MICROSOFT CORPORATION v. BISCOTTI, INC., Appeal No. 2016-2080, 2082, 2083 (Fed. Cir. December 28, 2017).  Before Newman, O’Malley, and Reyna.  Appealed from PTAB.  (AnticipationSummary by:  John Hocker


Biscotti sued Microsoft for infringement of patents disclosing real-time video calling solutions.  In response, Microsoft petitioned the PTAB for inter partes reviews of the patents, offering evidence of a U.S. Patent to Kenoyer that allegedly invalidated Biscotti’s claims.

Kenoyer discloses a similar structure, namely, a multicomponent videoconferencing system including a camera, a display, a microphone, and speakers.  Microsoft alleged that Kenoyer anticipated asserted claim 6 because the “storage medium” limitation was disclosed by Kenoyer’s recitation of: “[e]mbodiments of a subset or all (and portions or all) of the above may be implemented by program instructions stored in a memory medium … and executed by a processor.”  Microsoft argued that the specification, at various places, disclosed the functions described by the claimed storage medium instructions.  However, Biscotti contended that the cited language referred only to the description of FIG. 22, which immediately preceded the language on which Microsoft relied, rather than all of the disclosures made throughout Kenoyer.  Biscotti contended that the language could not apply to all prior disclosures in the specification because the specification discussed certain components (e.g., cooling fans and handles to carry equipment) that could not have been implemented in a storage medium.  Biscotti argued that the more natural interpretation of the language was that it applied only to the discussion of FIG. 22 (i.e., the discussion preceding immediately above).

In finding that Microsoft failed to prove that Kenoyer anticipated the “storage medium instructions,” the Board found that “Kenoyer’s program instructions sentence does not make sense as a disclosure blanketing all of the preceding 34 pages, and that the sentence does not refer back specifically to the various other disclosures cited by [Microsoft].”  Thus, the Board ultimately found that Microsoft failed to prove anticipation by Kenoyer.  Microsoft also failed to separately address whether Kenoyer rendered the limitations obvious based on the teachings located in different parts of the specification (so Microsoft also failed to prove obviousness).  Thus, the Board found that Microsoft did not prove unpatentability.  Microsoft appealed.


Did the PTAB err in concluding that Microsoft failed to prove unpatentability?  (continue reading)

Summary by:  John Hocker

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