  United States Court of Appeals
      for the Federal Circuit
                ______________________

           MICROSOFT CORPORATION,
                  Appellant

                          v.

                  BISCOTTI, INC.,
                       Appellee
                ______________________

           2016-2080, 2016-2082, 2016-2083
               ______________________

   Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in Nos.
IPR2014-01457, IPR2014-01458, IPR2014-01459.
                ______________________

             Decided: December 28, 2017
               ______________________

    CONSTANTINE L. TRELA, JR., Sidley Austin LLP, Chi-
cago, IL, argued for appellant. Also represented by
RICHARD ALAN CEDEROTH, DOUGLAS LEWIS; JOSHUA JOHN
FOUGERE, JOSEPH A. MICALLEF, Washington, DC.

    JOHN C. O’QUINN, Kirkland & Ellis LLP, Washington,
DC, argued for appellee. Also represented by WILLIAM H.
BURGESS; ADAM R. ALPER, San Francisco, CA; MICHAEL W.
DE VRIES, Los Angeles, CA; AMANDA J. HOLLIS, Chicago,
IL.
                ______________________
2                    MICROSOFT CORPORATION   v. BISCOTTI, INC.



    Before NEWMAN, O’MALLEY, and REYNA, Circuit Judges.
    Opinion for the court filed by Circuit Judge O’MALLEY.
      Dissenting opinion filed by Circuit Judge NEWMAN.
O’MALLEY, Circuit Judge.
    Microsoft Corporation (“Microsoft”) appeals from deci-
sions of the Patent Trial and Appeal Board (“Board”) in
three separate inter partes review (“IPR”) proceedings, in
which the Board found that Microsoft failed to show by a
preponderance of the evidence that the challenged claims
of U.S. Patent No. 8,144,182 (“’182 patent”) were antici-
pated or obvious. See Microsoft Corp. v. Biscotti Inc., No.
IPR2014-01457, 2016 Pat. App. LEXIS 7571 (P.T.A.B.
Mar. 17, 2016); Microsoft Corp. v. Biscotti Inc., No.
IPR2014-01458, 2016 Pat. App. LEXIS 7572 (P.T.A.B.
Mar. 17, 2016); Microsoft Corp. v. Biscotti Inc., No.
IPR2014-01459, 2016 Pat. App. LEXIS 7573 (P.T.A.B.
Mar. 17, 2016). Because the Board’s decisions are sup-
ported by substantial evidence and do not rely on an
erroneous claim construction, we affirm.
                       I. BACKGROUND
                     A. The ’182 Patent
    The ’182 patent is entitled “Real Time Video Commu-
nications System.” The ’182 patent discloses “tools and
techniques for providing video calling solutions” and
relates to real-time video conferencing where two or more
users communicate, over a network, in a conference that
includes video and audio of each participant. ’182 patent,
Abstract.
    The patent explains that there are various video call-
ing technologies on the market, but it states that “there
have been no satisfactory video calling options for con-
sumers.” Id. at col. 1 ll. 42–46. The ’182 patent notes
three different types of video calling systems available at
the time of this patent: (1) professional-grade systems
MICROSOFT CORPORATION     v. BISCOTTI, INC.                   3



that require complex hardware and are expensive and
difficult to use; (2) personal computer systems, such as
web cams and video chat software like Skype, that have
“far from optimal” call quality, require the use of a per-
sonal computer, and use confusing and error-prone soft-
ware and hardware; and (3) dedicated video phones that
are expensive, require multiple phones to communicate
with others, and fail to provide adequate call quality
because they use small screens and operate over a stand-
ard “plain old telephone system.” Id. at col. 1 l. 46–col. 2
l. 4. The ’182 patent claims that it provides a system that
“solves these and other deficiencies found in current
products.” Id. at col. 2 ll. 5–6.
    The patented video communication system includes
components such as video communication devices, the
internet, video sources, display devices, and set-top boxes.
Id. at col. 5 l. 40–col. 6 l. 13. The first video communica-
tion device captures a video or audio stream from a video
source. Id. at col. 5 ll. 49–56. The second video communi-
cation device similarly captures a video or audio stream
from a second video source. Id. The first and second
video communication devices can output the video or
audio stream they receive from their respective video
source to the display devices. Id. at col. 5 ll. 56–62.
    Each video communication device also is connected to
a set-top box. Id. at col. 5 ll. 62–65. This allows the video
communication device to receive an audiovisual stream
from the set-top box and transmit it to the display device.
Id. at col. 5 l. 65–col. 6 l. 1.
    The video communication devices can send their video
or audio streams to one another across the internet. Id.
at col. 5 ll. 42–44; id. col. 6 ll. 1–13. For example, the first
video communication device can receive a video or audio
stream over the internet from the second video communi-
cation device. Id. The first video communication device
then can display the video or audio stream from the
4                   MICROSOFT CORPORATION   v. BISCOTTI, INC.



second video communication device using its display
device. Id. The second video communication device
similarly can receive a video or audio stream over the
internet from the first video communication device. Id.
The second video communication device then can display
the video or audio stream from the first video communica-
tion device using its display device. Id. This exchange
might happen as part of a video call between the two
video communication devices.
     In some embodiments, the video communication de-
vices can simultaneously display the respective audiovis-
ual streams from the respective set-top boxes so that the
display device shows the video or audio stream (from
either video communication device) and the audiovisual
stream from the set-top box at the same time. Id. at col. 6
ll. 14–18. In this type of situation, the video or audio
stream might be sent across the internet to another video
communication device, but the audiovisual stream from
the set-top box would not be sent over the internet to the
other video communication device. This functionality
would allow a user to participate in a video call while also
watching television at the same time. Id. at col. 6 ll. 18–
20.
    Figure 4 of the patent shows that the video communi-
cation device includes an input video interface and an
input audio interface through which the video communi-
cation device can receive video and audio from a set-top
box. Id. at col. 10 ll. 19–22, 48–52. The video communica-
tion device also includes an output video interface and an
output audio interface through which the video communi-
cation device can transmit video and audio to a display
device. Id. at col. 10 ll. 19–22, 59–67. The video commu-
nication device has an audio capture device and a video
capture device through which it can receive audio and
video; for example, these features might include a micro-
phone and a camera to capture speech and footage of a
video call participant. Id. at col. 11 ll. 3–12. The video
MICROSOFT CORPORATION   v. BISCOTTI, INC.                5



communication device also includes a network interface
that allows a connection to a network, which can be used
to communicate with a server or another video communi-
cation device. Id. at col. 11 ll. 25–31.
     The video communication device also includes a pro-
cessor, codecs, and a storage medium. Id. at col. 9 ll. 64–
66, col. 10 ll. 11–18. The processor generally controls the
operation of the video communication device. Id. at col. 9
ll. 64–66. The codecs provide the video communication
device with encoding and decoding functionality. Id. at
col. 10 ll. 11–14. The storage medium is “encoded with
instructions executable by the processor, can provide
working memory for execution of those instructions, [and]
can be used to cache and/or buffer media streams, and/or
the like.” Id. at col. 10 ll. 14–18.
   The ’182 patent has four independent claims, but only
two are relevant to these appeals—claims 6 and 69.
Independent claim 6 reads:
   A video communication system, comprising:
       a first video communication device, com-
       prising:
       [A] a video input interface to receive video
       input from a set-top box;
       [B] an audio input interface to receive au-
       dio input from the set-top box;
       [C] a video output interface to provide vid-
       eo output to a video display device;
       [D] an audio output interface to provide
       audio output to an audio receiver;
       [E] a video capture device to capture vid-
       eo;
       [F] an audio capture device to capture au-
       dio;
6                  MICROSOFT CORPORATION    v. BISCOTTI, INC.



       [G] a network interface;
       [H] at least one processor; and
       [I] a storage medium in communication
       with the at least one processor, the stor-
       age medium having encoded thereon a set
       of instructions executable by the at least
       one processor to control operation of the
       first video communication device, the set
       of instructions comprising:
           [i] instructions for controlling the
           video capture device to capture a
           captured video stream;
           [ii] instructions for controlling the
           audio capture device to capture a
           captured audio stream;
           [iii] instructions for encoding the
           captured video stream and the
           captured audio stream to produce
           a series of data packets; and
           [iv] instructions for transmitting
           the series of data packets on the
           network interface for reception by
           a second video communication de-
           vice.
Id. at col. 32 l. 62–col. 33 l. 25. Claim 6 and certain
claims depending from claim 6 were at issue in the first
two IPRs.
    Independent claim 69 reads:
    A method of providing video calling using a first
    video communication device comprising an audio
    capture device, a video capture device, a network
    interface, an audiovisual input interface, and an
MICROSOFT CORPORATION   v. BISCOTTI, INC.              7



   audiovisual output interface, the method compris-
   ing:
       [A] receiving, on the audiovisual input in-
       terface, a set-top box audiovisual stream
       from a set-top box, the set-top box audio-
       visual stream comprising a set-top box
       video stream and a set-top box audio
       stream;
       [B] receiving, on the network interface, a
       remote audiovisual stream via a network
       connection with a second video communi-
       cation device, the remote audiovisual
       stream comprising a remote audio stream
       and a remote video stream;
       [C] transmitting, on the audiovisual out-
       put interface, a consolidated output video
       stream comprising at least a portion of the
       remote video stream and a consolidated
       output audio stream comprising at least
       the remote audio stream;
       [D] capturing a captured video stream
       with the video capture device;
       [E] capturing a captured audio stream
       with the audio capture device;
       [F] encoding the captured video stream
       and the captured audio stream to produce
       a series of data packets; and
       [G] transmitting the series of data packets
       on the network interface for reception by
       the second video communication device.
Id. at col. 37 l. 63–col. 38 l. 23. Claim 69 and certain
claims depending from claim 69 were at issue in the third
IPR.
8                  MICROSOFT CORPORATION   v. BISCOTTI, INC.



                B. The Kenoyer Reference
    U.S. Patent No. 7,907,164 (“Kenoyer”), entitled “Inte-
grated Videoconferencing System,” was filed on April 17,
2006, and issued on March 15, 2011. Its invention “re-
lates generally to conferencing and, more specifically, to
videoconferencing.” Kenoyer, col. 1 ll. 22–23. The refer-
ence explains that videoconferencing allows “two or more
participants at remote locations to communicate using
both video and audio.” Id. at col. 1 ll. 25–27.
     Kenoyer discloses a “multi-component videoconferenc-
ing system” that “may include a camera, microphones,
speakers, and a codec possibly used in conjunction with a
computer system.” Id. at col. 1 ll. 43–47. Kenoyer ex-
plains that it is “susceptible to various modifications and
alternative forms.” Id. at col. 3 ll. 17–18. The system’s
video and audio conferencing capabilities “may be imple-
mented over various types of networked devices.” Id. at
col. 4 ll. 15–16. An embodiment of the invention imple-
mented over a network is provided in Figure 1:
MICROSOFT CORPORATION   v. BISCOTTI, INC.              9




Id. at Fig. 1. The video conferencing system includes a
network (101) with endpoints (103A–103H), gateways
(130A and 130B), a service provider (108), a public
switched telephone network (120), conference units
(105A–105D), and telephones from a “plain old telephone
system” (106A and 106B). Id. at col. 3 l. 64–col. 4 l. 4.
    The endpoints (103A–103H) can be audio or videocon-
ferencing systems. Id. at col. 3 ll. 66–67. Kenoyer ex-
plains that certain endpoints (103D–103H) may include
audio and video communication capabilities to create
video conferencing capability. Id. at col. 4 ll. 35–46.
10                  MICROSOFT CORPORATION    v. BISCOTTI, INC.



These endpoints also can include or be coupled to various
audio devices, such as microphones, audio input devices,
speakers, and audio output devices. Id. at col. 4 ll. 35–39.
And these endpoints can include or be coupled to various
video devices, such as monitors, projectors, televisions,
video output devices, or video input devices. Id. at col. 4
ll. 44–46. The endpoints “may comprise various ports for
coupling to one or more devices (e.g., audio devices, video
devices, etc.) and/or to one or more networks.” Id. at col. 4
ll. 47–49.
   Figure 3 of Kenoyer shows a participant location with
a multi-component video conferencing system:




Id. at Fig. 3. Kenoyer explains that a participant can use
the multi-component video conferencing system (300) to
communicate with other participants in a video confer-
ence. Id. at col. 6 ll. 1–4. The multi-component video
MICROSOFT CORPORATION   v. BISCOTTI, INC.                 11



conferencing system (300) includes the following compo-
nents: a camera (303) with a camera base (363) and lens
portion (375); a display (305); a keyboard (307); a codec
(309); speakers (311a and 311b) with speaker attach-
ments (371a and 371b); microphones (319); a network
connection (351); a computer system (355); a remote
control (361); and a remote sensor (365). Id. at col. 6 l. 4–
col. 8 l. 49. A participant can use the camera to capture
video, the microphone to capture audio while using the
display to provide video from a local or remote conference
participant, and the speakers to produce audio from
remote conference participants. Id. at col. 6 ll. 4–9.
   Figure 5 of Kenoyer shows a side view of an embodi-
ment of a codec:
12                  MICROSOFT CORPORATION     v. BISCOTTI, INC.



Id. at Fig. 5. Kenoyer explains that the codec can include
multiple ports on one or more sides of the codec. Id. at
col. 8 ll. 57–60. As shown in Figure 5, the codec can have
ports for a camera, a microphone, a speaker, video input,
video output, and an IP connector. Id. at col. 8 l. 66–col. 9
l. 17.
     Aside from Figure 5, Kenoyer includes other teachings
regarding the codec. It states that “a codec (which may
mean short [sic] for ‘compressor/decompressor’) may
comprise any system and/or method for encoding and/or
decoding (e.g., compressing and decompressing) data (e.g.,
audio and/or video data).” Id. at col. 4 l. 67–col. 5 l. 4. In
different embodiments, the codec “may be implemented in
software, hardware, or a combination of both.” Id. at
col. 5 ll. 9–10. The codec can be incorporated into other
components, such as a camera base or a set-top box. Id.
at col. 1 ll. 56–63. The codec also can be separated out to
“an independent housing that is coupled to the set-top
box,” which allows the codec to “act as a pass-through for
the regular programming/games when a conference is not
being held” or to “display at least a portion of the pro-
gramming/games along with video for the videoconfer-
ence.” Id. at col. 10 ll. 25–30.
    Figure 22 of Kenoyer shows a method of video confer-
encing through the multi-component video conferencing
system:
MICROSOFT CORPORATION   v. BISCOTTI, INC.              13




Id. at Fig. 22. Kenoyer’s description of Figure 22 notes
that “in various embodiments of the methods described
below, one or more of the elements described may be
performed concurrently, in a different order than shown,
or may be omitted entirely. Other additional elements
may also be performed as desired.” Id. at col. 15 ll. 2–7.
Kenoyer then writes out the steps shown in Figure 22. Id.
at col. 15 ll. 8–20.
14                  MICROSOFT CORPORATION    v. BISCOTTI, INC.



     After writing out the steps shown in Figure 22, Ke-
noyer states, “[e]mbodiments of a subset or all (and por-
tions or all) of the above may be implemented by program
instructions stored in a memory medium or carrier medi-
um and executed by a processor.” Id. at col. 15 ll. 21–24.
Kenoyer begins the next paragraph by stating, “[i]n some
embodiments, a computer system at a respective partici-
pant location may include a memory medium(s) on which
one or more computer programs or software components
according to one embodiment of the present invention
may be stored.” Id. at col. 15 ll. 46–50. The next para-
graph states, “[f]urther modifications and alternative
embodiments of various aspects of the invention may be
apparent to those skilled in the art in view of this descrip-
tion.”    Id. at col. 15 ll. 55–57.      It also states that
“[e]lements and materials may be substituted for those
illustrated and described herein, parts and processes may
be reversed, and certain features of the invention may be
utilized independently, all as would be apparent to one
skilled in the art after having the benefit of this descrip-
tion of the invention.” Id. at col. 15 ll. 62–67.
                  C. Procedural History
    In November 2013, Biscotti, Inc. (“Biscotti”) sued Mi-
crosoft in the U.S. District Court for the Eastern District
of Texas alleging that Microsoft infringed the ’182 patent.
Microsoft filed three separate IPRs in September 2014
challenging certain claims of the ’182 patent on anticipa-
tion and obviousness grounds. As relevant here, the
Board instituted review of claims 6 and 69 on anticipation
grounds, and of claims that depend from claims 6 and 69
on anticipation and obviousness grounds. The first two
IPRs, IPR2014-01457 (“57 IPR”) and IPR2014-01458 (“58
IPR”), focused on independent claim 6 and claims that
depend from claim 6. The third IPR, IPR2014-01459 (“59
IPR”), focused on independent claim 69 and claims that
depend from claim 69. In each IPR, the Board ultimately
found that Microsoft failed to prove by a preponderance of
MICROSOFT CORPORATION   v. BISCOTTI, INC.                15



the evidence that Kenoyer anticipated the challenged
claims or rendered those claims obvious.
                      1. The 57 IPR
     The Board began its analysis in the 57 IPR by discuss-
ing Microsoft’s assertion that Kenoyer anticipated claim 6
of the ’182 patent. 57 IPR, 2016 Pat. App. LEXIS 7571, at
*14–19. In support of its argument, Microsoft asserted
that the “storage medium” limitation of claim 6 was
disclosed by the following language from Kenoyer’s speci-
fication: “[e]mbodiments of a subset or all (and portions or
all) of the above may be implemented by program instruc-
tions stored in a memory medium or carrier medium and
executed by a processor.” Id. at *18–19 (citing Kenoyer,
col. 15 ll. 21–24). Microsoft’s expert, Dr. Houh, testified
that this language “describes using computer programs to
implement the codec and other functionality described in
that patent.” Id. at *19 (citing J.A. 2288 ¶ 100). Regard-
ing the specific “instructions” sub-limitations, Microsoft
and its expert argued that the specification, at various
places, disclosed the functions described by the instruc-
tions. Id.
     Biscotti contended that the language cited by Mi-
crosoft referred only to the description of Figure 22, which
immediately preceded the language on which Microsoft
relied, rather than all of the disclosures made throughout
the Kenoyer specification. See id. at *19–20. Biscotti and
its expert, Dr. Bovik, argued that the language could not
apply to all prior disclosures in the specification because
the specification discussed certain components, such as
cooling fans and handles to carry equipment, that could
not have been implemented in a storage medium. Id. at
*21. Biscotti argued that the more natural interpretation
of the language was that it applied only to the discussion
of Figure 22. Id. at *20. Biscotti asserted that the lan-
guage’s application was further supported by another
portion of the description of Figure 22, which referred to
16                  MICROSOFT CORPORATION   v. BISCOTTI, INC.



the various “embodiments of the methods described
below.” Id. (quoting Kenoyer, col. 15 ll. 3–4) (emphasis
added). This language applied to the textual description
of the steps laid out in Figure 22, and Biscotti argued that
the similar language relied upon by Microsoft—which
stated “[e]mbodiments of a subset or all (and portions or
all) of the above,” Kenoyer, col. 15 ll. 21–22 (emphasis
added)—naturally applied to the description of Figure 22
as well. 57 IPR, 2016 Pat. App. LEXIS 7571, at *20.
    The Board found that Microsoft failed to prove that
Kenoyer’s disclosure anticipated the “storage medium”
and “instructions” limitations of claim 6 of the ’182 pa-
tent. Id. at *24–25. The Board noted that Microsoft’s
argument regarding the “storage medium” and “instruc-
tions” limitations relied on an interpretation of the dis-
puted language of column 15 “referring to and tying
together a number of disclosures in various portions
throughout Kenoyer regarding functions that may be
performed in various embodiments.” Id. at *24 (citing
J.A. 176–79). The Board found that “Kenoyer’s program-
instructions sentence does not make sense as a disclosure
blanketing all of the preceding 34 pages,” and that the
sentence “does not refer back specifically to the various
other disclosures cited by [Microsoft].” Id. at *26. In-
stead, the Board found that Biscotti’s argument and
evidence regarding the meaning of the sentence was “at
least as persuasive as [Microsoft’s] argument and evi-
dence” such that Microsoft had failed to meet its burden of
proof. Id. at *27.
     The Board further noted that it “makes sense that a
videoconferencing method would lend itself to implemen-
tation with program instructions,” and it “makes sense
that the program-instructions sentence would refer specif-
ically to the videoconferencing method disclosed” in the
discussion of Figure 22. Id. at *27. The Board therefore
“agree[d] with [Biscotti]” that Kenoyer’s reference to
“embodiments of the methods described below” and
MICROSOFT CORPORATION   v. BISCOTTI, INC.                17



“[e]mbodiments of a subset or all (and portions or all) of
the above” both refer to the description of Figure 22. Id.
at *27–28. The Board accordingly found that Microsoft
had not “demonstrated by a preponderance of the evi-
dence that Kenoyer’s program-instructions sentence and
various other cited portions disclose the claimed ‘storage
medium’ with its four specific ‘instructions for,’ or that a
person of ordinary skill in the art would ‘at once envisage’
a storage medium with the specific instructions claimed.”
Id. at *28–29.
    The Board explained that Kenoyer’s alleged disclo-
sures of a storage medium with instructions in accordance
with the limitations of claim 6 “are unrelated to each
other in [the] disclosure.” Id. at *29. The Board com-
pared this to a disclosure that amounted to “multiple,
distinct teachings that the artisan might somehow com-
bine to achieve the claimed invention,” which is insuffi-
cient to anticipate. Id. at *29–30 (citing Net MoneyIN Inc.
v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008)
(internal quotation marks omitted)). It also found that
Microsoft failed to provide “persuasive evidence that the
disclosure would be understood by one of ordinary skill in
the art to mean that the storage medium with program
instructions and the functions performed in the various
embodiments are used together in Kenoyer.” Id. at *30.
The Board therefore found that Kenoyer did not antici-
pate claim 6 of the ’182 patent. Id.
    Because claims 24–26, 28, 29, 31, 37, and 41 all de-
pended on claim 6, the Board found that Microsoft failed
to prove by a preponderance of the evidence that Kenoyer
anticipated the claims. Id. at *32–33.
    Turning to the obviousness arguments for claims 36
and 37, the Board found that Microsoft failed to prove
obviousness over Kenoyer and other references. Microsoft
asserted that Kenoyer discloses the “storage medium” and
“instructions” limitations, but the Board concluded that
18                  MICROSOFT CORPORATION    v. BISCOTTI, INC.



Microsoft failed to prove that Kenoyer taught the limita-
tions, as discussed in the anticipation analysis. Id. at
*33–34. Microsoft did not separately address whether
Kenoyer rendered the limitations of claim 6 obvious based
on the teachings located in different parts of the specifica-
tion, so Microsoft failed to prove obviousness for claims 36
and 37. Id. at *34.
    One of the judges on the Board dissented from the
Board’s conclusions. The dissent argued that the majority
erred when applying the law regarding § 102 to the teach-
ings of Kenoyer because it failed to “take into account not
only specific teachings of the reference but also the infer-
ences which one skilled in the art would reasonably be
expected to draw therefrom.” Id. at *39 (Cherry, A.P.J.,
dissenting) (citing In re Preda, 401 F.2d 825, 826 (CCPA
1968)). “Even assuming that Kenoyer did not disclose
expressly the use of program instructions, I am persuaded
by the evidence presented that a person of ordinary skill
would recognize its description as disclosing the use of
program instructions (software) to enable the perfor-
mance of these functions.” Id. at *40 (citing J.A. 8422–23
¶ 57; In re Alappat, 33 F.3d 1526, 1583 (Fed. Cir. 1994)
(en banc) (Rader, J., concurring)). The dissent also as-
serted that the use of “embodiments” throughout Kenoy-
er’s specification suggested that the disputed language
was not as limited as Biscotti had argued. Id. at *41–42.
    The majority responded to the dissent by stating that
Microsoft did not make the arguments relied upon by the
dissent and that, even were they to agree with the dis-
sent’s reasoning, Microsoft had not met its burden of
proving anticipation. Id. at *31–32.
                      2. The 58 IPR
    Because the Board primarily considered claim 6 in the
58 IPR, as it did in the 57 IPR, the final written decision
in the 58 IPR is very similar to the decision in the 57 IPR.
Based on the same reasoning and underlying findings, the
MICROSOFT CORPORATION   v. BISCOTTI, INC.                19



Board found that Kenoyer did not anticipate claim 6 of
the ’182 patent. 58 IPR, 2016 Pat. App. LEXIS 7572, at
*25–33. The Board similarly found that Microsoft failed
to prove Kenoyer anticipated the dependent claims. Id. at
*33. The same administrative judge dissented from the
Board’s decision in the 58 IPR, and the dissent, like the
majority, is similar to the dissent issued in the 57 IPR.
     In addressing obviousness, the Board again performed
a similar analysis to that performed in the final written
decision for the 57 IPR. The Board found that Microsoft
failed to prove that Kenoyer taught the “storage medium”
and “instructions” limitations of claim 6 and failed to
provide additional argument as to how Kenoyer might
render the limitation obvious when the anticipation
challenge failed, so Microsoft failed to meet its burden of
providing obviousness for these dependent claims. Id. at
*33–35.
                      3. The 59 IPR
    The Board began its analysis in the 59 IPR by discuss-
ing Microsoft’s assertion that Kenoyer anticipated claim
69 of the ’182 patent. Microsoft argued that Kenoyer
disclosed receiving audio and video from the set-top box
using an audiovisual input interface. 59 IPR, 2016 Pat.
App. LEXIS 7573, at *17–18. Microsoft provided two
statements to demonstrate disclosure: (1) “[t]he codec’s
audio and video processing may be incorporated in the
set-top box and/or may be distributed (e.g., to other devic-
es through a cable coupling the devices to the set-top
box)”; and (2) “[t]he codec may also be in an independent
housing that is coupled to the set-top box 705. The codec
may act as a pass-through for the regular program-
ming/games when a conference is not being held” (the
“pass-through clause”). Id. The Board found, however,
that Kenoyer does not expressly disclose an interface in
either statement. Id. at *18. The Board further found
that Microsoft did not explain any basis for finding that a
20                 MICROSOFT CORPORATION   v. BISCOTTI, INC.



person of ordinary skill in the art (“POSA”) would under-
stand the two statements as disclosing an “interface.” Id.
at *18–19. The Board noted that the statements could
inherently disclose the claimed interface, but Microsoft
failed to provide, as inherency requires, any evidence why
a POSA would understand the statements as necessarily
disclosing the claimed interface. Id. at *19.
     Rather than rely on inherency, Microsoft asserted
that Kenoyer’s pass-through clause and the interface in
Figure 5 provided adequate disclosure. Id. at *19–20.
Microsoft argued that the pass-through clause disclosed
receiving audio and video, and Figure 5 disclosed an
audiovisual input interface on which the audio and video
are actually received. Id. Dr. Houh provided that a
POSA would “consider the import of Kenoyer’s disclosure
of connecting the set-top box to the codec together with
Kenoyer’s disclosure a codec [sic] with audio and video
input interfaces.” Id. at *21 (emphasis omitted). Dr.
Houh further provided that “‘such persons would have
interpreted Kenoyer’s disclosure of a codec separate from
and coupled to a set-top box as meaning that the set-top
box would be coupled to the codec using the interfaces
that Kenoyer discloses are included in the codec’ because
‘[s]uch persons would understand that each of the codec’s
video inputs described by Kenoyer was capable of receiv-
ing video input from a set-top box.’” Id. (alteration in
original).
    Biscotti countered that the codec on which Microsoft
relied did not have an input interface to receive audio or
video from a set-top box; instead, it received video input
from a computer. Id. at *21–22. Biscotti explained that
Figure 5 shows a codec (309) connected to a computer, not
a set-top box. Id. at *22.
    Biscotti and Dr. Bovik also asserted that Kenoyer’s
Microphone In (513), Alternate In (515), VGA In (503), or
Alt Video In (507) do not indicate that they would be used
MICROSOFT CORPORATION   v. BISCOTTI, INC.                21



to connect to a set-top box. Id. at *22–23. Dr. Bovik
testified that only Kenoyer’s Microphone In (513) and
Alternate In (515) could potentially be an input interface
to receive audio from the set-top box, but neither was
described in Kenoyer as being such an interface. Id.
Regarding Microphone In (513), Dr. Bovik testified that “a
microphone-in connection is not the type of connection one
of ordinary skill would consider to be an input interface to
receive audio input from the set-top box; indeed, by its
very name, it would likely receive input audio from a
microphone.” Id. at *23. Lastly, Dr. Bovik testified that
Kenoyer disclosed Alternate In (515) receiving signals
from a camera and a microphone array, not audio from a
set-top box. Id.
     The Board found that Microsoft had not shown by a
preponderance of the evidence that Kenoyer disclosed all
aspects of the claim limitation, primarily because Mi-
crosoft had combined separate embodiments within
Kenoyer to account for the limitations of the claim, which
the Board considered an improper basis for anticipation.
Id. at *26. The Board noted that Kenoyer discloses two
distinct embodiments: Figure 5 shows an embodiment of a
codec, and Figures 7a and 7b show an embodiment of a
multi-component video conferencing system with codec
functionality incorporated in a set-top box. Id. at *26–27.
The Board also explained that the pass-through discus-
sion was provided in connection with the embodiment of
Figures 7a and 7b, not the embodiment of Figure 5. Id. at
*27. Consequently, the Board found Dr. Houh’s testimony
that a POSA would treat all the different teachings to-
gether contradicted Kenoyer’s disclosure that these were
separate embodiments and was entitled to little weight.
Id. (citing Network Commerce, Inc. v. Microsoft Corp., 422
F.3d 1353, 1361 (Fed. Cir. 2005) (“[E]xpert testimony at
odds with the intrinsic evidence must be disregarded.”)).
   Additionally, the Board found Microsoft’s argument
unpersuasive regarding Microphone In (513), Alternate In
22                  MICROSOFT CORPORATION    v. BISCOTTI, INC.



(515), VGA In (503), or Alt Video In (507). Id. at *28–29.
The Board noted that Kenoyer’s description of the embod-
iment illustrated in Figures 7a and 7b of a “multi-
component videoconferencing system” (“MCVCS”) with
codec functionality incorporated in a set top box, including
the pass-through passage, did not contain any specific
reference to Microphone In (513), Alternate In (515), VGA
In (503), or Alt Video In (507). Id. Thus, the Board found
unpersuasive Dr. Houh’s testimony that a POSA would
understand such inputs to receive the regular program-
ming/games because those inputs are capable of receiving
video input from a set-top box. Id. The Board found it
even less persuasive because Biscotti’s arguments and
evidence cast “substantial doubt” regarding whether a
POSA would consider the inputs appropriate for receiving
video or audio from a set-top box, and Dr. Houh cited no
evidence to support his assertion. Id.
    The Board also found that, even if it were to accept
that a POSA would understand that Microphone In (513),
Alternate In (515), VGA In (503), or Alt Video In (507) are
capable of receiving regular programming from a set-top
box, “the mere possibility of combining the disclosed
embodiments in the specific manner suggested by Peti-
tioner and Dr. Houh does not persuade us that a person of
ordinary skill in the art would have understood Kenoyer
as disclosing combining the disclosed embodiments in the
specific manner suggested by Petitioner and Dr. Houh.”
Id. at *30. The Board found it particularly unpersuasive
that Kenoyer did not link the separate embodiments. Id.
at *30–31 (citing Lindemann Maschinenfabrik GMBH v.
Am. Hoist & Derrick Co., 730 F.2d 1452, 1458, 1459 (Fed.
Cir. 1984), for the proposition that requiring the prior art
elements themselves to be “arranged as in the claim”
means that claims cannot be “treated . . . as mere catalogs
of separate parts, in disregard of the part-to-part relation-
ships set forth in the claims and that give the claims their
meaning”). The Board thus concluded that Microsoft had
MICROSOFT CORPORATION   v. BISCOTTI, INC.               23



failed to demonstrate by a preponderance of the evidence
that Kenoyer anticipated claim 69. Id. at *31.
    The Board noted that, because each of claims 70, 71,
and 74 depends from independent claim 69, claims 70, 71,
and 74 included claim 69’s “receiving” limitation. Id. at
*33. The Board found that, when addressing claims 70,
71, and 74, Microsoft did not overcome the shortcomings
in its assertion that Kenoyer disclosed the “receiving”
limitation of claim 69. Id. The Board therefore found
that Microsoft had not demonstrated by a preponderance
of the evidence that Kenoyer anticipated claims 70, 71,
and 74. Id. There was no dissent from the Board’s find-
ings in this IPR.
                     II. DISCUSSION
                 A. Standard of Review
                     1. Anticipation
     Microsoft’s briefing challenges our standard of review
as to anticipation. According to Microsoft, the Board’s
“conclusion” on anticipation was not a finding of fact but
instead a conclusion based on “construing a written
instrument,” which is a legal task afforded no deference.
Appellant’s Br. 42. Microsoft also asserts that the prior
art reference is a patent, and the interpretation of a
patent’s intrinsic evidence, such as the interpretation of
the specification here, is reviewed without deference. Id.
(citing Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct.
831, 841 (2015)). Microsoft then claims that the Board
did not make “any specific findings of its own” and instead
“agreed with Biscotti that it made more sense to read
Kenoyer’s program instructions sentence restrictively, to
apply only to the particular method described in Figure
22.” Id. at 43.
    Microsoft confirmed this view in its reply brief by
maintaining that the Board’s anticipation decisions
“turned on how to read the Kenoyer patent” and involved
24                  MICROSOFT CORPORATION     v. BISCOTTI, INC.



“no credibility findings.” Appellant’s Reply Br. 9. Mi-
crosoft claims that the perspective of a POSA in the
context of this case is the same perspective at issue in
claim construction, and that which would literally in-
fringe if later, anticipates if earlier. Id. at 10 (citing
Upsher-Smith Labs., Inc. v. Pamlab, L.L.C., 412 F.3d
1319, 1322 (Fed. Cir. 2005)). Microsoft contends that the
inquiries therefore are mirror images because they both
depend on how a POSA would read Kenoyer’s intrinsic
evidence. Id. Based on this reasoning, Microsoft claims
that there is “no persuasive reason that the deference
afforded in the two contexts should be polar opposites.”
Id.
    Despite these assertions, Microsoft stated at oral ar-
gument that it was not challenging our standard of review
on anticipation. Instead, Microsoft acknowledged that
anticipation is a factual question that this court reviews
for substantial evidence. See Oral Arg. at 2:49–4:05,
http://oralarg
uments.cafc.uscourts.gov/default.aspx?fl=2016-2080.mp3
(“We completely recognize that anticipation is a question
of fact [subject to] substantial evidence review. . . . If we
gave the impression that we were saying generally you
shouldn’t treat anticipation as a question of fact, . . . that
certainly wasn’t what we were trying to convey.”).
    Although Microsoft retreated from challenging our
standard of review, we reiterate that anticipation is a
question of fact subject to substantial evidence review.
Indeed, case law from the Supreme Court and this court
has stated for decades that anticipation is a factual ques-
tion. See, e.g., Busch v. Jones, 184 U.S. 598, 604 (1902)
(“Anticipation is a question of fact[.]”); Reckendorfer v.
Faber, 92 U.S. 347, 352 (1876) (“The defence of want of
novelty is set up every day in the courts, and is deter-
mined by the court or the jury as a question of fact upon
the evidence adduced[.]”); Kennametal, Inc. v. Ingersoll
Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015)
MICROSOFT CORPORATION    v. BISCOTTI, INC.                 25



(“Anticipation under 35 U.S.C. § 102 is a question of
fact[.] . . . We review the Board’s factual findings for
substantial evidence . . . .”); In re Gleave, 560 F.3d 1331,
1334–35 (Fed. Cir. 2009) (“After all, anticipation is a
question of fact, including whether an element is inherent
in the prior art.”).
    We therefore consider whether the Board’s findings on
anticipation in this case are supported by substantial
evidence.
                  2. Claim Construction
    The Court reviews de novo the “ultimate construction
of [a] claim,” as well as any claim construction relying
only on intrinsic evidence. Teva Pharm. USA, Inc. v.
Sandoz, Inc., 135 S. Ct. 831, 841 (2015). Subsidiary
factual findings based on extrinsic evidence, if any, are
reviewed for substantial evidence. PPC Broadband, Inc.
v. Corning Optical Commc’ns RF, LLC, 815 F.3d 747, 751
(Fed. Cir. 2016). Unexpired claims subject to IPR are to
be given their “broadest reasonable construction.” Cuozzo
Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2136 (2016).
          B. The Board’s Anticipation Findings
       1. The Legal Standard Applied by the Board
    As relevant here, a patent is invalid as anticipated if
“the invention was described in” a patent or published
application “before the invention by” the patentee. 35
U.S.C. § 102(e). In order to anticipate the claimed inven-
tion, a prior art reference must “disclose all elements of
the claim within the four corners of the document,” and it
must “disclose those elements ‘arranged as in the claim.’”
Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369
(Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co.,
722 F.2d 1542, 1548 (Fed. Cir. 1983)). “However, a refer-
ence can anticipate a claim even if it ‘d[oes] not expressly
spell out’ all the limitations arranged or combined as in
the claim, if a person of skill in the art, reading the refer-
26                 MICROSOFT CORPORATION   v. BISCOTTI, INC.



ence, would ‘at once envisage’ the claimed arrangement or
combination.” Kennametal, 780 F.3d at 1381 (alteration
in original) (quoting In re Petering, 301 F.2d 676, 681
(CCPA 1962)); see also Blue Calypso, LLC v. Groupon,
Inc., 815 F.3d 1331, 1344 (Fed. Cir. 2016) (“[A] reference
may still anticipate if that reference teaches that the
disclosed components or functionalities may be combined
and one of skill in the art would be able to implement the
combination.” (citing Kennametal, 780 F.3d at 1383)).
     Microsoft argues that the Board applied an “unduly
narrow anticipation standard” in its final written deci-
sion. Appellant’s Br. 32. Microsoft asserts that a prior
art reference must be viewed in its “totality” for what it
describes, id. at 33 (citing In re Donohue, 632 F.2d 123,
126 (CCPA 1980); In re Schaumann, 572 F.2d 312, 317
(CCPA 1978)), and does not have to disclose anything
more than is described in the challenged invention, id.
(citing Iovate Health Scis., Inc. v. Bio-Engineered Supple-
ments & Nutrition, Inc., 586 F.3d 1376, 1382 (Fed. Cir.
2009)). Microsoft particularly relies on our decisions in
Kennametal and Blue Calypso to argue that a prior art
reference does not need to disclose all the limitations
arranged or combined as in the claim in order to antici-
pate if a POSA “would at once envisage” the claimed
arrangement. Id. at 33–34; see Kennametal, 780 F.3d at
1381; Blue Calypso, 815 F.3d at 1344.
     Contrary to Microsoft’s contentions, however, Biscotti
correctly argues that the Board set forth the proper
anticipation standard in its final written decisions. The
Board noted that a prior art reference must provide every
element of the claimed invention arranged as in the claim
in order to anticipate. E.g., 57 IPR, 2016 Pat. App. LEXIS
7571, at *23–24 (citing Karsten Mfg. Corp. v. Cleveland
Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001); In re Bond,
910 F.2d 831, 832 (Fed. Cir. 1990)). But the Board also
stated that a claim does not need to “expressly spell out”
all limitations combined as in the claim if a POSA would
MICROSOFT CORPORATION     v. BISCOTTI, INC.                  27



“at once envisage” the arrangement or combination. Id. at
*24 (quoting Kennametal, 780 F.3d at 1381 (internal
quotation marks omitted)). The Board then correctly
stated that anticipation is not proven by “multiple, dis-
tinct teachings that the artisan might somehow combine
to achieve the claimed invention.” Id. at *29–30 (quoting
Net MoneyIN, 545 F.3d at 1371 (internal quotation marks
omitted)).
    Because the Board correctly articulated the anticipa-
tion standard, Microsoft appears to challenge only wheth-
er the Board applied the standard correctly or, instead,
set forth additional requirements not covered by a proper
interpretation of the anticipation standard. In its reply
brief, Microsoft claims that the Board misapplied the
anticipation standard by requiring that Kenoyer’s disclo-
sure match the ’182 patent’s limitations exactly. See
Appellant’s Reply Br. 5–6 (citing 57 IPR, 2016 Pat. App.
LEXIS 7571, at *26 (“[W]e find that the program-
instructions sentence does not refer back specifically to
the various other disclosures cited by Petitioner.”); id. at
*28 (“[Microsoft] has not demonstrated by a preponder-
ance of the evidence that the program-instructions sen-
tence relates to the entirety of Kenoyer’s disclosure so as
to tie together the functions that may be performed
throughout Kenoyer in order to anticipate a claim di-
rected to instructions encoded on a storage medium.”); id.
at *28–29 (“We find that [Microsoft] has not demonstrated
by a preponderance of the evidence that . . . a person of
ordinary skill in the art would ‘at once envisage’ a storage
medium with the specific instructions claimed.”); 59 IPR,
2016 Pat. App. LEXIS 7573, at *26 (“[Microsoft] has not
shown by a preponderance of the evidence that Kenoyer
discloses all aspects of the claim limitation . . . identically,
in the same relationship as in the claim.”)).
    Although the Board may have used wording such as
“identically” more liberally than it should have because
an anticipation analysis indisputably allows for some
28                  MICROSOFT CORPORATION    v. BISCOTTI, INC.



flexibility, the Board’s analysis did not suffer from a
misapplication of the anticipation standard. For example,
when considering claim 6, the Board analyzed and made
factual findings regarding the teachings of Kenoyer, the
application of the program-instructions sentence to other
embodiments outside of Figure 22, and whether a POSA
would “at once envisage” a storage medium with the
specific instructions claimed so as to anticipate the ’182
patent. See 57 IPR, 2016 Pat. App. LEXIS 7571, at *26–
30. The Board therefore did not require word-for-word
similarity or perfection, as Microsoft claims; to the contra-
ry, the Board explicitly considered whether a POSA would
“at once envisage” the combination of the claimed inven-
tion given the disconnected teachings in Kenoyer. The
Board therefore did not err in its application of the legal
standard for anticipation.
     The above analysis is not to say, however, that the
Board’s anticipation analysis itself was correct; we con-
sider below Microsoft’s arguments on that score. We find
initially, however, that the Board did apply the correct
legal standard to its anticipation analysis.
                        2. Claim 6
    In addressing claim 6, the primary dispute on appeal
is whether Kenoyer discloses a storage medium with four
types of program instructions. This dispute hinges on the
meaning of a sentence found near the end of the specifica-
tion in Kenoyer. That sentence reads: “[e]mbodiments of
a subset or all (and portions or all) of the above may be
implemented by program instructions stored in a memory
medium or carrier medium and executed by a processor.”
Kenoyer, col. 15 ll. 21–24. The parties dispute whether
this sentence refers only to Figure 22, which was de-
scribed in the lines immediately preceding this sentence,
or instead to all previous figures and embodiments of the
patent.
MICROSOFT CORPORATION   v. BISCOTTI, INC.                 29



    According to Microsoft, the sentence “means what it
says: some or all of what is disclosed above in the specifi-
cation, including ‘a subset or all (and portions or all)’ of
the ‘embodiments’ (plural), may be implemented through
program instructions (i.e., software). As the dissent
explained, these terms are ‘generic and broad.’” Appel-
lant’s Br. 40. Microsoft asserts that the context of the
sentence confirms that it applies broadly to all embodi-
ments of Kenoyer because it comes at the end of the
written description “along with other general paragraphs
that ‘indisputably apply to the entire disclosure, and are
written in similar broad generic terms.’” Id. (quoting 57
IPR, 2016 Pat. App. LEXIS 7571, at *42 (Cherry, A.P.J.,
dissenting)). Microsoft also argues that the teachings of
Kenoyer, such as its statement that, “[i]n various embod-
iments, codecs may be implemented in software, hard-
ware, or a combination of both,” Kenoyer, col. 5 ll. 8–10,
would allow a POSA to understand that Kenoyer dis-
closed the use of program instructions to enable the
performance of the relevant functions. Appellant’s Br.
41–42 (citing 57 IPR, 2016 Pat. App. LEXIS 7571, at *40
(Cherry, A.P.J., dissenting)). Microsoft contends that the
Board’s contrary findings are meritless and “not credible.”
Id. at 43–45.
     Biscotti responds by arguing that the sentence in the
specification does not link Kenoyer’s storage medium with
Kenoyer’s instructions. Biscotti notes that Kenoyer’s
specification is “imprecise” in its disclosure and that even
the Board’s dissenting panel member stated during the
oral hearing that the sentence “is poorly drafted.” Appel-
lee’s Br. 55 (quoting J.A. 1982, l. 4 (internal quotation
marks omitted)). Biscotti also points out that its expert
explained to the Board that the sentence in the specifica-
tion is best read, in context, as applying only to Figure 22,
rather than the entire patent. Id. (citing J.A. 9373–76;
J.A. 10144–46). Biscotti asserts that Microsoft’s reading
of the sentence would create “numerous questions and
30                  MICROSOFT CORPORATION    v. BISCOTTI, INC.



ambiguities” that are avoided by Biscotti’s reading, and
that, when questioned about these issues at his deposi-
tion, Microsoft’s expert responded, “one of ordinary skill
in the art could, like, read about what the function was
and make a decision.” Appellee’s Br. 58 (quoting J.A.
9875, ll. 11–22 (internal quotation marks omitted)).
According to Biscotti, this testimony from Microsoft’s
expert falls well below meeting Microsoft’s burden of proof
that a POSA would “at once envisage” the claimed inven-
tion if the POSA would have to “read about what the
function was and make a decision.” Id. Biscotti finally
argues that Kennametal and Blue Calypso do not help
Microsoft because Microsoft’s reading of Kenoyer would
result in “indiscriminate combinations of components and
functions that can be cobbled together from passages
found anywhere within Kenoyer’s lengthy specification,”
such that a POSA could not “at once envisage” all of the
combinations, including the combination patented in the
’182 patent. Id. at 58–60.
    On balance, the parties’ arguments presented the
Board with a close question. As Microsoft notes, the
specification’s three paragraphs between the summary of
each step in Figure 22 and claim 1 use broad language
that refers generally to “embodiments,” which might be
interpreted as referring to all embodiments of the patent.
See Kenoyer, col. 15 l. 21–col. 16 l. 2. The final paragraph
also states that “[f]urther modifications and alternative
embodiments of various aspects of the invention may be
apparent to those skilled in the art in view of this descrip-
tion.” Kenoyer, col. 15 ll. 55–57 (emphasis added). The
broad language of these three paragraphs without any
reference to Figure 22 might imply that these paragraphs
refer more generally to the embodiments throughout the
patent.
   But Biscotti’s reading also has merit. The first two
paragraphs after the paragraph expressly describing
Figure 22 use different wording—referring only to “em-
MICROSOFT CORPORATION   v. BISCOTTI, INC.                31



bodiments”—than the last paragraph in the specifica-
tion—referring to “embodiments” within the context of
“the invention.” One therefore can validly read the last
paragraph as referring more generally to the invention as
a whole, since the specification specifically refers to the
invention, while the previous two paragraphs refer only to
the description of Figure 22. See Kenoyer, col. 15 l. 21–
col. 16 l. 2.
    The first part of the description for Figure 22 also
states, “[i]t should be noted that in various embodiments
[(plural)] of the methods described below, one or more of
the elements described may be performed concurrently, in
a different order than shown, or may be omitted entirely.”
Id. col. 15 ll. 2–6 (emphasis added). This leads into a
description of the block diagram of the method in Figure
22. Id. col. 15 ll. 8–20. The very next sentence after the
description of the block diagram states that
“[e]mbodiments [(plural)] of a subset or all (and portions
or all) of the above may be implemented by program
instructions stored in a memory medium or carrier medi-
um and executed by a processor.” Id. col. 15 ll. 21–24
(emphasis added). In context, the sentences both could
refer to the description of the block diagram of Figure 22
to provide variations for performing the method, and both
refer to embodiments thereof.
    Although Microsoft’s arguments are not unreasonable,
we do not review this question de novo; anticipation is a
question of fact, and we review the Board’s findings for
substantial evidence. Kennametal, 780 F.3d at 1381. As
discussed above, the material in the disclosure lends itself
to more than one reasonable interpretation. The Board
explained that both sides proffered expert testimony
regarding how a POSA would view these disclosures, and
the Board considered and analyzed the expert testimony
from each. Based on the evidence before it, the Board
found that “Kenoyer’s program-instructions sentence does
not make sense as a disclosure blanketing all of the
32                  MICROSOFT CORPORATION   v. BISCOTTI, INC.



preceding 34 pages” and that the sentence “does not refer
back specifically to the various other disclosures cited by
[Microsoft].” 57 IPR, 2016 Pat. App. LEXIS 7571, at *26.
Instead, the Board found that Biscotti’s argument and
evidence regarding the meaning of the sentence was “at
least as persuasive as [Microsoft’s] argument and evi-
dence” such that Microsoft had failed to meet its burden of
proof. Id. at *27.
    The Board further explained that it “makes sense that
a videoconferencing method would lend itself to imple-
mentation with program instructions,” and it “makes
sense that the program-instructions sentence would refer
specifically to the videoconferencing method disclosed” in
the discussion of Figure 22. Id. The Board therefore
“agree[d] with [Biscotti]” that Kenoyer’s reference to
“embodiments of the methods described below” and
“[e]mbodiments of a subset or all (and portions or all) of
the above” both refer to the description of Figure 22. Id.
at *27–28. The Board accordingly found that Microsoft
had “not demonstrated by a preponderance of the evi-
dence that Kenoyer’s program-instructions sentence and
various other cited portions disclose the claimed ‘storage
medium’ with its four specific ‘instructions for,’ or that a
person of ordinary skill in the art would ‘at once envisage’
a storage medium with the specific instructions claimed.”
Id. at *28–29.
    The Board found further support for its conclusion in
the fact that Kenoyer’s alleged disclosures of a storage
medium with instructions in accordance with the limita-
tions of claim 6 “are unrelated to each other in [the]
disclosure.” Id. at *29. The disclosure therefore, at most,
amounted to “distinct teachings that the artisan might
somehow combine to achieve the claimed invention.” Id.
at *29–30 (quoting Net MoneyIN, 545 F.3d at 1369 (inter-
nal quotation marks omitted)). The Board also found that
Microsoft had failed to provide “persuasive evidence that
the disclosure would be understood by one of ordinary
MICROSOFT CORPORATION   v. BISCOTTI, INC.                 33



skill in the art to mean that the storage medium with
program instructions and the functions performed in the
various embodiments are used together in Kenoyer.” Id.
at *30. The Board therefore found that Kenoyer did not
anticipate claim 6 of the ’182 patent. Id.
    As Biscotti correctly argued, “[h]owever ‘close’ certain
factual questions may have been before the Board, the
Board was entitled, at the very least, to credit Biscotti’s
evidence and its expert’s view of Kenoyer’s disclosure over
Microsoft’s, and to find that Microsoft failed to meet its
burden of proof.” Appellee’s Br. 51. The case, therefore,
“cannot be a close case on appeal under the proper stand-
ard of review.” Id. “Whatever arguable merit there may
be to Microsoft’s reading of Kenoyer, it was certainly not
compelled here.” Id.
    Biscotti’s argument properly aligns with our role as
an appellate court that reviews the legal and factual
determinations of a trial court or, in this instance, the
Board. See, e.g., Key Pharm. v. Hercon Labs. Corp., 161
F.3d 709, 715 (Fed. Cir. 1998) (noting that “the function of
an appellate court is to correct errors committed at trial”).
We do not duplicate the efforts of a trial court or the
Board. We instead provide proper deference to the fact-
finder below rather than reweigh factual determinations.
See, e.g., Anderson v. City of Bessemer City, 470 U.S. 564,
573–74 (1985) (“If the district court’s account of the evi-
dence is plausible in light of the record viewed in its
entirety, the court of appeals may not reverse it even
though convinced that had it been sitting as the trier of
fact, it would have weighed the evidence differently.”);
Lavender v. Kurn, 327 U.S. 645, 653 (1946) (“[T]he appel-
late court’s function is exhausted when that evidentiary
basis [to support a verdict] becomes apparent, it being
immaterial that the court might draw a contrary infer-
ence or feel that another conclusion is more reasonable.”).
34                  MICROSOFT CORPORATION   v. BISCOTTI, INC.



    Given the evidence before the Board and its underly-
ing factual findings, we conclude that the Board’s finding
that Kenoyer did not anticipate claim 6 is supported by
substantial evidence.
                       3. Claim 69
    The primary dispute between the parties regarding
claim 69 involves whether Kenoyer teaches the following
limitation: “receiving, on the audiovisual input interface,
a set-top box audiovisual stream from a set-top box, the
set-top box audiovisual stream comprising a set-top box
video stream and a set-top box audio stream.” ’182 pa-
tent, col. 38 ll. 1–4.
    Microsoft asserts that Kenoyer discloses this limita-
tion in its teaching about an external codec with audio
and video inputs coupled to and receiving audiovisual
signals from a television set-top box. It explains that
“Kenoyer introduces the codec as a device with functional-
ity to process audio and video signals, and Kenoyer uses
the term ‘codec’ that way consistently thereafter.” Appel-
lant’s Br. 46. Microsoft also argues that Kenoyer’s Figure
5 provides a detailed view of an audiovisual input inter-
face for an embodiment of external codec 309, id., and
that Kenoyer describes physical forms in which the codec
might appear, id. at 46–47. According to Microsoft, these
descriptions would allow a POSA to “reasonably under-
stand” and “at once envisage” the functionality of the
external codec and the arrangement of the set-top box
coupled to an external codec as being read together. Id. at
47–48. Microsoft asserts that this case is similar to our
decision in Blue Calypso because the prior art in this case
similarly contemplates the combination of disclosed
functionalities, and Kenoyer’s failure to explain word-for-
word that inputs on the external codec depicted in Figure
5 are also needed for and included on an external codec
that is coupled to a set-top box does not negate Microsoft’s
MICROSOFT CORPORATION   v. BISCOTTI, INC.                 35



argument because a POSA would at once envisage the
combined features. Id. at 48–49.
     According to Microsoft, the Board’s holding was based
on two reasons: (1) the Board thought Microsoft’s reading
improperly “combined separate embodiments to account
for the limitations of the claim” by putting together the
inputs from Figure 5 with the subsequent set-top box
disclosure of a pass-through external codec, id. at 49
(citing Kenoyer, Figure 5 and col. 10 ll. 25–30); and (2) the
Board could not find requisite inputs or disclosures in
Figures 7a and 7b, so Kenoyer could not anticipate, id. at
50 (citing 59 IPR, 2016 Pat. App. LEXIS 7573, at *27). As
to the first reason, Microsoft argues that it was allowed to
rely on Kenoyer’s description of audiovisual inputs in
connection with an external codec and then refer to an
external codec again without having to repeat the discus-
sion of the same audiovisual inputs. Id. at 49. As to the
second reason, Microsoft argues that it relied on the
description of the standalone codec coupled with the set-
top box for the codec functionality, so Figures 7a and 7b,
which show a codec incorporated into a set-top box, are
inapposite. Id. at 50.
    Biscotti characterizes Microsoft’s argument as (1) Ke-
noyer discloses a unitary concept of an external codec that
performs the receiving function, and (2) all references in
Kenoyer to a codec should be read together. Appellee’s
Br. 60. Biscotti argues that the Board correctly rejected
that argument because the codecs disclosed in Kenoyer on
which Microsoft relies “referred to distinct, largely incom-
patible embodiments.” Id. at 63. And Figures 3 and 5,
which do use the same reference to a codec, related to a
personal computer embodiment, as shown by Figure 3’s
appearance and by Figure 5’s inclusion of ports (e.g.,
“VGA In” and “Microphone In”), that ordinarily are not
used with set-top boxes. Id. Biscotti asserts that this
case is similar to Net MoneyIN, where we held that the
district court erred when it combined parts of separate
36                  MICROSOFT CORPORATION     v. BISCOTTI, INC.



protocols, which “invoke[d] the question of obviousness,
not anticipation.” 545 F.3d at 1371.
    Regarding Figures 7a and 7b, Biscotti notes that the
Board addressed these figures because “Microsoft’s peti-
tion referred explicitly to the codec of those figures in
connection with the first ‘receiving’ step.” Appellee’s Br.
63. The Board considered Microsoft’s expert testimony
regarding Figures 7a and 7b and the codec’s “pass-
through” function, and it found the argument and the
testimony unpersuasive. Id. at 64 (citing 59 IPR, 2016
Pat. App. LEXIS 7573, at *27). According to Biscotti,
Microsoft’s new argument that Figures 7a and 7b are
“inapposite” merely confirms the Board’s analysis.
    Finally, Biscotti asserts that Microsoft has changed
its argument on appeal from the argument that was
presented to the Board in Microsoft’s petition to institute
the IPRs. Id. Biscotti argues that Microsoft has waived
its new arguments by not presenting them to the Board.
Id.
     As an initial matter, Microsoft did not present to the
Board the full argument that it presents here on appeal.
In its petition to institute the IPR, the extent of its analy-
sis regarding the relevant limitation of claim 69 is as
follows:
     Kenoyer discloses receiving audio and video from
     the set top box using the interface described above
     [Figure 5]. “The codec may also be in an inde-
     pendent housing that is coupled to the set-top box
     705. The codec may act as a pass-through for the
     regular programming/games when a conference is
     not being held.” Kenoyer therefore shows [the
     limitation].
J.A. 306–07 (citations omitted). The citations provided by
Microsoft are the line numbers for the quote in Kenoyer
and paragraphs from Microsoft’s expert report that refer
MICROSOFT CORPORATION    v. BISCOTTI, INC.                   37



to the same quoted language within the context of Figures
7a and 7b. J.A. 2266–67, 2281–82.
     Microsoft’s argument, therefore, generally referred to
Figure 5 and then used the language in Kenoyer, col. 10
ll. 25–28, regarding the pass-through clause to support
the anticipation of claim 69. This bare-bones allegation
provided no information or argument as to how the inter-
face of Figure 5 allows for connection to a set-top box or
how a POSA would understand to use the codec described
in Figure 5 along with, as Microsoft describes it, the
figureless description of a codec that can be used in an
independent housing and coupled to the set-top box.
    Microsoft’s brief on appeal is far more detailed and
contains substantial new arguments regarding why it
believes Kenoyer anticipates this limitation of claim 69.
But, Microsoft needed to include those arguments in the
petition to institute. Specifically, a petition must include:
    The exhibit number of the supporting evidence re-
    lied upon to support the challenge and the rele-
    vance of the evidence to the challenge raised,
    including identifying specific portions of the evi-
    dence that support the challenge. The Board may
    exclude or give no weight to the evidence where a
    party has failed to state its relevance or to identify
    specific portions of the evidence that support the
    challenge.
37 C.F.R. § 42.104(b)(5) (emphasis added). And, the
general rule is that any argument not raised before the
Board is waived on appeal. See Redline Detection, LLC v.
Star Envirotech, Inc., 811 F.3d 435, 450 (Fed. Cir. 2015).
Microsoft not only failed to present these arguments in its
petition, it never sought permission to present them to
the Board during the course of the IPR.
   The Board found that Microsoft’s description of Ke-
noyer did not explain how the interface of Figure 5, with
38                 MICROSOFT CORPORATION   v. BISCOTTI, INC.



the Microphone In (513), Alternate In (515), VGA In (503),
and Alt Video In (507), refers to the codec described in
column 10, lines 25–30, acting as a pass-through while
coupled to a set-top box. 59 IPR, 2016 Pat. App. LEXIS
7573, at *27–28. The Board explained that, with no direct
link in Kenoyer to connect these descriptions of a codec,
Microsoft’s expert simply contended that a POSA “would
understand Kenoyer as disclosing using such inputs to
receive the regular programming/games because those
inputs are capable of receiving video input from a set-top
box.” Id. at *28. The Board found this contention unper-
suasive because Biscotti had introduced evidence that
“cast substantial doubt” regarding whether a POSA would
have considered the interface connections appropriate for
connecting with a set-top box. Id. at *28–29. Biscotti
introduced evidence that the interface of Figure 5 crossed
over with the description of Figure 3 (both are identified
with the same numeric identifier, (309)), which was a set-
up in which the codec was connected to a computer. J.A.
1053. Biscotti also argued that a POSA would under-
stand that neither of the inputs VGA In or Alt Video In
would be used with a set-top box because they are used
for connecting computers and monitors, not for the
transmission of a cable or satellite signal. J.A. 1053.
There also was no disclosure of an audio input interface
for the set-top box because the Microphone In would be
used for a microphone, and a POSA would understand the
Alternate In, which Kenoyer describes as input for a
camera or microphone array—not a set-top box—would
not be used for a set-top box. J.A. 1054. Microsoft,
meanwhile, provided no explanation in its petition as to
how the interface of Figure 5 would be compatible with a
set-top box and the codec described in Kenoyer, column 10
lines 25–28.
   The Board’s factual findings in favor of Biscotti are
supported by substantial evidence, and any supplemental
argument seeking to refute those findings on appeal has
MICROSOFT CORPORATION   v. BISCOTTI, INC.                 39



been waived. We therefore affirm the Board’s finding that
Microsoft failed to prove claim 69 is anticipated by Ke-
noyer.
     C. The Board’s “Construction” of “Set-Top Box”
     Microsoft argues that the Board did not use the
broadest reasonable interpretation of the term “set-top
box,” which Microsoft asserts is defined in the ’182 patent
as “any device that can provide video tuning, decryption
and/or decoding functionality, especially as that function-
ality relates to reception of broadcast, cable, and/or satel-
lite television signals.” Appellant’s Br. 51 (quoting ’182
patent, col. 9 ll. 23–26 (internal quotation marks omit-
ted)). Microsoft contends that this broad definition in-
cludes televisions and computers. Id. at 51–52. Because
the Board allegedly limited Kenoyer according to the
meaning of “set-top box” provided in Kenoyer rather than
applying the broader definition of “set-top box” from the
’182 patent to the teachings of Kenoyer, Microsoft argues
that the Board erred in its analysis of the scope of Kenoy-
er’s teachings. According to Microsoft, this error by the
Board was prejudicial to its anticipation case because
allowing a computer to be a “set-top box” would result in
the conclusion that Kenoyer’s description of Figures 3 and
5 anticipates claim 69. Id. at 52–53. Microsoft also
asserts that using the definition of “set-top box” from the
’182 patent would have changed the Board’s analysis
regarding claim 6 because the new definition of set-top
box would allow for the program-instructions sentence in
the specification to anticipate claim 6, even if the sentence
referred only to Figure 22. Id. at 53.
    Biscotti argues that Microsoft’s claim construction ar-
gument is “an inapt repackaging of its disagreement with
the Board’s factual findings on anticipation” and a mis-
characterization of the Board’s decisions. Appellee’s Br.
66. Biscotti argues that the Board’s decisions in all three
IPRs did not rely on any construction of any term, much
40                  MICROSOFT CORPORATION    v. BISCOTTI, INC.



less “set-top box.” Id. Biscotti notes that “set-top box”
does not appear at all in the storage medium and instruc-
tions limitations of claim 6, so any construction of “set-top
box” would have no impact on the Board’s decision for
claim 6. Id. at 67–68. Biscotti also contends that the
Board’s decision turned on “the interrelation between
different parts of Kenoyer’s disclosure—i.e., whether it
was proper to combine those parts for anticipation pur-
poses in the first place, as Microsoft urged.” Id. at 68.
Biscotti argues that the Board was unpersuaded that a
POSA would “at once envisage” the steps of claim 69 by
“combining scattered passages of Kenoyer in the manner
Microsoft and its expert urged.” Id. at 69.
    Microsoft’s argument that a computer could act as a
set-top box could be relevant to the analysis of claim 69,
especially given Biscotti’s argument that Microsoft failed
to prove a codec connected to a set-top box because the
interface of Figure 5 is shown in Figure 3 to connect to a
computer. Although Microsoft argues that a computer
might be able to have the functionality of a set-top box
under what it alleges is the patent’s definition of set-top
box, Microsoft fails to explain how a computer, especially
the computer in Kenoyer, would receive broadcast, cable,
or satellite television signals. Microsoft provides no
explanation as to how a POSA would understand the
computer in Kenoyer to be a set-top box with the special
functionality required by Microsoft’s definition. 1



     1  The dissent faults our conclusion that Microsoft
fails to explain how Kenoyer’s computer would receive
broadcast, cable, or satellite television signals. Dissent at
17. But, as described above, our conclusions were drawn
in the context of analyzing Microsoft’s argument that the
Board erred in its interpretation of “set-top box.” In
particular, Microsoft has not shown how the computer in
MICROSOFT CORPORATION   v. BISCOTTI, INC.                41



     Even if Microsoft had overcome that hurdle, the error
still would not be prejudicial because Microsoft waived
the arguments regarding claim 69 that relate to this
construction. In other words, the Board’s decision hinged
on factors that were not affected by an allegedly errone-
ous construction of “set-top box.” Although some of the
reasoning provided by the Board might be affected by use
of Microsoft’s construction of set-top box—like the Board’s
discussion of Figure 5 and Figure 3—there are other
bases for the Board’s decision that would not change and
which suffice to support its conclusions.
        D. Obviousness of the Dependent Claims
     According to Microsoft, the Board erred in its obvi-
ousness analysis for the same reasons it erred in its
anticipation analysis because the Board relied on the
same reading of Kenoyer without conducting a separate
obviousness analysis. As Biscotti points out, “the parties
do not dispute that if the Court affirms or vacates the
Board’s rulings regarding anticipation of claim 6, it
should do the same with respect to the Board’s rulings on
obviousness of claims 22, 36, 37, 42, 44, and 45.” Appel-
lee’s Br. 70.
    As described above, the Board’s findings as to claims 6
and 69 are supported by substantial evidence. Because
Microsoft does not argue separately that the Board erred
in its obviousness analysis, we also affirm the Board’s
obviousness holdings.




Kenoyer would qualify as a set-top box under its own
definition of that term. As described above, that failure is
fatal to Microsoft’s claim of error.
42                 MICROSOFT CORPORATION   v. BISCOTTI, INC.



                     III. CONCLUSION
    For the foregoing reasons, we find that the Board’s
decisions are supported by substantial evidence. We
therefore affirm the Board’s decision that Microsoft failed
to prove invalidity by a preponderance of the evidence in
each of the IPRs on appeal.
                      AFFIRMED
  United States Court of Appeals
      for the Federal Circuit
                 ______________________

            MICROSOFT CORPORATION,
                   Appellant

                            v.

                   BISCOTTI, INC.,
                        Appellee.
                 ______________________

            2016-2080, 2016-2082, 2016-2083
                ______________________

   Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in Nos.
IPR2014-01457, IPR2014-01458, IPR2014-01459.
                 ______________________
NEWMAN, Circuit Judge, dissenting.
    I respectfully dissent. The Kenoyer reference de-
scribes the same invention that is claimed in claims 6 and
69, the only claims of Biscotti’s ’182 patent that are re-
viewed by the court. These claims recite no new compo-
nents or functions or technology; they directly read on,
and are anticipated by, the prior art system described in
the Kenoyer reference.
    As I shall illustrate, every claim clause is shown in
Kenoyer. Every claim component was previously known,
and performs the same function in the same way in the
same combination. The claims at issue are “anticipated,”
under the most rigorous application of the law of anticipa-
tion.
2                   MICROSOFT CORPORATION   v. BISCOTTI, INC.



    The claims on appeal recite no distinction from the
Kenoyer videoconferencing system, as to any component
or function or arrangement. Microsoft states, without
contradiction from either Biscotti or the court:
    The ’182 patent neither describes nor claims any
    new components, software, programming steps, or
    anything else not found in existing systems. Nor
    does it describe or claim any arrangement or con-
    figuration of components or functionalities that
    reduces the size, complexity, or cost, or improves
    the quality, of existing videoconferencing systems.
Microsoft Br. 13. My colleagues on this panel search for
distinctions that are neither described nor claimed, con-
trary to the law of anticipation.
    Kenoyer teaches the same conferencing sys-
    tem as in the ’182 patent
    Claim 6 is the broadest claim for the ’182 patent’s con-
ferencing system, in which known audio and video com-
ponents provide inputs to a computer that receives and
stores and transmits the information to participants in
the conference. Kenoyer describes the same system, and
shows the same components combined in the same way.
As stated in Kennametal, Inc. v. Ingersoll Cutting Tool
Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015), a reference
anticipates a claim if it discloses all the claimed limita-
tions “arranged or combined in the same way as in the
claim,” quoting Wm. Wrigley Jr. Co. v. Cadbury Adams
USA LLC, 683 F.3d 1356, 1361 (Fed. Cir. 2012).
    The ’182 patent states that it achieves improved “reli-
ability,” but Biscotti does not dispute that any such im-
provement is due to known improvement in the known
audio and video components—for example, improved
cameras and microphones. No improvement by Biscotti is
described in the ’182 patent or included in the ’182 claims.
The ’182 claims are broadly stated, whereas the court’s
MICROSOFT CORPORATION   v. BISCOTTI, INC.                 3



analysis is directed to aspects that are not limitations to
the claims.
    Following is a clause-by-clause review of claim 6, the
only system claim discussed by the panel majority.
(bracketed numbers added):
6. [1] A video communication system, comprising:
   [2] a first video communication device, comprising:
   [3] a video input interface to receive video input
   from a set-top box;
   [4] an audio input interface to receive audio input
   from the set-top box;
   [5] a video output interface to provide video out-
   put to a video display device;
   [6] an audio output interface to provide audio out-
   put to an audio receiver;
   [7] a video capture device to capture video;
   [8] an audio capture device to capture audio;
   [9] a network interface;
   [10] at least one processor; and
   [11] a storage medium in communication with the
   at least one processor, the storage medium having
   encoded thereon a set of instructions executable
   by the at least one processor to control operation
   of the first video communication device, the set of
   instructions comprising:
   [i] instructions for controlling the video capture
   device to capture a captured video stream;
   [ii] instructions for controlling the audio capture
   device to capture a captured audio stream;
   [iii] instructions for encoding the captured video
   stream and the captured audio stream to produce
   a series of data packets; and
   [iv] instructions for transmitting the series of da-
   ta packets on the network interface for reception
   by a second video communication device.
   Claim clause [1]
4                   MICROSOFT CORPORATION     v. BISCOTTI, INC.



     Clause [1] is an introductory clause, and its statement
of “a video communication system” matches the Kenoyer
patent’s title of “Integrated Videoconferencing System.”
The ’182 patent recognizes that such systems were previ-
ously known, and criticizes current products as expensive
professional-grade systems, and error-prone systems
based on a personal computer with far from optimal call
quality. The ’182 patent criticizes the cost of video phones
and their small screens, and thus “fail[ure] to provide an
inclusive family video calling experience.” ’182 patent,
col. 1, l. 46–col. 2, l. 6.
    The Kenoyer reference was not cited in the PTO ex-
amination of the ’182 patent. Kenoyer describes the same
audiovideo conferencing system in the same terms as in
the ’182 patent:
    Videoconferencing may be used to allow two or
    more participants at remote locations to com-
    municate using both video and audio. Each par-
    ticipant location may include a videoconferencing
    system for video/audio communication with other
    participants. Each videoconferencing system may
    include a camera and microphone to collect video
    and audio from a first or local participant to send
    to another (remote) participant. . . . Each vide-
    oconferencing system may also be coupled to a
    computer system to allow additional functionality
    into the videoconference. . . .
Kenoyer, col. 1, ll. 25–36. This recitation itself anticipates
claim 6, for claim 6 is written in broad terms, and does
not limit these components and their functions. Figure 1
of Kenoyer is described as follows:
    Videoconferencing system 100 comprises a plural-
    ity of participant locations or endpoints. FIG. 1
    illustrates an exemplary embodiment of a vide-
    oconferencing system 100 which may include a
    network 101, endpoints 103A-103H (e.g., audio
MICROSOFT CORPORATION   v. BISCOTTI, INC.                 5



   and/or videoconferencing systems), gateways
   130A-130B, a service provider 108 (e.g., a mul-
   tipoint control unit (MCU)), a public switched tel-
   ephone network (PSTN) 120, conference units
   105A-105D, and plain old telephone system
   (POTS) telephones 106A-106B. Endpoints 103C
   and 103D-103H may be coupled to network 101
   via gateways 130A and 130B, respectively. . . .
Kenoyer, col. 3, l. 63–col. 4, l. 6. All of the elements of
claim 6 are in Kenoyer's Figure 1, performing the same
function and in the same breadth as in claim 6.




    The system depicted in the Kenoyer Figures and de-
scription anticipates claim 6, for the elements of claim 6
match the elements in the Kenoyer reference.
6                   MICROSOFT CORPORATION   v. BISCOTTI, INC.



    Claim clause [2]
    It is not disputed that Kenoyer shows what the ’182
patent calls a “first video communication device.” Kenoy-
er recites “various video devices” such as “monitors,
projectors, displays, televisions, video output devices,
video input devices, cameras, etc.,” col. 4, ll. 44–46, and
discusses the video function and known video devices that
perform this function. For example, Kenoyer states:
    In some embodiments, the participant location
    may include a camera 204 (e.g., an HD [high defi-
    nition] camera) for acquiring images (e.g., of par-
    ticipant 214) of the participant location. Other
    cameras are also contemplated. The participant
    location may also include a display 201 (e.g., an
    HDTV display). Images acquired by the camera
    204 may be displayed locally on the display 201
    and may also be encoded and transmitted to other
    participant locations in the videoconference.
Kenoyer, col. 5, ll. 36–43 (referring to Figure 2). Kenoyer
states that the video communication may be accompanied
by “various audio devices” such as “microphones, audio
input devices, speakers, audio output devices, telephones,
speaker telephones, etc.” Kenoyer, col. 4, ll. 41–44.
    The breadth of the Kenoyer disclosure is matched by
the breadth of disclosure in the ’182 patent, which states
that “a high-definition video camera is but one example”
of a “video capture device,” and examples of an “audio
capture device” are a “microphone or microphone array.”
’182 patent, col. 2, ll. 61–66.
     It is not disputed that the ’182 patent clauses [1] and
[2] recite no distinction from Kenoyer.
    Claim clauses [3] and [4]
   This pair of clauses includes the “set-top box,” a com-
ponent of both the Kenoyer and the ’182 systems. The
MICROSOFT CORPORATION      v. BISCOTTI, INC.                7



’182 patent defines the set-top box as “any device that can
provide video tuning, decryption and/or decoding func-
tionality, especially as that functionality relates to recep-
tion of broadcast, cable, and/or satellite television
signals.” ’182 patent, col. 9, ll. 22–26.
    Kenoyer describes the set-top box as “e.g., a cable box,
satellite box, or gaming module,” col. 1, ll. 62–63, and
states that:
    The codec’s audio and video processing may be in-
    corporated in the set-top box and/or may be dis-
    tributed (e.g., to other devices through a cable
    coupling the devices to the set-top box). The set-
    top box may be coupled to the different compo-
    nents of the videoconferencing system including
    the camera, speakers, microphones, and display.
Kenoyer, col. 1, l. 65–col. 2, l. 3.
    As in the ’182 patent, Kenoyer describes a “video in-
put interface” that “receive[s] video input from a set-top
box,” as in clause [3]; and an “audio input interface” to
“receive audio input from a set-top box,” as in clause [4].
These components and their functions are described in
the same way in Kenoyer and the ’182 patent. No distinc-
tion is shown between the set-top box as set forth in
clauses [3] and [4], and the Kenoyer set-top box.
    Claim clauses [5] and [6]
     The next pair of clauses recites that the “video output
interface” is provided to a “video display device,” clause
[5]; and the “audio output interface” is provided to an
“audio receiver,” clause [6]. The ’182 patent claims these
devices and functions in broad terms and describes their
conduct using known components, stating, for example:
    Merely by way of example, the input audio inter-
    face 425 and/or output audio interface 435 may
    comprise a set of RCA analog jacks, a fiber optic
8                    MICROSOFT CORPORATION     v. BISCOTTI, INC.



    and/or coaxial digital interface and/or the like.
    Similarly the input video interface 420 and/or
    output video interface 430 may be implemented as
    an analog composite, component, S-video, and/or
    VGA interface, and/or as a digital component in-
    terface and/or digital visual interface (“DVI”). . . .
’182 patent, col. 10, ll. 24–31 (referring to Figure 4).
    Kenoyer too provides a broad teaching of audio and
video inputs and outputs. For example, discussing the
video display, Kenoyer states:
    The videoconferencing system may support HD
    [high-definition] capabilities. The term “high res-
    olution” includes displays with resolution of
    1280×720 pixels and higher. In one embodiment,
    high-definition resolution may comprise 1280×720
    progressive scans . . . [t]hus, an embodiment of the
    present invention may comprise a videoconferenc-
    ing system with HD “e.g. similar to HDTV” dis-
    play capabilities using network infrastructures
    with bandwidths T1 capability or less.
Kenoyer, col. 5, ll. 17–26. Kenoyer also recites the com-
puter connections, and the codec interface and coupling,
for the video display output:
    The codec 309 may also place an interface on part
    of the computer system display output. The com-
    puter system 355 may be coupled directly to the
    display 305 and may receive a video signal to dis-
    play from the codec 309.
Kenoyer, col. 9, ll. 5–8 (referring to Figures 3 and 5).
Kenoyer discusses various embodiments; for example:
    In some embodiments, the MCVCS 300 may sup-
    port dual streams for sharing PC content during a
    videoconference (e.g., standards based (H.239) du-
    al streaming for real-time collaboration in HD).
MICROSOFT CORPORATION     v. BISCOTTI, INC.               9



    Media shared through the MCVCS 300 may in-
    clude documents, presentations, and PC screens.
    Other media may also be shared. The MCVCS
    300 may support IP [Internet Protocol] to inte-
    grated services digital network (ISDN) connectivi-
    ty.
Kenoyer, col. 9, ll. 35–41 (referring to Figures 3 and 5).
The ’182 patent states:
    The video communication device 105 of FIG. 5 also
    includes both HDMI [high-definition multimedia
    interface] input 520 and output 530 interfaces as
    well as a set of analog audio and video interfaces
    525, 535 for input and output, respectively. The
    HDMI input interface 520 may be configured to
    receive a high-definition audiovisual input from
    the STB [set-top box], while the HDMI output in-
    terface 530 may be configured to provide high-
    definition audiovisual output for display on a
    HDTV [high-definition television].
’182 patent, col. 14, ll. 9–16 (referring to Figure 5).
    It is not disputed that Kenoyer shows components and
functions within the scope of clauses [5] and [6].
    Claim clauses [7] and [8]
    These clauses recite the ’182 system’s “video capture
device,” clause [7]; and the “audio capture device,” clause
[8]. The ’182 patent describes these functions broadly; for
example, at col. 2, ll. 61–66:
    The video communication device might further
    comprise a video capture device (of which a high-
    definition video camera is but one example) to
    capture a captured video stream and/or an audio
    capture device (of which a microphone or micro-
    phone array might be examples) to capture a cap-
    tured audio stream.
10                   MICROSOFT CORPORATION   v. BISCOTTI, INC.



Kenoyer too describes these functions broadly, stating
that “local video and audio may be captured,” col. 15, ll. 8–
10, and “local video and audio may be processed in codec
309 for transmission to a remote conference site,” col. 15,
ll. 11–12. Kenoyer states at col. 7, l. 66–col. 8, l. 4:
     The codec 309 may receive local signals from the
     camera 303 and microphones 319 for transmission
     to a remote conference site. The codec 309 may
     compress signals for transmission and decompress
     received signals for distribution to the display 305
     and/or speakers 311.
It is not disputed that Kenoyer describes the same func-
tions and components as set forth in clauses [7] and [8].
Kenoyer’s Figure 22, reproduced at Maj. Op. 13, shows
the functions of these and the other claim clauses.
    The breadth of the audio and video capture and pro-
cessing clauses [7] and [8] is illustrated throughout the
Kenoyer disclosure.
     Claim clause [9]
     Clause [9] recites a “network interface,” described in
the ’182 patent as an “integrated wireless local area
network,” col. 5, l. 34; a “personal computer 130 pro-
grammed with a chat application 135, such as SKYPE,
MSN MESSENGER, and/or the like,” col. 6, ll. 26–28; and
“[i]n a set of embodiments, the communication server 205
communicates with the video communication devices 105
over the Internet,” col. 6, ll. 51–53.
    Kenoyer too describes connection to networks, reciting
various possible connections. Kenoyer states at col. 1, ll.
51–53:
     The MCVCS [multi-component videoconferencing
     system] may send/receive signals through a net-
     work coupled to the computer system or to one of
     the MCVCS components.
MICROSOFT CORPORATION    v. BISCOTTI, INC.                  11



At col. 8, ll. 11–14, Kenoyer states:
    For example, the network connection 351 may be
    from an IP [Internet Protocol] link 371 coupled to
    the computer system 355 from an external net-
    work (other types of links are also contemplated).
Discussing networks and referring to Figure 1, Kenoyer
states at col. 4, ll. 17–27:
    In some embodiments, endpoints 103A-103H,
    gateways 130A-130B, conference units 105C-
    105D, and service provider 108 may each include
    various wireless or wired communication devices
    that implement various types of communication,
    such as wired Ethernet, wireless Ethernet (e.g.,
    IEEE 802.11), EEEE 802.16, paging logic, RF (ra-
    dio frequency) communication logic, a modem, a
    digital subscriber line (DSL) device, a cable (tele-
    vision) modem, an ISDN [Integrated Services Dig-
    ital Network] device, an ATM (asynchronous
    transfer mode) device, a satellite transceiver de-
    vice, a parallel or serial port bus interface, and/or
    other type of communication device or method.
Kenoyer also describes conversion to digital signals for
transmission over digital networks, at col. 5, ll. 4–7:
    For example, communication applications may use
    codecs to convert an analog signal to a digital sig-
    nal for transmitting over various digital networks
    (e.g., network 101, PSTN 120, the Internet, etc.) . .
    ..
Kenoyer also describes ports for connection of signals
involving video equipment and network transmission,
stating, for example, at col. 9, ll. 9–19:
    In some embodiments, ports may also be included
    for video output (e.g., VGA-Out 505 and Alternate
    Video-Out 509). These ports may be used to out-
12                  MICROSOFT CORPORATION     v. BISCOTTI, INC.



     put the video signal from the codec 309 to the dis-
     play 305. Another port(s) may be included to re-
     ceive/transmit network signals (e.g., an Ethernet
     port such as Internet Protocol (IP) port 501). Ad-
     ditional ports (e.g., camera in 511, microphone-in
     513, speaker-out 517, etc.) may also be used to re-
     ceive/send signals to/from various equipment cou-
     pled to the codec 309.          The camera and
     microphone array signals may be sent to the codec
     309 through one connection (e.g., alternate input
     315).
Again, it is not disputed that both the ’182 patent and
Kenoyer describe various networks and their use to
transmit audio and video information in the conferencing
system to which both the ’182 patent and Kenoyer are
directed. The “network” clause [9] is plainly anticipated.
     Claim clause [10]
    Clause [10] recites “at least one processor.” Both the
’182 patent and Kenoyer state the use of a comput-
er/processor programmed to manage the conferencing
system. The ’182 patent refers to “a dedicated video
processor and/or digital signal processor (‘DSP’),” col. 9, l.
67–col. 10, l. 1, and states at col. 10, ll. 1–4:
     Merely by way of example, the DM365 digital me-
     dia processor from TEXAS INSTRUMENTS may
     be used as the processor 405 in one embodiment.
The ’182 patent uses known computerized equipment for
its known functions, and Kenoyer does the same. Kenoy-
er states at col. 15, ll. 50–54:
     For example, the memory medium may store one
     or more programs that are executable to perform
     the methods described herein. The memory me-
     dium may also store operating system software, as
     well as other software for operation of the com-
     puter system.
MICROSOFT CORPORATION    v. BISCOTTI, INC.               13



Kenoyer states at col. 5, ll. 8–12:
    In various embodiments, codecs may be imple-
    mented in software, hardware, or a combination of
    both. Some codecs for computer video and/or au-
    dio may include MPEG, Indeo™, and Cinepak™,
    among others.
Kenoyer also describes computer connections over a
network, stating at col. 15, ll. 37–41:
    In addition, the memory medium may be located
    in a first computer in which the programs are exe-
    cuted, or may be located in a second different
    computer that connects to the first computer over
    a network, such as the Internet.
Again, it is not disputed that Kenoyer shows “at least one
processor,” as in clause [10].
    Claim clause [11]
    Clause [11] recites a “storage medium” that encodes
“instructions executable by the at least one processor” to
operate the system. The ’182 patent describes a storage
medium such as an encoded hard drive or a RAM [random
access memory], e.g., at col. 3, ll. 9–13:
    In an aspect, the video communication device also
    includes a storage medium (e.g., a hard drive,
    DRAM, flash RAM, etc.) on which is encoded (per-
    haps among other data) instructions executable by
    the processor(s) to control operation of the video
    communication device.
Kenoyer too describes a storage medium:
    program instructions stored in a memory medium
    or carrier medium and executed by a processor.
Kenoyer, col. 15, ll. 22–24. Kenoyer describes various
memory and storage devices, stating at col. 15, ll. 24–35:
14                   MICROSOFT CORPORATION   v. BISCOTTI, INC.



     A memory medium may include any of various
     types of memory devices or storage devices . . . a
     computer system memory or random access
     memory such as Dynamic Random Access
     Memory (DRAM), Double Data Rate Random Ac-
     cess Memory (DDR RAM), Static Random Access
     Memory (SRAM), Extended Data Out Random Ac-
     cess Memory (EDO RAM), Rambus Random Ac-
     cess Memory (RAM), etc.; or a non-volatile
     memory such as a magnetic media, e.g., a hard
     drive, or optical storage.
The panel majority’s holding that Kenoyer does not de-
scribe a “storage medium” is contrary to Kenoyer’s exten-
sive disclosure. Kenoyer anticipates the limitations of the
introductory section of clause [11], as well as the four
subclauses.
     Subclauses [i], [ii], [iii], and [iv]
     These subclauses elaborate on the clause [11] proces-
sor instructions. The first two subclauses recite that the
first video communication device is controlled by instruc-
tions for controlling the video capture [i] and the audio
capture [ii] devices. Subclause [iii] states that there are
instructions to encode the video and audio streams to
produce data packets, and subclause [iv] states that
instructions send the data packets to a second communi-
cations device via a network.
    Kenoyer too shows a programmed computer that in-
structs on the subject matter of subclauses [i], [ii], [iii],
and [iv], showing capture of the video stream, capture of
the audio stream, encoding the information, and trans-
mitting the data via a network. The panel majority states
that Kenoyer does not teach that its system is run by
“program instructions,” stating “that Microsoft had failed
to provide ‘persuasive evidence that the disclosure would
be understood by one of ordinary skill in the art to mean
that the storage medium with program instructions and
MICROSOFT CORPORATION     v. BISCOTTI, INC.                    15



the functions performed in the various embodiments are
used together in Kenoyer.’” Maj. Op. at 32–33. This is
contrary to the entirety of Kenoyer, for throughout Ke-
noyer its system is shown as controlled by a programmed
computer.
    Kenoyer describes its computerized processing and
transmission, stating, for example, that “local video and
audio may be processed in codec 309 for transmission to a
remote conference site,” col. 15, ll. 11–12. Kenoyer de-
scribes the encoding of signals into data packets for
transmission, col. 8, ll. 10–14; col. 4, l. 66–col. 5, l. 12, and
shows all of these operations managed by a programmed
computer, including Figures depicting the system compo-
nents.
   For example, Kenoyer Figure 7 illustrates the compo-
nents and their combination for videoconferencing, man-
aged by a set-top box in which “[t]he processing (e.g.,
audio and video processing) may be incorporated.” Ke-
noyer, col. 10, ll. 12–13. Kenoyer describes Figure 7a as
showing a multi-component videoconferencing system
(MCVCS) where:
    the codec functionality may be incorporated in a
    set-top box 705 (e.g., a cable box). A camera 704
    may be included on top of a display 701 coupled to
    the set-top box 705 (or placed on the set-top box
    705). The processing (e.g., audio and video pro-
    cessing) may be incorporated in the set-top box
    705 and/or may be distributed (e.g., to other de-
    vices through a cable coupling the devices to the
    set-top box 705). The set-top box 705 may be cou-
    pled to the different components of the MCVCS
    700 including the camera 704, speakers 703, mi-
    crophones, and display.
Kenoyer, col. 10, ll. 8–18. Kenoyer also describes the
ports in Figure 7b, and states that:
16                  MICROSOFT CORPORATION   v. BISCOTTI, INC.



     The set-top box 705 may include a camera port
     709 (e.g., for an HD camera). The set-top box 705
     may also include video ports (e.g., S-Video port
     711), audio ports (e.g., audio ports 713a-b), and
     cable port 715, among others. The set-top box 705
     may also communicate with components in the
     conference through wireless communications.
Col. 11, ll. 1–6. Kenoyer Figures 7a and 7b:




    My colleagues misperceive the law of anticipation, for
the question is whether the prior art shows the claimed
subject matter—as indeed it does. It is not disputed that
all of the elements of claim 6 are shown in Kenoyer,
performing the same functions and combined in the same
way. Kenoyer does not present “multiple, distinct teach-
ings that the artisan might somehow combine to achieve
MICROSOFT CORPORATION    v. BISCOTTI, INC.                   17



the claimed invention,” as my colleagues propose. The
claimed elements are not “somehow” combined—they are
explicitly combined in Kenoyer, to provide the same
conferencing system as in claim 6. To anticipate, a refer-
ence need disclose no more than is claimed in the chal-
lenged invention.     Iovate Health Scis., Inc. v. Bio-
Engineered Supplements & Nutrition, Inc., 586 F.3d 1376,
1382 (Fed. Cir. 2009). It is incorrect to criticize the refer-
ence for the breadth of its disclosure, when the claims at
issue are comparably broad.
    Contrary to the law of anticipation—for it is apparent
that all of the Claim 6 clauses and subclauses are antici-
pated—my colleagues reason that “Microsoft fails to
explain how a computer, especially the computer in
Kenoyer, would receive broadcast, cable, or satellite
television signals.” Maj. Op. at 40. However, neither does
Biscotti explain how the computer in the ’182 patent
would receive broadcast, cable, or satellite television
signals. Neither Biscotti nor Kenoyer purports to have
invented broadcast, cable, or satellite television signals,
or to have invented the mechanism whereby a pro-
grammed computer processes audio and video signals by
broadcast, cable, or satellite transmission. 1 The ’182
patent and the Kenoyer reference both treat such signals
as known technology.



    1    The panel majority states that my criticism is
unwarranted, and that the majority raised this aspect
only in connection with the set-top box. Maj. Op. at 40–
41, n.1. This does not resolve the concern that the majori-
ty appears to hold that known technological information
must be presented in full scientific detail, contrary to, e.g.,
Falko-Gunter Falkner v. Inglis, 448 F.3d 1357, 1368 (Fed.
Cir. 2006) (the “forced recitation of known sequences . . .
would only add unnecessary bulk to the specification”).
18                  MICROSOFT CORPORATION    v. BISCOTTI, INC.



    The court states that Kenoyer teaches only “a mere
catalog of separate parts,” and that Kenoyer simply
“cobbled together” unrelated components “disconnected”
from the videoconferencing system of the ’182 patent.
Maj. Op. at 22, 28, 30. This ignores the entire disclosure
of Kenoyer. Both Kenoyer and the ’182 patent describe
the same system in the same terms, reciting the various
known audio and video communication devices and their
use in the same videoconferencing system. The entirety of
Kenoyer is directed to videoconferencing by way of an
audio-video system that matches the ’182 system. Kenoy-
er shows all of the components and functions of claim 6, in
the same arrangement. Anticipation is plain. 2
    The law of anticipation is clearly met, for on any view
of Kenoyer, Kenoyer “sufficiently describe[d] the claimed
invention to have placed the public in possession of it.” In
re Donohue, 766 F.2d 531, 533 & n.7 (Fed. Cir. 1985). See
generally Kennametal, 780 F.3d at 1381 (“However, a
reference can anticipate a claim even if it ‘d[oes] not
expressly spell out’ all the limitations arranged or com-
bined as in the claim, if a person of skill in the art, read-
ing the reference, would ‘at once envisage’ the claimed
arrangement or combination.” (quoting In re Petering, 301
F.2d 676, 681 (CCPA 1962))). Kenoyer shows the same
components, having the same function, combined in the
same way for the same purpose. Substantial evidence
does not support the panel majority’s ruling that the ’182
claims are not anticipated.




     2   Method claim 69 is based on the same specifica-
tion, is subject to the same prior art, the same analysis,
and the same conclusion.
