Microsoft Corp v. Corel Software LLC

1. Case Identification

• Case #: IPR2016-01086
• Patent #: 8,700,996
• Filed: May 23, 2016
• Petitioner(s): Microsoft Corporation
• Challenged Claims: 1, 3, 6, 8, 13, 14, 20, 22, 24, and 28

2. Patent Overview

• Title: REAL TIME PREVIEW
• Brief Description: The ’996 patent describes a method in document processing software for providing a real-time preview of user commands. The purported invention involves identifying a command without executing it and updating the display of the active document to show the command’s effect before the user confirms the action.

3. Grounds for Unpatentability

Ground 1: Claims 1, 3, 6, 13, and 14 are obvious over CorelDRAW in view of IBM.

• Prior Art Relied Upon: CorelDRAW (Miller, CorelDRAW 7 Bible, May 1997) and IBM (IBM Technical Disclosure Bulletin, Dec. 1991).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that CorelDRAW, a graphics and text editing software, disclosed all limitations of independent claim 1 except for updating the main document display in real-time upon identifying (but not executing) a command. CorelDRAW taught displaying documents, providing formatting commands (e.g., font face, size, color), and monitoring user actions. It provided previews within dialog boxes or separate preview windows, where a user could see a command’s effect before clicking “OK” to execute it. IBM disclosed the missing element: a “Pause Preview” technique for text editors. This feature provided visual feedback directly in the active document before a command was completed, such as previewing a move/copy operation when a user hovered the cursor at an insertion point for a set duration.
  • Motivation to Combine: A POSITA would combine IBM's real-time, in-document preview functionality with CorelDRAW's existing features for several reasons. First, it would provide enhanced visual feedback, allowing users to be certain of a command's effect before final execution. Second, it would improve user experience and efficiency, a well-known goal in software design. Third, implementing the preview after a "pause" (hovering), as taught by IBM, would be a predictable way to manage computational resources and avoid unstable displays that could result from previewing every incremental mouse movement.
  • Expectation of Success: The combination involved applying a known preview technique (IBM) to a conventional document editing system (CorelDRAW) to achieve the predictable result of an improved user interface. A POSITA would have had a high expectation of success in integrating these known software concepts.

Ground 2: Claims 22 and 24 are obvious over CorelDRAW in view of CorelSuite and IBM.

• Prior Art Relied Upon: CorelDRAW, CorelSuite (Harris, Corel WordPerfect Suite 8 Bible, Jan. 1997), and IBM.
• Core Argument for this Ground:
  • Prior Art Mapping: This ground targeted claims related to processing content with tables. Petitioner asserted that CorelDRAW disclosed basic table functionality but for advanced formatting, it explicitly directed users to “consult a spreadsheet or database reference.” CorelSuite, a related software suite from the same publisher, was argued to be exactly such a reference. It taught the specific advanced table formatting commands recited in claim 22, such as vertical alignment, alternating fill modes, and diagonal lines. The combination of CorelDRAW and CorelSuite therefore disclosed the claimed table processing methods. IBM was then added to provide the real-time, in-document preview functionality, as argued in Ground 1.
  • Motivation to Combine: The primary motivation was CorelDRAW’s express suggestion to seek out a separate reference for advanced table formatting. A POSITA would have logically turned to CorelSuite, a compatible and thematically similar product, to add these desirable formatting features. The motivation to then add IBM's "Pause Preview" was the same as in Ground 1: to improve user feedback for these newly integrated table commands in a predictable manner.
  • Expectation of Success: Combining features from a suggested, compatible software suite (CorelSuite) into a base program (CorelDRAW) was a routine software development task. Applying the known previewing technique from IBM to this enhanced system would yield the expected benefits without undue experimentation.

Ground 3: Claims 8, 20, and 28 are obvious over CorelDRAW in view of IBM, Baker, and (for claim 28) CorelSuite.

• Prior Art Relied Upon: CorelDRAW, IBM, Baker (Patent 6,185,591), and CorelSuite.
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the previous combinations by adding the limitation of pushing an executed command onto an "undo stack," as required by claims 8, 20, and 28. Petitioner argued that while CorelDRAW disclosed an "Undo List," the specific implementation of pushing the newly confirmed command onto a stack was a well-known, predictable design choice. To the extent the primary combination did not explicitly teach this, Baker disclosed a traditional undo system where an "Undo Stack" records changes to a document as they are made during an edit session, which is precisely what the claims required.
  • Motivation to Combine: Implementing an "undo" feature is a fundamental and expected function in any modern document editor. A POSITA seeking to add this standard functionality to the system disclosed by CorelDRAW and IBM (and CorelSuite) would be motivated to use a conventional and well-understood technique. Baker provided a clear blueprint for such an implementation. It was a known solution to a common need, making its incorporation into the CorelDRAW system obvious.
  • Expectation of Success: Adding a standard undo stack, as taught by Baker, to a document editing application was a routine programming task. A POSITA would have readily understood how to integrate this feature and would have expected it to work predictably.

4. Key Claim Construction Positions

• "identifying": Petitioner proposed this term meant a user action that indicates a selection (e.g., mouse click, hovering, key press) but is distinct from final execution. This construction was central to distinguishing the preview step from the command confirmation step. Petitioner argued that dependent claim 3, which recites "hovering," confirms that "identifying" in the independent claim is a broader concept not limited to hovering.
• "executing one of the available commands": Petitioner construed this as the user action that confirms the acceptability of the selected command (e.g., clicking an "OK" button, pressing Enter). This was distinguished from the low-level software routines that the computer performs to update the document. This distinction was critical to arguing that the prior art showed a preview that occurred after "identifying" but before "executing."

5. Relief Requested

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