes review proceeding.
Accused Features
The "Live Preview" feature for a range of formatting options, including fonts, styles, and text wrapping, in Microsoft's software products (Compl. ¶¶ 10, 14).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are software products that incorporate Microsoft’s "Live Preview" feature, including but not limited to Microsoft Word, Excel, Outlook, PowerPoint, OneNote, Visio, Paint, WordPad, and Publisher, as well as hardware sold with these programs since at least 2007 (Compl. ¶13).
Functionality and Market Context
The complaint alleges that the "Live Preview" feature allows a user to preview formatting changes by hovering a cursor over an option in a menu or gallery, which causes the change to be temporarily reflected in the main document editing window (Compl. ¶¶ 72, 73). A screenshot of a Microsoft Word 2010 tooltip describes this functionality as showing "a preview of how a feature affects the document as you hover over different choices" (Compl. ¶81). The complaint alleges that this feature is enabled by default in the accused products (Compl. ¶¶ 79-80). Plaintiff further alleges that Microsoft is the dominant player in the productivity software market and that it copied the "RealTime Preview" feature from WordPerfect to maintain its competitive position (Compl. ¶¶ 1, 7, 109).
IV. Analysis of Infringement Allegations
The complaint does not provide sufficient detail for a full claim chart analysis of U.S. Patent 6,731,309, as its allegations focus primarily on font and text-based previews rather than the margin/guideline manipulation recited in that patent's surviving independent claim. The analysis below focuses on the more detailed allegations related to the ’483 Patent.
’483 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| identifying a font by hovering of the cursor for a predetermined period of time over the font displayed in a menu or toolbar option | The accused "Live Preview" feature is triggered when a user moves the "pointer over the fonts" in a menu, with Microsoft's own documentation describing the preview as occurring "as you hover over different choices." | ¶¶ 73, 81 | col. 6:40-50 |
| inserting the font command code corresponding to the identified font into the memory medium storing the active document | As a user hovers over a font type, "the document being worked on will change from one font to another," which the complaint alleges is the result of executing the code associated with the formatting change. | ¶¶ 37, 38 | col. 5:20-24 |
| updating the display of the active document ... to show the impact of the inserted font command code on the display of the text ... without confirmation being received from the user | The preview occurs upon hover, while a separate action (clicking the font) is required to "apply the previewed formatting," thereby separating the preview from the confirmation. | ¶¶ 73, 83 | col. 5:25-34 |
| removing the font command code ... when ... another font command code is identified | The complaint describes that as the user's cursor "passes from one font type to another, the document being worked on will change from one font to another," implying the previous preview is removed and replaced by the new one. | ¶37 | col. 8:25-44 |
Identified Points of Contention
- Scope Questions: A central question for the court may be whether the claim term "hovering ... for a predetermined period of time" can be construed to read on the accused "Live Preview" functionality, which may appear instantaneous to the user. The patent specification itself contemplates that this time period could be made short enough that the "document appears to update continuously" (’309 Patent, col. 10:47-52), which may support Plaintiff's position but will likely be a point of dispute.
- Technical Questions: The complaint's infringement theory relies on user-facing documentation and observed behavior. A technical question for the court will be whether the underlying operation of "Live Preview" involves the specific steps of "inserting" and "removing" font "command code" from the document’s memory medium, as required by the claim, or if it achieves a similar visual effect through a different, non-infringing technical implementation. The complaint provides a side-by-side visual of a "Paste Live Preview" where the UI fades to highlight the previewed content, which Plaintiff will argue demonstrates the claimed real-time document modification (Compl. p. 16, ¶75).
V. Key Claim Terms for Construction
The Term: "hovering ... for a predetermined period of time" (from ’483 Patent, cl. 1)
Context and Importance
This phrase defines the specific user action that triggers the preview. The interpretation of whether this requires a noticeable, non-zero delay will be critical to the infringement analysis, as Microsoft may argue its feature is instantaneous and thus does not meet this limitation.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The specification suggests the goal is to allow a user to "scan through a list of commands without each successive command being identified, and hence executed" (’483 Patent, col. 6:52-56). This could support an interpretation where any non-zero time, however short, qualifies as "predetermined," allowing the system to distinguish between a rapid scan and an intentional pause to view a preview.
- Evidence for a Narrower Interpretation: The explicit inclusion of "for a predetermined period of time" could be argued to require a specific, measurable timeout feature. A defendant could contend that if its system triggers a preview with no programmed delay, it falls outside the literal scope of this language.
The Term: "without confirmation being received from the user" (from ’483 Patent, cl. 1)
Context and Importance
This term distinguishes the temporary preview state from the final, applied state. Practitioners may focus on this term because it is central to the patent's claimed improvement over prior art that required execution to see a result.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The patent’s flowcharts clearly separate the initial preview loop from a subsequent, optional "Confirm Command?" step that pushes the change to an "undo stack" (’483 Patent, Fig. 1b, steps 34, 30). This supports a reading where "confirmation" is a discrete, separate action from the initial hover that triggers the preview.
- Evidence for a Narrower Interpretation: A defendant might argue that a user pausing a hover constitutes a form of implicit confirmation. However, the specification’s structure, which explicitly depicts confirmation as a separate step leading to a permanent change (subject to undo), may make this a difficult position to maintain.
VI. Other Allegations
Indirect Infringement
The complaint alleges that Microsoft intended to cause infringement by actively encouraging users to use the "Live Preview" feature. This is supported by allegations that Microsoft provides instructions, user guides, and a "Support" website that direct end users on how to use the feature in an infringing manner (Compl. ¶¶ 73, 130, 134).
Willful Infringement
The willfulness claim is based on alleged pre-suit knowledge. The complaint alleges that Microsoft was aware of the patents due to direct communications with Corel regarding a potential sale in 2011, 2014, and 2015, and that in 2015 Microsoft acknowledged it had previously seen and considered the patents (Compl. ¶¶ 93, 106). The complaint also alleges knowledge through Microsoft's own patent prosecution, during which the ’309 patent was cited and an application for a Microsoft patent was rejected over the application that became the ’483 patent (Compl. ¶¶ 96-101, 157).
VII. Analyst’s Conclusion: Key Questions for the Case
- A primary issue will be one of patent viability: given that key independent claims of the ’309 and ’996 patents were cancelled in post-grant proceedings after the complaint was filed, a central question is whether the remaining claims, particularly those of the ’483 patent which survived reexamination, are valid and sufficiently broad to cover the accused "Live Preview" functionality.
- A key evidentiary question will be one of technical implementation: does the accused "Live Preview" feature operate by inserting and removing formatting code into the active document’s memory as recited in the claims, or does it use a different underlying mechanism (e.g., a display overlay) to create a visually similar preview, thereby presenting a fundamental mismatch in technical operation?
- The case may also turn on a definitional scope question during claim construction: can the phrase "hovering... for a predetermined period of time" be construed to read on a feature that appears to provide an instantaneous preview, or does it require a measurable, non-zero delay that may not be present in the accused products?