Microsoft Corp v. Biscotti Inc

1. Case Identification

• Case #: IPR2015-01052
• Patent #: 8,144,182
• Filed: April 17, 2015
• Petitioner(s): Microsoft Corporation
• Patent Owner(s): Biscotti Inc.
• Challenged Claims: 13-16, 33, 34, 46, and 82-86

2. Patent Overview

• Title: Real Time Video Communications System
• Brief Description: The ’182 patent discloses a video communication device designed to be situated between a video source, such as a set-top box, and a display, such as a television. The device integrates video conferencing capabilities with standard television viewing, allowing a user to simultaneously watch television and participate in a video call.

3. Grounds for Unpatentability

Ground 1: Obviousness over Kenoyer and the HDMI Specification - Claims 13-16, 33, 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, version 1.3a, Nov. 10, 2006).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Kenoyer taught all elements of independent claim 6, from which all challenged claims depend. Kenoyer described a video conferencing system (a "codec" or "MCVCS") that connects between a set-top box and a display. This system included all requisite interfaces for video/audio input and output, network connectivity, video/audio capture devices, and a processor with instructions for controlling the device's functions. The challenged dependent claims added limitations that were explicitly taught by the HDMI Specification. For example, claims 13 and 14 required the video input interface to be a high-definition multimedia interface (HDMI) that also comprises the audio input interface. Claims 15 and 16 required the same for the video output interface. The HDMI Specification, a well-known industry standard, detailed how a single HDMI connection carries both high-definition video and multi-channel audio. Similarly, claims 33, 34, and 82-86 recited specific functionalities provided by the HDMI standard, such as detecting display resolution, setting output resolution based on input, and sending configuration commands (e.g., power on, select input) over the video output interface. Petitioner argued these functionalities were all disclosed in the HDMI Specification’s description of features like AVI InfoFrames, E-EDID data structures, and Consumer Electronics Control (CEC) commands.
  • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would have been motivated to implement the video/audio interfaces of Kenoyer’s set-top box conferencing system using the HDMI standard for several reasons. First, by the patent's 2008 priority date, HDMI was a widely adopted, industry-standard interface for connecting high-definition audiovisual sources like set-top boxes to displays. Second, implementing the system with a known, standardized interface was one of a finite number of predictable solutions available to a POSITA, making it an obvious design choice. Third, Petitioner contended that the commercial embodiment of the system disclosed in Kenoyer, sold by LifeSize Communications, actually used HDMI ports for input and output, demonstrating that a POSITA considered HDMI a suitable and replaceable interface for the system.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining the references because the HDMI Specification provided detailed technical guidance on how to integrate HDMI interfaces into audiovisual devices. The combination would have yielded only predictable results, as the HDMI interface was specifically designed to provide the high-quality video and audio transmission needed for a system like Kenoyer's.

4. Key Claim Construction Positions

• Petitioner proposed adopting the same claim constructions for terms in independent claim 6 that the Board had previously adopted in a related proceeding (IPR2014-01457). For other claim terms in the ’182 patent, Petitioner argued that no special construction was needed and the terms should be given their plain and ordinary meaning, noting that many recite conventional structures well known in the art.

5. Key Technical Contentions (Beyond Claim Construction)

• A central contention of the petition was establishing that the HDMI Specification version 1.3a was publicly available before the patent’s September 16, 2008 effective filing date and thus qualifies as prior art. In a prior IPR, the Board had declined to institute on these same claims because Petitioner had not sufficiently proven the public accessibility of the specification. To cure this deficiency, this petition presented new evidence, most notably a declaration from Steve Venuti, the former President of HDMI Licensing, LLC. Mr. Venuti’s declaration attested that the HDMI Specification v. 1.3a was released on November 10, 2006, and was made freely available for download from the hdmi.org website to any interested member of the public, with over 30,000 downloads recorded by late 2007.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. § 325(d) would be inappropriate. Although the same prior art combination was presented in a previous petition (IPR2014-01457), the Board declined institution without ever considering the substantive merits of the obviousness arguments. The denial was based solely on the evidentiary failure to establish the HDMI Specification as a prior art document. Petitioner asserted that this new petition, strengthened by new and previously unavailable testimonial evidence, cured the specific deficiency identified by the Board, warranting a full consideration of the merits for the first time.

7. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 13-16, 33, 34, 46, and 82-86 of the ’182 patent as unpatentable.