PTAB

IPR2016-01085

Microsoft Corp v. Corel Software LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Real Time Preview
  • Brief Description: The ’996 patent describes methods in software applications, such as word processors or graphics editors, for providing a real-time preview of formatting commands. The disclosed invention updates the display to show the effect of a user-selected command on an active document before the user formally executes the command, allowing the user to see the result of an operation without permanently applying it.

3. Grounds for Unpatentability

Ground 1: Obviousness over QuarkXPress Publications - Claims 1, 13, 14, and 22 are obvious over QuarkXPress1 in view of QuarkXPress2.

  • Prior Art Relied Upon: QuarkXPress1 (QuarkXPress Reference Manual (1993)), QuarkXPress2 (Using QuarkXPress (1993)).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of QuarkXPress1 and QuarkXPress2, which describe the same desktop publishing software, teaches every limitation of the independent claims. QuarkXPress1 disclosed providing a display of available commands (e.g., font, alignment, color) and monitoring user actions. It taught multiple preview modes, such as clicking an "Apply" button in a dialog box to see a formatting change without clicking "OK" to finalize it, and a "Color Drag" feature where hovering a color swatch over an item temporarily changes the item’s color. Petitioner contended that QuarkXPress2, which QuarkXPress1 explicitly referenced for detailed instructions, supplemented these disclosures by showing formatted text and objects being displayed and modified, confirming the system's capabilities.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the teachings of QuarkXPress1 and QuarkXPress2 because they document the same software product. QuarkXPress1 itself directed users to QuarkXPress2 for further detail, making the combination a natural and expected step for understanding the system's full functionality. The motivation was to implement the known benefit of real-time previews to improve user experience.
    • Expectation of Success: A POSITA would have had a very high expectation of success, as the combination merely involved using two complementary manuals to understand the features of a single, existing commercial software product.

Ground 2: Obviousness over QuarkXPress and IBM - Claims 3, 6, and 24 are obvious over QuarkXPress1 in view of QuarkXPress2 and IBM.

  • Prior Art Relied Upon: QuarkXPress1, QuarkXPress2, and IBM (IBM Technical Disclosure Bulletin (Dec. 1991)).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground added the IBM reference to address dependent claims requiring preview on "hovering" (claims 3 and 24) and receiving user actions from an operating system (claim 6). While QuarkXPress taught highlighting menu items on hover, IBM explicitly disclosed a "Pause Preview" function where pausing a cursor over an item for a threshold time triggers a preview before final execution (e.g., before mouse button release). For claim 6, IBM taught that mouse events for its preview feature are sent from the computer's operating system (OS/2 Presentation Manager) to the application, disclosing the claimed interaction.
    • Motivation to Combine: A POSITA would combine IBM's teachings with the QuarkXPress system to enhance the existing preview functionality. Implementing a time-delayed hover preview would prevent confusing, unstable displays that could result from previewing every slight mouse movement, thereby improving usability and conserving computational resources. Receiving input from the operating system was the conventional and necessary way to implement any mouse-based feature.

Ground 3: Obviousness over QuarkXPress, IBM, and Baker - Claim 8 is obvious over QuarkXPress1 in view of QuarkXPress2, IBM, and Baker.

  • Prior Art Relied Upon: QuarkXPress1, QuarkXPress2, IBM, and Baker (Patent 6,185,591).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground challenged claim 8, which added the limitation of "pushing the one identified command onto an undo stack" after the user confirms its execution. Petitioner argued that while QuarkXPress1 and IBM disclosed basic undo concepts, Baker explicitly taught a modern "undo stack" comprising a linked list of records created as changes are made to a document. This provided a clear blueprint for the claimed feature.
    • Motivation to Combine: A POSITA would combine Baker's undo stack with the QuarkXPress system as a predictable improvement to its basic undo function. Implementing a robust undo/redo stack was a well-known technique to enhance document editing software, and Baker provided a standard method for doing so. Applying this known technique to the known QuarkXPress system would yield predictable results.

  • Additional Grounds: Petitioner asserted a similar obviousness challenge for claims 20 and 28 over QuarkXPress1, QuarkXPress2, and Baker, relying on the same motivation to add Baker's undo stack functionality to the base methods of claims 14 and 22.

4. Key Claim Construction Positions

  • "identifying": Petitioner argued this term should be construed broadly as "a user action that indicates a selection," not limited to merely hovering. This construction was supported by the patent's specification listing multiple selection methods (clicking, keyboard shortcuts) and by the doctrine of claim differentiation, as dependent claim 3 explicitly recited hovering, implying the parent claim was broader.
  • "executing": Petitioner proposed this term means "a user action that confirms the acceptability of the selected command," such as clicking an "OK" icon. This construction distinguished the final user confirmation from the underlying software process of updating the display for a preview, which was central to the "identifying but not executing" limitation in the claims.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 3, 6, 8, 13, 14, 20, 22, 24, and 28 of the ’996 patent as unpatentable.