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`Case IPR2015-00376
`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 IPR2015-00376
`Patent No. 7,319,866
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`CORRECTED PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 7,319,866
`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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`

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`Case IPR2015-00376
`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 ................................. 7
`
`A. Real Party In Interest Under 37 C.F.R. § 42.8(b)(1) ..................................... 7
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2) ............................................. 7
`
`C. Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) .......................... 8
`
`D. Service Information Under 37 C.F.R. § 42.8(b)(4) ....................................... 8
`
`E. Grounds for Standing Under 37 C.F.R. § 42.104(a) ..................................... 8
`
`F. Fees Under 37 C.F.R. § 42.103 – Previously Submitted .............................. 9
`
`III. IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R. § 42.104(B) .......... 9
`
`IV. HOW THE CHALLENGED CLAIM IS TO BE CONSTRUED UNDER 37
`C.F.R. § 42.104 (B) (3) ...................................................................................... 13
`
`V. THE PATENT AND ITS PROSECUTION HISTORY ................................... 16
`
`A. Prosecution History of the ‘866 Patent ....................................................... 17
`
`B. The ‘866 Patent Suffers From the Same Deficiencies That the Inventor
`Identified in the Prior Art. ........................................................................... 18
`
`VI. THE EARLIEST PRIORITY DATE OF CLAIM 10 IS MARCH 2000. ......... 19
`
`VII. DETAILED EXPLANATION AND SUPPORTING EVIDENCE UNDER 37
`C.F.R. §§ 42.104(B)(4) AND (B)(5) ................................................................. 22
`
`A. “Polyphonic Audio Files” Cannot Form the Basis for Patentability .......... 22
`
`B. Claim 10 is Anticipated by the Nokia 9110 User’s Manual. ...................... 25
`
`C. Claim 10 Is Obvious In View Of 9110 UM And 9110 FAQ. ..................... 30
`
`D. Claim 10 Is Obvious Over 9110 UM And 9110 FAQ in View of Nikkei. . 33
`
`E. Claim 10 Is Obvious Over 9110 UM And 9110 FAQ in View of Perez. ... 36
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`Case IPR2015-00376
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`F. Claim 10 Is Obvious Over 9110 UM And 9110 FAQ Combined With
`Nikkei And Perez. ....................................................................................... 37
`
`G. Claim 10 is Obvious Over Rizet and Nikkei. .............................................. 38
`
`H. Claim 10 is Obvious in View of Rizet in Combination with Nikkei and
`either Perez or YMU757. ............................................................................ 43
`
`I. Claim 10 is Obvious Over Rizet and Hosoda. ............................................ 45
`
`J. Claim 10 Is Obvious Over Isomursu, Lin, and Nikkei. .............................. 50
`
`K. The Asserted References Are Not Cumulative At This Point. ................... 58
`
`VIII.CONCLUSION ................................................................................................ 59
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`Case IPR2015-00376
`Corrected Petition for Inter Partes Review
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`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Abbvie Inc. v. Mathilda & Terence Kennedy Inst. of Rheumatology,
`764 F.3d 1366 (Fed. Cir. 2014) .............................................................. 23, 24, 33
`
`Bayer Schering Pharma AG v. Barr Labs., Inc.,
`575 F.3d 1341 (Fed. Cir. 2009) .......................................................................... 33
`
`Constant v. Advanced Micro-Devices, Inc.,
`848 F.2d 1560 (Fed. Cir. 1988) ...................................................................... 2, 23
`
`Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick,
`464 F.3d 1356 (Fed. Cir. 2006) .......................................................................... 35
`
`Geo M. Martin Co. v. Alliance Mach. Sys. Int’l LLC,
`618 F.3d 1294 (Fed. Cir 2010) ........................................................................... 11
`
`In re Index Sys.,
`576 F. App’x 976 (Fed. Cir. 2014) ................................................................. 2, 24
`
`KSR Int’l Co. v. Teleflex Co.,
`550 U.S. 398 (2007) .................................................................................. 2, 32, 35
`
`Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
`485 F.3d 1157 (Fed. Cir. 2007) ...................................................................... 5, 36
`
`Lockwood v. Am. Airlines, Inc.,
`107 F.3d 1565 (Fed. Cir. 1997) .......................................................................... 32
`
`Monsanto Co. v. Mycogen Plant Sci., Inc.,
`261 F.3d 1356 (Fed. Cir. 2001) .......................................................................... 21
`
`In re Mulder,
`716 F.2d 1542 (Fed. Cir. 1983) .......................................................................... 21
`
`New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co.,
`298 F.3d 1290 (Fed. Cir. 2002) .......................................................................... 20
`
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`Corrected Petition for Inter Partes Review
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`In re NTP Inc.,
`654 F.3d 1268 (Fed. Cir. 2011) .......................................................................... 19
`
`Pfizer Inc. v. Teva Pharms. USA, Inc.,
`460 F. Supp. 2d 659 (D.N.J. 2006) ..................................................................... 22
`
`PowerOasis, Inc. v. T-Mobile USA, Inc.,
`522 F.3d 1299 (Fed. Cir. 2008) ................................................................ 7, 20, 32
`
`Stored Value Solutions, Inc. v. Card Activation Techs. Inc.,
`499 F. App’x 5 (Fed. Cir. 2012) ........................................................................... 9
`
`Suffolk Techs., LLC v. AOL Inc.,
`752 F.3d 1358 (Fed. Cir. 2014) .......................................................................... 10
`
`Symantec Corp. v. Computer Assocs. Int’l, Inc.,
`522 F.3d 1279 (Fed. Cir. 2008) .......................................................................... 16
`
`Voter Verified, Inc. v. Premier Election Solutions, Inc.,
`698 F.3d 1374 (Fed. Cir. 2012) .......................................................................... 10
`
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`PETITIONERS’ EXHIBIT LIST
`
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`Exhibit No.
`
`Description
`
`Exhibit 1001 U.S. Patent No. 7,319,866 (the ‘866 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 Exhibit Not Used
`
`Exhibit 1005 Exhibit Not Used
`
`Exhibit 1006 Exhibit Not Used
`
`Exhibit 1007 Copy of Prosecution History for the U.S. Patent No. 7,319,866
`(downloaded from PAIR), including U.S. Patent App.
`10/915,866 as filed Aug. 11, 2004
`Exhibit 1008 Exhibit Not Used
`
`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 Exhibit Not Used
`
`Exhibit 1012 Exhibit Not Used
`
`Exhibit 1013 Exhibit Not Used
`
`International Publication No. WO 98/25397, entitled
`“Telecommunication Device and a Method for Providing
`Ringing Information”, published June 11, 1998 (“Philips” or
`“Rizet”)
`Exhibit 1015 Exhibit Not Used
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`Exhibit 1016 Exhibit Not Used
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`Exhibit 1010
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`Exhibit 1014
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`Exhibit 1020
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`Exhibit 1017 Exhibit Not Used
`
`Exhibit 1018 Exhibit Not Used
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`Exhibit 1019 Declaration of Internet Archive and Copies of Various Websites
`
`“Yamaha Sound Generator LSI ‘YMU757,’” Yamaha News
`Release
`Exhibit 1021 Exhibit Not Used
`
`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 1029 U.S. Patent Application No. 2001/0045153
`
`Exhibit 1030 Exhibit Not Used
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`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 Exhibit Not Used
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`Exhibit 1033 Exhibit Not Used
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`Exhibit 1034 Exhibit Not Used
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`Exhibit 1035
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`Exhibit 1039
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`Exhibit 1046
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`Exhibit 1048
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`Final Decision dated April 21, 2014 in IPR2013-00072
`
`Exhibit 1036 Exhibit Not Used
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`Exhibit 1037 Exhibit Not Used
`
`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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`Standard MIDI File Specification
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`Exhibit 1047 General MIDI Specification
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`ISO/IEC standard 11172-3 (“MP3” specification)
`
`Exhibit 1049 WMA File Format Specification
`
`Exhibit 1050 US 6,351,225 to Moreno
`
`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
`
`Exhibit 1053 Yamaha YMU757 Press Release, October 12, 1999
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`Exhibit 1052
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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 Exhibit Not Used
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`Exhibit 1057 Exhibit Not Used
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`Exhibit 1058 Exhibit Not Used
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`Exhibit 1059 Exhibit Not Used
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`Exhibit 1060 Exhibit Not Used
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`Exhibit 1061 Exhibit Not Used
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`Exhibit 1062 Exhibit Not Used
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`Exhibit 1063 U.S. Patent No. 6,366,791, filed on June 17, 1999 and issued on
`April 2, 2002 (“Lin”)
`Exhibit 1064 Exhibit Not Used
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`Exhibit 1065 Declaration of Jari Valli
`
`Exhibit 1066 Exhibit Not Used
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`Exhibit 1067 Exhibit Not Used
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`Exhibit 1068 Exhibit Not Used
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`Exhibit 1069 Exhibit Not Used
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`Exhibit 1070 Nokia 9110 User Manual, published at least as early as February
`1, 1999 (“9110 UM”)
`Solocron’s Opening Claim Construction Brief from Solocron v.
`Cellco Partnership et al. (Case No. 2-13-cv-1059) (E.D. Tex.)
`Exhibit 1072 Exhibit Not Used
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`Exhibit 1071
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`Exhibit 1077
`
`Exhibit 1083
`
`Exhibit 1073 Exhibit Not Used
`
`
`Exhibit 1074 Certified translation of Chapters 2-3 of “Nikkei Electronics”
`1999.11.15
`Exhibit 1075 U.S. Patent No. 7,088,990, filed October 30, 1998, and issued
`Aug. 8, 2006 (“Isomursu”)
`Exhibit 1076 Exhibit Not Used
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`Japanese Patent Application No. H11-242490 and certified
`translation (“Hosoda”)
`Exhibit 1078 Exhibit Not Used
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`Exhibit 1079 Declaration of John M. Strawn, Ph.D., and CV
`
`Exhibit 1080 Exhibit Not Used
`
`Exhibit 1081 U.S. Patent No. 6,492,761, filed on January 20, 1998, issued on
`December 10, 2002 (“Perez”)
`Exhibit 1082 Declaration of Erin Flaucher re Nokia 9110 with Exhibits
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`9110 Nokia.com web page archived May 8, 1999 for “Frequently
`Asked Questions" (“9110 FAQ”)
`Exhibit 1084 Exhibit Not Used
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`Exhibit 1085 Exhibit Not Used
`
`Exhibit 1086 Exhibit Not Used
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`Exhibit 1087 Declaration of Internet Archive re Nokia Websites
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`Exhibit 1088 Declaration from Lisa Rowlinson de Ortiz and Attachments
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`Exhibit 1089 Declaration of Henry Houh, Ph.D., and CV
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`Exhibit 1090 Exhibit Not Used
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`Modtones Begin U.S. Tour on Verizon Wireless’s Get it Now
`Service, September 23, 2002
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`Exhibit 1091
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`Exhibit 1092 Motorola T720 With New Verizon Wireless Get it Now Service
`Helps Consumers Get Busy in Full Color, September 22, 2002
`Exhibit 1093 AT&T Wireless “Turns On” the World’s Capital, October 14,
`2002
`Exhibit 1094 Exhibit Not Used
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`Exhibit 1095 Exhibit Not Used
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`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 IPR2015-00376
`Corrected Petition for Inter Partes Review
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`Petitioners Cellco Partnership d/b/a Verizon Wireless and AT&T Mobility
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`LLC request inter partes review of claim 10 of U.S. Patent No. 7,319,866 (“the
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`‘866 patent”). Claim 10 relates to personalizing telephones with ringtones—a
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`concept that was known long before the earliest asserted priority date for claim 10.
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`I.
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`INTRODUCTION AND BACKGROUND
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`This petition seeks review of the same claim as IPR2015-00349, but is based
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`on prior art from different time periods. The priority date for claim 10 depends
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`upon the Board’s evaluation of the term “polyphonic audio files,” which the
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`inventor added to the ‘866 application in August 2004—57 months after the first
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`applications to which the ‘866 patent claims priority (“the Priority Applications”).
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`As explained in IPR2015-00349, claim 10 is only entitled to an August 2004
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`priority date because the Priority Applications do not sufficiently disclose
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`“polyphonic audio files.” See Exhibit 1035, Final Decision in IPR2013-00072 at
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`0008 (patent “not entitled to the benefit of the filing date of [parent application]”).
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`During prosecution, the patentee’s sole support for polyphonic audio files
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`was a citation in the Priority Applications to formats such as WAV and MIDI.
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`Yet, even assuming the earliest asserted priority date, the prior art shows those
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`WAV and MIDI ringtone file formats in explicit detail. The patentee cannot have
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`it both ways: either the prior art identified herein invalidates claim 10 or claim 10
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`has a 2004 priority date and the prior art in IPR2015-00349 invalidates it.
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`Thus, even if the Board determines that file formats sufficiently disclose
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`“polyphonic audio files,” the prior art in the present petition still invalidates claim
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`10 because: (a) that prior art teaches polyphonic audio files even under the
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`narrowest construction of that term; (b) “polyphonic” audio files were at best an
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`obvious, known variation; and (c) at a minimum, that prior art discloses as much as
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`the Priority Applications (including, for example, WAV and MIDI files). See
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`Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1569 (Fed. Cir. 1988)
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`(recognizing that the prior art need only have the same “level of technical detail”
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`as the asserted patent to be invalidating).
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`Indeed, by 1999, the idea of “polyphonic audio files” was not novel and
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`was—at most—an obvious variation of previous efforts. “Polyphonic” audio files
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`cannot be a basis for patentability because there are only two categories of audio
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`files: monophonic and polyphonic. This is the epitome of “a finite number of
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`identified, predictable solutions” that preclude patentability. KSR Int’l Co. v.
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`Teleflex Inc., 550 U.S. 398, 421 (2007); see also In re Index Sys., 576 F. App’x
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`976, 980 (Fed. Cir. 2014) (affirming Board decision of obviousness when “only
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`two solutions would have been realistically considered”). Adding polyphonic
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`audio files is the “mere substitution of one element [polyphonic files] for another
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`known in the field [monophonic files],” which merely “yield[s] a predictable
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`result[]” and is therefore non-patentable. KSR, 550 U.S. at 416.
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`Various industry publications dated before the earliest asserted priority date
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`confirm this predictability. The industry was fully aware by 1999 that a normal
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`evolution of technology was the use of “polyphonic audio files” as ringtones.
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`Companies recognizing this included Nokia in Europe, as well as Yamaha and
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`many others in Japan. The following figures from a Nikkei Electronics article
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`(Exhibit 1074 at 0003, 0006) predating the earliest asserted priority date highlight
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`this predictable evolution (with annotations by counsel):
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`Figure 2 (above) shows the evolution from “[m]onophonic ringtone
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`playback (current system)” to “[p]olyphonic ringtone playback (from end of
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`1999).” Id. at 0006. As noted in Exhibit 1074, the evolution depended upon new
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`technologies. One technology was to add “polyphonic functions” to mobile
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`phones. “Two evolutions of the ‘sound’ functions on mobile phones will first start
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`from mounting a function to simultaneously produce 3-4 sounds (chord playback
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`function) (Figure 2) … for playing ringtones” Id. at 0007. “ROHM Group and
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`Yamaha respectively released LSIs” which included polyphonic functionality. Id.;
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`see also id. at 0003 (“to improve the sound quality of the ringing tones is to
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`reproduce chords … [and] simultaneously reproduce three to four sounds”). The
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`Nikkei article was not presented to the Patent Office during prosecution.
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`In Europe, the wireless industry also recognized the evolution toward
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`polyphonic ringtones long before the Priority Application. Indeed, of its over 100
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`patent applications related to ringtones, Nokia has 17 separate patents and
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`applications with an earlier filing date than the ‘866 patent. Nokia also included
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`polyphonic WAV files with its well-known 9110 wireless phone released in 1999.
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`Exhibit 1079 ¶¶ 27-42. For example, the May 8, 1999 “FAQ page” of Nokia’s
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`website for the 9110 noted: “WAV files can be downloaded from the Internet …
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`The WAV files can also be used as ringtones.” Exhibit 1083 at 0004 (emphasis
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`added). This squarely meets the patentee’s statement in prosecution that WAV
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`files are polyphonic. No documents concerning the Nokia 9110 were considered
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`by the Patent Office during prosecution.
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`Separately, by September 1999, Yamaha had developed—and was already
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`selling—a specialized chip (“the YMU757”) referenced in the Nikkei article
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`designed to be incorporated into “mobile phones” to provide “ringtones” which
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`had “polyphony of up to 4 sound[s]” simultaneously. See Exhibit 1020 at 0001.
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`“[T]he YMU757, designed for mobile phones and PDAs, now allows the download
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`and playback of user-selected sounds and melodies.” Exhibit 1053 at 0001. Like
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`the 9110, no YMU757 documents were considered during prosecution. This
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`consistent pattern of industry evolution confirms that—at best—the patentee
`
`merely adapted an old idea using newer, known technology, which the Federal
`
`Circuit has recognized is another quintessential example of obviousness. See
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`Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1160-61 (Fed. Cir.
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`2007) (patent claiming “nothing more than the [prior art], updated with modern
`
`electronics that were common by the time of the alleged invention,” was obvious).
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`Against this backdrop of industry evolution, the Priority Applications did
`
`not advance the art. The Priority Applications did not mention “polyphonic audio
`
`files” or discuss any aspect related to polyphony. Exhibit 1079 ¶¶ 80-105.
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`Similarly, the Priority Applications assumed the existence of the infrastructure
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`needed to transmit such ringtones such as wireless networks, and did not purport to
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`disclose any improvement to existing wireless networks. Simply put, the Priority
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`Applications merely reiterate what was already recognized in the industry.
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`The timeline of the inventor’s addition of the term “polyphonic audio files”
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`confirms that the Priority Applications did not advance the art. The inventor’s
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`applications on December 3, 1999, March 3, 2000, and August 16, 2002 did not
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`discuss any aspect of polyphony. The inventor later submitted two amendments
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`adding over sixty new claims on June 20, 2003 and June 24, 2003—neither of
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`which referenced polyphony. Exhibit 1010 at 0447-52, 0347-359. Just two weeks
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`later, on July 8, 2003, the inventor submitted a third claim set devoted to
`
`polyphonic audio files. Id. at 440-42. This new claim terminology only came after
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`companies such as Nokia, Verizon, and AT&T had developed the technology and
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`network infrastructure to commercialize “polyphonic” ringtones. Exhibits 1091-
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`1093. For example, in March 2002, Nokia touted that the “Nokia 3510 ringtones
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`are polyphonic” downloaded with a WAP browser. Exhibit 1087 at 0018-19.
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`Despite this significant industry development, claim 10 received only one
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`substantive Office Action, and the Patent Office never made any written priority
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`determination or provided any issuance explanation—which occurred after a
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`telephonic interview of which there is no written record detailing the allowance
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`reasons. The inventor distinguished the prior art based upon “polyphonic audio
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`files”—without ever explaining why the ‘866 patent disclosed polyphonic audio
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`files but the prior art (allegedly) did not. Exhibit 1007 at 0061-64.
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`Finally, the fact that polyphonic audio files were an obvious evolution in the
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`wireless industry does not lead to the conclusion that the Priority Applications
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`disclosed polyphonic audio files. “Entitlement to a filing date does not extend to
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`subject matter which is not disclosed, but would be obvious over what is expressly
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`disclosed.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed.
`
`Cir. 2008) (internal citations omitted). The standards are different for obviousness
`
`and written description sufficient to claim priority. Polyphonic audio files may
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`have been obvious, but they surely were not disclosed at all—much less
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`sufficiently—in the Priority Applications.
`
`For the reasons below, there is a reasonable likelihood that claim 10 is
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`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
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`AT&T Mobility LLC.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`
`
`
`Solocron sued the following entities (and Petitioners) for infringement of the
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`‘866 Patent in the Eastern District of Texas on December 6, 2013 (Case No. 2:13-
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`cv-01059)
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`(“the Litigation”): Sprint Corporation, Sprint Communications
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`Company L.P., Sprint Solutions Inc., and T-Mobile USA, Inc. See Exhibit 1002.
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`C. Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
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`
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`Petitioners designate lead and back-up counsel as noted below.
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`For Petitioner Cellco Partnership d/b/a Verizon Wireless
`Lead Counsel
`Backup Counsel
`Kevin P. Anderson, Reg. No. 43,471
`Floyd B. Chapman, Reg. No. 40,555
`Scott A. Felder, Reg. No. 47,558
`WILEY REIN LLP, ATTN: Patent Administration, 1776 K Street NW,
`Washington, DC 20006, Phone: 202.719.7000 / Fax: 202.719.7049
`For Petitioner AT&T Mobility LLC
`Lead Counsel
`Backup Counsel
`Theodore Stevenson, III, Reg. No. 39,040
`Scott W. Hejny, Reg. No. 45,882
`
`Nicholas Mathews, Reg. No. 66,067
`MCKOOL SMITH PC, 300 Crescent Court, Suite 1500, Dallas, TX 75201
`Phone 214.978.4000 / Fax 214.978.4044
`D.
`Service Information Under 37 C.F.R. § 42.8(b)(4)
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`
`
`Please address all correspondence to lead counsel at the addresses above.
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`Petitioners consent to electronic service by email at: kanderson@wileyrein.com,
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`fchapman@wileyrein.com, sfelder@wileyrein.com, shejny@mckoolsmith.com,
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`tstevenson@mckoolsmith.com, and nmathews@mckoolsmith.com.
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`E. Grounds for Standing Under 37 C.F.R. § 42.104(a)
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`
`
`Petitioners certify pursuant to 37 C.F.R. § 42.104(a) that the ‘866 patent is
`
`available for inter partes review, and that Petitioners are not barred or estopped
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`from requesting inter partes review based on the grounds herein. The original
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`Petition was filed within one year of the service of the Complaint above.
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`F.
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`Fees Under 37 C.F.R. § 42.103 – Previously Submitted
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`III.
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`IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R. § 42.104(b)
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`
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`Petitioners request inter partes review of claim 10, in view of the references
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`identified below. All references are prior art under 35 U.S.C. §§ 102(a) or (b):
`
`1.
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`9110 UM (Exhibit 1070), User’s Manual for Nokia 9110, published no later
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`than February 1, 1999. See Exhibit 1065 ¶¶ 4-6; Exhibit 1082 ¶¶ 5-13. The 9110
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`UM was not considered by the Office during prosecution.
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`The 9110 UM is properly considered prior art under at least 35 U.S.C. §§
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`102(a) and/or 102(b). The 9110 UM bears a copyright date of 1998 (Exhibit 1070
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`at 0002), and was distributed to customers on a CD with the 9110 by no later than
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`February 1, 1999. Exhibit 1065 ¶¶ 2-6; Exhibit 1082 ¶¶ 4-13; Stored Value
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`Solutions, Inc. v. Card Activation Techs. Inc., 499 F. App’x 5, 14 (Fed. Cir. 2012)
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`(user manual was printed publication given that it was dated prior to the critical
`
`date and was in fact distributed to customers who purchased the software prior to
`
`the critical date). The 9110 UM was also available on the internet no later than
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`February 1, 1999, such that any person interested and ordinarily skilled would have
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`been able to easily locate it. Exhibit 1082 ¶¶ 5-13; Exhibit 1065 ¶¶ 5-6. Thus, the
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`9110 UM is prior art under at least 35 U.S.C. § 102(a).
`
`2.
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`Nokia 9110 FAQ (Exhibit 1083), published on the internet at least as early
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`as May 8, 1999. Exhibit 1087 ¶¶ 38-39 and 0078-81. The Nokia 9110 FAQ is
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`thus an “Internet publication[s] that [is] considered to be ‘printed publication[s]’
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`within the meaning of 35 U.S.C. §§ 102(a) and (b).” MPEP § 2128; see also Voter
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`Verified, Inc. v. Premier Election Solutions, Inc., 698 F.3d 1374, 1379-81 (Fed.
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`Cir. 2012) (online article that had been available on a public website by the critical
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`date qualified as a “printed publication” under 35 U.S.C. § 102(b)); Suffolk Techs.,
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`LLC v. AOL Inc., 752 F.3d 1358, 1364-65 (Fed. Cir. 2014) (post on an internet
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`newsgroup was a printed publication).
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`Moreover, the PTO has long accepted the Wayback Machine as a proper
`
`means for establishing a website as prior art. See IPR2013-00086, Paper 66, at 29-
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`31 (accepting web sites as printed publications and citing cases accepting Wayback
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`Machine materials as sufficient authentication). The 9110 FAQ was not
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`considered by the Office during prosecution.
`
`3.
`
`Rizet
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`(Exhibit 1014),
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`Int’l Pub. No. WO 98/25397, entitled
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`“Telecommunication Device and a Method for Providing Ringing Information,”
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`published on June 11, 1998. Rizet was not considered during prosecution.
`
`4.
`
`Perez (Exhibit 1081), U.S. Patent No. 6,492,761, filed Jan. 20, 1998 and
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`issued Dec. 10, 2002. Perez was not considered by the Office during prosecution.
`
`5.
`
`Nikkei (Exhibit 1074), Music is From Ringing Tones, Game is from
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`Characters, Nikkei Electronics, November 15, 1999. Nikkei Electronics is a bi-
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`weekly magazine published since 1971. See http://www.nikkeibp.com/addinfo/
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`printmedia/ne.html. This issue was available in hardcopy form in Japan in
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`November 1999. Exhibit 1102. In the United States, Nikkei was publicly
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`available at the University of California, Berkeley as early as January 2000.
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`Exhibit 1088 ¶ 7. If the patentee seeks to show a priority date prior to March 2000,
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`Petitioners expect to be able to introduce further evidence that Nikkei was
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`available in hardcopy form in Japan in November 1999. Thus, Nikkei is prior art
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`under 35 U.S.C. § 102(a). Nikkei was not considered by the Office during
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`prosecution.
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`
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`Additionally,
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`the Board should consider Nikkei as evidence of
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`“simultaneous invention” that shows the level of ordinary skill in the art in 1999.
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`“Independently made, simultaneous inventions, made ‘within a comparatively
`
`short space of time,’ are persuasive evidence that the claimed apparatus ‘was the
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`product only of ordinary mechanical or engineering skill.’” Geo M. Martin Co. v.
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`Alliance Mach. Sys. Int’l LLC, 618 F.3d 1294, 1305 (Fed. Cir 2010) (holding that
`
`level of skill in the art was shown by a reference dated a year after the earliest
`
`asserted priority date and using the contents of the reference to invalidate claims
`
`under obviousness).
`
`6.
`
`Isomursu (Exhibit 1075), U.S. Patent No. 7,088,990, filed October 30,
`
`1998 as a continuation of No. 08/804,236 (filed February 20, 1997), and issued
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`August 8, 2006. Isomursu was considered by the Office during prosecution, but
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`not under Solocron’s current construction for “polyphonic audio files.”
`
`7.
`
`Lin (Exhibit 1063), U.S. Patent No. 6,366,791, filed June 17, 1999 and
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`issued on April 2, 2002. Lin was considered by the Office during prosecution, but
`
`not under Solocron’s current construction for “polyphonic audio files.”
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`8. Hosoda (Exhibit 1077), Japanese patent application publication No. H11-
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`242490, was filed on February 25, 1998, and published September 7, 1999.
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`Hosoda was not considered by the Office during prosecution.
`
`9.
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`YMU757 (Exhibits 1020, 1053). Exhibits 1020 and 1053, published in
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`September 1999 and October 1999, respectively, individually and collectively
`
`describe Yamaha’s specialized YMU757 computer chip. YMU757 was not
`
`considered by the Office during prosecution.
`
`
`
`As explained in detail below (including relevant claim constructions), claim
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`10 is invalid on the following grounds: Ground 1: invalid under 35 U.S.C. § 102
`
`as anticipated by Nokia 9110 UM; Ground 2: invalid under 35 U.S.C. § 103 as
`
`obvious over 9110 UM in view of 9110 FAQ; Ground 3: invalid under 35 U.S.C.
`
`§ 103 as obvious over 9110 UM, 9110 FAQ and Nikkei; Ground 4: invalid under
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`35 U.S.C. § 103 as obvious over Nokia 9110 UM, 9110 FAQ and Perez; Ground
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`5: invalid under 35 U.S.C. § 103 as obvious over Nokia 9110 UM, 9110 FAQ,
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`Nikkei and Perez; Ground 6: invalid under 35 U.S.C. § 103 as obvious over Rizet
`
`in combination with Nikkei; Ground 7: invalid under 35 U.S.C. § 103 as obvious
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`over Rizet, Nikkei, and Perez or YMU757; and Ground 8: invalid under 35 U.S.C.
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`§ 103 as obvious over Rizet in combination with Hosoda; and Ground 9: invalid
`
`under 35 U.S.C. § 103 as obvious over Lin, Isomursu and Nikkei.
`
`IV. HOW THE CHALLENGED CLAIM IS TO BE CONSTRUED UNDER
`37 C.F.R. § 42.104 (b) (3)
`
`
`
`In this proceeding, claim terms are given their broadest reasonable
`
`interpretation consistent with the specification and prosecution history. See Office
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`Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012). The
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`broadest reasonable interpretation of the relevant claim terms is as follows:
`
`“Polyphonic audio file” has no written support in the specification or the
`
`provisional application, yet appears in claim 10. Petitioners propose that
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`“polyphonic audio file” be construed to mean “an a