SurfCast and Microsoft prep for September 3 'live tile' trial

Later this year, a handful of bankers and former IBM executives from tiny SurfCast could square off against Microsoft in the U.S. District Court in Portland, Maine, in a patent dispute where potentially hundreds of millions of dollars would be at stake.

On October 30, 2012, SurfCast filed a complaint alleging that Microsoft's use of dynamically updating "live" tiles in its Windows 8 user interface infringes on SurfCast's U.S. patent. Since the filing of the suit, the two parties have been in discovery in anticipation of a September 3, 2013, trial date. 

The upstart patent holder is willing to bet its investors' money that it has defensible prior art that trumps Microsoft's patent, filed six years after SurfCast's, for its live-tile interface, and that a judge and jury could be convinced to share SurfCast's point of view.

Of course, court battles over user interface elements and methods are particularly complicated and unpredictable. A Sun Microsystems patent filed in June 1997 and granted in January 2006 has similarities to SurfCast's patent and could affect the case. In the high profile Apple v. Samsung trial last year, Apple was awarded $1 billion by a jury that found Samsung guilty of copying patented iPhone designs. However, some of Apple's patents in the case have subsequently been invalidated or are under reexamination by the U.S. Patent Office, which could affect the appeals process. And Microsoft is no shrinking violet when it comes to legal challenges.

Following the filing of SurfCast's suit, Microsoft said that it was "confident we will prove to the court that these claims are without merit and that Microsoft has created a unique user experience." In its answer and counterclaim to SurfCast's first amended complaint, Microsoft maintained that SurfCast's patent was "invalid and void," failing to meet the conditions for patentability set forth in the U.S. patent codes.

Read: What is SurfCast and can it spoil Microsoft's Windows 8 party?

SurfCast is new to the patent litigation game. The company's founders and board of directors, who were not available for comment on the case, include former IBM executives Jim Cannavino, Dr. Bob Carberry, and Klaus Lagermann, as well as former Deutsche Bank AG executives Ovid Santoro, Michael Cohrs, and David Charters. SurfCast patiently waited until Windows 8 was shipped and generating revenue before bringing its infringement claim against Microsoft. But, during the eight years since it was granted by the U.S. Patent Office, SurfCast's patent has been widely cited.

"The 6,724,403 patent has been cited 120 times since it was granted in April 2004. Apple cites it 52 times, and Microsoft 47 times. These, of course, are not random companies, and they have clearly been looking in the same technology area for a long time. But it doesn't necessarily mean they are infringing," said Erin-Michael Gill, managing director and chief intellectual property officer at MDB Capital Group.

SurfCast's U.S. 6,724,403  patent, filed October 30, 2000, and granted April 20, 2004, is centered on the implementation of a grid of tiles as part of the graphical user interface, independent of the electronic device.

The present invention comprises a grid of tiles that resides on the user's desktop. The grid of tiles provides a uniform, graphical environment in which a user can access, operate, and and/or control multiple data sources on electronic devices. The graphical environment is uniform with respect to the source of accessed information and can manage multiple streams of content, entirely of the user's choice. For example, the invention presents video clips, e-mail messages, television shows, Internet sites, application programs, data files and folders, live video streams, music, radio shows, and any other form of analog signal, digital data, or electronically stored information, to the user uniformly and simultaneously, regardless of whether the information is stored locally or available via modem, T1 line, infrared, or any other form of communication. The user's impression of the interface is also independent of the type of electronic device upon which it is implemented.

The application program of the present invention runs on many different devices, including, but not limited to, set-top box, personal computer, and hand-held device. The grid and tiles retain the same characteristics, regardless of operating device. For example, the tiles remain individually configurable and can offer near real-time views of their data content. The application therefore permits the user's interaction with a range of electronic devices to be unified.

Microsoft's U.S. 7,933,632 patent titled "Tile space user interface for mobile devices," which was filed June 16, 2006, and issued April 26, 2011, describes a tile-based graphical interface to display data and services, with similarities in function and description to SurfCast's patent.

In SurfCast's patent, the tiles provide an "at-a-glance view of the current status of the program or file associated with it," and for Microsoft "tiles provide a snapshot of the current state of content available through the mobile device without requiring any interaction by the user."

The case will center on determining just how similar the patents are and what prior art might compromise the validity of either patent. Microsoft's patent includes a citation of SurfCast's patent. SurfCast's complaint notes:  "During prosecution of the application that issued as the '632 patent, the Patent Examiner cited the '403 patent as relevant prior art as part of a Non-Final Rejection dated April 21, 2009."

Following is the abstract from Microsoft's patent:

Systems and methods for providing 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. Tiles can also provide quick access to start software applications. Tiles can be organized in the display space by the user or the tiles can be automatically grouped based upon associated metadata.

A patent from Sun Microsystems (now Oracle) may play a role in the outcome of the case, if it ultimately goes to trial. Doris Spielthenner of Ambercite, which developed a network patent analysis platform that systematically analyzes citation linkages, found an antecedent patent from Apple that led to the Sun patent in her analysis of SurfCast's claims for its patent.

Apple's U.S. 5,479,602 patent  was issued in December 1995 and provides a "method and means for generating and displaying a content-based depiction of a standard icon on the display of a computer":

A process for generating a reduced visual version of an object based on the content of the object and displaying the reduced visual version on a display screen of a computer, the reduced visual version being associated with the object, the computer having memory for storing and displaying the object, the reduced visual version having functionality of an icon, the object having a variable visual format based upon information contained by the object, comprising the steps of: generating the reduced visual version of the object based on the content of the object by transforming at least a portion of the variable visual format of the object; and, displaying the reduced visual version of the object on the display screen.

Spielthenner suggested that the patent examiner may have missed Apple's patent, but SurfCast does clearly cite Apple's patent in its filing.  She concluded that Apple's patent is a "little bit similar" to SurfCast's patent. More relevant is the forward citation in Apple's patent to Sun's U.S. 6,988,248 patent, which was filed in June 1997 and granted in January 2006, that exhibits more similarity to SurfCast's patent.

Sun's patent and the notion of a software 'container' that presents up-to-date information has some similarities to the live tile concept:

Animated indicators monitor the state of a software container and reflect the state of the container, potentially including information such as amount, type, and activity of the container. As the state of the container changes, an animation routine accordingly changes. Users are presented with up-to-date and detailed information about a container represented by a small graphic pictorial. Thus, the user receives a continuous supply of useful information about the container without having to specifically select and view the container as a full screen representation.

The Sun patent describes how the container would show live updating in a 32-by-32-pixel area.

For example, there may be 100 messages in a discussion thread, but only four created in the last two weeks. To show this, the update frequency of the animation frames may correspond to the frequency of only the items added within the last two weeks. Alternatively, color may be used to indicate age. For example, yellow question marks may indicate postings added over a week ago while green question marks indicate postings added within the past week.

"This does appear to disclose some of the key elements of the SurfCast patent. It would be interesting to see how this patent could be used in litigation involving the SurfCast patent," Spielthenner concluded in her analysis. She cited problems with conventional keyword searching, such as weak relationships among the terms "tile," "container," and "icon," and inconsistent patent codes as issues that compromise the accuracy of patent examinations.