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. 9,423,938
`
`____________________
`
`PETITION FOR POST-GRANT REVIEW
`
`
`
`
`135567762.3
`
`

`

`TABLE OF CONTENTS
`
`
`Page
`
`
`
`Introduction................................................................................................... 1
`I.
`II. Mandatory Notices (37 C.F.R. § 42.8) ......................................................... 3
`A.
`Real Parties-in-Interest ....................................................................... 3
`B.
`Related Matters .................................................................................. 5
`C. Notice of Counsel and Service Information ....................................... 6
`III. Eligibility for Post-Grant Review ................................................................. 6
`IV. Grounds for Standing (37 C.F.R. § 42.204(a)) ............................................. 9
`V.
`Identification of Challenged Claims and Specific Statutory Grounds
`(37 C.F.R. § 42.204(b)(1)-(2)) ...................................................................... 9
`VI. Background and Summary of the ’938 Patent .............................................. 9
`A.
`Summary of the ’938 Patent Written Description ............................ 10
`B.
`Summary of Prosecution History ..................................................... 18
`C.
`Summary of Related Matters ........................................................... 19
`VII. Claim Construction ..................................................................................... 21
`A.
`“Form of a first input or a second input” ......................................... 24
`B.
`“First” / “Second” ............................................................................. 28
`VIII. Grounds of Unpatentability (37 C.F.R. § 42.204(b)(4)-(5)) ...................... 30
`A. Ground 1: Claims 1-87 Are Invalid Under 35 U.S.C. § 112(a)
`For Lack Of Written Description ..................................................... 30
`1. Written Description Legal Standard ...................................... 30
`2.
`Independent Claims 1 and 47 Lack Written Description
`Support in the ’938 Patent. .................................................... 33
`a.
`The ’938 Patent Fails to Disclose Presenting a
`Menu in Different Locations in Response to
`Different “Forms” of User Input. ................................ 34
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`TABLE OF CONTENTS
`(continued)
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`Page
`
`b.
`
`c.
`
`
`
`Because the Written Description Must Support
`the Entire Scope of the Claim, Section 112 is Not
`Satisfied If the “Form” of User Input Is
`Interpreted to Include, But Not Be Limited To,
`The Input’s Location. .................................................. 38
`The Written Description Requirement is Not
`Satisfied If Cypress Lake’s Claims Are Merely
`Obvious Over the Specification................................... 42
`Dependent claims 2-46 and 48-87 ......................................... 44
`3.
`B. Ground 2: Claims 47-73, 75-81, 83-87 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
`1.
`Dependent Claims 48-49, 52-53, 55-62, 64-75, 78-79,
`81, 83-84, 85, and 87 ............................................................. 52
`Dependent Claims 50-51, 54, 63, 76-77 ................................ 77
`2.
`Dependent Claims 80 and 86 ................................................. 82
`3.
`IX. Conclusion .................................................................................................. 88
`
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`EXHIBIT LIST
`
`
`
`
`
`Ex. 1001 U.S. Patent No. 9,423,938 (“the ’938 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
`
`Excerpts from File History of U.S. Patent No. 9,423,938
`
`Ex. 1007 U.S. Pat. No. 8,780,130 (“the ’130 patent”)
`
`Ex. 1008 Declaration of Nils Sundelin (“Sundelin Dec.”)
`
`Ex. 1009
`
`Excerpt from American Heritage Dictionary, Fifth Edition, 2011
`
`Ex. 1010
`
`Infringement Claim Chart for the ’938 Patent served in Cypress Lake
`Software, Inc. v. Acer America Corp., no. 6:16-cv-01246 (E.D. Tex.)
`
`Ex. 1011 U.S. Pat. No. 9,358,454
`
`Ex. 1012 U.S. Pat. No. 8,949,245
`
`Ex. 1013 U.S. Pat. No. 5,625,814
`
`Ex. 1014 Video file illustrating Windows 10 functionality accused in Ex.
`1010, Cypress Lake’s Infringement Claim Chart for the ’938 Patent
`
`Ex. 1015
`
`(Reserved)
`
`Ex. 1016 U.S. Patent Application No. 12/956,008 (filed Nov. 30, 2010)
`
`Ex. 1017 U.S. Patent Application No. 14/955,993 (filed Nov. 30, 2010)
`
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`
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`Ex. 1018 U.S. Patent Application No. 12/868,767 (filed Aug. 26, 2010)
`
`
`1019 U.S. Patent Application No. 14/173,806 (filed Feb. 5, 2014)
`
`Ex. 1019
`
`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”
`
`Ex. 1029
`
`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
`
`Ex. 1030 Microsoft, “Announcing Windows 10 Insider Preview Build 10547”
`(September 18, 2015), available at
`
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`
`
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`https://blogs.windows.com/windowsexperience/2015/09/18/announc
`ing-windows-10-insider-preview-build-
`10547/#MpR8wMDm5kWXTq2v.97
`
`Ex. 1031 MSPoweruser, “Microsoft is slowly bringing back Windows 8’s
`snapping features to Windows 10” (September 19, 2015), available
`at
`https://mspoweruser.com/microsoft-is-slowly-bringing-back-
`windows-8s-snapping-features-to-windows-10/
`
`
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`
`
`I.
`
`Introduction
`
`
`
`Petition for Post-Grant Review of
`U.S. Patent No. 9,423,938
`
`
`
`
`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 1-87 of U.S.
`
`Patent 9,423,938 (Ex. 1001, “the ’938 patent”). Claims 1-87 lack adequate
`
`written description support, in the ’938 patent itself as well as in the applications
`
`to which the ’938 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
`
`cited priority applications. Thus, the ’938 patent is eligible for post-grant review
`
`for the same reason that its claims are invalid under 35 U.S.C. § 112(a).
`
`The ’938 patent is directed to techniques for displaying menus of running
`
`computer applications in a more convenient manner. The patent observes that
`
`computer desktops can be cluttered. To find an application or visual element on a
`
`cluttered desktop, a user must use standard task bars and application menus that
`
`are presented in an inflexible location. This may force the user to spend a
`
`significant amount of time managing the user interfaces of different applications
`
`to access information.
`
`To address this problem, the patent discloses techniques for presenting a
`
`navigation control (e.g., a menu) in a location that corresponds to an open
`
`application window. The patent teaches two approaches to placement of the
`
`navigation control. According to the written description, the navigation control
`
`-1-
`
`

`

`
`
`Petition for Post-Grant Review of
`U.S. Patent No. 9,423,938
`
`
`
`
`can be displayed in a fixed location relative to an application window, such as
`
`
`
`adjacent to the application window or as part of the application window’s menu
`
`bar. Or, the menu can be displayed at a location corresponding to user input. The
`
`claims of the ’938 patent cover a different, undisclosed approach—an approach
`
`without written description support. Specifically, the claims of the ’938 patent
`
`recite that menus are placed in different locations depending on the form of user
`
`inputs.
`
`There is no disclosure of user input form playing any role in determining
`
`where to display a menu. Ex. 1002 (“Terveen Dec.”) ¶ 7. Indeed, to the extent
`
`the written description addresses different forms of user input at all, it does so
`
`only to make clear that the system can accept various forms of user input without
`
`any substantive impact on system operation. Id.
`
`The claims of the ’938 patent therefore lack written description support
`
`under 35 U.S.C. § 112(a) and should be cancelled. Id. ¶¶ 7-8. This lack of
`
`written description support also renders the ’938 patent eligible for post-grant
`
`review, because the claims are not entitled to the filing dates of the priority
`
`applications. Even further, because the effective filing date of the ’938 patent
`
`post-dates the public release of Windows 10, the claims are rendered obvious by
`
`the public use and sale of that system under Cypress Lake’s own characterization
`
`-2-
`
`

`

`
`
`Petition for Post-Grant Review of
`U.S. Patent No. 9,423,938
`
`
`
`
`of its claims. Id. ¶ 9. As demonstrated by the evidence in and supporting this
`
`
`
`petition, claims 1-87 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
`
`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
`
`-3-
`
`

`

`
`
`Petition for Post-Grant Review of
`U.S. Patent No. 9,423,938
`
`
`
`
`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
`
`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
`
`’938 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.
`
`-4-
`
`

`

`
`
`
`
`B. Related Matters
`Cypress Lake has asserted the ’938 patent in the following litigations,
`
`
`
`Petition for Post-Grant Review of
`U.S. Patent No. 9,423,938
`
`
`
`
`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
`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.
`
`
`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
`
`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
`
`9,423,954. Microsoft is filing separate post-grant review petitions on the ’923
`
`and ’954 patents.
`
`-5-
`
`

`

`
`
`
`
`Petition for Post-Grant Review of
`U.S. Patent No. 9,423,938
`
`
`
`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.
`
`Microsoft requests authorization to file a motion for Chad S. Campbell to
`
`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-
`
`-6-
`
`

`

`
`
`Petition for Post-Grant Review of
`U.S. Patent No. 9,423,938
`
`
`
`
`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-
`
`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 ’938 patent was filed on October 27, 2015. As
`
`described below in Section VII(A), the written description of the ’938 patent fails
`
`to provide adequate support for the claimed subject matter. The ’938 patent is a
`
`continuation of and claims priority to a number of earlier filed applications: App.
`
`-7-
`
`

`

`
`
`Petition for Post-Grant Review of
`U.S. Patent No. 9,423,938
`
`
`
`
`No. 14/173,806, filed on February 5, 2014; App. No. 12/868,767, filed on August
`
`
`
`26, 2010 (now U.S. Pat. No. 8,661,361); App. No. 12/956,008, filed on
`
`November 30, 2010 (now U.S. Pat. No. 8,780,130); and App. No. 12/955,993,
`
`also filed on November 30, 2010. Although these applications vary somewhat in
`
`substance, none discloses any content relating to the display of menus in different
`
`locations based on different forms of user input, which forms the basis for the
`
`§ 112 challenges presented in this petition. Thus, these priority applications fail
`
`to provide adequate § 112 support for the same reasons as those given for the
`
`written description of the ’938 patent.
`
`The ’938 patent is therefore eligible for post-grant review under AIA
`
`§§ 3(n)(1) and 6(f)(2)(A) for the same reasons that it is invalid for failure to
`
`satisfy the requirements of 35 U.S.C. § 112. As detailed in Section VII(A),
`
`neither the ’938 patent nor any of the cited priority applications “clearly allow[s]
`
`persons of skill in the art to recognize that the inventor invented what is claimed.”
`
`Ariad, 598 F.3d at 1351 (quotation omitted). Because the claims are not
`
`supported by the written description, they are not entitled to any of the priority
`
`applications’ filing dates.
`
`Microsoft concedes that if the Board does not find that the claims lack
`
`written description support in the purported priority applications, the ’938 patent
`
`is not eligible for post-grant review.
`
`-8-
`
`

`

`
`
`Petition for Post-Grant Review of
`U.S. Patent No. 9,423,938
`
`
`
`
`IV. Grounds for Standing (37 C.F.R. § 42.204(a))
`Microsoft certifies that it has standing to request and is not barred from
`
`
`
`requesting a post grant review of the ’938 patent pursuant to 35 U.S.C. § 321.
`
`Neither Microsoft nor any privy of Microsoft has filed any civil action
`
`challenging the validity of any claim of the ’938 patent or previously requested a
`
`post grant review or inter partes review of the ’938 patent.
`
`Microsoft also certifies that it is filing this petition less than nine months
`
`after the date the ’938 patent was granted, August 23, 2016. 35 U.S.C. § 321(c);
`
`37 C.F.R. § 42.202.
`
`V.
`
`Identification of Challenged Claims and Specific Statutory Grounds
`(37 C.F.R. § 42.204(b)(1)-(2))
`
`Microsoft respectfully requests review and cancellation of claims 1-87 of
`
`the ’938 patent on the following grounds:
`
`Ground
`1
`2
`
`Claims
`1-87
`47-73, 75-
`81, 83-87
`
`Description
`Lack of Written Description under 35 U.S.C. § 112(a)
`Obvious under 35 U.S.C. § 103 in view of the public
`use and sale of Microsoft Windows 10 and devices
`running Microsoft Windows 10.
`
`VI. Background and Summary of the ’938 Patent
`The ’938 patent is entitled “Methods, Systems, and Computer Program
`
`Products for Navigating Between Visual Components.” It was filed on October
`
`27, 2015, and it issued on August 23, 2016. The ’938 patent purports to claim
`
`-9-
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`

`

`
`
`Petition for Post-Grant Review of
`U.S. Patent No. 9,423,938
`
`
`
`
`priority to applications filed as early as August 26, 2010. As will be discussed,
`
`
`
`however, the ’938 patent is not entitled to the 2010 priority date. In fact, the
`
`claims of the ’938 patent recite subject matter that is entirely absent from the
`
`patent’s written description.
`
`Summary of the ’938 Patent Written Description
`
`A.
`The ’938 patent discloses methods and systems for “navigating between
`
`visual components” of various applications on a computer desktop. ’938 patent at
`
`1:47-49. The patent observes that “[c]luttered desktops on desktop, notebook,
`
`and handheld devices are common,” and that navigating between various
`
`applications typically requires “interoperating with a standard user interface
`
`element such as a task bar and/or application menu of a desktop that remains in a
`
`single location.” Id. at 1:30-35. The patent identifies various deficiencies in
`
`these task bar and application menu interfaces. For example, the “task bar or
`
`other standard application navigation user interface may be located in a location
`
`that is convenient for some applications but inconvenient for others,” which
`
`“creates a lot of input overhead in cases where switching between applications is
`
`frequent.” Id. at 1:39-44.
`
`To rectify these deficiencies, the ’938 patent discloses generating a
`
`“navigation control”
`
`that
`
`identifies currently-operating applications and
`
`displaying it in a location that corresponds to an open application window. The
`
`-10-
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`

`

`
`
`Petition for Post-Grant Review of
`U.S. Patent No. 9,423,938
`
`
`
`
`’938 patent describes its functionality using highly generic, almost meaningless
`
`
`
`terminology. Terveen Dec. ¶¶ 29-30. For example, the patent typically describes
`
`its invention as techniques for “navigating between visual components” of
`
`applications. E.g., ’938 patent at 1:61-62. The patent uses this “visual
`
`component” term interchangeably with similarly-generic terms such as “visual
`
`representation” and “visual interface element” (id. at 9:41-43), all of which are
`
`meant to indicate any visual aspect of an application’s user interface. Id. at 9:29-
`
`31 (“More specifically, visual components of a user interface are referred to
`
`herein as visual interface elements.”).
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`To “navigate” between visual components of different applications, the
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`patent discloses using a “navigation control”—which it defines circularly as a
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`“user interface element for navigating between and/or among user interface
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`elements of respective operating applications.” Id. at 12:54-56. A navigation
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`control may include “an application control representing a particular application,”
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`which may in turn include “a visual component control representing a particular
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`visual component in the application represented by the application control.” Id. at
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`12:57-62. Thus, the terminology of the written description appears to be
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`intentionally vague and generic, lacking any meaningful detail. Terveen Dec.
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`¶ 30.
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`The ’938 patent’s description of the system for “navigating between visual
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`components” is similarly generic. Id. ¶ 31. The system includes four elements.
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`First, a “presentation space monitor” detects “a first visual component of a first
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`operating application in a plurality of operating applications.” ’938 patent at
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`11:14-18. An “application navigator” then presents a “navigation control … for
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`navigating to a second visual component, of a second application in the plurality
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`[of operating applications].” Id. at 12:44-49. This “navigation control” may be
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`any “user interface element”—including, but not limited to, a menu—“for
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`navigating between and/or among user interface elements of respective operating
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`applications.” Id. at 12:54-56. A “navigation element handler” then detects “a
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`user input corresponding to the … navigation control.” Id. at 14:17-19. Finally,
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`in response to detecting this user input, a “navigation director” sends “navigation
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`information to navigate to the second visual component.” Id. at 15:53-55.
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`Figures 2 and 3 of the ’938 patent depict the disclosed method and corresponding
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`system (id. at 2:18-24):
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`The only “navigation controls” that are actually disclosed are those
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`depicted in Figures 6a-6e. Terveen Dec. ¶ 32. The ’938 patent explains that the
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`controls’ formats are not themselves novel—each navigation control is made up
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`of “a number of visual user interface elements commonly found in application
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`user interfaces.” ’938 patent at 10:59-61. However, the patent purports to
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`present these “commonly found” visual elements in unique locations with respect
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`to an application window. Instead of listing operating applications in the standard
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`task bar or desktop application menus (see id. at 1:31-35), the ’938 patent
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`discloses displaying a navigation control showing the running applications in a
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`configuration tied to the open application window.
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`Each of Figures 6a-6e illustrates a navigation control displayed in a
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`particular configuration with respect to an open application window. For
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`example, Figure 6a discloses a navigation control 614-2a that is “automatically
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`presented” with an application window. Id. at 13:14-22. The navigation control
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`includes
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`individual “application controls” 616-1a, 616-2a, and 616-3a
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`(essentially, buttons) that correspond to different running applications. Id. at
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`15:17-19; see also id., Figure 6a (with “application control” elements of
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`navigation control 614-2a highlighted):
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`Figure 6b depicts a configuration where the navigation control is
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`“presented as a menu” (id. at 15:19-23) and displayed “adjacent to the application
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`region of the first app[lication] visual component” in a “region determined based
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`on the top, right corner” of that component (id. at 19:20-24, 13:64-67). Id.,
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`Figure 6b (with navigation control 614-1b highlighted):
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`Figure 6e depicts a similar configuration, where the navigation control is again a
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`menu. Id. at 15:36-41. In Figure 6e, the menu is “bound to a menu bar” of the
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`application window itself and does not include a menu item for that application.
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`Id. at 14:8-11, 15:35-36, 19:24-28; id., Figure 6e (with navigation control 614-1e
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`highlighted):
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`Figures 6c and 6d each depict configurations where the navigation control
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`is presented in a “tree view.” Id. at 15:23-34. In Figure 6c, the “tree view” is
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`displayed next to the “left border of the application region.” Id. at 13:67-14:3. In
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`Figure 6d, it is a “pop-up or context pane” displayed at “a location corresponding
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`to an input detected in the application region.” Id. at 14:3-7; id., Figure 6d (with
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`navigation control 614-2d highlighted):
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`Thus, to the extent the ’938 patent provides any concrete disclosure, it does
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`so in the context of Figures 6a-6e and the corresponding text. Terveen Dec. ¶ 32.
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`This disclosure describes navigation controls in a set of possible configurations,
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`each tied to an open application window. Id. ¶ 41. The configurations involving
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`menus present those menus in a fixed location relative to an application window
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`(bound to the top-right corner of the window in Figure 6b, integrated into an
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`existing menu bar in Figure. 6e). Id. For the configurations with non-menu
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`navigation controls, the ’938 patent describes displaying the navigation control in
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`a fixed location relative to the window (directly above the window in Figure 6a,
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`directly adjacent in Figure 6c) or within the application window where a user
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`clicks (Figure 6d). Id.
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`Summary of Prosecution History
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`B.
`The application that issued as the ’938 patent was filed on October 27,
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`2015. Ex. 1006 at 1. The ’938 patent application states that it is a continuation of
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`App. No. 14/173,806, filed on February 5, 2014, which is a continuation-in-part
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`of App. No. 12/868,767, filed on August 26, 2010 (now U.S. Pat. No. 8,661,361).
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`The ’938 patent application also purports to be a continuation-in-part of App. No.
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`12/956,008, filed on November 30, 2010 (now U.S. Pat. No. 8,780,130) and of
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`App. No. 12/955,993, also filed on November 30, 2010. As filed, the claims
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`recited by the ’938 patent application were exceedingly broad: they recited an
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`apparatus configured to detect a user input “in connection with [a] first visual
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`component” of an application and to present “a representation of a second visual
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`component of a second application” in response to that input. Id. at 7-8.
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`In a preliminary amendment filed on December 8, 2015, the applicant
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`cancelled all but one of the originally-filed claims and submitted 19 new claims,
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`including the two independent claims that ultimately issued as claims 1 and 47.
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`Id. at 9-18. These two independent claims recited a number of new limitations,
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`including that the device “determine[d] if the first user input takes a form of a
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`first input or a second input.” Id. at 14. The examiner allowed the two newly-
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`filed independent claims (and one claim depending from these claims), but
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`rejected all other claims on grounds of obviousness-type double patenting,
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`anticipation, or obviousness. Id. at 20. The applicant cancelled all of the non-
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`allowed claims and added 84 new dependent claims. Id. at 34-62.
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`The examiner then allowed the new claims. In the notice of allowance, the
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`examiner stated that the prior art of record failed to disclose the limitations
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`relating to displaying a menu in different locations in response to different
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`“forms” of user input, among others, as the basis for allowance. Id. at 69. The
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`’938 patent issued on August 23, 2016.
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`Summary of Related Matters
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`C.
`While it was prosecuting the application that issued as the ’938 patent,
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`Cypress Lake was litigating U.S. Pat. No. 8,780,130 (Ex. 1007, “the ’130
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`patent”), which issued from one of the ’938 patent’s priority applications. The
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`’130 patent relates to different subject matter than that described and claimed by
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`the ’938 patent: it claims techniques for presenting visual components of multiple
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`applications according to “a mapping between a first visual attribute … and a
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`second visual attribute” of first and second application components. See ’130
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`patent, claims 1, 4, 5, and 22. The specification of the ’130 patent explains that
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`this mapping is accomplished using encoded “binding information,” which uses
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`XML or some other programming technique to specify mappings between visual
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`components of different applications. Id. at 12:49-55, 13:14-21.
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`On November 30, 2015, Cypress Lake filed seven lawsuits in the U.S.
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`Petition for Post-Grant Review of
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`District Court for the Eastern District of Texas alleging infringement of the ’130
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`patent against various manufacturers of Windows 10-based devices.1 Microsoft’s
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`Windows 10 operating system had already been r