Microsoft Corp v. SurfCast Inc

1. Case Identification

• Case #: IPR2022-00423
• Patent #: Patent 9,032,317
• Filed: February 10, 2022
• Petitioner(s): Microsoft Corp.
• Patent Owner(s): Surfcast, Inc.
• Challenged Claims: 1-19

2. Patent Overview

• Title: System and Method for Simultaneous Display of Multiple Information Sources
• Brief Description: The ’317 patent discloses a system for displaying a grid of graphical "tiles" on a computer screen. Each tile is associated with and displays information from a distinct information source, such as a web page or local file, and is configured to refresh its content based on specific criteria.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-19 by MSIE Kit

• Prior Art Relied Upon: MSIE Kit (a book titled Microsoft Internet Explorer Resource Kit).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that MSIE Kit, which describes Microsoft's "Active Desktop" technology from 1998, discloses every limitation of the challenged claims. The "Active Desktop Items" are graphical user interface elements ("tiles") that reside on the desktop in a default 3x2 grid. Each item is linked to an information source (e.g., a web page) and displays its content. The system includes instructions for checking whether the source content has been updated—for example, by using a conditional GET request with an "If_Modified_Since" header—and displaying the updated information in the tile. Petitioner asserted this functionality directly maps to the limitations of independent claims 1, 5, 12, and 16. Dependent claims were allegedly met by disclosures of storing configurations, updating multiple tiles, and assigning update schedules via Channel Definition Format (CDF) files.

Ground 2: Obviousness of Claims 1-19 over Excel97 in view of Bhansali

• Prior Art Relied Upon: Excel97 (a book titled Using Microsoft Excel 97) and Bhansali (Patent 6,006,239).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner contended that Excel97 teaches a system for displaying a grid of "tiles" (i.e., spreadsheet cells), where each cell can display content from a data source (a workbook file). Bhansali discloses a client-server system for allowing multiple users to simultaneously edit a shared spreadsheet file stored on a server. Bhansali’s system manages conflicting changes by checking for updates made by other users when one user attempts to save changes. Petitioner argued that combining these references teaches a client device partitioning a display into an array of tiles (Excel97 cells), with each tile associated with an information source on a server (a shared workbook file per Bhansali), and executing instructions to check for updates relative to the current content (Bhansali's conflict resolution).
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Bhansali's multi-user conflict resolution technology with Excel97's spreadsheet functionality. Excel97 already provided for shared workbooks, creating a known risk of conflicting edits. A POSITA would therefore look to known solutions like Bhansali to provide a robust mechanism for managing and resolving such conflicts, thereby improving the existing functionality of Excel97.
  • Expectation of Success: The combination represented a predictable arrangement of old elements. Integrating a known conflict-resolution system for spreadsheets (Bhansali) with a spreadsheet application (Excel97) would have been straightforward for a POSITA and would have yielded the expected result of a more reliable multi-user spreadsheet system.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including that claims 1-19 are obvious over MSIE Kit alone and in view of Jones (Patent 6,819,345), which explicitly discloses a general-purpose computer for implementing Active Desktop. Further grounds argued claims 5-11 are obvious over MSIE Kit in view of RFC2068 (the HTTP 1.1 specification), and that claims 1-19 are obvious over the combination of Excel97, Bhansali, and Perez (Patent 5,319,777), which adds functionality for automatically transmitting updates to all clients.

4. Key Claim Construction Positions

• "tile" (claims 1-19): Petitioner advocated for the construction adopted by the Board in a prior IPR on a related patent: "a graphical user interface element whose content may be refreshed and that, when selected, provides access to an information source." Petitioner argued this construction is consistent with the specification and that Patent Owner’s prior attempts to import a "persistence" limitation (i.e., that tiles are not lost when a computer is restarted) were incorrect and should be rejected.
• "update rate" (claims 5-11, 12-15, 16-19): Petitioner argued that "update rate" should be construed broadly as "criteria upon which information displayed in a tile is updated." This construction, also adopted in prior proceedings, is not limited to a recurring time interval. It can encompass event-driven criteria, such as a user saving a file or the system detecting conflicting edits, which is central to the obviousness argument over Excel97 and Bhansali.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate.
• Under §314(a) (Fintiv): Petitioner contended that the scheduled trial date in the parallel district court litigation was unrealistic and highly likely to be delayed, meaning an FWD would issue long before any trial. Petitioner also noted it had stipulated not to pursue in district court any ground raised or that reasonably could have been raised in the IPR. Finally, Petitioner asserted the merits of the petition were exceptionally strong.
• Under §325(d): Petitioner argued that while MSIE Kit was before the examiner, the examiner materially erred by failing to apply it, especially given that a prior FWD on the parent patent found MSIE Kit anticipated similar claims. Furthermore, the grounds based on Excel97, Bhansali, and other secondary references presented art and arguments that were never before the examiner, making denial under this section improper.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-19 of the ’317 patent as unpatentable.