Can the disclosure in a prior art reference be too extensive for the art not to anticipate? According to a recent decision, the Federal Circuit apparently thinks so.
In Microsoft Corp. v. Biscotti Inc., Case Nos. 2016-2080, -2082, -2083 (Fed. Cir. Dec. 28, 2017), a split Federal Circuit panel affirmed a Board’s decision—also a split decision with one judge dissenting—that the contested claims were not invalid for anticipation, determining that the factual findings of the Board’s majority were supported by substantial evidence. But, in dissent, Judge Newman criticizes the panel majority for misperceiving the law of anticipation and finding that a person of skill in the art would not “at once envisage” the claimed arrangement of limitations due to the breadth of disclosure in the prior art.The contested claims were directed to a videoconferencing system connected to a set-top box. One of the key disagreements between the parties concerns the claim limitation of a storage medium encoded with instructions executable by the processor to control the video communication device. To support its argument of anticipation, Microsoft points to a passage in the prior art, a U.S. Patent issued to Kenoyer: “[i]n some embodiments, a computer system at a respective participant 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.” The patent owner, Biscotti, argued, and the Board majority agreed, that the language cited by Microsoft only referred to the description of a single figure rather than all of the disclosures made through the Kenoyer specification. Therefore, although this limitation is found in Kenoyer, a person skilled in the art would not readily combine it with the other claim limitations.
The Board explained that Kenoyer’s alleged disclosure of a storage medium with instructions is unrelated to the other limitations of the challenged claim and that the various embodiments in Kenoyer amounted to “multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” The dissenting judge on the Board and Judge Newman disagreed. Each argued that the majority failed to take into account not only the specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.
In the end, the disagreement between the majority and the dissent comes down to the question of whether a person skilled in the art would “at once envisage” the arrangement of all claim limitations. The majority’s opinion seems to suggest that, because the disclosure in Kenoyer is so extensive, a person skilled in the art would not “at once envisage” the claimed arrangement even though all of the elements of the challenged claim are shown. Perhaps as a takeaway, parties who rely on prior art with an extensive disclosure should not take for granted that the art is anticipating although all claim limitations are disclosed. Rather, a petitioner would need to explain why a skilled person would “at once envisage” the claimed arrangement, to support a conclusion of no anticipation. Additionally, a petitioner may also consider raising an obviousness ground over the anticipating art to buttress an unpatentability argument based on a combination of elements from different embodiments.