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. 7,257,395
`
`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. 7,257,395
`
`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. 7,257,395
`
`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. 7,257,395
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ............................................................................................. 1
`
`II. BACKGROUND AND QUALIFICATIONS ................................................... 3
`
`III. UNDERSTANDINGOFPATENTLAW ........................................................ 5
`
`IV. BACKGROUND ............................................................................................... 8
`
`A. Overview of the '395 Patent ...................................................................... 8
`
`B. Summary of the Prosecution History of the '395 Patent ........................ .14
`
`V. LEVEL OF ORDINARY SKILL IN THE PERTINENT ART ..................... .22
`
`VI. BROADEST REASONABLE CONSTRUCTION ........................................ .23
`
`VII. DETAILED INVALIDITY ANALYSIS ....................................................... .26
`
`A. Summary of Opinions ............................................................................. .27
`
`B. Claims 30, 39 and 40 are Anticipated by Holm ...................................... .28
`
`1. Background on Holm ...................................................................... .28
`
`2. Holm Discloses All Elements of Claims 30 and 39 ......................... 34
`
`C. Claim 36 is rendered obvious by Holm in view of McCarthy ................ .4 7
`
`D. Claim 40 is Anticipated by Holm ............................................................ 53
`
`E. Claims 30, 36, 39 and 40 are Anticipated by the Nokia 3510 User Guide
`.................................................................................................................. 56
`
`1. Background on the Nokia 3510 User Guide .................................... 56
`
`2. The Nokia 3510 User Guide Discloses All Elements of Claims 30,
`36, 39 and 40 .................................................................................... 58
`
`F. Claim 36 is Anticipated by the Nokia 3510 User Guide .......................... 70
`
`G. Claim 40 is Anticipated by the Nokia 3510 User Guide .......................... 71
`
`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. 7,257,395
`
`H. Claims 30, 36, 39 and 40 are Rendered Obvious by the Combination of
`the Shanahan PCT and Futamase ............................................................. 72
`
`1. Background on the Shanahan PCT and Futamase ........................... 72
`
`2. One of Skill in the Art Would Have Been Motivated to Combine the
`Shanahan PCT Application with Futamase ...................................... 73
`
`3. The Shanahan PCT Application in Combination With Futamase
`Discloses All Elements of Claim 30/39 ........................................... 7 5
`
`4. The Shanahan PCT Application in Combination With Futamase
`Discloses All Elements of Claim 36 ................................................ 80
`
`5. The Shanahan PCT Application in Combination With Futamase
`Discloses All Elements of Claim 40 ................................................ 82
`
`VIII. SECONDARY CONSIDERATIONS OF NON-OBVIOUSNESS ................ 83
`
`IX. SUPPLEMENTATION ................................................................................... 84
`
`X. CONCLUSION ............................................................................................... 85
`
`..
`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. 7,257,395
`
`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. 7,257,395 ("the '395
`
`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 claims
`
`30, 36, 39 and 40 of the '395 patent are 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
`
`'395 patent issued on August 14, 2007, from U.S. Patent
`
`Application No. 10/223,200 ("the '200 Application"), filed on August 6, 2002.
`
`Exhibit 1001, the '395 patent. The face of the patent indicates Michael E.
`
`Shanahan as the named inventor. The '395 patent 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 '395 patent claims priority to the application that led to the
`
`'692 patent, many of the claims of the '395 patent introduce the concept of
`
`1
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`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. 7,257,395
`
`"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 claims 30,
`
`36, 39, and 40 of the '395 patent is-at best-the filing date shown on its cover
`
`page, i.e. August 16, 2002, rather than the filing date of the parent '692 patent. 1
`
`5.
`
`In preparing this Declaration, I have reviewed the '395 patent, the file
`
`history of the '395 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 2002. My
`
`opinions directed to the invalidity of claims 30, 36, 39 and 40 of the '395 patent
`
`1 I was asked to assume an August 2002 priority date given that all references
`discussed in the declaration pre-date that date. However, I note that the claims
`reciting polyphony in the '395 patent were not added until 2003 in a preliminary
`amendment and that the specification of the '395 patent does not use or describe
`the term "polyphonic audio files."
`
`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. 7,257,395
`
`are based, at least in part, on the following prior art publications:
`
`Reference
`Holm, Int'l Pub No. WO
`01/16931
`
`Futamase, European Patent
`Application EP1073034
`
`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.
`
`Shanahan PCT, Int'l Pub.No.
`W0200 1041403
`
`Shanahan was published on June 6,
`2002, and is attached as Exhibit 1030
`to the IPR.
`
`3510 UG, User's Guide for
`The 3510 UG was published in
`Nokia 3510, published in 2002. March 2002, and is attached as
`Exhibit 1032 to the IPR.
`
`McCarthy, U.S. Patent
`Application Publication No.
`us 2003/0167230
`
`Perez, U.S. Patent No.
`6,492,761
`
`McCarthy was filed on Marchi, 2002
`and published on September 4, 2003
`and is attached as Exhibit 1057 to the
`IPR.
`
`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
`
`undergraduate and graduate level covenng general electrical and computer
`
`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. 7,257,395
`
`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.
`
`11.
`
`I have served as an expert witness in a variety of patent litigation
`
`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. 7,257,395
`
`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 '395 patent includes patents and
`
`printed publications in the relevant art that predate the August 16, 2002 priority
`
`date I have been asked to assume for this patent for the purposes of this
`
`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. 7,257,395
`
`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
`
`make the alleged invention, praise of the alleged invention by those having
`
`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. 7,257,395
`
`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
`
`market forces can prompt variations of it, either in the same field or different one.
`
`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. 7,257,395
`
`IV. BACKGROUND
`
`A. Overview of the '395 Patent
`
`19.
`
`The '395 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 '395 patent is broadly depicted in Figure
`
`1, which is shown below:
`
`Programmable
`Device
`
`JO
`
`J2
`'
`
`Device
`Programmer
`
`30
`r-l
`
`J1
`
`r
`
`Source
`
`JO
`
`I d. at Figure 1.
`
`8
`
`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. 7,257,395
`
`21. Claims 30 and 39 of the '395 patent are independent claims, while
`
`claims 36 and 40 depend from these, respectively. Independent claims 30 and 39
`
`of the '395 patent include identical claim language, and are particularly directed to
`
`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
`
`wireless telephone for [sic] as an indicia of an incoming communication" and
`
`includes a communications link, a display screen and browsing application,
`
`processmg circuitry, a programmable memory circuit, and an "enhanced
`
`performance speaker." Id. at 15:25-46 and 16:13-34.
`
`22.
`
`The specification of the '395 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.)." Id. at 3:7-9. As
`
`shown in Figure 1 of the '395 patent, programmable device 20 is coupled to a
`
`source of audio files 50 via device programmer 30. The '395 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 3:27-
`
`31.
`
`23.
`
`In one embodiment, device programmer 30 may be implemented
`
`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. 7,257,395
`
`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 '395 patent below:
`
`I d. at Figure 3.
`
`24. With respect to this embodiment, the '395 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
`
`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. 7,257,395
`
`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
`
`information into device 20 (via programmer 30 and link 32)." Id. at 5:29-41.
`
`25. Alternatively, programmer 30 may be integrated into programmable
`
`device 20, as depicted in figure 5 of the '395 patent below:
`
`1 - -
`
`2~--
`
`1--
`
`20
`ol
`
`Ptogrammable Device
`
`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. 7,257,395
`
`33
`
`510
`
`540
`
`520
`
`RlT
`
`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 9:66-10:3. 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. 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 '395
`
`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. 7,257,395
`
`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.
`
`I d. at 10:4-21.
`
`28. Each of claims 30, 36, 39 and 40 of the '395 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 '395 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 10:40-46.
`
`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
`
`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. 7,257,395
`
`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 '395 Patent
`
`30. The application leading to the '395 patent was filed on August 16,
`
`2002, and included 15 claims. The patentee subsequently filed a first preliminary
`
`amendment on June 20, 2003 canceling claims 1-15 and adding new claims 16-61,2
`
`a second preliminary amendment on June 27, 2003 adding new claims 62-78, and
`
`a third preliminary amendment on July 11, 2003 adding new claims 79-82.
`
`31.
`
`I note in this context that it is in claim 79 of this July 11, 2003
`
`amendment in which the term "polyphonic" first appeared in the chain of
`
`applications claiming priority to the '692 patent. As I have discussed previously,
`
`this term does not appear anywhere in any of the documents to which priority of
`
`the "polyphonic" claims is asserted. In remarks accompanying this amendment,
`
`the patentee asserted that "support for the polyphonic feature may be found on
`
`2 This June 20, 2003 filing does not appear in the prosecution history in proper
`sequence. In a letter dated December 16, 2003, the patentee wrote the PTO
`indicating that there were "missing pages" from a preliminary amendment filed on
`June 20, 2003, which were included with this submission. The submission
`included new claims 16 through 61.
`
`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. 7,257,395
`
`page 6, lines 31-35 and page 8, lines 19-21 as MP3, WAV, and MPEG, and many
`
`MIDI files are polyphonic audio files." Exhibit 1010 at 0442.
`
`32. Despite this assertion by the patentee, however, a person of ordinary
`
`skill in the art in 2003 would not understand any of these file types to necessarily
`
`represent "polyphonic" audio files. Each of these are file types which reflect the
`
`manner in which the audio information is encoded, and does not convey
`
`information about the nature of the audio which may be encoded in the file. By
`
`way of example, an MP3 file could encode merely silence, or a simple melody
`
`comprising a sequence of single tones, and thus would not represent a polyphonic
`
`audio file.
`
`33. A fourth preliminary amendment filed on October 14, 2003 amended
`
`certain then-pending claims, and added new claims 83-104. In an Office Action
`
`dated March 21, 2005, the examiner indicated that claims 16-32, 50-67, 72-73, and
`
`99-104 represented claims to an invention that would be distinct from those set
`
`forth in claims 33-49, 68-71 and 7 4-98, and requested a reply indicating an election
`
`of claims for examination. A subsequent office action dated May 18, 2005 made
`
`reference to a telephone conference with a representative of the patentee in which
`
`the group of claims 33-49,68-71, and 74-98 were elected for further prosecution.
`
`34.
`
`In this same May 18, 2005 office action, the examiner rejected claims
`
`33, 36-43, 46-49, and 68 as anticipated by U.S. Patent No. 6,253,061 ("Helferich"),
`
`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. 7,257,395
`
`and further rejected claims 34-35, 44-45, 69-71, and 74-98 as being unpatentable
`
`over Helferich in view of U.S. Patent No. 6,599,147 ("Mills").
`
`35.
`
`The applicant responded in an amendment dated October 18, 2005 by
`
`amending certain pending claims, and presenting arguments to purportedly
`
`distinguish over prior art. In arguing for patentability of the pending claims, the
`
`applicant made a number of characterizations of the purported invention that were
`
`asserted to distinguish over the prior art Helferich and Mills references. These
`
`purportedly distinguishing features of the claimed wireless telephone may be
`
`summarized as follows:
`
`• The ability to program a user-selected audio file to serve as a ring tone
`
`(Exhibit 1010 at 0224);
`
`• The ability to select and download the user-selected audio file by
`
`browsing a remote database (I d. at 0225);
`
`• The ability to "review a selected ring tone usmg a speaker and
`
`processmg circuitry pnor to downloading the ring tone into a
`
`programmable memory in the wireless telephone;" (I d.)
`
`• The ability to download, store and play "polyphonic audio files" and
`
`audio files in "various formats" (Id. at 0229);
`
`• An "enhanced performance speaker" for playing the polyphonic audio
`
`file (Id. at 0228-0229); and
`
`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. 7,257,395
`
`• A wireless telephone "configured to prevent the unauthorized
`
`distribution of the downloaded audio files" including "the use of
`
`copyright protection measures" (Id. at 0229).
`
`36.
`
`I will address each of these in turn below:
`
`The ability to program a user-selected audio file to serve as a ring tone
`
`37.
`
`The first of the applicant's characterizations of claims 30, 36, 39, and
`
`40 vis a vis the prior art was that these claims are 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 ringtone into the wireless
`telephone which plays when an incoming telephone call (or
`other communication) is received."
`
`Id. at 0224.
`
`The ability to select and download the user-selected audio file from a remote
`database
`
`38. A second aspect of the purported invention of claims 30, 36, 39, and
`
`40 that the applicant asserted to distinguish these claims 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
`
`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. 7,257,395
`
`audio files:
`
`Id. at0225.
`
`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."
`
`The ability to "review a selected ring tone using a speaker and processing
`circuitry prior to downloading the ring tone into a programmable memory in
`the wireless telephone
`
`39. A third aspect of the purported invention of claims 30, 36, 39, and 40
`
`that the applicant asserted to distinguish these claims over the prior art was the
`
`ability to review a selected ring tone prior to downloading it:
`
`The claimed wireless telephone has the ability to connect to a
`remote database(s) of digital ring tones and ... review a
`selected ring tone using a speaker and processing circuitry prior
`to downloading the ring tone into a programmable memory in
`the wireless telephone (e.g., a preview feature)."
`
`I d.
`
`The ability to download, store and play "polyphonic audio files" and audio files in
`"various formats"
`
`40. A fourth aspect that the applicant asserted to distinguish claims 30,
`
`36, 39, and 40 over the prior art was the ability of the user to download
`
`"polyphonic audio files" and files in "various formats:"
`
`"Other features patentable over the prior art include... the use
`of polyphonic audio files
`including
`the various formats
`specified (claim 69 and 79-98)."
`
`Id. at0229.
`
`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. 7,257,395
`
`An "enhanced performance speaker" (or playing the polyphonic audio file
`
`41. A fifth aspect of the purportedly inventive telephone of claims 30, 36,
`
`39, and 40 that the applicant asserted to distinguish the claim over the prior art was
`
`an "enhanced performance speaker" for playing the polyphonic audio file:
`
`Other claims specify a wireless telephone that includes an
`enhanced performance speaker for providing a substantially full
`range of audio sounds (claims 7 4-98).
`
`I d. at 0228-0229.
`
`A wireless telephone "configured to prevent the unauthorized distribution of
`the downloaded audio files" including "the use of copyright protection
`measures. "
`
`42.
`
`The final aspect of the purportedly inventive telephone of claims 30,
`
`36, 39, and 40 that the applicant asserted to distinguish the claim over the prior art
`
`was that it could be "configured to prevent the unauthorized distribution o