Microsoft Corp v. SurfCast Inc

1. Case Identification

• Case #: IPR2013-2093
• Patent #: 6,724,403
• Filed: May 22, 2013
• Petitioner(s): Microsoft Corporation
• Patent Owner(s): SurfCast, Inc.
• Challenged Claims: 22-45

2. Patent Overview

• Title: System and Method for Simultaneous Display of Information Sources
• Brief Description: The ’403 patent discloses a system for the simultaneous display of information from multiple sources on a graphical user interface. The invention arranges the display into an "array of tiles," where each tile is associated with a unique information source (e.g., a datastream, file, or application). The system retrieves and presents information within each tile according to distinct "retrieval rates," allowing for different update frequencies for various information sources.

3. Grounds for Unpatentability

Ground 1: Anticipation over Duhault I - Claims 22-24, 26, 27, 30-33, 35-37, and 40-43 are anticipated under 35 U.S.C. §102 by Duhault I.

• Prior Art Relied Upon: Duhault I (Patent 6,118,493).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Duhault I’s system for watching multiple television channels in a grid anticipates the claims. Duhault I’s rectangular "video viewing areas" were presented as the claimed "tiles," arranged in a grid that meets the "array of tiles" limitation. Each tile is explicitly associated with an information source (a television channel). Petitioner asserted that Duhault I teaches a dual-rate retrieval system: unselected tiles are updated periodically with still thumbnail images at a first retrieval rate, while a single user-selected tile is updated at a much higher "live" video rate, constituting a second retrieval rate. This system was argued to directly teach the limitations of retrieving information from first and second sources at different rates and presenting it in corresponding tiles. Further, dependent claims were anticipated, as Duhault I’s grid consists of non-overlapping tiles of uniform size and shape (claim 30) and its use of a single tuner to switch rates upon selection teaches interrupting a first retrieval rate (claim 33).

Ground 2: Anticipation over Chen - Claims 22, 23, 27, 30, 39, and 40-43 are anticipated under §102 by Chen.

• Prior Art Relied Upon: Chen (Patent 5,432,932).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Chen, which describes a scheme for monitoring remote computers, anticipates the core claims. Chen’s system partitions a display "console" into a grid of rectangular "instruments," which Petitioner mapped to the claimed "array of tiles." Each instrument (tile) is associated with and displays performance data from a specific remote computer, which acts as the "information source." Data is retrieved from these sources at user-configurable sampling intervals, which Petitioner argued meets the "retrieval rate" limitation. The system's ability to handle multiple instruments, each with its own retrieval rate, was argued to read directly on independent claim 22. Petitioner further argued that Chen anticipates dependent claims, including displaying non-overlapping instruments of uniform size and shape (claim 30) and allowing different requestors to set different retrieval intervals (claim 39).

Ground 3: Obviousness over Chen Combinations - Claims 24, 29, 31, 33, 34, 38, 44 and 45 are obvious over Chen.

• Prior Art Relied Upon: Chen (Patent 5,432,932), Duhault I (Patent 6,118,493), MSIE Kit (a 1998 Microsoft publication), Miller (Patent 5,550,968), and Crawford (Patent 5,901,228).

• Core Argument for this Ground:

  • Prior Art Mapping: Building on the Chen system as a base, Petitioner argued that adding features from other prior art to meet various dependent claims would have been obvious. For claim 29 (password authentication), MSIE Kit and Miller both taught assigning passwords to graphical objects for security. For claims 44 and 45 (storing and retrieving the tile array on a second electronic device), MSIE Kit and Crawford taught storing user desktop configurations on a network server. For claim 24 (using tuners), Duhault I taught a tuner-based system for displaying video.
  • Motivation to Combine: A POSITA would have been motivated to combine these references to add well-known, desirable functionality to Chen's monitoring system. For example, combining with MSIE Kit or Miller would add a conventional security layer. Combining with MSIE Kit or Crawford would provide the known benefits of roaming user profiles and centralized administration by storing the tile layout on a server. Combining with Duhault I would allow Chen's system to display broadcast video content, a logical extension for a multi-source display system.
  • Expectation of Success: Petitioner argued that implementing these features—password protection, network profile storage, and tuner integration—were all routine software engineering tasks at the time. A POSITA would have had a high expectation of success in combining these known elements, as their operation was well understood and the combination would have yielded only predictable results.

• Additional Grounds: Petitioner asserted numerous other grounds, including anticipation by Duhault II (Patent 6,456,334) and Farber (Patent 5,819,284), and various other obviousness combinations based primarily on Duhault I and Chen.

4. Key Claim Construction Positions

• Petitioner’s arguments relied heavily on broad constructions for key terms, asserting they should be given their broadest reasonable interpretation.
• "tile": Petitioner proposed this term meant any visual element smaller than the entire display, including a window or icon. It was argued that the patent itself fails to draw a clear, required distinction from a conventional "window," making prior art systems that used windows or similar elements relevant. This construction was critical to mapping references like Chen and Farber onto the claims.
• "array of tiles": Petitioner argued for a broad construction encompassing any arrangement of one or more tiles, not necessarily a fixed grid. This position was supported by pointing to dependent claims that explicitly add more limiting features, such as a "grid" or a "non-overlapping" configuration. This construction allowed flexible or even floating layouts in the prior art to meet the limitation of the independent claims.

5. Relief Requested

• Petitioner requests the institution of an inter partes review and cancellation of claims 22-45 of the ’403 patent as unpatentable.