Microsoft Corp v. Cypress Lake Software Inc

1. Case Identification

• Case #: PGR2017-00026
• Patent #: 9,423,923
• Filed: May 23, 2017
• Petitioner(s): Microsoft Corporation
• Patent Owner(s): Cypress Lake Software, Inc.
• Challenged Claims: 4-31

2. Patent Overview

• Title: Navigation Methods, Systems, and Computer Program Products
• Brief Description: The ’923 patent discloses techniques for displaying a navigation control (e.g., a menu) to help users navigate between running computer applications. The invention aims to solve the problem of cluttered desktops by presenting the navigation control in a location corresponding to an open application window, rather than in a fixed taskbar.

3. Grounds for Unpatentability

Ground 1: Lack of Written Description - Claims 4-31 are invalid under 35 U.S.C. § 112(a)

• Prior Art Relied Upon: This ground relies on the specification of the ’923 patent itself and its priority applications.
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that independent claim 4 recites displaying a menu in a first location if a user input takes a first form, and in a second location if the input takes a second form. The core of the written description challenge is that the ’923 patent’s specification completely lacks support for this concept. Petitioner asserted the specification describes displaying a navigation control either in a fixed position relative to an application window (e.g., adjacent, in a menu bar) or at a location corresponding to a user’s input location (e.g., a pop-up menu at the cursor). However, Petitioner contended there is no disclosure that the form of the input (e.g., a mouse click vs. a keyboard hotkey) has any role in determining the menu's display location.
  • Key Aspects: Petitioner argued that this lack of written description support means the claims are not entitled to the filing dates of their priority applications. This pushes the effective filing date past the public release of Microsoft Windows 10, making the patent eligible for Post-Grant Review (PGR) and vulnerable to invalidity challenges based on Windows 10 as prior art. All challenged dependent claims were argued to be invalid for the same reason, as none adds limitations that cure the fundamental written description defect of claim 4.

Ground 2: Obviousness over Public Use/Sale - Claims 4-23 and 25-31 are obvious over Microsoft Windows 10

• Prior Art Relied Upon: The public use and sale of Microsoft's Windows 10 Operating System and devices running Windows 10 (collectively, "Windows 10").
• Core Argument for this Ground:
  • Prior Art Mapping: This ground is predicated on the success of Ground 1, which establishes an effective filing date for the challenged claims after the July 2015 public release of Windows 10. Petitioner leveraged the Patent Owner’s own infringement contentions, arguing that those contentions map every limitation of claims 4-23 and 25-31 to the "Snap Assist" feature of Windows 10. For independent claim 4, Petitioner showed how the Patent Owner alleged that dragging an application window to one side of the screen (a first "form" of input) causes the Snap Assist menu of other open applications to appear on the opposite side (a first location). Similarly, dragging the window to the opposite side (a second "form") causes the menu to appear in a second location. Petitioner argued that under the Patent Owner's own interpretation, every element of the claims was present in Windows 10 before the patent's effective filing date.
  • Motivation to Combine (for §103 grounds): This ground is based on a single prior art system (Windows 10) that allegedly contains all claim elements, making a traditional motivation to combine argument unnecessary. The motivation was inherent in the design of the existing Snap Assist feature to provide a convenient user interface for managing multiple application windows.
  • Expectation of Success (for §103 grounds): Success was not a matter of expectation but of demonstrated reality, as the functionality was already implemented and publicly available in the commercial Windows 10 product.

4. Key Claim Construction Positions

• "form of a first input" / "form of a second input": Petitioner argued this phrase should be construed as "user input of a first kind or type" / "user input of a second kind or type." This construction distinguishes the nature of the input (e.g., mouse click, gesture, keyboard press) from its location on the screen. Petitioner contended that the specification and extrinsic evidence consistently use "form" to refer to different types of inputs or input devices, not merely inputs at different screen locations. This construction is critical to the Ground 1 argument that the specification fails to disclose placing a menu in different locations based on different types of input.

5. Relief Requested

• Petitioner requested institution of Post-Grant Review and cancellation of claims 4-31 of the ’923 patent as unpatentable.