Microsoft Corp v. SurfCast Inc

1. Case Identification

• Case #: IPR2022-00590
• Patent #: 9,043,712
• Filed: February 10, 2022
• Petitioner(s): Microsoft Corp.
• Patent Owner(s): SurfCast, Inc.
• Challenged Claims: 1-4

2. Patent Overview

• Title: System and Method for Simultaneous Display of Multiple Information Sources
• Brief Description: The ’712 patent discloses a system for displaying a grid of graphical "tiles" on a computer screen. Each tile displays content from an associated "information source," such as a web page or local file, and can be updated according to specific criteria.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-4 by MSIE Kit

• Prior Art Relied Upon: MSIE Kit (Microsoft Internet Explorer Resource Kit, a book describing Microsoft's Active Desktop technology).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that MSIE Kit’s Active Desktop technology, operable with Internet Explorer 4, disclosed every limitation of claims 1-4. The system partitioned a browser window into an "Active Channel Bar" and a main browser pane, which collectively form the claimed "array of tiles." The selectable categories in the Channel Bar (e.g., "News," "Sports") were argued to be "first tiles," and the main browser pane was argued to be the "second tile." Selecting a Channel Bar element (the first tile) caused associated web content to be displayed in the browser pane (the second tile), thus meeting the limitation that the content of the second tile depends upon the content of the first. An "update rate" was disclosed through the use of Channel Definition Format (CDF) files, which allowed publishers to schedule content refreshes.

Ground 2: Anticipation of Claims 1-4 by Excel97

• Prior Art Relied Upon: Excel97 (a book titled "Using Microsoft Excel 97").
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that a standard spreadsheet in Excel97 met all claim limitations. Individual spreadsheet cells were equated to "tiles," and a group of cells constituted an "array of tiles." The "information source" for each cell was the workbook file itself, or portions thereof, storing the cell's content. The key dependency limitation was met by using formulas; for example, if cell D5 ("second tile") contained a formula referencing cell C5 ("first tile"), its content depended on cell C5. The "update rate" was the criteria for recalculation, such as when the data in a referenced cell (C5) was changed, which automatically updated the value displayed in the dependent cell (D5).

Ground 3: Claims 1-4 are obvious over MSIE Kit in view of Miklos

• Prior Art Relied Upon: MSIE Kit and Miklos (Patent 5,226,117).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground was presented to cure any perceived deficiency in MSIE Kit’s disclosure of the claim limitations requiring one tile’s content to depend on and update based on another’s. Miklos disclosed a technique for automatically and simultaneously updating hierarchically related windows, where updates to a parent window trigger updates in all related child windows.
  • Motivation to Combine: Petitioner contended a POSITA would combine Miklos's automatic update technique with MSIE Kit's interface to improve functionality. A POSITA would have seen the Active Channel Bar element as a "parent" and the browser pane as a "child" driven by it, and would have been motivated to ensure information consistency across these related graphical elements. This would ensure the main browser pane always displayed the most up-to-date information corresponding to the selected channel element.
  • Expectation of Success: The combination involved applying a known technique for updating related windows to another system of related graphical elements, a predictable integration that would have yielded the expected result of consistent, updated information.

• Additional Grounds: Petitioner asserted additional challenges including that claims 1-4 are obvious over MSIE Kit in view of Jones (Patent 6,819,345) to supply a computer system with memory, and that claims 1-4 are obvious over Excel97 in view of Bhansali (Patent 6,006,239) or Igra (Patent 6,701,485) to supply a computer system or a periodic update rate, respectively.

4. Key Claim Construction Positions

• "tile": Petitioner argued that the central claim term "tile" should not be construed to require "persistence" (i.e., that tiles are not lost when a computer is restarted). Petitioner asserted that the Patent Owner had previously argued for this limitation in related litigation concerning the parent ’403 patent. However, Petitioner noted that in the IPR for that patent, the Board rejected this limitation, a decision summarily affirmed by the Federal Circuit. Petitioner contended that persistence is a feature of a preferred embodiment, not a required element of the claim, and that the prior art meets either construction regardless.

5. Arguments Regarding Discretionary Denial

• §314(a) (Fintiv): Petitioner argued against discretionary denial based on a parallel case in the Western District of Texas. It asserted that the scheduled trial date was unrealistic and highly likely to occur well after the FWD deadline in this proceeding. Petitioner further stipulated that, if the IPR were instituted, it would not pursue in district court any invalidity ground that was raised or could have been reasonably raised in the IPR. Finally, Petitioner argued the merits were exceptionally strong, citing the Board’s prior decision in an IPR on a parent patent that found substantially similar claims unpatentable over MSIE Kit.
• §325(d): Petitioner argued against denial under §325(d), asserting that the examiner committed a material error. Although MSIE Kit was before the examiner during prosecution of the ’712 patent, the examiner never used it in a rejection, despite the Board having already found it anticipated claims of the parent patent. Furthermore, Petitioner noted that the other primary reference, Excel97, and its associated secondary references were not before the examiner at all, constituting new art and arguments.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-4 of Patent 9,043,712 as unpatentable.