Case 6:21-cv-01018 Document 1 Filed 10/01/21 Page 1 of 22
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`SURFCAST, INC.,
`Plaintiff,
`
` v.
`
`MICROSOFT CORPORATION,
`Defendant.
`
`
`
`
`
`
`
`Case No. 6:21-cv-1018
`
`
`
`COMPLAINT
`
`Plaintiff SurfCast, Inc. (“SurfCast”), by and through its attorneys, files this Complaint for
`
`Patent Infringement against Defendant Microsoft Corporation (“Microsoft”), hereby alleges as
`
`follows:
`
`NATURE OF THE ACTION
`
`1.
`
`This is an action brought by SurfCast for infringement of U.S. Patent No. 9,032,317
`
`(the “’317 patent”); U.S. Patent No. 9,043,712 (the “’712 patent”); U.S. Patent No. 9,363,338 (the
`
`“’338 patent”); and U.S. Patent No. 9,946,434 (the “’434 patent”) (collectively, the “Asserted
`
`Patents”), arising under the patent laws of the United States, Title 35, United States Code, 35
`
`U.S.C. §§ 271 and 281.
`
`PARTIES
`
`2.
`
`SurfCast is a corporation organized and existing under the laws of the State of
`
`Delaware with its principal place of business at 1 Belfast Road, Lincolnville, ME 04849.
`
`3.
`
`On information and belief, Microsoft is a corporation organized and existing under
`
`the laws of the State of Washington, with its corporate headquarters at One Microsoft Way,
`
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`1
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`Case 6:21-cv-01018 Document 1 Filed 10/01/21 Page 2 of 22
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`Redmond, WA 98052. Microsoft may be served with process through its registered agent, the
`
`Corporation Service Company, at 211 East 7th Street, Suite 620, Austin, Texas 78701.
`
`
`
`JURISDICTION AND VENUE
`
`4.
`
`This action arises under the patent laws of the United States, 35 U.S.C. §§ 100 et
`
`seq., and this Court has jurisdiction over the subject matter of this action under 28 U.S.C. §§ 1331
`
`and 1338(a).
`
`5.
`
`This Court has personal jurisdiction over Defendant in this action because
`
`Defendant has committed acts within this Federal Judicial District giving rise to this action, and
`
`has established minimum contacts with this forum such that the exercise of jurisdiction over
`
`Defendant would not offend traditional notions of fair play and substantial justice. Defendant,
`
`directly and through subsidiaries or intermediaries, has committed and continues to commit acts
`
`of infringement in this Federal Judicial District by, among other things, importing, offering to sell,
`
`and selling products and services that infringe the Asserted Patents.
`
`6.
`
`7.
`
`Venue is proper in this Court under 28 U.S.C. §§ 1391 and 1400(b).
`
`Upon information and belief, Microsoft has committed infringing acts in this
`
`Federal Judicial District by making, using, offering for sale, selling, or importing products or
`
`services that infringe the Asserted Patents (as defined herein), or by inducing others to infringe the
`
`Asserted Patents.
`
`8.
`
`Upon information and belief, Microsoft has a regular and established physical
`
`presence in this Federal Judicial District, including, but not limited to, ownership of or control
`
`over property, inventory, or infrastructure. Microsoft maintains offices in this Federal Judicial
`
`District, including, but not limited to, locations at 10900 Stonelake Boulevard, Suite 225, Austin,
`
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`2
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`

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`Case 6:21-cv-01018 Document 1 Filed 10/01/21 Page 3 of 22
`
`Texas 78759;1 Concord Park II, 401 East Sonterra Boulevard, Suite 300, San Antonio, Texas
`
`78258;2 5150 Rogers Road, San Antonio, Texas 78251; 5200 Rogers Road, San Antonio, Texas
`
`78251;3 and 3823 Wiseman Blvd, San Antonio, Texas 78251,4 each of which lie within this
`
`Federal Judicial District. On information and belief, Microsoft has been registered to do business
`
`in the state of Texas under Texas Secretary of State file number 0010404606 since approximately
`
`March, 1987.
`
`9.
`
`In other recent actions, Microsoft has either admitted or not contested that this
`
`Federal Judicial District is a proper venue for patent infringement actions against it. See, e.g.,
`
`Thompson v. Microsoft Corp., No. 1:19-cv-00680-RP, Dkt. No. 6; Panther Innovations v.
`
`Microsoft Corp., No. 6-20-cv-01071, Dkt. No. 14; Exafer Ltd. v. Microsoft Corp., No. 1-20-cv-
`
`00131, Dkt. No. 15; WSOU Investments, LLC v. Microsoft Corp., No. 20-cv-00464, Dkt. No. 20;
`
`Zeroclick, LLC v. Microsoft Corp., No. 20-cv-00272, Dkt. No. 14; and California Institute of
`
`Technology v. Microsoft Corp., No. 21-cv-00276, Dkt. No. 22.
`
`FACTUAL BACKGROUND
`
`10.
`
`U.S. Patent No. 9,032,317 is titled “System and Method For Simultaneous Display
`
`of Multiple Information Sources,” which the U.S. Patent and Trademark Office duly and legally
`
`issued on May 12, 2015. A true and correct copy of the ’317 patent is attached hereto as Exhibit
`
`A.
`
`
`1 See https://news.microsoft.com/2000/01/05/microsoft-opens-austin-texas-facility/ (last accessed
`September 27, 2021).
`2 See https://www.microsoft.com/en-us/about/officelocator?Location=78258 (last accessed
`September 27, 2021).
`3 See https://www.datacenterhawk.com/providers/microsoft-azure (last accessed September 27,
`2021).
`4 See https://www.virtualbox.com/industry-news/san-antonio-microsoft-reaches-mid-point-on-
`86m-expansion-in-westover-hills/ (last accessed September 27, 2021).
`
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`3
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`

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`Case 6:21-cv-01018 Document 1 Filed 10/01/21 Page 4 of 22
`
`11.
`
`U.S. Patent No. 9,043,712 is entitled “System and Method For Simultaneous
`
`Display of Multiple Information Sources,” which the U.S. Patent and Trademark Office duly and
`
`legally issued on May 26, 2015. A true and correct copy of the ’712 patent is attached hereto as
`
`Exhibit B.
`
`12.
`
`U.S. Patent No. 9,363,338 is entitled “System and Method For Simultaneous
`
`Display of Multiple Information Sources,” which the U.S. Patent and Trademark Office duly and
`
`legally issued on June 7, 2016. A true and correct copy of the ’338 patent is attached hereto as
`
`Exhibit C.
`
`13.
`
`U.S. Patent No. 9,946,434 is entitled “System and Method For Simultaneous
`
`Display of Multiple Information Sources,” which the U.S. Patent and Trademark Office duly and
`
`legally issued on April 17, 2018. A true and correct copy of the ’434 patent is attached hereto as
`
`Exhibit D.
`
`14.
`
`Ovid Santoro, Klaus Lagermann, and Tom Dechaene (collectively “the inventors”)
`
`are the inventors of each of the Asserted Patents.
`
`15. By virtue of inventor Ovid Santoro’s July 29, 2008 assignment, inventor Tom
`
`Dechaene’s December 22, 2008 assignment, and inventor Klaus Lagermann’s October 30, 2012
`
`assignment, SurfCast obtained all rights, title, and interest in the inventions of each of the Asserted
`
`Patents.
`
`16. The claims of the Asserted Patents are valid and enforceable.
`
`17. As described in more detail below, Microsoft infringes the Asserted Patents by
`
`making, using, selling, and offering to sell devices and software products including operating
`
`systems for personal computers, phones, tablet devices, other hardware, mobile devices with the
`
`Windows Phone 7 Operating System (“the Windows Phone 7 Products”), the Microsoft Surface
`
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`4
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`Case 6:21-cv-01018 Document 1 Filed 10/01/21 Page 5 of 22
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`with the Windows RT Operating System, and the Xbox One, such operating systems including
`
`Microsoft Windows 8, Microsoft Windows 8 Pro, and Microsoft Windows 8 Enterprise Operating
`
`System (the “Windows 8 Accused Products”); Microsoft Windows 8.1, Microsoft Windows 8.1
`
`Pro, and Microsoft Windows 8.1 Enterprise Operating System (the “Windows 8.1 Accused
`
`Products”); and Microsoft Windows 10, Microsoft Windows 10 Pro, and Microsoft Windows 10
`
`Enterprise Operating System (the “Windows 10 Accused Products”), and personal computers
`
`implementing the Windows 8 Accused Products, the Windows 8.1 Accused Products, and the
`
`Windows 10 Accused Products, and all like products, collectively “the Accused Products,” in
`
`Texas and throughout the United States.
`
`18.
`
`The Accused Products employ a display with a user interface described by
`
`Microsoft as follows: “Tiles are the representation of your app on the Start screen. Selecting a tile
`
`launches its app. The content shown on your tile can, and ideally should, change regularly,
`
`especially if your tile can communicate new, real-time information to your user. Tiles can show a
`
`combination of text and images, and a badge to show status.” (https://docs.microsoft.com/en-
`
`us/previous-versions/windows/apps/hh779725(v=win.10); attached hereto as Exhibit E).
`
`19.
`
`On information and belief, on or about July 15, 2015, Microsoft began making,
`
`using, offering for sale, and selling the Windows 10 Accused Products in Texas and throughout
`
`the United States.
`
`20.
`
`On information and belief, on or about August 27, 2013, Microsoft began making,
`
`using, offering for sale, and selling the Windows 8.1 Accused Products in Texas and throughout
`
`the United States.
`
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`Case 6:21-cv-01018 Document 1 Filed 10/01/21 Page 6 of 22
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`21.
`
`On information and belief, on or about November 22, 2013, Microsoft began
`
`making, using, offering for sale, and selling the Xbox One in Texas and throughout the United
`
`States.
`
`22.
`
`On information and belief, on or about October 26, 2012, Microsoft began making,
`
`using, offering for sale, and selling the Windows 8 Accused Products in Texas and throughout the
`
`United States.
`
`23.
`
`On information and belief, on or about November 8, 2010, Microsoft began offering
`
`for sale and selling the Windows Phone 7 Products in Texas and throughout the United States.
`
`COUNT I (THE ’317 PATENT)
`
`24.
`
`Each of the proceeding paragraphs 1 to 23 is incorporated as if fully set forth herein.
`
`25. Microsoft’s use, importation, manufacture, offer to sell, and/or sale of the Accused
`
`Products constitutes direct infringement of one or more of the claims of the ’317 patent under 35
`
`U.S.C. § 271(a), including but not limited to claims 1, 5, 12, and 16.
`
`26.
`
`SurfCast has been injured and continues to be injured by Microsoft’s use,
`
`importation, manufacture, offer to sell, and/or sale of the Accused Products.
`
`27. Microsoft is the assignee of U.S. Patent No. 7,933,632, entitled “Tile Space User
`
`Interface for Mobile Devices,” (the “’632 patent”) the abstract of which describes “a user interface
`
`for mobile devices enable data and services available through the mobile device to be represented
`
`as a set of tiles maintained in a display space. The tiles provide a snapshot of the current state of
`
`content available through the mobile device without requiring any interaction by the user. The
`
`tiles and display space are customizable and can be dynamically updated to display content to a
`
`user. In addition, tiles can provide functionality, including simple tasks to a user without requiring
`
`the user to navigate away from the tile display space.” During prosecution of the application that
`
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`
`6
`
`

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`Case 6:21-cv-01018 Document 1 Filed 10/01/21 Page 7 of 22
`
`issued as the ’632 patent, the Patent Examiner cited U.S. Patent No. 6,724,403 (the “’403 patent”),
`
`from which the ’317 patent claims priority and which the ’317 patent incorporates by reference the
`
`entirety of, as relevant prior art as part of a Non-Final Rejection dated April 21, 2009. See Exhibit
`
`F, File History of U.S. Patent No. 7,933,632 at Notice of References Cited, p. 2 of 4 (Part of Paper
`
`No. 20090414); see also Exhibit G, ‘632 Patent at page 2. Accordingly, Microsoft had knowledge
`
`of at least the ’403 patent at least as early as April 21, 2009. Furthermore, SurfCast filed suit
`
`against Microsoft for patent infringement of the ’403 patent on October 30, 2012. Based on
`
`similarities between the ’403 patent and the ’317 patent as well as priority of the ’403 patent to the
`
`’317 patent, Microsoft should have known that it infringed the ’317 patent at least as early as June
`
`13, 2013. In any event, SurfCast provided direct notice of Microsoft’s infringement of the ’317
`
`patent to Microsoft by letter dated September 30, 2021 and delivered prior to the filing of the
`
`Complaint.
`
`28.
`
`Through the conduct alleged above, Microsoft actively and knowingly induced and
`
`will induce its customers and users of its Accused Products for whom Microsoft markets, offers to
`
`sell, sells, and distributes its operating systems, including the Windows 8 Accused Products, the
`
`Windows 8.1 Accused Products, the Windows 10 Accused products, to directly infringe one or
`
`more claims of the ’317 patent, including but not limited to claims 1, 5, 12, and 16 of the ’317
`
`patent. For example, Microsoft instructs its customers to use the Accused Products and its “live
`
`tiles” in order that “[t]he content shown on your tile can, and ideally should, change regularly,
`
`especially if your tile can communicate new, real-time information to your user.” See, e.g., Exhibit
`
`E.
`
`29. Microsoft also instructs developers how to write applications that, when
`
`downloaded through the Windows Store and used on an Accused Product, directly infringe one or
`
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`
`7
`
`

`

`Case 6:21-cv-01018 Document 1 Filed 10/01/21 Page 8 of 22
`
`more claims of the ’317 patent, including but not limited to claims 1, 5, 12, and 16 of the ’317
`
`patent. For example, Microsoft instructs that “app tiles … are the Start screen tiles that represent
`
`and launch your app. An app tile is more than a big icon; it has the ability to display a continuously
`
`changing set of content that can be used to keep the user aware of events associated with that app
`
`(such as new social networking posts, new news headlines, or stock quotes) when the app is not
`
`running. A tile notification can originate either from a local API call or from the cloud.” Exhibit
`
`H, “Tile and Tile Notification Overview
`
`(Windows Store Apps),” available at
`
`http://msdn.microsoft.com/en-US/library/windows/apps/hh779724. Microsoft further instructs
`
`that, in accordance with one or more claims of the ’317 patent, including but not limited to claims
`
`1, 5, 12, and 16, “[t]here are 4 ways that an app can update its tile (see Choosing a notification
`
`delivery method in the Dev Center). Apps can use local notifications to update their tile, which is
`
`useful if info changes while the app is running. Apps can schedule tile and toast updates to happen
`
`at precise times. Also, apps can use push or polling tile notifications to update their tiles from the
`
`cloud while they are not running. Polling is great for low-frequency broadcast content. Push is
`
`great for sending toast notifications, which need to arrive immediately, or tile updates that are
`
`targeted to individual users.” Exhibit I, “Creating a Great Tile Experience (Part 2),” (Apr. 18,
`
`2012) available at http://blogs.msdn.com/b/windowsappdev/archive/2012/04/18/creating-a-great-
`
`tile-experience-part-2.aspx.
`
`30. Microsoft’s knowing and active inducement of users and customers to directly
`
`infringe the ’317 patent constitutes inducing infringement of one or more of the claims of the ’317
`
`patent under 35 U.S.C. § 271(b), including but not limited to claims 1, 5, 12, and 16 of the ’317
`
`patent.
`
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`Case 6:21-cv-01018 Document 1 Filed 10/01/21 Page 9 of 22
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`31.
`
`SurfCast has been and continues to be injured and damaged by Microsoft’s
`
`knowing and active inducement of users and customers to directly infringe the ’317 patent.
`
`32.
`
`Through the sale, marketing, and distribution of the Accused Products, Microsoft
`
`has contributed and continues to contribute to the infringement of one or more claims of the ’317
`
`patent by users and customers for whom Microsoft markets, offers to sell, sells, and distributes the
`
`Accused Products and will continue to do so, knowing the same to be especially made or especially
`
`adapted for use in an infringement of the ’317 patent.
`
`33.
`
`Upon information and belief, none of the Accused Products are a staple article or
`
`commodity of commerce suitable for substantial noninfringing use.
`
`34. Microsoft’s contribution to the infringement of the ’317 patent by users and
`
`customers constitutes contributory infringement of one or more of the claims of the ’317 patent
`
`under 35 U.S.C. § 271(c), including but not limited to claims 1, 5, 12, and 16 of the ’317 patent.
`
`35.
`
`SurfCast has been and continues to be injured and damaged by Microsoft’s
`
`contribution to the infringement of the ’317 patent by users and customers.
`
`36. Microsoft’s continued use, manufacture, importation, sale, and/or offering to sell
`
`the Accused Products with knowledge of the ’317 patent constitutes willful infringement of one
`
`or more of the claims of the ’317 patent.
`
`37.
`
`SurfCast has been and continues to be injured and damaged by Microsoft’s willful
`
`infringement of the ’317 patent.
`
`COUNT II (THE ’712 PATENT)
`
`38.
`
`Each of the proceeding paragraphs 1 to 37 is incorporated as if fully set forth herein.
`
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`Case 6:21-cv-01018 Document 1 Filed 10/01/21 Page 10 of 22
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`39. Microsoft’s use, importation, manufacture, offer to sell, and/or sale of the Accused
`
`Products constitutes direct infringement of one or more of the claims of the ’712 patent under 35
`
`U.S.C. § 271(a), including but not limited to claims 1 and 3.
`
`40.
`
`SurfCast has been injured and continues to be injured by Microsoft’s use,
`
`importation, manufacture, offer to sell, and/or sale of the Accused Products.
`
`41. Microsoft is the assignee of U.S. Patent No. 7,933,632, entitled “Tile Space User
`
`Interface for Mobile Devices,” (the “’632 patent”) the abstract of which describes “a user interface
`
`for mobile devices enable data and services available through the mobile device to be represented
`
`as a set of tiles maintained in a display space. The tiles provide a snapshot of the current state of
`
`content available through the mobile device without requiring any interaction by the user. The
`
`tiles and display space are customizable and can be dynamically updated to display content to a
`
`user. In addition, tiles can provide functionality, including simple tasks to a user without requiring
`
`the user to navigate away from the tile display space.” During prosecution of the application that
`
`issued as the ’632 patent, the Patent Examiner cited U.S. Patent No. 6,724,402 (the “’403 patent”),
`
`from which the ’712 patent claims priority and which the ’712 patent incorporates by reference the
`
`entirety of, as relevant prior art as part of a Non-Final Rejection dated April 21, 2009. See Exhibit
`
`F, File History of U.S. Patent No. 7,933,632 at Notice of References Cited, p. 2 of 4 (Part of Paper
`
`No. 20090414); see also Exhibit G, ’632 Patent at page 2. Accordingly, Microsoft had knowledge
`
`of at least the ’403 patent at least as early as April 21, 2009. Furthermore, SurfCast filed suit
`
`against Microsoft for patent infringement of the ’403 patent on October 30, 2012. Based on
`
`similarities between the ’403 patent and the ’712 patent as well as priority of the ’403 patent to the
`
`’712 patent, Microsoft should have known that it infringed the ’712 patent at least as early as May
`
`17, 2012. In any event, SurfCast provided direct notice of Microsoft’s infringement of the ’712
`
`Error! Unknown document property name.
`
`10
`
`

`

`Case 6:21-cv-01018 Document 1 Filed 10/01/21 Page 11 of 22
`
`patent to Microsoft by letter dated September 30, 2021 and delivered prior to the filing of the
`
`Complaint.
`
`42.
`
`Through the conduct alleged above, Microsoft actively and knowingly induced and
`
`will induce its customers and users of its Accused Products for whom Microsoft markets, offers to
`
`sell, sells, and distributes its operating systems, including the Windows 8 Accused Products, the
`
`Windows 8.1 Accused Products, the Windows 10 Accused products, to directly infringe one or
`
`more claims of the ’712 patent, including but not limited to claims 1 and 3 of the ’712 patent. For
`
`example, Microsoft instructs its customers to use the Accused Products and its “live tiles” in order
`
`that “[t]he content shown on your tile can, and ideally should, change regularly, especially if your
`
`tile can communicate new, real-time information to your user.” See, e.g., Exhibit E.
`
`43. Microsoft also instructs developers how to write applications that, when
`
`downloaded through the Windows Store and used on an Accused Product, directly infringe one or
`
`more claims of the ’712 patent, including but not limited to claims 1 and 3 of the ’712 patent. For
`
`example, Microsoft instructs that “app tiles … are the Start screen tiles that represent and launch
`
`your app. An app tile is more than a big icon; it has the ability to display a continuously changing
`
`set of content that can be used to keep the user aware of events associated with that app (such as
`
`new social networking posts, new news headlines, or stock quotes) when the app is not running.
`
`A tile notification can originate either from a local API call or from the cloud.” Exhibit H, “Tile
`
`and
`
`Tile Notification Overview
`
`(Windows
`
`Store Apps),”
`
`available
`
`at
`
`http://msdn.microsoft.com/en-US/library/windows/apps/hh779724. Microsoft further instructs
`
`that, in accordance with one or more claims of the ’712 patent, including but not limited to claims
`
`1 and 3, “[t]here are 4 ways that an app can update its tile (see Choosing a notification delivery
`
`method in the Dev Center). Apps can use local notifications to update their tile, which is useful if
`
`Error! Unknown document property name.
`
`11
`
`

`

`Case 6:21-cv-01018 Document 1 Filed 10/01/21 Page 12 of 22
`
`info changes while the app is running. Apps can schedule tile and toast updates to happen at
`
`precise times. Also, apps can use push or polling tile notifications to update their tiles from the
`
`cloud while they are not running. Polling is great for low-frequency broadcast content. Push is
`
`great for sending toast notifications, which need to arrive immediately, or tile updates that are
`
`targeted to individual users.” Exhibit I, “Creating a Great Tile Experience (Part 2),” (Apr. 18,
`
`2012) available at http://blogs.msdn.com/b/windowsappdev/archive/2012/04/18/creating-a-great-
`
`tile-experience-part-2.aspx.
`
`44. Microsoft’s knowing and active inducement of users and customers to directly
`
`infringe the ’712 patent constitutes inducing infringement of one or more of the claims of the ’712
`
`patent under 35 U.S.C. § 271(b), including but not limited to claims 1 and 3 of the ’712 patent.
`
`45.
`
`SurfCast has been and continues to be injured and damaged by Microsoft’s
`
`knowing and active inducement of users and customers to directly infringe the ’712 patent.
`
`46.
`
`Through the sale, marketing, and distribution of the Accused Products, Microsoft
`
`has contributed and continues to contribute to the infringement of one or more claims of the ’712
`
`patent by users and customers for whom Microsoft markets, offers to sell, sells, and distributes the
`
`Accused Products and will continue to do so, knowing the same to be especially made or especially
`
`adapted for use in an infringement of the ’712 patent.
`
`47.
`
`Upon information and belief, none of the Accused Products are a staple article or
`
`commodity of commerce suitable for substantial noninfringing use.
`
`48. Microsoft’s contribution to the infringement of the ’712 patent by users and
`
`customers constitutes contributory infringement of one or more of the claims of the ’712 patent
`
`under 35 U.S.C. § 271(c), including but not limited to claims 1 and 3 of the ’712 patent.
`
`Error! Unknown document property name.
`
`12
`
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`Case 6:21-cv-01018 Document 1 Filed 10/01/21 Page 13 of 22
`
`49.
`
`SurfCast has been and continues to be injured and damaged by Microsoft’s
`
`contribution to the infringement of the ’712 patent by users and customers.
`
`50. Microsoft’s continued use, importation, manufacture, offer to sell, and/or sale of
`
`the Accused Products with knowledge of the ’712 patent constitutes willful infringement of one
`
`or more of the claims of the ’712 patent.
`
`51.
`
`SurfCast has been and continues to be injured and damaged by Microsoft’s willful
`
`infringement of the ’712 patent.
`
`COUNT III (THE ’338 PATENT)
`
`52.
`
`Each of the proceeding paragraphs 1 to 51 is incorporated as if fully set forth herein.
`
`53. Microsoft’s use, importation, manufacture, offer to sell, and/or sale of the Accused
`
`Products constitutes direct infringement of one or more of the claims of the ’338 patent under 35
`
`U.S.C. § 271(a), including but not limited to claims 1 and 9.
`
`54.
`
`SurfCast has been injured and continues to be injured by Microsoft’s use,
`
`importation, manufacture, offer to sell, and/or sale of the Accused Products.
`
`55. Microsoft is the assignee of U.S. Patent No. 7,933,632, entitled “Tile Space User
`
`Interface for Mobile Devices,” (the “’632 patent”) the abstract of which describes “a user interface
`
`for mobile devices enable data and services available through the mobile device to be represented
`
`as a set of tiles maintained in a display space. The tiles provide a snapshot of the current state of
`
`content available through the mobile device without requiring any interaction by the user. The
`
`tiles and display space are customizable and can be dynamically updated to display content to a
`
`user. In addition, tiles can provide functionality, including simple tasks to a user without requiring
`
`the user to navigate away from the tile display space.” During prosecution of the application that
`
`issued as the ’632 patent, the Patent Examiner cited U.S. Patent No. 6,724,402 (the “’403 patent”),
`
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`Case 6:21-cv-01018 Document 1 Filed 10/01/21 Page 14 of 22
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`from which the ’338 patent claims priority and which the ’338 patent incorporates by reference the
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`entirety of, as relevant prior art as part of a Non-Final Rejection dated April 21, 2009. See Exhibit
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`F, File History of U.S. Patent No. 7,933,632 at Notice of References Cited, p. 2 of 4 (Part of Paper
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`No. 20090414); see also Exhibit G, ’632 Patent at page 2. Accordingly, Microsoft had knowledge
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`of at least the ’403 patent at least as early as April 21, 2009. Furthermore, SurfCast filed suit
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`against Microsoft for patent infringement of the ’403 patent on October 30, 2012. Based on
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`similarities between the ’403 patent and the ’338 patent as well as priority of the ’403 patent to the
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`’338 patent, Microsoft should have known that it infringed the ’338 patent at least as early as
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`September 10, 2015. In any event, SurfCast provided direct notice of Microsoft’s infringement of
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`the ’338 patent to Microsoft by letter dated September 30, 2021 and delivered prior to the filing of
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`the Complaint.
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`56.
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`Through the conduct alleged above, Microsoft actively and knowingly induced and
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`will induce its customers and users of its Accused Products for whom Microsoft markets, offers to
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`sell, sells, and distributes its operating systems, including the Windows 8 Accused Products, the
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`Windows 8.1 Accused Products, the Windows 10 Accused products, to directly infringe one or
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`more claims of the ’338 patent, including but not limited to claims 1 and 9 of the ’338 patent. For
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`example, Microsoft instructs its customers to use the Accused Products and its “live tiles” in order
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`that “[t]he content shown on your tile can, and ideally should, change regularly, especially if your
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`tile can communicate new, real-time information to your user.” See, e.g., Exhibit E.
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`57. Microsoft also instructs developers how to write applications that, when
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`downloaded through the Windows Store and used on an Accused Product, directly infringe one or
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`more claims of the ’338 patent, including but not limited to claims 1 and 9 of the ’338 patent. For
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`example, Microsoft instructs that “app tiles … are the Start screen tiles that represent and launch
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`Case 6:21-cv-01018 Document 1 Filed 10/01/21 Page 15 of 22
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`your app. An app tile is more than a big icon; it has the ability to display a continuously changing
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`set of content that can be used to keep the user aware of events associated with that app (such as
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`new social networking posts, new news headlines, or stock quotes) when the app is not running.
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`A tile notification can originate either from a local API call or from the cloud.” Exhibit H, “Tile
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`and
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`Tile Notification Overview
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`(Windows
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`Store Apps),”
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`available
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`at
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`http://msdn.microsoft.com/en-US/library/windows/apps/hh779724. Microsoft further instructs
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`that, in accordance with one or more claims of the ’338 patent, including but not limited to claims
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`1 and 9, “[t]here are 4 ways that an app can update its tile (see Choosing a notification delivery
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`method in the Dev Center). Apps can use local notifications to update their tile, which is useful if
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`info changes while the app is running. Apps can schedule tile and toast updates to happen at
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`precise times. Also, apps can use push or polling tile notifications to update their tiles from the
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`cloud while they are not running. Polling is great for low-frequency broadcast content. Push is
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`great for sending toast notifications, which need to arrive immediately, or tile updates that are
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`targeted to individual users.” Exhibit I, “Creating a Great Tile Experience (Part 2),” (Apr. 18,
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`2012) available at http://blogs.msdn.com/b/windowsappdev/archive/2012/04/18/creating-a-great-
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`tile-experience-part-2.aspx.
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`58. Microsoft’s knowing and active inducement of users and customers to directly
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`infringe the ’338 patent constitutes inducing infringement of one or more of the claims of the ’338
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`patent under 35 U.S.C. § 271(b), including but not limited to claims 1 and 9 of the ’338 patent.
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`59.
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`SurfCast has been and continues to be injured and damaged by Microsoft’s
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`knowing and active inducement of users and customers to directly infringe the ’338 patent.
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`60.
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`Through the sale, marketing, and distribution of the Accused Products, Microsoft
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`has contributed and continues to contribute to the infringement of one or more claims of the ’338
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`Case 6:21-cv-01018 Document 1 Filed 10/01/21 Page 16 of 22
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`patent by users and customers for whom Microsoft markets, offers to sell, sells, and distributes the
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`Accused Products and will continue to do so, knowing the same to be especially made or especially
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`adapted for use in an infringement of the ’338 patent.
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`61.
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`Upon information and belief, none of the Accused Products are a staple article or
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`commodity of commerce suitable for substantial noninfringing use.
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`62. Microsoft’s contribution to the infringement of the ’338 patent by users and
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`customers constitutes contributory infringement of one or more of the claims of the ’338 patent
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`under 35 U.S.C. § 271(c), including but not limited to claims 1 and 9 of the ’338 patent.
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`63.
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`SurfCast has been and continues to be injured and damaged by Microsoft’s
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`contribution to the infringement of the ’338 patent by users and customers.
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`64. Microsoft’s continued making, using, sales, and offerings to sell the Accused
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`Products with knowledge of the ’338 patent constitutes willful infringement of one or more of the
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`claims of the ’338 patent.
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`65.
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`SurfCast has been and continues to be injured and damaged by Microsoft’s willful
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`infringement of the ’338 patent.
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`COUNT IV (THE ’434 PATENT)
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`66.
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`Each of the proceeding paragraphs 1 to 65 is incorporated as if fully set forth herein.
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`67. Microsoft’s use, importation, manufacture, offer to sell, and/or sale of the Accused
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`Products constitutes direct infringement of one or more of the claims of the ’434 patent under 35
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`U.S.C. § 271(a), including but not limited to claims 1, 9, and 17.
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`68.
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`SurfCast has been injured and continues to be injured by Microsoft’s use,
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`importation, manufacture, offer to sell, and/or sale of the Accused Products.
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`Case 6:21-cv-01018 Document 1 Filed 10/01/21 Page 17 of 22
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`69. Microsoft is the assignee of U.S. Patent No. 7,933,632, entitled “Tile Space User
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`Interface for Mobile Devices,” (the “’632 patent”) the abstract of which describes “a user interface
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`for mobile devices enable data and services available through the mobile dev