Microsoft Corporation v. Koninklijke Philips N.V.

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 describes a system for scrolling content on a touchscreen. Scrolling is initiated based on the sensed speed and direction of a user's finger swipe and continues after the finger is lifted. The scrolling motion automatically slows and terminates upon one of several conditions: a subsequent stationary touch, the scroll speed decaying to a minimum value, or an end-of-scroll signal.

3. Grounds for Unpatentability

Ground 1: Claims 1, 5-7, and 9 are obvious over Anwar, Narutaka, and Westerman.

• Prior Art Relied Upon: Anwar (Patent 7,450,114), Narutaka (Japanese Patent Application Publication No. H06-309138), and Westerman (WO 99/38149).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Anwar taught the core features of independent claim 1, including a handheld touchscreen device that initiates inertial scrolling based on the speed and direction of a user's gesture, with the scroll speed decaying over time and stopping upon a subsequent "click." To meet other limitations, Petitioner argued Narutaka taught using a time duration threshold to distinguish a scroll command from a simple tap. Furthermore, Westerman was cited for its disclosure of stopping scrolling upon the first occurrence of either a subsequent stationary touch or an end-of-document signal, fulfilling a key limitation of the challenged claims.
  • Motivation to Combine: A POSITA would combine these references to create a more robust and intuitive user interface, a shared goal of all three references. Combining Anwar's inertial scrolling with Narutaka's time-based command differentiation would resolve user input ambiguity. Adding Westerman's comprehensive stopping conditions was a logical improvement to create a predictable and complete scrolling feature, addressing a common design problem with a finite set of known solutions.
  • Expectation of Success: The combination involved integrating compatible, well-known software features for touchscreen devices. A POSITA would have expected these elements to function together predictably to achieve the improved scrolling system.

Ground 2: Claims 2, 3, 8, 11, and 12 are obvious over Anwar/Narutaka/Westerman in view of Astala.

• Prior Art Relied Upon: Anwar (Patent 7,450,114), Narutaka (Japanese Patent Application Publication No. H06-309138), Westerman (WO 99/38149), and Astala (Patent 6,943,778).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed dependent claims requiring additional functionality based on different touch durations. For claim 2, which recites instructions for a "drag" operation (moving the display with the finger) in response to a touch lasting between a first and second time threshold, Petitioner relied on Astala. Astala was argued to explicitly teach using multiple, distinct time thresholds to differentiate between various user intentions, such as a "short click" versus a "long click" to initiate different functions like dragging an object.
  • Motivation to Combine: A POSITA would be motivated to incorporate Astala's multi-threshold timing logic into the base combination to expand the device's functionality without adding physical buttons. This was a common and necessary technique for designing feature-rich interfaces on handheld devices with limited screen real estate.
  • Expectation of Success: Implementing multiple time-based triggers was a straightforward programming task and a known design pattern for user interfaces, ensuring a high expectation of success.

Ground 3: Claims 4 and 10 are obvious over Anwar/Narutaka/Westerman in view of Korhonen.

• Prior Art Relied Upon: Anwar (Patent 7,450,114), Narutaka (Japanese Patent Application Publication No. H06-309138), Westerman (WO 99/38149), and Korhonen (European Patent Application No. 880,091A2).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground added another stopping condition recited in dependent claim 4: terminating scrolling when its rate decays below a predetermined non-zero value. While Anwar taught scrolling velocity decaying until it "reaches zero," Petitioner argued Korhonen supplied the missing element by explicitly disclosing that scrolling is stopped if the "scrolling speed falls below a predetermined limit."
  • Motivation to Combine: A POSITA implementing inertial scrolling (e.g., via an exponential decay function) would recognize that the scroll speed might never technically reach absolute zero. Korhonen provided a well-known, practical solution to this technical issue. Setting a low-velocity cutoff threshold was a routine design choice to make the system feel responsive and prevent a visually imperceptible but technically persistent scroll.
  • Expectation of Success: A POSITA would have found it trivial to implement a velocity cutoff, a simple and logical modification to Anwar's decay model that would predictably enhance the system's performance and user experience.

4. Key Claim Construction Positions

• "Stopping Motion Program Instructions": Petitioner adopted the Board's construction from a prior IPR, which requires the system to be capable of sensing for both a stationary finger touch and an end-of-scroll signal, and terminating the scroll upon whichever is detected first. This construction was central to Petitioner's strategy of combining references to show both stopping conditions were known in the art.
• "Timer Means": Petitioner argued this term is not subject to means-plus-function treatment under 35 U.S.C. §112. It contended that a POSITA would understand the term to recite the definite structure of a standard timer, an inherent component in microprocessors at the time. This position allowed Petitioner to argue the limitation was met by prior art that performed time-based calculations without explicitly naming a "timer means."

5. Arguments Regarding Discretionary Denial

• Petitioner argued that institution should not be denied under 35 U.S.C. §325(d) based on previously denied petitions filed by a different party on the same ’387 patent.
• Petitioner asserted that this petition corrected deficiencies in the prior attempts by applying the Board's own subsequent claim constructions and by presenting new grounds and evidence. Specifically, it emphasized that the primary reference, Anwar, and the key secondary reference, Westerman, were not previously considered by the Board, constituting a new and distinct challenge to the patent's validity.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-12 of the ’387 patent as unpatentable under 35 U.S.C. §103.