What Microsoft’s Recent Patent Invalidation Case in China Teaches Us About User Interface Patents

Each year the CNIPA publishes its Top Ten Patent Re-examination and Invalidation Cases for the previous year. These cases are meant to be guiding cases, showcasing exemplary real-world decisions that clarify certain aspects of the law.

Today we’ll be sharing about one of the Top 10 Invalidation Cases in 2024 involving Microsoft (China) Co., Ltd. petitioning to invalidate a patent by Newman Infinite Inc. in the field of human-computer interaction (HCI).

Case summary

• Case Number: 第 4W117583 号
• Decision Date: 06 May 2024
• Invention Title: Apparatus, methods and computer-readable storage media for manipulating a user interface element (用于操纵用户界面元件的装置、方法和计算机可读存储介质)
• Appellant / Patentee: 纽曼无限公司 (Newman Infinite Inc)
• Appellee: 国家知识产权局 (CNIPA)
• Invalidation Requester: 微软（中国）有限公司 (Microsoft (China) Co., Ltd.)
• Patent No.: 201280055598.3
• Application Date: 13 September 2012
• Earliest Priority Date: 13 September 2011
• Grant Date: 09 January 2018

The patent claimed methods and devices for manipulating a touch screen user interface that could help differentiate between various touch targets, preventing undesired interactions with non-target elements. The patentee used a self-defined term "clutch user interface element", which was not a common term used in the art.

“Claim 1. A method for manipulating a user interface element presented on a display screen, the method comprising:

displaying a target user interface element on a touch-sensitive display screen; displaying a clutch user interface element;

determining that a selection touch event has occurred when the target user interface element is approached while no engagement touch event is present when the clutch user interface element is approached;

in response to determining that the selection touch event has occurred, selecting the target user interface element for manipulation;

determining when the engagement touch event is occurring; and

when the engagement touch event is occurring, activating, by a processor, the manipulation function associated with the target user interface element.”

Key Issues

1. Lacking Essential Technical Features in the Claims

The crux of Microsoft’s argument was that claims 1, 9, and 17 were invalid for insufficient disclosure because they did not contain the essential technical feature of "after a touch engagement event occurs, another user interface element cannot be selected."

The CNIPA disagreed, indicating that the essential technical feature was present in the self-defined term “clutch user interface element”, which was defined in claim 1. Additionally, the meaning was further supported by the specification and further clarified during the Second Office Action response. The CNIPA concluded that a skilled person would understand its role in preventing undesired interactions with non-target elements. Therefore, claims 1, 9 and 17 included all essential features necessary to solve the technical problem and complied with Rule 20(2).

2. Novelty and Inventiveness

Microsoft also argued that the claims were not novel and inventive in view of the prior art. The CNIPA disagreed, concluding that the claims were novel and inventive because none of cited prior art references disclosed at least certain distinguishing features involving backend processing.¹

Why Top 10?

1. Clarification of Claim Scope of Self-defined Terms

The court’s ruling provides essential guidance on how to determine the protection scope for claim terms. In general, claim terms should be interpreted as their ordinary meaning in the relevant field. For self-defined terms, the interpretation should be based on limitations in the claims, combined with teachings in the specification, to determine the technical problem to be solved and the technical effects achieved.

Additionally, the prosecution history files (e.g., OA responses) are accessible by the public and can also be used to explain the claims.

When interpreting the claims, internal evidence should be considered first (specification, drawings, prosecution files); if still unclear, external sources like technical textbooks shall be considered. Expert infringement opinions are for reference only and are not determinative.

2. Backend Processing Disclosure in human-computer interaction related inventions

In human-computer interactions, backend processing serves as a bridge between frontend input operations and output results, typically remaining invisible to users. When the backend processing is not explicitly disclosed in the prior art, the analysis should adopt the perspective of a person skilled in the relevant technical field. The standard is whether one skilled in the art can directly and unambiguously identify the backend processing method by objectively examining technical features demonstrated during software interactions based on user input operations and the corresponding output results.

Additionally, technical features related to backend processing should be considered holistically with frontend interaction characteristics.

EIP thoughts

This case serves as a reminder of the complexities involved in patent prosecution, especially in rapidly evolving fields like human-computer interaction technologies. Here are some practical steps to consider:

• Enhancing Claim Dafting: Ensure that claims are drafted with precise technical language that accurately reflects the invention’s unique features. Key terms, especially self-defined terms, should be clearly defined and explained in the claims and specification.
  
• Sufficiency of Disclosure: Encourage clients to disclose relevant technical details, including backend processes and the technical effects achieved, to clearly differentiate the differences between the claimed invention and the prior art.

This article is for general informational purposes only and should not be considered legal advice or a legal opinion on a specific set of facts.

1. Direct English translation of the Court’s comment: “when it is determined that there is no engagement touch event occurring in proximity to the clutch user interface element and a selection touch event has occurred in proximity to the target user interface element, the target element identifier associated with the target user interface element is stored in memory to select the target user interface element for manipulation, when it is determined that an engagement touch event has begun occurring in proximity to the clutch user interface element, the target element identifier is retrieved from memory, and the target user interface element is associated with an operational function, consequently, when the engagement touch event is occurring, the manipulation function associated with the target user interface element is activated by a processor”

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