*1 CORPORATION, MICROSOFT
Appellant
v. INC., Appellee
BISCOTTI,
2016-2080
2016-2082
2016-2083 Appeals, Court of
United States
Federal Circuit. 28, 2017 December
Decided: *2 O’MALLEY, NEWMAN,
Before REYNA, Judges. Circuit Dissenting opinion filed Circuit Judge Newman.
O’MALLEY, Judge. Circuit (“Microsoft”) ap- Corporation Microsoft from of the Patent Trial peals decisions (“Board”) in sepa- Board three Appeal (“IPR”) partes proceed- rate inter review found that Micro- ings, which the Board by preponderance failed to show a soft challenged that the claims evidence (“ 8,144,182 patent”) ’182 U.S. Patent No. anticipated or obvious. See were Microsoft Inc., IPR2014-01457, No. Corp. v. App. 2016 Pat. LEXIS WL (P.T.A.B. 17, 2016); Mar. Microsoft Inc., IPR2014-01458, Corp. v. Biscotti No. App. 2016 Pat. WL LEXIS (P.T.A.B. 17, 2016); Mar. Inc., IPR2014-01459, No. Corp. v. Biscotti App. 2016 Pat. LEXIS WL 17, 2016). (P.T.A.B. Because the Mar. supported by Board’s decisions are sub- rely on an stantial evidence and do construction, erroneous we affirm. Background I.
A. ’182 Patent The patent The 182 is entitled “Real Time System.” Video Communications The techniques for patent “tools and discloses providing calling re- video solutions” and Jr., Sidley L. Austin Trela, conferencing Constantine lates real-time video where IL, LLP, Chicago, argued appellant. communicate, two or more users over a represented Also network, in a Richard Alan Ceder- that includes vid- conference Douglas Fougere, oth, Lewis; Joshua John participant. pat- eo and audio of each Joseph Micallef, Washington, A. ent, Abstract. DC. LLP, vari- patent explains Ellis that there are John C. Kirkland & O’Quinn, DC, technologies on the mar- argued appellee. calling Also ous Washington, video ket, no “there have been represented but states that Burgess; Adam H. William Francisco, CA; for con- satisfactory calling options R. Michael W. video San Alper, CA; 1 11.42-46. The 182 sumers.” Id. at col. Angeles, Vries, De Amanda J. Los types of video notes three different Chicago, IL. Hollis, calling systems available the time this ceive video or audio stream over the (1) systems that patent: professional-grade from internet video second communica- complex expen- require hardware and are tion device. first video communica- use; (2) personal sive com- and difficult tion display device then can the video or systems, as web puter such cams and audio stream from the second video com- chat software like that have “far Skype, using display munication device device. require use optimal” quality, from call Id. The second video communication device personal confusing computer, and use similarly can receive video or audio hardware; error-prone software and stream over the internet from the first (3) phones are dedicated video video communication device. Id. The sec- com- expensive, require multiple phones to ond video communication device then can others, provide municate with and fail display the stream *4 adequate quality they call because use first using video communication device operate small screens and over a standard device. Id. This display exchange might Id. at col. “plain telephone system.” old 11. part of happen as a call video between the patent 46-col. 21. 4. The ’182 claims that it two video communication devices. provides system a and “solves these embodiments, In some the video commu- prod- other deficiencies current found nication devices can simultaneously display col. ucts.” M at 211. 5-6. respective the audiovisual streams from sys- patented The communication video respective set-top the boxes so that the tem includes such as video components display or device shows the video audio devices, internet, communication the video (from stream either video communication sources, devices, display set-top and boxes. device) and the audiovisual stream from Id. at col. 51. 61.13. The video 40-col. first time. Id. at set-top the box at the col. .same captures communication a or device video situation, 6 11. type 14-18. this the a video source. Id. from audio stream or might video audio stream be sent across col. 5 49-56. The second video communi- the to another video communica- internet similarly captures cation a device video device, tion but the stream audiovisual audio stream from a video source. second set-top box not be sent would Id. first The and second video communica- over the internet the other video com- to tion output can devices video audio functionality munication device. This would stream they receive from their respective participate user to in a video call allow a devices. Id. display video source watching while also television the same col. 511.56-62. Id. at col. time. 611.18-20. Each video device communication also shows box. Id. at col. to a 5 11. set-top connected in- video communication includes an device This 62-65. allows the video communica- put and an video interface audio tion an device audiovisual receive which the video commu- through interface set-top stream from the box transmit can nication device receive video audio device. Id. at col. 5 1. 65- it to display 19-22, Id. at col. 10 11. has.. from a col. 61.1. The communication device 48-52. video interface output The video communication devices can also includes an video through output video or to one an audio which send their audio streams interface Id. at col. 5 11. can another across the communication device trans- internet. the video 42-44; id. col. 6 11. device. Id. example, display For the mit and audio to a 1-13. video 19-22, com- first communication can re- at col. 10 11. 59-67. The video video device capture capture capture a device [E] video device has an audio munication video; through capture a device and video device video; for which can receive audio cap- capture audio device [P] might include a these features example, audio; ture capture a camera to microphone interface; a network [G] partici- call footage of a speech and video processor; at least one [H] 11 11. 3-12. The video Id. at col. pant. storage a in communica- medium [I] includes a net- also device communication least processor, tion with the at one interface that allows connection work storage having encoded medium network, to communi- can be used thereon a set instructions executa- com- or another video cate with server processor to ble the at least one col. 11 11.25-31. Id. at munication device. operation the first control video device, in- communication the set of in- device communication also video comprising: structions codecs, storage and a processor, cludes a 64-66, instructions, Id. 10 11. medium. at col. controlling [i] generally processor controls 11-18. capture capture device video communication operation stream; captured video 9 11.64-66. The device. at col. codecs controlling instructions [ii] communication provide device capture capture device *5 decoding functionality. encoding with and stream; captured audio storage col. Id. at 1011.11-14. medium for encoding instructions [iii] is “encoded with instructions executable captured cap- video stream and working memo- provide can processor, a produce tured audio' stream instructions, ry for execution of those [and] packets; series data and can be used to cache buffer media and/or ' transmitting instructions [iv] streams, Id. at col. the like.” and/or on the packets the series data 14-18. by a reception network interface for independent The ’182 has four video second communication device. claims, only but these two are relevant to Id. at 62-col. col. 321. 33 25. Claim and appeals—claims Independent 6. and 69. depending certain claims claim reads: first IPRs. were at issue two compris- A system, video communication claim 69 Independent reads: ing: providing calling A us- method video device, a first communication ing video a first video communication device (cid:127) device, comprising: capture an a comprising audio device, capture a inter- video network a input to receive video interface [A] face, interface, input an audiovisual and box; input set-top from a video interface, output an audiovisual ah input audio interface to re- [B] comprising: method box; set-top ceive from the audio in- receiving, on the audiovisual [A] a output pro- interface [C] video interface, set-top put a box audiovisual vide, output display video a video box, set-top set-top stream from a device; comprising a box stream audiovisual set-top pro- stream and a output interface box video audio [D] stream; receiver; output to an audio box vide audio audio receiving, on inter- Id. at col. 1. 63-col. 38 1. the network 23. Claim 69 [B] depending and certain claims from claim face, stream a remote audiovisual via were issue the third IPR. with a network connection second device, communication the re- video B. The Kenoyer Reference comprising mote audiovisual stream 7,907,164 U.S. Patent No. (“Kenoyer”), remote audio stream a remote “Integrated Videoconferencing entitled stream; video System,” on was filed April issued March 2011. Its invention transmitting, on the audiovisual [C] and, conferencing “relates generally interface, output output a consolidated specifically, more to videoconferencing.” comprising video least a stream Kenoyer, col. 11.22-23. The reference portion of stream the remote video explains videoconferencing allows output and a audio consolidated participants “two more at remote loca- comprising stream at least the remote tions to using communicate both video and stream; audio Id. at col. audio.” 111.25-27. capturing captured video [D] Kenoyer discloses a “multi-component device; capture videoconferencing system” stream “may video in- camera, microphones, speakers, clude a capturing captured audio [E] possibly conjunction codec used device; capture stream with the audio computer system.” with a Id. at 1 11. Kenoyer explains “suscep- 43-47. encoding captured [F] tible various modifications alterna- stream and the stream captured audio tive forms.” Id. at col. 3 11. 17-18. The produce packets; a series data system’s conferencing ca- pabilities “may be implemented over vari- transmitting the series of data [G] types ous devices.” Id. at col. networked packets on the network interface *6 4 11.15-16. An embodiment of the inven- reception the second video commu- implemented provid- tion over a network nication device. ed in 1: vices, microphones, Fig. conferencing sys- such as audio The video (101) tem includes a network end- devices, output speakers, de- (130A (103A-103H), points gateways vices. Id. at col. 11.35-39. And these 130B), (108), provider public service endpoints coupled can include (120), telephone switched confer- network devices, monitors, such as various video *7 (105A-105D), telephones ence units televisions, projectors, output video de- (106A “plain telephone system” from a old vices, input devices. Id. at col. 4 or video 11. 106B). 64-col. 4 1. 4. Id. at col. 3 1. “may comprise endpoints 44-46. The vari- (103A-103H) endpoints can be audio to one or ports coupling ous more systems. Id. at col. 3 videoconferencing devices, devices, (e.g., devices audio video explains 66-67. certain etc.) to one or more networks.” Id. and/or (103D-103H) endpoints may include audio 411.47-49. capabilities to and video communication Figure participant shows a conferencing capability. Id. at create video multi-component con- a video location with endpoints col. 4 11. can 35-46. These also ferencing coupled system: include various audio de- F/G.3 (351); (355); computer a Fig. Kenoyer explains system
Id. at that a connection (361); control multi-component remote remote participant can use the sen- (365). at col. A (300) sor Id. 6 1. 4-col. 8 1. 49. conferencing system video commu- participant capture can use the camera to participants nicate in a with other video video, microphone capture audio Id. 6 11.1-4. conference. at col. The multi- using display provide while system component conferencing partici- local or remote from a conference (300) following components: includes pant, produce speakers and the (303) (363) camera with a camera base remote conference participants. (375); (305); key- portion display lens col. 611.4-9. (311a (307); (309); speakers board a codec (371a 311b) speaker attachments a side view shows (319); 371b); microphones a network of an embodiment a codec: *8 FIG. 5 data).” Id. at 4 1. Fig. Kenoyer explains that video
Id. at 5. and/or embodiments, multiple ports can include on one codec 67-col. 5 1. 4. different 57- of the Id. at col. 811. “may implemented more sides codec. in soft- the codec can Figure As ware, hardware, shown codec or a of both.” combination camera, microphone, a ports for have Id. at col. 5 9-10. The can be codec speaker, input, output, components, into other incorporated such IP at col. 8 1. 66-col. 1. 17. connector. Id. set-top a camera base box. Id. at col. 1 also 11. 56-63. The codec can be 5, Kenoyer includes Aside from independent housing separated out to “an It teachings regarding the codec. other box,” coupled to the is (which may mean states “a codec pass-through as a allows codec “act for ‘compressor/decompressor’) short [sic] regular programming/games when may comprise any system method and/or being or to held” “dis- (e.g., com- conference encoding decoding and/or (cid:127) portion program- decompressing) (e.g., play at least a pressing and data *9 ming/games along with video Figure of Kenoyer video- shows a method of conferencing through the multi-com- conference.” Id. at col. 1011.25-30. ponent conferencing system: Fig. Id. at Kenoyer’s description of writing steps After out the shown that, states, Figure “[e]mbodiments “in *10 1062 6 Kenoyer anticipated or software that claim of computer programs
or more IPR, *-, patent. at to one embodiment the 182 57 components according 7571, *14-19. In App. 2016 Pat. at LEXIS may invention stored.” present of be support argument, its Microsoft assert- paragraph 15 11.46-50. The next Id. at col. “storage that the limitation of ed medium” “[f|urther states, and alter- modifications following 6 by disclosed was aspects of various native embodiments language Kenoyer’s specification: from may apparent to those the invention be (and or all “[e]mbodiments subset descrip- art of this in the in view skilled all) imple- or portions may the above' be 15 It also states tion.” Id. at 11.55-57. by program mented instructions stored may and that materials be sub- “[e]lements memory medium carrier medium and described for those illustrated and stituted *6, by processor.” executed Id. at re- herein, and parts processes App. (citing LEXIS Pat. at *18-*19 versed, of the inven- certain features and 21-24). Kenoyer, col. 15 11. Microsoft’s ex- independently, all as tion be utilized Houh, pert, language Dr. that this testified apparent one the art would be skilled using computer programs “describes having description of this after the benefit implement the codec other functionali- at col. 15 11.62-67. of the invention.” Id. *6, ty patent.” in that at described Id. (citing App. Pat. LEXIS at *19 J.A. History C. Procedural ¶ 100). “in- Regarding specific (“Bis- 2018, Biscotti, Inc. In November sub-limitations, structions” Microsoft and cotti”) in the District U.S. sued argued at expert specification, its that the of Texas for the District Court Eastern places, the functions de- various disclosed' alleging infringed the ’182 that Microsoft by the scribed instructions. Id. separate three IPRs patent. Microsoft filed language contended cit- that the challenging certain September 2014 by only ed Microsoft to the de- referred anticipation of the 182 on claims Figure immediately scription As relevant grounds. obviousness language preceded the on which Microsoft here, of claims Board instituted review relied, rather than all of the disclosures anticipation grounds, 69 on throughout Kenoyer specifica- made depend 6 and 69 claims that from claims *-, 2016 Pat. tion. See id. grounds. anticipation on and obviousness App. LEXIS *19-20. Biscotti (“57 IPRs, first two IPR2014-01457 Bovik, expert, argued its Dr. that lan- IPR”) (“58 IPR”), fo- IPR2014-01458 guage prior not apply could all disclo- on claims independent cused claim and specification spec- sures because the IPR, depend that claim 6. The third components, ification discussed certain (“59 IPR”), in- IPR2014-01459 focused cooling carry such as fans and handles depend claim 69 dependent and claims equipment, imple- been could have each, IPR, from claim 69. the Board *-, in storage medium. Id. at mented ultimately found that Microsoft failed App. 2016 Pat. at *21. Biscot- LEXIS prove preponderance of the evidence interpreta- argued ti that the more natural challenged anticipated language it applied tion of the was that claims rendered claims obvious. those Figure 22. only to the discussion of *-, App. Pat. at *20. LEXIS IPR The 57 1.. language’s appli- Biscotti asserted began analysis Board the 57 another supported cation was further by discussing IPR portion description Microsoft’s assertion instructions,” program various which referred “embodi- and it “makes sense *11 program-instructions that ments of described below.” the the methods Id. sentence 3-4) specifically would refer to Kenoyer, (emphasis the videoconfer- (quoting 15 encing in added). method the to disclosed” discussion language applied This the textu- *9, of 22. Id. at App. 2016 Pat. description steps Fig- al of laid out in the 7571, LEXIS at The Board 22, *27. therefore argued that the similar ure “agree[d] with that Kenoyer’s [Biscotti]” by language upon relied Microsoft—which to “embodiments of the reference methods of or all stated a subset “[e]mbodiments below” and of a “[e]mbodiments described (and all) above,” Kenoy- portions or of (and all) subset or all of portions er, added)— col. 15 11. (emphasis 21-22 above” both refer to description naturally applied Fig- to the description *-, Figure 22. Id. at 2016 Pat. *-, 57IPR, ure 22 as well. Pat. at 2016 7571, App. LEXIS at *27-28. The Board 7571, LEXIS at App. *20. accordingly found that Microsoft had not The Board Microsoft found that failed by a preponderance “demonstrated of the anticipat- that prove Kenoyer’s disclosure Kenoyer’s program-instruc- that evidence “storage ed medium” and “instruc- tions and various por- sentence other cited of claim 6 of ’182 tions” limitations tions ‘storage disclose the claimed medium’ *-, App. at patent. Id 2016 Pat. for,’ specific with its four ‘instructions 7571, LEXIS at *24-25. The Board noted person ordinary that skill in the art argument regarding the that Microsoft’s ‘at once envisage’ storage would medium “storage medium” “instructions” limi- specific with the instructions claimed.” Id. interpretation tations on an of the relied *10, 7571, App. at Pat. at LEXIS disputed language “referring of column 15 *28-29. tying together to and a number of disclo- explained The Board Kenoyer’s that al- portions throughout sures various Ke- leged storage disclosures of a medium with noyer regarding that functions instructions accordance with the limita- performed Id. at various embodiments.” claim tions of 6 “are unrelated each *8, 7571, *24 App. 2016 Pat. LEXIS at *10, other disclosure.” Id. [the] at 176-79). (citing The Board J.A. found 7571, App. at Pat. LEXIS *29. The Board “Kenoyer’s program-instructions sentence compared this to a disclosure that amount- not make does sense as a blan- disclosure “multiple, teachings ed distinct that the keting preceding pages,” all of the might artisan somehow combine achieve the sentence not refer back “does invention,” which is insuffi- claimed specifically to various disclosures other *-, anticipate. at cient Id. *9, at Pat. [Microsoft].” cited Id. App. Pat. LEXIS *29-30 Instead, App. LEXIS at *26. (citing MoneyIN, VeriSign, Net Inc. v. argument Board found that Biscotti’s (Fed. 2008) Inc., 545 F.3d Cir. regarding evidence meaning (internal omitted)). It quotation marks also sentence persuasive was “at least as provide “per- found that failed argument such [Microsoft’s] and evidence” suasive evidence that disclosure would that Microsoft had to meet bur- failed ordinary one of skill in be understood *9, proof. App. den Id. at Pat. storage the art to mean that the medium 7571, at LEXIS *27. with the func- program instructions and The Board further that it performed noted “makes tions in the various embodi- sense that a videoconferencing together Kenoyer.” method ments are used *10, 7571, implementation App. would lend itself to 2016 Pat. LEXIS *30. (software) per to enable the structions Board therefore found *13, functions.” Id. at pat- 6 of formance these anticipate did (citing at *40 App. 2016 Pat. LEXIS ent. Id. ¶ 57; Alappat, 33 In re F.3d J.A. 8422-23 29, 31, 37, 24-26, 28, Because claims banc) (Fed. 1994) (en (Rad- 1526, 1583 Cir. on claim the Board depended 41 all er, J., as concurring)). The dissent also prove by that Microsoft failed found the use “embodiments” serted that Kenoy evidence preponderance *—;— specification sug Kenoyer’s throughout Id. at the claims. anticipated er *12 not disputed language was gested that the 7571, LEXIS at *32- —-, App. 2016 Pat. ' at argued. Id. limited as had as 33. 7571, *-, App. Pat. LEXIS 2016 arguments to the Turning obviousness at *41-42. 37, that the Board for 36 and found claims majority responded to the- dissent The Microsoft, over prove to obviousness failed Microsoft,did stating not make the that other references. Microsoft Kenoyer and upon, by arguments the dissent and relied Kenoyer discloses the “stor- that asserted that, they agree to with the even were limita- and “instructions” age medium” . reasoning, not met Microsoft had dissent’s tions, that Board concluded Micro- but the anticipation. Id. at proving its burden of Kenoyer taught that prove to soft failed 7571, *-, App. 2016 Pat. LEXIS limitations, antici- discussed the the at *31-32. 20,16 *—:-, analysis. Id. at pation 7571, at *33-34. Micro- App, LEXIS Pat. 58 IPR The 2. whether separately did not address soft primarily the Board considered the limitations of claim Because Kenoyer rendered IPR, 6 in the as it the teachings in claim 58 did 57 on the located 6 obvious based IPR, final decision the 58 specification, Mi- the. written parts the so different very to the IPR is similar decision prove to obviousness crosoft failed reasoning *-, the same Pat. IPR. Based on 36 and 37. Id. at 2016 57 claims that 7571, underlying findings, the Board found at *34. App. LEXIS anticipate 6 of claim Kenoyer did , judges dissent- One on the Board IPR, *-, at patent. the ’182 from the Board’s conclusions. dis- ed LEXIS at *25-33. App. 2016 Pat. argued majority that the erred when sent similarly Microsoft The Board found that § to regarding the law applying Kenoyer anticipated the prove failed to teachings of failed to because *-, at 2016 Pat. dependent claims. Id. only specific into account not teach- “take App. at *33. The same ad- LEXIS infer- ings of the reference also the but judge from the ministrative dissented in the art skilled would ences one IPR, in the 58 and the Board’s decision reasonably expected to draw there- dissent, majority, is like the similar *13, App. at from.” Id. 2016 Pat. LEXIS in the 57 IPR. dissent issued A.P.J., dissenting) (Cherry, at *39 obviousness, Board Preda, addressing (citing In re F.2d (CCPA 1968)). again analysis a similar assuming performed that Ke- “Even in the final written decision expressly performed disclose noyer did not use instructions, that Micro- I IPR. The Board found program persuaded by am taught prove person soft presented evidence failed n ordinary “storage “instructions” recognize descrip- skill its medium” would limitations, provide 6 and failed disclosing program in- tion as the use argument how Rather inherency, additional rely than Micro- might render the limitation obvious when Kenoyer’s soft pass-through asserted that failed, anticipation challenge so Micro- clause in Figure pro- and the interface 5- *- of providing soft failed meet its burden Id. adequate vided disclosure. dependent for these claims. obviousness -2016 App. Pat. LEXIS at *19- Id. *-, 2016 Pat. LEXIS App. argued Microsoft that the pass-through 7572, at *33-35. receiving video, clause disclosed audio and disclosed input audiovisual IPR interface on which the audio and video are analysis in began The Board the 59 actually received. Dr. Houh provided Microsoft’s discussing IPR assertion that a import POSA would “consider the claim 69 of anticipated Kenoyer’s of connecting disclosure the set- patent. argued ’182 that Ke- top together Kenoy- box the codec with receiving noyer disclosed audio and video er’s a codec disclosure [sic] using an audiovisual box *7, Id. Pat. interfaces.” IPR, *13 *-, at input interface. App. 7573, at (emphasis *21 LEXIS omit- 7573, Pat. App. LEXIS at *17-18. ' ted). “ provided Dr. further Houh' that provided statements to Microsoft two dem- persons ‘such interpreted would have Ke- “[tjhe (1) codec’s onstrate disclosure: audio noyer’s a separate disclosure of codec from may processing incorporated video be coupled set-top meaning to box a as may set-top in the box distribut- be and/or that set-top be to coupled box would (e.g., through a cable ed other devices using Kenoy- the codec interfaces that box)”; set-top coupling the devices er discloses are included codec’ be- (2) also be an “[t]he codec persons cause would understand ‘[s]uch independent coupled is to the housing that that each of the inputs codec’s video de- set-top box act as a The codec capable scribed was by of receiv- regular program- pass-through ” ing Id. set-top input video from a box.’ ming/games is not a conference be- when (alteration in original). (the clause”). Id. ing “pass-through held” however,- found, Board that Biscotti that countered codec expressly not an interface in does disclose an Microsoft not relied did have- *-, statement. Id. Pat. either at input to receive or interface audio 7573, *18. The fur- App. LEXIS at Board box; instead, from a it set-top -received explain ther found that did not Microsoft *—- Id. input from a at computer. that a any finding person basis -, 7673, *21- App. 2016 Pat. LEXIS at (“POSA”) ordinary skill in the art would that explained shows understand two statements disclos- (309) a to computer, codec a not connected *-r-, an at “interface.” Id. ing *-, a set-top Id. App. box. at 2016 Pat. Pat. App. at *18-19. LEXIS 7573,-at LEXIS *22. that the The Board statements could noted Biscotti and Bovik also that Dr. asserted interface, inherently the. claimed disclose (513), In Kenoyer’s Microphone Alternate provide, but as inheren- failed (515), (503), In VGA In or Alt In Video requires, cy any why a POSA evidence (507) they that be do indicate would understand the as neces- would statements Id. set-top a at used to connect to interface. Id. sarily box. disclosing the claimed *-, *-, App. App. at Pat. LEXIS Pat. LEXIS at only *19. at *22-23. Dr. Bovik testified 2005) (Fed. (“[E]xpert testimony (513) Cir. In Alter- Kenoyer’s Microphone intrinsic evidence must be (515) input with the odds potentially In could nate set-top disregarded.”)). from audio interface receive box, described but neither was Additionally, the Board Micro- found Regarding interface. Id. being such an unpersuasive regarding argument soft’s (513), Bovik testified In Dr. Microphone (513), (515), In In Alternate Microphone not the microphone-in “a connection (507). (503), Alt In Id. at In Video VGA ordinary skill type connection one *-, App. 2016 Pat. LEXIS input interface be an consider to would Kenoyer’s Board noted that at *28-29. The box; set-top from the input receive audio description of the embodiment illustrated name, likely indeed, very would “multi-compo- of a Figures 7a and 7b microphone.” receive videoconferencing system” nent *7, LEXIS App. 2016 Pat. Id. (“MCVCS”) incor- functionality codec that Ke- Lastly, Dr. testified *23. Bovik box, top including the porated in a set (515) In receiv- noyer Alternate disclosed any contain pass-through passage, did not micro- ing signals from camera and (513), Microphone specific reference In from a box. phone array, not audio (515), (503), Alt In In Alternate VGA Id. (507). Thus, the Board found Video had not Board found that Microsoft testimony unpersuasive Dr. Houh’s of the evidence preponderance shown inputs understand such POSA would aspects of the all disclosed regular programming/games receive the limitation, Micro- primarily because inputs capable those are receiv- because *14 embodiments separate soft had combined The ing set-top from a box. Id. video for the limita- Kenoyer to account within persuasive be- found it even less Board claim, tions of the Board consid- the arguments and Biscotti’s evidence cause anticipation. Id. improper an basis ered regarding whether cast “substantial doubt” 7573, *-, at App. at 2016 Pat. LEXIS inputs appro- the a POSA would consider Kenoyer dis- *26. The noted that Board from a receiving priate 5 distinct embodiments: closes two Dr, box, no evi- set-top Houh cited and codec, Fig- of an shows embodiment his assertion. Id. support dence of a ures 7a and 7b show embodiment that, if it also even The Board found sys- multi-component conferencing accept would under- were to that a POSA incorporated functionality tem with codec (513), Microphone stand that In Alternate *-, 2016 in a at set-top box. Id. (515), (503), or In In Alt Video VGA 7573, at The App. Pat. *26-27. LEXIS (507) receiving regular pro- capable of are pass-through explained also that the Board box, “the mere gramming in connection with provided discussion was em- combining the disclosed possibility 7b, not Figures 7a and embodiment specific suggest- manner bodiments *-, Figure 5. Id. at the embodiment of not Dr. Houh Petitioner and does ed 7573, App. 2016 Pat. at *27. Conse- LEXIS ordinary person skill persuade us Dr. testi- quently, the Board found Houh’s Kenoyer in the art would have understood all the mony that a treat POSA would em- disclosing combining the disclosed contradicted teachings together different in manner specific suggest- bodiments sepa- Kenoyer’s disclosure that these were *10, Dr. Id. at by Petitioner Houh.” little ed entitled to rate embodiments was 7573, Commerce, at *30. The App. LEXIS 2016 Pat. weight. (citing Id. Network 1353, unpersuasive it particularly found Board Inc. F.3d Corp,, v. Microsoft separate did not link the 42. Microsoft also prior asserts that the art *-, patent, at embodiments. Id. is interpreta reference 7573, App. (citing a patent’s evidence, Pat. LEXIS at *30-31 tion of intrinsic such interpretation Lindemann GMBH v. specification Maschinenfabrik Co., here, 1452, Am. Hoist & Derrick 730 F.2d reviewed without deference. Id. (Fed. 1458, 1984), (citing USA, propo- Cir. for the Teva Sandoz, Pharm. v. Inc. — — Inc., U.S.—, requiring prior 831, sition that art 841, elements 135 S.Ct. — (2015)). “arranged themselves to be as in the L.Ed.2d Microsoft then claim” means that claims cannot be “treat- claims that the Board not “any did make catalogs separate specific ed ... as mere parts, findings of its own” and instead disregard “agreed part-to-part relation- Biscotti that made more ships forth in the give Kenoyer’s set claims sense program read instruc meaning”). their restrictively, claims tions sentence apply Board only particular thus concluded Microsoft failed to Fig had method described preponderance demonstrate ure 22.” at Id.
evidence that anticipated claim Microsoft confirmed this view in its re- *-, 69. Id. at App. Pat. LEXIS ply by maintaining brief that the Board’s 7573, at *31. anticipation decisions “turned on how that, patent” The Board noted read because each of and involved “no 71, credibility findings.” claims depends Appellant’s Reply and 74 from inde- Br. 70, 71, pendent claim 9. Microsoft claims perspective claims and 74 that the claim 69’s “receiving” included limitation. a POSA the context of this case is the *-, perspective same App. Pat. issue claim con- LEXIS struction, that, and that literally at *33. The found when which would Board ad- Id, later, 70, 71, infringe if dressing anticipates claims if Microsoft earlier. Labs., (citing Upsher-Smith shortcomings did overcome Inc. v. Pamlab, L.L.C., (Fed. assertion that the “re- disclosed F.3d 2005)). limitation of Cir. ceiving” claim 69. Id. contends that inquiries images therefore are mirror Board therefore be- found that Microsoft had *15 they depend cause both on a preponderance demonstrated of how POSA not a Kenoyer’s Kenoyer anticipated would read intrinsic evidence that evidence. 71, 70, on reasoning, claims no Id. this Microsoft 74. There was Based findings persuasive dissent claims that Board’s this there is “no reason IPR. that the deference afforded the two polar
contexts should be opposites.” Id. II. Discussion assertions, Despite these Microsoft stat- argument at oral that it was not chal- ed A. of Standard Review lenging our of anticipa- standard review on Anticipation Instead, acknowledged tion. that briefing challenges Microsoft’s anticipation question our stan- is a factual that this of dard review as anticipation. court reviews substantial See Accord- evidence. Microsoft, ing 2:49-4:05, “conclusion” Arg. Board’s Oral http:// anticipation on finding was not a of fact oralarguments.cafc.uscourts.gov/default. (“We a but instead conclusion on “constru- aspx?fl=2016-2080.mp3 completely based instrument,” ing a legal recognize written which is a is a of anticipation question Appellant’s task afforded no deference. [subject Br. fact re- to] substantial evidence 1068 2016). (Fed. Unexpired claims Cir. impression that 751 gave the If we
view.... given IPR are to be their subject generally you shouldn’t saying were we fact, question of ... construction.” Cuoz anticipation a reasonable as “broadest treat — Techs., Lee, trying were v. U.S. certainly Speed what we LLC wasnT zo 2131, 2136, 195 —, convey.”). L.Ed.2d 423 136 S.Ct. (2016) . retreated from Although -Microsoft review, we challenging ’our standard Findings Anticipation The Board’s B. a question is anticipation reiterate subject to evidence review. fact substantial Legal Applied 1. The Standard Indeed, Supreme from the Court case law by the Board has decades court stated and this here, in patent As a is relevant See, e.g., question. anticipation is factual a if anticipated as invention valid “the was 598, 604, Jones, 22 U.S. v. 184 S.Ct. Busch published appli in” described (1902) 511, (“Anticipation 46 is L.Ed. 707 paten- by” cation “before the invention fact[.]”); v. Fa question Reckendorfer 102(e). § In to antici -35 order tee. U.S.C. 347, 352, (1876) ber, 23 L.Ed. 92 719 U.S. invention, prior art the claimed pate (“The of novelty up is set of want defence all elements reference must “disclose courts, is every day in determined four corners-of within jury question -as a by the court or the ele-, document,” and must “disclose those adduced[.]”); upon the Ken fact evidence ” ‘arranged in the claim.’ Net ments nametal, Cutting Ingersoll v. Tool Inc. Inc., VeriSign, MoneyIN,. v. 545 Inc. F.3d (Fed. 1376, 2015) Co., 1381 Cir. F.3d 780 2008) (Fed. (quoting Cir. Con § 102 is a (“Anticipation 35 U-.S.C. under Sears, Co., v. & nell F.2d Roebuck ... We review -the question fact[.] (Fed. 1983)). “However, Cir. findings for substantial evi factual Board’s anticipate a claim if it reference even can Gleave, ”); In re .... F.3d dence limi expressly spell out’ all the ‘d[oes] 2009) (“After (Fed. all, antici 1334-35 Cir. n arranged or combined tations fact, question including pation is claim, art, of skill in the person if a read pri- inherent whether element reference, envisage’ ‘at once ing the would art.”). arrangement or the claimed combination.” consider We therefore whether (alteration Kennametal, at 1381 F.3d findings anticipation in this Board’s (quoting Petering, re original) by substantial evi- supported are case (CCPA 1962)); see also Blue F.2d dence. Inc., Groupon, Calypso, LLC v. F.3d 2016) (“[A] (Fed. Cir. reference Construction plaim *16 anticipate if may still that reference teach de novo the- reviews The Court components or that the func- es disclosed claim,” well “ultimate as [a] construction may tionalities be combined and one relying only on any construction claim implement in able to skill the art would be USA, Teva Pharm. intrinsic evidence. Inc. Kennametal, (citing combination.” 780 the — Sandoz, Inc., —, 135 S.Ct. v. U.S. 1383)). F.3d at — 831, L.Ed.2d—(2015). 841, Subsid argues applied that the findings evi Board iary based on extrinsic Microsoft factual dence, “unduly anticipation for standard” any, if are narrow reviewed substantial Broadband, Br. Appellant’s in Corning Inc. v. its final written decision. PPC evidence. RF, LLC, 747, prior that a asserts art refer- 815 F.3d Microsoft Optical Commc’ns
1069 “totality” ence must in its be viewed Because the Board correctly articulated describes, standard, (citing at In re anticipation what id. 33 the ap- 123, (CCPA Donohue, 1980); 632 F.2d pears challenge only 126 whether the Board Schaumann, 312, In re 317 applied standard'Correctly or, instead, 672 F.2d the (CCPA 1978)), not have to requirements and does dis set forth additional not cov- close in anything by more than is described proper interpretation ered of the challenged invention, I (citing id. ovate anticipation brief, In reply standard. Scis., Bio-Engineered Sup Health Inc. v. Microsoft claims that the misapplied Board Nutrition, Inc., 1376, & 586 plements anticipation F.3d by requiring standard that (Fed. 2009)). 1382 Cir. Microsoft particu Kenoyer’s match pat- disclosure the ’182 larly relies our decisions in Kennametal ent’s exactly. limitations Appellant’s See argue and Blue Calypso prior IPR, that a art Reply (citing *9, Br. 5-6 57 at 2016 7571, not (“[W]e reference does need disclose all' the App. Pat. LEXIS at *26 find arranged or in limitations combined as program-instructions sentence claim anticipate if a order POSA does not specifically refer back to the vari- envisage” “would at once the claimed ar other ous disclosures cited Petitioner.”); 33-34; Kennametal, *10, rangement. Id. at see App. 7571, id. 2016 Pat. at LEXIS at 1381; (“[Microsoft] at Calypso, 780 F.3d Blue 815 *28 F.3d has not demonstrated by at 1344. preponderance of the evidence that the program-instructions sentence relates to Contrary to Microsoft’s conten entirety Kenoyer’s disclosure so as tions, however, correctly argues - together to tie functions that that the Board set forth the antici proper throughout performed Kenoyer in order to pation standard its final deci written anticipate a claim directed instructions prior sions. Board noted that a art medium.”); storage *10, on a encoded id. provide every reference must element 7571, App. 2016 LEXIS Pat. at *28-29 arranged the claimed invention (“We find that not [Microsoft] demon- has IPR, to anticipate. E.g., claim order by preponderance strated the evidence *-, App. 2016 Pat. LEXIS the, person ... a of ordinary skill (citing Mfg. Corp. at *23-24 v. Karsten art ‘at envisage’ storage would once me- Co., Cleveland F.3d Golf , specific dium with instructions (Fed. 2001); Bond, Cir. re F.2d claimed.”); IPR, *8, App. Pat. (Fed. 1990)). Cir. But the Board also (“[Microsoft],has at *26 LEXIS not stated that a claim not does need “ex- shown, preponderance aby evidence spell pressly all out” limitations combined Kenoyer.discloses all aspects of the inas the claim if a POSA “at would once limitation identically, ... the same envisage” arrangement or combination. claim.”)). relationship as in the *8, Id. at App. Pat. LEXIS (quoting Kennametal, *24 Although at 1381 F.3d have Board used (internal omitted)). quotation wording marks as “identically” such liberal-’ more correctly anticipa- ly Board then stated that than it have an anticipa should because tion not proven “multiple, analysis indisputably distinct tion allows some teachings might flexibility, analysis artisan somehow Board’s suf did n combine to achieve the from misapplication anticipa claimed invention.” fer *17 Pat, *10, 7571, at App. example, Id. at LEXIS tion For when standard. consid 6, (quoting MoneyIN, *29-30 Net ering analyzed at F.3d the Board (internal omitted)). quotation findings regarding teach- marks made factual the all)’ (and of portions or ing ‘a or all of the subset ings Kenoyer, application the of imple- be (plural), the to other ‘embodiments’ sentence program-instructions (i.e., 22, through program instructions and mented Figure outside embodiments software). explained, As these envisage” the dissent “at once would whether a POSA ‘generic Appel- and broad.’” instruc- terms are specific with the storage medium that lant’s Br. 40. Microsoft asserts anticipate the ’182 tions claimed so it *-, confirms that IPR, of the sentence at context patent. See 57 7571, of Ke- broadly to all embodiments applies at *26-30. App. Pat. LEXIS of the comes at the end require noyer because it did not word-for- therefore Board “along gen- other description similarity as Microsoft written perfection, or word ‘indisputably apply that claims; explicit- paragraphs eral contrary, the Board to the disclosure, in and are written would “at the entire ly whether a POSA considered ” generic (quoting Id. similar terms.’ combination of the broad envisage” the once IPR, *-, App. 2016 Pat. LEXIS the disconnected given invention claimed A.P.J., 7571, (Cherry, dissenting)). at *42 Kenoyer. in The Board therefore teachings teachings that the legal argues Microsoft also application in not err its did that, its statement Kenoyer, “[i]n such as anticipation. standard embodiments, im- various codecs analysis say, is not to howev- The above hardware, software, in plemented analysis er, anticipation Board’s that the both,” Kenoyer, 5 11. 8- combination correct; Mi- we consider below itself was allow a POSA to understand would on that score. We find arguments crosoft’s in- program the use of Kenoyer disclosed however, apply Board did initially, performance structions enable anticipa- standard to its legal the correct Appellant’s Br. 41-42 functions. relevant analysis. tion IPR, *-, App. 2016 Pat. (citing 57 A.P.J., (Cherry, *40 dis- LEXIS 2. Claim Microsoft contends that senting)). addressing primary claim the contrary findings are meritless Board’s is dis dispute appeal whether “not Id. at 43-45. credible.” types four storage closes a medium with hinges dispute This program instructions. by arguing that responds meaning of found near on the a sentence specification in does link sentence Kenoyer. specification the end Kenoyer’s Kenoyer’s storage medium with of a That reads: sentence “Embodiments Kenoyer’s instructions. Biscotti notes (and all) of portions or all subset specification “imprecise” its disclosure is implemented by program may be above dissenting panel and that even the Board’s memory stored medium instructions during hearing oral stated member by pro or carrier medium and executed poorly Ap- that the sentence “is drafted.” Kenoyer, col. 15 11. 21-24. The cessor.” 1982, 1. 4 pellee’s (quoting Br. 55 J.A. parties' whether this sentence re dispute (internal omitted)). Bis- quotation marks only Figure fers was de points expert out that ex- cotti also immediately preceding scribed lines that the sentence plained the Board sentence, or previous this instead to all read, context, specification is best patent. figures and embodiments only rather than the applying 9373-76; Microsoft, (citing J.A. J.A. According patent. the sentence entire 10144-46). Biscotti asserts Microsoft’s says: “means some or all of what what “nu- would create reading of the sentence specification, above in the includ- disclosed *18 questions ambiguities” that reading merous But Biscotti’s also has merit. that, The first reading, paragraphs are avoided Biscotti’s two after para- the graph expressly describing Figure questioned when about these issues at his use wording—referring only different deposition, “em- expert responded, Microsoft’s bodiments”—than paragraph last the could, like, ordinary “one of skill in art the the specification—referring to “embodi- read about what the function was and ments” within the context of “the inven- Appellee’s (quot- make a decision.” Br. 58 tion.” validly One can read the therefore (internal ing quotation J.A. 11.11-22 last paragraph referring generally more omitted)). Biscotti, marks According to this whole, speci- the invention as a since the from testimony expert Microsoft’s falls fication specifically invention, refers to the meeting well Microsoft’s of below burden previous while two paragraphs refer proof that a POSA would “at envi- once only to the description Figure of 22. See sage” if the claimed invention POSA Kenoyer, col. 151. 21-col. 161. 2. would have to about what the func- “read part The first of description for Fig- tion was and make a decision.” Id. Biscotti states, ure 22 also be “[i]t should noted finally argues that Kennametal and Blue that in various (plural) embodiments [ of ] Calypso help do not Microsoft Mi- because below, the methods described or one more reading crosoft’s of would result of the elements may be per- described compo- “indiscriminate combinations of concurrently, formed a different order nents functions that can be cobbled shown, may than entirely.” be omitted together passages anywhere found added). (emphasis Id. col. 11.2-6 This Kenoyer’s lengthy specification,” within description into a leads of the block dia- such that a POSA could not “at envi- once gram the Figure method in 22. Id. col. combinations, sage” including all of the very 11.8-20. The next sentence after patented combination patent. in the ’182 description block diagram states Id. at 58-60. (plural) “[e]mbodiments [ subset ] balance, parties’ arguments pre- On (and all) or all portions or of the above question. the Board with a close As sented implemented by program be instruc- notes, specification’s three memory in a tions stored medium carri- paragraphs summary between the of each processor.” er medium and executed added). step Figure claim 1 Id. col. 15 11.21-24 (emphasis use broad context, language that the sentences both generally refers to “embodi- could refer ments,” description diagram block might interpreted as re- provide per- 22 to variations for ferring patent. to all embodiments method, forming the both refer Kenoyer, See col. 15 1. 21-col. 16 1. 2. The embodiments thereof. “[fjurther paragraph final also states modifications and alternative embodiments Although are not arguments Microsoft’s aspects of various of the invention be unreasonable, ques- this review we do apparent to in the art in those skilled view novo; anticipation question tion is a de description.” Kenoyer, of this 55- 15 11. fact, findings and we review the Board’s added). (emphasis language The broad Kennametal, for substantial evidence. paragraphs any these three without ref- above, ma- F.3d at 1381. As discussed Figure might imply erence to that these itself to more terial disclosure lends paragraphs generally refer interpretation. more to the than one reasonable proffered throughout patent. explained embodiments both sides Board *19 1072 support for its The further testimony regarding a POSA Board found
expert how Kenoyer’s fact al- disclosures, conclusion that and the view these would leged storage of a medium with disclosures expert analyzed the and Board considered with the limita- accordance instructions on the testimony from each. evi- Based to of 6 unrelated each tions claim “are it, “Ke- the Board found that before dence *10, disclosure.” Id. at 2016 other in [the] sentence noyer’s program-instructions 7571, at *29. The disclo- App. LEXIS Pat. a blan- not sense as disclosure make does therefore, most, amounted to at “dis- sure pages” preceding of the and keting all teachings might the artisan tinct that not back refer that sentence “does to achieve the claimed somehow combine other to the various disclosures specifically *10, Id. at App. LEX- Pat. invention.” IPR, [Microsoft],” *9, 2016 at cited MoneyIN, (quoting Net at *29-30 IS Instead, at *26. App. LEXIS Pat. (internal quotation marks at 1369 F.3d argument Biscotti’s that Board found omitted)). that Mi- also found Board meaning regarding evidence provide “persuasive to crosoft had failed persuasive as “at least as was sentence be un- that the disclosure would evidence such evidence” argument [Microsoft’s] ordinary skill in the art by one of derstood to meet its bur- had failed that Microsoft storage medium with mean that *9, proof. Id. at App. 2016 Pat. of den and the functions program instructions 7571, at LEXIS *27. are in the embodiments performed various *10, Id. at Kenoyer.” together it used explained further that Board The- 7571, at *30. The Board App. Pat. LEXIS videoconferencing that “makes sense not an- therefore found that did implementa- lend itself method would Id. ticipate patent. claim of the ’182 instructions,” it program tion -with program-instruc- sense that - “makes argued, correctly As “[h]owever specifically refer sentence would tions questions may have ‘close’ certain factual videoconferencing method disclosed” Board, the Board been before the was Id. The Board Figure of discussion entitled, least, very Biscot- at the credit that “agree[d] [Biscotti]” with therefore of Ke- expert’s ti’s evidence and its view Microsoft’s, of Kenoyer’s “embodiments noyer’s reference disclosure over “[e]m- below” and to meet its bur- the methods described that Microsoft failed find (and case, 51. The proof.” Appellee’s of Br. portions of a or all den subset bodiments therefore, ap- be a case on all) “cannot close refer to the de- of the above” both of peal proper standard review.” *7, under Id. Figure of at 2016 Pat. scription Id. “Whatever arguable merit there 7571, at App. LEXIS *27-28. Board reading Kenoyer, be to Microsoft’s had “not accordingly found that Microsoft Id. certainly compelled here.” was preponderance by a demonstrated Kenoyer’s program-instruc- evidence argument aligns with properly Biscotti’s por- other cited tions sentence and various appellate that reviews our role as an court ‘storage the claimed medium’ tions disclose factual legal determinations for,’ specific or, instance, with its four ‘instructions in this the Board. trial court art See, person ordinary Key Pharm. v. Hereon Labs. skill e.g., 1998) (Fed. envisage’ storage ‘at medium Corp., once Cir. would 161 F.3d specific function of an (noting appellate instructions claimed.” that “the *10, correct errors App. 2016 Pat. LEXIS is to committed court trial”). duplicate do not the efforts of *28-29. We pro trial court or the argues Board. also Kenoyer’s We instead pro- - proper vide deference the fact-finder vides a detailed view an audiovisual reweigh rather below than factual determi input interface for an embodiment ex- See, e.g., nations. City 309, id., Anderson v. Bes ternal codec 564, 573-74, City, semer 470 U.S. 105 S.Ct. *20 physical describes forms in which the co- (1985) (“If 84 might L.Ed.2d 518 the dis dec appear, at According id. 46-47. Microsoft, trict court’s account the is descriptions evidence these would al- plausible light in of the in record viewed low a to “reasonably POSA understand” its entirety, appeals may the court not envisage” and “at once functionality the though reverse it even convinced that had the arrangement external codec and the sitting fact, it been as the trier of it set-top would the coupled box -to an external weighed have differently.”); being together. evidence codec as read Id. at 47-48. Kurn, Lavender v. 327 66 U.S. Microsoft asserts this that case is similar (1946) (“[T]he 90 ap S.Ct. L.Ed. 916 to our in Calypso decision Blue because pellate , court’s function prior is when art exhausted this similarly case contem- evidentiary that support'a plates basis ver [to the combination of func- disclosed tionalities, apparent, being dict] becomes it Kenoyer’s immateri and explain failure al that might contrary court inputs draw word-for-word on that the external inference or feel that another conclusion is in Figure codec depicted are also needed reasonable.”). more for and on included that codec external coupled set-top to a negate box does not Given the before the Board and evidence argument Microsoft’s because a POSA underlying its factual findings, we conclude at envisage would once the combined fea- finding Kenoyer that the Board’s that did tures. Id. at-48-49. not anticipate supported by claim 6 is sub- ’ stantial evidence. Microsoft, According to the Board’s (1) holding was on two based' reasons: Claim thought reading improp- Board Microsoft’s primary dispute parties between the erly separate “combined embodiments to regarding Ke- involves whether account for the limitations claim” noyer following teaches the limitation: “re- together putting inputs ceiving, interface, on the audiovisual subsequent set-top box disclosure set-top box audiovisual stream from a codec, pass-through of a id: at extérnal box, set-top set-top box audiovisual (citing Kenoyer, Figure 5 and col. 1011.25- comprising stream set-top box video 30); (2) requi- and not Board could find stream set-top box Figures inputs site disclosures 7a and patent, stream.” ’182 col. 3811.1-4. 7b, Kenoyer anticipate, so could not at id. *- n , IPR, (citing Microsoft asserts that App. discloses Pat. n *27). this limitation teaching its an LEXIS As to the first about rea- son, external codec inputs argues with audio Microsoft it that was allowed coupled to receiving sig- rely Kenoyer’s on audiovisual of audiovi- description nals from a set-top inputs television box. It ex- in connection sual with an external plains “Kenoyer introduces the codec codec and then an external codec refer functionality process as a device with again repeat having without discus- signals, audio and video inputs. uses sion of the same audiovisual Id. reason,. consistently the term ‘codec’ way 49. As to the Microsoft second Appellant’s argues thereafter.” on Br. that it relied the description petition institute set- Microsoft’s Board coupled with the standalone codec argues that Micro- functionality, Fig- so the IPRs. Id. Biscotti for the codec top box arguments by not 7b,, incor- show a codec soft waived its new 7a has ures box, inapposite. are to the porated presenting into a them Board.
Id. at 50. matter, Microsoft As an did initial argu- Microsoft’s characterizes argument to the Board the full present (1) unitary discloses ment appeal. In its presents here performs codec concept of an external IPR, the extent petition to institute (2) function, all refer- receiving limita analysis regarding the relevant to a codec be read should ences of claim 69 is follows: tion argues Br. 60. Biscotti together. Appellee’s receiving audio and Kenoyer discloses *21 ar- correctly rejected that that the Board using the top from the set box the codecs disclosed gument because [Figure above 5]. interface described relies “re- Kenoyer on Microsoft which indepen- be in an codec also “The distinct, largely incompatible em- ferred to coupled is to the set- housing that dent Figures Id. at 63. And bodiments.” may act as a top 705. The codec box to a the same reference which do use regular program- pass-through for the codec, personal computer a em- related to conference not ming/games when is a bodiment, by Figure appear- 3’s as shown Kenoyer therefore shows being held.” by Figure ports 5’s inclusion ance and limitation]. [the In”), (e.g., “Microphone In” and “VGA omitted). (citations The cita- J.A. 306-07 set-top boxes. ordinarily are not used with are the line provided tions Microsoft that this case is similar Id. Biscotti asserts quote for the numbers MoneyIN, that the to Net where we held expert report from Microsoft’s paragraphs parts it court erred when combined district quoted language to same that refer the separate the protocols, “invoke[d] which 7b, Figures 7a and within the context of obviousness, anticipation.” not question of 2266-67, J.A. 2281-82. 545 F.3d therefore, gener- argument,, Microsoft’s 7b, Regarding Figures 7a and ally Figure to and then used the referred fig- notes that Board these the addressed 25-28, Kenoyer, col. 10 11. re- language petition “Microsoft’s referred ures because garding pass-through support clause figures in explicitly to the of those codec claim 69. bare- anticipation This ‘receiving’ step.” connection with first allegation provided no information bones Br. Appellee’s 63. The Board considered argument or as to how the interface testimony regarding expert Microsoft’s a Figure set-top for connection to allows “pass- Figures and the codec’s 7a 7b or how a would understand box POSA function, argu- through” found the Figure along use the codec described testimony unpersuasive. Id. ment and the it, with, figure- as Microsoft describes IPB, *-, 2016 Pat. (citing at 64 description of codec that can be used less *27). According to App. LEXIS housing coupled independent in an Biscotti, argument new Microsoft’s set-top box. merely are Figures “inapposite” and 7b 7a analysis. confirms the Board’s is far appeal brief on more Microsoft’s ar- contains substantial new detailed and Finally, Biscotti asserts that why Kenoy- it believes regarding appeal guments on changed argument has limitation of claim 69. anticipates this argument presented to the er was But, set-top *-, include ar- Microsoft needed those with box. Id. at guments petition Specif- App. to institute. 2016 Pat. LEXIS at *28-29. ically, petition must include: Biscotti introduced evidence that the inter- Figure face of 5 crossed over with the of the supporting
The exhibit number (both description are identified upon support relied the chal- evidence identifier, (309)), the same numeric lenge and the relevance the evidence a set-up which was in which the codec was raised, challenge including to the identi- to computer. connected J.A. 1053. Biscot- fying specific portions of the evidence argued ti also that a POSA would under- support challenge. The Board that neither of inputs stand In or VGA give weight no exclude Alt Video would be with a set-top used party where a evidence has failed they box because are for connecting used identify specific state its or to relevance monitors, computers and not for the trans- portions support the evidence that of a signal. mission cable satellite J.A. challenge. no 1053. There also was of an disclosure 42.104(b)(5) added). § (emphasis 37 C.F.R. interface for the box And, general any argument rule is that Microphone because the In would be used before the raised Board waived microphone, and a POSA un- would Detection, appeal. See Redline v. LLC Star In, derstand the Alternate *22 (Fed. Envirotech, Inc., 435, 450 F.3d input as for a or micro- describes camera 2015). only Cir. Microsoft not to failed phone array—not set-top a not box—would present arguments petition, these in its it J.A, for a set-top be used box. 1054. Micro- sought permission present never to them meanwhile, soft, no provided explanation in during to the Board course of the IPR. to petition Fig- its as how the of interface that Microsoft’s Board found compatible be set-top ure would with a description of not explain did how box and Kenoyer, the codec described in Figure of the interface with the Micro 10 lines column 25-28. (513), (515), phone In In Alternate VGA In findings The Board’s of factual in favor (503), (507), and Alt to Video refers supported by Biscotti are substantial evi- 25-30, codec described column lines dence, any supplemental argument acting pass-through coupled as a while a seeking findings to refute those appeal on at'*-, IPR, set-top box. 59 2016 Pat. has been waived. We therefore affirm the App. at LEXIS *27-28. The Board finding Board’s that Microsoft failed to that, explained no link in direct Ke- prove anticipated by Kenoyer. claim is noyer descriptions to connect these of a codec, expert simply Microsoft’s contended C. The Board’s “Construction” that a POSA “would understand “Set-Top of Box” disclosing using inputs such to receive regular programming/games argues Microsoft because that the Board did inputs capable receiving those are of interpretation video use the broadest reasonable *9, box,” from set-top a box.” Id. at “set-top of the term which Microsoft App. Pat. patent LEXIS *28. The Board asserts is defined in the ’182 unpersuasive “any provide tuning, found this contention that can because device Biscotti decryption decoding functionality, had introduced evidence that “cast and/or regarding especially functionality substantial doubt” whether a as that relates broadcast, cable, have reception POSA would considered the interface of satel- and/or connections appropriate connecting signals.” Appellant’s lite television Br. 51 (inter- contends that the Board’s de- Biscotti also 9 11.23-26 patent, col.
(quoting ’182 omitted)). interrelation cision “the between Microsoft turned marks quotation nal - Kenoyer’s of disclosure— parts includes different this definition contends that broad i.e., to combine computers. proper whether it was Id. 51-62. televisions anticipation purposes allegedly parts Ke- those limited Because the Board urged.” Id. at 68. meaning “set-top place, of first as Microsoft according to noyer argues unper- was ap- rather than that the Board provided box” “set-top of a would “at once envi- suaded that plying the broader definition POSA “combining teachings steps of claim patent sage” to the from the ’182 box” of in the man- argues passages Kenoyer, Microsoft scattered expert urged.” analysis scope Microsoft in its ner Board erred teachings. According to Micro- 69. Kenoyer’s soft, prejudi- this the Board was error argument that a com Microsoft’s allow- anticipation cial to its case because be set-top a box could puter could act as box” ing “set-top would' computer 69, espe analysis relevant to of: Kenoyer’s de- result the conclusion in- argument that Mi cially given Biscotti’s anticipates scription Figures 3 and prove a crosoft failed to codec connected at 52-53. Microsoft also as- claim 69. Id. Fig because the interface set-top box -“set-top using the -definition serts 3 to connect to a is shown ure box” from the ’182 would have Although argues computer. Microsoft analysis regarding changed the Board’s computer might be able have definition of the new set- claim because n set-top box under what functionality program-in- allow for the top box would alleges patent’s - is the definition specification structions sentence box, com explain fails to how a if the claim even sentence anticipate especially computer Kenoyer, puter, at 53. only Figure 22. Id. referred *23 cable, broadcast, or satellite would receive argues that Microsoft’s claim Biscotti no signals. provides Microsoft television repack- is “an argument inapt construction un explanation as how POSA would aging disagreement of with the Board’s its computer Kenoyer in the be derstand findings on a mis- anticipation” factual functionality set-top special box with the of the Board’s decisions. characterization required by Microsoft’s definition.1' argues the
Appellee’s Br> 66..Biscotti that decisions,in that IPRs not Even if Microsoft overcome all three did had Board’s term, hurdle, not rely any prejudi- on of much the would be any construction still error argu- Biscotti the “set-top less box.” Id. notes that because Microsoft waived cial in claim 69 that relate to “set-top appear regarding not at all the ments box” does words, the limita- other storage instructions this medium and- construction. In hinged of on any factors tions of claim so construction Board’s decision would, allegedly no on not “set-top impact box” have the were affected errone- “set-top Although of box.” decision claim Id. 67-68. construction Board’s 6. ous particular, has "set-top Mi- Microsoft our of box.” 1. The dissent faults conclusion that explain Kenoyer’s com- computer crosoft fails to how Kenoyer how in not shown the broadcast, cable, or puter satel- would receive qualify sét-top box under its own would as But, signals. as lite 1085. Dissent at television above, of that As term. described definition above, described our conclusions were drawn of to Microsoft’s claim that failure fatal argu- analyzing in the of Microsoft's context error. ment that the erred its interpretation Board on, reasoning some of provided they directly and are anticipated read might by- by, Board use of Micro- prior system affected art described soft’s construction of box—like the reference. Figure
Board’s discussion illustrate, I every As shall claim clause are 3—there other for the bases Board’s Every is shown Kenoyer. compo- claim change decision that would and which known, previously nent was and performs support suffice its conclusions. the- way the same same function same combination. The- claims at issue are D. Obviousness “anticipated,” rigorous under the most ap- Dependent Claims plication anticipation. the law Microsoft, According to Board erred ' appeal on claims recite no distinc- in its for- analysis obviousness the same tion from the videoconferencing it anticipation analysis reasons erred in its system, to any component or or function because the on Board same relied states, arrangement. Microsoft without reading conducting without contradiction from either or the separate analysis. obviousness As Biscotti court: out, points parties dispute “the do not
if the Court vacates Board’s affirms patent The ’182 describes nor neither rulings regarding anticipation it software, any components, claims new' should respect do same with to the programming steps, or anything else not rulings Board’s obviousness claims existing found in systems. Nor does 22, 36, 37, 42, 44, Appellee’s 45.” Br. describe or claim any arrangement or configuration of components or function- size, alities that reduces the complexity, above, As findings the Board’s described cost, or improves quality, of exist- supported by claims are ing videoconferencing systems. substantial evidence. Because Microsoft does not argue-separately the Board Br. colleagues My on this analysis, erred we obviousness also panel search for distinctions are nei- affirm holdings. the Board’s obviousness claimed, ther nor described contrary to the of anticipation. law
III. Conclusion teaches same conferenc- reasons, foregoing For we find-'that ing system inas the ’182 *24 the Board’s supported decisions are substantial evidence. We-therefore affirm Claim 6 is the claim for broadest the Board’s decision that Microsoft failed system, patent’s conferencing the ’182 in prove to invalidity by a preponderance components which known audio arid video in evidence on appeal. each the IPRs provide inputs computer to a that receives
AFFIRMED stores and and transmits the information to in participants the conference. NEWMAN, Judge, dissenting. Circuit system, describes the same and shows the I respectfully components dissent. The ref- in same combined same Kennametal, erence describes the same invention that is way. As Inc. v. In stated Co., only gersoll claimed-in claims and claims Cutting Tool 780 F.3d (Fed. patent 2015), Biscotti’s ’182 that are a reviewed Cir. reference antici by the court. These claims recite no if it pates new discloses all the a claimed components technology; or “arranged functions limitations in the combined claim,” controlling the [i] instructions for vid- way quoting Wm.
same capture captured to capture eo device Cadbury Adams USA v. Jr. Co. Wrigley stream; 2012). (Fed. video LLC, Cir. F.3d controlling the [ii] au- instructions it achieves states that patent The 182 capture captured to capture device dio “reliability,” does but Biscotti improved stream; audio is any improvement such dispute encoding cap- [iii] instructions known improvement to known due captured stream and the tured video example, components—for and video audio produce to of data stream series audio microphones. and No improved cameras and packets; by Biscotti is improvement described transmitting for' [iv] instructions in the 182 patent or included the 182 packets on the network series data stated, broadly claims are claims. The 182 reception by a video interface for second analysis is the court’s directed whereas communication device. to the are not limitations aspects that added): claims. claim the Following comprising: [2] [1] panel majority, a first A video communication only is video clause-by-clause system claim discussed communication (bracketed numbers review system, device, tems were The ’182 system” matches the current Clause Claim clause “Integrated Videoconferencing System.” statement products patent recognizes [1] previously an [1] “a introductory Kenoyer patent’s title expensive profession- video communication known, that such clause, criticizes sys- comprising: al-grade systems, error-prone systems input personal computer with far [3] a interface receive on a video based box; set-top optimal quality. from a call The 182 input video phones criticizes the cost of video and their input to receive [4] an audio interface screens, pro- thus “fail[ure] small box; from the audio family calling expe- video vide an inclusive output provide interface to [5] a video 1,1. 2,1. 46-col. patent, rience.” 182 device; display output a video video; audio; audio [7] [8] an [9] a network [6] output to an audio audio capture output capture interface; interface device device to receiver; provide capture capture Kenoyer describes the same audiovideo the PTO examination conferencing system in the Videoconferencing may be used tions to communicate two the 182 or more patent: participants reference was of the 182 using both video at remote same not cited terms as patent. allow loca- [10] least one processor; audio. Each participant location *25 videoconferencing system for storage [11] a communica- include medium communication with other processor, one tion with the least video/audio videoconferencing Each storage having participants. thereon medium encoded micro- system may include camera and a set of instructions executable from a operation to control to collect video and audio processor phone one least device, to an- participant first or local to send video communication first (remote) Each vi- participant.... comprising: set of instructions other deoconferencing may also system systems), be videoconferencing gate- and/or system to a to allow coupled computer 130A-130B, ways provider a service functionality into additional the video- (e.g., multipoint (MCU)), unit control .... conference public telephone switched network Kenoyer, col. This 11.25-36. recitation (PSTN) 120, conference units 105A- anticipates itself 6 is claim for claim 105D, plain telephone system old terms, written in limit broad and does not (POTS) telephones 106A-106B. End- components Fig- these their functions. points 103C and 103D-103H Kenoyer ure 1 of is described as follows: coupled to gateways network via Videoconferencing system comprises 130B, 130A and respectively.... plurality participant locations or Kenoyer, 3,1, col. 63-col. 1. 6. All of the endpoints. exempla- FIG. illustrates an in Kenoyer’s Fig- elements claim are ry videoconferencing embodiment of a 1, performing ure system 100 the same function include a network 101, endpoints (e.g., 103A-103H audio the same breadth in claim 6. system depicted Kenoyer communication device.” recites “monitors, such as “various devices”
Figures description anticipates claim 6, for the elements of elements Claim clause [2] reference. 6 match the video function and known video devices projectors, displays, put etc.,” devices, video 44-46, televisions, and discusses the devices, cameras, video out- is not disputed It shows perform example, function. For this what the ’182 calls a “first states: *26 processing embodiments, and video The codec’s audio participant In some incorporated set-top in the box (e.g., may be may include camera location camera) (e.g., to other may be distributed ac- [high definition] an HD and/or 214) through coupling the de- a cable images (e.g., participant devices quiring box). set-top The set-top vices to the box Other cam- participant location. of the compo- coupled to the different contemplated. partici- may be also The eras are videoconferencing system display of the include a nents may location also pant camera, including speakers, micro- Images ac- (e.g., display). an HDTV phones, display. may be dis- and quired the camera display 201 and played locally 2,1. 1,1. 66-col. Kenoyer, col. may transmitted also be encoded and Kenoyer patent, in As describes participant locations video- other input “receive[s] interface” “video conference. box,” set-top from a input 5,11. (referring Fig- Kenoyer, col. 36-43 [3]; input and an interface” clause “audio 2). com- that the video Kenoyer states ure box,” set-top from a input to “receive audio accompanied by “vari- munication [4], components These and clause "microphones, such as ous audio devices” in the same functions are their described devices, speakers, output audio input audio way patent. the 182 No and telephones, devices, telephones, speaker set-top distinction is shown between etc.” Kenoyer, col. 4,11.41-44. box as set forth in clauses [3] [4], Kenoyer set-top box. is disclosure The breadth matched by the breadth of disclosure Claim clauses [5] [6] high- states that “a patent, ’182 pair next clauses recites that the camera is but one exam- definition video provided to a output “video interface” device,” capture and exam- ple” of a “video device,” [6]; display clause “video capture device” are a ples of an “audio output provided interface” is “audio array.” microphone ’182 “microphone receiver,” pat- clause The 182 [6]. “audio 2,11.61-66. patent, col. these functions ent claims devices and their terms conduct broad and describes patent the ’182 disputed It is not clauses [1] [2] recite no distinction using known components, stating, for ex- ample: Kenoyer. box,” fines the broadcast, cable, and/or signals.” 182 can This Claim clauses the 182 functionality provide video decoding functionality, pair component of clauses patent, systems. [3] and and/or box as relates col. includes the tuning, decryption both satellite television 9,11.22-26. [4] “any especially as reception device “set-top de- implemented as an face, face and/or interface 436 RCA component, coaxial Merely and/or Similarly and/or analog interface output video interface 430 digital way as a S-video, jacks, interface and/or digital digital a fiber and/or example, comprise a set and/or analog composite, component inter- visual interface output optic VGA interface the like. may be and/or inter- audio input (“DVI”).... set-top box as describes the box, box, (referring patent, col. 11.24-31 “e.g., gaming a cable satellite 4). module,” 62-63, and states that:
1081 Kenoyer provides too teaching broad definition multimedia input interface] inputs outputs. of audio and video For and 520 and output 530 interfaces as well as example,-discussing display, Ke- video of analog a set audio video and inter- . states: noyer faces for input output, 535 and re- videoconferencing system may sup- The spectively. input The HDMI interface [high-definition] HD port capabilities. may 520 configured be to high- receive a “high defínitiop The term resolution” includes dis- audiovisual from the x plays pixels box], with resolution of 1280 [set-top STB while HDMI out- embodiment, higher. In high- one put and may configured interface 530 be may definition resolution comprise provide high-definition audiovisual out- x [t]hus, progressive ... scans put for display on [high-defini- a HDTV present an embodimént invention tion television].
recites the Kenoyer, may comprise tem with or less. structures with display capabilities using network infra- col. computer HD “e.g. bandwidths 11. 17-26. videoconferencing sys- connections, similar to HDTV” T1 capability also of clauses [5] components ’182 It Claim clauses patent, is 5). and functions within the disputed col. and [7] [6]. and 11.9-16 (referring to [8] Kenoyer shows scope These clauses recite the ’182 system’s codec for coupling, interface and the video capture device,” [7]; “video clause display and the output: device,” capture “audio The [8]. clause T82 may The place codec also an inter- patent describes these broadly; functions part computer face system 2,-11. example, at col. 61-66: display output.- system The computer 355-may coupled directly be to the dis- might The communication device play 305 may signal receive a video comprise further capture device display from the 309. codec (of which high-definition video camera example) capture but one a cap- Kenoyer, col. 11. (referring Fig- 5-8 tured-video stream 5). cap- an audio ures 3 various and/or discusses (of ture embodiments; microphone device which a example: microphone array might examples) be embodiments, In some MCVCS capture a captured audio stream. may support sharing streams for dual during PC content a videoconference Kenoyer too describes these functions. (H. (e.g., 239) standards based dual broadly, stating that “local video and audio streaming for real-time collaboration may 8-10, be captured,” col. HD). through Media shared the MCVCS “local may processed video and n documents, may presenta- include codec 309 for transmission- to a remote tions, PC may screens. Other media site,” 15,11. conference col. 11-12. also be may shared. The MCVCS 300 7,1. 8,1. states col. 66-col. 4: support [Internet IP Protocol] inte- signals codec 309 local receive grated (ISDN) digital services network- the.¡camera microphones 303 and -connectivity. 319 for to a confer- transmission remote 9,11. Kenoyer, (referring Fig- 35-41 ence site. The codec 309 compress 5); ures 3 ’182 states: signals decompress for transmission and The video 105 of signals communication device received to the for distribution FIG. [high- also includes both HDMI display speakers and/or Ethernet, wireless Ether- such wired describes disputed It is not *28 802.16, 802.11), EEEE (e.g., IEEE as net components set functions and the same forth in clauses [7] and [8]. Kenoyer’s Fig- paging logic, RF (radio frequency) com- modem, 1061, digital logic, a munication 22, Maj. Op. reproduced ure (DSL) device, a cable line other subscriber of these and the the functions shows (television) modem, [Integrat- an ISDN claim clauses. illustrated ture grated wireless local described sure. The breadth Claim Clause 34; and clause processing [9] “personal throughout the recites the ’182 [9] the clauses area computer 130 “network patent network,” col. Kenoyer and [7] as an “inte- interface,” video and disclo- [8] pro- cap- 5, is tal networks, Kenoyer also describes vice, ATM allel method. other ed Services signals or a satellite transceiver (asynchronous type serial for. col. of communication device Digital Network] port transmission 5,11. 4-7: bus transfer conversion to interface, device, over mode) device, an and/or digital digi- par- de- or 135, example, applica- For communication application chat such grammed awith to may tions convert ana- MESSENGER, use codecs SKYPE, MSN and/or for log signal digital signal to 6,11.26-28; trans- like,” a set of “[i]n col. and digital mitting networks over various embodiments, server the communication 120, Inter- (e.g., PSTN network commu- 205 communicates the video net, etc.) Internet,” .... 105 over nication devices 6,11.51-53. ports for connec- describes Kenoyer also to
Kenoyer involving too connection net- signals equipment describes tion video works, transmission, reciting possible various connec- stating, ex- and network 9,11. at col. 11.51-53: tions. states ample, at col. 9-19: [multi-component video- MCVCS embodiments, may also ports In some conferencing system] may send/receive output (e.g., be included video coupled to signals through a network Alternate and Video-Out VGA-Out to computer system one 509). may to out- ports These be used components. MCVCS signal from the put codec 8,11.11-14, Kenoyer port(s) may At col. states: to display 305. Another network included receive/transmit example, For the network connection port signals (e.g., an Ethernet such IP Proto- may [Internet be from an 501). (IP) port Internet Protocol Addi- computer coupled link 371 col] micro- ports (e.g., camera tional network system 355 from an external 517, etc.) speaker-out (other phone-in also contem- types of links are signals also be used to/ receive/send plated). coupled to the equipment from various referring Fig- Discussing networks microphone codec 309. camera 4, 11. at col. 17-27: ure states codec array signals may be sent embodiments, endpoints 103A- In some (e.g., through one connection alter- 103H, 130A-130B, gateways conference 315). nate 105C-105D, provider service units that both the ’182 Again, disputed is not each various wireless it include various net- imple- patent Kenoyer describe wired communication devices communication, to transmit audio and and their use types ment various works Again, conferencing sys- information not disputed is patent both ’182 shows tem “at least one processor,” as in clause Kenoyer are The “network” [10]. directed.
clause [9] plainly anticipated. Claim clause [11] Claim clause [10] Clause [11] recites a “storage medium” Clause [10] recites “at least one pro- that encodes “instructions executable cessor.” Both the 182 processor” the at least one operate *29 computer/processor pro- state the use of a system. The ’182 patent describes a stor- grammed manage conferencing sys- age medium such as an hard drive encoded patent tem. The 182 “a refers to dedicated aor RAM memory], e.g., [random access processor digital signal pro- video 3,11. and/or at col. 9-13: 10, (‘DSP’),” cessor 1. 1. col. 67-col. aspect, In an the video communication 10,11.1-4: and states at col. also storage device includes a medium Merely by way example, the DM365 drive, DRAM, (e.g., RAM, a hard flash digital processor media from TEXAS etc.) on which is (perhaps encoded may be INSTRUMENTS used as the data) among other instructions executa- 405 in processor one embodiment. by processor(s) ble opera- control tion of the video communication device. computerized The uses known functions, equipment for its known and Kenoyer too storage describes a medium: Kenoyer Kenoyer does the same. states at program instructions stored a memo- 15,11. col. 50-54: ry medium or carrier medium exe- example,
For the memory may medium by processor. cuted a programs store one or more that are Kenoyer, col. 22-24. de- to perform executable the methods de- memory storage various scribes de- memory herein. scribed medium vices, 15,11. stating at col. 24-35: may operating system also store soft- memory A may any medium include ware, as other for oper- well as software memory types various devices or stor- computer system. ation of the age devices a computer system ... 5,11. col. states at 8-12: memory or memory random access such. embodiments, In may various codecs be Dynamic Memory Random Access software, hardware, implemented in or a (DRAM), Double Data Rate Random combination of both. for Some codecs (DDR RAM), Memory Access Static computer in may video audio and/or (SRAM), Memory Random Access Ex- MPEG, IndeoTM, Cinepak-™, clude tended Data Random Access Memo- Out among others. (EDO RAM), ry Rambus Random Ac- (RAM), etc.; Memory cess non- or a computer also describes connec- memory magnetic volatile such as a me- network, stating over col. tions a dia, e.g., drive, optical storage. hard 37-41: ‘ addition, memory may panel majority’s holding medium be The in a computer located first in which the “storage does describe a medium” executed, programs contrary are be to Kenoyer’s locat- extensive disclosure. computer Kenoyer anticipates ed second different limitations [11], introductory connects to the computer first over a section of clause as well network, such as the Internet. as the four subclauses. [i], [ii], [iii], pro- operations managed [iv] all these
Subclauses [11] These subclauses processor instructions. elaborate first clause two picting the grammed computer, system components. including Figures de- Figure com- example, Kenoyer first For 7 illus- that the recite subclauses combina- components instruc- and their device is controlled trates the munication managed by videoconferencing, [i] controlling capture tion tions (e.g., procéssing devices. Sub- capture [ii] and the audio box which “[t]he there are instruc- incor- processing) states be [iii] clause audio and video the video Kenoyer, 11.12-13. Ke- porated.” tions encode packets, sub-' produce data showing streams noyer describés 7a states that instructions send videoconferencing system clause multi-component [iv] to a second communications packets (MCVCS) data where: via a network. device functionality may incorpo- the codec *30 (e.g., in a cable set-top box 705 rated com- Kenoyer programmed too shows a box). on may A be included camera subject puter that the matter instructs top coupled to the set- display [ii], [iii], [iv], [i], showing of subclauses (or set-top on the box top placed stream, box capture capture 705). (e.g., stream, information,! processing, The encoding audio vid- audio may processing) incorporated eo be transmitting the via data a.network. may set-top box be dis- majority Kenoyer panel The states and/or through system (e.g., to other not teach that is. run tributed devices does its instructions,” stating coupling Mi- “program set-top “that cable devices 705). ‘persuasive to provide set-top may had box 705 failed box The be crosoft be un- components' evidence the disclosure would different coupled ordinary including skill the art derstood one of camera MCVCS storage microphones, to mean the. medium with speakers and dis- and the program functions instructions play. in the various are
performed embodiments col. Kenoyer, 11. 8-18. also Op. at together Kenoyer.’” Maj. used 7b, ports in describes contrary entirety 1072. .This states that:. sys- Kenoyer, throughout for its - by ‘‘pro- set-top may include a tem is shown as controlled box cam- camera). HD grammed computer. port (e.g., era box 705 also include computerized pro- describes 711), ports (e.g., port au- S-Video transmission, cessing stating, for ex- 713o-6), (e.g., ports ports' dio audio ample, that “local video and 715, among The set- cable others. port processed codec transmission top may also communicate box 705 site,” 15,11.11-12. a remote col. conference through conference components encoding signals describes communications. wireless col, 8, transmission, packets for into data 66-col, 11,11.1-6. 5,1.12, Kenoyer Figures and 7b: 11.10-14; 4,1. 7a Col. and shows *31 My colleagues misperceive the law of the reference for the breadth itsof disclo anticipation, question for the sure, is whether when the claims compar issue are prior art subject ably shows the claimed broad. matter—as disput indeed It is not does. Contrary to the law of anticipation—-for ed that all of the of elements claim 6 are apparent it is that all of the Claim 6 in Kenoyer, shown performing the same clauses and anticipated— subclauses are functions and in way. combined same my colleagues reason that “Microsoft fails Kenoyer present “multiple, does not dis explain a computer, how especially the tinct teachings that might the artisan computer Kenoyer, in would receive somehow combine achieve claimed broadcast, cable, or satellite television sig- invention,” as my colleagues propose. The Maj. Op. However, nals.” at 1076. neither claimed elements are not com “somehow” Bisco.tti,explain does how computer bined—they are explicitly Ke- combined patent broadcast, T82 would receive noyer, to 'provide conferencing same cable, signals. satellite television Nei- system inas claim 6. To anticipate, a refer Kenoyer ther nor purports ence need disclose no than is broadcast, claimed cable,' more have invented or satellite in the challenged Iovate invention. signals, Health or to television have invented the Scis., v. Bio-Engineered Inc. Supplements whereby programmed mechanism com- Nutrition, Inc., 1376, & 586 F.3d 1382 puter processes signals by audio and video (Fed. 2009). broadcast, cable, Cir. It is incorrect to criticize or satellite transmission.1 panel majority 1. The my aspect states that criticism this only in connection with the unwarranted, is majority Op. and that Maj. raised box. n.1. This does not majority’s ruling that panel Kenoyer support refer- and the ’182 The anticipated. claims are known the ’182 signals as treat such ence both technology. teaches court states separate parts,” catalog “a mere
only togeth- Kenoyer simply “cobbled components “disconnected”
er” unrelated videoconferencing system
from the Maj. Op. at patent. PCS, INC., ALPINE Plaintiff- ignores This the entire disclosure Appellant pat- the 182 Kenoyer. Both system the same ent describe the same v. terms, known reciting the various STATES, Defendant-Appellee UNITED communication devices and their and video system. videoconferencing use the same 2017-1029 entirety Kenoyer is directed Appeals, Court of United States videoconferencing by way of an audio-vid- Circuit. Federal system. system that matches the 182 eo components shows all of the January Decided: arrange- functions of claim same plain.2 Anticipation is ment. met, anticipation clearly
The law any Kenoyer,
for on “suf view
ficiently the claimed invention describe[d] placed public possession have Donohue, 531, 533 n.7
it.” In re 766 F.2d &
(Fed. 1985). Kenname generally Cir. See
tal, (“However, a refer at 1381 F.3d *32 if it anticipate can even
ence limi spell out’ all the expressly not
‘d[oes] arranged
tations combined as
claim, art, person if of skill read reference, envisage’ ‘at once
ing the would or combination.” arrangement
the claimed Petering, In re 301 F.2d
(quoting
(CCPA 1962))). Kenoyer the same shows function,
components, having the same way for the same in the same
combined
purpose. Substantial evidence does unnecessary speci only bulk to the majority appears would add concern that the resolve the fication”). technological to hold known information detail, presented in full scientific must be to, spec- contrary e.g., In on the same Falko-Gunter Falkner v. is based 2. Method claim 69 art, 2006) (the ification, (Fed. prior subject the same glis, Cir. F.3d analysis, the same conclusion. sequences ... same "forced of known recitation notes various embodi- (and all) portions a subset or all or below, of the methods ments described one may implemented by pro- the above be or more of the may elements described gram memory in a instructions stored me- performed concurrently, in a different or- dium carrier medium executed shown, may der than be omitted entire- processor.” Id. at col. 15 11.21-24. Kenoyer ly. Other additional elements also be “¡Tjn begins next paragraph stating, performed as Id. at desired.” col. 1511.2-7. embodiments, computer some system steps then writes out the shown respective participant location in- in Figure 22. Id. at col. 1511.8-20. medium(s) memory clude a one .which