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 CELLCO PARTNERSHIP D/B/A VERIZON WIRELESS AT&T MOBILITY LLC Petitioners v. SOLOCRON MEDIA, LLC Patent Owner Patent No. 7,319,866 PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,319,866 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... 7 A. Real Party In Interest Under 37 C.F.R. 42.8(b)(1)... 7 B. Related Matters Under 37 C.F.R. 42.8(b)(2)... 7 C. Lead and Back-Up Counsel Under 37 C.F.R. 42.8(b)(3)... 8 D. Service Information Under 37 C.F.R. 42.8(b)(4)... 8 E. Grounds for Standing Under 37 C.F.R (a)... 8 F. Fees Under 37 C.F.R III. IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R (B)... 9 IV. HOW THE CHALLENGED CLAIM IS TO BE CONSTRUED UNDER 37 C.F.R (B) (3) V. THE PATENT AND ITS PROSECUTION HISTORY A. Prosecution History of the 866 Patent B. The 866 Patent Suffers From the Same Deficiencies That the Inventor Identified in the Prior Art VI. THE EARLIEST PRIORITY DATE OF CLAIM 10 IS MARCH VII. DETAILED EXPLANATION AND SUPPORTING EVIDENCE UNDER 37 C.F.R (B)(4) AND (B)(5) A. Polyphonic Audio Files Cannot Form the Basis for Patentability B. Claim 10 is Anticipated by the Nokia 9110 User s Manual C. Claim 10 Is Obvious In View Of 9110 UM And 9110 FAQ D. Claim 10 Is Obvious Over 9110 UM And 9110 FAQ in View of Nikkei.. 34 i

3 E. Claim 10 Is Obvious Over 9110 UM And 9110 FAQ in View of Perez F. Claim 10 Is Obvious Over 9110 UM And 9110 FAQ Combined With Nikkei And Perez G. Claim 10 is Obvious Over Rizet and Nikkei H. Claim 10 is Obvious in View of Rizet in Combination with Nikkei and either Perez or YMU I. Claim 10 is Obvious Over Rizet and Hosoda J. Claim 10 Is Obvious Over Isomursu, Lin, and Nikkei K. The Asserted References Are Not Cumulative At This Point VIII.CONCLUSION ii

4 TABLE OF AUTHORITIES Page(s) Cases Abbvie Inc. v. Mathilda & Terence Kennedy Inst. of Rheumatology, 764 F.3d 1366 (Fed. Cir. 2014)... 24, 33 Bayer Schering Pharma AG v. Barr Labs., Inc., 575 F.3d 1341 (Fed. Cir. 2009) Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560 (Fed. Cir. 1988)... 2 Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356 (Fed. Cir. 2006) Geo M. Martin Co. v. Alliance Mach. Sys. Int l LLC, 618 F.3d 1294 (Fed. Cir 2010) In re Index Sys., 576 F. App x 976 (Fed. Cir. 2014)... 2, 24 KSR Int l Co. v. Teleflex Co., 550 U.S. 398 (2007)... 2, 33, 36 Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157 (Fed. Cir. 2007)... 5, 36 Lockwood v. Am. Airlines, Inc., 107 F.3d 1565 (Fed. Cir. 1997) Monsanto Co. v. Mycogen Plant Sci., Inc., 261 F.3d 1356 (Fed. Cir. 2001) In re Mulder, 716 F.2d 1542 (Fed. Cir. 1983) iii

5 New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290 (Fed. Cir. 2002) In re NTP Inc., 654 F.3d 1268 (Fed. Cir. 2011) Pfizer Inc. v. Teva Pharms. USA, Inc., 460 F. Supp. 2d 659 (D.N.J. 2006) PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299 (Fed. Cir. 2008)... 7, 20, 32 Stored Value Solutions, Inc. v. Card Activation Techs. Inc., 499 F. App x 5 (Fed. Cir. 2012)... 9 Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358 (Fed. Cir. 2014) Symantec Corp. v. Computer Assocs. Int l, Inc., 522 F.3d 1279 (Fed. Cir. 2008) Voter Verified, Inc. v. Premier Election Solutions, Inc., 698 F.3d 1374 (Fed. Cir. 2012) iv

6 PETITIONERS EXHIBIT LIST Exhibit No. Exhibit 1001 Exhibit 1002 Exhibit 1003 Exhibit 1004 Exhibit 1005 Exhibit 1006 Description U.S. Patent No. 7,319,866 (the 866 patent) Complaint filed in Solocron v. Cellco Partnership et al. (Case No cv-1059) (E.D. Tex.) Copy of U.S. Provisional Patent App. 60/169,158, as filed Dec. 6, 1999 (downloaded from PAIR) Exhibit 1007 Copy of Prosecution History for the U.S. Patent No. 7,319,866 (downloaded from PAIR), including U.S. Patent App. 10/915,866 as filed Aug. 11, 2004 Exhibit 1008 Exhibit 1009 Exhibit 1010 Exhibit 1011 Exhibit 1012 Exhibit 1013 Exhibit 1014 Exhibit 1015 Prosecution History for the U.S. Patent No. 7,257,395 (U.S. Patent App. 10/223,200) (downloaded from PAIR) International Publication No. WO 98/25397, entitled Telecommunication Device and a Method for Providing Ringing Information, published June 11, 1998 ( Philips or Rizet ) v

7 Exhibit 1016 Exhibit 1017 Exhibit 1018 Exhibit 1019 Exhibit 1020 Exhibit 1021 Exhibit 1022 Exhibit 1023 Exhibit 1024 Exhibit 1025 Exhibit 1026 Exhibit 1027 Exhibit 1028 Declaration of Internet Archive and Copies of Various Websites Yamaha Sound Generator LSI YMU757, Yamaha News Release U.S. Patent No. 6,911,592, entitled Portable Telephony Apparatus With Music Tone Generator, filed July 26, 2000, issued June 28, 2005, to Futamase European Patent Application EP , entitled Portable Telephony Apparatus With Music Tone Generator, was published January 31, 2001 ( Futamase ) Exhibit 1029 U.S. Patent Application No. 2001/ Exhibit 1030 Exhibit 1031 Exhibit 1032 Excerpt from Harvard Dictionary of Music, Second Edition, Revised and Enlarged, Willi Apel, The Belknap Press of Harvard University Press, Cambridge MA, vi

8 Exhibit 1033 Exhibit 1034 Exhibit 1035 Exhibit 1036 Exhibit 1037 Exhibit 1038 Exhibit 1039 Exhibit 1040 Exhibit 1041 Exhibit 1042 Exhibit 1043 Exhibit 1044 Exhibit 1045 Exhibit 1046 Exhibit 1047 Exhibit 1048 Exhibit 1049 Exhibit 1050 Exhibit 1051 Final Decision dated April 21, 2014 in IPR Local Patent Rule 4-3 Statement filed in Solocron v. Cellco Partnership et al. (E.D. Tex.) (Case No cv-1059) Random House Webster s Unabridged Dictionary Encyclopedia Britannica YM3812 Chip Manual New Grove Dictionary of Music and Musicians Oxford Music Online MIDI Specification Standard MIDI File Specification General MIDI Specification ISO/IEC standard ( MP3 specification) WMA File Format Specification US 6,351,225 to Moreno U.S. Patent No. 6,496,692 ( the 692 patent ) vii

9 Exhibit Prosecution History, Reply to Office Action dated 5/4/2007 Exhibit 1053 Yamaha YMU757 Press Release, October 12, 1999 Exhibit 1054 Yamaha YMU757 Technical Manual, February 2000 Exhibit 1055 Analysis of WAV files provided in 1999 with Nokia 9110 Exhibit 1056 Exhibit 1057 Exhibit 1058 Exhibit 1059 Exhibit 1060 Exhibit 1061 Exhibit 1062 Exhibit 1063 Exhibit 1064 Exhibit 1065 Exhibit 1066 Exhibit 1067 Exhibit 1068 Exhibit 1069 Exhibit 1070 U.S. Patent No. 6,366,791, filed on June 17, 1999 and issued on April 2, 2002 ( Lin ) Declaration of Jari Valli Nokia 9110 User Manual, published at least as early as February 1, 1999 ( 9110 UM ) viii

10 Exhibit 1071 Solocron s Opening Claim Construction Brief from Solocron v. Cellco Partnership et al. (Case No cv-1059) (E.D. Tex.) Exhibit 1072 Exhibit 1073 Exhibit 1074 Exhibit 1075 Exhibit 1076 Exhibit 1077 Exhibit 1078 Exhibit 1079 Exhibit 1080 Exhibit 1081 Exhibit 1082 Exhibit 1083 Exhibit 1084 Exhibit 1085 Exhibit 1086 Exhibit 1087 Exhibit 1088 Certified translation of Chapters 2-3 of Nikkei Electronics U.S. Patent No. 7,088,990, filed October 30, 1998, and issued Aug. 8, 2006 ( Isomursu ) Japanese Patent Application No. H and certified translation ( Hosoda ) Declaration of John M. Strawn, Ph.D., and CV U.S. Patent No. 6,492,761, filed on January 20, 1998, issued on December 10, 2002 ( Perez ) Declaration of Erin Flaucher re Nokia 9110 with Exhibits 9110 Nokia.com web page archived May 8, 1999 for Frequently Asked Questions" ( 9110 FAQ ) Declaration of Internet Archive re Nokia Websites Declaration from Lisa Rowlinson de Ortiz and Attachments ix

11 Exhibit 1089 Exhibit 1090 Declaration of Henry Houh, Ph.D., and CV Exhibit 1091 Modtones Begin U.S. Tour on Verizon Wireless s Get it Now Service, September 23, 2002 Exhibit 1092 Motorola T720 With New Verizon Wireless Get it Now Service Helps Consumers Get Busy in Full Color, September 22, 2002 Exhibit 1093 AT&T Wireless Turns On the World s Capital, October 14, 2002 Exhibit 1094 Exhibit 1095 Exhibit 1096 Exhibit 1097 Exhibit 1098 Exhibit 1099 Exhibit 1100 Exhibit 1101 Exhibit 1102 Exhibit 1103 x

12 Petitioners Cellco Partnership d/b/a Verizon Wireless and AT&T Mobility LLC request inter partes review of claim 10 of U.S. Patent No. 7,319,866 ( the 866 patent ). Claim 10 relates to personalizing telephones with ringtones a concept that was known long before the earliest asserted priority date for claim 10. I. INTRODUCTION AND BACKGROUND This petition seeks review of the same claim as IPR , but is based on prior art from different time periods. The priority date for claim 10 depends upon the Board s evaluation of the term polyphonic audio files, which the inventor added to the 866 application in August months after the first applications to which the 866 patent claims priority ( the Priority Applications ). As explained in IPR , claim 10 is only entitled to an August 2004 priority date because the Priority Applications do not sufficiently disclose polyphonic audio files. See Exhibit 1035, Final Decision in IPR at 0008 (patent not entitled to the benefit of the filing date of [parent application] ). During prosecution, the patentee s sole support for polyphonic audio files was a citation in the Priority Applications to formats such as WAV and MIDI. Yet, even assuming the earliest asserted priority date, the prior art shows those WAV and MIDI ringtone file formats in explicit detail. The patentee cannot have it both ways: either the prior art identified herein invalidates claim 10 or claim 10 has a 2004 priority date and the prior art in IPR invalidates it. 1

13 Thus, even if the Board determines that file formats sufficiently disclose polyphonic audio files, the prior art in the present petition still invalidates claim 10 because: (a) that prior art teaches polyphonic audio files even under the narrowest construction of that term; (b) polyphonic audio files were at best an obvious, known variation; and (c) at a minimum, that prior art discloses as much as the Priority Applications (including, for example, WAV and MIDI files). See Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1569 (Fed. Cir. 1988) (recognizing that the prior art need only have the same level of technical detail as the asserted patent to be invalidating). Indeed, by 1999, the idea of polyphonic audio files was not novel and was at most an obvious variation of previous efforts. Polyphonic audio files cannot be a basis for patentability because there are only two categories of audio files: monophonic and polyphonic. This is the epitome of a finite number of identified, predictable solutions that preclude patentability. KSR Int l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007); see also In re Index Sys., 576 F. App x 976, 980 (Fed. Cir. 2014) (affirming Board decision of obviousness when only two solutions would have been realistically considered ). Adding polyphonic audio files is the mere substitution of one element [polyphonic files] for another known in the field [monophonic files], which merely yield[s] a predictable result[] and is therefore non-patentable. KSR, 550 U.S. at

14 Various industry publications dated before the earliest asserted priority date confirm this predictability. The industry was fully aware by 1999 that a normal evolution of technology was the use of polyphonic audio files as ringtones. Companies recognizing this included Nokia in Europe, as well as Yamaha and many others in Japan. The following figures from a Nikkei Electronics article (Exhibit 1074 at 0003, 0006) predating the earliest asserted priority date highlight this predictable evolution (with annotations by counsel): 3

15 Figure 2 (above) shows the evolution from [m]onophonic ringtone playback (current system) to [p]olyphonic ringtone playback (from end of 1999). Id. at As noted in Exhibit 1074, the evolution depended upon new technologies. One technology was to add polyphonic functions to mobile phones. Two evolutions of the sound functions on mobile phones will first start from mounting a function to simultaneously produce 3-4 sounds (chord playback function) (Figure 2) for playing ringtones Id. at ROHM Group and Yamaha respectively released LSIs which included polyphonic functionality. Id.; see also id. at 0003 ( to improve the sound quality of the ringing tones is to reproduce chords [and] simultaneously reproduce three to four sounds ). The Nikkei article was not presented to the Patent Office during prosecution. In Europe, the wireless industry also recognized the evolution toward polyphonic ringtones long before the Priority Application. Indeed, of its over 100 patent applications related to ringtones, Nokia has 17 separate patents and applications with an earlier filing date than the 866 patent. Nokia also included polyphonic WAV files with its well-known 9110 wireless phone released in Exhibit For example, the May 8, 1999 FAQ page of Nokia s website for the 9110 noted: WAV files can be downloaded from the Internet The WAV files can also be used as ringtones. Exhibit 1083 at 0004 (emphasis added). This squarely meets the patentee s statement in prosecution that WAV 4

16 files are polyphonic. No documents concerning the Nokia 9110 were considered by the Patent Office during prosecution. Separately, by September 1999, Yamaha had developed and was already selling a specialized chip ( the YMU757 ) referenced in the Nikkei article designed to be incorporated into mobile phones to provide ringtones which had polyphony of up to 4 sound[s] simultaneously. See Exhibit 1020 at [T]he YMU757, designed for mobile phones and PDAs, now allows the download and playback of user-selected sounds and melodies. Exhibit 1053 at Like the 9110, no YMU757 documents were considered during prosecution. This consistent pattern of industry evolution confirms that at best the patentee merely adapted an old idea using newer, known technology, which the Federal Circuit has recognized is another quintessential example of obviousness. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, (Fed. Cir. 2007) (patent claiming nothing more than the [prior art], updated with modern electronics that were common by the time of the alleged invention, was obvious). Against this backdrop of industry evolution, the Priority Applications did not advance the art. The Priority Applications did not mention polyphonic audio files or discuss any aspect related to polyphony. Exhibit Similarly, the Priority Applications assumed the existence of the infrastructure needed to transmit such ringtones such as wireless networks, and did not purport to 5

17 disclose any improvement to existing wireless networks. Simply put, the Priority Applications merely reiterate what was already recognized in the industry. The timeline of the inventor s addition of the term polyphonic audio files confirms that the Priority Applications did not advance the art. The inventor s applications on December 3, 1999, March 3, 2000, and August 16, 2002 did not discuss any aspect of polyphony. The inventor later submitted two amendments adding over sixty new claims on June 20, 2003 and June 24, 2003 neither of which referenced polyphony. Exhibit 1010 at , Just two weeks later, on July 8, 2003, the inventor submitted a third claim set devoted to polyphonic audio files. Id. at This new claim terminology only came after companies such as Nokia, Verizon, and AT&T had developed the technology and network infrastructure to commercialize polyphonic ringtones. Exhibits For example, in March 2002, Nokia touted that the Nokia 3510 ringtones are polyphonic downloaded with a WAP browser. Exhibit 1087 at Despite this significant industry development, claim 10 received only one substantive Office Action, and the Patent Office never made any written priority determination or provided any issuance explanation which occurred after a telephonic interview of which there is no written record detailing the allowance reasons. The inventor distinguished the prior art based upon polyphonic audio 6

18 files without ever explaining why the 866 patent disclosed polyphonic audio files but the prior art (allegedly) did not. Exhibit 1007 at Finally, the fact that polyphonic audio files were an obvious evolution in the wireless industry does not lead to the conclusion that the Priority Applications disclosed polyphonic audio files. Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed. PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008) (internal citations omitted). The standards are different for obviousness and written description sufficient to claim priority. Polyphonic audio files may have been obvious, but they surely were not disclosed at all much less sufficiently in the Priority Applications. For the reasons below, there is a reasonable likelihood that claim 10 is unpatentable in light of the prior art, warranting inter partes review. II. NOTICES, STATEMENTS AND PAYMENT OF FEES A. Real Party In Interest Under 37 C.F.R. 42.8(b)(1) The real parties in interest are Cellco Partnership d/b/a Verizon Wireless and AT&T Mobility LLC. B. Related Matters Under 37 C.F.R. 42.8(b)(2) Solocron sued the following entities (and Petitioners) for infringement of the 866 Patent in the Eastern District of Texas on December 6, 2013 (Case No. 2:13-7

19 cv-01059) ( 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: 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 addresses above. Petitioners consent to electronic service by at: kanderson@wileyrein.com, fchapman@wileyrein.com, sfelder@wileyrein.com, shejny@mckoolsmith.com, tstevenson@mckoolsmith.com, and nmathews@mckoolsmith.com. E. Grounds for Standing Under 37 C.F.R (a) Petitioners certify pursuant to 37 C.F.R (a) that the 866 patent is available for inter partes review, and that Petitioners are not barred or estopped 8

20 from requesting inter partes review based on the grounds herein. Petitioners certify this petition is filed within one year of the service of the Complaint above. F. Fees Under 37 C.F.R Petitioners concurrently submit fees of $23,000. If more fees are necessary to accord this Petition a filing date, authorization is granted to charge the same to Deposit Account No with reference to Attorney Docket No III. IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R (b) Petitioners request inter partes review of claim 10, in view of the references identified below. All references are prior art under 35 U.S.C. 102(a) or (b): UM (Exhibit 1070), User s Manual for Nokia 9110, published no later than February 1, See Exhibit ; Exhibit The 9110 UM was not considered by the Office during prosecution. The 9110 UM is properly considered prior art under at least 35 U.S.C. 102(a) and/or 102(b). The 9110 UM bears a copyright date of 1998 (Exhibit 1070 at 0002), and was distributed to customers on a CD with the 9110 by no later than February 1, Exhibit ; Exhibit ; Stored Value Solutions, Inc. v. Card Activation Techs. Inc., 499 F. App x 5, 14 (Fed. Cir. 2012) (user manual was printed publication given that it was dated prior to the critical date and was in fact distributed to customers who purchased the software prior to the critical date). The 9110 UM was also available on the internet no later than 9

21 February 1, 1999, such that any person interested and ordinarily skilled would have been able to easily locate it. Exhibit ; Exhibit Thus, the 9110 UM is prior art under at least 35 U.S.C. 102(a). 2. Nokia 9110 FAQ (Exhibit 1083), published on the internet at least as early as May 8, Exhibit and The Nokia 9110 FAQ is thus an Internet publication[s] that [is] considered to be printed publication[s] within the meaning of 35 U.S.C. 102(a) and (b). MPEP 2128; see also Voter Verified, Inc. v. Premier Election Solutions, Inc., 698 F.3d 1374, (Fed. Cir. 2012) (online article that had been available on a public website by the critical date qualified as a printed publication under 35 U.S.C. 102(b)); Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, (Fed. Cir. 2014) (post on an internet newsgroup was a printed publication). Moreover, the PTO has long accepted the Wayback Machine as a proper means for establishing a website as prior art. See IPR , Paper 66, at (accepting web sites as printed publications and citing cases accepting Wayback Machine materials as sufficient authentication). The 9110 FAQ was not considered by the Office during prosecution. 3. Rizet (Exhibit 1014), Int l Pub. No. WO 98/25397, entitled Telecommunication Device and a Method for Providing Ringing Information, published on June 11, Rizet was not considered during prosecution. 10

22 4. Perez (Exhibit 1081), U.S. Patent No. 6,492,761, filed Jan. 20, 1998 and issued Dec. 10, Perez was not considered by the Office during prosecution. 5. Nikkei (Exhibit 1074), Music is From Ringing Tones, Game is from Characters, Nikkei Electronics, November 15, Nikkei Electronics is a biweekly magazine published since See printmedia/ne.html. This issue was available in hardcopy form in Japan in November Exhibit In the United States, Nikkei was publicly available at the University of California, Berkeley as early as January Exhibit If the patentee seeks to show a priority date prior to March 2000, Petitioners expect to be able to introduce further evidence that Nikkei was available in hardcopy form in Japan in November Thus, Nikkei is prior art under 35 U.S.C. 102(a). Nikkei was not considered by the Office during prosecution. Additionally, the Board should consider Nikkei as evidence of simultaneous invention that shows the level of ordinary skill in the art in Independently made, simultaneous inventions, made within a comparatively short space of time, are persuasive evidence that the claimed apparatus was the product only of ordinary mechanical or engineering skill. Geo M. Martin Co. v. Alliance Mach. Sys. Int l LLC, 618 F.3d 1294, 1305 (Fed. Cir 2010) (holding that level of skill in the art was shown by a reference dated a year after the earliest 11

23 asserted priority date and using the contents of the reference to invalidate claims under obviousness). 6. Isomursu (Exhibit 1075), U.S. Patent No. 7,088,990, filed October 30, 1998 as a continuation of No. 08/804,236 (filed February 20, 1997), and issued August 8, Isomursu was considered by the Office during prosecution, but not under Solocron s current construction for polyphonic audio files. 7. Lin (Exhibit 1063), U.S. Patent No. 6,366,791, filed June 17, 1999 and issued on April 2, Lin was considered by the Office during prosecution, but not under Solocron s current construction for polyphonic audio files. 8. Hosoda (Exhibit 1077), Japanese patent application publication No. H , was filed on February 25, 1998, and published September 7, Hosoda was not considered by the Office during prosecution. 9. YMU757 (Exhibits 1020, 1053). Exhibits 1020 and 1053, published in September 1999 and October 1999, respectively, individually and collectively describe Yamaha s specialized YMU757 computer chip. YMU757 was not considered by the Office during prosecution. As explained in detail below (including relevant claim constructions), claim 10 is invalid on the following grounds: Ground 1: invalid under 35 U.S.C. 102 as anticipated by Nokia 9110 UM; Ground 2: invalid under 35 U.S.C. 103 as obvious over 9110 UM in view of 9110 FAQ; Ground 3: invalid under 35 U.S.C. 12

24 103 as obvious over 9110 UM, 9110 FAQ and Nikkei; Ground 4: invalid under 35 U.S.C. 103 as obvious over Nokia 9110 UM, 9110 FAQ and Perez; Ground 5: invalid under 35 U.S.C. 103 as obvious over Nokia 9110 UM, 9110 FAQ, Nikkei and Perez; Ground 6: invalid under 35 U.S.C. 103 as obvious over Rizet in combination with Nikkei; Ground 7: invalid under 35 U.S.C. 103 as obvious over Rizet, Nikkei, and Perez or YMU757; and Ground 8: invalid under 35 U.S.C. 103 as obvious over Rizet in combination with Hosoda; and Ground 9: invalid under 35 U.S.C. 103 as obvious over Lin, Isomursu and Nikkei. IV. HOW THE CHALLENGED CLAIM IS TO BE CONSTRUED UNDER 37 C.F.R (b) (3) In this proceeding, claim terms are given their broadest reasonable interpretation consistent with the specification and prosecution history. See Office Patent Trial Practice Guide, 77 Fed. Reg , (Aug. 14, 2012). The broadest reasonable interpretation of the relevant claim terms is as follows: Polyphonic audio file has no written support in the specification or the provisional application, yet appears in claim 10. Petitioners propose that polyphonic audio file be construed to mean an audio file with content that produces two or more tones at the same time. See Exhibit and supporting analyses id This construction relies on evidence from 1999 to 2004 of the ordinary 13

25 meaning of polyphonic content. Polyphonic content is distinguished from monophonic content, which is a single tone such as a person sequentially playing an individual key on a piano. Id. 19. By contrast, with polyphonic content, two or more tones are produced at the same time. Id. 20; Monophony or polyphony are known as elements of music. Id Extrinsic sources confirm this definition. Id (citing Exhibits 1031, 1041, 1050). Solocron s Litigation construction of audio file having more than one sound does not distinguish between monophonic and polyphonic content. Exhibit 1038 at Defendants Litigation construction of a synthesized representation of an audio composition having more than one sound is not appropriate for an IPR. Id. While the synthesized representation language is appropriate under a district court s Markman approach, such a construction is not appropriate under the broadest reasonable interpretation. Additionally, the lack of simultaneous in the Defendants construction reflects an attempt to narrow the issues to the district court a decision which does not change the appropriate construction here. Regardless of which construction the Board uses (Petitioners construction, Solocron s Litigation construction, or the Defendants Litigation construction), claim 10 is invalid under the prior art for the reasons stated below. To the extent that the Board utilizes Solocron s construction (which provides no basis to distinguish between monophonic and polyphonic content), claim 10 is even more 14

26 invalid over the prior art. Enhanced performance speaker capable of providing a substantially full range of audio sounds is never described with any objective criteria in the specification, and is the type of subjective term that the Federal Circuit has found indefinite. This phrase does not define what the extent of the range is or of what type of measurement the range could be. Many aspects of sound have ranges including amplitude, frequency, phase response, dispersion, distortion, and ranges of linearity or uniformity for many of those aspects. Exhibit The 866 patent provides no guidance as to what range is claimed. 1 Id. For purposes of this IPR, the Board uses the broadest reasonable interpretation and Petitioners provide such a construction which: (a) attempts to construe this indefinite term and (b) reflects the usage in claim 10 which recites: an enhanced performance speaker capable of providing a substantially full range of audio sounds from the selected polyphonic audio file. In this phrase, the capabilities of the enhanced performance speaker appear to be tied to the contents of the selected polyphonic audio file. Therefore, for this IPR, the 1 For these reasons, Solocron s Litigation construction of the full range of sounds within human hearing, or a range of sounds not appreciably smaller than that range is unsupported. Exhibit 1038 at Solocron s construction gives no meaning to the claim terms enhanced performance, and provides no meaningful guidance on the bounds of the limitation. 15

27 enhanced performance speaker should be construed to mean a speaker that is capable of playing the audio sounds from the selected polyphonic audio file. The preamble should be construed to be not limiting. A preamble is not limiting... where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention. Symantec Corp. v. Computer Assocs. Int l, Inc., 522 F.3d 1279, 1288 (Fed. Cir. 2008) (internal citations and quotations omitted). The preamble recites a classic intended use ( searching, selecting, and programming a ringtone for use as an indicia of an incoming communication ), and fits comfortably within this Federal Circuit case law. If searching is construed, it should be construed to be the same as browsing because of parallel language used in the preamble ( searching for and selecting ) and the claim body ( browse and select ). V. THE PATENT AND ITS PROSECUTION HISTORY The 866 patent was filed on August 11, 2004, and purports to claim priority back to December Exhibit The figures of the 866 patent show that the original disclosure was amorphous and bears little resemblance to the ringtone matter the patentee sought to capture five years later. Id. at Figures 4A-4B. In contrast, claim 10 purports to cover a wireless telephone that includes a communications link for connecting to a database storing polyphonic audio files, a display screen, an enhanced speaker, processing circuitry, and programmable 16

28 memory. Id. at 14: Several claimed features are barely described or not even mentioned anywhere in the 866 specification. Most notably, neither polyphonic audio files nor any recitation of polyphony or anything related to that concept can be found in the 866 specification. See generally Exhibit A. Prosecution History of the 866 Patent The prosecution history of the 866 patent is significant because it relates to two key issues: how the inventor allegedly disclosed polyphonic audio files and the related aspect of how the inventor distinguished prior art on a basis not found in the 866 specification. The Examiner issued only a single substantive Office Action, and never performed any analysis of the meaning of polyphonic audio file or whether this term was actually disclosed in the specification. The sole support that the inventor identified for polyphonic audio files was the following statement in the parent application (No. 09/518,712): support for the polyphonic feature may be found on page 6, lines and page 8, lines as MP3, WAV, MPEG, and many MIDI files are polyphonic audio files. Exhibit 1010 at As set forth below, these same file formats are disclosed in a number of prior art references. The manner in which the inventor distinguished the art is also relevant because the specification does not provide the teachings that the prior art allegedly 2 As Dr. Strawn explains, this statement is incorrect. Exhibit ,

29 lacked. The Examiner rejected claims on the basis of two references, Lin and Isomursu. Exhibit 1007 at In response, the patentee appeared to concede the presence of all limitations other than polyphonic audio files. Id. at The inventor explained how the prior art was allegedly deficient: [I]n fact, the prior art systems of record are incapable of playing such high quality audio because they lack the proper hardware (e.g., lack appropriate speakers (see applicant's claim 10), circuitry capable of playing high quality audio etc.) and software (e.g., drivers, playback software, etc.) and other necessary capabilities. Id. at 0064 (emphasis added). The inventor never explained where these elements could be found in the 866 application. Without explanation, the Examiner issued a Notice of Allowance on July 23, 2007, cancelling claims and allowing claims The file history provides no clear indication of why claims 1-10 were allowable. B. The 866 Patent Suffers From the Same Deficiencies That the Inventor Identified in the Prior Art. The 866 patent suffers from the same infirmities that the inventor identified in the prior art. First, with respect to enhanced speaker, the specification does not teach the proper hardware, circuitry, or software for implementing such an enhanced speaker. The only reference to an improved speaker is the inventor s conclusory statement that, [i]n some embodiments, speaker 540 may be 18

30 an enhanced performance speaker (as compared to those currently installed in telephones) with a capacity for generating a full range of audio sounds. Exhibit 1001 at 10: The inventor does not say what is enhanced nor does the inventor ever explain what a full range of audio sounds is. The same deficiencies exist with respect to circuitry capable of playing polyphonic audio files and software (e.g., drivers, playback software, etc.). The 866 patent is again bereft of any discussion of advancements in circuitry related to polyphonic audio files. Similarly, the 866 patent contains no discussion of software or other necessary drivers for playing such files. This is significant because, as set forth below, the prior art need only disclose as much as the patent to invalidate. Nevertheless, as shown below, the prior art identified in this Petition contains substantially more technical detail than the 866 patent. VI. THE EARLIEST PRIORITY DATE OF CLAIM 10 IS MARCH As a threshold matter, claim 10 is not entitled to the filing date of the December 1999 provisional application because that provisional does not provide sufficient written description to establish that the inventor possessed the full scope of the subject matter of claim 10 on December 6, U.S.C. 112, Petitioners challenge any assertion of priority to any date prior to its 2004 filing date in IPR This petition assumes a March 3, 2000 priority date. Nevertheless, much of the prior art identified here would invalidate even under a December 1999 priority date. 19

31 [A] patent s claims are not entitled to an earlier priority date merely because the patentee claims priority. In re NTP Inc., 654 F.3d 1268, 1276 (Fed. Cir. 2011). [T]the specification of the provisional must contain a written description of the invention and the manner and process of making and using it, in such full, clear, concise, and exact terms, to enable an ordinarily skilled artisan to practice the invention claimed in the non-provisional application. New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002) (internal citation omitted). To satisfy the written description requirement, the missing descriptive matter must necessarily be present in the [original] application s specification such that one skilled in the art would recognize such a disclosure... This requires that the written description actually or inherently disclose the claim element. PowerOasis, 522 F.3d at (alteration in original). Beyond the lack of disclosure of polyphonic audio files, the provisional application falls short of actually or inherently disclosing at least two additional limitations in claim 10: i) browsing application program that allows a user of the telephone to browse the polyphonic audio files ; and ii) enhanced performance speaker capable of providing a substantially full range of audio sounds from the selected polyphonic audio file when the selected polyphonic audio file is played. Exhibit The provisional application (Exhibit 1003) does not actually or inherently 20

32 disclose an enhanced performance speaker capable of providing a substantially full range of audio sounds from the selected polyphonic audio file when the selected polyphonic audio file is played. Id. 50. The provisional has a single reference to speaker on page 3, but in a completely different context: placing a speaker/microphone near the acoustic audio signal source to acquire a sample. Id. There is no discussion of whether the audio is played on a conventional speaker or an enhanced speaker, nor is there any discussion of the quality of any sound that is generated, any enhancement or any full range of audio sounds. Id. Thus, regardless of any other disclosure, claim 10 is limited to a March 2000 date. The provisional also does not actually or inherently disclose a browser or even browsing much less a browsing application program that allows a user of the telephone to browse the polyphonic audio files. Id. 51. An inventor must provide evidence of possession of every feature in the claims. See Garmin Int l, Inc. v. Cuozzo Speed Techs. LLC, IPR , Paper 59, at (Final Decision). Second, he must corroborate the date and origin of that evidence. Id. Here, the inventor cannot satisfy either standard. Even if the inventor seeks to introduce an earlier document, he cannot show that he was diligent throughout the entire critical period. Monsanto Co. v. Mycogen Plant Sci., Inc., 261 F.3d 1356, 1369 (Fed. Cir. 2001). Indeed, the Federal Circuit has recognized that even miniscule delays are sufficient to preclude a finding of 21

33 diligence. In re Mulder, 716 F.2d 1542, 1545 (Fed. Cir. 1983) (two-day unexplained gap disproves the continuity required for diligence). Accordingly, claim 10 is only entitled to a March 2000 priority date. VII. 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 claim 10 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. v. A. Polyphonic Audio Files Cannot Form the Basis for Patentability Polyphonic audio files cannot form the basis for patentability for at least six reasons. First, the 866 patent contains no discussion related to polyphony. The inventor simply did not recognize that as a factor relating to his invention when the application was filed in March An element that is not disclosed in the specification cannot form the basis for patentability. See Pfizer Inc. v. Teva Pharms. USA, Inc., 460 F. Supp. 2d 659, 667 (D.N.J. 2006) ( The applicable law is 22

34 clear that where the particular feature relied upon is nowhere mentioned as an advantage it cannot form the basis of patentability ) (internal citations omitted). Second, the industry already recognized polyphony and even built functioning products that could process polyphonic audio files. See, e.g., Exhibit 1074 (Nikkei publication); Exhibits 1020, 1053 (Yamaha polyphonic chip); Exhibit (explaining that WAV files on the CD with the Nokia 9110 in 1999 were polyphonic audio files). Thus, contrary to the inventor s statements during prosecution, polyphonic audio files were already well-known and utilized prior to both: (i) the earliest asserted priority date and (ii) the inventor s belated addition of polyphonic claims to his patents. Third, the prior art shows the file formats (e.g., WAV and MIDI) that the inventor asserted sufficiently disclosed polyphonic audio files in the specification. As explained above, the prior art need only disclose as much as the patent to invalidate. See Constant, 848 F.2d at Many of the prior art references in this Petition recite these precise file types. Fourth, if (as the inventor postulates) the universe is split into polyphonic and non-polyphonic (monophonic) audio files, it cannot be patentable to select one type (the species) out of a universe of only two types (the genus). [S]pecies are unpatentable when prior art disclosures describe the genus containing those species such that a person of ordinary skill in the art would be able to envision every 23

35 member of the class. Abbvie Inc. v. Mathilda & Terence Kennedy Inst. of Rheumatology Trust, 764 F.3d 1366, 1379 (Fed. Cir. 2014) (invalidating claims to species of a small genus). According to the inventor himself, the person of ordinary skill in the art in 1999 would have been able to envision every species of the two-member class of music files based on the recitation of certain file formats. Indeed, during prosecution, the inventor asserted that one of skill in the art would have recognized that certain file types are polyphonic, while others are not. See Exhibit 1010 at For example, the inventor asserted that many MIDI are polyphonic, while other MIDI files (not falling into the many category) were monophonic. Id. (emphasis added). Because a person of ordinary skill in the art would be able to envision every member of the class as of the earliest priority date, any claims reciting the species of polyphonic audio files are unpatentable. Abbvie, 764 F.3d at In this regard, the two-species genus of audio files also falls into the finite number of identified, predictable solutions that preclude patentability. E.g., Index, 576 F. App x at 980 (affirming Board decision of obviousness when only two solutions would have been realistically considered ). Fifth, under the claim construction that Solocron asserts in the Litigation, the prior art identified here is polyphonic. Solocron asserts that polyphonic audio files are merely audio file[s] having more than one sound. Exhibit 1038 at 24

36 0034. All of the prior art identified here shows an audio file having more than one sound. Indeed, anything other than a monotone buzzer with a single note would seemingly meet this definition, including two single keystrokes on a piano. Under that definition, each prior art reference below invalidates claim 10. Sixth, in the Litigation, Solocron asserts that a sample [of] a few bars of a popular song shows polyphonic audio files. See id. (citing 9:23-41 in Exhibit 1051). The prior art identified below shows portions of popular songs and therefore discloses polyphonic audio files under Solocron s approach. Simply stated, there is nothing in the 866 patent which is not in the prior art and which would support a distinction based upon polyphonic audio files. B. Claim 10 is Anticipated by the Nokia 9110 User s Manual. The 9110 UM teaches all the elements of claim 10 to one of skill in the art. Exhibit First, the 9110 UM teaches a telephone with customizable ringing tones. Id. 95. Second, the 9110 UM teaches using an Internet browser on a phone to access any available websites and download (save) files from the websites into a [d]ownloaded files folder which is a programmable memory on the phone. Id Third, the 9110 UM teaches a program that will [c]opy to sounds You can add the selected tune to the list of ringing tones for the directory of [d]ownloaded files. Id Finally, the 9110 UM teaches how to program the downloaded files as ringing tones for contacts. Id

37 With respect to the enhanced speaker, compact disc audio files use 44kHz PCM encoding and MP3 uses 44kHz sampling. Exhibit , 45. Thus, 9110 UM teaches a phone which has an enhanced speaker which can play high quality WAV files. Exhibit It discloses at least as much regarding the claimed speaker as the 866 does. Id UM meets polyphonic audio files under Solocron s Litigation construction and the patentee s arguments to the Patent Office. First, the 9110 UM shows WAV files (which the inventor argued were polyphonic audio files ) as downloadable ringtones. While Petitioners do not agree that WAV necessarily discloses polyphonic audio files, the 9110 UM has at least as much detail as the 866 patent. If the 866 patent sufficiently discloses polyphonic audio files, so does the 9110 UM. Second, under Solocron s Litigation construction, the 9110 UM WAV files include more than one sound. Id. 97. The 9110 UM anticipates claim 10 as shown below. See also id Claim Element 10. A telephone that may be customized by searching for and selecting an audio file from a remote computer and programming the selected audio file Where Each Limitation Is Found in Nokia 9110 UM (Exhibit 1070) The 9110 UM describes a telephone that can be customized by searching, selecting and downloading polyphonic audio files (e.g., audio files having a.wav extension which the user can then set them as ringing tones ): The Nokia 9110 is a wireless phone, messaging device, access terminal. Exhibit 1070 at 0011; see also Fig. 1. The Nokia 9110 supports HTML 3.2. Id. at To fetch a WWW page, 1) Select an entry in the Bookmarks 26

38 Claim Element into the telephone for use as an indicia of an incoming communication, the telephone comprising: [10a] a communications link capable of connecting to a database in the remote computer that includes a plurality of polyphonic audio files; Where Each Limitation Is Found in Nokia 9110 UM (Exhibit 1070) list or enter a URL in the address field; [and] 2) Press Go. Id. at The browsing capabilities include a search/find feature: When you have a WWW page open and you press the Menu button, the following options become available: Find You can search for various items, such as words in the WWW page Id. at [S]ound files that the voice recorder can play have a.wav extension and support the following audio format: 8, 11, 22 or 44khz, PCM/A-law, Stereo/Mono, 8 bit. Id. at the following options become available: Copy You can choose a folder into which the selected document can be copied. Copy to sounds You can add the selected tune to the list of ringing tones. Id. at Default ringing tone You can select one of the tones in the pop-up box If your SIM card supports the alternate line service, you can select a different ringing tone for Line 2 Id. at Ringing tone You can set a specific ringing tone for each contact in the Contracts directory. Select a tone from the list and press Select. See Figure 2. Id. at The 9110 telephone described in the 9110 UM includes a cellular communications link that is capable of connecting to databases in remote computers (e.g., websites of service providers that provide services to "subscribers ) that include polyphonic audio files: about cellular data transmission[:] The Nokia 9110 employs the data transmission capabilities of the GSM network to send faxes, short messages and , and to establish connections with remote computers. Id. at The 9110 shows an icon to indicate An open data connection [to the] Internet. Id. at

39 Claim Element [10b] a display screen and a browsing application program that allows a user of the telephone to browse the polyphonic audio files and select at least one polyphonic audio file therefrom; Where Each Limitation Is Found in Nokia 9110 UM (Exhibit 1070) Internet applications World Wide Web (WWW) -- A hypertext-based system for finding and accessing resources on the Internet. Id. at UM describes the 9110 s display and a browsing application that allows a user to browse and select audio files from the internet. Fig. 5 shows a display. Id. at UM provides detailed instructions on how to subscribe to the Internet services (Id. at 0084) and use the web browser on the 9110 to navigate the world wide web and to subscribe to Internet services. E.g., id. at (section entitled To navigate in WWW ). To fetch a WWW page 1) Select an entry in the Bookmarks list or enter a URL in the address field Id. at [U]se the arrow keys to scroll the view and to choose hyperlinks and hotspots. Each arrow key press selects the nearest hyperlink or hotspot, or moves the view one line up or down. See Figure 8: Id. at 0099; see also Figure 8. The web browser allows a user to save the contents using the Save function: When you have a WWW page open and you press the Menu button, the following options become available: Save Saves the page contents or the image to the Downloaded files folder,. Id. at The Notes folders includes a folder named Downloaded Files which contains Downloaded files Documents downloaded with the Internet applications. Id. at Note: Downloaded recordings may take up significant amounts of memory space. Id. at UM teaches to access Operator services from network operator[s] : With Text Web you can fetch information from the Internet, using SMS.. You can also access services provided by your network operator and Nokia. To use the browser Press the arrow keys on the keyboard to move from one hotspot to another. To follow a 28