Microsoft Corp v. SurfCast Inc

1. Case Identification

• Case #: IPR2022-00591
• Patent #: 9,946,434
• Filed: February 10, 2022
• Petitioner(s): Microsoft Corp.
• Patent Owner(s): Surfcast, Inc.
• Challenged Claims: 1-24

2. Patent Overview

• Title: System and Method for Simultaneous Display of Multiple Information Sources
• Brief Description: The ’434 patent discloses a system for displaying a grid of graphical "tiles" on a computer screen. Each tile is associated with an information source, such as a web page or file, and can be configured to update its displayed content based on specific criteria.

3. Grounds for Unpatentability

Ground 1: Claims 1-24 are Anticipated by MSIE Kit

• Prior Art Relied Upon: Microsoft Internet Explorer Resource Kit ("MSIE Kit") (a 1998 book describing Microsoft's Active Desktop technology).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that MSIE Kit, which describes the "Active Desktop" feature available with Internet Explorer 4, discloses every limitation of the challenged claims. The "Active Desktop Items" described in MSIE Kit are alleged to be the claimed "tiles." MSIE Kit is asserted to disclose arranging these items in a default 3x2 non-overlapping "grid" that is "persistent" because the items are saved to the desktop and preserved between sessions. Petitioner contended that each item can be assigned its own update schedule (a "refresh rate"), and the system manages these updates simultaneously. Furthermore, clicking an item launches an associated application (a "first selection operation"), and right-clicking provides a menu to adjust properties (a "second selection operation").
  • Key Aspects: This argument heavily relies on the Board's Final Written Decision (FWD) in a prior IPR (IPR2013-00292) involving the parent ’403 patent. In that proceeding, the Board found that MSIE Kit anticipated nearly identical claims, a decision affirmed by the Federal Circuit.

Ground 2: Claims 1-24 are Obvious over Excel97

• Prior Art Relied Upon: Using Microsoft Excel 97 ("Excel97") (a 1997 reference guide for the Excel 97 software program).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that a standard Excel 97 worksheet constitutes a "grid of non-overlapping tiles," where each spreadsheet cell is a "tile." These grids are "persistent" when the worksheet is saved. Petitioner argued that different cells can be associated with different application programs via hyperlinks; for example, one cell could link to a website (launching a browser) and another could link to a Word document (launching a word processor). The "refresh rate" limitation was met by the different criteria and user actions required to update the content of different cells. A "first selection operation" is clicking a hyperlink, which calls the associated application. A "second selection operation" is right-clicking a cell to bring up a shortcut menu with options like "Format Cells" to adjust cell properties.
  • Motivation to Combine: Although this is presented as a single-reference ground, the argument relies on combining various known features within the Excel97 program. Petitioner argued a person of ordinary skill in the art (POSITA) would be motivated to combine these features because they are all part of the same software program and were designed to work together to enhance user productivity, such as by embedding links to source documents within a spreadsheet.
  • Expectation of Success: A POSITA would have a high expectation of success as it involved using known features of a single, commercially available software product as intended.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including that claims 1-24 are obvious over MSIE Kit alone (as an alternative to anticipation). Further grounds argued that claims 1-24 are obvious over MSIE Kit in view of Jones (Patent 6,819,345) and over Excel97 in view of Bhansali (Patent 6,006,239), with Jones and Bhansali primarily being cited to supply explicit disclosures of computer hardware elements.

4. Key Claim Construction Positions

• "tile": Petitioner advocated for the construction adopted by the Board in the IPR of the parent ’403 patent: "a graphical user interface element whose content may be refreshed and that, when selected, provides access to an information source." This broad construction is central to Petitioner's argument that both "Active Desktop Items" from MSIE Kit and spreadsheet cells from Excel97 qualify as "tiles."
• "refresh rate": Citing the same prior IPR and related district court litigation, Petitioner argued "refresh rate" should be construed broadly as "criteria upon which information displayed in a tile is updated." This construction avoids limiting the term to a recurring time interval and allows it to cover event-based triggers, such as a user saving a file or manually editing a cell, which is crucial for the Excel97 obviousness ground.
• "simultaneously update": Petitioner argued this term means "the ongoing processes of updating information presented in the two tiles occur at the same time, even if the updating of the two tiles occurs at different times." This construction, urged by the Patent Owner in prior litigation, allows the underlying software processes that monitor for updates to run concurrently, even if the visible content of the tiles changes at different moments.

5. Arguments Regarding Discretionary Denial

• Petitioner presented extensive arguments that discretionary denial under either 35 U.S.C. §314(a) or §325(d) would be improper.
• Against Fintiv Denial (§314(a)): Petitioner argued the scheduled trial date in a parallel Texas litigation is unrealistic and likely to be delayed past the FWD deadline. It also noted it filed the IPR petition expeditiously (about four months after the complaint was filed) and stipulated that it would not pursue any ground in district court that was raised or reasonably could have been raised in the IPR.
• Against Same or Substantially Same Art/Arguments Denial (§325(d)): Petitioner contended that while the examiner had the MSIE Kit reference during prosecution of the ’434 patent, the examiner never used it in any rejection, which constituted a material error. This error was allegedly compounded by the fact that the FWD from the parent patent's IPR, which found claims anticipated by MSIE Kit, was also before the examiner. The Excel97 reference was not before the examiner at all.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-24 of the ’434 patent as unpatentable.