UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

Transcription

1 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD AT&T MOBILITY, LLC AND CELLCO PARTNERSHIP D/B/A VERIZON WIRELESS Petitioners v. SOLOCRON MEDIA, LLC Patent Owner Case IPR2015- Patent No. 7,742,759 PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,742,759 UNDER 35 U.S.C AND 37 C.F.R ET SEQ. Mail Stop: Patent Board Patent Trial and Appeal Board United States Patent and Trademark Office P.O. Box 1450 Alexandria, VA

2 TABLE OF CONTENTS I. INTRODUCTION AND BACKGROUND... 1 II. NOTICES, STATEMENTS AND PAYMENT OF FEES... 2 A. Real Parties In Interest Under 37 C.F.R. 42.8(b)(1)... 2 B. Related Matters Under 37 C.F.R. 42.8(b)(2)... 2 C. Lead and Back-Up Counsel Under 37 C.F.R. 42.8(b)(3)... 2 D. Service Information Under 37 C.F.R. 42.8(b)(4)... 3 E. Grounds for Standing Under 37 C.F.R (a)... 3 F. Fees Under 37 C.F.R III. THE 759 PATENT... 4 A. Background... 4 IV. IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R (B)... 6 V. HOW THE CHALLENGED CLAIM IS TO BE CONSTRUED UNDER 37 C.F.R (B) (3)... 8 VI. DETAILED EXPLANATION AND SUPPORTING EVIDENCE UNDER 37 C.F.R (B)(4) AND (B)(5)... 8 A. Claims 53, 54, 56, 59, 64, and 65 Are Anticipated by Merritt... 8 B. Claim 59 is Obvious over Merritt C. Claims 53, 54, and 59 Are Anticipated by Gaffney D. Claims 53, 54, 56, 59, 64, and 65 Are Obvious Over Merritt in View of Gaffney E. Claims 53, 56, 64, and 65 Are Anticipated by Apache F. Claims 53, 54, 56, 59, 64, and 65 Are Obvious Over Merritt in View of Apache VII. CONCLUSION i

3 PETITIONER S EXHIBIT LIST Exhibit 1001 Exhibit 1002 Exhibit 1003 U.S. Patent No. 7,742,759 (the 759 patent) Excerpts of Documents Showing Mr. Shanahan s Prosecution and Litigation Experience and Former Clients Complaint filed in Solocron v. AT&T Mobility. LLC, et al., (E.D. Tex.) (Case No. 2:13-cv-1059) Exhibit 1004 U.S. Patent App. 08/175,022 Exhibit 1005 U.S. Patent No. 6,421,429 Exhibit 1006 Exhibit 1007 International Publication Number WO98/19438, filed on October 28, 1996 and published on May 7, 1998 Excerpts from: Lincoln Stein and Doug MacEachern, Writing Apache Modules with Perl and C (March 1999). Exhibit 1008 Solocron s Opening Claim Construction Brief, Dkt. No. 119, dated 11/21/2014, in Solocron v. AT&T Mobility, LLC, et al., (E.D. Tex.) (Case No. 2:13-cv-1059) Exhibit 1009 Exhibit 1010 Exhibit 1011 Exhibit 1012 Declaration of Mr. Mark Lanning Regarding U.S. Patent No. 7,742,759, dated 12/05/2014 Schneidawind, John (November 23, 1992). "Poindexter Putting Finger on PC Bugs; Big Blue Unveiling". USA Today. p. 2B. ISSN (1992 USA Today article describing IBM s unveiling of a PDA cellular phone at Comdex) Bellsouth, IBM unveil personal communicator phone. Mobile Phone News, Nov. 8, 1993 Maney, Kevin Simon says: Super-phone is giant step. USA Today, Nov. 3, 1993 ii

4 Petitioners AT&T Mobility, LLC and Cellco Partnership d/b/a Verizon Wireless ( Petitioners ) hereby request inter partes review of claims 53, 54, 56, 59, 64, and 65 of U.S. Patent No. 7,742,759 ( the 759 Patent ). Exhibit I. INTRODUCTION AND BACKGROUND The 759 patent is part of a family of nearly twenty patents owned by Solocron Media, LLC ( Solocron ), a small company based in Tyler, Texas near the Eastern District of Texas courthouse. Solocron acquired this portfolio from Michael Shanahan, a telecommunications and electronics patent prosecutor formerly of Fish & Neave and McDermott Will & Emery. See, e.g., Exhibit Mr. Shanahan s clients over the past fifteen years include Nokia, Inc. ( Nokia ) and other well-known electronics companies. Exhibit Solocron alleges that the 759 patent relates to converting video files at an intermediate server. File conversion was well-known long before the 759 patent, as evidenced by AT&T s U.S. Patent No. 6,421,429 ( Merritt ), which discloses the claimed concepts using nearly identical terminology. Merritt is one example of invalidating prior art that was not presented to the Patent Office during the prosecution of the 759 patent or any of the applications to which it claims priority. 1

5 For the reasons below, there is a reasonable likelihood that claims 53, 54, 56, 59, 64, and 65 of the 759 patent are unpatentable in light of the prior art, warranting inter partes review. II. NOTICES, STATEMENTS AND PAYMENT OF FEES A. Real Parties In Interest Under 37 C.F.R. 42.8(b)(1) The real parties in interest are AT&T Mobility, LLC and Cellco Partnership d/b/a Verizon Wireless. B. Related Matters Under 37 C.F.R. 42.8(b)(2) Solocron sued the following entities (in addition to AT&T Mobility, LLC and Verizon Wireless) for infringement of the 759 Patent in the Eastern District of Texas on December 6, 2013 (Case No. 2:13-cv-01059) (hereinafter, the Litigation ): Sprint Corporation, Sprint Communications Company L.P., Sprint Solutions Inc., and T-Mobile USA, Inc. See Exhibit C. Lead and Back-Up Counsel Under 37 C.F.R. 42.8(b)(3) Petitioners designate lead and back-up counsel as noted below. Powers of attorney pursuant to 37 C.F.R (b) accompany this Petition. For Petitioner Cellco Partnership d/b/a Verizon Wireless Lead Counsel Backup Counsel Kevin P. Anderson, Reg. No. 43,471 Floyd B. Chapman, Reg. No. 40,555 Scott A. Felder, Reg. No. 47,558 WILEY REIN LLP, ATTN: Patent Administration, 1776 K Street NW, Washington, DC 20006, Phone: / Fax:

6 For Petitioner AT&T Mobility LLC Lead Counsel Backup Counsel Theodore Stevenson, III, Reg. No. 39,040 Scott W. Hejny, Reg. No. 45,882 Nicholas Mathews, Reg. No. 66,067 MCKOOL SMITH PC, 300 Crescent Court, Suite 1500, Dallas, TX Phone / Fax D. Service Information Under 37 C.F.R. 42.8(b)(4) Please address all correspondence to lead counsel at the address above. AT&T Mobility, LLC consents to electronic service by at: shejny@mckoolsmith.com and nmathews@mckoolsmith.com. Verizon Wireless consents to electronic service by at: kanderso@wileyrein.com and fchapman@wileyrein.com. E. Grounds for Standing Under 37 C.F.R (a) Petitioners certify pursuant to 37 C.F.R (a) that the 759 patent is available for inter partes review, and that Petitioners are not barred or estopped from requesting inter partes review based on the grounds identified herein. Petitioners also certify this petition for inter partes review is filed within one year of the date of service of the complaint discussed above. F. Fees Under 37 C.F.R AT&T Mobility, LLC is concurrently submitting fees of $23,000. To the extent any additional fees are deemed necessary to accord this Petition a filing 3

7 date, authorization is hereby granted to charge the same to Deposit Account No with reference to Attorney Docket No IP759. III. THE 759 PATENT A. Background The 759 patent was filed on December 2, 2006, and purports to claim priority to applications dating back to December Exhibit Though Solocron has asserted this patent against AT&T s and Verizon s servers that process Multimedia Messaging Service ( MMS ) messages, the 759 patent makes no reference to MMS or any other type of messaging service. Rather, the 759 patent specification is entirely directed to user-defined downloadable ringtones. Mr. Shanahan filed 7 patents covering almost 250 claims before filing the 759 patent, all of which related to downloadable ringtones and not file format conversion. Mr. Shanahan waited until 2006 when transcoding servers were widely used throughout the telecommunications industry to file his first format conversion patent. In support of his 2006 claims, Mr. Shanahan relied on an embodiment in the specification relating to converting and downloading user-defined ringtones. Figure 1 depicts a source 50, a device programmer 30, and a device 20 : 4

8 759 Patent, Fig. 1. Device 20 selects a user-defined file from a source 50, such as the Internet. Id. at 3: The file is then transmitted to device programmer 30 that converts the file to a format compatible with device 20. Id. Device 20 then downloads the user-defined file and may retrieve it when a certain even occurs, e.g., when receiving an incoming call. Id. Servers that performed this type of format conversion were well known in the art long before Mr. Shanahan filed his family of his patents. Indeed, more than six years before Mr. Shanahan filed his provisional application and thirteen years before Mr. Shanahan filed the 759 patent, AT&T filed a patent application that disclosed every element of Mr. Shanahan s alleged invention. Exhibit Patent Application No. 07/175022, filed in 1993, describes a method and system 5

9 for communicating images across a network among users with disparate end systems running potentially dissimilar image protocols and formats. Id. at 1:2-5. The application teaches a network-based image processing system that receives an originating image, converts the originating image file to the format and protocol of the called party, and then communicates the image to the called party. Id. at 2:15-3:13. The application explained that the image file converted could be a video file. ( At this platform, conversion among the two video formats takes place entirely within the digital domain, without returning to baseband analog video, as is commonplace for current video conversions. ). Id. at 16:4-6. About four years after filing this patent application, AT&T filed a continuation-in-part that was ultimately granted as U.S. Patent No. 6,421,429 (the Merritt patent), described in detail below. Exhibit IV. IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R (b) Petitioners requests inter partes review of claims 53, 54, 56, 59, 64, and 65 of the 759 patent, in view of the references identified below. 1. Merritt, U.S. Patent No. 6,421,429, filed March 18, 1998 and published July 16, Exhibit This reference is prior art under 35 U.S.C. 102(e). The Office never considered Merritt during prosecution. 6

10 2. Gaffney, WO98/19438, filed October 29, 1996 and published May 7, Exhibit This reference is prior art under 35 U.S.C. 102(b). The Office never considered Gaffney during prosecution. 3. Apache, Writing Apache Modules with Perl and C by Lincoln Stein and Doug MacEachern, was published on March 31, Exhibit This reference is prior art under 35 U.S.C. 102(a). The Office never considered Apache during prosecution. Petitioners request that claims 53, 54, 56, 59, 64, and 65 be cancelled based upon the following grounds, as explained in detail below (including relevant claim constructions): Ground 1: claims 53, 54, 56, 59, 64, and 65 are invalid under 35 U.S.C. 102 as anticipated by Merritt; Ground 2: claim 59 is invalid under 35 U.S.C. 103 as obvious over Merritt; Ground 3: claims 53, 54, and 59 are invalid under 35 U.S.C. 102 as anticipated by Gaffney; Ground 4: claims 53, 56, 64. and 65 are invalid under 35 U.S.C. 102 as anticipated by Apache; Ground 5: claims 53, 54, 56, 59, 64, and 65 are invalid under 35 U.S.C. 103 over Merritt in view of Gaffney; Ground 6: claims 53, 56, 64, and 65 are invalid under 35 U.S.C. 103 over Merritt in view of Apache. 7

11 V. HOW THE CHALLENGED CLAIM IS TO BE CONSTRUED UNDER 37 C.F.R (b) (3) In this proceeding, claim terms are given a broadest reasonable interpretation consistent with the specification and prosecution history. See Office Patent Trial Practice Guide, 77 Fed. Reg , (Aug. 14, 2012); 37 C.F.R. 100(b). None of the claim terms at issue require a construction. All terms should be given their plain and ordinary meaning. VI. DETAILED EXPLANATION AND SUPPORTING EVIDENCE UNDER 37 C.F.R (b)(4) AND (b)(5) Pursuant to 37 C.F.R (b)(4) and (b)(5), Petitioners set forth an explanation below of why claims 53, 54, 56, 59, 64, and 65 of the 759 patent is unpatentable under the statutory grounds identified above, including the identification of where each element is found in the prior art patents or printed publications. The claim charts identify the supporting evidence relied upon to support the challenge by exhibit number and set forth the relevance of the evidence to the challenge raised, including an identification of those specific portions of the evidence that support the challenge. An Exhibit List (see 37 C.F.R (e)) identifying the exhibits is also included, supra, at p. iii. A. Claims 53, 54, 56, 59, 64, and 65 Are Anticipated by Merritt More than six years before Mr. Shanahan filed his earliest application (and thirteen years before Mr. Shanahan filed the 759 patent), AT&T filed a patent 8

12 application for a method and system for communicating images across a network among users with disparate end systems running potentially dissimilar image protocols and formats. Exhibit About four years after filing this patent application, AT&T filed a continuation-in-part that was ultimately granted as U.S. Patent No. 6,421,429 (the Merritt patent). Exhibit Merritt discloses an image communications session manager, as shown in Figure 4b from the patent below. Merritt, Fig. 4B. The image communications session manager is a server that receives an image or video file sent from a first device to a second device, determines the format capabilities of the second device, compares the format of the file to the format capabilities of the second device, if necessary converts the format 9

13 of the file, and then allows the second device to download the video file for subsequent use. As will be described in more detail below, Merritt discloses that the file communicated may be a video, the user-devices may be wireless telephones, the file type may be converted to and from JPEG and MPEG, and the file conversion can be a lossy native payback format to a lossy native playback format. Thus, AT&T invented and disclosed all features recited in 53, 54, 56, 59, 64, and 65 more than eighteen months before Mr. Shanahan filed his earliest application and more than eight years before he submitted the application that became the 759 patent. Mr. Mark Lanning, a telecommunications expert with a BS in computer science and over 38 years of experience in the telecommunications industry, has included an invalidity analysis of Merritt in his expert declaration and concluded that Merritt discloses each of the claims below. Exhibit 1009 at Claim charts showing the anticipatory nature of Merritt are below. Claim Element 53. A programmable memory having stored thereon a plurality of sequences of instructions including sequences of instructions which, when executed by one or more processors Where Each Element is Found in Merritt Merritt discloses a programmable memory having stored thereon a plurality of sequences of instructions including sequences of instructions. For example, Merritt discloses an image communications sessions manager that has a programmable memory having stored thereon a plurality of sequences of instructions. For example, Merritt provides that the image communications session manager must include memory 10

14 Claim Element cause one or more electronic devices to: 53[a]. receive a video file in a native playback format; Where Each Element is Found in Merritt storage devices and one or more programmable computers or workstations. Id., 4:8-14. A system is disclosed which enables a multitude of dissimilar end-system devices, appliances, and platforms to interchange image information. The inventive method utilizes a directory database of end-user profiles, a session manager, a conversion manager, individual conversation processors, a queuing database, and a store-and-forward file-folder database. Merritt, Abstract. Merritt discloses a programmable memory having stored thereon a plurality of sequences of instructions including sequences of instructions which, when executed by one or more processors cause one or more electronic devices to receive a video file in a native playback format. For example, in the summary of the invention, Merritt explains that a file is received by a network-based image processing system in a native playback format: [a] communication of an originating image from a calling party to a called party is diverted to the network-based image processing system. The network-based image processing system ascertains whether the originating image file format and protocol matches the called party preferred file format and protocol, which is stored in the data base. Id., 2:1-7 (emphasis added). Merritt discloses the reception of the file in Fig. 4B, which depicts an originating image being sent from calling device (30) to the image communications session manager (22), as shown below. 11

15 Claim Element Where Each Element is Found in Merritt Fig. 4B (emphasis added). Fig. 1B also discloses the image communications session manager receiving an image file in a native playback format. The specification explains that in step 101, a calling party 18 initiates an image communication to called part 20. This communication arrives at the network image processing node 12 (step 103), and the originating party s sending file format and protocol is compared to the preferred profile for the terminating party through a look-up procedure in the network-based database 14 (step 105). Id., 3:8-15 (emphasis added). Merritt also explains that the received file can be a video file: For example, Merritt states that the system may support myriad image media (e.g., facsimile, video, graphics, etc.), as well as multiple formats of any given medium, and may convert between different formats of the same medium and between formats of different media as required to provide the preferred or optimum format and/or protocol for receiving the image at the endpoint. Id., 10:18-24 (emphasis added). Dialable video services may include conversions 12

16 Claim Element Where Each Element is Found in Merritt among various video standards and among different video performance levels. A specific example is a teleconferencing application in which a 64 Kb/sec codec at one location needs to connect to a codec at another location that adheres to another video standard, say MPEG (Motion Picture Experts Group) at 1.5 MB/sec. Id., 8:50-56 (emphasis added). Additional disclosure of the programmable memory receiving a file: FIG. 3B illustrates the signaling which occurs when a calling subscriber initiates an image communication with an image file match to the called device, and wherein the communication occurs using the store-and forward mode. As discussed above, the store-and-forward mode may be selected by the calling party, Id., 6: [b]. convert the video file to a native playback format usable by a playback device; and FIG. 5 illustrates the information flow which occurs when the originating image does not match the preferred format and/or protocol of the terminating device, and the file cannot be converted by the nodal image processor. In such an instance, as above, the communications session manager 22 first receives the originating image communication, and queries the image profile database 24, determining that a conversion is required. Id., 7: Merritt discloses converting the video file to a native playback format usable by a playback device. For example, in the summary of the invention, Merritt provides that the network-based image processing system converts the file to the format usable by the called party: A communication of an originating image from a calling party to a called party is diverted to the network-based image processing system. The network-based image processing system ascertains whether the originating image file format and protocol matches the called party 13

17 Claim Element Where Each Element is Found in Merritt preferred file format and protocol, which is stored in the data base. If there is no match, the processing system appropriately converts the originating image file to the format and protocol of the called party. Id., 2:1-9 (emphasis added). Merritt also provides that a server in the network compares the format of the originally transmitted file to the capabilities of the receiving station and performs conversion if necessary: The network service uses the information about the originally transmitted image (i.e., format and/or protocol, and preferably also image type information) and the capabilities (and possibly also preferences) of the receiving station to select the best possible match or preferred image format and/or protocol from among the image file formats and/or protocols that are supported by the receiving station. The network performs any transcoding or image transformations that are necessary. Id., 10:44-52 (emphasis added). Merritt explains that when the format of the received file does not match the format of the called device, the image communications session manager converts the received file to a format usable by the called device: The image communications session manager 22 then routes the originating image to the image format and protocol conversion process controller 26 which, in turn, routes the image data to an appropriate conversion processor. The conversion process controller 26 selects an appropriate conversion processor based on factors such as functionality, as well as availability and load balancing (e.g., queue management). Originating image data that has been converted is then routed to the called device via the conversion process controller 26 and the image 14

18 Claim Element Where Each Element is Found in Merritt communications session manager 22. Id., 7: As noted in the analysis for claim 53, element (a), Merritt provides that the converted file can be a video file. Additional disclosure of converting the received file: If the originating and terminating image file formats do not match, however, then the network-based service will invoke and attach image converter server 16 which will perform the necessary file format and protocol conversions (step 109), followed by establishing a connection to the called party (step 111) for communicating the converted file. Id., 3:18-23 (emphasis added). 53[c]. allow a user to download the video file to a playback device for subsequent use at a time specified by the user. The image file format conversion server converts the calling party image file to the acceptable or preferred image file format of the called party, depending on the option(s) selected by the calling party. This server preferably includes conversion control processor 26 and one or more conversion processors 27 1, 27 2, n. Id., 5:12-17 (emphasis added). Merritt discloses allowing a user to download the video file to a playback device for subsequent use at a time specified by the user. Merritt provides that the converted video file can be either sent directly to the second device or stored and made available for the second device to download. For example, Merritt discloses a store-and-forward mode for which the image communications session manager outputs the converted file to a session storage device and notifies the called user that the file is available for download. Merritt explains that the converted data is output to the session storage device 28 (FIG. 4B), and the image communication session manager 22 then initiates a 15

19 Claim Element Where Each Element is Found in Merritt communication to the called device (e.g., voic or e- mail) indicating that a file has been stored. Id., 7: Merritt further describes the store-and forward mode in reference to Fig. 3B. Merritt explains that instead of sending the file directly to the called device, the image communications session manager sends the file to the session storage device for storage and notifies the called device that the file is available for download: However, instead of immediately establishing a connection to the called device, the image communications session manager establishes a connection from the calling device to the session storage device which stores the converted image data. The image communications session manager then initiates a communication, by voic and/or for example, to the called device station using a station identifying number (e.g., phone number) stored in the image profile database 24. This communication indicates that an image file is stored at the image nodal processor. Id., 6: Alternatively, Merritt discloses the image communications manager communicating the converted file directly to the called device. Merritt explains that the [o]riginating image data that has been converted is then routed to the called device via the conversion process controller 26 and the image communications session manager 22. Id., 7: As noted in the analysis for claim 53, element (a), Merritt provides that the transmitted image can be a video. Additional disclosure of allowing a user to download the video file: If there is no match, the processing system appropriately 16

20 Claim Element 54. The programmable memory of claim 53 wherein the plurality of sequences of instructions further comprise instructions which, when executed by one or more processors cause one or more electronic devices to determine at least one native playback format compatible with the playback device. Where Each Element is Found in Merritt converts the originating image file to the format and protocol of the called party. The image file is then communicated to the third-party. Merritt, 2:4-10 (emphasis added). If the originating and terminating image file formats do not match, however, then the network-based service will invoke and attach image converter service 16 which will perform the necessary file format and protocol conversions (step 109), followed by establishing a connection to the called party (step 111) for communicating the converted file. Id., 3:18-23 (emphasis added). Merritt discloses the programmable memory of claim 53 wherein the plurality of sequences of instructions further comprise instructions which, when executed by one or more processors cause one or more electronic devices to determine at least one native playback format compatible with the playback device. Merritt provides that the network-based image processing determines the format capabilities of the receiving party either by querying the receiving party or by looking up the receiving party s compatible formats in a table. For example, Merritt provides that the network-based image processing system can determine the native playback format compatible with the receiving device from an image profile database. Merritt explains that this database contains a multiparameter field for each subscriber, the elements of which describe the image file formats and protocols that can be accepted by this subscriber, as well as the preferred file format and protocol. Id., 4: Once a file is received, the image communications session manager 22 accesses the image profile database 24 to ascertain whether the originating image format and protocol matches that used or preferred by the called device. Id., 6:28-31 (emphasis added). 17

21 Claim Element Where Each Element is Found in Merritt Merritt also provides that [i]f the called party is not a subscriber, then the network may obtain the preferred format and protocol by prompting the called party. Id., 9:9-11 (emphasis added). Additional disclosure of determining at least one native playback format compatible with the playback device: The network-based image processing system ascertains whether the originating image file format and protocol matches the called party preferred file format and protocol, which is stored in the data base. Id., 2:4-8. In step 101, a calling party 18 initiates an image communication to called party 20. This communication arrives at the network image processing node 12 (step 103), and the originating party s sending file format and protocol is compared to the preferred profile for the terminating party through a look-up procedure in the network-based database 14 (step 105). Id., 3:8-14. The image communications session manager 22 accesses the image profile database 24 to ascertain whether the originating image format and protocol matches that used preferred by the called device. Id., 6: For instance, if the called party is not a subscriber, then the network may obtain the preferred format and protocol by prompting the called party. Id., 9:9-11. The receiving party may have established with the network service a profile that preferably specifies which formats (e.g., including compression schemes) it supports, as well as its capabilities and/or preferences in terms of other image parameters, such as resolution, number of colors, etc. Id., 10:

22 Claim Element 56. The programmable memory of claim 53 wherein the native playback format of the video file is from the group comprising: analog, JPEG, GIF or A VI. 59. The programmable memory of claim 53 wherein the playback device is a wireless telephone. Where Each Element is Found in Merritt Merritt discloses the programmable memory of claim 53 wherein the native playback format of the video file is from the group comprising: analog, JPEG, GIF or A VI. It is unclear whether the native playback format refers to the native playback format before or after conversion. Regardless, Merritt discloses converting images to and from JPEG: By way of example, assuming a photographic image in a JPEG format (or other high-resolution format) is to be sent to a receiving station which supports a JPEG format (or other high-resolution formats) different from that of the original image and supports a G3 facsimile format, the original image should be converted to another JPEG format rather than the G3 fax format in order to provide the best resolution available for reproducing the photographic type image. On the other hand, a page of text originally in JPEG could be converted to G3 fax since speedy transmission would be the goal, with high resolution and image quality of secondary interest. Id., 10:63-11:7 (emphasis added). Merritt discloses the programmable memory of claim 53 wherein the playback device is a wireless telephone. For example, Merritt discloses: It can be understood that the present invention allows image communications among dissimilar end systems, as well as subscriber access to image processing services, including personal computers supporting a range of image protocols, image phones, facsimile machines, dialable video services, optical character recognition, media conversion/image translation services, and PDAs (i.e., personal digital assistants), and can be practiced in environments ranging from local premises-based communications to wide area communications on either private or public networks, Id., 8:37-49 (emphasis added). 19

23 Claim Element 64. The programmable memory of claim 53 wherein the plurality of sequences of instructions further comprise instructions which, when executed by one or more processors cause one or more electronic devices to convert the video file to JPEG format. 65. The programmable memory of claim 53 wherein the plurality of sequences of instructions further comprise instructions which, when executed by one or more processors cause one or more electronic devices to convert the video file from a first lossy native playback format to a second lossy native playback format. Where Each Element is Found in Merritt Merritt discloses the programmable memory of claim 53 wherein the plurality of sequences of instructions further comprise instructions which, when executed by one or more processors cause one or more electronic devices to convert the video file to JPEG format. For example, Merritt discloses: By way of example, assuming a photographic image in a JPEG format (or other high-resolution format) is to be sent to a receiving station which supports a JPEG format (or other high-resolution formats) different from that of the original image and supports a G3 facsimile format, the original image should be converted to another JPEG format rather than the G3 fax format in order to provide the best resolution available for reproducing the photographic type image. Id., 10:63-11:4 Merritt discloses the programmable memory of claim 53 wherein the plurality of sequences of instructions further comprise instructions which, when executed by one or more processors cause one or more electronic devices to convert the video file from a first lossy native playback format to a second lossy native playback format. For example, Merritt discloses: Merritt discloses converting to and from JPEG format and G3 facsimile format. Id., 10:63-11:7. With respect to limitation 53a, Merritt discloses receiving a video file in a 20

24 native playback format, under the plain and ordinary meaning of that term. In the district court litigation, Solocron has proposed that native playback format be construed as the arrangement of data within a file supported by a device for playback of audio or video. See Exhibit 1008 (Solocron s Opening Claim Construction Brief). For the same reasons discussed above, Merritt meets limitation 53a. For example, as discussed above, Merritt discloses receiving a video file in a format supported by the sending device, i.e., receiving a video file in an arrangement of data supported by a device for playback of audio or video. See Lanning Decl. at Solocron has also proposed that video file be construed as a file including a video clip or image. See Exhibit 1008 (Solocron s Opening Claim Construction Brief). Thus, according to Solocron s proposed construction, a video file can be either a video or a picture. For the same reason discussed above, Merritt discloses receiving a file including a video clip or image, such as an MPEG file. A person of ordinary skill in the art understands that an MPEG file is a video clip or image. See Lanning Decl. at With respect to limitation 53b, Merritt discloses converting the video file to a native playback format usable by a playback device, under the plain and ordinary meaning of that term. In the district court litigation, Solocron has proposed that 21

25 native playback format be construed as the arrangement of data within a file supported by a device for playback of audio or video. See Exhibit 1008 (Solocron s Opening Claim Construction Brief). For the same reasons discussed above, Merritt meets limitation 53b. For example, as discussed above, Merritt discloses converting the video file in a format supported by the receiving device, i.e., converting the video file to an arrangement of data supported by a device for playback of audio or video. Lanning Decl. at With respect to limitation 53c, Merritt discloses allowing a user to download the video file to playback device for subsequent use at a time specified by the user, under the plain and ordinary meaning of that term. In the district court litigation, Solocron has proposed that this limitation be construed as permit[ting] a user to download the video file. See Exhibit 1008 (Solocron s Opening Claim Construction Brief). For the same reasons discussed above, Merritt meets limitation 53c. For example, as discussed above, Merritt provides that the video file can be stored and made available for the second device to download. Thus, Merritt permits a user to download the video file. Lanning Decl. at With respect to claim 56, Merritt discloses that the native playback format of the video file is from the group comprising: analog, JPEG, GIF, or AVI, under the plain and ordinary meaning of that term. In the district court litigation, 22

26 Solocron has proposed that the native playback format be construed as the native playback format of the received video file, i.e., the incoming native playback format, prior to any conversion by the programming executed by the claimed electronic device. See Exhibit 1008 (Solocron s Opening Claim Construction Brief). For the same reasons discussed above, Merritt meets limitation 56. For example, as discussed above, Merritt discloses the incoming native playback format, prior to conversion, can be a JPEG. Lanning Decl. at With respect to claim 59, Merritt discloses the programmable memory of claim 53, wherein the playback device is a wireless telephone. As noted above, Merritt discloses that the playback device can be a PDA. A person of ordinary skill in the art at the relevant time would know that a PDA could be a wireless telephone. Lanning Decl. at Indeed, Solocron s 759 specification provides that device 20 may be a PDA capable of making wireless telephone calls. 759 Patent at 3: With respect to claim 65, Merritt discloses converting from one lossy format to another lossy format. Merritt discloses converting to and from JPEG and G3, both of which are lossy formats. Lanning Decl. at Merritt also explains that its invention could be used to convert to and from any file type known to 23

27 people of ordinary skill in the art. For example, claim 11 provides that the network image processing system converts between arbitrary image formats. Merritt, 14: The specification similarly provides that the image may be in any of multiple formats of an arbitrary medium. Merritt, 10: Thus, a person of ordinary skill in the art would understand that Merritt could be used to convert between any known video formats, including lossy formats. Lanning Decl. at B. Claim 59 is Obvious over Merritt Petitioners argue in the alternative that it would be obvious to a person of ordinary skill in the art to modify Merritt for use with a wireless telephone. If a person of ordinary skill can implement a predictable variation, 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Using Merritt to receive video files from a wireless telephone rather than a wired telephone is a predictable variation. Merritt s image communications session manager is an intermediate server in a communications network. This server is agnostic as to whether the communicated image is 24

28 received from a wired or wireless telephone. As Merritt states, Merritt s invention can be used in any type of wide area communications network. It would be obvious to a person of ordinary skill in the art to use Merritt s intermediate server to convert images received from both wired and wireless telephones. Lanning Decl. at C. Claims 53, 54, and 59 Are Anticipated by Gaffney Three years before Mr. Shanahan filed his first patent application and 10 years before he filed the 759 patent, Telefonaktiebolaget LM Ericsson ( Ericsson ), one of the leading telecommunications infrastructure developers in the world, filed an international patent application for a server that performs video file format conversion. See Exhibit International Publication Number WO98/19438 was filed on October 28, 1996 and published on May 7, Thus Gaffney is prior art under 35 U.S.C. 102(b). Gaffney is directed to a server that receives a video file from a first device, stores the video file in a message store, translates the format of the message to a format compatible with the capabilities of a second device, and sends the converted file to the second device. In particular, Gaffney discloses a wireless telephone transmitting a message to a system including a translation unit and message store, as shown in Fig. 1 from the patent below. 25

29 Gaffney, Fig. 1 (emphasis added). The system 100 receives the video file from the wireless telephone and the translation unit 150 translates it from at least one first media format into at least one second media format if the terminals of the originator and the recipient of a particular multimedia message have different message generation and message presentation capabilities.... Id. at 9: The message store 130 keeps copies of all messages sent to and from the messaging system. Id. at 9:6-8. [W]hen a user in the messaging system wishes to review, edit or delete, i.e. act upon, a specific multimedia message which is held 26

30 in the multimedia message store he/she contacts the messaging system from an arbitrary terminal connected to any telecommunication network. Id. at 5:3-8. As will be described in more detail below, Gaffney discloses that the received file may be a video file and that the sender and receiver of the file can be wireless telephones. Id. at 9:25-28; 8:24-9:2. Mr. Lanning has included an invalidity analysis of Gaffney in his expert declaration and concluded that it discloses each of the claims below. Exhibit 1009 at Gaffney anticipates claims 53 and 59 of the 759 patent as indicated by the chart below: CLAIM ELEMENTS 53. A programmable memory having stored thereon a plurality of sequences of instructions including sequences of instructions which, when executed by one or more processors cause one or more electronic devices to: 53[a]. receive a video file in a native playback format; WHERE EACH ELEMENT IS FOUND IN GAFFNEY Gaffney discloses a programmable memory having stored thereon a plurality of sequences of instructions. Gaffney discloses a system that includes a translation unit and message store that transcode and save received files. The translation unit 150 translates the received file from at least one first media format into at least one second media format if the terminals of the originator and the recipient of a particular multimedia message have different message generation and message presentation capabilities.... Gaffney, 9: The message store 130 keeps copies of all messages sent to and from the messaging system. Id. at 9:6-8. Thus, Gaffney discloses a programmable memory having stored thereon a plurality of sequences of instructions. Gaffney discloses receiving a video file in a native playback format. First, the abstract in Gaffney explains that a file is transmitted across a communications network and received by an in/out interface. Abstract ( An incoming 27

31 CLAIM ELEMENTS WHERE EACH ELEMENT IS FOUND IN GAFFNEY message is transmitted to an in/out interface via a transport network. ). Thus, Gaffney discloses receiving a file. Second, Gaffney explains that the incoming message is translated from at least one first media format into at least one second media format.... Id., 9:10-15 (emphasis added). Thus, Gaffney discloses receiving a file in a native playback format. Third, Gaffney provides that the received file can be a video file. Id., 9:25-28 ( The multimedia message (M) can be anything from an ordinary telephone call in PSTN to a multimedia mail message including hypertexts, voice messages, pictures, and video sequences ) (emphasis added). Thus, Gaffney discloses receiving a video file in a native playback format. Additional support for receiving a video file in a native playback format: 53[b]. convert the video file to a native playback format usable by a playback device; and A multimedia message (M) is then generated in the user terminal and sent along with a destination address (A.sub.x) to the system (100) via the accessing network (200) and the user access interface (120). Id., 14: Gaffney discloses converting the video file to a native playback format usable by a playback device. For example, Gaffney s abstract provides that the received message is stored in a message store, translated in a translation unit into a format adapted to the presentation capabilities of receiver s current terminal and delivered to the receiver over a user access interface.... Id., Abstract (emphasis added). Gaffney further explains that [a] translation unit (150) translates multimedia messages from at least one first media format into at least one second media format if 28

32 CLAIM ELEMENTS WHERE EACH ELEMENT IS FOUND IN GAFFNEY the terminals of the originator and the recipient of a particular multimedia message have different message generation and message presentation capabilities.... Id., 9:10-15 (emphasis added). As noted in the analysis for claim 53, element (a), Gaffney provides that the multimedia message can be a video. Additional support for converting the video file to a native playback format usable by a playback device: The control unit (160) compares the message format given by the originating terminal and the message format used in the network to which the destination address (A.sub.x) belongs. Id., 14: [c]. allow a user to download the video file to a playback device for subsequent use at a time specified by the user. After that the presentation capabilities at the particular user location are established through a dynamic dialogue between the user and the messaging system. Then the multimedia message, translated into a format best possibly suited for the given presentation capabilities, is delivered from the messaging system to the user via the above mentioned network. Id., 5:8-15. Gaffney discloses allowing a user to download the video file to a playback device for subsequent use at a time specified by the user. Gaffney provides that the converted video file can be either sent directly to the user or it can be stored and made available for the user to download. Gaffney explains that the converted message can be delivered directly to the user. For example, Gaffney s abstract provides that a multimedia message is received and stored in the message store, translated in the translation unit, and then delivered to the destination through the in/out interface and an appropriate transport network. Id., abstract. 29

33 CLAIM ELEMENTS WHERE EACH ELEMENT IS FOUND IN GAFFNEY Similarly, Gaffney states in the specification that a message can be sent to the system, converted, and then transmitted to the receiver: First, the multimedia message generation capabilities of the terminal are established through a dynamic dialogue between the user and the messaging system. Second, a multimedia message is created by the user and sent to the messaging system. Third, the message is stored in the multimedia message store. Fourth, if the message or parts of the message need and can be translated into a format which is ideally adapted to the message presentation capabilities given by the transmission network to which the receiver is connected and by the protocol used by the message channel which is delivering the message such a translation is performed on relevant portions of the message. Finally, the message or the translated message is transmitted to the receiver. Id., 5:24-6:5 (emphasis added). Alternatively, Gaffney provides that the message can be stored in a message store and later downloaded at a time specified by the user. Gaffney states that the message store 130 keeps copies of all messages sent to and from the messaging system. 9:6-10. [W]hen a user in the messaging system wishes to review, edit or delete, i.e. act upon, a specific multimedia message which is held in the multimedia message store he/she contacts the messaging system from an arbitrary terminal connected to any telecommunication network. Then the multimedia message, translated into a format best possibly suited for the given presentation capabilities, is delivered from the messaging system to the user via the above mentioned network. Id., 5:3-8 (emphasis added). As noted in the analysis for claim 53, element (a), Gaffney provides that the multimedia message can be a video. 30

34 CLAIM ELEMENTS WHERE EACH ELEMENT IS FOUND IN GAFFNEY Additional disclosure of allowing a user to download the video file to a playback device for subsequent use at a time specified by the user: The messaging system of the present invention sees to it that every multimedia message is delivered to the intended recipient of the message regardless of his/her current location. Id., 4: The programmable memory of claim 53 wherein the plurality of sequences of instructions further comprise instructions which, when executed When the user (u) wishes to retrieve a particular multimedia message (M) from the multimedia message store (130) he/she contacts the messaging system (100) via the accessing network (200) and the user access interface (120). A dynamic dialogue (D) between the user (u) and the control unit (160) in the system (100) establishes the presentation capabilities of the current user terminal. The specific message (M) is then retrieved from the multimedia message store (130) by means of a third control signal (C.sub.3) from the control unit (160) to the multimedia message store (130) and sent to the message translation unit (150) for translation. The parts of the message (M) that need and can be translated into a media format which can be intelligibly presented at the user's (u) terminal are translated into such a format and the message parts that can be presented directly are passed through the unit (150) unchanged. The translation instructions are included in said second control signal (c.sub.2) sent from the control unit (160) to the message translation unit (150). Id., 13:3-20. Gaffney discloses the programmable memory of claim 53 wherein the plurality of sequences of instructions further comprise instructions which, when executed by one or more processors cause one or more electronic devices to determine at least one native playback format compatible with the playback device. For example, Gaffney provides that the translation system determines the capabilities of the user receiving the converted file: 31

35 CLAIM ELEMENTS by one or more processors cause one or more electronic devices to determine at least one native playback format compatible with the playback device. WHERE EACH ELEMENT IS FOUND IN GAFFNEY After that the presentation capabilities at the particular user location are established through a dynamic dialogue between the user and the messaging system. Then the multimedia message, translated into a format best possibly suited for the given presentation capabilities, is delivered from the messaging system to the user via the above mentioned network. Id., 5:8-15 (emphasis added). 59. The programmable memory of claim 53 wherein the playback device is a wireless telephone. The control unit (160) compares the message format given by the originating terminal and the message format used in the network to which the destination address (A.sub.x) belongs. Id., 14: Gaffney discloses the playback device is a wireless telephone. For example, Gaffney provides that the playback device can be a mobile phone or a cordless phone: The terminal (400) can be any kind of terminal with a connection to at least one of the above mentioned accessing networks (200). Hence, the terminal (400) may, for instance, be a desktop computer or a workstation (410), a laptop computer (420) connected to a digital mobile telephone through a PCMCIA card or equipped with a radio modem, a personal digital assistant, personal intelligent communicator or network based knowledgable assistant (430), a digital or analogue mobile telephone (440), a regular desk phone, cordless telephone (450) or a facsimile machine (460). Id., 4: With respect to limitation 53a, Gaffney discloses receiving a video file in a native playback format, under the plain and ordinary meaning of that term. In the district court litigation, Solocron has proposed that native playback format be 32