Anticipation Requires More Than A Reference That Discloses All The Elements

In Microsoft Corp. v. Biscotti, Inc., Nos. 2016-2080, -2082, -2083, 2017 WL 6613262 (Fed. Cir. Dec. 28, 2017), a divided Federal Circuit panel affirmed the Patent Trial and Appeal Board's decision that Microsoft failed to prove that the challenged claims of Biscotti's patent were unpatentable.  Microsoft had argued to the Board that a single reference ("Kenoyer") anticipated two independent claims, claims 6 and 69, and that Kenoyer in combination with other references anticipated or rendered obvious claims depending from claims 6 and 69.

The Federal Circuit first confirmed that the Board applied the correct legal standard for anticipation in reaching its decision:  (1) "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," or (2) "if [the reference] does not expressly spell out all the limitations arranged or combined as in the claim," it can still