Microsoft Corp v. Biscotti Inc

1. Case Identification

• Case #: IPR2015-01053
• Patent #: 8,144,182
• Filed: April 17, 2015
• Petitioner(s): Microsoft Corporation
• Patent Owner(s): Biscotti Inc.
• Challenged Claims: 1, 4, and 5

2. Patent Overview

• Title: Real Time Video Communications System
• Brief Description: The ’182 patent discloses a video communication device designed to be situated "inline" between a set-top box and a high-definition television. The system is configured to allow a user to simultaneously watch television programming passed through from the set-top box and participate in a real-time video call.

3. Grounds for Unpatentability

Ground 1: Claims 1, 4, and 5 are obvious over Kenoyer, the HDMI Specification, and the ’750 application.

• Prior Art Relied Upon: Kenoyer (Patent 7,907,164), the HDMI Specification (v1.3a), and Adams (Application # 2009/0034750).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Kenoyer discloses the core architecture of the challenged claims: a videoconferencing system (codec) connected to a set-top box that can pass through television programming while simultaneously displaying a video conference on a high-definition display. Kenoyer was alleged to teach most system components, including a camera, microphone, processor, and network interface. Petitioner asserted that implementing Kenoyer's generic audiovisual interfaces using the well-known HDMI standard, as detailed in the HDMI Specification, was an obvious design choice for high-definition signals. This primary combination allegedly taught all limitations of claim 1 except for those related to using an audio watermark to detect speaker status. The Adams application was introduced to supply these missing elements, as it discloses using a "sub-audible tone" (an audio watermark) transmitted to a speaker and captured by a microphone to determine if the speaker is active and rendering audio.
  • Motivation to Combine: A POSITA would combine Kenoyer with the HDMI Specification because HDMI was the prevailing standard for connecting high-definition audiovisual devices like those in Kenoyer. A POSITA would further combine this with Adams because Kenoyer describes testing audio output, and Adams provides a known, non-perceptible method (sub-audible tones) to solve the problem of verifying speaker functionality in a similar audio-video system.
  • Expectation of Success: Petitioner contended that combining these known elements—a videoconferencing system, a standard interface, and a known speaker-testing method—would yield only predictable results.

Ground 2: Claims 1, 4, and 5 are obvious over Kenoyer, the HDMI Specification, and the ’577 patent.

• Prior Art Relied Upon: Kenoyer (Patent 7,907,164), the HDMI Specification (v1.3a), and the ’577 patent (Patent 6,813,577).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground presents an alternative for the final piece of the combination in Ground 1. Petitioner relied on the same combination of Kenoyer and the HDMI Specification to teach the majority of the claim limitations. To supply the missing audio watermark functionality, Petitioner relied on the ’577 patent. This patent was argued to disclose a speaker detection mode that uses a "test signal" (an audio watermark) which is output, received by a microphone, and analyzed to determine if a speaker is connected and operating. This process determines whether a speaker is powered on and enabled to play audio.
  • Motivation to Combine: The motivation is parallel to that of Ground 1. Petitioner argued that since both Kenoyer and the ’577 patent operate in the field of audio processing and delivery, a POSITA seeking to implement a speaker verification feature in Kenoyer's system would have looked to known solutions like the test signal method disclosed in the ’577 patent.
  • Expectation of Success: Petitioner argued success would be expected, as applying a known speaker detection method from the ’577 patent to the audio system in Kenoyer was a straightforward application of known technologies.

4. Key Claim Construction Positions

• "set-top box" (claim 1): Petitioner argued for adopting the explicit definition from the ’182 patent's specification: "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."
• "audio watermark" (claim 1): Petitioner proposed the construction "an identifiable signal in an audio stream," noting this was the same construction proposed by the Patent Owner in related district court litigation. This construction was argued to be broad enough to encompass the "sub-audible tones" and "test signals" disclosed in the tertiary prior art references.

5. Key Technical Contentions (Beyond Claim Construction)

• Public Availability of the HDMI Specification: A central contention of the petition was establishing that the HDMI Specification v1.3a was publicly available prior to the ’182 patent's critical date. Petitioner noted that a previous IPR petition (IPR2014-01459) was denied institution because the Board found Petitioner had not sufficiently proven the document was a prior art printed publication. In this petition, Petitioner presented new and substantial evidence, including a declaration from the former president of HDMI Licensing, LLC (Steve Venuti), to directly attest to the specification's widespread and unrestricted public distribution starting in November 2006.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. § 325(d) would be inappropriate. It contended that although the same primary prior art was presented in a previously denied petition, the Board never reached the substantive merits of the obviousness grounds. The denial was based solely on the failure to establish the prior art status of the HDMI Specification—an evidentiary deficiency Petitioner asserted was cured by the new evidence presented in this petition. Therefore, Petitioner argued the Board should exercise its discretion to consider the merits for the first time.

7. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 4, and 5 of Patent 8,144,182 as unpatentable.