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Microsoft Corp. v. Biscotti, Inc.

Deference to PTAB on Close Question of Interpreting Text in Prior Art Reference

Microsoft Corp. v. Biscotti, Inc., 2017 U.S. App. LEXIS 26844 (Fed. Cir. Dec. 28, 2017) (Newman (dissenting), O’MALLEY, Reyna) (PTAB) (2 of 5 stars)

Fed Cir affirms decisions in related IPR proceedings confirming patentability of Biscotti’s claims. The claims related to tools and techniques for real-time video conference. The opinion notes that “anticipation is a question of fact subject to substantial evidence review,” Op. at 24, rejecting a contention made by Microsoft in briefing (but not oral argument) that where an anticipation decision rests on construction of a patent, there should be no deference to the PTAB’s interpretation. The opinion also rejects Microsoft’s argument that the PTAB applied an improperly narrow interpretation of the anticipation inquiry. While Kennametal, 780 F.3d 1376 (Fed. Cir. 2015), held that a reference could anticipate if it permitted a skilled artisan to “at once envisage” the claimed subject matter, even if the reference did not expressly recite every limitation, the Board actually recited Kennametal in its recitation of the anticipation standard, and there was evidence that it applied Kennametal in its analysis. The opinion then turns to a fact-specific discussion of Biscotti’s claim and the key reference, concluding that the Board’s determination was supported by substantial evidence. The Board did not commit reversible error in concluding that the reference’s statement that “embodiments” of the invention at issue could be software-implemented was only referring to the “embodiments” of a certain figure, and not to all embodiments in the description. The opinion reasons that there was “more than one reasonable interpretation” of this language, and so defers to the Board. Op. at 31. And though it was possible the Board erred in holding that the broadest reasonable interpretation of “set-top box” would exclude a computer, “the Board’s decision hinged on other factors that were not affected by an allegedly-erroneous construction of ‘set-top box.’” Op. at 41.

Dissent: Judge Newman would have held that the reference anticipated, or rendered obvious, the Biscotti claims under review.

KEYWORDS: INTER PARTES REVIEW; ANTICIPATION (NO); OBVIOUSNESS (NO)