Apple Inc v. WhitServe LLC

1. Case Identification

• Case #: IPR2014-00268
• Patent #: 7,921,139
• Filed: December 17, 2013
• Petitioner(s): Apple Inc.
• Patent Owner(s): Whitserve, LLC
• Challenged Claims: 1-8 and 10-23

2. Patent Overview

• Title: System for Sequentially Opening and Displaying Files in a Directory
• Brief Description: The ’139 patent describes a system and method for sequentially displaying the contents of files within a directory. The invention purports to solve the inefficiency of manually opening and viewing each individual file by allowing a user to scroll through a directory and have the content of each file automatically displayed.

3. Grounds for Unpatentability

Ground 1: Anticipation over PowerDesk - Claims 1-8 and 10-23 are anticipated under 35 U.S.C. §102(b) by PowerDesk.

• Prior Art Relied Upon: PowerDesk (VCOM PowerDesk Pro PowerDesk Version 6 User Manual, Aug. 2004).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that PowerDesk, a publicly available file management utility from 2004, discloses every limitation of the challenged claims. Independent claim 1 requires a system for sequentially displaying files, including software for receiving a request to open a first file, receiving a "next file request," displaying the next file, and closing the first file based on a "predetermined number of next file opening requests." Petitioner asserted that PowerDesk’s file manager, which features a "viewer pane," meets these limitations. A user can select a first file for display in the viewer pane, then issue a "next file request" by using keyboard arrow keys to navigate to the next file in the directory list. Upon receiving this request, PowerDesk displays the contents of the next file in the viewer pane, thereby terminating the display of the first file. Petitioner argued this single-replacement action satisfies the "closing" limitation where the predetermined number of requests is one. PowerDesk was also shown to disclose features meeting all challenged dependent claims, such as displaying a previous file (claim 2), using a buffer (claim 3, inherent processor cache), and providing a file selector module with next/previous options (claims 6-7, the user interface itself).

Ground 2: Anticipation over QuickView - Claims 1-8 and 10-23 are anticipated under 35 U.S.C. §102(b) by QuickView.

• Prior Art Relied Upon: QuickView (QuickView Plus for Windows User’s Guide Version 8.0, 2003).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that QuickView, a file viewing software product publicly released in 2004, also anticipates all challenged claims. Similar to PowerDesk, QuickView provides a multi-pane user interface with a folder tree, a folder contents pane, and a view window. Petitioner argued that QuickView’s interface allows a user to select and view a first file, then navigate to a next file using keyboard arrows or dedicated "forward" and "back" UI options. This action constitutes receiving a next file request. The software then displays the next selected file in the view window, replacing the previously viewed file. This functionality was argued to meet all limitations of the independent claims for the same reasons as PowerDesk. The QuickView user guide also explicitly describes navigating to previous files, using system memory (buffer), and changing directories, which Petitioner mapped to the corresponding dependent claims.

Ground 3: Obviousness over PowerDesk, Sheldon, and Shneiderman - Claims 1-8 and 10-23 are obvious under 35 U.S.C. §103(a).

• Prior Art Relied Upon: PowerDesk, Sheldon (Patent 7,549,129), and Shneiderman (“Designing the User Interface,” 3rd ed. 1998).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground was presented as an alternative if the panel determined that the "closing" limitation requires more than one file to be open before another is closed. Petitioner argued PowerDesk, as the base system, teaches most claim elements. Sheldon was cited for its explicit disclosure of graphical user interface elements (e.g., next/previous buttons) for file navigation, if PowerDesk's keyboard navigation was deemed insufficient. Shneiderman, a textbook on user interface design, was introduced to teach the benefits and known trade-offs of using multiple windows for file viewing.
  • Motivation to Combine: A POSITA would be motivated to combine PowerDesk and Sheldon to provide both keyboard and graphical button-based navigation, which was a well-known technique for improving user experience. Further, a POSITA would consult a standard reference like Shneiderman when implementing a multi-file preview feature. Shneiderman teaches the benefit of multiple windows but warns of screen clutter. This would motivate a POSITA to implement PowerDesk’s viewer pane feature using multiple windows but also to limit the number of concurrently open windows to a preset number to avoid the negative effects described by Shneiderman.
  • Expectation of Success: A POSITA would expect success in combining these elements because it involved applying known UI principles (managing window clutter) to a known system (a file viewer). The motivation to manage system resources would lead to a predictable solution, such as closing the oldest (first-in, first-out) window upon reaching the preset limit of open windows, thereby satisfying the "closing" limitation.

• Additional Grounds: Petitioner asserted additional anticipation challenges against all claims based on Arrouye (Application # 2008/0033919). Petitioner also asserted other obviousness combinations, including QuickView in view of Shneiderman and Arrouye in view of Shneiderman, which relied on similar motivations to manage multiple preview windows to prevent user interface clutter.

4. Key Claim Construction Positions

• directory: Petitioner proposed that "directory" should be construed broadly to include any data structure that references the location of files stored in a computer system, consistent with its common meaning in the art.
• receiving a/the next file request: Petitioner argued this phrase should be construed to include any common user input for selecting a subsequent file in a list, such as clicking on another file with a mouse or using arrow keys on a keyboard.
• closing one or more...files based on a predetermined number of next file requests: Petitioner asserted this limitation is met by a system using a single preview window, where the "predetermined number" of requests is one. Upon receiving one "next file" request, the display of the previous file is terminated ("closed") and replaced by the new file.
• buffer: This term was argued to encompass any standard computer memory used to temporarily store data, including a processor's L2 cache, which would inherently be used to store recently accessed file data.

5. Relief Requested

• Petitioner requests the institution of an inter partes review and cancellation of claims 1-8 and 10-23 of Patent 7,921,139 as unpatentable.