DCT
2:22-cv-01298
SurfCast Inc v. Microsoft Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: SurfCast, Inc. (Delaware)
- Defendant: Microsoft Corporation (Washington)
- Plaintiff’s Counsel: BUTZEL LONG, PC
- Case Identification: 6:21-cv-01018, W.D. Tex., 10/01/2021
- Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas because Microsoft maintains a "regular and established physical presence" in the district, including offices in Austin and San Antonio. The complaint also notes that Microsoft has admitted or not contested venue in this district in several other recent patent infringement actions.
- Core Dispute: Plaintiff alleges that Defendant’s Windows operating systems, Surface devices, and Xbox One console, which feature the "live tiles" user interface, infringe four patents related to graphical user interfaces that display information from multiple sources in a grid of tiles.
- Technical Context: The technology at issue concerns tile-based graphical user interfaces that organize and present dynamically updated information from various applications and data sources on a single screen.
- Key Procedural History: The complaint alleges that the asserted patents claim priority to an earlier patent (U.S. Patent No. 6,724,403) on which SurfCast previously sued Microsoft in 2012. This prior litigation and Microsoft's alleged knowledge of the parent patent during its own patent prosecution form the basis for allegations of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 1999-10-29 | Priority Date for '317, '712, '338, and '434 Patents |
| 2010-11-08 | Alleged launch of Windows Phone 7 Products |
| 2012-10-26 | Alleged launch of Windows 8 Accused Products |
| 2012-10-30 | SurfCast files suit against Microsoft on parent '403 patent |
| 2013-08-27 | Alleged launch of Windows 8.1 Accused Products |
| 2013-11-22 | Alleged launch of Xbox One |
| 2015-05-12 | U.S. Patent No. 9,032,317 Issues |
| 2015-05-26 | U.S. Patent No. 9,043,712 Issues |
| 2015-07-15 | Alleged launch of Windows 10 Accused Products |
| 2016-06-07 | U.S. Patent No. 9,363,338 Issues |
| 2018-04-17 | U.S. Patent No. 9,946,434 Issues |
| 2021-09-30 | SurfCast provides direct notice of infringement to Microsoft |
| 2021-10-01 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,032,317
- Patent Identification: U.S. Patent No. 9,032,317, titled System and Method For Simultaneous Display of Multiple Information Sources, issued May 12, 2015.
The Invention Explained
- Problem Addressed: The patent describes a problem where users are faced with "insufficient resources to manage and access the volume and variety of information available to them" and that manually refreshing content from multiple sources is "fundamentally inefficient" ('317 Patent, col. 2:12-13, col. 2:41-44). Existing graphical user interfaces with static icons and overlapping windows are described as inadequate for simultaneously monitoring multiple dynamic data sources ('317 Patent, col. 3:1-5).
- The Patented Solution: The invention proposes a graphical user interface that organizes information into a "grid of tiles," where each tile can display content from a distinct source and "refresh its content independently of the others" ('317 Patent, Abstract). The system provides for "automatic control of the refresh rates of multiple data sources," which can be based on the type of data or user preferences, allowing for a unified and efficient way to monitor diverse information streams like video, email, and web content simultaneously ('317 Patent, col. 4:58-63, Fig. 1).
- Technical Importance: The claimed approach sought to unify the user experience for disparate data types and to manage network bandwidth by controlling the update frequency for each information source individually ('317 Patent, col. 2:50-61).
Key Claims at a Glance
- The complaint asserts independent claims 1, 12, and 16 (Compl. ¶25).
- Independent Claim 1 requires:
- A method executed by a computer
- partitioning a visual display of a computer into an array of tiles, such as into a non-overlapping configuration;
- assigning a first refresh rate to a first tile of said array of tiles and a second refresh rate to a second tile of said array of tiles;
- updating information presented to said first tile in accordance with said first refresh rate; and
- updating information presented to said second tile in accordance with said second refresh rate.
- The complaint reserves the right to assert other claims, including dependent claim 5 (Compl. ¶25).
U.S. Patent No. 9,043,712
- Patent Identification: U.S. Patent No. 9,043,712, titled System and Method For Simultaneous Display of Multiple Information Sources, issued May 26, 2015.
The Invention Explained
- Problem Addressed: As with the related ’317 Patent, this patent addresses the inefficiency and complexity users face when trying to monitor multiple, diverse information sources at once using conventional icons and windows ('712 Patent, col. 2:41-47).
- The Patented Solution: The patent describes a grid of tiles where tiles can "communicate with one another and have conditional content," meaning "the content of one tile depends upon the content of another" ('712 Patent, col. 13:22-24). For example, a primary tile displaying a stock index could be linked to "conditionally dependent tiles" that show weekly and yearly fluctuations, allowing for related information to be updated cohesively ('712 Patent, col. 13:30-34).
- Technical Importance: This approach aimed to create a more intelligent and context-aware user interface where relationships between different data sources could be represented visually and updated in a coordinated manner ('712 Patent, col. 13:22-26).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶39).
- Independent Claim 1 requires:
- A method executed by a device under the control of a program
- partitioning a visual display rendered by the device into an array of tiles, wherein each tile... is associated with an information source;
- wherein content of a second tile of the array of tiles depends upon content of a first tile of the array of tiles;
- assigning a first update rate to the first tile;
- updating information from a first information source... presented to the first tile in accordance with the first update rate; and
- updating content of the second tile based on the information updated to the first tile.
- The complaint reserves the right to assert other claims, including dependent claim 3 (Compl. ¶39).
U.S. Patent No. 9,363,338 (Multi-Patent Capsule)
- Patent Identification: U.S. Patent No. 9,363,338, titled System and Method For Simultaneous Display of Multiple Information Sources, issued June 7, 2016.
- Technology Synopsis: This patent addresses the inefficiency of data retrieval for tile-based interfaces. It describes a method for a client device to send a conditional request to a server for a tile's content update, where the request is fulfilled only if the information has changed since the last update, thereby conserving network and device resources.
- Asserted Claims: Independent claims 1 and 9 are asserted (Compl. ¶53).
- Accused Features: The "live tiles" feature in Microsoft's Windows operating systems, which allegedly updates content from various information sources (Compl. ¶17, ¶56).
U.S. Patent No. 9,946,434 (Multi-Patent Capsule)
- Patent Identification: U.S. Patent No. 9,946,434, titled System and Method For Simultaneous Display of Multiple Information Sources, issued April 17, 2018.
- Technology Synopsis: This patent describes a system for displaying multiple application programs in a grid of "persistent," non-overlapping tiles. The system assigns independent refresh rates to different tiles and provides selection operations that allow a user to interact with the underlying applications through the tiles.
- Asserted Claims: Independent claims 1, 9, and 17 are asserted (Compl. ¶67).
- Accused Features: Microsoft's Windows operating systems and devices that employ the "live tiles" user interface to represent and launch applications (Compl. ¶17, ¶70).
III. The Accused Instrumentality
- Product Identification: The complaint collectively defines the "Accused Products" as Microsoft's software and devices, including the Windows Phone 7 Operating System, the Microsoft Surface with Windows RT, the Xbox One, and various versions of the Microsoft Windows 8, 8.1, and 10 operating systems (Compl. ¶17).
- Functionality and Market Context: The infringement allegations center on the "live tiles" feature of the Windows user interface (Compl. ¶18, ¶28). The complaint, citing Microsoft's documentation, describes these tiles as representations of applications on the Start screen whose content "can, and ideally should, change regularly, especially if your tile can communicate new, real-time information to your user" (Compl. ¶18). The tiles are alleged to be capable of dynamically updating with content such as "new social networking posts, new news headlines, or stock quotes" from either local API calls or from the cloud, even when the associated application is not running (Compl. ¶29). The accused products represent major operating systems for a vast market of personal computers, mobile devices, and gaming consoles (Compl. ¶17).
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
U.S. Patent No. 9,032,317 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| partitioning a visual display of a computer into an array of tiles, such as into a non-overlapping configuration | The accused products' user interfaces partition the display into a grid of "Tiles" on the "Start screen." | ¶18 | col. 4:55-57 |
| assigning a first refresh rate to a first tile of said array of tiles and a second refresh rate to a second tile of said array of tiles | Microsoft allegedly instructs developers on four different ways an app can update its tile (local, scheduled, push, polling), suggesting that different tiles can be configured to update at different frequencies or by different mechanisms. | ¶29 | col. 4:58-63 |
| updating information presented to said first tile in accordance with said first refresh rate; and updating information presented to said second tile in accordance with said second refresh rate | The content shown on a tile allegedly can "change regularly" to communicate "new, real-time information," with updates originating from the cloud even when an app is not running, implying independent updates for different tiles. | ¶18, ¶29 | col. 2:53-55 |
- Identified Points of Contention:
- Scope Questions: A central point of contention may be the meaning of "refresh rate." Does the accused functionality of receiving event-driven "push" notifications or periodic "polling" meet the claim requirement of "assigning a ... refresh rate," or does the claim require a more specific, scheduled, periodic update frequency?
- Technical Questions: What evidence does the complaint provide that the accused products actually assign distinct, defined rates to different tiles? The complaint focuses on Microsoft's documentation describing different methods of updating (e.g., push, poll, scheduled) rather than providing concrete examples of two tiles operating simultaneously with different assigned periodic rates.
U.S. Patent No. 9,043,712 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| partitioning a visual display rendered by the device into an array of tiles, wherein each tile... is associated with an information source | The accused products' user interfaces partition the display into a grid of "Tiles" on the "Start screen." | ¶18 | col. 4:55-57 |
| wherein content of a second tile of the array of tiles depends upon content of a first tile of the array of tiles | The complaint does not provide sufficient detail for analysis of this element. | col. 13:22-26 | |
| assigning a first update rate to the first tile | Microsoft allegedly instructs developers on various methods for an app to update its tile, suggesting different tiles can have different update mechanisms or frequencies. | ¶43 | col. 4:58-63 |
| updating information... presented to the first tile in accordance with the first update rate; and updating content of the second tile based on the information updated to the first tile | The content on a tile allegedly changes regularly to communicate "real-time information." The complaint does not provide sufficient detail to analyze the dependency-based updating of the second tile. | ¶18, ¶42 | col. 13:26-30 |
- Identified Points of Contention:
- Technical Questions: The primary question will be factual: what evidence does the complaint provide that the accused products practice the limitation "wherein content of a second tile... depends upon content of a first tile"? The complaint makes general allegations about tile updates but does not appear to describe a specific instance of such inter-tile dependency.
- Scope Questions: Does the claim term "depends upon" require a direct, programmatic data link between the content of two tiles, as suggested by the patent's Nasdaq example, or could it be construed more broadly to cover system-level events that might trigger updates on multiple related tiles?
V. Key Claim Terms for Construction
The Term: "refresh rate" (from '317 Patent)
- Context and Importance: This term's construction is central to the infringement analysis for the ’317 patent. The dispute may turn on whether Microsoft's event-driven update mechanisms (e.g., push notifications) for its "live tiles" constitute the "assigning" of a "refresh rate" as required by the claims.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent's background section criticizes the inefficiency of manual refreshing and notes a user would not "wish all of them [data sources] to update at the same frequency" ('317 Patent, col. 2:12-13, col. 2:53-54). This language could support a construction that covers any mechanism, including event-based triggers, that results in different effective update frequencies for different tiles.
- Evidence for a Narrower Interpretation: The specification discloses "automatic control of the refresh rates" and a "carousel' approach" where a grid "continually cycles around the currently displayed tiles, one by one, refreshing the content" ('317 Patent, col. 4:58-63; col. 16:61-64). This may support a narrower construction requiring a pre-determined, scheduled, or periodic frequency of updates.
The Term: "content of a second tile ... depends upon content of a first tile" (from '712 Patent)
- Context and Importance: This limitation is the core distinguishing feature of claim 1 of the '712 patent. The viability of this claim rests on whether this specific inter-tile dependency can be found in the accused products, as the complaint does not explicitly allege it.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states that in one embodiment, "tiles communicate with one another and have conditional content" ('712 Patent, col. 13:22-24). This general language could be argued to support a broader interpretation of dependency beyond a direct data link.
- Evidence for a Narrower Interpretation: The patent provides a specific example where a first tile showing the Nasdaq Stock index has "conditionally dependent tiles" linked to it that "show the weekly, and yearly fluctuations of the index" ('712 Patent, col. 13:30-34). This embodiment suggests a direct, data-driven relationship, which may support a narrower construction that the accused products do not meet.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement across all asserted patents. The basis for this allegation is that Microsoft actively encourages and provides instructions to both end-users and software developers on how to use and implement the allegedly infringing "live tiles" functionality through its websites, developer centers, and product documentation (Compl. ¶28, ¶29, ¶42, ¶43, ¶56, ¶57, ¶70, ¶71).
- Willful Infringement: The complaint alleges willful infringement based on both pre- and post-suit knowledge. It alleges Microsoft had pre-suit knowledge of SurfCast's technology because it was aware of the parent '403 patent as early as 2009 during the prosecution of its own patent, and was sued by SurfCast for infringement of that same parent patent in 2012. Post-suit knowledge is based on a direct notice letter sent by SurfCast to Microsoft on September 30, 2021, the day before the suit was filed (Compl. ¶27, ¶41, ¶55, ¶69).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "refresh rate," as used in the '317 patent, be construed to cover the event-driven (push) and on-demand (poll) update mechanisms of the accused "live tiles" system, or does the patent require a more specific, scheduled, periodic update functionality?
- A key evidentiary question will be one of technical implementation: for the '712 patent, can the plaintiff demonstrate that Microsoft's user interface architecture actually implements a feature where the "content of a second tile... depends upon content of a first tile," a specific limitation that the complaint does not appear to address with factual allegations?
- A central question for damages will be willfulness: given the extensive litigation history between the parties on a parent patent, the court will likely focus on whether Microsoft's continued use of its "live tiles" technology after years of notice was objectively reckless, which could lead to enhanced damages.