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`Case IPR2015-00350
`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 IPR2015-00350
`Patent No. 7,257,395
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`CORRECTED PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 7,257,395
`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 IPR2015-00350
`Corrected Petition for Inter Partes Review
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`TABLE OF CONTENTS
`
`INTRODUCTION AND BACKGROUND ........................................................ 1 
`
`I. 
`
`II.  NOTICES, STATEMENTS AND PAYMENT OF FEES ................................. 3 
`
`A.  Real Party In Interest Under 37 C.F.R. § 42.8(b)(1) ..................................... 3 
`
`B.  Related Matters Under 37 C.F.R. § 42.8(b)(2) ............................................. 3 
`
`C.  Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) .......................... 3 
`
`D.  Service Information Under 37 C.F.R. § 42.8(b)(4) ....................................... 4 
`
`E.  Grounds for Standing Under 37 C.F.R. § 42.104(a) ..................................... 4 
`
`F.  Fees Under 37 C.F.R. § 42.103 – Previously Submitted .............................. 4 
`
`III.  THE ‘395 PATENT ............................................................................................. 4 
`
`A.  Background .................................................................................................... 4 
`
`B.  The Asserted Priority Chain of the ‘395 Patent ............................................ 8 
`
`C.  Prosecution History of the ‘395 Patent ....................................................... 10 
`
`D.  Prosecution History of United States Patent No. 7,319,866 ....................... 11 
`
`IV. IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R. § 42.104(B) ........ 12 
`
`V.  HOW THE CHALLENGED CLAIMS ARE TO BE CONSTRUED UNDER
`37 C.F.R. § 42.104 (B) (3) ................................................................................. 14 
`
`VI. DETAILED EXPLANATION AND SUPPORTING EVIDENCE UNDER 37
`C.F.R. §§ 42.104(B)(4) AND (B)(5) ................................................................. 19 
`
`A.  The Challenged Claims Are Not Entitled to Claim Priority to Any Earlier
`Application. ................................................................................................. 19 
`
`1.  Legal Standards Relevant to Priority .................................................. 21 
`
`a.  To Evaluate Invalidity Under Anticipation Or Obviousness,
`The Priority Date Must Be Determined Based Upon The
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`Corrected Petition for Inter Partes Review
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`Written Description Requirement ............................................. 21 
`
`b.  Adequate Written Description Requires Express Or Inherent
`Disclosure And Identification Of The “Blaze Marks” Of Later-
`Claimed Characteristics. ........................................................... 23 
`
`2.  The Priority Applications Do Not Reasonably Convey That the
`Inventor Possessed “Polyphonic Audio Files.” ................................... 25 
`
`a.  The Priority Applications Lack Actual or Inherent Written
`Description for “Polyphonic Audio Files.”............................... 25 
`
`b.  The Inventor Did Not Provide The Requisite Blaze Marks For
`Polyphonic Audio Files. ............................................................ 28 
`
`c.  Solocron Is Estopped From Asserting Priority Because It
`Distinguished The Prior Art As Lacking the Same Disclosure
`That the Priority Applications Lack. ......................................... 31 
`
`d.  Solocron’s New Litigation Citations Similarly Do Not Show
`That The Inventor Had Possession Of The Concept Of
`Polyphonic Audio File In The Priority Applications. ............... 33 
`
`B.  Claims 30, 36, 39, and 40 are Anticipated by the 3510 UG. ...................... 35 
`
`C.  Claims 30, 39, and 40 Are Anticipated by Holm. ....................................... 42 
`
`D.  Claim 36 is Rendered Obvious by Holm in view of McCarthy .................. 52 
`
`E.  Claims 30, 36, 39, and 40 are Rendered Obvious by the Shanahan PCT
`Application in view of Futamase ................................................................ 53 
`
`F.  Claims 30, 36, 39, and 40 are Rendered Obvious by the 3510 UG in View
`of Perez. ....................................................................................................... 58 
`
`G.  Claims 30, 39, and 40 are Rendered Obvious by Holm in View of Perez .. 59 
`
`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) .................................................................... 26, 27
`
`Anascape, Ltd. v. Nintendo of Am., Inc.,
`601 F.3d 1333 (Fed. Cir. 2010) .......................................................................... 24
`
`Bradford Co v. Conteyor N. Am., Inc.,
`603 F.3d 1262 (Fed. Cir. 2010) .......................................................................... 32
`
`Carnegie Mellon Univ. v. Hoffman-La Roche Inc.,
`541 F.3d 1115 (Fed. Cir. 2008) ............................................................................ 1
`
`Chiron Corp. v. Genentech, Inc.,
`363 F.3d 1247 (Fed. Cir. 2004) .......................................................................... 23
`
`Enzo Biochem, Inc. v. Gen-Probe Inc.,
`323 F.3d 956 (Fed. Cir. 2002) ............................................................................ 22
`
`Hitzeman v. Rutter,
`243 F.3d 1345 (Fed. Cir. 2001) .......................................................................... 26
`
`Hollmer v. Harari,
`681 F.3d 1351 (Fed. Cir. 2012) .......................................................................... 21
`
`Hyatt v. Boone,
`146 F.3d 1348 (Fed. Cir. 1998) .......................................................................... 24
`
`Lockwood v. Am. Airlines, Inc.,
`107 F.3d 1565 (Fed. Cir. 1997) .......................................................................... 22
`
`Markman v. Westview Instruments, Inc.,
`517 U.S. 370 (1996) ............................................................................................ 17
`
`Microsoft Corp. v. Multi-Tech Sys., Inc.,
`357 F.3d 1340 (Fed. Cir. 2004) .................................................................... 16, 32
`
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`In re NTP, Inc.,
`654 F.3d 1268 (Fed. Cir. 2011) .......................................................................... 21
`
`PowerOasis, Inc. v. T-Mobile USA, Inc.,
`522 F.3d 1299 (Fed. Cir. 2008) ...................................................................passim
`
`Purdue Pharma L.P. v. Faulding Inc.,
`230 F.3d 1320 (Fed. Cir. 2000) .............................................................. 25, 28, 30
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`Research Corp. Techs., Inc. v. Microsoft Corp.,
`627 F.3d 859 (Fed. Cir. 2010) ............................................................................ 23
`
`Tronzo v. Biomet, Inc.,
`156 F.3d 1154 (Fed. Cir. 1998) .................................................................... 21, 23
`
`Univ. of Rochester v. G.D. Searle & Co.,
`358 F.3d 916 (Fed. Cir. 2004) ............................................................................ 22
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`PETITIONERS’ EXHIBIT LIST
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`Exhibit No.
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`Description
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`Exhibit 1001 U.S. Patent No. 7,257,395 (the ‘395 patent)
`
`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
`
`Exhibit 1006 Copy of U.S. Patent App. 10/223,200, as filed Aug. 16, 2002
`(now U.S. Patent No. 7,257,395) (downloaded from PAIR)
`Exhibit 1007 Exhibit Not Used
`
`Exhibit 1008 Copy of U.S. Patent App. 09/518,712, as filed Mar. 3, 2000
`(now U.S. Patent No. 6,496,692) (as produced by Solocron)
`Exhibit 1009 Exhibit Not Used
`
`Prosecution History for the U.S. Patent No. 7,257,395 (U.S.
`Patent App. 10/223,200) (downloaded from PAIR)
`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 Nokia Application No. 19991865 (the “1999 Nokia Finnish
`application”) (certified copy (in English) obtained from PAIR in
`connection with U.S. Patent No. 6,907,113)
`International Publication No. WO 98/25397, entitled
`“Telecommunication Device and a Method for Providing
`Ringing Information”, published June 11, 1998 (“Philips” or
`“Rizet”)
`
`Exhibit 1010
`
`Exhibit 1014
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`Exhibit 1016
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`Exhibit 1017
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`Exhibit 1015 U.S. Patent No. 6,018,654, entitled “Method and Apparatus for
`Downloading Tones to Mobile Terminals,” filed October 29,
`1996, and issued January 25, 2000, to Valentine et al.
`(“Ericsson” or “Valentine”)
`“Ring My Bell,” The New Yorker, March 7, 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
`Exhibit 1019 Declaration of Internet Archive and Copies of Various Websites
`
`“Yamaha Sound Generator LSI ‘YMU757,’” Yamaha News
`Release
`International Publication No. WO 01/16931, entitled “Method
`And Arrangement For Providing Customized Audio
`Characteristics To Cellular Terminals,” published March 8, 2001
`(“Holm”)
`Exhibit 1022 Exhibit Not Used
`
`Exhibit 1023 Exhibit Not Used
`
`Exhibit 1024 Exhibit Not Used
`
`Exhibit 1025 U.S. Patent No. 6,911,592, entitled “Portable Telephony
`Apparatus With Music Tone Generator,” filed July 26, 2000,
`issued June 28, 2005, to Futamase
`Exhibit 1026 European Patent Application EP1073034, entitled “Portable
`Telephony Apparatus With Music Tone Generator,” was
`published January 31, 2001 (“Futamase”)
`Exhibit 1027 Exhibit Not Used
`
`Exhibit 1028 Exhibit Not Used
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`
`Exhibit 1018
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`Exhibit 1020
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`Exhibit 1021
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`Exhibit 1030
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`Exhibit 1035
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`Exhibit 1036
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`Exhibit 1039
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`Exhibit 1029 U.S. Patent Application No. 2001/0045153
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`International Publication No. WO 01/41403, entitled “Methods
`and Apparatuses for Programming User-Defined Information to
`Electronic Devices”, published June 7, 2001 (“Shanahan PCT”)
`Exhibit 1031 Excerpt from Harvard Dictionary of Music, Second Edition,
`Revised and Enlarged, Willi Apel, The Belknap Press of Harvard
`University Press, Cambridge MA, 1975.
`Exhibit 1032 User’s Guide for Nokia 3510, published in 2002 (“3510 UG”)
`
`Exhibit 1033 March 12, 2002, Nokia Press Release, “The Nokia 3510 Brings
`GPRS And Polyphonic Sounds To The Consumer Market”
`Exhibit 1034 Exhibit Not Used
`
`Final Decision dated April 21, 2014 in IPR2013-00072
`
`Final Decision dated April 22, 2014 in IPR2014-00116
`
`Exhibit 1037 Certified Translation of Japanese Patent Application 11-214083,
`filed July 28, 1999, and to which Futamase (Exhibit 1026) claims
`priority.
`Exhibit 1038 Local Patent Rule 4-3 Statement filed in Solocron v. Cellco
`Partnership et al. (E.D. Tex.) (Case No. 2-13-cv-1059)
`http://www.slideshare.net/JesseTeWeehi/elements-of-music-start
`
`Exhibit 1040 Random House Webster’s Unabridged Dictionary
`
`Exhibit 1041 Encyclopedia Britannica
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`Exhibit 1042 YM3812 Chip Manual
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`Exhibit 1043 New Grove Dictionary of Music and Musicians
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`Exhibit 1044 Oxford Music Online
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`Exhibit 1045 MIDI Specification
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`Exhibit 1048
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`Exhibit 1052
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`Exhibit 1046
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`Standard MIDI File Specification
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`Exhibit 1047 General MIDI Specification
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`ISO/IEC standard 11172-3 (“MP3” specification)
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`Exhibit 1049 WMA File Format Specification
`
`Exhibit 1050 US 6,351,225 to Moreno
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`Exhibit 1051 U.S. Patent No. 6,496,692 (“the ‘692 patent”)
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`‘866 Prosecution History, Reply to Office Action dated 5/4/2007
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`Exhibit 1053 Yamaha YMU757 Press Release, October 12, 1999
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`Exhibit 1054 Yamaha YMU757 Technical Manual, February 2000
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`Exhibit 1055 Analysis of WAV files provided in 1999 with Nokia 9110
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`Exhibit 1056 U.S. Patent No. 7,319,866 (“the ‘866 patent”)
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`Exhibit 1057 U.S. Pat. App. Pub. No. 2003/0167230, entitled “Method and
`Communication Terminal for Handling Payment of
`Downloadable Content,” published Sept. 4, 2003 and filed Mar.
`1, 2002 (“McCarthy”)
`Exhibit 1058 Exhibit Not Used
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`Exhibit 1059 Exhibit Not Used
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`Exhibit 1060 Certified English translations of JukeBoksi websites
`(corresponding to Exhibit 1019 at 0088-0098).
`Exhibit 1061 Exhibit Not Used
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`Exhibit 1062 Exhibit Not Used
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`Exhibit 1063 Exhibit Not Used
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`Exhibit 1064 Exhibit Not Used
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`Exhibit 1065 Exhibit Not Used
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`Exhibit 1066 Exhibit Not Used
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`Exhibit 1067 Exhibit Not Used
`
`Exhibit 1068 Exhibit Not Used
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`Exhibit 1069 Exhibit Not Used
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`Exhibit 1070 Exhibit Not Used
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`Exhibit 1071 Exhibit Not Used
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`Exhibit 1072 Assignment of US2003/0167230 to Nokia
`
`Exhibit 1073 Declaration of Erin Flaucher re Nokia 3510 with Exhibits
`
`Exhibit 1074 Exhibit Not Used
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`Exhibit 1075 Exhibit Not Used
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`Exhibit 1076 Exhibit Not Used
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`Exhibit 1077 Exhibit Not Used
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`Exhibit 1078 Exhibit Not Used
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`Exhibit 1079 Declaration of John M. Strawn, Ph.D., and CV
`
`Exhibit 1080 Declaration of Richard T. Mihran, Ph.D., and CV
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`Exhibit 1081 U.S. Patent No. 6,492,761, filed on January 20, 1998, issued on
`December 10, 2002 (“Perez”)
`Exhibit 1082 Exhibit Not Used
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`Exhibit 1083 Exhibit Not Used
`
`Exhibit 1084 Exhibit Not Used
`
`Exhibit 1085 Exhibit Not Used
`
`Exhibit 1086 Exhibit Not Used
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`Exhibit 1087 Declaration of Internet Archive re Nokia Websites
`
`Exhibit 1088 Exhibit Not Used
`
`Exhibit 1089 Exhibit Not Used
`
`Exhibit 1090 Exhibit Not Used
`
`Exhibit Not Used
`
`Exhibit Not Used
`
`Exhibit Not Used
`
`Exhibit 1091
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`Exhibit 1092
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`Exhibit 1093
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`Exhibit 1094 Exhibit Not Used
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`Exhibit 1095 Exhibit Not Used
`
`Exhibit 1096 Exhibit Not Used
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`Exhibit 1097 Exhibit Not Used
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`Exhibit 1098 Exhibit Not Used
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`Exhibit 1099 Exhibit Not Used
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`Exhibit 1100 Exhibit Not Used
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`Exhibit 1101 Exhibit Not Used
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`Exhibit 1102 Exhibit Not Used
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`Exhibit 1103 Exhibit Not Used
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`Case IPR2015-00350
`Corrected Petition for Inter Partes Review
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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 30, 36, 39, and 40 (“the
`
`challenged claims”) of U.S. Patent No. 7,257,395 (“the ‘395 Patent”) (Exhibit
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`1001).
`
`I.
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`INTRODUCTION AND BACKGROUND
`
`“The basic function of a patent specification is to disclose an invention.”
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`Carnegie Mellon Univ. v. Hoffman-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir.
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`2008). As with the ‘866 patent, an element of each challenged claim of the ‘395
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`patent—which the inventor ultimately pointed to as defining his invention over the
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`prior art—finds no support in the specifications of the priority applications.
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`Instead, it was inserted into the claim years after the asserted priority date and
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`years after the industry described, patented, and adopted this same technology. In
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`light of this break in the priority chain, the challenged claims cannot claim priority
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`to any earlier filed application. Under their correct priority date, the challenged
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`claims are invalid under 35 U.S.C. §§ 102 and 103 as discussed herein.
`
`In particular, the challenged claims recite a term that is neither expressly nor
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`inherently disclosed in the ‘395 patent’s priority chain: “polyphonic audio files.”
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`Rather, this term appeared for the first time in a preliminary amendment filed in
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`July 2003, 3½ years after the earliest asserted priority date, nearly a full year after
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`1
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`Corrected Petition for Inter Partes Review
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`the application that matured into the ‘395 patent was filed, and two years after
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`wireless carriers such as Petitioners released “polyphonic ringtone” products.
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`Under Federal Circuit law, the complete lack of support for the term
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`“polyphonic audio files” in the priority applications, as detailed in the attached
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`declaration of musicology expert Dr. John Strawn (Exhibit 1079), precludes the
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`patentee from relying on any earlier filing date. The Board can assess this priority
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`issue in an inter partes review, and has done so before. E.g., Exhibit 1036.
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`The ‘395 patent is part of a family of nearly twenty patents owned by
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`Solocron Media, LLC (“Solocron”), a small company based in Tyler, Texas.
`
`Solocron acquired this family from Michael Shanahan, a telecommunications and
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`electronics patent prosecutor formerly of Fish & Neave and McDermott Will &
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`Emery. E.g., Exhibit 1011. Mr. Shanahan’s clients over the past fifteen years
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`include Nokia, Inc. (“Nokia”) and other electronics companies. Id.
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`Solocron alleges that the ‘395 patent relates to a telephone personalized with
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`ringtones. Personalizing a telephone with ringtones was well-known long before
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`the ‘395 patent. Indeed, Nokia entities own at least 101 U.S. patents relating to
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`ringtones, including 17 patents and applications with an earlier filing date than the
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`‘395 patent. Exhibit 1012. Nokia has even more international patents and
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`applications, including WO 01/16931 (“Holm”) (Exhibit 1021), which discloses
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`the claimed concepts using nearly identical terminology. Holm is one example of
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`a compelling prior art reference that discloses the elements of the challenged
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`claims in explicit detail and that was not presented to the Patent Office during the
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`prosecution of the ‘395 patent or any of the applications to which it claims priority.
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`For the reasons below, there is a reasonable likelihood that the challenged
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`claims are unpatentable in light of the prior art, warranting inter partes review.
`
`II. NOTICES, STATEMENTS AND PAYMENT OF FEES
`
`A. Real Party In Interest Under 37 C.F.R. § 42.8(b)(1)
`
`
`
`The real parties in interest are Cellco Partnership d/b/a Verizon Wireless and
`
`AT&T Mobility LLC.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`
`
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`Solocron sued the following entities (and Petitioners) for infringement of the
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`‘395 Patent in the Eastern District of Texas on December 6, 2013 (Case No. 2:13-
`
`cv-01059)
`
`(“the Litigation”): Sprint Corporation, Sprint Communications
`
`Company L.P., Sprint Solutions Inc., and T-Mobile USA, Inc. See Exhibit 1002.
`
`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.
`
`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
`
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`Corrected Petition for Inter Partes Review
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`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
`
`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)
`
`
`
`Please address all correspondence to lead counsel at the addresses above.
`
`Petitioners consent to electronic service by email at: kanderson@wileyrein.com,
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`fchapman@wileyrein.com, sfelder@wileyrein.com, shejny@mckoolsmith.com,
`
`tstevenson@mckoolsmith.com, and nmathews@mckoolsmith.com.
`
`E. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`
`
`
`Petitioners certify pursuant to 37 C.F.R. § 42.104(a) that the ‘395 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. The original
`
`Petition was filed within one year of the service of the Complaint above.
`
`F.
`
`Fees Under 37 C.F.R. § 42.103 – Previously Submitted
`
`III. THE ‘395 PATENT
`A. Background
`
`The ‘395 patent was filed on August 16, 2002, and purports to claim priority
`
`to applications dating back to December 1999. Exhibit 1001. It generally relates
`
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`to personalizing wireless telephones with ringtones. Id. at 1:13-16. The
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`disclosures of the ‘395 patent and its priority applications, however, do not support
`
`the features claimed three-and-a-half years after the earliest asserted priority date.
`
`Figure 4A of the ‘395 patent illustrates that the original disclosures were vague and
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`amorphous and bear little resemblance to the ringtone matter the patentee sought to
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`capture years later:
`
`In contrast, the challenged claims
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`purport to cover a wireless telephone
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`that includes a communications link for
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`connecting
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`to a database
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`storing
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`polyphonic audio files, a display screen,
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`an enhanced speaker,
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`
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`processing circuitry, and programmable memory. Id. at 15:25-46 and 16:13-34.
`
`Claims 30 and 39 each read:1
`
` A wireless telephone that 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] as an indicia of an incoming
`
`
`1 Except for what appears to be a typographical error in the preamble of claim 30
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`(the omission of the word “use”), claims 30 and 39 are identical.
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`communication, the telephone comprising:
`a communications link capable of connecting to a database in the
`remote computer that includes a plurality of polyphonic audio files;
`a display screen and a browsing application program that allows a user
`of the telephone to browse the polyphonic audio files and select at least one
`polyphonic audio file therefrom;
`processing circuitry configured to supervise receipt of a selected
`polyphonic audio file from the communications link;
`a programmable memory circuit for allowing the user to optionally
`store the selected polyphonic audio file for use as an indicia of an incoming
`communication; and
`an enhanced performance speaker capable of providing a substantially
`full range of audio sounds from the selected polyphonic audio file when the
`selected polyphonic audio file is played.
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`Id. Dependent claim 36 recites the use of “a Wireless Application Protocol (WAP)
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`compliant browsing program.” Id. at 16:1-3. Dependent claim 40 recites that the
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`“polyphonic audio file is selected from the group comprising MP3, MPEG, or
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`WAV files.” Id. at 16:35-37.
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`
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`Claims 30, 36, 39, and 40 recite features that are barely described and, in
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`some cases, not even mentioned in the ‘395 specification. Most notably, neither
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`“polyphonic audio files” nor anything related to the concept of “polyphony” can be
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`found in the ‘395 specification. See generally Exhibit 1001.
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`The inventor admits that he did not invent ringtones, conceding during
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`prosecution of a related application that the concept of ringtones was known prior
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`to his earliest filing date. Exhibit 1004 at 0095. This concession is required by the
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`expansive body of pre-1999 ringtone related prior art. Well before Mr. Shanahan’s
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`earliest priority date, entities such as Nokia, Ericsson, Inc., and Philips Electronics
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`N.V. (“Philips”) pioneered and patented inventions relating to customizing mobile
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`phones with ringtones. Exhibits 1012, 1014-15.
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`Despite Mr. Shanahan’s assertion that he invented the personalization of
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`ringtones, that technology is also old. Over three years before Mr. Shanahan’s
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`earliest non-provisional application, a Finnish inventor, Vesa-Matti Paananen,
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`designed a product called Harmonium, which allowed users to personalize phones
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`with ringtones delivered over the air. Exhibit 1016. Mr. Paananen has received
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`recognition from the industry, including a special award as “Pioneer of the Mobile
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`Ringtone Business.” Exhibits 1016-18.
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`Beyond Mr. Paananen, various companies described and patented this
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`personalization concept long before Mr. Shanahan. Exhibits 1014, 1015. For
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`example, more than a year before Mr. Shanahan’s earliest priority date, Philips
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`described a “telecommunications device and a remote database containing a
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`variety of alternative forms of user selectable and downloadable ringing
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`information.” Exhibit 1014, Abstract. Similarly, various websites with selectable
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`and downloadable ringtones were available around the globe. Exhibits 1019, 1060.
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`
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`Even if Mr. Shanahan could properly claim priority to December 1999
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`(which he cannot), he still would not be the first person to invent polyphonic
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`ringtones and/or enhanced speakers for playing polyphonic ringtones. Such
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`ringtones were simply an evolution in the cell phone industry. The concept of
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`“polyphonic ringtones” appeared at least as early as September 1999 in European
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`and Japanese cell phone markets. See, e.g., Exhibit 1020 (describing the Yamaha
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`LSI YMU757 chip, which permitted the playback of “high quality polyphony” on
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`mobile phones, including “user-selected sound and melodies”). Moreover, in its
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`July 1999 Japanese patent application, Yamaha described a “tone generator
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`capable of sounding two or more tones at a time … in a portable terminal apparatus
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`… [that] reproduces music which is various in kind and rich in musicality as
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`ringing melodies[.]” Exhibit 1037 ¶ 0017. Yamaha even recognized that “the
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`present invention uses audio information … [such as] WAV, AIFF, SOUND VQ,
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`or MP3….” Id. ¶ 0108. “The present invention allows common formatting to
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`capture the audio information having these formats ….” Id.
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`B.
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`The Asserted Priority Chain of the ‘395 Patent
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`The ‘395 patent claims priority to U.S. Patent Application Nos. 09/518,712,
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`filed on March 3, 2000 (“the March 2000 application”) and 60/169,158, filed
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`December 6, 1999 (“the December 1999 application”). Neither of these
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`applications mentions, much less discloses within the meaning of 35 U.S.C. § 112,
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`the “polyphonic audio files” now claimed.
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`The entirety of the December 1999 application consists of a scant four
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`double-spaced pages of written description, one double-spaced page of claims, and
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`four block diagrams. Exhibit 1003. It does not use the term “polyphonic,” does
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`not discuss polyphony conceptually, does not discuss the fidelity of ringtones, does
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`not reference an “enhanced speaker,” and does not describe how to reproduce any
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`polyphonic ringtone. See generally id.
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`The March 2000 application also lacks any reference to “polyphonic,”
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`“polyphony,” or anything related to these concepts, and there is no discussion of
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`the quality of ringtones or the importance of fidelity to the invention. Exhibit
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`1008. None of the claims in the March 2000 application as filed made any
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`reference to “polyphonic,” and Mr. Shanahan never subsequently amended these
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`claims to recite anything relating to “polyphonic” at any point during the pendency
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`of the March 2000 application. See generally id.
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`Because of the complete lack of underlying support for the “polyphonic
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`audio files” term in every application in the priority chain, the challenged claims
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`are not entitled to the benefit of the filing date of any earlier application.
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`C.
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`Prosecution History of the ‘395 Patent
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`On August 16, 2002, the patentee filed U.S. application no. 10/223,200 (“the
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`August 2002 application”), which matured into the ‘395 patent. As filed, the
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`August 2002 application, like the March 2000 application with which it shares a
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`substantially
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`identical disclosure,
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`lacked any
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`reference
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`to “polyphonic,”
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`“polyphony,” or anything related to those concepts. The August 2002 application
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`is likewise devoid of any discussion of the quality of ringtones or the importance
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`of fidelity to the invention. Exhibit 1006. Nor did any of the claims as filed in the
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`‘200 application make any reference to “polyphonic.” Id.
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`Nearly a year later, in a preliminary amendment mailed on July 8, 2003, the
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`term “polyphonic audio files” made its first appearance in the August 2002
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`application—and its first appearance in any application related to the August 2002
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`application. See Exhibit 1010 at 0441. As support for this language, the patentee
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`pointed to the specification’s laundry list of file formats. Id. at 0442.
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`Without commenting on the “polyphonic audio file” element that the
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`patentee had crafted, the Patent Office rejected all claims of the August 2002
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`application on May 18, 2005. Id. at 0285-92. Two more rejections followed. Id.
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`at 0172-78 and 0079-84.
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`In response to each Office action, the patentee identified a laundry list of
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`claimed features, including “the use of polyphonic audio files,” purportedly not
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`disclosed in the asserted prior art. See, e.g., id. at 0224-29, 0129-35, and 0056-64.
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`All pending claims were allowed without explanation on June 18, 2007. Id.
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`at 0020-23. At no point in the prosecution, however, did the Patent Office make
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`any written priority determination.2 See generally id.
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`D.
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`Prosecution History of United States Patent No. 7,319,866
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`United States Patent No. 7,319,866 (“the ‘866 patent”) (Exhibit 1056)
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`purports to be a continuation of the ‘395 patent. Like the ‘395 patent, the
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`specification of the ‘866 patent makes no mention of “polyphonic audio files,”
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`“polyphony,” or related concepts. Id. Mr. Shanahan expressly distinguished the
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`claims of the ‘866 patent over the asserted prior art (United States Patent Nos.
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`6,366,791 (“Lin”) and 7,088,990 (“Isomursu”)) on the basis that these references
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`lacked sufficient disclosure of polyphonic ringtones:
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`Additional novel features of claims 1, 10 and 31 include the use of
`polyphonic audio files as ringtones. Both Isomursu and Lin fail disclose
`
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`2 As the Federal Circuit recognized, “[t]he PTO’s own procedures indicate that
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`examiners do not make priority determinations except where necessary.”
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`PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305 (Fed. Cir. 2008).
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`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