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. 7,295,864
`
`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. 7,295,864
`
`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. 7,295,864
`
`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. 7,295,864
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... !
`
`BACKGROUND AND QUALIFICATIONS ................................................. 3
`
`III. UNDERSTANDING OF PATENT LAW ...................................................... 5
`
`IV. BACKGROUND ............................................................................................. 8
`
`A. Overview of the '864 Patent .................................................................... 8
`
`B. Summary of the Prosecution History of the '864 Patent ...................... .13
`
`V.
`
`LEVEL OF ORDINARY SKILL IN THE PERTINENT ART .................... l7
`
`VI. BROADEST REASONABLE CONSTRUCTION ..................................... .18
`
`VII. DETAILED INVALIDITY ANALYSIS ...................................................... l9
`
`A. Summary of Opinions ........................................................................... .20
`
`B. Claims 11-14, 16-17 and 19 are Anticipated by Holm ......................... .21
`
`1. Background on Holm .................................................................... .21
`
`2. Holm Discloses All Elements of Claim 11 ................................... .27
`
`3. Holm Discloses All Elements of Claim 12 ................................... .40
`
`4. Holm Discloses All Elements of Claim 16 ................................... .43
`
`5. Holm Discloses All Elements of Claim 17 ................................... .45
`
`6. Holm Discloses All Elements of Claim 19 ................................... .48
`
`C. Claims 13 and 14 are Rendered Obvious by Holm in Combination with
`Gargiulo ................................................................................................. 52
`
`1. Holm in Combination with Gargiulo Discloses All Elements of
`Claim 13 ....................................................................................... 54
`
`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. 7,295,864
`
`2. Holm in combination with Gargiulo Discloses All Elements of
`Claim 14 ....................................................................................... 59
`
`D. Claims 11, 12, 13, 14, 16, and 17 Are Anticipated by Dewing ............. 62
`
`1. Background on Dewing ................................................................. 62
`
`2. Dewing Discloses All Elements of Claim 11. ............................... 63
`
`3. Dewing Discloses All Elements of Claim 12 ................................ 77
`
`4. Dewing Discloses All Elements of Claim 13 ................................ 80
`
`5. Dewing Discloses All Elements of Claim 14 ................................ 82
`
`6. Dewing Discloses All Elements of Claim 16 ................................ 83
`
`7. Dewing Discloses All Elements of Claim 17 ................................ 84
`
`E. Claims 11-14, 16-17, and 19 are Rendered Obvious by the Shanahan
`PCT in view of Olrik. ............................................................................ 85
`
`1. Background on the Shanahan PCT and Olrik ................................ 85
`
`2. One of Skill in the Art Would Have Been Motivated to Combine
`the Shanahan PCT Application with Olrik. .................................. 87
`
`3. The Shanahan PCT Application in Combination With Olrik
`Discloses All Elements of Claim 11 ............................................. 89
`
`4. The Shanahan PCT Application in Combination With Olrik
`Discloses All Elements of Claim 12 ............................................. 94
`
`5. The Shanahan PCT Application in Combination With Olrik
`Discloses All Elements of Claim 13 ............................................. 95
`
`6. The Shanahan PCT Application in Combination With Olrik
`Discloses All Elements of Claim 14 ............................................. 96
`
`7. The Shanahan PCT Application in Combination With Olrik
`Discloses All Elements of Claim 16 ............................................. 97
`
`..
`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. 7,295,864
`
`8. The Shanahan PCT Application in Combination With Olrik
`Discloses All Elements of Claim 17 ............................................. 99
`
`9. The Shanahan PCT Application in Combination With Olrik
`Discloses All Elements of Claim 19 ........................................... 1 00
`
`VIII. SECONDARY CONSIDERATIONS OF NON-OBVIOUSNESS ........... .101
`
`IX.
`
`SUPPLEMENTATION ............................................................................... 102
`
`X.
`
`CONCLUSION ........................................................................................... 103
`
`111
`
`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. 7,295,864
`
`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. 7,295,864 ("the '864
`
`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
`
`11-14, 16-17 and 19 of the '864 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 '864 patent issued on November 13, 2007, from U.S. Patent
`
`Application No. 10/603,271 ("the '271 Application"), filed on June 24, 2003.
`
`Exhibit 1001, the '864 patent. The face of the patent indicates Michael E.
`
`Shanahan as the named inventor. The '864 patent is a continuation of U.S. Patent
`
`Application No. 09/518,846, filed on March 3, 2000, which was abandoned. The
`
`face of the patent also claims priority to provisional application no. 60/169,158,
`
`filed on December 6, 1999.
`
`4. While the '864 patent claims priority to the '271 application filed on
`
`1
`
`Verizon Wireless
`Exhibit 1 080-0005
`
`

`

`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. 7,295,864
`
`March 3, 2000, claims 11-14, 16-17, and 19 of the '864 patent introduce the
`
`concept of "polyphonic audio files," a term which is not used or described in the
`
`specifications of any of the alleged priority applications. Thus, for the purposes of
`
`this declaration, I have been asked to assume that the priority date for claims 11-
`
`14, 16-17 and 19 of the '864 patent is the filing date shown on its cover page, i.e.
`
`June 24, 2003, rather than the filing date of the '271 application. 1
`
`5.
`
`In preparing this Declaration, I have reviewed the '864 patent, the file
`
`history of the '864 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 2003. My
`
`1 I was asked to assume a June 2003 priority date given that all references
`discussed in the declaration pre-date that date. However, I note that the claims
`reciting polyphony in the '864 patent were not added until August 2003 in a
`preliminary amendment and that the specification of the '864 patent does not use
`or describe the term "polyphonic audio files."
`2
`
`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. 7,295,864
`
`opinions directed to the invalidity of claims 11-14, 16-17 and 19 of the '864 patent
`
`are based, at least in part, on the following prior art publications:
`
`Reference
`Holm, Int'l Pub No. WO
`01/16931
`
`Dewing, U.S. Patent No.
`7,461,067
`
`Date of Public Availability
`Holm was published on March 8,
`2001 and is attached as Ex. 1010 to
`the IPR.
`
`Dewing was filed on September 13,
`2002, and issued December 2, 2008.
`Dewing is attached as Exhibit 1034 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.
`
`Olrik, U.S. Patent Application Olrik was filed on December 20,
`Publication No. 2004/0123281. 2002 and published on June 24, 2004,
`and is attached as Exhibit 1023 to the
`IPR.
`
`Gargiulo, U.S. Patent No.
`7,555,537
`
`Gargiulo was filed on December 20,
`2000, and issued June 30, 2009.
`Gargiulo is attached as Exhibit 1024
`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
`
`engineering theory and practice,
`
`including circuit theory, microelectronics,
`
`3
`
`Verizon Wireless
`Exhibit 1080-0007
`
`

`

`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. 7,295,864
`
`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
`
`matters, and have been admitted and recognized in district courts as a technical
`
`4
`
`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. 7,295,864
`
`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 '864 patent includes patents and
`
`printed publications in the relevant art that predate the June 24, 2003 priority 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.
`
`5
`
`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. 7,295,864
`
`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
`
`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
`
`6
`
`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. 7,295,864
`
`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 1080-0011
`
`

`

`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. 7,295,864
`
`IV. BACKGROUND
`
`A. Overview of the '864 Patent
`
`19.
`
`The '864 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 '864 patent is broadly depicted in Figure
`
`1, which is shown below:
`
`Programmable
`Device
`
`JO
`
`~2
`lr
`
`Device
`Programmer
`
`30
`
`A .. 31
`l_j
`
`,,
`
`Source
`
`_yo
`
`I d. at Figure 1.
`
`8
`
`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. 7,295,864
`
`21.
`
`Independent claim 11 which I address m
`
`this declaration
`
`is
`
`particularly directed to "a method for providing a polyphonic audio file to a
`
`wireless telephone for use as an indicia of an incoming communication," including
`
`the steps of providing a list of polyphonic audio files in a database, allowing the
`
`user of the wireless telephone to browse the list and download a selected
`
`polyphonic audio file to use as a ring tone, and confirm that the selected audio file
`
`has been properly received. Id. at 13:41-58. Dependent claims 12-14, 16-17 and
`
`19 add further limitations to one or more of the steps of the claimed method.
`
`22.
`
`The specification of the '864 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 '864 patent, programmable device 20 is coupled to a
`
`source of audio files 50 via device programmer 30. The '864 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
`
`using a personal computer 60 which communicates with a source of audio files
`
`9
`
`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. 7,295,864
`
`represented by Internet 80 to store user selected files on programmable device 20.
`
`This is depicted, for example, in Figure 3 of the '864 patent below:
`
`Programmable v 20
`
`Device
`
`Internet
`
`70
`
`-
`
`30
`L__
`
`Personal Computer
`
`i
`
`I d. at Figure 3.
`
`24. With respect to this embodiment, the '864 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
`
`information into device 20 (via programmer 30 and link 32)." Id. at 5:29-41.
`
`10
`
`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. 7,295,864
`
`25. Alternatively, programmer 30 may be integrated into programmable
`
`device 20, as depicted in Figure 5 of the '864 patent below:
`
`20
`_)
`
`Programmable Device
`
`1----
`
`29'-.
`
`-
`
`Programmer
`30
`
`J2
`
`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 1080-0015
`
`

`

`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. 7,295,864
`
`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 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
`
`12
`
`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. 7,295,864
`
`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 '864
`
`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: 4-21.
`
`B.
`
`Summary of the Prosecution History of the '864 Patent
`
`28.
`
`The application leading to the '864 patent was filed on June 24, 2003,
`
`and included a single claim directed to a "telecommunication system for providing
`
`an audio file to a wireless telephone." The patentee subsequently filed a
`
`preliminary amendment on August 27, 2003 canceling claim 1 and adding new
`
`claims 2-31. These claims included independent system (claim 2) and method
`
`(claim 12) claims including limitations directed to "polyphonic audio files."
`13
`
`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. 7,295,864
`
`29.
`
`I note in this context that it is in these claims of this August 27, 2003
`
`amendment in which the term "polyphonic" first appeared in the chain of
`
`applications claiming priority to the '864 patent. As I have discussed previously,
`
`this term does not appear in any of the documents to which priority of the
`
`"polyphonic" claims is asserted. In remarks accompanying this amendment, the
`
`patentee merely asserted that "support for these claims can be found in various
`
`portions of the specification and drawings," and that "[n]o new matter has been
`
`added as a result of this amendment." Exhibit 1076 at 0192.
`
`30. Despite this assertion by the patentee, a person of ordinary skill in the
`
`art in 2003 would not understand any of the audio file types disclosed in the
`
`specification of the '864 patent to necessarily represent "polyphonic" audio files.
`
`Examples of audio file formats disclosed in the specification include analog, MIDI,
`
`MPEG, PCM, Windows media audio code (WMA), WAV, and adaptive transform
`
`acoustic coding (ATRAC). Exhibit 1001 at 3:54-57. 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.
`
`31.
`
`In an Office Action dated June 13, 2007, the examiner rejected all
`
`14
`
`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. 7,295,864
`
`pending claims "on the ground of nonstatutory obviousness-type double patenting
`
`as being unpatentable over claims 1-81 of U.S Patent No. 7,149,509." Exhibit
`
`1076 at 0086-0087. In making this rejection, the examiner stated: "Although the
`
`conflicting claims are not identical, they are not patently distinct from each other
`
`because a system and a method of the patented claims 1-81 for downloading the
`
`selected video files from the Internet into a wireless telephone can be obviously
`
`modified to download the selected audio files from the Internet, recited in the
`
`pending claims 2-31." I d. (emphasis in original).
`
`32. The applicant responded in an amendment dated June 22, 2007 by
`
`filing a terminal disclaimer to address the double patenting rejection, after which a
`
`notice of allowability for pending claims 2-31 was issued on August 8, 2007.2
`
`33.
`
`It is notable no prior art that was cited against the '864 patent during
`
`its examination was used to reject its pending claims based on anticipation or
`
`obviousness. I note that each of claims 1-81 of the Shanahan '509 patent upon
`
`which the examiner issued a nonstatutory obviousness-type double patenting
`
`rejection are limited to programming a video file, rather than audio file, into the
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`telephone.
`
`2 A supplemental notice of allowance was issued on September 28, 2007 to include
`examiner's initials on an IDS 1449 form filed on June 24, 2007, and a certificate of
`correction was issued on April 14, 2009 to correct typographical errors in the
`specification. One of the corrections was directed to issued claim 14 at 14:2,
`deleting the word "to." Exhibit 107 6 at 0017.
`15
`
`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. 7,295,864
`
`34. While the applicant did not, therefore, make specific characterizations
`
`of the purportedly novel features of the invention as claimed in the '864 patent
`
`during its prosecution, the applicant did make such characterizations during the
`
`prosecution of other patents claiming inventorship of closely related subject matter.
`
`For example, during the prosecution of the application that issued as U.S. Patent
`
`No. 7,257,395 (the '395 patent) the applicant made a number of characterizations
`
`of the purported invention there that were asserted to distinguish over the prior art
`
`which relate to certain limitations of claims 11-14, 16-17 and 19 of the '864 patent
`
`to which this declaration is directed. The purportedly distinguishing features of
`
`what is claimed in the Shanahan '395 patent as argued to the patent office during
`
`its prosecution 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); and
`
`16
`
`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. 7,295,864
`
`• A wireless telephone "configured to prevent the unauthorized
`
`distribution of the downloaded audio files" including the use of
`
`"copyright protection measures." (I d.).
`
`35. As I will describe in detail below, even if the same arguments had
`
`been made by the applicant with respect to the pending claims of the '864 patent,
`
`the various purportedly distinguishing features outlined above-as well as all other
`
`limitations found in the claims of the '864 patent which I address in this
`
`declaration -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
`
`36.
`
`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.
`
`3 7.
`
`It is my opinion that a person having ordinary skill in the relevant art
`
`at the time of invention (i.e., in 2003) 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
`
`17
`
`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. 7,295,864
`
`telecommunications applications.
`
`VI. BROADEST REASONABLE CONSTRUCTION
`
`38.
`
`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."
`
`39.
`
`I understand that Verizon Wireless has proposed that, under the
`
`broadest reasonable construction, the term "database" should be construed to be "a
`
`collection of logically related data stored together in one or more computerized
`
`files." I note that there is nothing in the language of claim 11 or its dependents
`
`requiring that this "database of polyphonic audio files" be accessed remotely over
`
`a communication network and that it may reside in a computer or other device that
`
`is directly connected to the wireless telephone. In this regard, I further note that
`
`the specification of the '864 patent 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.)." Exhibit 10