Microsoft Corporation v. Biscotti, Inc.
878 F.3d 1052
| Fed. Cir. | 2017Background
- Biscotti owns U.S. Patent No. 8,144,182 (the ’182 patent) for a real-time video communication system (claims at issue: independent system claim 6 and method claim 69).
- Microsoft filed three inter partes review (IPR) petitions asserting Kenoyer (U.S. Patent No. 7,907,164) anticipates and/or renders obvious the challenged claims.
- Kenoyer discloses multi-component videoconferencing systems (endpoints, codecs, set-top box embodiments, ports/inputs, and a method flow in Figure 22) and contains a sentence near the end of the spec stating that some or all embodiments "may be implemented by program instructions stored in a memory medium."
- The PTAB denied Microsoft’s challenges in each IPR, finding Microsoft failed to prove by a preponderance that Kenoyer discloses the claimed "storage medium" with the specific program-instruction sublimitations (claim 6) or the claimed "receiving on an audiovisual input interface from a set-top box" limitation (claim 69).
- The Federal Circuit affirmed, reviewing PTAB factual findings for substantial evidence and concluding the Board applied the proper anticipation standard and reasonably credited Biscotti’s interpretations and expert evidence over Microsoft’s.
Issues
| Issue | Microsoft’s Argument | Biscotti’s Argument | Held |
|---|---|---|---|
| Whether Kenoyer anticipates claim 6 (storage medium with specified program instructions) | Kenoyer’s broad “program instructions” sentence covers the specification generally; a POSA would "at once envisage" a storage medium implementing the claimed instructions | The sentence applies only to the Figure 22 method context; Kenoyer’s disclosures are disparate and not tied together as implementing the specific storage‑medium instructions | Affirmed: PTAB reasonably found Kenoyer does not anticipate claim 6 (substantial evidence) |
| Whether Kenoyer anticipates claim 69 (receiving set-top box audiovisual stream on an audiovisual input interface) | Kenoyer’s figures and text disclose a codec with inputs and a pass-through/set-top‑box embodiment such that a POSA would understand the inputs receive set-top box signals | Kenoyer contains distinct embodiments (external codec ports vs. set-top‑box-incorporated codec); Microsoft improperly combines separate teachings and failed to show a POSA would necessarily read them together | Affirmed: PTAB reasonably found Kenoyer does not anticipate claim 69; Microsoft waived new arguments not raised in its petition |
| Whether PTAB applied correct anticipation standard / claim construction deference | Microsoft suggested the dispute over reading Kenoyer is purely legal and challenges standard of review | Biscotti argued the dispute is factual (POSA viewpoint, intrinsic interpretation) and PTAB’s factual findings are entitled to deference | Affirmed: anticipation is a factual inquiry reviewed for substantial evidence; PTAB applied correct legal standard |
| Whether PTAB erred by not adopting Microsoft’s broader construction of “set-top box” (per ’182 patent) | The ’182 patent defines set‑top box broadly (could include TVs or computers); PTAB should have applied that broad meaning when assessing Kenoyer | PTAB’s decision did not hinge on a set‑top‑box construction and Microsoft did not show how Kenoyer’s computer would qualify as a set‑top box; related arguments were waived | Affirmed: any alleged mis‑construction was not prejudicial and related arguments were waived |
Key Cases Cited
- Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376 (Fed. Cir.) (anticipation is a factual question; a reference may anticipate if a POSA would "at once envisage" the claimed arrangement)
- Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir.) (anticipation requires the prior art to disclose elements arranged as in the claim; cannot rely on unlinked, distinct teachings)
- Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331 (Fed. Cir.) (prior art may anticipate when it teaches components/functionalities that a POSA would combine and implement)
- Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (U.S.) (IPR claims are given their broadest reasonable construction)
- In re Petering, 301 F.2d 676 (C.C.P.A.) (discussing when a POSA would "at once envisage" a claimed arrangement)
- Teva Pharms. USA, Inc. v. Sandoz, Inc., 574 U.S. 318 (U.S.) (review rules for claim construction: legal conclusions reviewed de novo; subsidiary factual findings reviewed for substantial evidence)
- Anderson v. City of Bessemer City, 470 U.S. 564 (U.S.) (appellate deference to factfinder when support in record is plausible)
- Lavender v. Kurn, 327 U.S. 645 (U.S.) (appellate court’s role in assessing sufficiency of evidentiary basis)