Microsoft Corp v. Koninklijke Philips NV

1. Case Identification

• Case #: IPR2018-00023
• Patent #: 6,690,387
• Filed: October 20, 2017
• Petitioner(s): Microsoft Corporation and Microsoft Mobile Inc.
• Patent Owner(s): Koninklijke Philips N.V.
• Challenged Claims: 1-12

2. Patent Overview

• Title: Touch-Screen Image Scrolling System and Method
• Brief Description: The ’387 patent discloses a system for scrolling content on a touchscreen. The system initiates scrolling based on the speed, direction, and duration of a finger touch and includes instructions for decelerating and stopping the scroll based on subsequent user input or reaching the end of the content.

3. Grounds for Unpatentability

Ground 1: Obviousness over Anwar, Narutaka, and Westerman - Claims 1, 5, 6, 7, and 9 are obvious over Anwar in view of Narutaka and Westerman.

• Prior Art Relied Upon: Anwar (Patent 7,450,114), Narutaka (Japanese Application # H06-309138), and Westerman (WO 99/38149).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the primary reference, Anwar, taught the core functionality of a touchscreen system that scrolls a document based on the velocity of a touch gesture. In Anwar, this "kinetic scrolling" continued after the user lifted their finger, with the velocity decaying at a "constant page inertia" until it reached zero or was stopped by a subsequent click. To meet limitations not expressly in Anwar, Petitioner argued Narutaka taught differentiating between a short touch (an input) and a longer touch (a scroll command) based on a preset time threshold. Further, Westerman was cited for its disclosure of terminating a scroll when the document reaches its end, thereby providing the claimed "end-of-scroll signal."
  • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSITA) would combine these references to create a more robust and intuitive user interface, which was the common goal of all three references. A POSITA would have been motivated to incorporate Narutaka’s duration-based command differentiation into Anwar’s system to prevent inadvertent scrolling from short taps. Similarly, adding Westerman's common-sense feature of stopping at the end of a document would improve the natural feel of Anwar’s scrolling system.
  • Expectation of Success: The proposed combination involved integrating well-known, complementary features into a base system. A POSITA would have had a high expectation of success as it was a predictable application of known software techniques to achieve an improved, but not surprising, result.

Ground 2: Obviousness over Anwar, Narutaka, Westerman, and Astala - Claims 2, 3, 8, 11, and 12 are obvious over the combination of Anwar, Narutaka, and Westerman in further view of Astala.

• Prior Art Relied Upon: Anwar (Patent 7,450,114), Narutaka (Japanese Application # H06-309138), Westerman (WO 99/38149), and Astala (Patent 6,943,778).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the primary combination from Ground 1 to address dependent claims requiring different actions based on multiple, distinct touch durations. For example, claim 2 recites moving the display in correspondence with finger movement for a touch lasting longer than a first preset time but less than a "second given preset minimum time." Petitioner asserted that Astala taught this concept by disclosing a system that uses "three or more different time periods of touching" to distinguish between different user inputs, such as a "short click" to select an object for dragging versus a "long click" to open it.
  • Motivation to Combine: A POSITA seeking to add more functions to the limited interface of a handheld device (like Anwar’s) would have naturally looked to solutions like Astala's. Using multiple time thresholds was a known design choice for differentiating user intent. A POSITA would combine Astala’s teaching with the base combination to distinguish between the "flick to scroll" function and a "drag to move" function, providing greater utility.
  • Expectation of Success: Implementing multiple software timers to trigger different functions based on touch duration was a straightforward programming task for a POSITA with a clear expectation of success.

Ground 3: Obviousness over Anwar, Narutaka, Westerman, and Korhonen - Claims 4 and 10 are obvious over the combination of Anwar, Narutaka, and Westerman in further view of Korhonen.

• Prior Art Relied Upon: Anwar (Patent 7,450,114), Narutaka (Japanese Application # H06-309138), Westerman (WO 99/38149), and Korhonen (European Application # 880,091A2).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addressed claims requiring scrolling to terminate when its rate decays below a predetermined non-zero value. While Anwar taught that scrolling velocity decreases until it "reaches zero velocity," Petitioner introduced Korhonen for its explicit teaching that "scrolling is stopped if the scrolling speed falls below a predetermined limit."
  • Motivation to Combine: Petitioner argued that a POSITA would recognize a practical issue with Anwar’s disclosure. If the "constant page inertia" was implemented as an exponential decay, the scroll velocity would never technically reach zero. Korhonen's use of a low-velocity cutoff was a well-known and practical engineering solution to this problem. A POSITA would have been motivated to add this feature to ensure scrolling stopped in a predictable and timely manner, improving the user experience.
  • Expectation of Success: A POSITA would have found it trivial to add a simple conditional check in the software to monitor the scrolling speed and terminate the process when it dropped below a defined threshold.

• Additional Grounds: Petitioner asserted parallel grounds that omitted Westerman from the primary combination but relied on similar arguments for combining Anwar and Narutaka.

4. Key Claim Construction Positions

• "Stopping Motion Program Instructions": Petitioner adopted the Board’s construction from a prior inter partes review (IPR) proceeding on the ’387 patent, which construed the term as "requiring sensing for each of the signals in the recited group [a stationary touch and an end-of-scroll signal] and terminating scrolling upon whichever signal is sensed first." This was a key strategic point to overcome a deficiency identified in a prior petition filed by a different party.
• "Timer Means": Petitioner argued that this term, while using "means" language, should not be treated under 35 U.S.C. §112, ¶ 6. It contended that the specification described the structure as an inherent "internal timer facility" in a microprocessor, and a POSITA would have understood the term to simply mean "a timer that provides timing capacity for a microprocessor."

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate, despite prior IPR petitions on the ’387 patent filed by Google having been denied institution. Petitioner asserted this petition was not substantially the same because it introduced new primary prior art references (Anwar and Westerman) never before considered by the Board. Furthermore, Petitioner argued it corrected specific deficiencies the Board identified in the prior petitions, particularly by fully addressing the Board's claim construction for "stopping motion program instructions" and providing a more thorough motivation to combine the asserted references.

6. Relief Requested

• Petitioner requested institution of an IPR and cancellation of claims 1-12 of the ’387 patent as unpatentable.