PTAB

IPR2014-01457

Microsoft Corporation v. Biscotti, Inc.

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1. Case Identification

2. Patent Overview

  • Title: REAL TIME VIDEO COMMUNICATIONS SYSTEM
  • Brief Description: The ’182 patent discloses a video communication system designed to be situated "inline" between a set-top box and a television. The system enables a user to participate in a video call and simultaneously view television content by capturing local audio/video, exchanging it with a remote device, and combining the video streams for display.

3. Grounds for Unpatentability

Ground 1: Anticipation of Multiple Claims - Claims 6, 24-29, 31-37, and 41 are anticipated under 35 U.S.C. §102 by Kenoyer.

  • Prior Art Relied Upon: Kenoyer (Patent 7,907,164).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Kenoyer discloses a multi-component videoconferencing system (MCVCS), or "codec," that satisfies every limitation of the challenged claims. For independent claim 6, Petitioner asserted that Kenoyer's codec is a "video communication device" that includes all the required components: a video input interface to receive video from a set-top box, an audio input interface, video and audio output interfaces for a display and receiver, a camera and microphone as video/audio capture devices, a network interface, and a processor with an associated storage medium containing instructions to control the device's operation. Petitioner further contended that Kenoyer anticipates the dependent claims by disclosing, for example, receiving a remote audiovisual stream (claim 24), creating a consolidated output video stream (claim 25), displaying captured local video (claim 26), and displaying the set-top box stream simultaneously with the remote video stream (claim 28).

Ground 2: Obviousness over Kenoyer and HDMI Specification - Claims 13-16, 29, 31-34, 46, and 82-86 are obvious under 35 U.S.C. §103 over Kenoyer in view of the HDMI Specification.

  • Prior Art Relied Upon: Kenoyer (Patent 7,907,164), The HDMI Specification (Version 1.3a, Nov. 2006).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Kenoyer teaches a complete video conferencing system connected to a set-top box, and the HDMI Specification was a well-known standard for transmitting high-definition digital audio and video between components like set-top boxes and displays. The combination of Kenoyer's system with the standard HDMI interface would render obvious the claims reciting HDMI-specific functionality. For example, the combination teaches a high-definition multimedia interface (HDMI) for video input (claim 13), an interface that comprises both video and audio inputs (claim 14), and instructions for configuring the display device using commands sent over the interface (claims 82-86), a known feature of HDMI's Consumer Electronics Control (CEC) protocol.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Kenoyer with the HDMI Specification because HDMI was a known, predictable, and superior solution for connecting the high-definition video components described in Kenoyer. As HDMI was one of a finite number of standard interfaces available for this purpose, its use would have been an obvious design choice to implement Kenoyer’s system with a modern, high-quality connection. The commercial embodiment of Kenoyer's technology used HDMI ports, demonstrating it was a recognized and replaceable interface for the system.
    • Expectation of Success: A POSITA would have had a high expectation of success, as HDMI was a standardized, commercially available interface specifically designed for the functions required in Kenoyer. Incorporating a standard HDMI interface would produce only the predictable result of transmitting high-quality audio and video between the system components.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including that claim 36 is obvious over Kenoyer alone or in view of Briere and Hurley (a guide to Windows XP), and that claim 37 is obvious over Kenoyer alone based on the inherent need to resample video streams for simultaneous display.

4. Key Claim Construction Positions

  • "set-top box" (claims 6, 13): Petitioner argued this term should be construed according to the patent’s explicit definition: "any device that can provide video tuning, decryption and/or decoding functionality, especially as that functionality relates to reception of broadcast, cable, and/or satellite television signals." This construction was central to the anticipation argument, as it allowed Petitioner to assert that prior art devices with these functions (such as a VCR with a tuner) met the limitation, even if not explicitly labeled a "set-top box."

5. Relief Requested

  • Petitioner requests that the Board institute an inter partes review and cancel claims 6, 13-16, 24-29, 31-37, 41, 46, and 82-86 of the ’182 patent as unpatentable.