IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`MICROSOFT CORPORATION
`Petitioner
`
`v.
`
`CYPRESS LAKE SOFTWARE, INC.
`Patent Owner.
`
`____________________
`
`Case: PGR2017-_______
`U.S. Patent No. 9,423,954
`
`____________________
`
`PETITION FOR POST-GRANT REVIEW
`
`
`
`
`
`135469031.5
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`TABLE OF CONTENTS
`
`
`Page
`
`
`Introduction................................................................................................... 1
`I.
`II. Mandatory Notices (37 C.F.R. § 42.8) ......................................................... 6
`A.
`Real Parties-in-Interest ....................................................................... 6
`B.
`Related Matters .................................................................................. 8
`C. Notice of Counsel and Service Information ....................................... 9
`III. Eligibility for Post-Grant Review ............................................................... 10
`IV. Grounds for Standing (37 C.F.R. § 42.204(a)) ........................................... 12
`V.
`Identification of Challenged Claims and Specific Statutory Grounds
`(37 C.F.R. § 42.204(b)(1)-(2)) .................................................................... 12
`VI. Background and Summary of the ’954 Patent ............................................ 13
`A.
`Summary of the ’954 Patent Written Description ............................ 13
`B.
`Summary of Prosecution History ..................................................... 19
`C.
`Summary of Related Matters ........................................................... 20
`VII. Grounds of Unpatentability (37 C.F.R. § 42.204(b)(4)-(5)) ...................... 22
`A. Ground 1: Claims 1-20 Are Invalid Under 35 U.S.C. § 112(a)
`For Lack Of Written Description ..................................................... 23
`1. Written Description Legal Standard ...................................... 23
`2.
`Independent claims 1, 14, and 19 Lack Written
`Description Support in the ’954 Patent. ................................. 25
`a.
`The ’954 Patent Fails to Disclose Presenting a
`Second Window Adjacent to a First Window In
`Response to User Input. ............................................... 27
`Because the Written Description Must Support
`the Entire Scope of the Claim, Section 112 is Not
`Satisfied If “User Input” is Interpreted to Include,
`But Not Be Limited To, Binding Information. ............ 31
`The Written Description Requirement is Not
`Satisfied If Cypress Lake’s Claims Are Merely
`Obvious Over the Specification................................... 37
`
`
`b.
`
`c.
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`TABLE OF CONTENTS
`(continued)
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`Page
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`
`
`d.
`
`The ’954 Patent Fails to Disclose the Claimed
`Sequences of User Inputs and Corresponding
`Modifications to Application Windows. ..................... 39
`Dependent claims 2-13, 15-18, and 20 .................................. 43
`3.
`B. Ground 2: Claims 1-2, 4-6, 8, 10-15, and 16-20 Are Invalid
`Under 35 U.S.C. § 103 In View Of The Public Use and Sale of
`Microsoft’s Windows 10 Operating System and Devices
`Running Windows 10. ...................................................................... 44
`VIII. Conclusion .................................................................................................. 74
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`EXHIBIT LIST
`
`
`Ex. 1001 U.S. Patent No. 9,423,954 (“the ’954 patent”)
`
`Ex. 1002 Declaration of Loren Terveen, Ph.D. (“Terveen Dec.”)
`
`Ex. 1003
`
`Ex. 1004
`
`Bae Sys. Info. and Elec. Sys. Integration, Inc. v. Cheetah Omni, LLC,
`IPR2013-00175, Paper 15 (July 3, 2013)
`
`Brinkmann Corp. v. A&J Mfg., LLC, IPR2015-00056, Paper 10
`(March 23, 2015)
`
`Ex. 1005 US Endodontics, LLC v. Gold Standard Instruments, LLC,
`PGR2015-00019, Paper 54 (Dec. 28, 2016)
`
`Ex. 1006 U.S. Pat. No. 8,780,130 (“the ’130 patent”)
`
`Ex. 1007
`
`Excerpts from File History of U.S. Patent No. 9,423,954
`
`Ex. 1008 Declaration of Nils Sundelin (“Sundelin Dec.”)
`
`Ex. 1009
`
`Infringement Claim Chart for the ’954 Patent served in Cypress Lake
`Software, Inc. v. Acer America Corp., no. 6:16-cv-01246 (E.D. Tex.)
`
`Ex. 1010 Video file illustrating Windows 10 functionality accused for claim 1
`in Ex. 1009, Cypress Lake’s Infringement Claim Chart for the ’954
`Patent
`
`Ex. 1011 Video file illustrating Windows 10 functionality accused for claim
`14 in Ex. 1009, Cypress Lake’s Infringement Claim Chart for the
`’954 Patent
`
`Ex. 1012 Video file illustrating Windows 10 functionality accused for claim
`19 in Ex. 1009, Cypress Lake’s Infringement Claim Chart for the
`’954 Patent
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`Ex. 1013
`
`[RESERVED]
`
`Ex. 1014
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`[RESERVED]
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`Ex. 1015 U.S. Patent Application No. 14/331,096 (filed Jul. 14, 2014)
`
`Ex. 1016 U.S. Patent Application No. 12/956,008 (filed Nov. 30, 2010)
`
`Ex. 1017
`
`[RESERVED]
`
`Ex. 1018
`
`[RESERVED]
`
`Ex. 1019
`
`[RESERVED]
`
`Ex. 1020 Microsoft Windows 1.0 Operating Environment User’s Guide (1985)
`
`Ex. 1021 Microsoft Windows 7 Product Guide — “Welcome to Windows 7”
`(2009)
`
`Ex. 1022 Microsoft Windows 8 Product Guide — “Meet the new Windows”
`(2009)
`
`Ex. 1023
`
`Ex. 1024
`
`“Windows 8 Demo (All Things Digital, D9)” (June 1, 2011) — PDF
`of website video page on YouTube.com
`
`“Windows 8 Demo (All Things Digital, D9)” (June 1, 2011) –
`excerpt (3:08 to 3:47) of video from webpage in Ex. 1022.
`
`Ex. 1025 Microsoft Windows 8.1 Product Guide (2014)
`
`Ex. 1026
`
`Ex. 1027
`
`“Windows 8.1 Tips - Using the Improved Split Screen Functions” —
`PDF of website video page on YouTube.com
`
`“Windows 8.1 Tips - Using the Improved Split Screen Functions” —
`excerpt (3:08 to 3:39) of video from webpage in Ex. 1022
`
`Ex. 1028 Windows 10 Product Guide — “Windows Technical Preview Quick
`Guide”
`
`PC World, “Hands-on with Microsoft’s new Windows 10: UI
`changes that look great at first blush” (Sept. 30, 2014), available at
`http://www.pcworld.com/article/2689230/hands-on-with-microsofts-
`new-windows-10-ui-changes-that-look-great-at-first-blush.html
`
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`Ex. 1029
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`Ex. 1030 Microsoft, “Announcing Windows 10 Insider Preview Build 10547”
`EX. 1030 Microsoft, “Announcing Windows 10 Insider Preview Build 10547”
`(September 18, 2015), available at
`(September 18, 2015), available at
`https://blogs.windows.com/windowsexperience/2015/09/18/announc
`httpszllblo gs .windows .com/windowsexperience/20 1 5/09/ 1 8/announc
`ing-windows-10-insider-preview-build-
`ing-windows-10-insider-preView-build-
`10547/#MpR8wMDm5kWXTq2v.97
`10547/#MpR8wMDm5kWXTg 2V .97
`
`
`
`Ex. 1031 MSPoweruser, “Microsoft is slowly bringing back Windows 8’s
`EX. 1031 MSPoweruser, “Microsoft is slowly bringing back Windows 8’s
`snapping features to Windows 10” (September 19, 2015), available
`snapping features to Windows 10” (September 19, 2015), available
`at
`https://mspoweruser.com/microsoft-is-slowly-bringing-back-
`at
`https://mspoweruser.com/microsoft—is-slowly-bringing-back—
`windows-8s-snapping-features-to-windows-10/
`windows-8s-snapping-features-to-windows-10/
`
`Ex. 1032 Brad Myers, “A Taxonomy of Window Manager User Interfaces”
`EX. 1032
`Brad Myers, “A Taxonomy of Window Manager User Interfaces”
`(Sept. 1988), from IEEE Computer Graphics and Applications,
`(Sept. 1988), from IEEE Computer Graphics and Applications,
`
`Volume 8, Issue 5 (pp. 65 to 84)
`Volume 8, Issue 5 (pp. 65 to 84)
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`I.
`
`Introduction
`
`
`
`Petition for Post-Grant Review of
`U.S. Patent No. 9,423,954
`
`
`
`
`Pursuant to 35 U.S.C. 321 and 37 C.F.R. § 42.200, Petitioner Microsoft
`
`Corporation (“Microsoft”) petitions for post-grant review of claims 1-20 of U.S.
`
`Patent 9,423,954 (Ex. 1001, “the ’954 patent”). Claims 1-20 lack adequate
`
`written description support, in the ’954 patent itself as well as in the applications
`
`to which the ’954 patent claims priority. Because the claims are not supported by
`
`the written description, they are not entitled to the benefit of the filing dates of the
`
`priority applications. Thus, the ’954 patent is eligible for post-grant review for
`
`the same reason that its claims are invalid under 35 U.S.C. § 112(a).
`
`The ’954 patent specification relates to techniques for using encoded
`
`“binding information” that specifies a mapping between visual components of
`
`separate applications. The patent explains that although computer users often
`
`work with multiple applications at the same time, these applications may not be
`
`integrated with each other. As a result, a user may have to spend a significant
`
`amount of time managing the user interfaces of the various applications to access
`
`information.
`
`To address this problem, the patent discloses including encoded “binding
`
`information”—which the patent states is encoded in XML or any other suitable
`
`encoded representation—specifies a mapping between visual components of
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`
`
`Petition for Post-Grant Review of
`U.S. Patent No. 9,423,954
`
`
`
`
`separate applications. Ex. 1002 (“Terveen Dec.”) ¶ 6. The patent provides an
`
`
`
`example of this binding information encoded with <attribute-binding> XML tags:
`
`
`
`See ’954 patent at Figure 7 (highlighting added). Every disclosed embodiment
`
`requires this encoded binding or mapping information. Terveen Dec. ¶ 6.
`
`When the system detects an application window, it can identify encoded
`
`binding information that specifies a way in which the first window should be
`
`mapped to a second window. Id. ¶ 32. For example, the patent explains, a
`
`programmer can include <attribute-binding> XML tags for first and second
`
`applications that cause the first application window to be automatically enlarged
`
`when the second application window is reduced in size. Id. This encoded
`
`binding information removes the need for a user to manually manage the various
`
`application windows.
`
`While the written descriptions of the ’954 patent and the asserted priority
`
`applications are essentially the same, their respective claims differ markedly.
`
`Id. ¶ 7. The earliest priority application (filed in November 2010) recites claims
`
`directed to “mapping” techniques, the binding information described in the
`
`specification. However, the claims in the ’954 patent do not mention binding or
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`Petition for Post-Grant Review of
`U.S. Patent No. 9,423,954
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`
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`“mapping” information at all. Id. Instead, the ’954 patent claims relate to a
`
`
`
`different technique entirely—they recite that user input causes application
`
`windows to be displayed in certain configurations. Id. The claims of the ’954
`
`patent are entirely divorced from the concept of encoded binding information that
`
`is so central to the specification and earlier applications. Id.
`
`These “user input” claims lack support in the written description. The
`
`written description relates exclusively to programmed binding information—code
`
`that specifies how visual components of different applications are “mapped” to
`
`each other, without the need for specific user input. Id. ¶ 6. The ’954 patent does
`
`not disclose using user
`
`inputs
`
`to present application windows
`
`in
`
`the
`
`configurations recited by the claims without using encoded binding information.
`
`Id. ¶ 8. For example, the ’954 patent does not disclose manually repositioning a
`
`reduced-size application window by grabbing the reduced-size window, enlarging
`
`it, and dragging it to be adjacent to another application window—but that
`
`scenario, which does not require binding information, would be covered by the
`
`claims. The encoded binding information disclosed by the written description is
`
`not inherent in user input; indeed, binding information and user input are not even
`
`related concepts. Id. ¶ 80. The fact that the ’954 patent claims can be satisfied
`
`without any reliance on binding information is a straightforward example of the
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`
`
`Petition for Post-Grant Review of
`U.S. Patent No. 9,423,954
`
`
`
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`manner in which the claim scope is different—or, at a minimum, far broader—
`
`
`
`than what the written description discloses. Id. ¶ 83.
`
`Moving windows through “user input” is not the invention of the ’954
`
`patent. Instead, the patent’s alleged novelty is in using encoded binding
`
`information about applications to detect a change to one window and
`
`automatically cause a predetermined change in a second window. Simply, there
`
`is nothing in the written description of the ’954 patent that would “clearly allow
`
`persons of ordinary skill in the art to recognize that the inventor invented what is
`
`claimed,” given that the claims can be satisfied without any use of binding
`
`information. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed.
`
`Cir. 2010) (en banc).
`
`Although the gulf between the user input claims and the disclosed binding
`
`information may well have been obvious, it is well settled that “a description that
`
`merely renders the invention obvious does not satisfy the requirement” of section
`
`112. Id. at 1352. And to the extent “user input” is interpreted in an overly broad
`
`manner, to include use of encoded binding information that is not input by a user,
`
`the claims still fail: they are not limited to binding information, and therefore the
`
`written description does not support the full scope of the claims. LizardTech, Inc.
`
`v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005).
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`Cypress Lake’s reason for abandoning the idea of encoded binding
`
`Petition for Post-Grant Review of
`U.S. Patent No. 9,423,954
`
`
`
`
`information was straightforward: the broad, user input-focused claims of the ’954
`
`patent appear to have been drafted to directly target Windows 10 functionality.
`
`Microsoft released its Windows 10 operating system in July 2015. Windows 10
`
`includes a “Snap Assist” feature that allows a user to “snap” a window to either
`
`side of the screen.1 Three months after Windows 10 launched, in October 2015,
`
`Patent Owner Cypress Lake filed the continuation application that would issue as
`
`the ’954 patent with claims that omitted any mention of “mapping” or binding
`
`information. Then, just two months after the patent issued, Cypress Lake sued
`
`various Windows 10 device manufacturers, alleging that the Snap Assist feature
`
`of Windows 10 infringes the ’954 patent.
`
`The Federal Circuit has explained that “[w]hile it is legitimate to amend
`
`claims or add claims to a patent application purposefully to encompass devices or
`
`processes of others, there must be support for such amendments or additions in
`
`the originally filed application.” PIN/NIP, Inc. v. Platte Chemical Co., 304 F.3d
`
`
`1 Although Snap Assist was newly released with Windows 10, it built upon
`
`decades of innovation and design contained in earlier versions of Microsoft’s
`
`Windows operating systems.
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`
`
`Petition for Post-Grant Review of
`U.S. Patent No. 9,423,954
`
`
`
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`1235, 1247 (Fed. Cir. 2002). Lacking written description support, the claims of
`
`
`
`the ’954 patent are unpatentable and should be cancelled.
`
`This lack of written description support also renders the ’954 patent
`
`eligible for post-grant review, because the claims are not entitled to the filing
`
`dates of their priority applications. Even further, because the effective filing date
`
`of the ’954 patent post-dates the public release of Windows 10, applying Cypress
`
`Lake’s own characterization of its claims renders the claims obvious over the
`
`public use and sale of Windows 10 and devices that run Windows 10. As
`
`demonstrated by the evidence in and supporting this petition, claims 1-20 are
`
`unpatentable under 35 U.S.C. §§ 112 and 103.
`
`II. Mandatory Notices (37 C.F.R. § 42.8)
`A. Real Parties-in-Interest
`Although Cypress Lake has sued certain Microsoft customers that make
`
`Windows 10 devices (see cases listed below), the real party in interest for this
`
`petition is Petitioner Microsoft Corporation.
`
`Microsoft is the only real party in interest here because it alone has
`
`directed, funded, and developed the strategy for this petition. Microsoft’s
`
`customers are not real parties in interest because they have not directed, funded,
`
`or otherwise participated in the strategy for this petition. See Office Patent Trial
`
`Practice Guide, 77 FR 48756, 48759-60 (Aug. 14, 2012) (“A common
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`Petition for Post-Grant Review of
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`
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`consideration [in determining whether a non-party is a real party in interest] is
`
`
`
`whether the non-party exercised or could have exercised control over a party’s
`
`participation in a proceeding.”).
`
`Petitioner’s manufacturer customers are not real parties in interest merely
`
`because those customers may benefit from the result of this proceeding. The
`
`customers do not exercise control over, and are not funding, this petition or the
`
`efforts behind it. See, e.g., Bae Sys. Info. and Elec. Sys. Integration, Inc. v.
`
`Cheetah Omni, LLC, IPR2013-00175, Paper 15 at 5 (July 3, 2013) (“Cheetah’s
`
`only argument is that BAE Systems and the United States were in ‘privity of
`
`contract’ based on the fact that the United States was a customer of BAE
`
`Systems. … Cheetah neither alleges nor presents sufficient and credible evidence
`
`that the United States exercises control over BAE Systems’ participation in this
`
`matter or that the United States is responsible for funding and directing the
`
`proceeding.”) (Ex. 1003); Office Patent Trial Practice Guide, 77 FR at 48760 (“If
`
`Party A is part of a Joint Defense Group with Party B in a patent infringement
`
`suit, and Party B files a PGR petition, Party A is not a “real party-in-interest” or a
`
`“privy” for the purposes of the PGR petition based solely on its participation in
`
`that Group.”); Brinkmann Corp. v. A&J Mfg., LLC, IPR2015-00056, Paper 10 at 8
`
`(March 23, 2015) (rejecting argument that parties were real parties in interest
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`Petition for Post-Grant Review of
`U.S. Patent No. 9,423,954
`
`
`
`
`when they coordinated in litigation and jointly hired the same expert for use in
`
`
`
`multiple proceedings) (Ex. 1004).
`
`In an abundance of caution and in the interest of full disclosure, Microsoft
`
`identifies the following companies that are involved in litigation concerning the
`
`’954 patent based on allegations that the companies’ products infringe the patent
`
`by running Microsoft’s Windows 10 operating system software: Acer America
`
`Corporation; ASUS Computer International; Dell Inc.; HP, Inc.; LG Electronics
`
`U.S.A., Inc.; Panasonic Corporation of North America; Samsung Electronics
`
`America, Inc.; Toshiba America, Inc.; and Fujitsu America, Inc.
`
`B. Related Matters
`Cypress Lake has asserted the ’954 patent in the following litigations,
`
`which are currently pending in the United States District Court for the Eastern
`
`District of Texas. These litigations may be affected by a decision in this matter.
`
`Case Caption
`Cypress Lake Software, Inc. v. Dell, Inc.
`Cypress Lake Software, Inc. v. Acer America
`Corp.
`Cypress Lake Software, Inc. v. ASUS
`Computer Int’l
`Cypress Lake Software, Inc. v. HP Inc.
`Cypress Lake Software, Inc. v. LG Elecs.
`U.S.A., Inc.
`Cypress Lake Software, Inc. v. Panasonic
`Corp. of North America
`
`Date Filed
`Number
`6:16-cv-01245 Oct. 28, 2016
`6:16-cv-01246 Oct. 28, 2016
`
`6:16-cv-01247 Oct. 28, 2016
`
`6:16-cv-01249 Oct. 28, 2016
`6:16-cv-01250 Oct. 28, 2016
`
`6:16-cv-01251 Oct. 28, 2016
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`Case Caption
`Cypress Lake Software, Inc. v. Samsung
`C&T America, Inc.
`Cypress Lake Software, Inc. v. Toshiba
`America, Inc.
`Cypress Lake Software, Inc. v. Fujitsu
`America, Inc.
`
`Petition for Post-Grant Review of
`U.S. Patent No. 9,423,954
`
`
`Date Filed
`Number
`6:16-cv-01252 Oct. 28, 2016
`
`6:16-cv-01254 Oct. 28, 2016
`
`6:17-cv-00299 May 12, 2017
`
`
`
`Cypress Lake is asserting a number of additional patents against the
`
`defendants in the above litigations, including U.S. Pat. Nos. 9,423,923 and
`
`9,423,938. Microsoft is filing separate post-grant review petitions on the ’923
`
`and ’938 patents.
`
`C. Notice of Counsel and Service Information
`Pursuant to 37 C.F.R. §§ 42.8(b)(3), 42.8(b)(4) and 42.10(a), Microsoft
`
`appoints CHRISTINA J. MCCULLOUGH (Reg. No. 58,720) as lead counsel and
`
`CHAD S. CAMPBELL (pro hac vice to be requested upon authorization) as
`
`back-up counsel. Both can be reached by mail at Perkins Coie LLP, 1201 Third
`
`Avenue, Suite 4900, Seattle, Washington 98101-3099; by phone at (206) 359-
`
`8000; by fax at (206) 359-9000; and at the following email for service and all
`
`communications:
`
`MSFT-CypressLake@perkinscoie.com
`
`Microsoft consents to electronic service. Microsoft has executed and is
`
`concurrently filing a Power of Attorney appointing the above-named counsel.
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`Microsoft requests authorization to file a motion for Chad S. Campbell to
`
`Petition for Post-Grant Review of
`U.S. Patent No. 9,423,954
`
`
`
`
`appear pro hac vice. Mr. Campbell is lead counsel for the defendants in the co-
`
`pending district court litigations, and Microsoft intends to file a motion once
`
`authorization is granted.
`
`III. Eligibility for Post-Grant Review
`The post-grant review provisions of the Leahy-Smith America Invents Act,
`
`Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”) apply to any patent containing
`
`claims with an effective filing date after March 16, 2013. See AIA §§ 3(n)(1) and
`
`6(f)(2)(A). A claim may be entitled to an effective filing date based on an earlier-
`
`filed patent application only if the earlier application fully supports the claimed
`
`invention
`
`in compliance with
`
`the written description and enablement
`
`requirements of 35 U.S.C. § 112(a). See 35 U.S.C. §§ 100(i)(1), 119(e), 120;
`
`Anascape, Ltd. v. Nintendo of Am. Inc., 601 F.3d 1333, 1335 (Fed. Cir. 2010)
`
`(“To obtain the benefit of the filing date of a parent application, the claims of the
`
`later-filed application must be supported by the written description in the parent
`
`‘in sufficient detail that one skilled in the art can clearly conclude that the
`
`inventor invented the claimed invention as of the filing date sought.’”).
`
`If a patent’s claims are not adequately supported under § 112 by the
`
`priority applications, the effective filing date of those claims for purposes of post-
`
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`
`
`Petition for Post-Grant Review of
`U.S. Patent No. 9,423,954
`
`
`
`
`grant review eligibility is the patent’s actual filing date. E.g., US Endodontics,
`
`
`
`LLC v. Gold Standard Instruments, LLC, PGR2015-00019, Paper 54 at 11 (Dec.
`
`28, 2016) (“[W]e agree with Petitioner that if claims 12-16 are shown to lack
`
`adequate § 112 support in the ’311 application and all of the earlier applications
`
`to which priority is claimed, the effective filing date for those claims is the actual
`
`filing date of the ’311 application.”) (attached as Ex. 1005).
`
`The application for the ’954 patent was filed on October 27, 2015. As
`
`described below in Section VII(A), the written description of the ’954 patent fails
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`to provide adequate support for the claimed subject matter. The ’954 patent is a
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`continuation of and claims priority to two earlier filed applications, App. No.
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`12/956,008, filed on November 30, 2010, Ex. 1016, and App. No. 14/331,096,
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`Ex. 1015 (now U.S. Pat. No. 8,780,130), filed on July 14, 2014. These priority
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`applications disclose the same subject matter as the ’954 patent and also fail to
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`provide adequate § 112 support for the same reasons given for the written
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`description of the ’954 patent.
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`The ’954 patent is therefore eligible for post-grant review under AIA
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`§§ 3(n)(1) and 6(f)(2)(A) for the same reasons that it is invalid for failure to
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`satisfy the requirements of 35 U.S.C. § 112. For the reasons given in Section
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`VII(A), neither the ’954 patent nor any of the cited priority applications “clearly
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`allow[s] persons of skill in the art to recognize that the inventor invented what is
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`claimed.” Ariad, 598 F.3d at 1351 (quotation omitted). Because the claims are
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`not supported by the written description, they are not entitled to any of the
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`priority applications’ filing dates.
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`Microsoft concedes that if the Board does not find that the claims lack
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`written description support in the purported priority applications, the ’954 patent
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`is not eligible for post-grant review.
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`IV. Grounds for Standing (37 C.F.R. § 42.204(a))
`Microsoft certifies that it has standing to request and is not barred from
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`requesting a post grant review of the ’954 patent pursuant to 35 U.S.C. § 321.
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`Neither Microsoft nor any privy of Microsoft has filed any civil action
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`challenging the validity of any claim of the ’954 patent or previously requested a
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`post grant review or inter partes review of the ’954 patent.
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`Microsoft also certifies that it is filing this petition less than nine months
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`after the date the ’945 patent was granted, August 23, 2016. 35 U.S.C. § 321(c);
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`37 C.F.R. § 42.202.
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`V.
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`Identification of Challenged Claims and Specific Statutory Grounds
`(37 C.F.R. § 42.204(b)(1)-(2))
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`Microsoft respectfully requests review and cancellation of claims 1-20 of
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`the ’954 patent on the following grounds:
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`Ground
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`2
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`Claims
`1-20
`1-2, 4-6, 8,
`10-15, 16-20
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`Petition for Post-Grant Review of
`U.S. Patent No. 9,423,954
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`Description
`Lack of Written Description under 35 U.S.C. § 112(a)
`Rendered obvious under 35 U.S.C. § 103 by the public
`use and sale of Microsoft Windows 10 and devices
`running Windows 10.
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`
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`VI. Background and Summary of the ’954 Patent
`The ’954 patent is entitled “Graphical User Interface Methods, Systems,
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`and Computer Program Products.” It was filed on October 27, 2015, and it issued
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`on August 23, 2016. The ’954 patent purports to claim priority to an application
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`filed on November 30, 2010. As will be discussed, however, the ’954 patent is
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`not entitled to the 2010 priority date. In fact, the claims of the ’954 patent recite
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`subject matter that is entirely absent from the written description.
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`Summary of the ’954 Patent Written Description
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`A.
`The ’954 patent discloses methods and systems “for binding attributes
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`between visual components” in a computer user interface. ’954 patent at 1:39-40.
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`The patent explains that in existing systems, “[o]ften there is no integration and/or
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`cooperation between or among applications used at the same time by a user.” Id.
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`at 1:23-25. As a result, “[u]sers spend significant time managing the user
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`interfaces of these various applications in order to access the data desired in the
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`application desired.” Id. at 1:35-37. “Accordingly,” the patent asserts, “there
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`exists a need for methods, systems, and computer program products for binding
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`attributes between visual components.” Id.
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`To this end, the patent defines “binding attributes” (or “binding
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`information”) as information “that specifies a mapping between a first visual
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`attribute of the first visual component and a second visual attribute of a second
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`visual component.” Id. at 12:57-60. The disclosed system includes four
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`elements, each of which performs a particular function related to binding visual
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`attributes together: “a user interface monitor component 302, a binding director
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`component 304, a binding monitor component 306, and a change director
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`component 308.” Id. at 7:52-55. When the system detects a change in a visual
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`attribute, it identifies any binding information specifying a mapping between that
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`changed attribute and a second visual attribute and automatically modifies the
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`second attribute accordingly.
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`More specifically, the ’954 patent discloses that the “user interface monitor
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`component 302” first detects a “visual component including a first presentation
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`space … by an operating first application.” Id. at 11:36-39. Binding director 304
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`then “identif[ies] binding information, for the first application, that specifies a
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`mapping between a first visual attribute of the first visual component and a
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`second visual attribute of a second visual component … [of] a second
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`application.” Id. at 13:2-7. Binding monitor 206 “detect[s] a first change to the
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`first visual attribute.” Id. at 16:10-12. Finally, change director 308, “in response
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`to detecting the first change, automatically send[s] change information to change
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`the second visual attribute according to the mapping.” Id. at 17:36-39. Figures 2
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`and 3 of the ’954 patent depict the disclosed method and system components “for
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`binding attributes between visual components” (id. at 2:25-31):
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`The written description’s focus is less on specific examples of how visual
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`attributes are changed in response to binding information, and more on the
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`general functionality itself: a programmer could, in theory, encode any type of
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`
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`preprogrammed binding information specifying a relationship between visual
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`attributes of different application windows. Terveen Dec. ¶ 45. For example, the
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`patent discloses that a programmer may encode binding information specifying
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`that “a color of a title bar” be changed “in response to detecting a change in a Z-
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`value of another visual component.” ’954 patent at 17:66-18:1. Alternatively, a
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`programmer can encode binding information specifying that “border thickness
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`may mirror the thickness or width of a border in another visual component.” Id.
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`at 18:9-10. The patent also discloses that “[b]inding information may be
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`represented in any suitable representation including declaratory representations,
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`source code representations, binary representations, and script representations, to
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`name a few examples.” Id. at 13:24-28.
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`The patent gives one concrete example where “binding information [is]
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`represented in extensible markup language (XML).” Id. at 13:21-22. For
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`programmers using XML to encode binding information, “a <visual-binding>
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`element 702 may be defined to specify binding information for a first application
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`identified by a first <application> tag 704-1 and a second application identified
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`by a second <application> tag 704-2.” Id. at 13:22-31. Figure 7 of the patent
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`(excerpted below) illustrates this XML implementation:
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`The ’954 patent discloses two particular mappings that could be achieved
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`using binding information. Terveen Dec. ¶¶ 42–44. First, as disclosed in Figure
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`6a (shown below), “a top border of first app[lication] visual component 604-1a
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`may be mapped to a bottom border of second app visual component 604-2a as
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`specified by binding information received by a binding director component.”
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`’954 patent at 20:13-17. Second, as disclosed in Figure 6b (shown below), visual
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`components of three separate applications may include mapped “size and location
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`attributes”: when a first visual component “changes from minimized to a restored
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`or maximized size and location, change information may be sent to respective
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`applications by a change director component 408 to change one or both of second
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`app visual component 604-2b and third app visual component 604-3b to a
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`minimized state presented in specified respective locations in display presentation
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`space 602b.” Id. at 21:3-13.
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`Thus, the written description of the ’954 patent discloses a system that
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`allows programmers to specify “binding information” that automatically maps
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`visual attributes of different applications to each other. Terveen Dec. ¶ 32. The
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`’954 patent does not, however, disclose modifying a visual element based on user
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`input, as opposed to programmed binding information. Id. ¶ 46. The ’954 patent
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`also fails to disclo