Microsoft Corp v. Be Technology LLC

1. Case Identification

• Case #: IPR2014-00040
• Patent #: 6,771,290
• Filed: October 9, 2013
• Petitioner(s): Microsoft Corporation
• Patent Owner(s): B.E. Technology, LLC
• Challenged Claims: 1-3

2. Patent Overview

• Title: Computer Interface Method and Apparatus with Portable Network Organization System and Targeted Advertising
• Brief Description: The ’290 patent relates to a computer interface system that provides a user with an integrated, customized graphical user interface (GUI) for accessing a plurality of computer resources. The system involves a client computer communicating with a server that stores a user profile and a user library of files, which are presented to the user as selectable links after a successful login.

3. Grounds for Unpatentability

Ground 1: Claims 1-3 are anticipated by Kikinis under 35 U.S.C. §102

• Prior Art Relied Upon: Kikinis (International Publication No. WO 97/09682).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Kikinis, published in March 1997, discloses every limitation of the challenged claims. Kikinis describes a computer-based system providing a user with remote access to computer resources via an "individualized home page," which is a customized GUI.
    • For independent claim 1, Petitioner asserted that Kikinis’s GUI, accessed via a web browser, is the claimed "integrated, customized, graphical user interface." The "active selection areas" on the home page, which are links to applications like V-Mail, E-Mail, and FAX-Mail, correspond to the claimed "graphical objects" representing different software applications. Links to other resources, such as a multi-lingual dictionary, satisfy the limitation of "user-selectable items" associated with different data sets. The requirement for a username and password to access the home page was mapped to the claimed "login module" that identifies the user to a server to retrieve a "user profile."
    • For independent claim 2, Petitioner contended that Kikinis’s "electronic document servers" that store a user's specific documents (e.g., e-mails, faxes, voicemail) constitute the claimed "server storing a user profile and user library." The individualized home page functions as the user profile, containing links to the user's documents, which are the "files in the user library."
    • For dependent claim 3, Petitioner argued that Kikinis explicitly describes the user invoking a web browser to access the individualized home page and its linked resources, thus meeting the limitation of accessing the resource "using a browser."

Ground 2: Claims 1-3 are anticipated by AOL under 35 U.S.C. §102

• Prior Art Relied Upon: AOL (America Online for Dummies, 3rd Edition, published 1996).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the America Online system, as described in the AOL reference, anticipates all challenged claims. The system provided users with client-specific access to resources and files on AOL servers.
    • For independent claim 1, Petitioner mapped the AOL "Welcome" screen, which is presented after a user logs in with a screen name and password, to the claimed "customized, graphical user interface." The login process itself was equated to the "login module" which identifies the user and allows the server to retrieve the user's profile information. The selectable icons on the AOL interface, such as "Mail," "Channels," and the "Personal Filing Cabinet," were identified as the "graphical objects" representing software applications. User-specific collections of links, such as the "Favorite Places Window," were argued to meet the limitation for "user-selectable items" associated with different data sets.
    • For independent claim 2, Petitioner asserted that AOL servers stored user-specific files, such as e-mails in a user's "Mailbox" and files in the "Personal Filing Cabinet" and "Download Manager." This collection of user-specific files was argued to be the claimed "user library." The user's screen name and associated settings constituted the "user profile," which contained links to files within that library, thereby satisfying all limitations.
    • For dependent claim 3, Petitioner pointed to AOL's inclusion of a built-in "Web Browser" application, which users could launch from the main interface to access resources on the World Wide Web. This functionality was argued to directly teach the claim limitation of accessing an information resource "using a browser."

4. Key Claim Construction Positions

• Petitioner dedicated specific argument to the construction of "file." Citing the ’290 patent's specification, Petitioner proposed that the broadest reasonable construction of "file" should be "[a]ny digital item, including information, documents, applications, audio/video components, and the like, that is stored in memory and is accessible via allocation table or other pointing or indexing structure." This broad construction was central to Petitioner’s arguments that the various "electronic documents," e-mails, and other digital data described in Kikinis and AOL meet the "file" limitation of the claims.

5. Relief Requested

• Petitioner requested the institution of an inter partes review (IPR) and the cancellation of claims 1-3 of the ’290 patent as unpatentable.