Case IPR2015-00342
`Corrected Petition for Inter Partes Review
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`CELLCO PARTNERSHIP D/B/A VERIZON WIRELESS
`AT&T MOBILITY LLC
`Petitioners
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`v.
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`SOLOCRON MEDIA, LLC
`Patent Owner
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`Case IPR2015-00342
`Patent No. 6,496,692
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`CORRCTED PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 6,496,692
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET SEQ.
`
`
`
`Mail Stop: Patent Board
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Case IPR2015-00342
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`I. 
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`TABLE OF CONTENTS
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`INTRODUCTION AND BACKGROUND ........................................................ 1 
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`II.  NOTICES, STATEMENTS AND PAYMENT OF FEES ................................. 4 
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`A.  Real Party In Interest Under 37 C.F.R. § 42.8(b)(1) ........................................................ 4 
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`B.  Related Matters Under 37 C.F.R. § 42.8(b)(2) ................................................................. 4 
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`C.  Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) .............................................. 4 
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`D.  Service Information Under 37 C.F.R. § 42.8(b)(4) .......................................................... 4 
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`E.  Grounds for Standing Under 37 C.F.R. § 42.104(a) ........................................................ 5 
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`F.  Fees Under 37 C.F.R. § 42.103 – Previously Submitted ................................................. 5 
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`III.  THE ‘692 PATENT ............................................................................................. 5 
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`A.  Background ...................................................................................................................... 5 
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`B.  Prosecution History of the ‘692 Patent ............................................................................ 6 
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`IV. IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R. § 42.104(B) .......... 8 
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`V.  HOW THE CHALLENGED CLAIMS ARE TO BE CONSTRUED UNDER
`37 C.F.R. § 42.104 (B) (3) ................................................................................. 14 
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`VI. DETAILED EXPLANATION AND SUPPORTING EVIDENCE UNDER 37
`C.F.R. §§ 42.104(B)(4) AND (B)(5) ................................................................. 17 
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`A.  Mr. Shanahan Is Not Entitled to an Invention Date Prior to March 3, 2000. ................. 18 
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`B.  Claims 1 and 4-6 Are Anticipated by Alanara ............................................................... 21 
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`C.  Claims 1 and 4-6 Are Anticipated by Rizet. .................................................................. 28 
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`D.  My Nokia Anticipates Or Renders Obvious Claims 1 and 4-6 ...................................... 35 
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`E.  JukeBoksi Anticipates or Renders Obvious Claims 1 and 4-6. ...................................... 40 
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`F.  9110 UM Anticipates Claims 1 and 4-6 of the ‘692 Patent ........................................... 45 
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`G.  9110 UM Combined With 9110 Documents Render Obvious Claims 1 and 4-6 .......... 51 
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`H.  Claims 1 and 4-6 Are Obvious in view of Nokia 9110 UM in Combination with My
`Nokia. ............................................................................................................................. 57 
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`I.  The Cited Bases Are Not Cumulative ............................................................................ 59 
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`VII. CONCLUSION ................................................................................................. 60 
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
`Agilent Techs., Inc. v. Affymetrix, Inc.,
`567 F.3d 1366 (Fed. Cir. 2009) .......................................................................... 19
`
`Bruckelmyer v. Ground Heaters, Inc.,
`445 F.3d 1374 (Fed. Cir. 2006) .......................................................................... 12
`
`Constant v. Advanced Micro-Devices, Inc.,
`848 F.2d 1560 (Fed. Cir. 1988) .......................................................................... 13
`
`In re Hall,
`781 F.2d 897 (Fed. Cir. 1986) ............................................................................ 12
`
`In re Klopfenstein,
`380 F.3d 1345 (Fed. Cir. 2004) .......................................................................... 12
`
`Monsanto Co. v. Mycogen Plant Sci., Inc.,
`261 F.3d 1356 (Fed. Cir. 2001) .......................................................................... 20
`
`In re Mulder,
`716 F.2d 1542 (Fed. Cir. 1983) .......................................................................... 20
`
`New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co.,
`298 F.3d 1290 (Fed. Cir. 2002) .......................................................................... 18
`
`In re NTP, Inc.,
`654 F.3d 1268 (Fed. Cir. 2011) .......................................................................... 18
`
`PowerOasis, Inc. v. T-Mobile USA, Inc.,
`522 F.3d 1299 (Fed. Cir. 2008) .......................................................................... 18
`
`In re Robertson,
`169 F.3d 743 (Fed. Cir. 1999) ............................................................................ 19
`
`Stored Value Solutions, Inc. v. Card Activation Techs. Inc.,
`499 F. App’x 5 (Fed. Cir. 2012) ......................................................................... 13
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`Suffolk Techs., LLC v. AOL Inc.,
`752 F.3d 1358 (Fed. Cir. 2014) ...................................................................... 9, 13
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`Voter Verified, Inc. v. Premier Election Solutions, Inc.,
`698 F.3d 1374 (Fed. Cir. 2012) ............................................................................ 9
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`In re Wyer,
`655 F.2d 221 (C.C.P.A. 1981) ............................................................................ 12
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`PETITIONERS’ EXHIBIT LIST
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`Description
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`Exhibit No.
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`Exhibit 1001 U.S. Patent No. 6,496,692 (the ‘692 patent)
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`Exhibit 1002 Complaint filed in Solocron v. Cellco Partnership et al. (Case
`No. 2-13-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 Not Used
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`Exhibit 1006 Exhibit Not Used
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`Exhibit 1007 Exhibit Not Used
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`Exhibit 1008 Exhibit Not Used
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`Exhibit 1009 Exhibit Not Used
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`Exhibit 1010 Exhibit Not Used
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`Exhibit 1011 Excerpts of Documents Showing Mr. Shanahan’s Prosecution
`and Litigation Experience
`Exhibit 1012 List of Patents and Patent Applications Issued to Nokia Relating
`to Ringtones
`Exhibit 1013 Exhibit Not Used
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`International Publication No. WO 98/25397, entitled
`“Telecommunication Device and a Method for Providing
`Ringing Information”, published June 11, 1998 (“Philips” or
`“Rizet”)
`Exhibit 1015 Exhibit Not Used
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`Exhibit 1014
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`Exhibit 1018
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`Exhibit 1019
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`Exhibit 1016
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`Exhibit 1017
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`“Ring My Bell,” The New Yorker, March 7, 2005. (downloaded
`from http://www.newyorker.com/magazine/2005/03/07/ring-my-
`bell)
`“The Sweet Sound of Success,” Time Magazine Europe, 2004
`(downloaded from
`http://content.time.com/time/magazine/article/0,9171,901040816
`-678568,00.html )
`“Pioneer of the Mobile Ringtone Business,” Mobile
`Entertainment Forum MEF Special Recognition Award, 2004
`Internet Archive Declarations and Copies of Various Websites
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`Exhibit 1020 Exhibit Not Used
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`Exhibit 1021 Local Patent Rule 4-3 Statement filed in Solocron v. Cellco
`Partnership et al. (Case No. 2-13-cv-1059) (E.D. Tex.)
`Exhibit 1022 U.S. Patent No. 6,292,668, filed on October 30, 1998, as a
`continuation of No. 08/804,236 (filed on February 20, 1997),
`issued on September 18, 2001 (“Alanara”)
`Exhibit 1023 Certified English translations of JukeBoksi websites
`(corresponding to 1019-0088 -0098).
`Exhibit 1024 Google, Inc. v. Whitserve LLC, IPR2013-00249, Decision dated
`Sept. 10, 2013 (Paper 11) Granting petition based in part on
`Exhibit 1003 (also attached)
`Exhibit 1025 Wynn W. Coggins, Prior Art in the Field of Business Method
`Patents – When Is an Electronic Document a Printed Publication
`for Prior Art Purposes?, AIPLA, Fall 2002, available at
`http://www.uspto.gov/patents/resources/methods/aiplafall02pape
`r.jsp
`Exhibit 1026 Declaration of Jari Valli
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`Exhibit 1027 The IEEE Standard Dictionary of Electrical and Electronics
`Terms (6th ed. 1997)
`Exhibit 1028 Webster’s II New College Dictionary (2001)
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`Exhibit 1029 Microsoft Press Computer Dictionary (1999)
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`Exhibit 1030 The Concise Oxford Dictionary (Judy Pearsall ed., Oxford
`University Press, 10th ed. 1999)
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`Exhibit 1033
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`Exhibit 1034
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`Exhibit 1035
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`Exhibit 1031 Nokia 9110 User Manual, published at least as early as February
`1, 1999 (“9110 UM”)
`Exhibit 1032 Declaration of Erin Flaucher re Nokia 9110 with Exhibits
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`9110 Nokia.com web page archived May 8, 1999 for “frequently
`asked questions” (“9110 FAQ”)
`9110 CD Listing Printout (“9110 CD Listing”)
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`9110 PC Suite PC Suite for Nokia 9110 Communicator User’s
`Guide (“9110 PC Suite”)
`Exhibit 1036 Quick Guide for the WAV converter for the Nokia 9110
`Communicator, 10/22/1999
`http://nds1.nokia.com/phones/files/software/wav_converterzip91
`10.zip (“9110 WAV Converter”)
`Exhibit 1037 Declaration of Internet Archive re Nokia Web Sites
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`Exhibit 1038 Declaration of Henry Houh, Ph.D., and CV
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`Merriam-Webster Online Dictionary
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`Exhibit 1039
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`Corrected Petition for Inter Partes Review
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`I.
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`INTRODUCTION AND BACKGROUND
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`Cellco Partnership d/b/a Verizon Wireless and AT&T Mobility LLC
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`(“Petitioners”) request inter partes review of claims 1 and 4-6 of U.S. Patent No.
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`6,496,692 (“the ‘692 patent”) (Exhibit 1001). The ‘692 patent is part of a family
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`of nearly twenty patents owned by Solocron Media, LLC (“Solocron”), a small
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`company in Tyler, Texas. The portfolio’s inventor, Michael Shanahan, is a former
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`telecommunications and electronics patent prosecutor and litigator whose clients
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`over the past fifteen years include Nokia, Inc. and other well-known electronics
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`companies. See, e.g., Exhibit 1011 at 0004-5, 0066, 0068-81.
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`Solocron alleges that the ‘692 patent relates to searching for and
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`downloading a “user-defined” audio file from a database and using that audio file
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`as a ringtone. Mr. Shanahan did not claim to invent ringtones, and conceded
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`during prosecution of the ‘692 patent that ringtones were well-known in the art
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`prior to his filing date. Exhibit 1004 at 0094-95. Indeed, Nokia owns at least 101
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`patent applications relating to ringtones, including 17 patents and applications pre-
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`dating the ‘692 patent. Exhibit 1012. These include U.S. Patent No. 6,292,668
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`(“Alanara”) (Exhibit 1022), which predates the ‘692 patent by over two years and
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`discloses the claim elements in much greater detail than the ‘692 patent
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`contemplates. Alanara and the other references discussed herein were not
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`presented to the Patent Office during prosecution of the ‘692 patent.
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`Recognizing this crowded field, the inventor tried to distinguish his
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`invention during prosecution by (wrongly) asserting that prior art systems were
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`confined to “predefined audio selections.” To address this alleged “problem,” Mr.
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`Shanahan disclosed downloading audio files (without providing any details on how
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`the downloading occurred) and utilizing them as “indicia” of communications.
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`But by the filing date of the ‘692 patent, many others in the art solved this
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`same alleged “problem” using this same method. More than two years before the
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`‘692 filing, Nadege Rizet filed an application for searching, browsing, selecting
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`and downloading ringtones. Exhibit 1014. This application uses strikingly similar
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`language to the ‘692 patent, including the same “user defined” language that was a
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`purported basis for novelty of the ‘692 claims. See id. at 2:29-30.
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`Almost a year prior to Mr. Shanahan’s purported invention, Nokia published
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`a User’s Manual and other documents about a well-known device, the Nokia 9110.
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`These documents explicitly teach users to search, browse and select files from the
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`Internet so that “WAV files can be downloaded from the Internet . . . [and] can also
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`be used as ringtones.” Exhibit 1033 at 0004. Neither the 9110 nor any
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`documentation concerning the 9110 were considered during prosecution.
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`Similarly, well before the ‘692 filing, a Finnish carrier, Radiolinja, worked
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`with an inventor, Vesa-Matti Paananen, to develop and launch a website called
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`“Jukeboksi” that allowed subscribers to customize their cellular phones with
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`ringtones of their choice. Mr. Paananen has received recognition from the industry
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`including a special award as “Pioneer of the Mobile Ringtone Business.” Exhibits
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`1016-1018. As shown below in screen captures from the Wayback Machine,
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`Jukeboksi permits a user to search, browse, and download a wide variety of
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`ringtones. Exhibit 1019 at 0015, 0019, 0021 and 0088-98 and Exhibit 1023.
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`Also prior to Mr. Shanahan’s earliest filing date, the My Nokia website
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`launched and permitted users with Nokia phones such as the 9110 to customize
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`those phones with selectable ringtones. Exhibit 1019 at 0015, 0019, 0021.
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`Authenticated screen captures of My Nokia confirm that My Nokia discloses the
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`elements of claims 1 and 4-6 in concise detail. Neither Jukeboksi nor My Nokia
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`were considered by the Examiner during prosecution.
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`The lack of consideration of these references is unsurprising given the
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`limited and inconsistent file history of the ‘692 patent. Significantly, claims 1 and
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`4-6 only received a single rejection during prosecution for lack of antecedent basis,
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`and do not appear to have ever been substantively examined by the Patent Office.
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`Moreover, the Examiner allowed the claims on a basis that he previously
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`acknowledged was present in the prior art, and changed his reasons for allowance
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`during prosecution without explanation.
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`For all the reasons below, there is a reasonable likelihood that claims 1 and
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`4-6 of the ‘692 patent are unpatentable, warranting inter partes review.
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`II. NOTICES, STATEMENTS AND PAYMENT OF FEES
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`A. Real Party In Interest Under 37 C.F.R. § 42.8(b)(1)
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`The real parties in interest are Cellco Partnership d/b/a Verizon Wireless and
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`AT&T Mobility LLC.
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`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
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`Solocron sued the entities below (and Petitioners) for infringement of the
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`‘692 patent in the Eastern District of Texas on December 6, 2013 (Case No. 2:13-
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`cv-01059) (“the Litigation”):
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` Sprint Corporation, Sprint Communications
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`Company L.P., Sprint Solutions Inc., and T-Mobile USA, Inc. See Exhibit 1002.
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`C. Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
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`Petitioners designate lead and back-up counsel as noted below.
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`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: 202.719.7000 / Fax: 202.719.7049
`For Petitioner AT&T Mobility LLC
`Lead Counsel
`Backup Counsel
`Theodore Stevenson, III, Reg. No. 39,040
`Scott W. Hejny, Reg. No. 45,882
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`Nicholas Mathews, Reg. No. 66,067
`MCKOOL SMITH PC, 300 Crescent Court, Suite 1500, Dallas, TX 75201
`Phone 214.978.4000 / Fax 214.978.4044
`D.
`Service Information Under 37 C.F.R. § 42.8(b)(4)
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`Please address all correspondence to lead counsel at the addresses above.
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`Petitioners consent to electronic service by email at: kanderson@wileyrein.com,
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`fchapman@wileyrein.com, sfelder@wileyrein.com, shejny@mckoolsmith.com,
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`tstevenson@mckoolsmith.com, and nmathews@mckoolsmith.com.
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`E. Grounds for Standing Under 37 C.F.R. § 42.104(a)
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`Petitioners certify pursuant to 37 C.F.R. § 42.104(a) that the ‘692 patent is
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`available for inter partes review, and that Petitioners are not barred or estopped
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`from requesting inter partes review based on the grounds herein. The original
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`Petition was filed within one year of the service of the Complaint above.
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`F.
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`Fees Under 37 C.F.R. § 42.103 – Previously Submitted
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`III. THE ‘692 PATENT
`A. Background
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`The ‘692 patent was filed on March 3, 2000, and purports to claim priority
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`to a December 1999 provisional application (“the December 1999 application”).
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`Exhibit 1001. The ‘692 patent relates to personalizing telephones with audio files.
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`Id. at 1:55-57. The specification acknowledged that there were “many types of
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`electronics devices” with “user-selectable” audio and video that were already
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`available before the invention date. Id. at 1:15-26. Similarly, Mr. Shanahan later
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`acknowledged that basic ringtone technology was already well-known before his
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`earliest invention date. Exhibit 1004 at 0094-95.
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`According to Mr. Shanahan, a drawback of such technology was that users
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`“ha[d] to choose from a limited selection of pre-programmed information . . .
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`placed there by the manufacturer.” Exhibit 1001 at 1:31-34. To address this
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`purported issue, Mr. Shanahan proposed a method for “allow[ing] a user to
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`program user-defined information into his or her electronic device” to “customize”
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`that device. Id. at 1:35; 1:62-64. As shown below, this basic customization
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`technology was well-established long before Mr. Shanahan’s invention date.
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`B.
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`Prosecution History of the ‘692 Patent
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`On March 3, 2000, Mr. Shanahan filed the application that eventually
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`became the ‘692 patent. Mr. Shanahan initially presented a different set of claims
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`bearing little resemblance to the issued claims. Exhibit 1004 at 0031-35. The
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`Examiner rejected these claims over many references, many of which were
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`unrelated to ringtones and the inventor cancelled those claims. Id. at 0072-78.
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`Mr. Shanahan made several key concessions about the prior art and his
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`purported invention. First, he conceded that “ring sequences or notes provided by
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`a telephone manufacturer or other source” were already known in the art prior to
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`his earliest priority date. Id. at 0094-95. Second, Mr. Shanahan admitted that
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`existing prior art systems allowed users to “compose a ring sequence” using notes
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`available on the device. Id. at 0096. Thus, Mr. Shanahan conceded that he did not
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`invent: (i) the concept of ringtones or (ii) the personalization of ringtones.
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`Mr. Shanahan tried to distinguish the prior art by asserting that his invention
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`allowed a user to “browse and choose from among a very broad range of audio
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`and/or video information found on a wide variety of mediums.” Id. at 0095. Yet
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`Mr. Shanahan’s purported distinction contradicted his own admissions that prior
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`art systems such as Napster®—the well-known music sharing service that
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`permitted users to browse and download music from a wide variety of sources—
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`had been developed well before his earliest priority date. Id.
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`In the same 2001 Office Action response, Mr. Shanahan introduced the
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`claims that eventually became claims 1 and 4-6. Despite the concessions on the
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`substantial body of available art, the Examiner made only a procedural antecedent
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`basis rejection with respect to claims 1 and 4-6, but otherwise allowed those claims
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`pending correction of that antecedent basis issue. Id. at 0134.
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`In his reasons for allowance, the Examiner acknowledged that the steps of
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`claim 1 were well-known in the art. For example, the Examiner conceded that one
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`of the cited references, Krane, taught each of the first three steps of claim 1 of the
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`‘692 patent. Id. The sole basis for patentability was that Krane did not disclose
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`programming that audio file into the device for use as a ringtone. Id.
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`However, the Examiner did not acknowledge: (i) Mr. Shanahan’s repeated
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`concessions concerning the existence of ringtones; or (ii) the existence of ample
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`ringtone-related prior art, including prior art that the Examiner himself cited on
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`other claims in the same Office Action. Id. Indeed, the Examiner rejected other
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`claims—ultimately cancelled by Mr. Shanahan in the face of these rejections—
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`over Armanto and Ohayon, noting that Armanto “disclose[s] a programming of a
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`telephone’s ringing tone,” and that Ohayon taught “playing . . . user audio . . .
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`when receiving an incoming telephone call.” Id. at 0131. The Examiner did not
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`explain why Armanto and/or Ohayon were not cited or even discussed with respect
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`to eventual claims 1 and 4-6.
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`Mr. Shanahan corrected the antecedent basis issues and the Examiner issued
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`a Notice of Allowability. The Examiner changed the reasons for allowance,
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`asserting that “none of [the references] teach and fairly suggest that the user to
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`search [sic] a plurality of different locations including the combination and [sic]
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`specifically described as claimed.” Id. at 0162-64. In making that assertion, the
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`Examiner did not acknowledge that (i) he had previously conceded that this
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`limitation was taught by at least the Krane reference; or (ii) he previously agreed
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`that programming ringtones into a device was taught by a number of prior art
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`references. Claims 1 and 4-6 subsequently issued.
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`IV.
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`IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R. § 42.104(b)
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`Petitioners request inter partes review of claims 1 and 4-6 of the ‘692 patent,
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`in view of the references identified below. None of the references listed below
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`were considered by the Patent Office during prosecution. Except where noted, all
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`references are prior art under 35 U.S.C. §§ 102(a) or (b):
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`Alanara (Exhibit 1022), U.S. Patent No. 6,292,668, was filed on October
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`30, 1998, as a continuation of Application No. 08/804,236 (filed on February 20,
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`1997), and issued on September 18, 2001. It is prior art under § 102(e).
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`2.
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`Rizet
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`(Exhibit 1014),
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`Int’l Pub. No. WO 98/25397, entitled
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`“Telecommunication Device and a Method for Providing Ringing Information,”
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`published on June 11, 1998.
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`3. My Nokia (Exhibit 1019), the website of a ringtone downloading service
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`with a URL of www.my-nokia.co.uk, was published at least as early as November
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`29, 1999 via the Internet. See Exhibit 1019 ¶¶ 7-11, 13-14 and 0012-21, 0024-28.
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`4.
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`JukeBoksi (Exhibit 1023), the website of a ringtone downloading service
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`with a URL of www.jukeboksi.radiolinja.fi, was published at least as early as
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`January 25, 1999 via the internet. See Exhibit 1019 ¶¶ 39-41 and 0088-98; Exhibit
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`1023 (certified translations of same).
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`The My Nokia and JukeBoksi websites are “on-line database[s] or Internet
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`publication[s] that [are] considered to be ‘printed publication[s]’ within the
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`meaning of 35 U.S.C. §§ 102(a) and (b).” MPEP § 2128; see also Voter Verified,
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`Inc. v. Premier Election Solutions, Inc., 698 F.3d 1374, 1379-81 (Fed. Cir. 2012)
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`(online article that had been available on a public website by the critical date
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`qualified as a “printed publication” under 35 U.S.C. § 102(b)); Suffolk Techs., LLC
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`v. AOL Inc., 752 F.3d 1358, 1364-65 (Fed. Cir. 2014) (post on an internet
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`newsgroup was a printed publication). Moreover, the PTO has long accepted the
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`Wayback Machine as a proper means for establishing a website as prior art. See
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`Exhibit 1024 at 0009-10 and 0015-32 (Sept. 10, 2013 Decision in Google, Inc. v.
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`Whitserve LLC, Paper 11, IPR2013-00249, at 9-10 (P.T.A.B. 2013) and Exhibit
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`1003 thereto (Internet Archive pages)) (granting IPR based on Wayback Machine
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`archive of pages from wellsfargo.com); see also Exhibit 1025 at 0003 (“Examiners
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`utilize commercial databases and the Wayback Machine to help establish website
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`posting dates in order to qualify the website as prior art”); see also EMC Corp. v.
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`Personal Web Techs., LLC, IPR2013-00086, Paper 66 at 29-31 (P.T.A.B. 2014)
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`(accepting web sites as printed publications and citing cases accepting Wayback
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`Machine materials as sufficient authentication).
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`5.
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`9110 UM (Exhibit 1031), User’s Manual for Nokia 9110. 9110 UM was
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`available on the Internet no later than February 1, 1999. Exhibit 1026 ¶¶ 5-6.
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`9110 UM bears a copyright date of 1998 (Exhibit 1031 at 0002), and was
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`distributed to customers on a CD with the 9110 product by no later than February
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`1, 1999. Exhibit 1026 ¶ 4; Exhibit 1032 ¶¶ 4-13.
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`6. The following publications referenced as “9110 Documents”: (a) 9110 PC
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`Suite (Exhibit 1035), “PC Suite For Nokia 9110 Communicator User’s Guide;”
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`(b) 9110 FAQ (Exhibit 1033), “Frequently asked questions” from Nokia 9110
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`website; (c) 9110 WAV (Exhibit 1036), “Quick Guide For The WAV Converter
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`For The Nokia 9110 Communicator,” dated 10/22/1999 and available on Nokia
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`website for downloading no later than December 4, 1999; and (d) 9110 CD List
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`(Exhibit 1034), list of files on CD delivered in box with 9110 product.
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`
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`The following
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`table shows
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`the widespread public availability and
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`distribution of these publications prior to Mr. Shanahan’s earliest priority date.
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`Publication Hardcopy
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`Nokia Website
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`9110 UM
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`9110 PC
`Suite
`9110 FAQ
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`9110 WAV
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`9110 CD
`Listing
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`Exhibit
`1026 ¶ 4
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`
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`
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`Exhibit 1026 ¶¶ 5-6
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`Exhibit 1037 ¶¶ 24-25
` and 0038
`Exhibit 1037 ¶¶ 38-39
`and 0078-81
`Exhibit 1037 ¶¶ 16-17
`and 0028
`Exhibit 1037 ¶¶ 22-23, 38-
`39, 42-43 and
`0036, 0081, 0085
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`On CD Distributed
`With Sales of Product
`Exhibit 1032 ¶¶ 4-13.
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`Exhibit 1032 ¶¶ 4-12,
`15.
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`
`
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`Exhibit 1032 ¶¶ 4-16.
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`Each of these types of distribution constitutes well-accepted forms of
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`publication. First, the publicly available website distribution, supported by the
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`Butler Declarations and the Wayback Machine screenshots, is routinely accepted
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`as proof of publication as discussed in detail above. Second, hardcopies to
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`consumers (supported by declaration) is indisputable proof of distribution.
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`Third, the files and the listing of files on a CD are printed publications under
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`Federal Circuit law. The 9110 CD was distributed in a widespread manner to
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`provide information to consumers and purchasers of the 9110 device. A printed
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`publication can be “printed, handwritten, or on microfilm or magnetic disc or tape,
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`etc.” In re Wyer, 655 F.2d 221, 227 (C.C.P.A. 1981). “[T]he key to a ‘printed
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`publication’ is the ‘probability of dissemination’ rather than the form.” Ex Parte
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`Mettke, Appeal 2008-0610, 2008 WL 4448201, at *6 (B.P.A.I. Sept. 30, 2008)
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`(holding a videotape to be a prior art “printed publication”) (citing Wyer, 655 F.2d
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`at 226). Courts interpret the term printed publication “to give effect to ongoing
`
`advances in the technologies of data storage, retrieval, and dissemination.” In re
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`Hall, 781 F.2d 897, 898 (Fed. Cir. 1986).
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`“[P]ublic accessibility has been called the touchstone in determining whether
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`a reference constitutes a printed publication.” In re Klopfenstein, 380 F.3d 1345,
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`1349 (Fed. Cir. 2004) (quoting Hall, 781 F.2d at 898-99). “A given reference is
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`‘publicly accessible’ upon a satisfactory showing that such document has been
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`disseminated or otherwise made available to the extent that persons interested and
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`ordinarily skilled in the subject matter or art exercising reasonable diligence, can
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`locate it . . . .” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed.
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`Cir. 2006) (quoting Wyer, 655 F.2d at 226). The 9110 CD was clearly
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`disseminated and available to any interested purchaser of the device.
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`A reference need not be indexed or distributed to qualify as a printed
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`publication. Klopfenstein, 380 F.3d at 1348. “If accessibility is demonstrated,
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`there is no requirement to show that particular members of the public actually
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`received the information.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d
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`1560, 1569 (Fed. Cir. 1988). A reference qualifies as a printed publication when
`
`its “entire purpose” is to permit communication with an audience. Suffolk Techs,
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`752 F.3d at 1365 (upholding district court’s finding that newsgroup postings
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`qualified as a printed publication “where dialogue with the intended audience was
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`the entire purpose of the newsgroup postings”).
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`The 9110 CD was distributed to purchasers of the 9110 product. Exhibit
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`1032 ¶¶ 4-16. The 9110 UM states that “the sales package … contains the
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`following . . . CD-ROM” and repeatedly references the “CD-ROM … in the sales
`
`package” (or variants of that phrase). Exhibit 1031 at 0017, 0035, 0040, 0046,
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`0051, 0095, 0105, 0131, 0135, 0167. Numerous Nokia.com Internet pages
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`archived on May 8, 1999 reference the “CD ROM in the sales package” (or
`
`variations). Exhibit 1037 ¶¶ 22-23, 38-39, 42-43 and 0036, 0081, 0085.
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`The entire purpose of the 9100 CD, as well as all the Internet pages and
`
`manuals that reference the 9100 CD, was to disseminate information concerning
`
`the 9100 CD. The 9100 CD, the files thereon, and the listing of files thereon are
`
`thus prior art under 35 U.S.C. § 102(a). See e.g., Stored Value Solutions, Inc. v.
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`Card Activation Techs. Inc., 499 F. App’x 5, 14 (Fed. Cir. 2012) (upholding
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`district court’s finding that software user manual was printed publication given the
`
`evidence that it was copyrighted prior to the critical date and was in fact distributed
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`to customers who purchased the software prior to the critical date).
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`
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`Petitioners request that claims 1 and 4-6 be cancelled based upon the
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`following grounds, as explained in detail below (including relevant claim
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`constructions): Ground 1: claims 1 and 4-6 are invalid under 35 U.S.C. § 102 as
`
`anticipated by Alanara; Ground 2: claims 1 and 4-6 are invalid under 35 U.S.C. §
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`102 as anticipated by Rizet; Ground 3: claims 1 and 4-6 are invalid under 35
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`U.S.C. § 102 and/or 35 U.S.C. § 103 as anticipated by and/or rendered obvious
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`over My Nokia; Ground 4: claims 1 and 4-6 are invalid under 35 U.S.C. § 102
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`and/or 35 U.S.C. § 103 as anticipated by and/or rendered obvious over JukeBoksi;
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`Ground 5: claims 1 and 4-6 are invalid under 35 U.S.C. § 102 as anticipated by
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`9110 UM; Ground 6: claims 1 and 4-6 are invalid under 35 U.S.C. § 102 as
`
`obvious over 9110 UM in combination with 9110 Documents; Ground 7: claims 1
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`and 4-6 are invalid under 35 U.S.C. § 103 as obvious over 9110 UM in
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`combination with My Nokia.
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`V. HOW THE CHALLENGED CLAIMS ARE TO BE CONSTRUED
`UNDER 37 C.F.R. § 42.104 (b) (3)
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`
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`In this proceeding, claim terms are given their broadest reasonable
`
`interpretation consistent with the specification and prosecution history. See Office
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`Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012). The
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`broadest reasonable interpretation of the relevant claim terms is as follows:
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`“Allowing a user to search” should mean “permitting a user to examine
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`a set of items for those