Microsoft Corp v. SurfCast Inc

1. Case Identification

• Case #: IPR2022-00592
• Patent #: 9,363,338
• Filed: February 10, 2022
• Petitioner(s): Microsoft Corp.
• Patent Owner(s): SurfCast, Inc.
• Challenged Claims: 1-13

2. Patent Overview

• Title: System and Method for Simultaneous Display of Multiple Information Sources
• Brief Description: The ’338 patent discloses a system for displaying a grid of "tiles" on a computer screen. Each tile is associated with an "information source," like a web page or local file, and is configured to refresh its displayed content based on specified criteria or update rates.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-13 by MSIE Kit

• Prior Art Relied Upon: Microsoft Internet Explorer Resource Kit (“MSIE Kit”).
• Core Argument:
  • Prior Art Mapping: Petitioner argued that MSIE Kit, which describes Microsoft’s Active Desktop technology, disclosed every element of the challenged claims. The "Active Desktop Items" described in MSIE Kit were alleged to be the claimed "tiles." These items are arranged in a grid on the user's desktop, display information from associated web pages ("information sources" on a server), and are updated according to a user-configurable schedule. Petitioner asserted that MSIE Kit’s use of conditional HTTP GET requests (e.g., using an "If-Modified-Since" header) to check for updated web content met the claim limitations requiring a "conditional request" sent from the client to the server to determine if the information source has changed.
  • Key Aspects: This ground relied heavily on a Final Written Decision (FWD) from a prior IPR (IPR2013-00292) involving the parent ’403 patent, where the Board found similar claims anticipated by MSIE Kit.

Ground 2: Obviousness of Claims 1-13 over Excel 97 in view of Igra

• Prior Art Relied Upon: Using Microsoft Excel 97 (“Excel97”) and Igra (Patent 6,701,485).
• Core Argument:
  • Prior Art Mapping: Petitioner contended that Excel97 taught partitioning a display into a grid of spreadsheet cells, which function as the claimed "tiles." These cells display information from an underlying workbook file ("information source") that can be stored on a remote server. Igra was asserted to teach a system that allows a spreadsheet cell to be bound to an external object and to query that object for updated information on a periodic basis. The combination, Petitioner argued, disclosed a client device (running Excel) with an array of tiles (cells) that conditionally requests updates from a server (hosting the workbook file) based on a periodic update rate.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Igra’s periodic update functionality with Excel97’s multi-user collaborative environment. This would allow a user to receive timely notifications of changes made by colleagues to a shared remote spreadsheet, thereby avoiding conflicting edits and improving efficiency.
  • Expectation of Success: Combining a known method for periodic data updates (Igra) with a standard spreadsheet application (Excel97) was described as a predictable integration of known elements to achieve a known goal, with a high expectation of success.

Ground 3: Obviousness of Claims 1-13 over MSIE Kit in view of Jones

• Prior Art Relied Upon: MSIE Kit and Jones (Patent 6,819,345).

• Core Argument:

  • Prior Art Mapping: To the extent MSIE Kit was found not to explicitly disclose the claimed "electronic readable memory" or the underlying hardware of a "client device," Petitioner argued Jones remedied this deficiency. Jones disclosed a general-purpose computer system, including a processor and memory, for implementing its invention and explicitly identified Microsoft's Active Desktop (the subject of MSIE Kit) as an embodiment of that invention.
  • Motivation to Combine: A POSITA would have been directly motivated to implement the Active Desktop software taught by MSIE Kit on the conventional computer hardware described in Jones because Jones itself identified Active Desktop as a commercial embodiment of its system. The references were analogous art in the field of graphical user interfaces.
  • Expectation of Success: The combination represented a simple implementation of known software (MSIE Kit) on a standard hardware platform (Jones) for its intended purpose, yielding predictable results.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including claims 1-8 over MSIE Kit in view of RFC2068 (to further detail the conditional request protocol) and claims 9-13 over Excel97 and Igra in further view of Perez (Patent 5,319,777) to add a server-initiated update mechanism.

4. Key Claim Construction Positions

• "tile": Petitioner argued that the proper construction, consistent with the Board's finding in the prior ’403 IPR, is "a graphical user interface element whose content may be refreshed and that, when selected, provides access to an information source." Petitioner strongly contended that the term does not require "persistence" (i.e., being preserved from session to session), a limitation the Patent Owner had previously argued for in district court litigation. Petitioner argued that persistence was described only as a feature of a "preferred embodiment" in the specification and that the Patent Owner's own prosecution of a related patent explicitly added "persistent" as a limitation, demonstrating it is not inherent in the word "tile" itself.

5. Arguments Regarding Discretionary Denial

• §314(a) (Fintiv Factors): Petitioner argued against discretionary denial under Fintiv, stating that the factors weighed in favor of institution. Key arguments included:
  • The trial date in the parallel W.D. Texas litigation was scheduled for June 2023 but was statistically likely to be delayed until well after the IPR’s FWD would be due.
  • Petitioner intended to move to transfer the case to W.D. Washington, a venue that routinely stays cases pending IPR.
  • Petitioner stipulated that, if review is instituted, it would not pursue in district court any ground that was raised or reasonably could have been raised in the IPR.
• §325(d): Petitioner argued against denial under §325(d), asserting the Office committed a material error in allowing the claims. Although the examiner had the MSIE Kit reference, it was never applied in any rejection, despite the Board having previously found it anticipated nearly identical claims of a parent patent in the ’403 IPR. Furthermore, Petitioner argued that Excel97 and Igra constituted substantially different prior art that was not before the examiner and was not cumulative of the cited art.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-13 of Patent 9,363,338 as unpatentable.