Texas Company Beats Microsoft at the 'Death Squad'

Not many patent holders survive the so-called “Death Squad” inter partes review (IPR) process without having some part of their claim die.

Yet a small Texas-based company recently beat some extremely unfavorable odds when it faced off against Microsoft in a trial before a U.S. Patent and Trademark Patent Trial and Appeal Board and beat back the software giant’s attempt to invalidate 53 patent claims.

The trial and appeal board earned the “Death Squad” label because they invalidate or cancel patents over 80 percent of the time when they are challenged during the administrative trials.

Microsoft filed three separate IPR petitions against Biscotti Inc.—a Texas company that makes video conferencing cameras—in an attempt to challenge its video conferencing technology patent. And the USPTO rejected all three of Microsoft’s petitions on March 17 after holding a consolidated trial, said Amanda Hollis, a partner in the Chicago office of Kirkland & Ellis who represents Biscotti Inc.

“Although the odds are tough, it’s possible,” Hollis said of Biscotti’s triple victory before the USPTO.

And there isn’t much of mystery at how Biscotti got that rare favorable ruling, Hollis said.

“I think it’s just the correctness of our argument. This is a strong patent. We argued that and we won,” she said. “It’s really about the merits here.”

Microsoft filed the IPR petitions after Biscotti sued the software company in the Eastern District of Texas in 2013 alleging that Microsoft’s Xbox One video game console violates the patent. Because of the IPR decision, Microsoft will now be precluded from arguing to U.S. District Judge Rodney Gilstrap of Marshall that the patent is invalid, Hollis said.

A spokesperson for Microsoft declined to comment on the recent decisions.

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