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 Case IPR Patent No. 7,295,864 PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,295,864 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... 3 A. Real Party In Interest Under 37 C.F.R. 42.8(b)(1)... 3 B. Related Matters Under 37 C.F.R. 42.8(b)(2)... 3 C. Lead and Back-Up Counsel Under 37 C.F.R. 42.8(b)(3)... 3 D. Service Information Under 37 C.F.R. 42.8(b)(4)... 4 E. Grounds for Standing Under 37 C.F.R (a)... 4 F. Fees Under 37 C.F.R III. THE 864 PATENT... 5 A. Background... 5 B. The Asserted Priority Chain of the 864 Patent... 8 C. Prosecution History of the 864 Patent... 9 D. Prosecution History of United States Patent No. 7,319, IV. IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R (B) V. HOW THE CHALLENGED CLAIM IS TO BE CONSTRUED UNDER 37 C.F.R (B) (3) VI. DETAILED EXPLANATION AND SUPPORTING EVIDENCE UNDER 37 C.F.R (B)(4) AND (B)(5) A. The Challenged Claims Are Not Entitled to Claim Priority to Any Earlier Application Legal Standards Relevant to Priority a. To Evaluate Invalidity Under Anticipation Or Obviousness, The Priority Date Must Be Determined Based Upon The Written Description Requirement i

3 b. Adequate Written Description Requires Express Or Inherent Disclosure And Identification Of The Blaze Marks Of Later- Claimed Characteristics The Priority Applications Do Not Reasonably Convey That the Inventor Possessed Polyphonic Audio Files a. The Priority Applications Lack Actual or Inherent Written Description for Polyphonic Audio Files b. The Inventor Did Not Provide The Requisite Blaze Marks For Polyphonic Audio Files c. Solocron Is Estopped From Asserting Priority Because It Distinguished The Prior Art As Lacking the Same Disclosure That the Priority Applications Lack d. Solocron s New Litigation Citations Similarly Do Not Show That The Inventor Had Possession Of The Concept Of Polyphonic Audio File In The Priority Applications B. Claims 11, 12, 16, 17 and 19 Are Anticipated by Holm C. Claims 11, 12, 13, 14, 16, and 17 Are Anticipated by Dewing D. Claims 11-14, 16, 17 and 19 Are Obvious Over the Shanahan PCT Application in View of Olrik E. Claims 13 and 14 Are Obvious over Holm and Gargiulo VII. CONCLUSION ii

4 TABLE OF AUTHORITIES Page(s) Cases Agilent Techs., Inc. v. Affymetrix, Inc., 567 F.3d 1366 (Fed. Cir. 2009)... 24, 25 Anascape, Ltd. v. Nintendo of Am., Inc., 601 F.3d 1333 (Fed. Cir. 2010) Bradford Co v. Conteyor, 603 F.3d 1262 (Fed. Cir. 2010)... 29, 30 Carnegie Mellon Univ. v. Hoffman-La Roche Inc., 541 F.3d 1115 (Fed. Cir. 2008)... 1 Chiron Corp. v. Genentech, Inc., 363 F.3d 1247 (Fed. Cir. 2004) Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956 (Fed. Cir. 2002) Hitzeman v. Rutter, 243 F.3d 1345 (Fed. Cir. 2001) Hollmer v. Harari, 681 F.3d 1351 (Fed. Cir. 2012) Hyatt v. Boone, 146 F.3d 1348 (Fed. Cir. 1998) Lockwood v. Am. Airlines, Inc., 107 F.3d 1565 (Fed. Cir. 1997) Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340 (Fed. Cir. 2004)... 15, 30 In re NTP, Inc., 654 F.3d 1268 (Fed. Cir. 2011) iii

5 PowerOasis, Inc. v. T-Mobile USA, Inc. 522 F.3d 1299 (Fed. Cir. 2008)... 20, 21, 22 Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320 (Fed. Cir. 2000)... 23, 26, 28 Research Corp. Techs., Inc. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010) Tronzo v. Biomet, Inc., 156 F.3d 1154 (Fed. Cir. 1998)... 20, 21 Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916 (Fed. Cir. 2004) iv

6 PETITIONERS EXHIBIT LIST Exhibit No. Exhibit 1001 Description U.S. Patent No. 7,295,864 (the 864 patent) Exhibit 1002 Complaint filed in Solocron v. Cellco Partnership et al. (Case No cv-1059) (E.D. Tex.) Exhibit 1003 Copy of U.S. Provisional Patent App. 60/169,158, as filed Dec. 6, 1999 (downloaded from PAIR) Exhibit 1004 Copy of Prosecution History for U.S. Patent App. 09/518,712, filed Mar. 3, 2000 (now U.S. Patent No. 6,496,692) (as produced by Solocron) Exhibit 1005 Exhibit 1006 Copy of U.S. Patent App. 10/223,200, as filed Aug. 16, 2002 (now U.S. Patent No. 7,257,395) (downloaded from PAIR) Exhibit 1007 Exhibit 1008 Exhibit 1009 Exhibit 1010 Exhibit 1011 Exhibit 1012 Exhibit 1013 Exhibit 1014 Prosecution History for the U.S. Patent No. 7,257,395 (U.S. Patent App. 10/223,200) (downloaded from PAIR) Excerpts of Documents Showing Mr. Shanahan s Prosecution and Litigation Experience List of Patents and Patent Applications Issued to Nokia Relating to Ringtones Nokia Application No (the 1999 Nokia Finnish application ) (certified copy (in English) obtained from PAIR in connection with U.S. Patent No. 6,907,113) 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 1015 Exhibit 1016 U.S. Patent No. 6,018,654, entitled Method and Apparatus for Downloading Tones to Mobile Terminals, filed October 29, 1996, and issued January 25, 2000, to Valentine et al. ( Ericsson or Valentine ) Ring My Bell, The New Yorker, March 7, (downloaded from Exhibit 1017 The Sweet Sound of Success, Time Magazine Europe, 2004 (downloaded from Exhibit 1018 Exhibit 1019 Pioneer of the Mobile Ringtone Business, Mobile Entertainment Forum MEF Special Recognition Award, 2004 Declaration of Internet Archive and Copies of Various Websites Exhibit 1020 Yamaha Sound Generator LSI YMU757, Yamaha News Release Exhibit 1021 International Publication No. WO 01/16931, entitled Method And Arrangement For Providing Customized Audio Characteristics To Cellular Terminals, published March 8, 2001 ( Holm ) Exhibit 1022 Copy of U.S. Patent App. 10/603,271, as filed June 24, 2003 (now U.S. Patent No. 7,295,864) (downloaded from PAIR) Exhibit 1023 U.S. Patent Application Pub. No. US2004/ , filed Dec. 20, 2002, and published June 24, 2004 ( Olrik ) Exhibit 1024 U.S. Patent 7,555,537, filed December 20, 2000, entitled Downloadable Multimedia Content and Method for Accounting ( Gargiulo ) Exhibit 1025 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 Exhibit 1026 European Patent Application EP , entitled Portable Telephony Apparatus With Music Tone Generator, was published January 31, 2001 ( Futamase ) Exhibit 1027 Exhibit 1028 vi

8 Exhibit 1029 U.S. Patent Application No. 2001/ Exhibit 1030 Exhibit 1031 Exhibit 1032 Exhibit 1033 Exhibit 1034 Exhibit 1035 Exhibit 1036 International Publication No. WO 01/41403, entitled Methods and Apparatuses for Programming User-Defined Information to Electronic Devices, published June 7, 2001 ( Shanahan PCT ) Excerpt from Harvard Dictionary of Music, Second Edition, Revised and Enlarged, Willi Apel, The Belknap Press of Harvard University Press, Cambridge MA, U.S. Patent No. 7,461,067, filed Sept. 13, 2002, and issued Dec. 2, 2008 ( Dewing ) Final Decision dated April 21, 2014 in IPR Final Decision dated April 22, 2014 in IPR Exhibit 1037 Certified Translation of Japanese Patent Application , filed July 28, 1999, and to which Futamase (Exhibit 1026) claims priority. Exhibit 1038 Local Patent Rule 4-3 Statement filed in Solocron v. Cellco Partnership et al. (E.D. Tex.) (Case No cv-1059) Exhibit Exhibit 1040 Exhibit 1041 Exhibit 1042 Exhibit 1043 Exhibit 1044 Exhibit 1045 Random House Webster s Unabridged Dictionary Encyclopedia Britannica YM3812 Chip Manual New Grove Dictionary of Music and Musicians Oxford Music Online MIDI Specification vii

9 Exhibit 1046 Exhibit 1047 Exhibit 1048 Exhibit 1049 Exhibit 1050 Exhibit 1051 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 ) 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 U.S. Patent No. 7,319,866 ( the 866 patent ) Certified English translations of JukeBoksi websites (corresponding to Exhibit 1019 at ). Exhibit 1062 Copy of U.S. Patent App. 09/518,846, as filed March 3, 2000 Exhibit 1063 Exhibit 1064 viii

10 Exhibit 1065 Exhibit 1066 Exhibit 1067 Exhibit 1068 Exhibit 1069 Exhibit 1070 Exhibit 1071 Exhibit 1072 Exhibit 1073 Exhibit 1074 Exhibit 1075 The IEEE Standard Dictionary of Electrical and Electronics Terms (6th ed. 1997) Exhibit 1076 Copy of Prosecution History for the U.S. Patent No. 7,295,864 (downloaded from PAIR) Exhibit 1077 Exhibit 1078 Exhibit 1079 Exhibit 1080 Exhibit 1081 Exhibit 1082 Exhibit 1083 Declaration of John M. Strawn, Ph.D., and CV Declaration of Richard T. Mihran, Ph.D., and CV ix

11 Exhibit 1084 Exhibit 1085 Exhibit 1086 Exhibit 1087 Exhibit 1088 Exhibit 1089 Exhibit 1090 Copy of Prosecution History for U.S. Patent App. 09/518,846, filed Mar. 3, 2000 (now abandoned) Exhibit 1091 Exhibit 1092 Exhibit 1093 Exhibit 1094 Exhibit 1095 Exhibit 1096 Exhibit 1097 Exhibit 1098 Exhibit 1099 Exhibit 1100 Exhibit 1101 Exhibit 1102 x

12 Exhibit 1103 xi

13 Cellco Partnership d/b/a Verizon Wireless and AT&T Mobility LLC ( Petitioners ) request inter partes review of claims 11-14, 16, 17, and 19 ( the challenged claims ) of U.S. Patent No. 7,295,864 ( the 864 patent ) (Exhibit 1001). I. INTRODUCTION AND BACKGROUND The basic function of a patent specification is to disclose an invention. Carnegie Mellon Univ. v. Hoffman-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008). As with the 866 patent, an element of each challenged claim of the 866 patent which the inventor ultimately pointed to as defining his invention over the prior art finds no support in the specifications of the priority applications. Instead, it was inserted into the claim years after the asserted priority date and years after the industry described, patented, and adopted this same technology. In light of this break in the priority chain, the challenged claims cannot claim priority to any earlier filed application. Under their correct priority date, the challenged claims are invalid under 35 U.S.C. 102 & 103 as discussed herein. In particular, the challenged claims recite a term that is neither expressly nor inherently disclosed in the 864 patent s priority chain: polyphonic audio files. Rather, this term appeared for the first time in a preliminary amendment filed in 2003 nearly four years after the earliest asserted priority date and two years after wireless carriers such as Petitioners released polyphonic ringtone products. 1

14 Under Federal Circuit law, the complete lack of support for the term polyphonic audio file in the priority applications, as detailed in the attached declaration of musicology expert Dr. John Strawn (Exhibit 1079), precludes the patentee from relying on any earlier filing date. The Board can assess this priority issue in an inter partes review, and has done so before. E.g., Exhibit The 864 patent is part of a family of nearly twenty patents owned by Solocron Media, LLC ( Solocron ), a small company based in Tyler, Texas. Solocron acquired this family from Michael Shanahan, a telecommunications and electronics patent prosecutor formerly of Fish & Neave and McDermott Will & Emery. E.g., Exhibit Mr. Shanahan s clients over the past fifteen years include Nokia, Inc. ( Nokia ) and other electronics companies. Id. Solocron alleges that the 864 patent relates to a database storing ringtones that a user may browse and download to his wireless telephone. Personalizing a telephone with ringtones was well-known long before the 864 patent. Indeed, Nokia entities own at least 101 U.S. patents relating to ringtones, including 17 patents and applications with an earlier filing date than the 864 patent. Exhibit Nokia has even more international patents and applications, including WO 01/16931 ( Holm ) (Exhibit 1021), which discloses the claimed concepts using nearly identical terminology. Holm is one example of a compelling prior art reference that discloses the elements of the challenged claims in explicit detail and 2

15 that was not presented to the Patent Office during the prosecution of the 864 patent or any of the applications to which it claims priority. For the reasons below, there is a reasonable likelihood that the challenged claims of the 864 patent are 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 864 patent in the Eastern District of Texas on December 6, 2013 (Case No. 2:13- 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, 3

16 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 864 patent is available for inter partes review, and that Petitioners are not barred or estopped 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

17 III. THE 864 PATENT A. Background The 864 patent was filed on June 24, 2003, and purports to claim priority to applications dating back to December Exhibit It generally relates to databases storing ringtones. Id. at 1: The disclosures of the 864 patent and its priority applications, however, do not support the features claimed nearly four years after the earliest asserted priority date. Figure 4A of the 864 patent illustrates that the original disclosures were nebulous and bear little resemblance to the ringtone matter the patentee sought to capture years later: In contrast, the challenged claims purport to cover a database storing polyphonic audio files that a user may browse and download. Id. at 13:40 14:23. Claim 11 reads: A method for providing a polyphonic audio file to a wireless telephone for use as an indicia of an incoming communication, the method comprising: providing a database of polyphonic audio files suitable for downloading to the wireless telephone; providing a list of polyphonic audio files in the database to a user of the wireless telephone when the user requests the list of polyphonic audio files; 5

18 allowing the user of the wireless telephone to browse the list of polyphonic audio files; allowing the user of the wireless telephone to select a desired polyphonic audio file from the list of polyphonic audio files; allowing the user of the wireless telephone to optionally download a selected polyphonic audio file into the wireless telephone for future use as an indicia of an incoming communication; and confirming the selected polyphonic audio file has been properly received. Id. at 13: Dependent claims 12-14, 16, 17, and 19 recite additional steps: allowing the user to search the database by title (claim 12, id. at 13:59-62); permitting the user to review the polyphonic audio file prior to download (claim 13, id. at 13:63-67); providing the user with the option of downloading after review (claim 14, id. at 14:1-5); providing a plurality of lists of polyphonic audio files (claim 16, id. at 14:11-13); storing polyphonic audio files in MP3, MPEG, or WAV format (claim 17, id. at 14:14-17); and providing copyright protection for the database of polyphonic audio files (claim 19, id. at 14:20-24). The challenged claims recite features that are barely described and, in some cases, not even mentioned in the 864 specification. Most notably, neither polyphonic audio files nor anything related to the concept of polyphony can be found in the 864 specification. See generally Exhibit The inventor admits that he did not invent ringtones, conceding during 6

19 prosecution of a related application that the concept of ringtones was known prior to his earliest filing date. Exhibit 1004 at Mr. Shanahan s concession is required by the expansive body of pre-1999 ringtone related prior art. Well before Mr. Shanahan s earliest priority date, entities such as Nokia, Ericsson, Inc., and Philips Electronics N.V. ( Philips ) pioneered and patented inventions relating to customizing mobile phones with ringtones. Exhibits 1012, Despite Mr. Shanahan s assertion that he invented the personalization of ringtones, that technology is also old. Over three years before Mr. Shanahan s earliest non-provisional application, a Finnish inventor, Vesa-Matti Paananen, designed a product called Harmonium, which allowed users to personalize phones with ringtones delivered over the air. Exhibit Mr. Paananen has received recognition from the industry including a special award as Pioneer of the Mobile Ringtone Business. Exhibits Beyond Mr. Paananen, various companies described and patented this personalization concept long before Mr. Shanahan. Exhibits 1014, For example, more than a year before Mr. Shanahan s earliest priority date, Philips described a telecommunication device and a remote database containing a variety of alternative forms of user selectable and downloadable ringing information. Exhibit 1014, Abstract. Similarly, various websites with selectable and downloadable ringtones were available around the globe. Exhibits 1019,

20 Even if Mr. Shanahan could properly claim priority to December 1999 (which he cannot), he still would not be the first person to invent polyphonic ringtones and/or enhanced speakers for playing polyphonic ringtones. Such ringtones were simply an evolution in the cell phone industry. The concept of polyphonic ringtones appeared at least as early as September 1999 in European and Japanese cell phone markets. See, e.g., Exhibit 1020 (describing the Yamaha LSI YMU757 chip, which permitted the playback of high quality polyphony on mobile phones, including user-selected sound and melodies ). Moreover, in its July 1999 Japanese patent application, Yamaha described a tone generator capable of sounding two or more tones at a time... in a portable terminal apparatus... [that] reproduces music which is various in kind and rich in musicality as ringing melodies. Exhibit Yamaha even recognized that the present invention uses audio information... [such as] WAVE, AIFF, SOUND VQ, or MP3.... Id The present invention allows common formatting to capture the audio information having these formats.... Id. B. The Asserted Priority Chain of the 864 Patent The 864 patent claims priority to U.S. Patent Application Nos. 09/518,846, filed on March 3, 2000 ( the March 2000 application ) and 60/169,158, filed December 6, 1999 ( the December 1999 application ). Neither of these applications mentions, much less discloses within the meaning of 35 U.S.C. 112, 8

21 the polyphonic audio files now claimed. The entirety of the December 1999 application consists of a scant four double-spaced pages of written description, one doubled-spaced page of claims, and four block diagrams. Exhibit It does not use the term polyphonic, does not discuss polyphony conceptually, does not discuss the fidelity of ringtones, does not reference an enhanced speaker, and does not describe how to reproduce any polyphonic ringtone. See generally id. The March 2000 application also lacks any reference to polyphonic, polyphony, or anything related to those concepts, and there is no discussion of the quality of ringtones or the importance of fidelity to the invention. Exhibit None of the claims in the March 2000 application as filed made any reference to polyphonic, (id.) and Mr. Shanahan never subsequently amended these claims to recite anything relating to polyphonic before abandoning the March 2000 application. Exhibit Because of the complete lack of underlying support for the polyphonic audio file term in every application in the priority chain, the challenged claims are not entitled to claim priority to any of these earlier applications. C. Prosecution History of the 864 Patent On June 24, 2003, Mr. Shanahan filed U.S. Application No. 10/603,271 ( the June 2003 application ), which matured into the 864 patent. As filed, the 9

22 June 2003 application, like the March 2000 application with which it shares a substantially identical disclosure, lacked any reference to polyphonic, polyphony, or anything related to those concepts. The June 2003 application is likewise devoid of any discussion of the quality of ringtones or the importance of fidelity to the invention. Exhibit Nor did any of the claims as filed in the June 2003 application make any reference to polyphonic. Id. Only two months later, in a preliminary amendment mailed on August 27, 2003, the term polyphonic audio files made its first appearance in the June 2003 application, and its first appearance in any application related to the June 2003 application. See Exhibit 1076 at The patentee offered no explicit support for this language, choosing instead to point generally to the specification and drawings. Id. at Not only did the Office accept Mr. Shanahan s conclusory assertion without making any written priority determination, the claims that ultimately issued appear to have never been substantively reviewed or rejected over any prior art. Indeed, the challenged claims received only a single rejection for obviousness-type double patenting. Id. at On August 8, 2007, the Examiner accepted the patentee s terminal disclaimer to overcome the double patenting rejection and allowed the claims without further explanation or discussion of why the claims were patentable. Id. at

23 D. Prosecution History of United States Patent No. 7,319,866 United States Patent No. 7,319,866 ( the 866 patent ) (Exhibit 1056) is a sibling to the 864 patent. Like the 864 patent, the specification of the 866 patent makes no mention of polyphonic audio files, polyphony, or related concepts. Id. Mr. Shanahan expressly distinguished the claims of the 866 patent over the asserted prior art (United States Patent Nos. 6,366,791 ( Lin ) and 7,088,990 ( Isomursu )) on the basis that these references lacked sufficient disclosure of polyphonic ringtones: Additional novel features of claims 1, 10 and 31 include the use of polyphonic audio files as ringtones. Both Isomursu and Lin fail disclose this feature at all. In fact, nowhere in either reference, or any reference of record, is the quality or fidelity of a ringtone mentioned or even recognized as a desirable or relevant feature. The use of high quality audio data such as polyphonic audio files for ringtones is an important feature of certain aspects of applicant's claimed invention. For example, the use of high fidelity ringtones such as polyphonic ringtones (sometimes referred to now as real tones, true tones, master tones, etc.) that may be actual MP3 (or other high quality digital representations of) songs or other audio greatly improves the user s experience by allowing the user to hear realistic recreations of selected audio.... Exhibit 1052 at (emphasis added); see also id. at Ironically, Mr. Shanahan s own specification suffers the very same infirmities he asserted as to 11

24 Lin and Isomursu. IV. IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R (b) Petitioner requests inter partes review of claims 11-14, 16, 17, and 19 in view of the references below, which are all prior art under 35 U.S.C. 102(a), (b), or (e) when the challenged claims are assigned their correct priority date: 1. Holm (Exhibit 1021), Int l Pub No. WO 01/16931, published March 8, The Office never considered Holm during prosecution. 2. Dewing (Exhibit 1034), U.S. Patent No. 7,461,067, filed on September 13, 2002 and issued on December 2, The Office never considered Dewing during prosecution. 3. Shanahan PCT Application (Exhibit 1030), Int l Pub. No. WO 01/41403, published June 7, The Office never considered the Shanahan PCT Application during prosecution. 4. Gargiulo (Exhibit 1024), U.S. Patent No. 7,555,537, filed on December 20, 2000 and issued on June 30, The Office never considered Gargiulo during prosecution. 5. Olrik (Exhibit 1023), U.S. Patent Application No. 2004/ , filed on December 20, 2002 and published on June 24, The Office never considered Olrik during prosecution. Petitioner requests that the challenged claims be cancelled based upon the 12

25 following grounds, as detailed below (including relevant claim constructions): Ground 1: claims 11, 12, 16-17, and 19 are invalid under 35 U.S.C. 102 as anticipated by Holm (Exhibit 1021); Ground 2: claims and are invalid under 35 U.S.C. 102 as anticipated by Dewing (Exhibit 1034); Ground 3: claims 11-14, 16-17, and 19 are invalid under 35 U.S.C. 103 over the Shanahan PCT Application (Exhibit 1030) in view of Olrik (Exhibit 1023); and Ground 4: claims are invalid under 35 U.S.C. 103 over Holm (Exhibit 1021) in view of Gargiulo (Exhibit 1024). V. 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); 37 C.F.R. 100(b). The broadest reasonable interpretation of the relevant terms is as follows: Polyphonic audio file has no written support in the specification or any of the applications to which the 864 patent claims priority. 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 uses contemporaneous evidence (from 1999 to 2004) of 13

26 the ordinary meaning of polyphonic content. As Dr. Strawn explains, polyphonic content is distinguished from monophonic content, which consists of a single tone. Id. 19. Examples of monophonic content would include a person sequentially playing an individual key on a piano. Id. 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 As explained in Dr. Strawn s Declaration, this definition is confirmed by many extrinsic sources, including the Harvard Dictionary of Music. Id (citing Exhibit 1031 (defining polyphony as music that combines several simultaneous voice-parts of individual design, in contrast to monophonic music, which consists of a single melody ); Exhibit 1041 (defining polyphony as any music in which two or more tones sound simultaneously ); Exhibit 1029 (U.S. Patent Application 2001/ , filed on March 2, 2001, stating [m]usic comprising a plurality of simultaneous notes is referred to as polyphonic music [0005]) and a single note of a monophonic musical signal and multiple simultaneous notes of a polyphonic musical signal [0039]); Exhibit 1050 U.S. Pat. No. 6,351,225, filed on August 5, 1999 at 4:1-4 ( polyphonic playing (that is, the playing of simultaneous notes perceived to be sounding at the same time) ). In the Litigation, Solocron proposes a construction of audio file having more than one sound. Exhibit 1038 at 34. Petitioners do not adopt Solocron s 14

27 construction because it is inconsistent with the basis on which the related 866 patent was granted. Exhibit Indeed, Solocron s construction encompasses two consecutive single keystrokes of the piano, which is classic monophonic content. This construction provides no basis to distinguish the prior art cited in the prosecution of the 866 patent. Yet, Solocron (successfully) argued that prior art did not disclose polyphonic audio files. Solocron s representations to the Patent Office during prosecution of the related 866 patent regarding polyphonic audio files are equally applicable to the construction of the same term here. See Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1349 (Fed. Cir. 2004) ( [W]e have held that the prosecution history of one patent is relevant to an understanding of the scope of a common term in a second patent stemming from the same parent application ). In the Litigation, Defendants proposed a construction of a synthesized representation of an audio composition having more than one sound. This definition is appropriate for district court Markman, but not for an IPR. First, 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 because it includes the restriction of synthesized representation. Additionally, the proper construction of this term includes the concept of simultaneous tones as discussed above. The lack of 15

28 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 to be used by the Board. As discussed below, regardless of whether the Board adopts Petitioners construction, Solocron s Litigation construction, or the Defendants Litigation construction, the challenged claims cannot claim priority back to the priority applications because those applications do not provide any disclosure much less adequate written description showing that the number of sounds in an audio file was important, relevant, or possessed by Mr. Shanahan as of the time of the priority applications. Database should be construed to mean a collection of logically related data stored together in one or more computerized files. This construction is consistent with contemporaneous discussion of the plain and ordinary meaning of database. See, e.g., Exhibit 1066 at 0005 In particular, the claimed database is not limited to a database that is accessed remotely over a communication network. There is nothing in the language of the challenged claims that requires this, and, under the broadest reasonable interpretation, the claimed database may reside in a computer or other device that is directly connected to the wireless telephone. See Exhibit :27-31 ( Source 50 may be any device or combination of devices suitable for providing 16

29 user-defined information to programmer 30 (e.g., the Internet, an optical disc player (CD, DVD), a cassette player, a VCR, a digital camera, or any suitable storage device containing computer programs or files, etc.). ). Allowing the user... to search should be construed to mean permitting a user to examine a set of items for those that have the desired property. This construction is fully supported by contemporaneous discussion of the broadest reasonable interpretation of the plain and ordinary meaning of search. See, e.g., Exhibit 1066 at This definition is also consistent with the usage of search in the specification. See Exhibit 1001 at 3:45-47; 7: The broadest reasonable interpretation of the group comprising MP3, MPEG, or WAV files is the group including, but not limited to, MP3, MPEG, and WAV. VI. DETAILED EXPLANATION AND SUPPORTING EVIDENCE UNDER 37 C.F.R (b)(4) AND (b)(5) Pursuant to 37 C.F.R (b)(4)-(5), Petitioners set forth an explanation below of why the challenged claims of the 864 patent are unpatentable under the statutory grounds identified above. 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 17

30 the challenge. References are made to the Strawn Declaration (Exhibit 1079) and Mihran Declaration (Exhibit 1080) filed herewith. An Exhibit List (see 37 C.F.R (e)) identifying the exhibits is also included, supra, at p. v. A. The Challenged Claims Are Not Entitled to Claim Priority to Any Earlier Application. As a threshold matter, the challenged claims are not entitled to the filing date of any earlier application. None of the priority applications comes close to providing sufficient written description to establish that Mr. Shanahan possessed the full scope of the subject matter of these claims at any point prior to August U.S.C. 112, 120. Because references cited below have an effective date after the priority applications, it is appropriate for this Board to assess priority to determine whether the cited art is prior art. See Exhibit 1036 at ( If the challenged claims... are entitled to the benefit of an [earlier] effective filing date... then every ground in the Petition would rely on at least one reference that fails to qualify as prior art.... We must evaluate, therefore, the priority date, i.e., the effective filing date.... ) (emphasis added) (finding patent not entitled to priority and anticipated by 1 Because the term polyphonic audio files finds no support in the specification of the 864 patent, claims including this new matter should have been rejected under 35 U.S.C. 112, first paragraph. See MPEP (I). Even if the Board utilizes the filing date of the 864 patent (i.e., June 2003) rather than the date of the amendment where polyphonic audio files first appeared, however, the challenged claims are still invalid over the references identified herein. 18

31 intervening prior art). The priority applications lack adequate written description for polyphonic audio files regardless of the construction the Board adopts. The discussion below focuses primarily on Petitioners proposed construction, but applies to all possible constructions because each construction requires that the term polyphonic audio file be defined by the number of sounds in a particular file. There is no disclosure or blaze mark as discussed below even hinting at the number of sounds in a file, much less identifying that number of sounds as an important and patentable characteristic as required by the Federal Circuit. 1. Legal Standards Relevant to Priority a. To Evaluate Invalidity Under Anticipation Or Obviousness, The Priority Date Must Be Determined Based Upon The Written Description Requirement. As the Federal Circuit has recognized, 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). Rather, for a patent s claims to be entitled to an earlier priority date, the patentee must demonstrate that the claims meet the requirements of 35 U.S.C Id. [I]f any application in the priority chain fails to make the requisite disclosure of subject matter [under 112], the later-filed application is not entitled to the benefit of the filing date of applications preceding the break in the priority chain. Hollmer v. Harari, 681 F.3d 1351,

32 (Fed. Cir. 2012). For a claim in a later-filed application to be entitled to the filing date of an earlier application under 35 U.S.C. 120[], the earlier application must comply with the written description requirement of 35 U.S.C. 112, 1 [pre- AIA]. Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158 (Fed. Cir. 1998). To satisfy the written description requirement the disclosure of the prior application must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, [the inventor] was in possession of the invention. PowerOasis, Inc. v. T- Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008) (quoting Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, (Fed. Cir. 1991)). This requires a meaningful disclosure of the claimed invention in the specification. Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 970 (Fed. Cir. 2002). While the meaning of terms, phrases, or diagrams in a disclosure is to be... interpreted from the vantage point of one skilled in the art, all the limitations must appear in the specification. Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) (emphasis added). [T]he purpose of the written description requirement is to ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inventor s contribution to the field of art as described in the patent specification. Univ. of Rochester v. G.D. Searle & Co., Inc., 358 F.3d 916, 920 (Fed. Cir. 2004) (quoting Reiffin v. Microsoft Corp., 20

33 214 F.3d 1342, 1345 (Fed. Cir. 2000)). Of particular relevance to this petition, [t]he written description requirement prevents applicants from using the amendment process to update their disclosures (claims or specifications) during their pendency before the patent office. Otherwise applicants could add new matter to their disclosures and date them back to their original filing date, thus defeating an accurate accounting of the priority of invention. Chiron Corp. v. Genentech, Inc., 363 F.3d 1247, 1255 (Fed. Cir. 2004). Similarly, applicants may not claim entitlement to a filing date based on subject matter that would be obvious over what is expressly disclosed. PowerOasis, 522 F.3d at 1306 (internal citations omitted). If an application is denied the benefit of priority, then the inventor s own foreign published application can be used as prior art. See, e.g., Tronzo, 156 F.3d at (finding a priority chain break because the issued claims were not supported by the priority application and allowing the inventor s own intervening published British application to be used as invalidating prior art); see also Exhibit 1035 at 0008 (finding that challenged patent was not entitled to the benefit of the filing date of [the parent application], and noting that prior issued patents from the same inventor were properly utilized as prior art). 21

34 b. Adequate Written Description Requires Express Or Inherent Disclosure And Identification Of The Blaze Marks Of Later-Claimed Characteristics. A parent application must actually or inherently disclose the elements of the later filed claims. Research Corp. Techs., Inc. v. Microsoft Corp., 627 F.3d 859, 870 (Fed. Cir. 2010) (citation omitted). The Federal Circuit has articulated the following standard for written description: [T]o 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 1306 (internal citation omitted). Inherency requires that the only reasonable reading of the priority application disclose all disputed claim elements. See Anascape, Ltd. v. Nintendo of Am., Inc., 601 F.3d 1333, 1340 (Fed. Cir. 2010) (holding claims as anticipated based upon intervening art after ruling that the only reasonable reading of the specification did not disclose the disputed element); Hyatt v. Boone, 146 F.3d 1348, (Fed. Cir. 1998) (affirming BPAI s necessary and only reasonable construction of the specification to determine that there was no written description for the disputed claim element). Even for characteristics that are expressly disclosed in an application, the 22

35 applicant is obligated to provide blaze marks that direct the skilled artisan to the allegedly present and critical characteristics: [O]ne cannot disclose a forest in the original application, and then later pick a tree out of the forest and say here is my invention. In order to satisfy the written description requirement, the blaze marks directing the skilled artisan to that tree must be in the originally filed disclosure. Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, (Fed. Cir. 2000). It simply is not permissible to claim a characteristic which was not discussed even in passing in the disclosure : What the 360 patentees have done is to pick a characteristic possessed by two of their formulations, a characteristic that is not discussed even in passing in the disclosure, and then make it the basis of claims that cover not just those two formulations, but any formulation that has that characteristic. This is exactly the type of overreaching the written description requirement was designed to guard against. Id. at The Priority Applications Do Not Reasonably Convey That the Inventor Possessed Polyphonic Audio Files. a. The Priority Applications Lack Actual or Inherent Written Description for Polyphonic Audio Files. The Strawn Declaration details why the priority applications do not actually or inherently disclose polyphonic audio files. First, neither that term nor any 23

36 more generic term such as polyphony is found anywhere in the priority applications. Exhibit Moreover, the priority applications do not contain any actual discussion of the concept of single or multiple tones or even tones more generally. Id. 83. One of skill in the art would not have understood that Mr. Shanahan reasonably conveyed any information about aspects of the content of the music such as the number of tones. Id. Thus, there is no actual disclosure under PowerOasis. The priority applications do not have any inherent disclosure of polyphonic audio files. Id Inherency... may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. Agilent Techs., Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1383 (Fed. Cir. 2009) (quoting In re Oelrich, 666 F.2d 578, 581 (C.C.P.A. 1981)); see also Hitzeman v. Rutter, 243 F.3d 1345, 1355 (Fed. Cir. 2001) ( [A]n inherent property must necessarily be present in the invention... and it must be so recognized by persons of ordinary skill in the art. ). In a related application, Mr. Shanahan pointed to the specification s mention of audio and video formats such as MP3, WAV, MPEG, and many MIDI files as providing support for polyphonic audio files. Exhibit 1010 at 0442 (citing Exhibit 1001 at 3:52-57). This is insufficient because MP3, WAV, MPEG, and MIDI are audio/video formats that contain no information about the content of the 24

37 audio/ video. Exhibit , 43, 47, 49, 50, 59; Exhibits (MIDI and MPEG file formats). In other words, they can be likened to an envelope containing a letter: the envelope holds the letter but provides no information about what the letter says. Exhibit These file formats could thus contain a recording of silence, a monophonic recording such as a single keystroke of a piano, noise, speech, and or any other type of sound known to humanity. Id. at 25, 26, 47, 49, 50, 95. Moreover, what they may contain is not relevant, because this is precisely the probabilit[y] or possibilit[y] that the Federal Circuit deems insufficient for inherent disclosure. See Agilent, 567 F.3d at 1383 ( The mere fact that a certain thing may result from a given set of circumstances is not sufficient ) (emphasis added) (internal citations omitted). What matters is that disclosing these formats does not necessarily disclose any concept of a polyphonic audio file or that the stored sound is polyphonic. Exhibit , 86. Mr. Shanahan s citation to many MIDI files as purportedly being polyphonic audio files highlights that the application lacks the requisite teaching because the priority applications lack any teaching showing the inventor possessed the knowledge of which MIDI files were, and were not, polyphonic audio files. 25

38 b. The Inventor Did Not Provide The Requisite Blaze Marks For Polyphonic Audio Files. Even if polyphonic could be considered to be present in some unidentified passage of the priority applications that Mr. Shanahan never sought to rely on in correspondence with the Patent Office (which it cannot), those priority applications lack the requisite blaze marks to the concept of polyphonic audio files because they do not indicate that this concept is important (or provides patentability). The priority applications here are nearly identical to those in Purdue Pharma. First, like Purdue Pharma, the concept of polyphonic audio file is a characteristic that is not discussed even in passing in the disclosure of the priority applications. Second, like Purdue Pharma, the 864 patent seeks to make it the basis of claims that cover not just those files disclosed in the 864 patent, but all polyphonic audio files. Third, like Purdue Pharma, even if the priority applications could be said to contain some examples that might be polyphonic, there is no basis to conclude that those examples were necessarily polyphonic. There simply were not the requisite blaze marks within the written description. See Purdue Pharma, 230 F.3d at Moreover, the priority applications do not even exhibit an understanding of the forest in which the tree of the concept of polyphony exists. The concept of polyphony has long been known to those of skill in the art as one of the elements 26

39 of music. Exhibit Such elements include pitch; the organization of pitch according to scales, modes, and harmonies; dynamics; rhythm; meter; tempo; duration; harmony; chord progression; register (e.g., high/low); vocal versus instrumental; instrumentation; timbre (e.g., tone color); form (e.g., song, hymn, symphony, waltz, two-step, fugue, canon, ); articulation (e.g., violin bow change / no bow change); performance practice; interpretation; performance setting; and style (e.g., jazz, pop, rock, classical, ). Id. (explaining Exhibit 1039). The inventor s failure to even mention any of the elements of music much less provide a blaze mark to the concept of polyphonic audio file buttresses the conclusion that the inventor did not have possession of the concept of polyphonic audio file and did not demonstrate such possession in the priority applications. Id , Moreover, the inventor s citation to file formats such as MPEG as alleged support for polyphony during prosecution confirms that the inventor did not have possession of the concept of polyphony when the 200 application was filed or when the preliminary amendment that first introduced the term polyphonic audio files was filed, much less at the time of the priority applications. Id. at Purdue Pharma resolves this question. [O]ne cannot disclose a forest in the original application, and then later pick a tree out of the forest and say here is 27

40 my invention. In order to satisfy the written description requirement, the blaze marks directing the skilled artisan to that tree must be in the originally filed disclosure. 230 F.3d at The 200 applicant cannot pick the tree of polyphonic audio file out of a forest in 2003 and say here is my invention. The priority applications do not even identify the forest (the elements of music) much less say that any tree in that forest is important to the invention and even more compellingly, never identify the polyphonic tree in that forest with a blaze mark denoting its importance to the invention. This is a classic case of impermissible re-writing of an inventor s purported invention long after the priority date. In contrast to the priority applications, other contemporaneous patents show how one would convey possession of the concepts of polyphony and polyphonic audio files. For example, the Futamase patent (filed in Japan in July 1999) provides such a teaching. See Exhibits Futamase recites sounding two or more tones at a time with a ringtone audio file. Exhibit 1025 at 1: Futamase extensively discusses elements of music such as timbre, performance, style, chord, harmony, accompaniment, tempo, and pitch. See id. at Figures 5, 6, 26-28, and 5:39-56; 6:5-23; 11:52-61; 12:4-18; 13:30-14:13; 15:35-16:60; 35:31-39:31. The description of these concepts conveys that Futamase had possession of the concepts of polyphony and polyphonic audio files. Exhibit The 28

41 priority applications to the 395 patent do not demonstrate any such possession. c. Solocron Is Estopped From Asserting Priority Because It Distinguished The Prior Art As Lacking the Same Disclosure That the Priority Applications Lack. The prosecution history of the related 866 patent confirms the lack of support for polyphonic audio files in the priority applications. During prosecution, the Examiner rejected claims based on two references, Isomursu and Lin. In response, the applicant distinguished his invention based on the recitation of polyphonic audio files. According to the inventor, the prior art lacked polyphonic audio files because nowhere in either reference, or any reference of record, is the quality or fidelity of a ringtone mentioned or even recognized as a desirable or relevant feature. Exhibit 1052 at 0019, Ironically, the same criticism the patentee directed at the prior art applies to the 864 patent and its priority applications: (1) Nowhere in the specification of the 864 patent and/or its priority applications is the quality or fidelity of a ringtone mentioned or even recognized as a desirable or relevant feature ; (2) Nowhere in the specification and/or its priority applications do the terms polyphonic, high quality or realistic recreation [of audio] appear. Under Federal Circuit law, Solocron is estopped from claiming priority. See Bradford Co. v. Conteyor N. Am., Inc., 603 F.3d 1262, (Fed. Cir. 2010). In Bradford, the Federal Circuit found that the applicant is estopped from 29

42 arguing for an earlier priority date for the [asserted] patent by the prosecution history of that patent and affirmed the decision limiting the priority date of the [asserted] patent to its own filing date. Id. The Federal Circuit held that estoppel applied because the applicant apparently successful[ly] overcame an obviousness rejection by arguing that the prior art did not disclose a particular element when the application did not contain any disclosure beyond that found in the prior art. Id. For the 866 patent, the applicant claimed that prior art was not polyphonic because the quality or fidelity of a ringtone is not mentioned or recognized as a desirable or relevant feature. The priority applications a fortiori cannot be considered to disclose polyphonic for exactly the same reason: a failure to discuss the quality or fidelity of a ringtone. Id. at This excerpt of the file history of the 866 patent, which applies equally to the 864 patent (see Microsoft, 357 F.3d at 1349), confirms that Mr. Shanahan did not have possession of polyphonic audio files at the time the priority applications were filed. d. Solocron s New Litigation Citations Similarly Do Not Show That The Inventor Had Possession Of The Concept Of Polyphonic Audio File In The Priority Applications. Recognizing that the mere citations of file formats does not show possession of polyphonic audio files, Solocron has attempted to identify additional passages that purport to teach the concept passages that were never cited to the PTO during prosecution. See Exhibit 1038 at 34 (citing 692 patent (Exhibit 1051): 30

43 3:30-60; 4:1-28; 9:23-41). As Dr. Strawn explains, these passages do not show that Mr. Shanahan possessed the concept of polyphonic audio files. Exhibit The first passage (3:30-60 in the 692 patent) does not disclose polyphonic audio file and merely references different file formats. As discussed above, those file formats do not teach anything about polyphony, nor are they inherently polyphonic audio files, for at least the basic reason that the content of files with those formats can be polyphonic or monophonic. Although this passage mentions an audio sample of a popular song, a video clip, or frame, etc., those statements do not disclose polyphonic audio files. This passage does not provide any blaze marks that one of skill in the art could understand to have related to the concept of polyphony or polyphonic audio file. Id Moreover, as discussed in Section VI.A.2.c, the inventor distinguished over prior art which showed popular music as not being polyphonic audio files. See id The second cited passage (4:1-28 in the 692 patent) does not disclose anything about the concept of polyphony. This passage generally discusses (a) an ability to process acoustic signals with a transducer and (b) an ability to convert from analog to different digital formats. This passage does not mention or even hint that polyphony (including the concept of the number of sounds within an audio file) was known to or in the possession of Mr. Shanahan. Id

44 The third passage (9:23-41 in the 692 patent) does not provide any indication that the inventor possessed the concepts of polyphonic audio file or polyphony. This passage references editing existing audio files. This description of editing does not disclose anything related to polyphony or polyphonic audio files. Id There is not any disclosure in this passage about the number of simultaneous sounds that the content of a file may express. This passage also does not provide any indication that the number of simultaneous sounds, or the number of sounds in a file, is an important aspect of the invention, nor does it disclose that the inventor possessed this concept. Id. * * * Because the term polyphonic audio file is neither expressly nor inherently supported in the December 1999 or March 2000 applications, Solocron is not entitled to claim priority to either of those dates. Instead, the challenged claims correctly have as their priority date the 864 patent s actual June 2003 filing date. B. Claims 11, 12, 16, 17 and 19 Are Anticipated by Holm More than six months before Mr. Shanahan filed his earliest non-provisional application (and four years before he submitted any claims relating to polyphonic audio files ), Nokia filed a Finish patent application for providing customized ringtones to cellular phones. Exhibit 1013 (the 1999 Finnish application ). A year later, Nokia filed a substantively identical PCT application based on the

45 Finnish application ( Holm ) (Exhibit 1021). Unlike the 864 patent and its ancestors, Holm actually discloses in detail the elements of claims 11, 12, 16, 17, and 19, including explicitly disclosing polyphony. Holm teaches a telephone that can be programmed to use customized audio as a ringing tone. See Exhibit 1021 at 1:4-8. More particularly, Holm discloses that a telephone having a network browser application can be used to connect to a database via an internet link and/or a cellular radio network whereby the telephone can download sound packets in varying degrees of polyphony. Id. at 12: The sound packet can be in MPEG form. Id. at 23:6-8 (claim 12). Thus, Nokia invented and disclosed all features recited in claims 11, 12, 16, 17 and 19 about four years before the 864 patent was filed. Nokia not only mentioned the word polyphony in the context of ringtones before Mr. Shanahan, it also recognized and appreciated the issues polyphonic ringtones present the meaningful disclosure absent from the 864 patent and its priority applications. Claim charts showing the anticipatory nature of Holm are below. See also Exhibit Claim Element Where Each Limitation Is Found in Holm (Exhibit 1021) 11. A method for Holm is entitled Method and arrangement for providing providing a customized audio characteristics. polyphonic audio A method is provided for downloading audio characteristics file to a wireless 33

46 telephone for use as an indicia of an incoming communication, the method comprising: [11a] providing a database of polyphonic audio files suitable for downloading to the wireless telephone; to terminal equipment. (Abstract). [T]he mobile telephone is implicitly taken to be the ultimate receiver of a sound packet (18:22-23). The invention concerns generally furnishing terminal equipment of communication systems with selectable audio characteristics. Especially the invention concerns a method and arrangement for providing a large degree of selectability to individual users concerning ringing tones emitted by their terminal equipment. (1:4-8). A sound packet is understood in this context as an entity that comprises a piece of musical score information and a set of parameters that relate to the instruments or synthesized sound sources which should be used to play the score. (4:26-33). The size of a sound packet 100 in bits will depend heavily on the number of simultaneous voices, i. e. polyphony.. (9:8-12). Fig. 4 illustrates an exemplary method for downloading a sound packet from a database according to Fig. 2a or 2b. (12:29-35). See also Figures 4, 5A, 6, 7, and 8. Fig. 2a illustrates a structure of sound packets stored in a database schematically shown as 200. Said database is most advantageously maintained in a service provider's computer with fixed connections to a cellular radio network. (10:4-6; see also Fig. 2a). The size of a sound packet 100 in bits will depend heavily on the number of simultaneous voices, i. e. polyphony (9:8-19). Fig. 6 illustrates some communication connections that can be used as channels for downloading sound packets to terminal equipment 601 from one or several databases 602 and 603. (15:14-25). providing a database (200, 200') of a plurality of sound packets offering (408) said selected number of sound 34

47 [11b] providing a list of polyphonic audio files in the database to a user of the wireless telephone when the user requests the list of polyphonic audio files; [11c] allowing the user of the wireless telephone to browse the list of polyphonic audio files; packets to the terminal equipment as alternatives for selection, and downloading (412, 419) a selected one of said selected number of sound packets to terminal equipment through a communication network. (Claim 5) A sound packet is understood in this context as an entity that comprises a piece of musical score information and a set of parameters that relate to the instruments or synthesized sound sources which should be used to play the score. (4:26-33). See also 5:8-9, 5:24-6:8, 2:16-31, claims 9 and 12, Fig. 1. Fig. 4 illustrates an exemplary method for downloading a sound packet from a database according to Fig. 2a or 2b. At step 401 the user initiates the procedure by e.g. starting a network browser application in his terminal and asking for a connection to a certain network address which he knows to lead to the homepage of the sound packet downloading service. (12:29-13:1). At step 407 the database composes a selection list consisting of only those stored sound packets which are compatible with the indicated terminal type. At step 408 it sends the composed selection list to the terminal, which displays it to the user at step 409. The user makes his selection at step 410. (13:19-25). See also Figure 4, 13:4-5, 18:27-19:5, 19:25-20:2, claim 5. Fig. 4 illustrates an exemplary method for downloading a sound packet from a database according to Fig. 2a or 2b. At step 401 the user initiates the procedure by e.g. starting a network browser application in his terminal and asking for a connection to a certain network address which he knows to lead to the homepage of the sound packet downloading service. (12:29-13:1) A method according to claim 2, characterized in that it comprises the steps of: providing a database (200, 200') of a plurality of sound packets offering (408) said selected number of sound packets to the terminal equipment as alternatives for selection, and as a response to said selection 35

48 [11d] allowing the user of the wireless telephone to select a desired polyphonic audio file from the list of polyphonic audio files; [11e] allowing the user of the wireless telephone to optionally download a selected polyphonic audio file into the wireless command (411, 418), downloading (412, 419) a selected one of said selected number of sound packets to terminal equipment through a communication network. (Claim 5) At step 407 the database composes a selection list consisting of only those stored sound packets which are compatible with the indicated terminal type. At step 408 it sends the composed selection list to the terminal, which displays it to the user at step 409. The user makes his selection at step 410 and the terminal forwards it to the database at step 411. This triggers the actual downloading at step 412. (13:19-25; Fig. 4). See also 13: At step 408 it sends the composed selection list to the terminal, which displays it to the user at step 409. The user makes his selection at step 410 and the terminal forwards it to the database at step 411. (13:19-28). See also Fig. 4 and steps A method according to claim 2, characterized in that it comprises the steps of: selecting (407) from said database a number of sound packets the compatibility information of which shows them to be compatible with the known processing and storing capacity of terminal equipment of said certain type; offering (408) said selected number of sound packets to the terminal equipment as alternatives for selection, and - as a response to said selection command (411, 418), downloading (412, 419) a selected one of said selected number of sound packets to terminal equipment through a communication network. (Claim 5) At step 408 it sends the composed selection list to the terminal, which displays it to the user at step 409. The user makes his selection at step 410 and the terminal forwards it to the database at step 411. This triggers the actual downloading at step 412. The downloaded sound packet is stored into the memory of the terminal at step 413. The completion of the downloading is indicated to the user at step 414. (13:19-28; Fig. 4 and steps ). A method according to claim 2, characterized in that it 36

49 telephone for future use as an indicia of an incoming communication; and [11f] confirming the selected polyphonic audio file has been properly received. [12] The method of claim 11 further comprising allowing the user of the wireless telephone to search the database of polyphonic audio files for a certain polyphonic audio file using title or description information. comprises the steps of: offering (408) said selected number of sound packets to the terminal equipment as alternatives for selection, and - as a response to said selection command (411, 418), downloading (412, 419) a selected one of said selected number of sound packets to terminal equipment through a communication network. (Claim 5) See also 1:4-8 ( Especially the invention concerns a method and arrangement for providing a large degree of selectability to individual users concerning ringing tones emitted by their terminal equipment. ). The file transfer tool should be applicable for the fast and reliable transfer of small information parts like terminal types, as well as for opening and closing connections and for transferring the files that form the sound packets themselves. File transferring between terminal equipment and fixed computer stations is known as such, so it is well within the capabilities of a person skilled in the art to construct a software tool that may act as the file transfer tool 501 in Fig. 5a. (14:11-17) The completion of the downloading is indicated to the user at step 414. (13:19-28; Figure 4 and step 414). In the absence of any orders from the terminal systems the database 801 feeds into [the terminal] a top 100 group of sound packets as in the unidirectional embodiment, or feeds only selection information that the terminal system and its user may use to identify a desired sound packet. If the user of the terminal system is able to identify a sound packet that is not currently available but that could be ordered from the database 801, he uses the transmitter 812 to transmit a corresponding selection information to the database. As soon as the sound packet database 801 has received an order from a terminal system through an unidirectional uplink channel 813, it feeds the corresponding selected sound packet into the multiplexer and channel encoder block 803 instead of or in addition to the previously fed sound packets, if any. (19:25-20:2) Practical experience has shown that consumers are eager to 37

50 [16] The method of claim 11 further comprising providing a plurality of lists of polyphonic audio files for browsing by the user of the wireless telephone. [17] The method of claim 11 further comprising storing polyphonic audio files in the database including those selected from the group comprising MP3, MPEG, or WAV files. personalize their mobile terminals according to their own taste, which has led to a phenomenal success of services that sell downloadable ringing tones. The known method of downloading a ringing tone from a network requires the user to send an SMS message (Short Messaging Services) to a certain ringing tone server coupled to the fixed parts of the cellular network, said message indicating the user's willingness to download a new ringing tone and preferably also identifying a particular melody which the user is interested in. (1:26-2:2) See also 10:4-15. If the stored selection of sound packets in the database is very large, it may not be useful to transmit all of them through the broadcasting system. The sound packet database 801 could feed into the multiplexer and channel encoder block 803 a top 100 selection of most popular sound packets or other limited subset of all stored sound packets. Alternatively or additionally the sound packet database 801 could feed different subsets of stored sound packets e.g. rock'n roll sound packets classical music sound packets (18:27-19:5) See also 19:25-20:2. A method according to claim 1, characterized in that the steps of providing a score information part (101) and providing an instrument information part (104) together constitute a superstep of generating a file in a MPEG-4 form. (Claim 12) At the priority date of this patent application one of the most popular ways of distributing arbitrary high quality audio sequences in electronic form is MP3 or MPEG-2 Layer 3 coded audio, where MPEG originally comes from Motion Picture Experts Group. Decoding an MP3 encoded bitstream into a [format] suitable for playback requires quite intensive processing. (2:16-31). Figure 8 illustrates an arrangement where the sound packet database 801 is regarded equal to other content sources 802 of 38

51 a broadcast-type transmission network. As an example of such a transmission network we may consider a digital television network that uses the known DVB (Digital Video Broadcasting) standard for transmitting. (17:17-23). See also 4:25-5:2, 5:8-9, 5:24-6:8, 9:8-19, 10:4-13, Fig. 2a, claims 5 and 9. The ordinarily skilled artisan in 2003 would have understood the disclosure of the DVB standard to necessarily include MPEG encoding. See Exhibit Claim Element [19] The method of claim 11 further comprising providing copyright protection for the database of polyphonic audio files to help prevent unauthorized distribution of polyphonic audio files downloaded by the user of the wireless telephone. Where Each Limitation Is Found in Holm (Exhibit 1021) An advantageous addition to the invention is the use of encryption to protect sound packets and/or their parts against illegal copying, editing or use after a predetermined time limit etc. The sound packets or their parts may be stored in the databases in already encrypted form. The use of encryption for protecting stored and/or transmitted pieces of digital data is known as such. The invention does not limit the nature or implementation of the encrypting - decrypting process. (20:20-28) C. Claims 11, 12, 13, 14, 16, and 17 Are Anticipated by Dewing. Almost a year before the 864 patent was filed, mobile device content provider Motricity, Inc. ( Motricity ) filed a patent application for a system and method for creating on-line catalogs for presenting polyphonic audio files for downloading to a wireless telephone ( Dewing ) (Exhibit 1034). For example, Dewing describes in detail how to create a database in which a plurality of 39

52 ringtones can be stored, and it teaches how to present multiple catalogs that feature different subsets of the ringtones. As indicated below, Dewing anticipates claims 11-14, 16, and 17 of the 864 patent. See also Exhibit Claim Element 11. A method for providing a polyphonic audio file to a wireless telephone for use as an indicia of an incoming communicatio n, the method comprising: [11a] providing a database of polyphonic audio files suitable for downloading to the wireless telephone; Where Each Limitation Is Found in Dewing (Exhibit 1034) The invention relates generally to systems and methods for providing media content for mobile communication devices and, more particularly, to systems and methods for supporting the production, management and delivery of media content for wireless devices. 1:8-12. Referring now to the drawings, particularly to FIG. 1, there is shown a block diagram of a communications system configured to deliver media content to an end-user device over a wireless carrier network. Media content, as used herein includes ringtones. An end-user device includes cellular telephone handsets. 3: A method for making one or more pieces of media content stored within a file server available for delivery to an end-user device, said method comprising. Claim 12. See also claims 1-2. A system for making one or more pieces of media content available for delivery to an end-user device, said system comprising: a file server having a plurality of media content files stored therein; a database adapted to associate content type attributes with each of the media content files wherein the media content files comprise any one of audio-based data wherein the audio-based data comprises any one of ringtones, monophonic ringtones, polyphonic ringtones. Claims 1-2. In a first aspect, the invention relates to a system for making one or more pieces of media content available for delivery to an enduser device. The system includes a file server with a plurality of media content files stored therein and a database. 1:

53 [11b] providing a list of polyphonic audio files in the database to a user of the wireless telephone when the user requests the list of polyphonic audio files; With the continued reference to FIG. 2, the media production aspect 20 of the system includes a production tools module 28 and a master media content library 30, referred to herein as the master library. 5: A platform product 66 describes the media type and constraints that specify products 68 deliverable to the platform 64. The ability for a phone to support ringtones is captured, in the object model, by a platform product 66 that references the product 68 named Ringtone. 7: A network 74 can deliver content 34 via a set of delivery channels 78. Delivery channels 78 define a protocol and means of addressing a device 58. Examples of delivery channels 78 include the following: i. HTTP: user or agent acquires content by requesting a URL ii. SMS: requires a phone number. iii. WAP push/pull: user or agent acquires content by requesting a URL 8:8-24. See also 5:36-49, 6:55-7:6. The media management portion 24 of the system provides the tools to create catalogs 86 of media content using the content stored in the master library 30. These catalogs 86 are defined by various parameters, described below, which are stored in system processors (FIG. 1). The media content itself, remains in the file servers 13. Attributes associated with a piece of content and a catalog are used to map content to a catalog. 8:66-9:12. With continued reference to FIG. 2, the media management aspect 24 of the system also includes a Web services application tool 112 or content export tool which is part of the client-server interface 14 (FIG. 1) and provides an integrated interface between client servers 16 (FIG. 1) and a particular project catalog 86. The Web services application tool 112 is built utilizing XML and HTTP protocols and provides XML feeds of catalogs and the previews and content associated with a catalog in response to an HTTP request by a client server. 14:

54 The following is generally needed to retrieve content information from the system servers: a client account in the system, one or more created catalogs within the system, and an Internet protocol (IP) address from which the client accesses the system. A client requests (via browser manually or server originated request), receives (via browser copy and paste or server catch), parses (to flat file or database importer), and stores (in flat file or database) catalog and content feeds. Using the catalog and content feeds, the client creates an HTML/Wireless Applications Protocol (WAP) display (flat file served to end-user interface or dynamically displayed from system database) interface (Storefront) for use by end-users. 14: A client accesses the content of a project catalog 86 with an XML request via HTTP. Once this is successfully passed into the system server, a response is generated and pushed to the client server 16 for display to the end user. In other embodiments, the responses may be provided to the client server by WAP pulling and other browser based delivery. 14: The process is as follows: The client sends a server 16 XML request via HTTP to the system server 10 to access its clientspecific catalog 86. The code for an exemplary catalog request and its related schema is shown in FIG. 16. The following fields are in the request: iv. Catalog Request the enclosing tag denoting that this is a catalog request v. Client Id the assigned client ID for the partner vi. vii. 14: Storefront Id the storefront ID the partner requests Model Id a device model ID, for which the partner is requesting content If an XML request is detected by the Web services application tool 112, the catalog request is sent to the system server 10. The catalog request is handled via the system server 10 and a catalog response is generated as shown in FIGS. 17 a and17 b. The code for an exemplary catalog response and its related schema is shown in FIGS. 17 a through 17 d. viii. Category a logical grouping of content within a catalog; 42

55 category can contain other categories ix. Title a title of a given performance as stored in the catalog Name name of this performance Type performance type of the piece of content Artist artist or band... x. Preview a URI pointing to a preview of the requested piece of content; one piece of content might have several previews with different media types xi. MediaType media type of the preview xii. URI URI of the selected piece of content 15:5-52. See also Fig. 17b (which lists the code for Top Hits including The Carpet Crawlers ; Suspended in Gaffa ; and Shock the Monkey ) Upon receipt of the catalog response, the client server 16 unwinds the XML within the response and builds an HTML or WAP storefront. The storefront may be a Web page displaying the content available within the requested catalog and end-user devices compatible with at least one of the displayed content types. 15: The manage content interface (FIG. 14) provides a list of titles currently in the category, and allows for the addition of titles. Selecting the add titles option causes the system to present a title selector interface (FIG. 15). This interface allows the contact 94 to select a title from the list of available content for the platforms, products and networks associated with this category and catalog. The available list is further restricted based on the rating for the title. The contact can view this available list of titles in a number of ways: 13:7-15 A system for delivering to a user interface via a client server, data indicative of a catalog of media content, said system comprising: a database of a plurality of catalogs, each associated with a client, each catalog having at least one associated media content selected form a plurality of media content, each media content having associated content type attributes; and a server adapted to: receive 43

56 [11c] allowing the user of the wireless telephone to browse the list of polyphonic audio files; a catalog request from the client server, the request including data indicative of the client, a client catalog and an end-user device, assemble a response including data indicative of content associated with the client catalog, and provide the response to the client server; wherein the end-user device has associated attribute capability constraints prescribing a range of acceptable values for content type attributes and the media content associated with the catalog excludes all media content that have content type attributes outside the range of acceptable values. Claim 38. The system of claim 38 wherein the catalog comprises at least one category having a plurality of media content associated therewith and the response includes data indicative of the categories. Claim 48. The system of claim 48 wherein each media content has an associated title and the category data includes data indicative of the title of the media content associated with the category. Claim 49. The system also includes a client-server interface 14 for providing communication between the engine 10 and one or more client servers The client servers 16 themselves, interface with one or more end-users through an end-user interface 18. The end-user interface 18 may be a browser running on a personal computer or the end-user device itself, e.g., cellular telephone or a client application. 4:5-15. A client requests (via browser manually or server originated request), receives (via browser copy and paste or server catch), parses (to flat file or database importer), and stores (in flat file or database) catalog and content feeds. Using the catalog and content feeds, the client creates an HTML/Wireless Applications Protocol (WAP) display (flat file served to end-user interface or dynamically displayed from system database) interface (Storefront) for use by end-users. 14: A client accesses the content of a project catalog 86 with an XML request via HTTP. Once this is successfully passed into the system server, a response is generated and pushed to the client server 16 for display to the end user. In other embodiments, the responses may be provided to the client server by WAP pulling and other 44

57 [11d] allowing the user of the wireless telephone to select a desired polyphonic audio file from the list of polyphonic audio files; browser based delivery. 14: Upon receipt of the catalog response, the client server 16 unwinds the XML within the response and builds an HTML or WAP storefront. The storefront may be a Web page displaying the content available within the requested catalog and end-user devices compatible with at least one of the displayed content types. 15:53-58 With reference to FIG. 2, the media delivery aspect 26 of the system includes a request handler 140, a broker/converter 142, a distributor 144, monitoring tools 146 and customer service tools 148. The request handler 140 hosts the Web services application 14 (FIG. 1) and receives content requests from a client server. 16: In one embodiment, the content requests sent to the request handler 140 by the client server may contain the fields listed below. For example, the delivery address, content delivery code Id and operator Id are sufficient to deliver content. The code for an exemplary content request and its related schema is shown in FIGS. 19 a and 19 b. o Delivery Address destination phone number or address where content is to be sent o Content Delivery Code Id the requested content id; content Id uniquely identifies a piece of content as a part of a catalog [11e] allowing the user of the wireless telephone to optionally download a 16: See also Figs 19a and 19b (exemplary code and schema for a content delivery request), 17: The C2DMA describes the ability for specific media products to be delivered via particular network connections and protocols, both public (the Internet) and proprietary SMSCs). Each delivery channel 78 can provide delivery of a set of products 68. For example, the Nokia 51xx line supports delivery of ringtones via SMS. 8: A network 74 can deliver content 34 via a set of delivery 45

58 selected polyphonic audio file into the wireless telephone for future use as an indicia of an incoming communicatio n; and [11f] confirming the selected polyphonic audio file has been properly received. channels 78. Delivery channels 78 define a protocol and means of addressing a device 58. Examples of delivery channels 78 include the following: o HTTP: user or agent acquires content by requesting a URL o WAP push/pull: user or agent acquires content by requesting a URL o BREW: user must have appropriate client software The relationship between a specific device 58 and a delivery channel 78 is the device's delivery address 80. The format of a delivery address 80 may vary based on the delivery channel 78. For example, the delivery address for the SMS delivery channel on Steve's phone contains an address data field with the value :8-24 See also 8: With reference to FIG. 2, the system may also include a customer service (CS) tool 148 through which it provides various reports to the client and notifications to the end users. An exemplary content delivery/accounting report 150 contains Delivery status (phoneset delivered, smsc delivered, buffered, rejected, etc). 17: The request handler 140 also sends a content delivery response to the client-server, which contains the following fields. The code for an exemplary content response and its related schema is shown in FIG. 20. o Content Delivery Response the enclosing tag denoting that this is a content delivery response o Moviso Transaction a transaction associated to this content delivery request Id the transaction id o Client Transaction a transaction Id used by the client for tracking this content delivery request Id the transaction id 17:5-18. A service request 152 generates a notification 154, e.g. an , which is sent to an appropriate notification receiver. The receiver searches for this service request in the CS tool 148 and resolves it, 46

59 [12] further comprising allowing the user of the wireless telephone to search the database of polyphonic audio files for a certain polyphonic audio file using title or description information. resulting in a service request resolution 156 and an associated notification delivery to an appropriate user :65-18:3. A piece of media 36 may have several performances 42. An example of a piece of media 36 is Dock of the Bay written by Steve Cropper and Otis Redding. A performance 42 is a unique rendering of a piece of media 36. Performances 42 have their own set of attributes such as album name, track length, etc. Thus, for the media Dock of the Bay, performances might be Dock of the Bay by Otis Redding and Dock of the Bay by Glen Campbell. 5:36-45 See also Figure 17b: Fig. 17b-Excerpt The ordinarily skilled artisan would interpret the representative code shown in Figure 17b as allowing a user to search the database of polyphonic audio files using description information, including the artist via the Artist searchname field. See Exhibit 1080 at Claim Element [13] further comprising allowing the user of the wireless telephone to review the Where Each Limitation Is Found in Dewing (Exhibit 1034) With continued reference to FIG. 2, the media management aspect 24 of the system also includes a Web services application tool 112 or content export tool which is part of the client-server interface 14 (FIG. 1) and provides an integrated interface between client servers 16 (FIG. 1) and a particular project catalog 86. The Web services application tool 112 is built utilizing XML and HTTP protocols and provides XML feeds of catalogs and the previews and content associated with a catalog in response to an 47