Takeaway: Corroborating evidence concerning the date of conception must include independent, third-party evidence. Documentary evidence that is authenticated by inventor testimony is insufficient to corroborate inventor testimony regarding a date of conception.
In its Final Written Decision, the Board found that claims 1-52 of the ’403 patent are unpatentable and denied Patent Owner’s Motion to Amend. The subject matter of the ’403 patent relates to a graphical user interface that organizes content from a variety of information sources into a grid of tiles, each of which can refresh its content independently of the other.
The Board began with claim construction and considered the proper construction of “tile,” “partitioning a visual display of the device into an array of tiles,” “refresh rate” / “retrieval rate,” and “user-defined array size.”
In the Decision to Institute, the Board construed “tile” within the context of the specification as “a graphical user interface element whose content may be refreshed and that, when selected, provides access to an information source.” Patent Owner argued that the “information source” should be limited to one that is “assigned to the tile.” Petitioner responded with several arguments, including that the proposed modification is “in conflict with other terms in the claim, which recites ‘associating’ an information source with the tile.” The Board agreed with Petitioner. Patent Owner also argued that the tile should be “persistent.” Petitioner responded with several arguments, including that Patent Owner was reading “implementation details” into the claim without a clear and unambiguous disclaimer and that there was no evidence that “persistence” was considered to be part of the invention. The Board again agreed with Petitioner and maintained its previous construction of “tile.”
Turning to the second disputed claim term, the Board considered whether to maintain its earlier construction of “partitioning a visual display of the device into an array of tiles” as “dividing a display or window into two or more tiles.” Patent Owner argued that the term should be construed to require that the tiles be nonoverlapping because the ’403 patent describes “the present invention” as “comprising the steps of: partitioning a visual display of a computer into an array of tiles in a non-overlapping configuration.” The Board was not persuaded by Patent Owner’s arguments. One of the stated reasons was that the Patent Owner’s construction would render the words “non-overlapping” superfluous in a dependent claim.
Concerning the terms “refresh rate” and “retrieval rate,” Patent Owner argued that the Board’s construction of the term as “a recurring time interval at which information displayed in a tile is refreshed or retrieved” is too narrow because it excludes aperiodic rates. Petitioner argued that Patent Owner improperly relied on extrinsic evidence, that Patent Owner’s proposed claim construction would not affect patentability because it is broader than the Board’s, and that the arguments had previously been rejected. However, the Board was persuaded by Patent Owner that the broadest reasonable construction of “refresh rate” / “retrieval rate” encompasses aperiodic rates.
Finally, the Board considered the proper construction of “user-defined array size.” In the Decision to Institute, the Board construed “user-defined array size” as “the number and arrangement of tiles to display, as specified by the user.” Patent Owner argued that “user-defined array size” should be construed as “the number and arrangement of tile positions in the array as specified by the user.” It relied on expert testimony that the plain and ordinary meaning of “arrangement” includes positioning. Petitioner countered that the phrase “tile positions” does not appear in the ’403 patent. The Board agreed with Petitioner and rejected the expert testimony, which it said was unsupported by evidence. Accordingly, the Board maintained its previous construction of the term.
After claim construction, the Board addressed whether Patent Owner could establish a date of invention prior to the filing date of one of the cited references, Duhault II. Patent Owner submitted a variety of evidence in support of its argument that the date of invention antedated Duhault II, including inventor declarations, emails exchanged between the inventors, entries from one inventor’s notebook, white papers, photographs of a flip chart, and a letter from Patent Owner’s attorneys. Petitioner argued that Patent Owner was required to corroborate the dates of its conception documents with non-inventor evidence and that it did not do so, which resulted in the evidence consisted only of documents drafted by and communicated between the inventors. The Board noted that Patent Owner’s exhibits had been challenged as to authenticity and determined that Patent Owner did not cure this defect, stating “Inventor testimony is not sufficient to authenticate a document offered to corroborate the inventor’s testimony. The purpose of corroboration is to prevent fraud by providing independent confirmation of the inventor’s testimony. . . . A document authenticated by only an inventor does not achieve that purpose because it is not sufficiently independent.” Because the Board did not rely on the inventors’ evidence of earlier conception, it accorded the filing date of the provisional application to which the ’403 patent claims benefit as the date of conception.
The Board also analyzed whether Patent Owner established reasonable diligence and concluded that it had not. The conclusion resulted from evidentiary corroboration issues as well as a finding that a law clerk who worked on the matter was not reasonably diligent during the entire time period between the date of Duhault II and the filing date of the provisional application. The Board noted that the clerk did not work on the matter on approximately 30 days throughout the time period, worked on it less than 45 minutes for seventeen other days, and worked on later-assigned matters out-of-order.
Turning to the substantive issues of patentability, the Board first analyzed whether claims 1-13, 17-28, 30-33, 5-37, 39-43, and 46-50 are unpatentable under 35 U.S.C. § 102(e) as anticipated by Duhault II. Patent Owner argued, inter alia, that the video images of Duhault II were not the recited “tiles” because “they are not assigned individual refresh rates” and that it is “conceivable” that the video images “could be refreshed at ‘random intervals.” The Board, however, rejected these arguments, stating that the claims did not require an “individual” refresh rate, nor did it require that the “refresh rate” be “predetermined.” The Board rejected Patent Owner’s additional arguments because they were based on the proposed construction of “tile” that the Board did not adopt. In addition, the Board was persuade that Duhault II also disclosed priority values as recited in claims 4 and 31 and “multiple unselected video viewing areas are assigned the same refresh rate using the same methodology,” as recited in claims 10, 42, and 49.
The Board then found that claims 1, 9–11, 22, 41–43, 46, and 48–50 were unpatentable under 35 U.S.C. § 102(e) as anticipated by Chen, and that claim 29 was unpatentable under 35 U.S.C. § 103(a) as obvious over Chen and MSIE Kit. It also found that claims 1–3, 5–8, 11, 12, 14–16, 19, 21, 22, 27, 30, 32, 34, 37–40, 43–47, and 50–52 were unpatentable under 35 U.S.C. § 102(b) as anticipated by MSIE Kit. The Board then determined that claims 1–3, 5–8, 12–14, 19, 21, 22, 27, 30, 32, 34, 37–40, 46, and 47 were unpatentable as anticipated by Duperrouzel and that claims 17, 20, 25, and 28 were obvious over MSIE Kit and Brown, and over Duperrouzel and Brown.
Next, the Board considered Patent Owner’s Motion to Amend. It began with claim construction, finding that Patent Owner did not “provide any persuasive claim constructions or explanations for how  new claim terms should be construed.” As a result, the Board determined that Patent Owner did not “provide adequate information for us to determine whether [it] has demonstrated the patentability of its proposed substitute claims over the prior art generally.” The Board also found that Patent Owner did not show adequate support in the written specification for the entirety of each new claim. Next, the Board also found that Patent Owner did not explain what was previously known in the art or the level of ordinary skill in the art with respect to each new claim feature added by its proposed substitute claims. Accordingly, the Board determined that Patent Owner did not set forth a prima facie case for the substitution of its new proposed claims or satisfied its burden of proof. The Motion to Amend was therefore denied.
Microsoft Corp. v. Surfcast, Inc., IPR2013-00292; IPR2013-00293; IPR2013-00294; IPR2013-00295
Paper 93: Final Written Decision
Dated: October 14, 2014
Before: Michael P. Tierney, Joni Y. Chang, and Matthew R. Clements
Written by: Clements
Related Proceedings: SurfCast, Inc. v. Microsoft Corp., No. 2:12-cv-00333 (D. Me.)