Case IPR2015-
`Declaration of Richard T. Mihran, Ph.D. Under 3 7 C.F .R. § 1. 68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,319,866
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CELLCO PARTNERSHIP D/B/A VERIZON WIRELESS
`AT&T MOBILITY LLC
`Petitioners
`
`v.
`
`SOLOCRON MEDIA, LLC
`Patent Owner
`
`Case IPR20 15-- - -
`Patent No. 7,319,866
`
`DECLARATION OF RICHARDT. MIHRAN, PH.D. UNDER 37 C.F.R.
`§ 1.68 IN SUPPORT OF PETITION FOR INTER PARTES REVIEW OF U.S.
`PATENT NO. 7,319,866
`
`Mail Stop: Patent Board
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-14 50
`
`Verizon Wireless
`Exhibit 1080-0001
`
`
`Declaration of Richard T. Mihran, Ph.D. Under 3 7 C.F .R. § 1. 68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,319,866
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CELLCO PARTNERSHIP D/B/A VERIZON WIRELESS
`AT&T MOBILITY LLC
`Petitioners
`
`v.
`
`SOLOCRON MEDIA, LLC
`Patent Owner
`
`Case IPR20 15-- - -
`Patent No. 7,319,866
`
`DECLARATION OF RICHARDT. MIHRAN, PH.D. UNDER 37 C.F.R.
`§ 1.68 IN SUPPORT OF PETITION FOR INTER PARTES REVIEW OF U.S.
`PATENT NO. 7,319,866
`
`Mail Stop: Patent Board
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-14 50
`
`Verizon Wireless
`Exhibit 1080-0001
`
`
`
`Declaration of Richard T. Mihran, Ph.D. Under 3 7 C.F .R. § 1. 68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,319,866
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ............................................................................................ 1
`
`II. BACKGROUND AND QUALIFICATIONS .................................................. 3
`
`III. UNDERSTANDING OF PATENT LAW ....................................................... 5
`
`IV. BACKGROUND .............................................................................................. 8
`
`A. Overview of the '866 Patent.. ...................................................................... 8
`
`B. Summary of the Prosecution History of the '866 Patent .......................... .l4
`
`V. LEVEL OF ORDINARY SKILL IN THE PERTINENT ART .................... .19
`
`VI. BROADEST REASONABLE CONSTRUCTION ....................................... .l9
`
`VII. DETAILED INVALIDITY ANALYSIS ...................................................... .23
`
`A. Summary of Opinions .............................................................................. .24
`
`B. Claim 10 is Anticipated by Holm ............................................................. .25
`
`1. Background on Holm ......................................................................... .25
`
`2. Holm Discloses All Elements of Claim 10 ......................................... 31
`
`C. Claim 10 is Anticipated by the Nokia 3510 User Guide .......................... .45
`
`1. Background on the Nokia 3510 User Guide ...................................... .45
`
`2. The Nokia 3510 User Guide Discloses All Elements of Claim 10 .... .46
`
`D. Claim 10 is Rendered Obvious by the Combination of the Shanahan PCT
`and Futamase, Baron, and/or Nuova ......................................................... 58
`
`1. Background on the Shanahan PCT, Futamase, Baron, and Nuova ..... 58
`
`1
`
`Verizon Wireless
`Exhibit 1080-0002
`
`
`
`Declaration of Richard T. Mihran, Ph.D. Under 3 7 C.F .R. § 1. 68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,319,866
`
`2. One of Skill in the Art Would Have Been Motivated to Combine the
`Shanahan PCT Application with Futamase, Baron, and/or Nuova ..... 60
`
`3. The Shanahan PCT Application in Combination With Futamase,
`Baron, and/ or Nuova Discloses All Elements of Claim 10 ................ 62
`
`E. Holm in Combination With Futamase, Baron, and/or Nuova Discloses All
`Elements of Claim 10 ................................................................................ 67
`
`VIII. SECONDARY CONSIDERATIONS OF NON-OBVIOUSNESS ............... 69
`
`IX. SUPPLEMENTATION .................................................................................. 70
`
`X. CONCLUSION .............................................................................................. 70
`
`..
`11
`
`Verizon Wireless
`Exhibit 1080-0003
`
`
`
`Declaration of Richard T. Mihran, Ph.D. Under 3 7 C.F .R. § 1. 68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,319,866
`
`I, RichardT. Mihran, Ph.D. hereby declare as follows:
`
`I.
`
`INTRODUCTION
`
`1.
`
`I have been retained as an expert witness on behalf of Cellco
`
`Partnership d/b/a Verizon Wireless ("Verizon Wireless") for the above-captioned
`
`Petition for Inter Partes Review ("IPR") of U.S. Patent No. 7,319,866 ("the '866
`
`patent"). I am being compensated for my time in connection with this IPR at my
`
`standard consulting rate of $600 per hour. My compensation is in no way
`
`dependent on the outcome of this matter.
`
`2.
`
`I have been asked to provide my opinions regarding whether claim 10
`
`of the '866 patent ("claim 10") is invalid, as anticipated by the prior art, or would
`
`have been obvious to a person having ordinary skill in the art at the time of the
`
`alleged invention.
`
`3.
`
`The '866 patent issued on January 15, 2008, from U.S. Patent
`
`Application No. 10/915,866 ("the '866 Application"), filed on August 11, 2004.
`
`Exhibit 1001, the '866 patent. The face of the patent indicates Michael E.
`
`Shanahan as the named inventor. The '866 patent is a continuation of U.S. Patent
`
`Application No. 10/223,200, filed August 16, 2002, which is a continuation of U.S.
`
`Patent Application No. 09/518,782, filed on March 3, 2000, which issued as U.S.
`
`Patent No. 6,496,692 ("the '692 patent").
`
`4. While the '866 patent claims priority to the application that led to the
`
`1
`
`Verizon Wireless
`Exhibit 1080-0004
`
`
`
`Declaration of Richard T. Mihran, Ph.D. Under 3 7 C.F .R. § 1. 68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,319,866
`
`'692 patent, claim 10 of the '866 patent introduces the concept of "polyphonic
`
`audio files," a term which is not used or described in the specifications of any the
`
`alleged priority applications. Thus, for the purposes of this Declaration, I have
`
`been asked to assume that the priority date for claim 10 of the '866 patent is the
`
`filing date shown on its cover page, i.e. August 11, 2004, rather than the filing date
`
`of the parent '692 patent.
`
`5.
`
`In preparing this Declaration, I have reviewed the '866 patent, the file
`
`history of the '866 patent, and numerous prior art references and technical
`
`references from the time of the alleged invention. A complete listing of materials
`
`that I reviewed can be found at Exhibit B to my Declaration.
`
`6.
`
`I have been advised and it is my understanding that patent claims in
`
`an IPR are given their broadest reasonable construction in view of the patent
`
`specification, file history, and the understanding of one having ordinary skill in the
`
`relevant art at the time of the purported invention.
`
`7.
`
`In forming the opinions expressed in this Declaration, I relied upon
`
`my education and experience in the relevant field of the art, and have considered
`
`the viewpoint of a person having ordinary skill in the relevant art, as of 2004. My
`
`opinions directed to the invalidity of claim 10 of the '866 patent are based, at least
`
`in part, on the following prior art publications:
`
`2
`
`Verizon Wireless
`Exhibit 1080-0005
`
`
`
`Declaration of Richard T. Mihran, Ph.D. Under 3 7 C.F .R. § 1. 68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,319,866
`
`Reference
`Holm, Int'l Pub No. WO
`01/16931
`
`Futamase, European Patent
`Application EP1073034
`
`Baron, U.S. Patent No.
`6,506,969
`
`Nuova, Int'l Pub. No. WO
`02/054735
`
`Date of Public Availability
`Holm was published on March 8,
`2001 and is attached as Exhibit 1021
`to the IPR.
`
`Futamase was published on January
`31, 2001, and is attached as Exhibit
`1 026 to the IPR.
`
`Baron was filed under 3 71 on Mar.
`23, 2001, and issued Jan. 14, 2003.
`Baron is attached as Exhibit 1027 to
`the IPR.
`
`Nuova was published on July 11,
`2002 and is attached as Exhibit 1028
`to the IPR.
`
`Shanahan PCT, Int'l Pub. No. Shanahan was published on June 6,
`W0200 1041403
`2002, and is attached as Exhibit 1030
`to the IPR.
`
`3510 UG, User's Guide for
`The 3510 was published in March
`Nokia 3510, published in 2002. 2002, and is attached as Exhibit 1032
`to the IPR.
`
`Perez, U.S. Patent No.
`6,492,761
`
`Perez was filed on January 20, 1998,
`and issued December 10, 2002. Perez
`is attached as Exhibit 1081 to the
`IPR.
`
`II.
`
`BACKGROUND AND QUALIFICATIONS
`
`8.
`
`I am a Professor Adjunct in the Department of Electrical, Computer
`
`and Energy Engineering at the University of Colorado at Boulder, where I have
`
`been on the faculty since 1990. I teach a wide variety of classes at the
`
`3
`
`Verizon Wireless
`Exhibit 1080-0006
`
`
`
`Declaration of Richard T. Mihran, Ph.D. Under 3 7 C.F .R. § 1. 68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,319,866
`
`undergraduate and graduate level covenng general electrical and computer
`
`engineering theory and practice,
`
`including circuit theory, microelectronics,
`
`communications, signal processing, and medical devices and systems. Many of
`
`these classes incorporate lecture and laboratory components that include both
`
`hardware and software design. My curriculum vitae is submitted herewith as
`
`Exhibit A to this Declaration.
`
`9.
`
`I have also performed research and development in academic and
`
`industrial settings pertaining to electronic, optical and ultrasonic devices and
`
`systems for a variety of applications, including both hardware and software
`
`development, for over 30 years. As part of my faculty role at the University of
`
`Colorado, I participate in the supervision of doctoral research performed by
`
`graduate students as part of obtaining their doctoral degrees.
`
`10.
`
`Since obtaining my Ph.D. in 1990, I have actively consulted in
`
`industry in many areas of technology development, analysis and assessment. This
`
`work includes that directed to both product development and analysis of
`
`intellectual property portfolios. The fields of technology in which I have consulted
`
`and/or served as a technical expert include telecommunications, computer
`
`networking, wireless communication, 3-D data analysis and imaging software,
`
`radio frequency identification, medical devices and instrumentation, and many
`
`others.
`
`4
`
`Verizon Wireless
`Exhibit 1 080-0007
`
`
`
`Declaration of Richard T. Mihran, Ph.D. Under 3 7 C.F .R. § 1. 68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,319,866
`
`11.
`
`I have served as an expert witness in a variety of patent litigation
`
`matters, and have been admitted and recognized in district courts as a technical
`
`expert in six separate patent trials in technologies including computer networks,
`
`wireless communication and networking, telecommunications, and others. I have
`
`further been admitted and recognized as a technical expert by the United States
`
`International Trade Commission (ITC) in Washington D.C., where I provided a
`
`technology tutorial and testimony at trial in a patent investigation involving
`
`multiple patents directed to the function and design of smart phones and other
`
`portable computing devices capable of voice and data communications over
`
`cellular and other wireless networks.
`
`12.
`
`I received a B.S. in Electrical Engineering and Applied Physics from
`
`Case Western Reserve University, Cleveland, Ohio in 1982. I further received an
`
`M.S. in Electrical and Computer Engineering and a Ph.D. in Electrical Engineering
`
`from the University of Colorado at Boulder in 1988 and 1990, respectively. My
`
`professional and educational background, as well as a listing of other matters on
`
`which I have provided consulting and/or provided testimony as a technical expert,
`
`are detailed in my curriculum vitae, attached as Exhibit A to this Declaration.
`
`III. UNDERSTANDING OF PATENT LAW
`
`13.
`
`I understand that prior art to the '866 patent includes patents and
`
`printed publications in the relevant art that predate the August 11, 2004 priority
`
`5
`
`Verizon Wireless
`Exhibit 1080-0008
`
`
`
`Declaration of Richard T. Mihran, Ph.D. Under 3 7 C.F .R. § 1. 68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,319,866
`
`date I have been asked to assume for this patent for the purposes of this
`
`Declaration.
`
`14.
`
`I understand that a claim is invalid if it is anticipated or obvious.
`
`Anticipation of a claim requires that every element of a claim be disclosed
`
`expressly or inherently in a single prior art reference, as claimed. I understand that
`
`a prior art reference need only have the same level of disclosure as the asserted
`
`patent to be anticipatory.
`
`15. Obviousness requires that the claim be obvious from the perspective
`
`of a person having ordinary skill in the relevant art at the time the alleged invention
`
`was made. I understand that a claim may be obvious in light of one or more prior
`
`art references.
`
`I further understand that an obviousness analysis requires an
`
`understanding of the scope and content of the prior art, any differences between the
`
`alleged invention and the prior art, and the level of ordinary skill in evaluating the
`
`pertinent art.
`
`16.
`
`I further understand that certain other factors should be considered to
`
`determine if they support or rebut the obviousness of a claim. I understand that
`
`such secondary considerations include, among other things, commercial success of
`
`the patented invention, skepticism of those having ordinary skill in the art at the
`
`time of invention, unexpected results of the invention, any long-felt but unsolved
`
`need in the art that was satisfied by the alleged invention, the failure of others to
`
`6
`
`Verizon Wireless
`Exhibit 1080-0009
`
`
`
`Declaration of Richard T. Mihran, Ph.D. Under 3 7 C.F .R. § 1. 68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,319,866
`
`make the alleged invention, praise of the alleged invention by those having
`
`ordinary skill in the art, and copying of the alleged invention by others in the field.
`
`I understand that there must be a nexus-a connection-between any such
`
`secondary considerations and the alleged invention. I also understand that
`
`contemporaneous and independent invention by others is a secondary consideration
`
`tending to show obviousness.
`
`17.
`
`I further understand that a claim may be obvious if common sense
`
`directs one to combine multiple prior art references or add missing features to
`
`reproduce the alleged invention recited in the claims. If a person having ordinary
`
`skill in the relevant art can implement a predictable variation, obviousness likely
`
`bars its patentability.
`
`18.
`
`For the same reason, if a technique has been used to improve one
`
`device and a person having ordinary skill in the art would recognize that it would
`
`improve similar devices in the same way, using the technique is obvious. I further
`
`understand that a claim can be obvious if it unites old elements with no change to
`
`their respective functions, or alters prior art by mere substitution of one element for
`
`another known in the field and that combination yields predictable results. While
`
`it may be helpful to identify a reason for this combination, common sense should
`
`guide and no rigid requirement of finding a teaching, suggestion or motivation to
`
`combine is required. When a product is available, design incentives and other
`
`7
`
`Verizon Wireless
`Exhibit 1080-0010
`
`
`
`Declaration of Richard T. Mihran, Ph.D. Under 3 7 C.F .R. § 1. 68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,319,866
`
`market forces can prompt variations of it, either in the same field or different one.
`
`IV. BACKGROUND
`
`A. Overview of the '866 Patent
`
`19.
`
`The '866 patent is directed generally to the field of portable electronic
`
`devices, including cellular telephones, which may be programmed with audio files
`
`selected by the user. Exhibit 1001 at Abstract.
`
`20.
`
`The system as claimed in the 866 patent is broadly depicted in Figure
`
`1, which is shown below:
`
`Programmable
`Device
`
`JO
`
`" 32
`
`~ ,
`
`Device
`Programmer
`
`30
`
`_yo
`
`• J1
`,,
`
`Source
`
`8
`
`I d. at Figure 1.
`
`Verizon Wireless
`Exhibit 1080-0011
`
`
`
`Declaration of Richard T. Mihran, Ph.D. Under 3 7 C.F .R. § 1. 68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,319,866
`
`21. Claim 10 of the '866 patent is particularly directed to a telephone that
`
`may be "customized by searching for and selecting an audio file from a remote
`
`computer" and includes a communications link, a display screen and browsing
`
`application, processing circuitry, a programmable memory circuit, and an
`
`"enhanced performance speaker." Id. at 14:13-34.
`
`22.
`
`The specification of the '866 patent discloses that "programmable
`
`device 20 may be any portable electronic device (e.g., wireless telephone, a pager,
`
`a handheld computer, personal digital assistant (PDA), etc.)." I d. at 3:12-14. As
`
`shown in Figure 1 of the '866 patent, programmable device 20 is coupled to a
`
`source of audio files 50 via device programmer 30. The '866 patent further
`
`discloses that "[ s ]ource 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.)." Id. at 3:31-
`
`36.
`
`23.
`
`In one embodiment, device programmer 30 may be implemented
`
`using a personal computer 60 which communicates with a source of audio files
`
`represented by Internet 80 to store user selected files on programmable device 20.
`
`This is depicted, for example, in Figure 3 of the '866 patent below:
`
`9
`
`Verizon Wireless
`Exhibit 1080-0012
`
`
`
`Declaration of Richard T. Mihran, Ph.D. Under 3 7 C.F .R. § 1. 68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,319,866
`
`so
`
`Internet
`
`32
`
`7(1
`
`30
`
`Personal Computer
`
`I d. at Figure 3.
`
`24. With respect to this embodiment, the '866 patent discloses that
`
`"computer 60 may be connected to Internet 80 through link 70. Link 70 may be,
`
`for example, a modem (e.g., any suitable analog or digital modem, cellular modem,
`
`or cable modem), a network interface link (e.g., an Ethernet link, token ring link,
`
`etc.), a wireless communications link (e.g., a wireless telephone link, a wireless
`
`Internet link, an infrared link, etc.), or any other suitable hard-wired or wireless
`
`communications link. With this configuration, a user may download information
`
`from Internet 80 (e.g., using electronic distribution (ED) services) and/or from a
`
`disc drive or other devices (not shown) connected to computer 60 and program that
`
`10
`
`Verizon Wireless
`Exhibit 1080-0013
`
`
`
`Declaration of Richard T. Mihran, Ph.D. Under 3 7 C.F .R. § 1. 68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,319,866
`
`information into device 20 (via programmer 30 and link 32)." Id. at 5:33-45.
`
`25. Alternatively, programmer 30 may be integrated into programmable
`
`device 20, as depicted in figure 5 of the '866 patent below:
`
`20
`)
`
`Programmable Device
`
`1---
`
`25 ·...__
`
`-
`
`Programmer
`30
`
`~2
`,..
`
`Source
`50
`
`I d. at Figure 5.
`
`26. An embodiment of this generalized system utilizing a wireless
`
`telephone with embedded programmer 30 is depicted in figure 7 below:
`
`11
`
`Verizon Wireless
`Exhibit 1080-0014
`
`
`
`Declaration of Richard T. Mihran, Ph.D. Under 3 7 C.F .R. § 1. 68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,319,866
`
`540
`
`520
`
`RIT
`
`Alerting
`Circuit
`
`550
`
`530
`
`Processor
`
`Programmer
`
`30
`
`I d. at Figure 7.
`
`FIG. 7
`
`27.
`
`In figure 7 above, "telephone 500 may include antenna 510,
`
`receiver/transmitter (R/T) circuit 520, processor 530, communications interface
`
`532, speaker/transducer 540, alerting circuit 550, and optionally, programmer 30
`
`(or similar circuitry)." Id. at 10:6-10. Using this embodiment, a user may select a
`
`desired audio file from an external source and transfer the file via communications
`
`interface 32 into the wireless telephone, where it is stored by alerting circuit 550.
`
`12
`
`Verizon Wireless
`Exhibit 1080-0015
`
`
`
`Declaration of Richard T. Mihran, Ph.D. Under 3 7 C.F .R. § 1. 68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,319,866
`
`The processor 530 may then cause the alerting circuit 550 to play the user-defined
`
`audio file through speaker 540 in response to receiving an incoming call. This
`
`described, for example, in the following passage of the '866 patent specification:
`
`A user may program information into telephone 500 in several
`ways. For example, a user may connect telephone 500 to an
`external programmer 30 (not shown in FIG. 7) via link 32 to
`program user-defined audio or video in telephone 500 as
`described above. Processor 530 may route this information to
`alerting circuit 550 for storage and subsequent use. Afterwards,
`the user may configure telephone 500 to play a certain user(cid:173)
`defined audio file stored in alerting circuit 550 when receiving
`an incoming call. Thus, when a call is received, processor 530
`may instruct alerting circuit 550 to play the selected file
`through speaker 540. If a video file is chosen, processor 530
`may instruct alerting circuit 550 to play the user-selected video
`file through a display screen on the telephone (not shown).
`Alerting circuit 550 may include programmable memory
`circuitry for storing user-defined
`information and driver
`circuitry (not shown) for driving speaker 540 and/or a display
`screen on telephone 500.
`
`Id. at 10:11-28.
`
`28. Claim 10 of the '866 patent includes a limitation directed to the
`
`speaker, requiring that it be "an enhanced performance speaker capable of
`
`providing a substantially full range of audio sounds ... " With respect to this
`
`attribute of the speaker, the '866 patent merely states that "speaker 540 may be an
`
`enhanced performance speaker (as compared to those currently installed in
`
`telephones) with the capacity for generating a full range of audio sounds." Id. at
`
`10:47-50.
`
`13
`
`Verizon Wireless
`Exhibit 1080-0016
`
`
`
`Declaration of Richard T. Mihran, Ph.D. Under 3 7 C.F .R. § 1. 68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,319,866
`
`29.
`
`I note in this context that the specification does not disclose the nature
`
`of this "enhancement" of the speaker-or the nature of the circuitry that could be
`
`used with such an "enhanced" speaker. The specification merely states that the
`
`speaker is enhanced "as compared to those currently installed in telephones." In
`
`addition, the term "full range" is not defined adequately, nor is the attribute or
`
`parameter of the polyphonic audio file to which the term "full range" is to be
`
`applied defined in the claims or specification.
`
`B.
`
`Summary of the Prosecution History of the '866 Patent
`
`30. The application leading to the '866 patent was filed on August 11,
`
`2004, and included 40 claims. In an Office Action dated March 7, 2006, the
`
`examiner rejected claims 1-40 under a provisional double patenting rejection as
`
`being in conflict with certain claims of co-pending application 10/915,862 (the
`
`'862 application). Exhibit 1007 at 0135-0136. The applicant responded by
`
`canceling claims 52-59 in the '862 application in an amendment dated September
`
`5, 2006, arguing that only these claims were common to the two pending
`
`applications. Id. at 0114-0115.
`
`31.
`
`In a subsequent Office Action dated November 9, 2006, the examiner
`
`rejected claims 1-40 under 35 U.S.C. § 103(a) as unpatentable over Lin et al. (U.S.
`
`Patent No. 6,366,791) in view of Isomursu et al. (U.S. Patent No. 7,088,990).
`
`Id.
`
`at 0092-0095.
`
`14
`
`Verizon Wireless
`Exhibit 1080-0017
`
`
`
`Declaration of Richard T. Mihran, Ph.D. Under 3 7 C.F .R. § 1. 68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,319,866
`
`32. The applicant responded in an amendment dated May 4, 2007 by
`
`amending certain pending claims, including claim 10, which is the subject of this
`
`declaration. The amendments made to claim 10 are shown below:
`
`10. {Currently Amended) A telephone t~at may be
`customized by searching for and selecting an audio file from a
`remote computer and programming the selected audio file into the
`
`telephone for use ~-=~~~~~~~~==~~~~~~~~ ~
`a !i!me -s~i!iee by the 11eer, the telephone comprlsing:
`
`a communications link ca.pable of connecting to a
`database in the remote computer that includes a plurality of
`polyphonic audio files;
`
`a disp.:..ay screen and a browsing application program
`that allows a user of the telephone to browse the polyphonic
`audio files and select at least one polyphonic audio file
`therefrom;
`
`r.eceipt
`processing circuitry configured to sup€rvise
`of a selected polyphonic audio file from the communications
`link;
`
`a programmable me~ory circuit for allowing the user to
`optior.ally store the selected polyphonic audio file for use ~
`
`an enhanced performance speaker capable of providing a
`
`substantially full range of audio sounds from the selec~ed
`
`audio file when the selected
`
`audio file is
`
`played.
`
`Id. at 0050-0051.
`
`33.
`
`In arguing for patentability of claim 10, the applicant made a number
`
`of characterizations of the purported invention that there were asserted to
`
`distinguish over the prior art Lin and Isomursu references. These purportedly
`
`distinguishing features of the claimed wireless telephone may be summarized as
`
`15
`
`Verizon Wireless
`Exhibit 1080-0018
`
`
`
`Declaration of Richard T. Mihran, Ph.D. Under 3 7 C.F .R. § 1. 68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,319,866
`
`follows:
`
`• The ability to program a user-selected audio file to serve as a ring
`
`tone;
`
`• The ability to select and download the user-selected audio file from a
`
`remote database;
`
`• The ability to download, store and play "polyphonic audio files as ring
`
`tones"· and
`'
`
`• An "enhanced performance speaker" for playing the polyphonic audio
`
`file
`
`34.
`
`I will address each of these in turn below:
`
`The ability to program a user-selected audio file to serve as a ring tone
`
`35.
`
`The first of the applicant's characterizations of claim 10 vis a vis the
`
`prior art was that claim 10 directed to a wireless telephone that may be customized
`
`by its user by programming it with an audio file that is used to indicate an
`
`incoming call:
`
`One aspect of applicant's claimed invention is concerned with a
`wireless telephone that may be customized by programming an
`audio file into the wireless telephone for use as an indicia of an
`incoming communication. This may be thought of as a wireless
`telephone that allows a user to customize the wireless telephone
`by selecting and programming a ring tone into the wireless
`telephone which plays when an incoming telephone call (or
`other communication) is received."
`
`Id. at 0060.
`
`16
`
`Verizon Wireless
`Exhibit 1080-0019
`
`
`
`Declaration of Richard T. Mihran, Ph.D. Under 3 7 C.F .R. § 1. 68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,319,866
`
`The ability to select and download the user-selected audio file (rom a remote
`database
`
`36. A second aspect of the purported invention of claim 10 that the
`
`applicant asserted to distinguish claim 10 over the prior art was the ability to select
`
`and download the user-selected audio file to be used as a ring tone from a remote
`
`database, rather than selecting from a group of pre-programmed audio files:
`
`The claimed wireless telephone has the ability to connect to a
`remote database(s) of digital ring tones and allow the user to
`browse lists of ring tones in the remote database(s) .. for
`subsequent potential downloading
`into a programmable
`memory in the wireless telephone for future use."
`
`I d.
`
`The ability to download, store and play "polyphonic audio files as ring tones"
`
`3 7. A third aspect that the applicant asserted to distinguish claim 10 over
`
`the prior art was the ability of the user to download "polyphonic ring tones" having
`
`"high quality" or "high fidelity:"
`
`[T]he claimed wireless telephone provides various other novel
`features as compared to conventional telephone systems. . ..
`
`Additional novel features of claims 1, 10 and 31 include the use
`of polyphonic audio files as ringtones. Both Isomursu and Lin
`fail disclose this feature at all. In fact, nowhere in either
`reference, or any reference of record, is the quality or fidelity of
`a ringtone mentioned or even recognized as a desirable or
`relevant feature. The use of high quality audio data such as
`polyphonic audio files for ringtones is an important feature of
`certain aspects of applicant's claimed invention. For example,
`the use of high fidelity ringtones such as polyphonic ringtones
`(sometimes referred to now as 'real tones', 'true tones', "master
`tones', etc.) that may be actual MP3 (or other high quality
`17
`
`Verizon Wireless
`Exhibit 1 080-0020
`
`
`
`Declaration of Richard T. Mihran, Ph.D. Under 3 7 C.F .R. § 1. 68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,319,866
`
`digital representations of) songs or other audio greatly improves
`the user's experience by allowing the user to hear realistic
`recreations of selected audio. Nowhere in this feature shown or
`suggested in the prior art of record.
`
`Id. at 0063-0064.
`
`An "enhanced performance speaker" (or playing the polyphonic audio file
`
`38. A final aspect of the purportedly inventive telephone of claim 10 that
`
`the applicant asserted to distinguish the claim over the prior art was an "enhanced
`
`performance speaker" for playing the polyphonic audio file:
`
`The claimed enhanced performance speaker allows such high(cid:173)
`quality audio clips to accurately reproduce the high fidelity
`sound achievable with such clips, thus greatly improving the
`user's experience and satisfaction."
`
`Id. at0061.
`
`Id. at 0064.
`
`And in fact, the prior art systems of record are incapable of
`playing such high quality audio because they lack the proper
`hardware (e.g., lack appropriate speakers (see applicant's claim
`10), circuitry capable of playing high quality audio etc.) and
`software (e.g., drivers, playback software, etc.) and other
`necessary capabilities.
`
`39. After the applicant made these arguments, the exammer allowed
`
`claims 1-10 over the prior art and canceled claims 11-40 in a Notice of Allowance
`
`dated July 23, 2007. I d. at 0029.
`
`40. As I will describe in detail below, the four purportedly distinguishing
`
`features outlined above-as well as all other limitations found in claim 10 of the
`
`18
`
`Verizon Wireless
`Exhibit 1080-0021
`
`
`
`Declaration of Richard T. Mihran, Ph.D. Under 3 7 C.F .R. § 1. 68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,319,866
`
`'866 patent-were known to those of ordinary skill in the art at the time of the
`
`purported invention, and are disclosed in prior art written publications not
`
`considered by the examiner.
`
`V.
`
`LEVEL OF ORDINARY SKILL IN THE PERTINENT ART
`
`41.
`
`I have been advised that there are multiple factors relevant to
`
`determining the level of ordinary skill in the pertinent art, including the educational
`
`level of active workers in the field at the time of the invention, the sophistication of
`
`the technology, the type of problems encountered in the art, and the prior art
`
`solutions to those problems.
`
`42.
`
`It is my opinion that a person having ordinary skill in the relevant art
`
`at the time of invention (i.e., in 2004) is a person with a Bachelor's of Science
`
`degree in Electrical Engineering or Computer Engineering or the equivalent, and
`
`several years of practical experience in analog and digital electronics, including
`
`telecommunications applications.
`
`VI. BROADEST REASONABLE CONSTRUCTION
`
`43.
`
`I understand that Verizon Wireless has proposed that, under the
`
`broadest reasonable construction, the term "polyphonic audio file" should be
`
`construed to be "an audio file with content that produces two or more tones at the
`
`same time."
`
`44.
`
`I also understand that Verizon Wireless has asserted that the phrase
`
`19
`
`Verizon Wireless
`Exhibit 1 080-0022
`
`
`
`Declaration of Richard T. Mihran, Ph.D. Under 3 7 C.F .R. § 1. 68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,319,866
`
`"an enhanced performance speaker capable of providing a substantially full range
`
`of audio sounds from the selected polyphonic audio file" is indefinite, as a person
`
`of ordinary skill in the art would not be able to determine the meaning or scope of
`
`this phrase based on the disclosure of the '866 patent.
`
`45.
`
`First, the term "enhanced" requires a reference level of performance
`
`to determine its meaning, which is not provided in the specification or language of
`
`the claims. The entirety of the disclosure in the specification directed to an
`
`"enhanced performance speaker" is as follows: "[i]n some embodiments, speaker
`
`540 may be an enhanced p
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