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

Transcription

1 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD AT&T MOBILITY LLC AND CELLCO PARTNERSHIP D/B/A VERIZON WIRELESS Petitioners v. SOLOCRON MEDIA, LLC Patent Owner Case IPR2015- Patent No. 8,594,651 PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,594,651 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... 4 A. Real Party In Interest Under 37 C.F.R. 42.8(b)(1)... 4 B. Related Matters Under 37 C.F.R. 42.8(b)(2)... 4 C. Lead and Back-Up Counsel Under 37 C.F.R. 42.8(b)(3)... 5 D. Service Information Under 37 C.F.R. 42.8(b)(4)... 5 E. Grounds for Standing Under 37 C.F.R (a)... 6 F. Fees Under 37 C.F.R III. THE 651 PATENT... 6 A. Background... 6 B. The Asserted Priority Chain of the 651 Patent... 9 C. Prosecution History of the 651 Patent IV. IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R (B) V. HOW THE CHALLENGED CLAIMS ARE 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 a Filing Date Prior To December 21, 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 b. Adequate Written Description Requires Express Or Inherent Disclosure And Identification Of The Blaze Marks Of Later- Claimed Characteristics i

3 2. The Priority Applications Do Not Reasonably Convey That the Inventor Possessed a Digital Camera of the First Wireless Communications Device a. The Priority Applications Lack Actual or Inherent Written Description for A Digital Camera of the First Wireless Communications Device b. The Inventor Did Not Provide The Requisite Blaze Marks For a Digital Camera of a Wireless Communications Device The Priority Applications Do Not Reasonably Convey That the Inventor Possessed the Format Compatible with the Second Wireless Communications Device Compris[ing] a Different File Size than the Format of the Selected Video File a. The Priority Applications Lack Actual or Inherent Written Description for a Change in File Size b. The Inventor Did Not Provide The Requisite Blaze Marks For the Format Compatible with the Second Wireless Communications Device Compris[ing] a Different File Size Than the Format of the Selected Video File The Priority Applications Do Not Reasonably Convey That the Inventor Possessed the Format Compatible with the Second Wireless Communications Device Compris[ing] a Different Resolution Than the Format of the Selected Video File a. The Priority Applications Lack Actual or Inherent Written Description for a Change in Resolution b. The Inventor Did Not Provide The Requisite Blaze Marks For the Format Compatible with the Second Wireless Communications Device Compris[ing] a Different Resolution Than the Format of the Selected Video File The Priority Applications Do Not Reasonably Convey That the Inventor Possessed Sending a Link That Identifies the Converted File ii

4 a. The Priority Applications Lack Actual or Inherent Written Description for Sending a Link That Identifies the Converted File b. The Inventor Did Not Provide The Requisite Blaze Marks For a Format Compatible with the Second Wireless Communications Device Comprising a Different Resolution Than the Format of the Selected Video Files B. The Challenged Claims Are Anticipated by Le Bodic C. The Challenged Claims are Rendered Obvious by the Shanahan PCT Application in view of Le Bodic D. Claims 10, 21, 23, 31, 32, and 40 are Rendered Obvious by Lev in view of Le Bodic and the Shanahan PCT Application VII. CONCLUSION iii

5 TABLE OF AUTHORITIES CASES Page(s) Agilent Techs., Inc. v. Affymetrix, Inc., 567 F.3d 1366 (Fed. Cir. 2009)... 22, 24, 32 Anascape, Ltd. v. Nintendo of Am., Inc., 601 F.3d 1333 (Fed. Cir. 2010) Carnegie Mellon University 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) In re NTP, 654 F.3d 1268 (Fed. Cir. 2011) Kennecott Corp. v. Kyocera Int'l, Inc., 835 F.2d 1419 (Fed. Cir. 1987) Lockwood v. Am. Airlines, Inc., 107 F.3d 1565 (Fed. Cir. 1997) PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299 (Fed. Cir. 2008)... 4, 19, 20 iv

6 Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320 (Fed. Cir. 2000)... 21, 24 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)... 18, 19 Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916 (Fed. Cir. 2004) v

7 PETITIONER S EXHIBIT LIST Exhibit 1001 Exhibit 1002 Exhibit 1003 Exhibit 1004 Exhibit 1005 U.S. Patent No. 8,594,651 (the 651 patent) Declaration of Mr. Mark Lanning Regarding U.S. Patent No. 8,594,651, dated 12/06/2014 Final Decision dated April 22, 2014 in IPR Excerpts of Documents Showing Mr. Shanahan s Prosecution and Litigation Experience and Former Clients Complaint filed in Solocron v. Cellco Partnership et al., (E.D. Tex.) (Case No cv-1059) Exhibit 1006 U.S. Patent App. 08/175,022, as filed December 2, 1993 Exhibit 1007 Exhibit 1008 Exhibit 1009 Exhibit 1010 Exhibit 1011 Exhibit 1012 Exhibit 1013 International Publication Number WO98/19438, filed on October 28, 1996 and published on May 7, 1998 Excerpts from: Lincoln Stein and Doug MacEachern, Writing Apache Modules with Perl and C (March 1999). U.S. Patent App. 13/615,013, filed on Sep. 13, 2012, now Pat. No. 8,452,272 U.S. Patent App. 13/471,161, filed on May 14, 2012, now Pat. No. 8,401,537 U.S. Patent App. 13/316,203, filed on Dec. 9, 2011, now Pat. No. 8,521,234 U.S. Patent App. 12/128,991, filed on May 29, 2008, now Pat. No. 8,170,538 U.S. Patent App. 11/633,142, filed on Dec. 2, 2006, now Pat. No. 7,555,317 vi

8 Exhibit 1014 Exhibit 1015 U.S. Patent App. 10/600,975, filed on Jun. 20, 2003, now Pat. No. 7,149,509 Exhibit not used Exhibit 1016 U.S. Provisional Patent App. 60/169,158, filed December 6, 1999 Exhibit 1017 Gwenael Le Bodic, Mobile Messaging Technologies and Services SMS, EMS, and MMS, 2 nd edition, (2005). Exhibit 1018 Int l Pub. No. WO , published Jun 6, 2002 Exhibit 1019 U.S. Patent App. No. 10/482,566, published June 30, 2005 Exhibit 1020 Solocron s Opening Claim Construction Brief, Dkt. No. 119, dated 11/21/2014, in Solocron v. AT&T Mobility, LLC, et al., (E.D. Tex.) (Case No. 2:13-cv-1059) Exhibit 1021 Prosecution History for U.S. Patent No. 8,594,651 Exhibit 1022 Exhibit 1023 Exhibit 1024 Solocron s Infringement Contentions for the 651 patent served on AT&T in the district court litigation. Solocron s Infringement Contentions for U.S. Patent No. 7,742,759 served on AT&T in the district court litigation. Library of Congress records evidencing 2005 publishing date for Le Bodic Exhibit 1025 Newton s Telecom Dictionary, 15th Edition, 1999, at p. 440 (defining JPEG as a lossy format) vii

9 Cellco Partnership d/b/a Verizon Wireless and AT&T Mobility LLC ( Petitioners ) request inter partes review of claims 10, 21, 23, 24, 25, 31, 32, 33, and 40 (the challenged claims ) of U.S. Patent No. 8,594,651 ( the 651 Patent ). Exhibit I. INTRODUCTION AND BACKGROUND The basic function of a patent specification is to disclose an invention. Carnegie Mellon University v. Hoffman-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008). Yet, the challenged claims find no support in the specifications of the priority applications, but instead were added 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 over the references discussed herein. These claims depend from claims 1 and 12, which claim, in relevant part, a method and system for receiving a video file from a first wireless device, converting the format of the received video file, and sending the converted file to a second wireless device. None of the challenged claims are expressly or inherently disclosed in the 651 priority chain. Camera phones, file size conversion, 1

10 resolution conversion, and providing the user with a link identifying the location of a converted file all first appeared in the application for the 651 application nearly thirteen years after the earliest priority date asserted by the patentee and years after wireless carriers such as Petitioners offered these services. Under Federal Circuit law, the complete lack of support for these terms in the priority applications, as detailed in the attached declaration of tele expert Mark Lanning (Exhibit 1002) ( Lanning Decl. ), precludes the patentee from relying on any earlier priority claim. The Board can assess this priority issue in an inter partes review, and has done so before. E.g., Exhibit Mr. Lanning has a BS in computer science and has over 35 years of experience in the tele industry. The 651 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 patent family from Michael Shanahan, a tele and electronics patent attorney who prosecuted patent applications at 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. Though Solocron has asserted the 651 patent against AT&T s and 2

11 Verizon s servers that process Multimedia Messaging Service ( MMS ) messages, the specification makes no reference to MMS or any other type of messaging service. Rather, the 651 patent specification is entirely directed to user-defined downloadable ringtones. 1 Despite the fact that the patent specification lacks any disclosure supporting the conversion of files sent using MMS, Mr. Shanahan waited until 2006 when video transcoding servers were widely used throughout the tele industry to file his first patent, U.S. Patent No. 7,742,759, reciting claims related to file format conversion. Six years later, on December 21, 2012, Mr. Shanahan filed another file format conversion patent, the 651 patent, and included for the first time claim limitations requiring (i) use of a digital camera in a wireless device to create a file, (ii) file size conversion, (iii) resolution conversion, and (iv) creation of a link that identifies (and provides a path to) a converted file. The claims of the 651 patent were rejected only once during prosecution on the procedural ground of non-statutory double patenting. Mr. Shanahan overcame the rejection by filing a terminal disclaimer. The Patent Office never made any 1 A downloadable ringtone is an audio clip that a user can download and set to play when his or her phone receives an incoming call or text message. 3

12 written priority determination 2 or provided any explanation for issuance. The Patent Office s limited review of the 651 patent is unsurprising: over the past ten years, Mr. Shanahan and his attorneys submitted hundreds of vaguely-worded claims (many of which recite terms that were never hinted at in the priority applications) and overwhelmed the Patent Office with hundreds of pieces of prior art without any explanation of the art s relevance. For the reasons identified below, there is a reasonable likelihood that the challenged claims are unpatentable in light of the prior art, thereby 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 759 and 651 Patents, among other related patents, in the Eastern District of Texas 2 As the Federal Circuit recognized, [t]he PTO s own procedures indicate that examiners do not make priority determinations except where necessary. PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305 (Fed. Cir. 2008). 4

13 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, 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 address above. AT&T Mobility, LLC consents to electronic service by at: shejny@mckoolsmith.com and nmathews@mckoolsmith.com. Verizon Wireless consents to electronic service by at: kanderso@wileyrein.com and fchapman@wileyrein.com. 5

14 E. Grounds for Standing Under 37 C.F.R (a) Petitioners certify pursuant to 37 C.F.R (a) that the 651 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 IP III. THE 651 PATENT A. Background The disclosure included in the 651 patent and the applications to which the 651 patent claims priority do not support the features claimed nearly thirteen years after the earliest asserted priority date. Specifically, the 651 patent was filed on December 21, 2012, and purports to claim priority to applications dating back to December Exhibit Although the primary disclosure in the 651 patent specification relates to downloadable ringtones, 3 the 651 claims a format 3 Mr. Shanahan s first 7 patents and almost 250 claims in this patent family relate 6

15 conversion server that can receive pictures from a camera phone, perform size and resolution conversions, and provide the user a link to download converted video files. Figure 4 of the 651 patent is exemplary of the original disclosures and demonstrates how the original patent specification is vague, amorphous, and bears little resemblance to the video transcoding matter the patentee sought to claim thirteen years later: The terms file size (claims 23 and 32) and resolution (24 and 33) do not appear in the 651 patent specification. The term link appears only in the context of a link used to connect a device to a server. See, e.g., Exhibit 1001 at 3:33-41 ( In FIG. 1, links 31 and 32 may be, for example, to downloadable ringtones, not video transcoding servers. 7

16 links (e.g., serial ports, parallel ports, universal serial buses (USB), RS232, GPIB, etc.), modems (e.g., any 35 suitable analog or digital modems, cellular modems, or cable modems).... ). The term link is never used to indicate, or provide a path to, a converted video file. And while the specification discloses the use of a digital camera, it does not disclose use of a digital camera that is part of a wireless device. Video conversion servers that perform the claimed features of the 651 patent were well known in the art long before Mr. Shanahan filed his family of his patents. Indeed, more than six years before Mr. Shanahan filed his provisional application and nineteen years before Mr. Shanahan filed the application that issued as the 651 patent, AT&T filed a patent application that disclosed every element of Mr. Shanahan s alleged invention. Exhibit Patent Application No. 07/175,022, filed in 1993, describes a video conversion server that could receive a video from an image phone (see 15:10-19), perform format type and size conversion (see 16:1-10), and provide the receiving phone a link to download the converted video file (see 7:10-19). Exhibit Beyond AT&T, various companies described and patented video conversion servers. For example, more than a year before Mr. Shanahan s earliest priority date, Ericsson, one of the largest tele companies in the world, patented a video conversion 8

17 server that received and converted video files received from mobile phones. Exhibit Moreover, the group that developed Apache, one of the world s most widely used web server software systems, published a book describing how its video conversion servers worked in March Exhibit B. The Asserted Priority Chain of the 651 Patent The 651 patent claims priority to the following U.S. Patent Application Nos.: (1) 13/615,013, filed on Sep. 13, 2012, now Pat. No. 8,452,272, (2) 13/471,161, filed on May 14, 2012, now Pat. No. 8,401,537, (3) 13/316,203, filed on Dec. 9, 2011, now Pat. No. 8,521,234, (4) 12/128,991, filed on May 29, 2008, now Pat. No. 8,170,538, (5) 11/633,142, filed on Dec. 2, 2006, now Pat. No. 7,555,317, (6) 10/600,975, filed on Jun. 20, 2003, now Pat. No. 7,149,509, (7) 09/518,846, filed on Mar. 3, 2000, now abandoned, 4 and (8) 60/169,158, filed December 6, 1999 ( the December 1999 application ). Exhibits None of these applications disclose much less mention camera phones, file size 4 Petitioners were unable to locate the abandoned March 3, 2000 application. However, all later-filed patents that claim priority to this application, up to and including the 651 patent, are continuations, not continuations-in-part. Therefore, the disclosure of the abandoned March 3, 2000 application will be identical to the disclosure in the subsequent applications. 9

18 conversion, resolution conversion, or providing a user a link to access and download converted video files. The entirety of the December 1999 application consists of a scant four double-spaced pages of text, one doubled-spaced page of 7 claims, and four block diagrams. Exhibit Neither the 1999 provisional application nor any of the other priority applications use the terms digital camera, file size, or resolution, and they only use the term link in the context of a link used to connect to a server. Lanning Decl. at Moreover, all of the applications in the priority chain are continuation applications, not continuations-in-part, so the absence of disclosure in the original patent specification is pervasive throughout the chain. Unlike its parent applications, the 651 application included claims reciting camera phones, file size conversion, resolution conversion, and links to download converted video files. Because of the complete lack of underlying support for these features in every application in the priority chain, the challenged claims are not entitled to claim priority to any of these earlier-filed patent applications. C. Prosecution History of the 651 Patent As noted above, the claims of the 651 patent were rejected only one time on the ground of non-statutory double patenting as being unpatentable over claims 1-10

19 11 of U.S. Patent No. 8,509,759 (another of Mr. Shanahan s patents). Exhibit That Mr. Shanahan s application for the 651 patent was given only a cursory review is evident in view of the fact that the claims cited in support of the double patenting rejection make no mention of a digital camera, file size, resolution, or a link to download a converted video file. Mr. Shanahan overcame the rejection by filing a terminal disclaimer. The Patent Office never made any written priority determination or provided any explanation for issuance. IV. IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R (b) Petitioners request inter partes review of the challenged claims, in view of the references below, which are all prior art under 35 U.S.C. 102(b) when the claims are assigned their proper priority date of the December 21, 2012, the filing date of the application that issued as the 651 patent: 1. Le Bodic, Gwenael Le Bodic, Mobile Messaging Technologies and Services: SMS, EMS, and MMS, 2nd Ed., Exhibit 1017 (Le Bodic); Exhibit 1024 (Library of Congress records). The Patent Office never considered Le Bodic during prosecution. 2. Shanahan PCT, Int l Pub. No. WO , published Jun 6, Exhibit The Patent Office never considered the Shanahan PCT during prosecution. 11

20 3. Lev, U.S. Patent Application No. 10/482,566, filed February 18, 2005, published June 30, Exhibit The Patent Office never considered Lev during prosecution. Petitioners request that the challenged claims be cancelled based upon the following grounds, as detailed below, including claim constructions: Ground 1: The challenged claims are invalid under 35 U.S.C. 102 as anticipated by Le Bodic; Ground 2: The challenged claims are invalid under 35 U.S.C. 103 as obvious over Shanahan PCT in view of Le Bodic; and Ground 3: Claims 10, 21, 23, 31, 32, and 40 are invalid under 35 U.S.C. 103 as obvious over Lev in view of Shanahan PCT and Le Bodic. V. HOW THE CHALLENGED CLAIMS ARE TO BE CONSTRUED UNDER 37 C.F.R (b) (3) In this proceeding, claim terms are to be given their broadest reasonable interpretation consistent with the specification and prosecution history. See Patent Office Trial Practice Guide, 77 Fed. Reg , (Aug. 14, 2012); 37 C.F.R. 100(b). Mr. Lanning has provided an opinion regarding each term to be construed in his expert declaration, filed concurrently herewith as Exhibit 1002, at The broadest reasonable constructions of the claim terms are as follows: Communications link appears in claim 12 of the 651 patent. The 651 specification defines communication link as hardwired links such as serial 12

21 ports, parallel ports, universal serial buses (USB), RS232, GPIB, etc. and defines wireless link as wireless links such as cellular telephone links, wireless Internet links, infrared links, etc. Exhibit 1001, 3: However, in the district court litigation, Solocron seeks to broaden the term link to include wireless links. Exhibit To that end, Solocron proposed that link be construed broadly as a connection that enables data transfer. Id. Petitioners will accept, for the purposes of this IPR proceeding only, Solocron s proposed construction as the broadest reasonable interpretation of the term link. Thus, Petitioners propose that the broadest reasonable interpretation of this term is connection that enables data transfer. Digital camera of the first wireless device has no written support in the specification or the provisional application, yet appears in claims 10 and 21. Thus, petitioners propose that digital camera of the first wireless device be given its plain and ordinary meaning. If the board determines that a construction is necessary, Petitioners propose a digital camera that is part of the first wireless device. Link that identifies the converted file has no written support in the specification or the provisional application, yet appears in claims 31 and 40. In 13

22 construing this claim, petitioner relies upon Solocron s implicit claim constructions within its infringement contentions and proposed claim constructions from the district court litigation. There, Solocron s proposed construction for this term is an element that identifies the converted file and it contends that the claim covers a link sent to the second wireless device notifying the user that a converted file is available to download. It must be noted however, that in order to make such infringement claims, Solocron has stretched the meaning of this limitation. The term link only appears in the specification in the context of a wired or wireless communication link, not a link that may be used to download a file whose format has been converted. The only indicia of a file sent to a second wireless device in the patent specification related an indicia of an unconverted file, not an indicia of a converted file. See detailed discussion in section VI.A.5 below. Nevertheless, petitioners will accept, for the purposes of this IPR proceeding only, the patent owner s proposed construction as the broadest reasonable interpretation of the term link that identifies the converted file. Thus, Petitioners propose that the broadest reasonable interpretation of this term is an element that identifies the converted file. 5 5 In the district court litigation, the defendants proposed that this term be construed as identification of converted file already located on second wireless device. As 14

23 The format compatible with the second wireless device comprises a different file size than the format of the selected video file has no written support in the specification or the provisional applications, yet appears in claims 23 and 32. Thus, petitioners propose that [t]he format compatible with the second wireless device comprises a different file size than the format of the selected video file be given its plain and ordinary meaning. The format compatible with the second wireless device comprises a different resolution than the format of the selected video file has no written support in the specification or the provisional applications, yet appears in claims 24 and 33. Thus, petitioners propose that The format compatible with the second wireless device comprises a different resolution than the format of the selected video file be given its plain and ordinary meaning. discussed in section VI.A.5, the only disclosure in the specification that could arguably be called a link is the indicia sent to a device identifying a file already on that device. Defendants proposed construction interprets the claim in light of that disclosure. Here, for the broadest reasonable construction, petitioners adopt Solocron s broad reading of the claim. 15

24 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 Verizon Wireless and AT&T Mobility set forth an explanation below of why the challenged claims 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 the challenge. An Exhibit List (see 37 C.F.R (e)) identifying the exhibits is also included, supra, at p. iii. A. The Challenged Claims Are Not Entitled to a Filing Date Prior To December 21, As a threshold matter, the challenged claims are not entitled to the filing date of any application prior to the application for the 651 patent. None of these applications provide sufficient written description to establish that Mr. Shanahan possessed the full scope of the subject matter of the challenged claims at any point prior to December U.S.C. 112, 120. Because references cited below have an effective date that falls after the priority date of the priority applications, it is appropriate for this Board to assess priority to determine whether the cited art is prior art. See Exhibit 1036, April 22, 2014 Decision in IPR ( If the 16

25 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 intervening prior art). The priority applications lack adequate written description for the challenged claims regardless of the particular construction used by the Board. There is no disclosure or blaze mark as discussed below even hinting at camera phones, file size conversion, resolution conversion, or providing the user with a link to download converted video files. 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 repeatedly recognized, a patent s claims are not entitled to an earlier priority date merely because the patentee claims priority. In re NTP, 654 F.3d 1268, 1276 (Fed. Cir. 2011) (citing Bausch & Lomb, Inc. v. Barnes-Hind/Hydrocurve, Inc., 796 F.2d 443, 449 (Fed. Cir. 1986)) (breaking priority chain of continuation application and relying on intervening art to invalidate claims). Rather, for a patent s claims to be entitled to an earlier priority 17

26 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, 1355 (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 (1994). 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. Id. 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 18

27 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., 358 F.3d 916, 920 (Fed. Cir. 2004) (internal citations omitted). 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 If an application is denied the benefit of priority, then the inventor s own foreign published application can be used as prior art to invalidate the United States patent. See, e.g., Tronzo, 156 F.3d at 1158 (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, Final Decision dated April 21, 2014 in IPR (finding that challenged patent was not entitled to the benefit 19

28 of the filing date of [the parent application], and noting that prior issued patents from the same inventor were properly utilized as prior art). 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). 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 Inherency requires that the only reasonable reading of the priority application disclose all disputed claim elements. 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 20

29 construction of the specification to determine that there was no written description for the disputed claim element); Kennecott Corp. v. Kyocera Int'l, Inc., 835 F.2d 1419, 1423 (Fed. Cir. 1987) (stating that the necessary and only reasonable construction is used for determining the existence of inherent properties). Even for characteristics that are expressly disclosed in an application, the 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

30 2. The Priority Applications Do Not Reasonably Convey That the Inventor Possessed a Digital Camera of the First Wireless Communications Device a. The Priority Applications Lack Actual or Inherent Written Description for A Digital Camera of the First Wireless Communications Device Neither the term a digital camera of the first wireless device nor any more generic term such as camera phone is found anywhere in the priority applications. See generally Exhibit 1001; Lanning Decl. at Moreover, the priority applications do not contain any actual discussion of the concept of a digital camera being a wireless device or part of a wireless device. Lanning Decl. at One of skill in the art would not have understood that Mr. Shanahan reasonably conveyed any information about whether the digital camera is or is not part of the wireless device communicating a video file to a video conversion server. Id. Thus, there is no actual disclosure under PowerOasis. Furthermore, the priority applications do not have any inherent disclosure of a digital camera of the first wireless device. 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); See 22

31 also Hitzeman v. Rutter, 243 F.3d 1345, 1355 (Fed. Cir. 2001) ( an inherent property must necessarily be present in the invention... and it must be so recognized by persons of ordinary skill in the art ). Solocron may argue that the sole appearance of the term digital camera in the priority applications supports the camera phone limitation. The 651 specification explains that the original video file is sent from the source 50 to programmer 30 for conversion and that: Source 50 may be any device or combination of devices suitable for providing 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.) 651, 3: This is the only appearance of the word camera in the priority applications. As evident from the excerpt, the specification makes no reference to a digital camera that is either part of a wireless device, e.g., a cell phone, or to a digital camera that is itself a wireless device. Lanning Decl. at 38. Further, the other exemplary devices listed for Source 50, such as a VCR and a cassette player, are not wireless devices. Id. Solocron may argue that the digital camera described in column 3 of the 23

32 specification may be part of a wireless device, but such argument 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 ). What matters is that disclosing a digital camera generally does not expressly or necessarily disclose any concept of a digital camera of [a] wireless device. Id. b. The Inventor Did Not Provide The Requisite Blaze Marks For a Digital Camera of a Wireless Communications Device. Even if a digital camera of [a] wireless device could be considered to be present in some unidentified passage of the priority applications, those priority applications lack the requisite blaze marks to the concept of a digital camera embedded in, or part of, a wireless device because they do not indicate that this concept is important (or provides grounds for patentability). Lanning Decl. at Purdue Pharma provides that one 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. 230 F.3d at Solocron cannot now reach back 24

33 to the digital camera disclosed in the specification of the 651 patent and claim that a digital camera that is part of a wireless device was its grounds for patentability. This is a classic case of recasting an inventor s purported invention long after the priority date. 3. The Priority Applications Do Not Reasonably Convey That the Inventor Possessed the Format Compatible with the Second Wireless Communications Device Compris[ing] a Different File Size than the Format of the Selected Video File a. The Priority Applications Lack Actual or Inherent Written Description for a Change in File Size The Lanning Declaration details why the priority applications do not actually or inherently disclose the format compatible with the second wireless device comprises a different file size than the format of the selected video files. Lanning Decl. at The priority applications do not expressly disclose a change in file size. Neither the term size nor any generic term such as compression is found anywhere in the priority applications and there is no discussion of the concept of a video conversion server changing the size of a received video file during conversion. Id. One of skill in the art would not have understood that Mr. Shanahan reasonably conveyed any information about whether the file size of the format compatible with the second device is different from the file size of the selected video file. Id. Thus, there is no actual 25

34 disclosure under PowerOasis. Nor do the priority applications inherently disclose a change in the file size. In the district court litigation, Solocron alleged in its infringement contentions that the dependent claim reciting a different file size also covers a server that performs a pure file size conversion with no accompanying file type conversion, e.g., reducing the size of an MPEG file. Exhibit There is no disclosure, inherent or otherwise, of a pure file size conversion in the 651 priority applications. Lanning Decl. at As mentioned above, the terms size and compression do not appear in the priority applications. The priority applications cannot be said to inherently disclose a file size conversion with no accompanying file type conversion, when the priority applications include no discussion of file size whatsoever. Id. Indeed, there is no discussion of a server performing any conversion other than a file type conversion. Id. b. The Inventor Did Not Provide The Requisite Blaze Marks For the Format Compatible with the Second Wireless Communications Device Compris[ing] a Different File Size Than the Format of the Selected Video File As was the case for digital camera above, the priority applications lack the requisite blaze marks to the concept of a server changing the file size of a received video file because they do not indicate that this concept is important (or 26

35 provides patentability). Lanning Decl. at Mr. Shanahan cannot claim file size conversion as his true invention thirteen years after filing his first application, when he never once used the term size in any priority application. Id. This is another example of impermissible recasting of a purported invention long after the priority date. 4. The Priority Applications Do Not Reasonably Convey That the Inventor Possessed the Format Compatible with the Second Wireless Communications Device Compris[ing] a Different Resolution Than the Format of the Selected Video File a. The Priority Applications Lack Actual or Inherent Written Description for a Change in Resolution The Lanning Declaration details why the priority applications do not actually or inherently disclose the format compatible with the second wireless device comprises a different resolution than the format of the selected video files. Lanning Decl. at The priority applications do not expressly disclose a change in resolution. The term resolution does not appear anywhere in the priority applications and there is no discussion of the concept of a video conversion server changing the resolution of a received video file during conversion. One of skill in the art would not have understood that Mr. Shanahan reasonably conveyed any information about whether the resolution of the format compatible with the second device is different from the resolution of the selected 27

36 video file. Id. Thus, there is no actual disclosure under PowerOasis. Nor do the priority applications inherently disclose a change in the resolution. Id. In the district court litigation, Solocron alleged in its infringement contentions that the dependent claim reciting a different resolution also covers a server that performs a pure resolution conversion with no accompanying file type conversion, e.g., reducing the resolution of an MPEG file. Exhibit There is no disclosure, inherent or otherwise, of a pure resolution conversion in the 651 priority applications. Lanning Decl. at As mentioned above, the term resolution does not appear in the priority applications. The priority applications cannot be said to inherently disclose a resolution conversion with no accompanying file type conversion, when the priority applications include no discussion of resolution whatsoever. Id. Indeed, there is no discussion of a server performing any conversion other than a file type conversion. Id. If Solocron reverses course from the district court litigation and argues that this claim covers only a file type conversion (i.e., converting from one file type to another) that happens to result in a change in resolution, the priority applications still fail to inherently disclose a change in resolution. Lanning Decl. at Though a file type conversion may result in a change in resolution, it does not necessarily result in a change in resolution. Id. Indeed, a file may be converted to 28

37 a different type, e.g., from MPEG to AVI, and maintain the exact same resolution. Id. b. The Inventor Did Not Provide The Requisite Blaze Marks For the Format Compatible with the Second Wireless Communications Device Compris[ing] a Different Resolution Than the Format of the Selected Video File As was the case for the claims above, the priority applications lack the requisite blaze marks to the concept of a server changing the resolution of a received video file because they do not indicate that this concept is important (or provides patentability). Lanning Decl. at Mr. Shanahan cannot concede that the term resolution never appeared in the priority applications and now claim that his true invention was a resolution conversion server. To do so would allow Mr. Shanahan to recast his purported invention long after the priority date. 5. The Priority Applications Do Not Reasonably Convey That the Inventor Possessed Sending a Link That Identifies the Converted File a. The Priority Applications Lack Actual or Inherent Written Description for Sending a Link That Identifies the Converted File The Lanning Declaration details why the priority applications do not actually or inherently disclose sending a link that identifies the converted file. Lanning Decl. at Claims 1 and 12 of the 651 patent generally provides 29

38 that a wireless device receives a video file, converts the file type of the video file, and sends the converted video file to the second wireless device. Claims 31 and 40 provide that the sending limitation comprises sending the second wireless device a link that identifies the converted file. The priority applications never disclose, expressly or inherently, sending a link to a second device identifying a converted file waiting on a conversion server. First, the priority applications do not expressly disclose sending to a second wireless device a link that identifies the converted video file. Id. The priority applications only use the term link in the context of a wired or wireless link and include no discussion of a hyperlink that identifies a converted video file.. See, e.g., Exhibit 1001 at 3:33-41 ( In FIG. 1, links 31 and 32 may be, for example, links.... ). Solocron will likely argue that the indicia indicative to the selected file disclosed in Figure 12 is that link, but this indicia identifies an unconverted file, not the converted file required by claims 31 and 40. Lanning Decl. at Figures 10 through 12 provide that when a user places a call, he can select a signature file, i.e., ringtone, to be played on the called party s phone. Exhibit 1001, 11:53-12:25. In Figures 10 and 11, the signature file is located on the caller s phone and the server, respectively, and so the files are converted to a 30

39 format compatible with the called device before being transmitted to the called device. However, in Figure 12, the selected file is on the called device and thus, no conversion is necessary. The called device is sent an indicia identifying the selected file already located on the called device. Thus, the indicia indicative of the selected file described in the priority applications is not the link to download the converted file required by claims 31 and 40 and the priority applications do not expressly disclose any other embodiments that transmit an indicia or link to the receiving device. Lanning Decl. at Thus, the priority applications do not expressly disclose this limitation. Second, the priority applications do not inherently disclose sending the second wireless device a link that identifies the converted video file. Lanning Decl. at The vast majority of the specification relates to a single user downloading a user-defined audio or video file (e.g., a ringtone). Such embodiments cannot inherently disclose a link sent to a second wireless device. In the few embodiments involving a second wireless device, the converted file is either sent directly to the receiving device or is already located on the receiving device, and thus the second device does not require a link to identify the converted file. See, e.g., Exhibit 1, Figs Solocron may argue that some embodiments provide that the converted file 31

40 may be stored in memory, but none of these embodiments disclose a second wireless device. Lanning Decl. at Even if they did, a server that stores a converted file in memory does not necessarily need to send a link that identifies the converted file. The server may not send the user a link, but rather a message indicating that a file is available for download. Alternatively, the system may not send the user any indication at all, but rather store the file until downloaded by the user. Solocron cannot show that the user would necessarily require a link that identifies the converted file. That these embodiments may include a link to download is precisely the probabilit[y] or possibilit[y] that the Federal Circuit deems insufficient for inherent disclosure. See Agilent, 567 F.3d at Thus, the priority applications provide no inherent disclosure of a link to download sent to a second wireless device. b. The Inventor Did Not Provide The Requisite Blaze Marks For a Format Compatible with the Second Wireless Communications Device Comprising a Different Resolution Than the Format of the Selected Video Files. As was the case for the claims elements discussed above, the priority applications lack the requisite blaze marks to the concept of a server sending to a second wireless device a link that identifies the converted file because they do not indicate that this concept is important (or provides 32

41 patentability). Lanning Decl. at Mr. Shanahan cannot point to the disclosure in Figure 12 of link to download an unconverted file or the embodiments that disclose storing a file on the server and claim that sending a link that identifies the converted file was his true invention. Thus, Mr. Shanahan failed to provide the requisite blaze marks indicating that a link that identifies the converted file was a new patentable invention in his possession when he filed his first patent application. * * * Because the challenged claims are neither expressly nor inherently supported in the 651 specification or any patent application to which it claims priority, Solocron is not entitled to claim priority to a date prior to the filing of the 651 patent. Instead, the challenged claims correctly have a priority date of the 651 patent s actual filing date in December B. The Challenged Claims Are Anticipated by Le Bodic. In 2005, seven years before Mr. Shanahan sought to claim the transcoding matter described in the challenged claims, Gwenael Le Bodic, a messaging architect for the Vodafone group, published a book titled Mobile Messaging Technologies and Services SMS, EMS and MMS ( Le Bodic ). Exhibit Unlike the 651 patent, Le Bodic describes in detail a video transcoding server that 33

42 can receive a video file from a camera phone, perform size and resolution conversion, and send an element to a receiver identifying a converted file. Solocron s infringement contentions show that Solocron agrees that Le Bodic discloses each of these limitations. Notably, in the district court litigation, Solocron cited Le Bodic in its infringement contentions in support of every challenged claim (i.e., camera phones, size conversion, resolution conversion, and sending an element identifying a converted file), including independent claims 1 and 12 from which the challenged claims depend. Exhibit Mr. Lanning s analysis of Le Bodic is included in his expert declaration, filed concurrently herewith as Exhibit 1002, at The following claim chart identifies in detail where each claim element is found in Le Bodic. CLAIM ELEMENT 1[preamble]. A method of format converting a video file received from a first wireless device for communication to a second wireless device, the method comprising: WHERE EACH ELEMENT IS FOUND IN LE BODIC Le Bodic discloses a method of format converting a video file received from a first wireless device for communication to a second wireless device. For example, Le Bodic provides: The use of MMS in the person-to-person scenario tightly relies on the availability of multimedia capabilities in the phone (e.g., digital or video cameras). These multimedia capabilities may be built into the mobile handset as shown in Figure 5.1 or provided as external accessories that can be connected to the phone. They are used to capture still images and video clips to be inserted in multimedia messages. In this category, photo messaging refers to the scenario where the subscriber takes a snapshot of a scene while on the 34

43 CLAIM ELEMENT WHERE EACH ELEMENT IS FOUND IN LE BODIC move and sends it as part of a multimedia message to one or more recipients. Le Bodic, p. 215 (emphasis added). In an environment in which mobile devices have heterogeneous capabilities, adapting the message contents according to the capabilities of receiving devices can greatly improve the overall user experience. From Release 5, 3GPP mandates the support of content adaptation for mobile devices and highly recommends its support by MMSCs [3GPP ]. Id., p The recipient MMS client provides its capabilities to the MMSC during the message retrieval process. Typically, these capabilities are communicated as part of the message retrieval request and the content-adapted message is provided as part of the retrieval response. Id., p Content adaptation performed by the MMSC consists of removing media objects that are not supported by the receiving device or adjusting media objects to the capabilities of the receiving device (e.g., media format conversions, reduction of color depth, reduction of video frame rate, replacement of a video clip by an animated image, etc.). The capability profile of a device includes the following MMS characteristics: Supported MMS version. Maximum supported message size. Maximum supported image resolution. Maximum supported color depth. List of supported content types. Id., p. 240 (emphasis added). The MMS architecture, including the transcoding server, are depicted in Le Bodic Fig. 5.2: 35

44 CLAIM ELEMENT WHERE EACH ELEMENT IS FOUND IN LE BODIC [1a] receiving from a first wireless device at least one video file selected by a user of the first wireless device for transmission to a second wireless device having video playing capability; Id., p Le Bodic discloses receiving from a first wireless device at least one video file selected by a user of the first wireless device for transmission to a second wireless device having video playing capability. For example, Le Bodic provides for photo messaging from a first cell phone to a second cell phone and discloses that the phone may include a digital or video camera: The use of MMS in the person-to-person scenario tightly relies on the availability of multimedia capabilities in the phone (e.g., digital or video cameras). These multimedia capabilities may be built into the mobile handset as shown in Figure 5.1 or provided as external accessories that can be connected to the phone. They are used to capture still images and video clips to be inserted in multimedia messages. In this category, photo messaging refers to the scenario where the subscriber takes a snapshot of a scene while on the 36

45 CLAIM ELEMENT WHERE EACH ELEMENT IS FOUND IN LE BODIC move and sends it as part of a multimedia message to one or more recipients. Id., p. 215 (emphasis added). Le Bodic provides that the MMSC receives the message, including the video file, and performs conversion when necessary: MMS Center The MMS Center (MMSC) is a key element in the MMS architecture. Logically, the MMSC is composed of an MMS relay and an MMS server. The relay is responsible for routing messages not only within the MMSE but also outside the MMSE, but also outside the MMSE, whereas the server is in charge of storing messages. The MMSC server is in charge of temporarily storing messages that are awaiting retrieval from recipient MMS clients. The MMSC may have built-in transcoding capabilities, functions for supporting legacy users, databases for storing user profiles. However, these functions can also be realized with specialized components implemented outside the MMSC. Id., p (emphasis added). Content adaptation performed by the MMSC consists of removing media objects that are not supported by the receiving device or adjusting media objects to the capabilities of the receiving device (e.g., media format conversions, reduction of color depth, reduction of video frame rate, replacement of a video clip by an animated image, etc.). The capability profile of a device includes the following MMS characteristics: Supported MMS version. Maximum supported message size. Maximum supported image resolution. Maximum supported color depth. 37

46 CLAIM ELEMENT [1b] determining a format of the selected video file; WHERE EACH ELEMENT IS FOUND IN LE BODIC List of supported content types. Id., p. 240 (emphasis added). Le Bodic discloses determining a format of the selected video file. For example, Le Bodic discloses that the MMS message sent by the first wireless device has a content type parameter that identifies the type of file: [1c] determining from information associated with the second wireless device video file format requirements of the second wireless device. Id., p Le Bodic discloses determining from information associated with the second wireless device video file format requirements of the second wireless device. For example, as part of the content adaptation process, standards-based MMS messaging utilizes the user agent profile (UAProf) associated with the receiving device to determine the capabilities of the receiving device. The UAProf describes, among other things, file formats compatible with the playback device: User Agent Profile The User Agent Profile (UAProf) specification was first published in the WAP 1.2 specification suite, improved in WAP 2.0, and further enhanced recently by the Open Mobile Alliance. The objective of this specification is to define a method for describing the capabilities of clients and the preferences of subscribers. In practice, this description (known as a user agent profile) is mainly used 38

47 CLAIM ELEMENT WHERE EACH ELEMENT IS FOUND IN LE BODIC for adapting available content to the rendering capabilities of WAP devices. Id., p. 22. UAProf is composed of the following components: MMS characteristics: this component describes the device capabilities for retrieving and rendering multimedia messages (MMS version, maximum message size, supported content types, etc.). Id. [1d] comparing, with one or more computer processors, the video file format requirements of the second wireless device with the format of the selected video file; The recipient MMS client provides its capabilities to the MMSC during the message retrieval process. Typically, these capabilities are communicated as part of the message retrieval request and the content-adapted message is provided as part of the retrieval response. Id., p Le Bodic discloses comparing, with one or more computer processors, the video file format requirements of the second wireless device with the format of the selected video file. For example, Le Bodic discloses comparing the format of the received file to the format capabilities of the second wireless device and performing conversions if necessary at the MMSC: Content adaptation performed by the MMSC consists of removing media objects that are not supported by the receiving device or adjusting media objects to the capabilities of the receiving device (e.g., media format conversions, reduction of color depth, reduction of video frame rate, replacement of a video clip by an animated image, etc.). The capability profile of a device includes the following MMS characteristics: Supported MMS version. Maximum supported message size. Maximum supported image resolution. 39

48 CLAIM ELEMENT WHERE EACH ELEMENT IS FOUND IN LE BODIC Maximum supported color depth. List of supported content types. Id., p. 240 (emphasis added). [1e] in response to said comparison, converting with one or more computer processors, the format of the selected video file to a format that is compatible with the video file format requirements of the second wireless device; and Id., p Le Bodic discloses in response to said comparison, converting with one or more computer processors, the format of the selected video file to a format that is compatible with the video file format requirements of the second wireless device. For example, Le Bodic provides that as part of the content adaptation process, standards-based MMS messaging utilizes the user agent profile (UAProf) associated with the receiving device to determine the capabilities of the receiving device: Content adaptation performed by the MMSC consists of removing media objects that are not supported by the receiving device or adjusting media objects to the 40

49 CLAIM ELEMENT WHERE EACH ELEMENT IS FOUND IN LE BODIC capabilities of the receiving device (e.g., media format conversions, reduction of color depth, reduction of video frame rate, replacement of a video clip by an animated image, etc.). The capability profile of a device includes the following MMS characteristics: Supported MMS version. Maximum supported message size. Maximum supported image resolution. Maximum supported color depth. List of supported content types. Id., p. 240 (emphasis added). See also, Id., Figure 5.8, p

50 [1f] sending the converted video file to the second wireless device. Le Bodic discloses sending the converted video file to the second wireless device. For example, Le Bodic provides that the message is delivered to the recipient phone after content adaptation is complete. 10. The method of claim 1, wherein the selected video file is acquired using a digital camera of the first wireless device. Id., p Le Bodic discloses the method of claim 1, wherein the selected video file is acquired using a digital camera of the first wireless device. The use of MMS in the person-to-person scenario tightly relies on the availability of multimedia capabilities in the phone (e.g., digital or video cameras). These multimedia capabilities may be built into the mobile handset as shown in Figure 5.1 or provided as external accessories that can be connected to the phone. They are used to capture still images and video clips to be inserted in multimedia messages. In this category, photo messaging refers to the scenario where the subscriber takes a snapshot of a scene while on the 42

51 move and sends it as part of a multimedia message to one or more recipients. 12[preamble]. A system that format converts a selected video file received from a first wireless device for communication to a second wireless device, comprising: Id., p. 215 (emphasis added). Le Bodic discloses this element for the same reasons cited above in analysis of element 1[preamble], in view of the fact that claim 12 is the system corollary to method claim 1. [12a] a first link configured to receive from a first wireless device a video file selected by a user of the first wireless device for transmission to a second wireless Le Bodic discloses this element for the same reasons cited above in analysis of element 1[a, in view of the fact that claim 12 is the system corollary to method claim 1. Claim 12 further discloses a first link not present in claim 1. Le Bodic discloses a first link. For example, Le Bodic discloses the first and second wireless device connecting to the MMSC across a wireless cellular network, as depicted in Figure 5.2, p

52 device having video playing capability; and [12b] computer hardware comprising one or more computer processors configured to: Le Bodic discloses computer hardware comprising one or more computer processors. For example, Le Bodic discloses an MMSC that processes received messages. [12c] determine a format of the selected video file; [12d] determine from information associated with the second wireless device video file format requirements of the second wireless P Le Bodic discloses this element for the same reasons cited above in analysis of element 1[b], in view of the fact that claim 12 is the system corollary to method claim 1. Le Bodic discloses this element for the same reasons cited above in analysis of element 1[c], in view of the fact that claim 12 is the system corollary to method claim 1. 44

53 device; [12e] compare the video file format requirements of the second wireless device with the format of the selected video file; [12f] in response to said comparison, convert the format of the selected video file to a format that is compatible with the video file format requirements of the second wireless device; and [12g] send the converted video file to the second wireless device. 21. The system of claim 12, wherein the selected video file is acquired using a digital camera of the first wireless device. 23. The system of claim 12, wherein the format compatible with the second wireless Le Bodic discloses this element for the same reasons cited above in analysis of element 1[d], in view of the fact that claim 12 is the system corollary to method claim 1. Le Bodic discloses this element for the same reasons cited above in analysis of element 1[d], in view of the fact that claim 12 is the system corollary to method claim 1. Le Bodic discloses this element for the same reasons cited above in analysis of element 1[f], in view of the fact that claim 12 is the system corollary to method claim 1. Le Bodic discloses this claim for the same reasons cited above in analysis of claim 10, in view of the fact that claim 21 is the system corollary to method claim 10. Le Bodic discloses the system of claim 12, wherein the format compatible with the second wireless device comprises a different file size than the format of the selected video file. For example, Le Bodic discloses that as part of the content adaptation 45

54 device comprises a different file size than the format of the selected video file. process, the MMSC utilizes the user agent profile (UAProf) associated with the receiving device to determine the capabilities of the receiving device. One standard element of a receiving device s UAProf is the maximum message size the receiving device can accept: Id., Table 5.4, p Le Bodic provides that the MMSC adapts the message contents according to the device capabilities. 24. The system of claim 12, wherein the format compatible with the second wireless Id., p.241. Le Bodic discloses the system of claim 12, wherein the format compatible with the second wireless device comprises a different resolution than the format of the selected video file. For example, Le Bodic discloses that as part of the content 46

55 device comprises a different resolution than the format of the selected video file. adaptation process, the MMSC utilizes the user agent profile (UAProf) associated with the receiving device to determine the capabilities of the receiving device. One standard element of a receiving device s UAProf is the maximum image resolution the receiving device can accept: Id., Table 5.4, p.242. Le Bodic provides that the MMSC adapts the message contents according to the device capabilities. 31. The system of claim 12, wherein the computer hardware is configured to send the converted video file Id., p.241. Le Bodic discloses the system of claim 12, wherein the computer hardware is configured to send the converted video file to the second wireless device as a link that identifies the converted video file. For example, Le Bodic discloses deferred retrieval for MMS 47