PTAB

IPR2014-01459

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 discloses a real-time video communication system, typically embodied as a device situated inline between a set-top box and a high-definition television. The system is designed to manage and consolidate audiovisual streams from both the set-top box and a remote video call participant for simultaneous display.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 69-71 and 74 under 35 U.S.C. §102

  • Prior Art Relied Upon: Kenoyer (Patent 7,907,164).
  • Core Argument for this Ground: Petitioner argued that Kenoyer, which discloses a comprehensive videoconferencing system for use with a set-top box, teaches every element of independent method claim 69 and its asserted dependent claims.
    • Prior Art Mapping: Kenoyer’s disclosure of a multi-component videoconferencing system (MCVCS) or "codec" was alleged to meet the "first video communication device" limitation. This system was shown to include an audio capture device (microphone), a video capture device (camera), a network interface (wired or wireless), and audiovisual input/output interfaces. Petitioner asserted that Kenoyer explicitly teaches coupling this device to a set-top box to receive an audiovisual stream, receiving a remote audiovisual stream over a network interface, capturing local audio and video, and transmitting a consolidated output stream containing at least a portion of the remote stream. This mapping was argued to satisfy all steps of independent claim 69. The dependent claims were likewise allegedly anticipated by Kenoyer’s disclosure of distinct audio and video interfaces (claims 70-71) and support for wireless Ethernet (claim 74).

Ground 2: Obviousness of Claims 1, 4, 5, 72 and 73 under 35 U.S.C. §103

  • Prior Art Relied Upon: Kenoyer (Patent 7,907,164) and the HDMI Specification v. 1.3a (2006).
  • Core Argument for this Ground: Petitioner contended that a person of ordinary skill in the art (POSITA) would have found it obvious to implement the audiovisual interfaces of the Kenoyer system using the well-known, industry-standard HDMI interface, thereby rendering the challenged system claims obvious.
    • Prior Art Mapping: Kenoyer was argued to disclose the foundational elements of the system claimed in claim 1, including a high-definition video communication device that connects to a set-top box and a display, includes a camera and microphone, and communicates with a second device over the Internet. The HDMI Specification was cited to supply the missing element: a "high-definition multimedia ('HDMI') input interface" and "HDMI output interface" as required by independent claim 1 and dependent claims 72 and 73.
    • Motivation to Combine: A POSITA would combine these references because both relate to the same field of endeavor: connecting high-definition video sources to displays. Petitioner argued that HDMI was a ubiquitous standard for this purpose, representing one of a finite number of predictable solutions for high-definition connectivity. Kenoyer's own disclosure of supporting high-definition video and a DVI interface (which is electrically compatible with HDMI's video portion) would have strongly suggested to a POSITA that using the more advanced, single-cable HDMI standard was a simple and logical design choice.
    • Expectation of Success: A POSITA would have had a high expectation of success in this combination, as integrating a standard HDMI port into an audiovisual device was a routine and predictable engineering task at the time of the invention.

Ground 3: Obviousness of Claims 1, 4 and 5 over Kenoyer, HDMI Spec, and Salsman

  • Prior Art Relied Upon: Kenoyer (Patent 7,907,164), the HDMI Specification, and Salsman (Application # 2009/0034750).
  • Core Argument for this Ground: To the extent the "audio watermark" limitations of claim 1 were not met by Kenoyer alone, Petitioner argued it would have been obvious to supplement the Kenoyer/HDMI system with the specific speaker verification technique taught by Salsman.
    • Prior Art Mapping: This ground focused on the claim 1 limitations requiring "instructions for transmitting an audio watermark signal" and "instructions for determining whether a speaker of the high-definition television is powered on...based on reception of the audio watermark signal." Kenoyer (through an incorporated reference) discloses a general "calibration procedure" using a noise burst to test speakers. Salsman was introduced as teaching a more specific method: generating "sub-audible tones" (an audio watermark), transmitting them through a speaker, capturing the transmitted tones with a microphone, and analyzing the captured audio to verify that the speaker is rendering audio correctly.
    • Motivation to Combine: Petitioner argued that a POSITA, seeking to implement the general speaker test functionality found in Kenoyer, would have naturally looked to known, specific methods for accomplishing this task. Salsman provides just such a known technique for the precise purpose of verifying speaker operation with an inaudible signal. Combining Salsman's method with the Kenoyer system was presented as a simple application of a known technique to improve a known system.
    • Expectation of Success: The combination involved implementing a known audio test signal methodology within a standard audiovisual processing system, a task that presented no undue experimentation and would have yielded predictable results.
  • Additional Grounds: Petitioner asserted additional obviousness challenges for claims 1, 4, and 5 based on Kenoyer and the HDMI Specification in view of either Patent 6,813,577 (teaching an alternative audio watermark for speaker detection) or the H.323 Recommendation (providing further details on peer-to-peer communication protocols).

4. Key Claim Construction Positions

  • "set-top box" (claims 1, 69): Petitioner argued for adopting the patent's own explicit definition: "any device that can provide video tuning, decryption and/or decoding functionality...as that functionality relates to reception of broadcast, cable, and/or satellite television signals."
  • "audio watermark" (claim 1): Citing both the patent's disclosure and the Patent Owner's positions in parallel litigation, Petitioner proposed the construction "an identifiable signal in an audio stream." This construction was argued to be broad enough to encompass the test signals and noise bursts disclosed in the cited prior art.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1, 4, 5, and 69-74 as unpatentable.