Thursday, December 28, 2017

Judge Newman's dissent in Microsoft/Biscotti case

Judge Newman's dissent in Microsoft v. Biscotti begins:

I respectfully dissent. The Kenoyer reference describes
the same invention that is claimed in claims 6 and
69, the only claims of Biscotti’s ’182 patent that are reviewed
by the court. These claims recite no new components
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 anticipation.


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 combined
as in the claim, if a person of skill in the art, reading
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.

Footnote 1 of the dissent:

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 majority
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”).


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