Petitioner Microsoft’s Reply
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`Paper No. 32
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MICROSOFT CORPORATION
`Petitioner,
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`v.
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`BISCOTTI INC.
`Patent Owner
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`Patent No. 8,144,182
`Issued: March 27, 2012
`Filed: September 16, 2009
`Inventors: Matthew B. Shoemake and Nadeem Ahmed
`Title: REAL TIME VIDEO COMMUNICATIONS SYSTEM
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`___________________
`Case IPR2014-01459
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`PETITIONER MICROSOFT’S REPLY
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`________________________
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`Paper No. 32
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MICROSOFT CORPORATION
`Petitioner,
`
`v.
`
`BISCOTTI INC.
`Patent Owner
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`Patent No. 8,144,182
`Issued: March 27, 2012
`Filed: September 16, 2009
`Inventors: Matthew B. Shoemake and Nadeem Ahmed
`Title: REAL TIME VIDEO COMMUNICATIONS SYSTEM
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`___________________
`Case IPR2014-01459
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`PETITIONER MICROSOFT’S REPLY
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`________________________
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`Petitioner Microsoft’s Reply
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`I.
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`Kenoyer (Ex. 1006) Discloses All the Elements of Claim 69 and
`Therefore Anticipates It.
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`The ‘182 patent discloses and claims videoconferencing using a device that
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`also accepts input from a STB. See, e.g., Ex. 1001, 2:11-12 (“a video calling
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`device [that] resides functionally inline between a set-top box ("STB") and a
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`television set.”). The ‘182 patent also discloses and claims various “interfaces” that
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`allow the video conferencing device to connect to the STB, a display, and a
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`network. Ex. 1001, 10:19-47, 11:25-48. Kenoyer (Ex. 1006) discloses the same
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`thing, a videoconferencing device that connects to a STB with interfaces to a
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`display, a STB, and a network. Ex. 1006, 10:25-30; 1:65-2:1, 9:20-34.
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`Consequently, Kenoyer anticipates and/or renders obvious the instituted claims, as
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`shown below.
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`A. Kenoyer Discloses The Receiving Step
`Patent Owner wrongly argues that Kenoyer is missing “receiving, on the
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`audiovisual input interface, a set-top box audiovisual stream from a set-top box,
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`the set-top box audiovisual stream comprising a set-top box video stream and a
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`set-top box audio stream.” Kenoyer discloses a video conferencing system and
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`expressly teaches connecting that system to a set-top box (“STB”) and receiving
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`audio and video in the form of “regular programming/games.” See, e.g., Ex. 1006,
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`10:25-30 (“The codec may also be in an independent housing that is coupled to the
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`set-top box 705. The codec may act as a pass-through for the regular
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`Petitioner Microsoft’s Reply
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`programming/games when a conference is not being held.”); Ex. 1050, Bovik July
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`30 Dep. Tr., 14:2-21, 15:3-16 (regular programming includes video and audio).
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`Kenoyer therefore discloses “receiving, on the audiovisual input interface, a set-
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`top box audiovisual stream from a set-top box”.
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`Patent Owner argues that Kenoyer does not disclose an input interface that
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`receives both audio and video. Resp., 9-10. But Kenoyer discloses that the codec
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`receives both audio and video from the STB: “[t]he codec's audio and video
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`processing may be incorporated in the set-top box and/or may be distributed
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`(e.g., to other devices through a cable coupling the devices to the set-top box),”
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`with the codec thereby receiving audio and video from the STB. See Ex. 1006,
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`1:65-2:1; see also 10:12-15; Ex. 1003, ¶233-35. In addition, passing the STB’s
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`“regular programming” through the codec includes receiving both audio and video.
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`Ex. 1003, ¶233-35; Ex. 1006, 10:12-15. “Regular programming” has both audio
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`and video. See, e.g., Ex. 1050, 14:2-21 (video); id., 15:3-16 (audio); Ex. 1052, ¶
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`158.
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`In addition to receiving audio and video from the STB, Kenoyer discloses
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`multiple audio and video input interfaces to perform such receiving. Figure 5, for
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`example, shows multiple audio and video input interfaces. Ex. 1003, ¶233-35.
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`Moreover, Kenoyer identifies other interfaces for receiving audio and video from a
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`STB. Ex. 1006, 9:29-34 (“S-Video input, Radio Corporation of America (RCA)
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`2
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`Petitioner Microsoft’s Reply
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`(L+C+R analog) input, … VGA input, a composite input, and stereo mini -jack
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`input may also be supported. These and other inputs/outputs (e.g., an external mic
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`jack input) may be provided on the codec 309.”); Ex. 1003, ¶81; See, e.g., Ex.
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`1052, ¶12, 160, 162; Ex. 1050, 130:21 – 131:12, 32:6-21. “S-Video input” allows
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`the input of video using the S-Video standard. See, e.g., Ex. 1050, 114:9-17; Ex.
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`1052, ¶16, 18, 30. A VGA input can receive video from a STB. See, e.g., Ex.
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`1050, 79:2-9; Ex. 1052, ¶25-29. A composite input similarly allows input of video
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`from an STB. See, e.g., Ex. 1050, 113:18 – 114:1. And an RCA input allows the
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`input of audio from a STB. See, e.g., Ex. 1050, 39:4-12; Ex. 1052, ¶38-39.
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`Kenoyer also describes other video and audio interfaces for coupling the STB and
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`codec: “The set-top box 705 may also include video ports (e.g., S-Video port 711),
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`audio ports (e.g., audio ports 713a-b ), and cable port 715, among others.” Ex.
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`1006, 11:2-4; Fig. 7b.
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`Patent Owner argues that Fig. 5 shows an interface to a computer, not a STB (
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`Resp., 10), ignoring that Kenoyer also teaches connecting the codec to a STB. Pet.
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`15-16; Ex. 1006, 1:65-2:1, 10:25-28. Indeed, the VGA port in Fig. 5 can receive
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`video from a STB, as Patent Owner implicitly concedes, by arguing only that VGA
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`“is not ordinarily used for transmission of a cable or satellite signal.” Resp., 10;
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`Ex. 2018 ¶81. The evidence shows that STBs often had VGA outputs that could
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`send video to Kenoyer’s “VGA In” interface, making this VGA port a video input
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`3
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`Petitioner Microsoft’s Reply
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`interface to an STB. See Ex. 1052, ¶25-29; Ex. 1055, ¶ 5; Ex. 1055, 6:51-61; Ex.
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`1046 at 7, 9, 11; Ex. 1047 at 15, 21; Ex. 2024 at 42; Ex. 1033 at 63; Ex. 1050,
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`79:2-9. Third, nothing in Kenoyer says that the interfaces shown in Fig. 5 do not
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`apply generally to the disclosed codec device, whether connected to a computer or
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`STB. Ex. 1006, 8:56-57 (“FIG. 5 illustrates a side view of an embodiment of the
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`codec 309.”). And Kenoyer’s disclosure of a codec separate from and coupled to
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`the STB shows that the codec would use the interfaces Kenoyer otherwise
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`discloses for the codec. See Ex. 1006, 10:25-28; Ex. 1052, ¶23. Kenoyer’s
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`disclosure of the codec’s functionality in one paragraph and the codec’s interfaces
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`in another is sufficient to satisfy the claim. Ex parte Luck, 28 U.S.P.Q.2d 1875-76
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`(“we find that Luck discloses vincristine (column 3, line 55) and a method of
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`treating brain tumors (column 6, line 21). We are persuaded that a person having
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`ordinary skill in the art would correlate these disclosures, i.e., for a person having
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`ordinary skill in the art , Luck discloses a method of treating brain tumors by using
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`the chemotherapeutic drug vincristine”) (emphasis in original). Moreover, a
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`computer can be an STB, which the ‘182 patent defines as “a device that can
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`provide video tuning, decryption and/or decoding functionality for the reception of
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`broadcast, cable, and/or satellite television signals.” Pet., 5; Ex, 1001, 9:22-26.
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`Computers by 2008 could contain tuners for broadcast reception. See, e.g., Ex.
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`1033, 72; Ex. 1052, ¶37.
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`4
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`Petitioner Microsoft’s Reply
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`With regard to audio, Patent Owner argues that Kenoyer does not disclose an
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`audio interface between the video conferencing device and the STB. Resp., 11-12.
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`The “regular programming” from the STB contains both audio and video, see, e.g.,
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`Ex. 1050, 14:2-21 (video); id., 15:3-16 (audio), that would both be passed through
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`the codec. Ex. 1052, ¶42. Biscotti’s expert agrees that “programming” includes
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`both video and audio. See, e.g., Ex. 1050, 14:2-21 (video); id., 15:3-16 (audio).
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`And viewers using the pass-through for “regular programming” would expect both
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`sound and video. Ex. 1052, ¶32.
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`Indeed, Kenoyer expressly discloses that audio is also coupled to the codec and
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`the STB: "[t]he codec's audio and video processing may be incorporated in the
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`set-top box and/or may be distributed (e.g., to other devices through a cable
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`coupling the devices to the set-top box).” Ex. 1006, 1:65-2:1; 10:12-15. In
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`addition, Kenoyer explains that the STB, which it describes as coupled to the
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`codec, has “audio ports (e.g., audio ports 713a-b ).” Ex. 1006, 11:3-4. And
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`Kenoyer also explains that the codec has a “Radio Corporation of America (RCA)
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`(L+C+R analog) input,” Ex. 1006, 12:62-66, which is a typical audio input
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`interface, see Ex. 1052, ¶39; July 30, 2015 Bovik Dep. Tr. 39:4-12, 114:4-8, and
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`one which the ‘182 patent explicitly says can be an audio input interface, see Ex.
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`1001, 10:24-26; id., 10:41-47. Fig. 5 also shows audio interfaces, including
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`“microphone-in 513” and “alternate input 315,” that both provide an audio input
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`5
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`Petitioner Microsoft’s Reply
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`interface to a STB. Kenoyer therefore discloses “receiving, on the audiovisual
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`input interface, a set-top box audiovisual stream from a set-top box, the set-top box
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`audiovisual stream comprising a set-top box video stream and a set-top box audio
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`stream.”
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`B. Kenoyer Discloses The Encoding and Transmitting Steps
`Patent Owner argues that Kenoyer is missing “encoding the captured video
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`stream and the captured audio stream to produce a series of data packets” and
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`“transmitting the series of data packets on the network interface for reception by
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`the second video communication device.” Kenoyer, however, discloses using the
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`Internet Protocol to transmit data, which teaches encoding into packets because the
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`Internet Protocol necessarily uses packets. Ex. 1003 ¶446; Ex. 1050, 144:10-20,
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`145:4-21. And Kenoyer discloses transmitting audio and video to a second device.
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`Pet., 15; Ex. 1003, ¶ 447; Ex. 1006, 15:11-12. Collectively, these disclosures
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`squarely meet these claim elements. Kenoyer’s disclosure of using the Internet
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`Protocol for transmitting data in one paragraph and transmitting audio and video in
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`another is sufficient to satisfy the claim. Ex parte Luck, 28 U.S.P.Q.2d 1875-76.
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`Patent Owner contends that “[t]he disclosure referred to by Petitioner [Pet., 19-
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`20; Ex. 1003, ¶¶ 96-98, 446] identifies an IP link connected to a computer system
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`355, and not to the codec 309.” Resp., 12-13. But this contention is irrelevant
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`because it does not distinguish any claim element. The disclosure makes clear that
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`6
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`Petitioner Microsoft’s Reply
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`the connection and transmission is still to the “external network.” Ex. 1006, 8:11-
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`13. Moreover, Kenoyer elsewhere describes the IP link shown on Fig. 5 as part of
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`the codec and as connecting the codec to the network. Pet., 15; Ex. 1006, 9:12-14
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`(“Another port(s) may be included to receive/transmit network signals (e.g., an
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`Ethernet port such as Internet Protocol (IP) port 501).”); 2:47 (“FIG. 5 illustrates a
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`side view of the codec”). Kenoyer also explains that the IP link can be used either
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`to connect to a computer or to a network: “the network connection 351 may be
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`from an IP link 371 coupled to the computer system 355 from an external network
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`(other types of links are also contemplated). The codec 309 may also be coupled
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`directly to the network.” Ex. 1006, 8:11-15 (emphasis added); Ex. 1003, ¶96.
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`Patent Owner also contends that “Kenoyer only discloses that ‘signals may be
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`sent/received through a network connection 351,’ without disclosing which signals
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`are transmitted.” Resp., 13. To the contrary, Kenoyer discloses transmitting audio
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`and video signals over the network. Ex. 1006, 15:11-12 (“At 2203, the local video
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`and audio may be processed in codec 309 for transmission to a remote conference
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`site.”); also 5:60-64 (“The system codec 209 may also receive video data from the
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`camera 204 and audio data from the speakerphones 205/207 and transmit the video
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`and/or audio data over the network to another conferencing system.”). That
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`transmission occurs over the network interface discussed previously in Kenoyer.
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`See, e.g., Ex. 1052, ¶56, 61.
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`7
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`Petitioner Microsoft’s Reply
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`Finally, Patent Owner claims that Petitioner relies solely on inherency. Resp.,
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`12. To the contrary, Kenoyer discloses using the Internet Protocol to encode data,
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`and the Internet Protocol uses packets. See, e.g., Ex. 1015 at 1; Ex. 1003, ¶446;
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`Ex. 1006, 8:10-15, 9:12-14. Kenoyer also teaches transmitting audio and video
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`data. Ex. 1006, 15:11-12. No inherency is needed. Thus, Patent Owner’s
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`argument that “Kenoyer also does not disclose that the captured video and audio
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`streams are necessarily packetized and that those packets are transmitted on the
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`network interface” (Resp., 12) is irrelevant. And notably, its citation to ¶228 of its
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`Expert’s declaration does not support this statement. See Ex. 2018, ¶ 228.
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`II.
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`Patent Owner Offers No Argument On The Other Instituted Claims
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`Patent Owner offers no argument for claims 70-71 and 74 beyond its
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`arguments regarding parent claim 69. Thus, if claim 69 is found invalid, as it
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`should be, those claims are invalid as well.
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`Dated: August 19, 2015
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`Respectfully Submitted,
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`
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`/Joseph Micallef/
`Joseph A. Micallef
`Registration No. 39,772
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
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`8
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`Petitioner Microsoft’s Reply
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`PETITIONER MICROSOFT’S REPLY
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`Attachment A:
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`Proof of Service of the Reply
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`9
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`Petitioner Microsoft’s Reply
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 19th day of August 2015, a copy of this Reply,
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`including all attachments, appendices and exhibits, has been served in its entirety
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`by E-mail on the following counsel of record for patent owner:
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`Amanda Hollis
`Kirkland & Ellis LLP
`300 North LaSalle
`Chicago, IL 60654
`amanda.hollis@kirkland.com
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`Adam Alper
`Kirkland & Ellis LLP
`555 California Street
`San Francisco, CA 94104
`adam.alper@kirkland.com
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`Michael W. De Vries
`Kirkland & Ellis LLP
`333 South Hope Street
`Los Angeles, CA 90071
`michael.devries@kirkland.com
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`Dated:
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`August 19, 2015
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`10
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`Respectfully submitted,
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`/Joseph Micallef /
`Joseph A. Micallef
`Registration No. 39,772
`Attorney for Petitioner
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