{"id":1883,"date":"2017-12-29T09:09:57","date_gmt":"2017-12-29T14:09:57","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1883"},"modified":"2017-12-29T09:09:57","modified_gmt":"2017-12-29T14:09:57","slug":"anticipation-analysis-indisputably-allows-for-some-flexibility-substantial-evidence-still-supports-finding-of-no-anticipation","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1883","title":{"rendered":"Anticipation Analysis Indisputably Allows for Some\u00a0Flexibility; Substantial Evidence Still Supports Finding of No Anticipation"},"content":{"rendered":"

In Microsoft Corp v. Biscotti, Inc.<\/a>, [2016-2080, 2016-2082, 2016-2083] (December 28, 2017), the Federal Circuit affirmed the Board’s determination in the IPR’s\u00a0that Microsoft failed to show by a\u00a0 preponderance of the evidence that the challenged claims\u00a0of U.S. Patent No. 8,144,182 were anticipated\u00a0or obvious.<\/p>\n

The challenged patent related to \u201ctools and\u00a0techniques for providing video calling solutions\u201d and\u00a0relates to real-time video conferencing where two or more\u00a0users communicate, over a network, in a conference that\u00a0includes video and audio of each participant.<\/p>\n

Microsoft appeared to challenge the standard of review of anticipation, so the Federal Circuit began by reiterating that\u00a0anticipation is a\u00a0question of fact subject to substantial evidence review.\u00a0 Noting that the Board correctly articulated the anticipation standard, the Federal Cricuit considered whether the Board properly applied that standard. ,\u00a0\u00a0\u00a0anticipate the claimed invention,\u00a0a prior art reference must disclose all elements of\u00a0the claim within the four corners of the document, and it
\nmust disclose those elements arranged as in the claim, the Federal Circuit.\u00a0 Noting that\u00a0the Board may have used wording such as\u00a0 \u201cidentically\u201d more liberally than it should have because\u00a0an anticipation analysis indisputably allows for some\u00a0flexibility, the Federal Circuit found that the Board\u2019s analysis did not suffer from a\u00a0misapplication of the anticipation standard.\u00a0 The Federal Circuit found that\u00a0the Board therefore did not require word-for-word\u00a0similarity or perfection, and explicitly considered whether a POSA would\u00a0\u201cat once envisage\u201d the combination of the claimed invention\u00a0given the disconnected teachings of the reference.<\/p>\n

However even though the Board articulated the correct standard, and applied the correct standard, this did not mean that the Board’s analysis was correct.\u00a0 Microsoft argued that the Board read the prior art too narrowly, limiting certain disclosures to particular embodiments, and not applying them to all disclosed embodiments.\u00a0 The Federal Circuit said although Microsoft\u2019s arguments were not unreasonable, it\u00a0does not review this question de novo; anticipation is a\u00a0question of fact, reviewed for\u00a0substantial evidence.\u00a0 In light of this deference, the Federal Circuit affirmed the Board’s decision.<\/p>\n

The Federal Circuit found that\u00a0Microsoft\u2019s brief on appeal with respect to one claim was more detailed and\u00a0contained substantial new arguments regarding anticipation, and rejected them because they were not presented in the Petition.<\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

In Microsoft Corp v. Biscotti, Inc., [2016-2080, 2016-2082, 2016-2083] (December 28, 2017), the Federal Circuit affirmed the Board’s determination in the IPR’s\u00a0that Microsoft failed to show by a\u00a0 preponderance of the evidence that the challenged claims\u00a0of U.S. Patent No. 8,144,182 … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[1],"tags":[],"class_list":["post-1883","post","type-post","status-publish","format-standard","hentry","category-uncategorized"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1883","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1883"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1883\/revisions"}],"predecessor-version":[{"id":1884,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1883\/revisions\/1884"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1883"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1883"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1883"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}