Microsoft Corp v. Biscotti Inc

1. Case Identification

• Case #: IPR2015-01054
• Patent #: 8,144,182
• Filed: April 17, 2015
• Petitioner(s): Microsoft Corporation
• Patent Owner(s): Biscotti Inc.
• Challenged Claims: 72 and 73

2. Patent Overview

• Title: Real Time Video Communications System
• Brief Description: The ’182 patent describes a video communication device designed to be situated between a set-top box and a television. The device is configured to receive an audiovisual stream from the set-top box, receive a remote stream over a network, and display them simultaneously, allowing a user to watch television while participating in a video call.

3. Grounds for Unpatentability

Ground 1: Obviousness over Kenoyer and the HDMI Specification - Claims 72 and 73 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, which describes an "Integrated Videoconferencing System" connected to a set-top box, discloses every element of independent claim 69, from which challenged claims 72 and 73 depend. The Board had previously instituted IPR on claim 69 based on anticipation by Kenoyer in a related proceeding (IPR2014-01459). The sole additional limitations in claims 72 and 73 require that the "audiovisual input interface" and "audiovisual output interface," respectively, are a "high-definition multimedia interface ('HDMI')." The HDMI Specification explicitly discloses and provides the complete technical standard for implementing such an interface.
  • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would combine Kenoyer with the HDMI Specification for several reasons. First, Kenoyer teaches a high-definition videoconferencing system, and by the patent's 2008 priority date, HDMI was the predominant, well-known industry standard for connecting high-definition audio and video sources like set-top boxes to displays. Second, implementing the generic audiovisual interfaces of Kenoyer using the widely adopted HDMI standard was one of a small number of finite, predictable solutions. Third, the HDMI Specification provides complete technical guidance, making integration a routine design choice. Finally, Kenoyer discloses a DVI interface, which is electrically compatible with HDMI, further suggesting to a POSITA that HDMI could be used with minimal effort.
  • Expectation of Success: A POSITA would have had a high expectation of success because using the HDMI standard to connect high-definition audiovisual components was its intended purpose. The HDMI Specification provided all necessary details for implementation, and the result—the transmission of high-definition audio and video—was entirely predictable.

4. Key Technical Contentions (Beyond Claim Construction)

• HDMI Specification as Prior Art: A central contention of the petition was establishing that the HDMI Specification version 1.3a was publicly available before the patent's September 2008 effective priority date, a point the Board found unproven in a prior IPR. To overcome this, Petitioner presented new evidence, including:
  • A declaration from Steve Venuti, the former president of HDMI Licensing, LLC, testifying that the specification was made freely available for public download from the hdmi.org website starting in November 2006.
  • Evidence of over 30,000 downloads occurring in 2007, well before the critical date.
  • Publicly available press releases from 2006-2007 (e.g., from Sony and PC Magazine) discussing products compliant with version 1.3a, which would have required access to the specification.
  • The submission of the specification in an Information Disclosure Statement for an unrelated patent in October 2007, making it a public record.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate. Although the same prior art combination was presented in a prior petition (IPR2014-01459), the Board declined institution on a threshold issue—whether the HDMI Specification was proven to be prior art—and never reached the substantive merits of the obviousness argument. Petitioner contended that the new evidence establishing the public availability of the HDMI Specification (the Venuti declaration) was unavailable during the prior proceeding and warranted a full consideration of the merits of the obviousness ground for the first time.

6. Relief Requested

• Petitioner requests that the Board institute an inter partes review and cancel claims 72 and 73 of the ’182 patent as unpatentable under 35 U.S.C. §103.