PTAB

IPR2014-01457

Microsoft Corp v. Biscotti Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Real Time Video Communications System
  • Brief Description: The ’182 patent relates to a video communication device designed to be situated inline between a set-top box and a display device, such as a television. The system allows a user to participate in a video call and view television programming, potentially simultaneously on the same display.

3. Grounds for Unpatentability

Ground 1: Anticipation by Kenoyer - 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 every element of the challenged claims. Kenoyer describes a video conferencing system, comprising a "codec" or "multi-component videoconferencing system (MCVCS)," that serves as the claimed "video communication device." This system is explicitly taught as being coupled to a set-top box. Petitioner asserted that Kenoyer discloses all required components of independent claim 6, including: a video input interface to receive video from the set-top box; an audio input interface; video and audio output interfaces for a display and speakers; video and audio capture devices (camera and microphone); a network interface; a processor; and a storage medium with instructions to control the device's operation, such as capturing and encoding media streams for transmission. Petitioner further contended that Kenoyer anticipates the dependent claims by teaching, for example, the reception of a remote audiovisual stream (claim 24), the creation of a consolidated output video stream showing remote video (claim 25), and the management of display areas and resolutions (claims 29 and 31).

Ground 2: Obviousness over Kenoyer and HDMI Specification - Claims 13-16, 29, 31-34, 46, and 82-86 are obvious over Kenoyer in view of the HDMI Specification.

  • Prior Art Relied Upon: Kenoyer (Patent 7,907,164) and the HDMI Specification (High-Definition Multimedia Interface Specification v. 1.3a, 2006).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Kenoyer teaches the fundamental video conferencing system connected to a set-top box, as established in Ground 1. The HDMI Specification, a well-known industry standard prior to the ’182 patent’s priority date, discloses the features of the High-Definition Multimedia Interface. This combination, Petitioner asserted, renders obvious the claims that require HDMI-specific features. For example, claims 13-16, which recite an HDMI interface for input and output of high-definition video and audio, are met by applying the standard HDMI interface to Kenoyer's system. Similarly, claims 46 and 82-86, which recite instructions for detecting display configuration and sending commands to the display, are taught by the HDMI Specification’s Consumer Electronics Control (CEC) protocol, which allows devices to query and control each other.
    • Motivation to Combine: A POSITA would combine Kenoyer's system with an HDMI interface as a routine and obvious design choice. At the time of the invention, HDMI was a prevalent standard for connecting high-definition video sources (like set-top boxes) to displays, offering superior quality and simplified cabling. Petitioner noted that implementing a known, standard interface to achieve its well-understood benefits is a classic example of obviousness. The motivation was further supported by Kenoyer's disclosure of a DVI interface, which is electrically compatible with the video portion of HDMI, making the substitution straightforward.
    • Expectation of Success: A POSITA would have had a high expectation of success in combining the references because it involved implementing a standardized interface (HDMI) with a known type of system (Kenoyer's video conferencing unit) to achieve the predictable result of high-quality audio/video transmission.
  • Additional Grounds: Petitioner asserted additional obviousness challenges, including that claim 36 would have been obvious over Kenoyer alone or in view of a guide on Windows XP Media Center functionality, and that claim 37 would have been obvious over Kenoyer alone due to the inherent need to resample video to display multiple sources simultaneously.

4. Key Claim Construction Positions

  • "set-top box" (claims 6, 13): Petitioner argued this term should be construed according to the explicit definition provided in the ’182 patent’s specification. The proposed construction was: "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 foundational to Petitioner’s argument that Kenoyer’s disclosure of connecting its system to devices with such functionality met this claim limitation.

5. Relief Requested

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