Federal Circuit Affirms PTAB’s Decision of No Anticipation in Microsoft v. Biscotti

In Microsoft Corporation v. Biscotti, Inc., Nos. 2016-2080, 2016-2082, 2016-2083 (Fed. Cir. Dec. 28, 2017), the Federal Circuit affirmed the PTAB’s decisions finding Microsoft failed to prove the challenged claims were unpatentable.

Before the PTAB, three IPR proceedings considered the patentability of the same patent, each based on whether a prior-art patent anticipated and/or rendered obvious the challenged claims. In its Final Written Decisions, the Board found Microsoft could not establish anticipation of the challenged claims because it combined different embodiments and cobbled together disparate disclosures without tying them together. The Board concluded Microsoft likewise failed to show that certain challenged claims would have been obvious. 

On appeal, the Federal Circuit agreed the Board applied the correct standard for anticipation. It reaffirmed that, (1) in order to anticipate, a reference must disclose all elements arranged as in the claims, and that (2) a reference that does not expressly spell out every claim limitation may nevertheless anticipate if a skilled artisan reading the reference would “at once envisage” the claimed arrangement. It also reaffirmed that “anticipation is not proven by ‘multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” The Court then determined the Board’s factual findings regarding the asserted prior art were supported by substantial evidence, and affirmed the Board’s conclusions that the challenged claims were not proven unpatentable.

Judge Newman dissented. She believed the asserted reference anticipated the claims because it showed “the same components, having the same function, combined in the same way for the same purpose.”