PTAB

IPR2014-01458

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 describes a video communication system, comprising a device that can be situated between a set-top box (STB) and a television. The system is designed to allow a user to simultaneously watch television programming from the STB and participate in a video call.

3. Grounds for Unpatentability

Ground 1: Anticipation by Kenoyer - Claims 6-8, 12, 17-23, 38, 39, 41, 42, 44, 45, 50, 52, and 53 are anticipated by Patent 7,907,164 under 35 U.S.C. §102.

  • Prior Art Relied Upon: Kenoyer (Patent 7,907,164).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Kenoyer, which discloses an "Integrated Videoconferencing System," teaches every element of the challenged claims. For independent claim 6, Petitioner asserted that Kenoyer's multi-component videoconferencing system (MCVCS) or "codec" is the claimed "first video communication device." This device is described in Kenoyer as being coupled to a set-top box, thereby teaching the claimed input interfaces for receiving video and audio from an STB. Petitioner further mapped Kenoyer's disclosure of connections to a display and speakers to the claimed video and audio output interfaces. Kenoyer's disclosure of a camera, microphone, network connections (wired and wireless), and a processor were mapped to the corresponding limitations in claim 6.
    • Key Aspects: For the numerous dependent claims, Petitioner systematically mapped each additional feature—such as a remote control (claim 7), multiple processors (claim 8), a high-definition camera (claim 19), or a PC-based video chat application as the second device (claim 21)—to specific disclosures within Kenoyer or patent applications it incorporates by reference. The core of this ground was a direct, element-by-element mapping of a single, comprehensive prior art reference to a large swath of the challenged claims.

Ground 2: Obviousness over Kenoyer and '680 patent - Claims 39 and 40 are obvious over Kenoyer in view of Patent 7,565,680.

  • Prior Art Relied Upon: Kenoyer (Patent 7,907,164) and the ’680 patent (Patent 7,565,680).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground was presented as an alternative to the anticipation argument for claims 39 and 40, which relate to mixing audio streams. Kenoyer was argued to disclose the base system, including displaying video from an STB and a video call simultaneously, which creates the problem of managing audio from two sources. The ’680 patent was introduced as teaching the solution: mixing audio streams from a video program and a video call. Specifically, the ’680 patent discloses allowing a user to select the call audio, the program audio, or a "summation of both." This summation was mapped to the claimed "consolidated output audio stream" created using a specified "audio a value" which controls the mixing ratio.
    • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would be motivated to combine these references because both are in the same field of video conferencing systems integrated with televisions. A POSITA, facing the known problem in Kenoyer of managing audio from two simultaneous video sources, would have looked to solutions like that in the ’680 patent, which explicitly addresses mixing audio streams in a picture-in-picture context.
    • Expectation of Success: The combination was asserted to be a predictable substitution of one known element (audio mixing) for another, yielding no unexpected results. Combining Kenoyer's video display capabilities with the '680 patent's audio mixing was argued to be a straightforward implementation.

Ground 3: Obviousness over Kenoyer and '750 application - Claims 42, 44, and 45 are obvious over Kenoyer in view of Application # 2009/0034750.

  • Prior Art Relied Upon: Kenoyer (Patent 7,907,164) and the ’750 application (Application # 2009/0034750).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground addressed claims related to detecting speaker functionality using an audio watermark. Kenoyer was asserted to teach the base system with an external audio receiver (speakers). The ’750 application was introduced for its teaching of detecting whether speakers are active by transmitting a "sub-audible tone" (the claimed "audio watermark") and analyzing the captured audio to see if the tone is present. The ’750 application's system of playing a known tone, capturing it with a microphone, and performing pattern matching was mapped to the claim limitations for inserting and analyzing a watermark with a known waveform.
    • Motivation to Combine: Petitioner contended that a POSITA implementing the video conferencing system of Kenoyer would be motivated to incorporate a diagnostic feature to test if the external speakers are properly connected and functioning. The ’750 application provides a known, conventional method for such a test. Both references being in the same field of endeavor (audio/video systems) would have prompted a POSITA to combine them.
    • Expectation of Success: A POSITA would have had a high expectation of success, as combining a known speaker-detection method with a standard audio-visual system was a predictable integration of known technologies to achieve a desired, known function.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including combining Kenoyer with the Internet Protocol standard to render claim 22 obvious, and combining Kenoyer with Patent 6,813,577 as an alternative ground for rendering claims 42, 44, and 45 obvious using a similar speaker-detection theory.

4. Key Claim Construction Positions

  • "transmitting the series of data packets over a private content delivery network" (claim 23): Petitioner argued that based on the patent's specification, this term does not require the entire network path to be a private content delivery network (CDN). Instead, it should be construed as transmitting data packets at least partially over a private CDN, where other parts of the transmission path could be the public Internet.
  • "audio watermark" (claims 44, 45): Citing the specification and a construction proposed by the Patent Owner in related litigation, Petitioner argued this term should be construed broadly as "an identifiable signal in an audio stream." This construction supports the argument that test signals and noise bursts disclosed in the prior art meet the limitation.
  • "video chat application" (claim 21): Petitioner asserted this term should be construed simply as "software implementing video conferencing functionality," based on examples like Skype cited in the patent's background.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and cancellation of claims 6-8, 12, 17-23, 38-42, 44-46, 50, 52, and 53 of the ’182 patent as unpatentable.