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`Case IPR2015-00380
`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 IPR2015-00380
`Patent No. 7,295,864
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`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 7,295,864
`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 IPR2015-00380
`Petition for Inter Partes Review
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`TABLE OF CONTENTS
`
`
`I. 
`
`INTRODUCTION AND BACKGROUND ........................................................ 1 
`
`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) .......................... 7 
`
`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 ..................................................................... 8 
`
`III.  THE ‘864 PATENT ............................................................................................. 9 
`
`A.  Background .................................................................................................... 9 
`
`B.  The Priority Chain of the ‘864 Patent ......................................................... 10 
`
`C.  Prosecution History of the ‘864 Patent ....................................................... 11 
`
`IV. IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R. § 42.104(B) ........ 11 
`
`V.  HOW THE CHALLENGED CLAIMS ARE TO BE CONSTRUED UNDER
`37 C.F.R. § 42.104 (B) (3) ................................................................................. 18 
`
`VI. THE CHALLENGED CLAIMS ARE NOT ENTITLED TO A PRIORITY
`DATE BEFORE MARCH 3, 2000. .................................................................. 21 
`
`VII. DETAILED EXPLANATION AND SUPPORTING EVIDENCE UNDER 37
`C.F.R. §§ 42.104(B)(4) AND (B)(5) ................................................................. 24 
`
`A.  “Polyphonic Audio Files” Cannot Form the Basis for Patentability. ......... 25 
`
`B.  Claims 11-14, 16, and 17 Are Obvious Over The 9110 UM In Combination
`With The 9110 FAQ. .................................................................................. 28 
`
`C.  Claims 11-14, 16, 17, and 19 Are Obvious Over The 9110 UM In
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`Case IPR2015-00380
`Petition for Inter Partes Review
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`Combination With The 9110 FAQ And Nikkei. ......................................... 37 
`
`D.  Claims 11-14, 16, and 17 Are Anticipated Or Rendered Obvious By The
`9110 CD. ..................................................................................................... 41 
`
`a.  The 9110 CD Teaches Downloading from the Internet. ..................... 42 
`
`b.  The 9110 CD PC Download Teaching ................................................. 44 
`
`E.  Claims 11-14, 16, 17, and 19 Are Rendered Obvious By The 9110 CD
`Combined With The 9110 FAQ and Nikkei. .............................................. 48 
`
`F.  Claims 11-14, 16, 17, and 19 Are Rendered Obvious By The 9110 UM
`Combined With Nikkei And Zilliacus ........................................................ 49 
`
`G.  Claims 11 - 14, 16, an d 19 are obvious over Alanara and Nikkei ............. 55 
`
`H.  The Asserted References Are Not Cumulative At This Point. ................... 59 
`
`VIII.  CONCLUSION ........................................................................................... 60 
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`Case IPR2015-00380
`Petition for Inter Partes Review
`
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`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Abbvie Inc. v. Mathilda & Terence Kennedy Inst. of Rheumatology Trust,
`764 F.3d 1366 (Fed. Cir. 2014) .............................................................. 26, 27, 37
`
`Agilent Techs., Inc. v. Affymetrix, Inc.,
`567 F.3d 1366 (Fed. Cir. 2009) .......................................................................... 23
`
`Bayer Schering Pharma AG v. Barr Labs., Inc.,
`575 F.3d 1341 (Fed. Cir. 2009) .......................................................................... 37
`
`Bruckelmyer v. Ground Heaters, Inc.,
`445 F.3d 1374 (Fed. Cir. 2006) .......................................................................... 15
`
`Constant v. Advanced Micro-Devices, Inc.,
`848 F.2d 1560 (Fed. Cir. 1988) ................................................................ 2, 15, 26
`
`Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co.,
`464 F.3d 1356 (Fed. Cir. 2006) .......................................................................... 40
`
`Geo M. Martin Co. v. Alliance Mach. Sys. Int’l LLC,
`618 F.3d 1294 (Fed. Cir 2010) ........................................................................... 17
`
`In re Hall,
`781 F.2d 897 (Fed. Cir. 1986) ............................................................................ 14
`
`In re Index Sys.,
`576 F. App’x 976 (Fed. Cir. 2014) ................................................................. 2, 27
`
`In re Klopfenstein,
`380 F.3d 1345 (Fed. Cir. 2004) .......................................................................... 15
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .....................................................................................passim
`
`Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
`485 F.3d 1157 (Fed. Cir. 2007) ...................................................................... 5, 40
`
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`Case IPR2015-00380
`Petition for Inter Partes Review
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`
`Lockwood v. Am. Airlines, Inc.,
`107 F.3d 1565 (Fed. Cir. 1997) .......................................................................... 36
`
`Monsanto Co. v. Mycogen Plant Sci., Inc.,
`261 F.3d 1356 (Fed. Cir. 2001) .......................................................................... 24
`
`In re Mulder,
`716 F.2d 1542 (Fed. Cir. 1983) .......................................................................... 24
`
`New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co.,
`298 F.3d 1290 (Fed. Cir. 2002) .......................................................................... 22
`
`In re NTP, Inc.,
`654 F.3d 1268 (Fed. Cir. 2011) .......................................................................... 21
`
`Pfizer Inc. v. Teva Pharms. USA, Inc.,
`460 F. Supp. 2d 659 (D.N.J. 2006) ..................................................................... 25
`
`PowerOasis, Inc. v. T-Mobile USA, Inc.,
`522 F.3d 1299 (Fed. Cir. 2008) .......................................................... 7, 22, 23, 36
`
`In re Robertson,
`169 F.3d 743 (Fed. Cir. 1999) ............................................................................ 23
`
`SRI Int’l, Inc. v. Internet Sec. Sys., Inc.,
`511 F.3d 1186 (Fed. Cir. 2008) .......................................................................... 15
`
`Stored Value Solutions, Inc. v. Card Activation Techs. Inc.,
`499 F. App’x 5 (Fed. Cir. 2012) ................................................................... 12, 16
`
`Suffolk Techs., LLC v. AOL Inc.,
`752 F.3d 1358 (Fed. Cir. 2014) .......................................................................... 13
`
`Voter Verified, Inc. v. Premier Election Solutions, Inc.,
`698 F.3d 1374 (Fed. Cir. 2012) .......................................................................... 12
`
`In re Wyer,
`655 F.2d 221 (C.C.P.A. 1981) ............................................................................ 14
`
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`Case IPR2015-00380
`Petition for Inter Partes Review
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`PETITIONERS’ EXHIBIT LIST
`
`Exhibit No.
`
`Description
`
`Exhibit 1001 U.S. Patent No. 7,295,864 (the ‘864 patent)
`
`Exhibit 1002 Complaint filed in Solocron v. Cellco Partnership et al. (Case
`No. 2-13-cv-1059) (E.D. Tex.)
`Exhibit 1003 Copy of U.S. Provisional Patent App. 60/169,158, as filed Dec.
`6, 1999 (downloaded from PAIR)
`Exhibit 1004 Copy of Prosecution History for U.S. Patent App. 09/518,712,
`filed Mar. 3, 2000 (now U.S. Patent No. 6,496,692) (as produced
`by Solocron)
`Exhibit 1005 Copy of U.S. Patent App. 10/915,866, as filed Aug. 11, 2004
`(now U.S. Patent No. 7,319,866) (downloaded from PAIR)
`Exhibit 1006 Copy of U.S. Patent App. 10/223,200, as filed Aug. 16, 2002
`(now U.S. Patent No. 7,257,395) (downloaded from PAIR)
`Exhibit 1007 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 List of Patents and Patent Applications Issued to Nokia Relating
`to Ringtones
`Exhibit 1013 Exhibit Not Used
`
`Exhibit 1014 Exhibit Not Used
`
`Exhibit 1015 Exhibit Not Used
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`
`Exhibit 1010
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`Case IPR2015-00380
`Petition for Inter Partes Review
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`Exhibit 1020
`
`Exhibit 1016 Exhibit Not Used
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`Exhibit 1017 Exhibit Not Used
`
`Exhibit 1018 Exhibit Not Used
`
`Exhibit 1019 Exhibit Not Used
`
`“Yamaha Sound Generator LSI ‘YMU757,’” Yamaha News
`Release
`Exhibit 1021 Exhibit Not Used
`
`Exhibit 1022 Copy of U.S. Patent App. 10/603,271, as filed June 24, 2003
`(now U.S. Patent No. 7,295,864) (downloaded from PAIR)
`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 Exhibit Not Used
`
`Exhibit 1027 Exhibit Not Used
`
`Exhibit 1028 Exhibit Not Used
`
`Exhibit 1029 U.S. Patent Application No. 2001/0045153
`
`Exhibit 1030 Exhibit Not Used
`
`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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`Petition for Inter Partes Review
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`Exhibit 1035
`
`Exhibit 1039
`
`Exhibit 1033 Exhibit Not Used
`
`Exhibit 1034 Exhibit Not Used
`
`Final Decision dated April 21, 2014 in IPR2013-00072
`
`Exhibit 1036 Exhibit Not Used
`
`
`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
`
`Exhibit 1042 YM3812 Chip Manual
`
`Exhibit 1043 New Grove Dictionary of Music and Musicians
`
`Exhibit 1044 Oxford Music Online
`
`Exhibit 1045 MIDI Specification
`
`Standard MIDI File Specification
`
`Exhibit 1047 General MIDI Specification
`
`ISO/IEC standard 11172-3 (“MP3” specification)
`
`Exhibit 1049 WMA File Format Specification
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`Exhibit 1050 US 6,351,225 to Moreno
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`Exhibit 1046
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`Exhibit 1048
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`Petition for Inter Partes Review
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`Exhibit 1052
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`Exhibit 1051 U.S. Patent No. 6,496,692 (“the ‘692 patent”)
`
`‘866 Prosecution History, Reply to Office Action dated 5/4/2007
`
`Exhibit 1053 Yamaha YMU757 Press Release, October 12, 1999
`
`Exhibit 1054 Yamaha YMU757 Technical Manual, February 2000
`
`Exhibit 1055 Analysis of WAV files provided in 1999 with Nokia 9110
`
`Exhibit 1056 Exhibit Not Used
`
`Exhibit 1057 Exhibit Not Used
`
`Exhibit 1058 Exhibit Not Used
`
`Exhibit 1059 U.S. Patent No. 6,292,668, filed on October 30, 1998, as a
`continuation of No. 08/804,236 (filed on February 20, 1997),
`issued on September 18, 2001 (“Alanara”)
`Exhibit 1060 Exhibit Not Used
`
`Exhibit 1061 Exhibit Not Used
`
`Exhibit 1062 Exhibit Not Used
`
`Exhibit 1063 Exhibit Not Used
`
`Exhibit 1064 Exhibit Not Used
`
`Exhibit 1065 Declaration of Jari Valli
`
`Exhibit 1066 The IEEE Standard Dictionary of Electrical and Electronics
`Terms (6th ed. 1997)
`Exhibit 1067 Exhibit Not Used
`
`Exhibit 1068 Exhibit Not Used
`
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`Exhibit 1071
`
`Exhibit 1069 Exhibit Not Used
`
`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
`
`Exhibit 1073 Exhibit Not Used
`
`Exhibit 1074 Certified translation of Chapters 2-3 of “Nikkei Electronics”
`1999.11.15
`Exhibit 1075 Exhibit Not Used
`
`Exhibit 1076 Copy of Prosecution History for the U.S. Patent No. 7,295,864
`(downloaded from PAIR)
`Exhibit 1077 Exhibit Not Used
`
`Exhibit 1078 Exhibit Not Used
`
`Exhibit 1079 Declaration of John M. Strawn, Ph.D., and CV
`
`Exhibit 1080 Exhibit Not Used
`
`Exhibit 1081 Exhibit Not Used
`
`Exhibit 1082 Declaration of Erin Flaucher re Nokia 9110 with Exhibits
`
`9110 Nokia.com web page archived May 8, 1999 for “Frequently
`Asked Questions" (“9110 FAQ”)
`9110 CD Listing Printout (“9110 CD Listing”)
`
`9110 PC Suite PC Suite for Nokia 9110 Communicator User’s
`Guide (“9110 PC Suite”)
`Exhibit 1086 Exhibit Not Used
`
`
`Exhibit 1083
`
`Exhibit 1084
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`Exhibit 1085
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`Petition for Inter Partes Review
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`Exhibit 1087 Declaration of Internet Archive re Nokia Websites
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`Exhibit 1088 Declaration from Lisa Rowlison de Ortiz and Attachments
`
`Exhibit 1089 Declaration of Henry Houh, Ph.D., and CV
`
`Exhibit 1090 Exhibit Not Used
`
`Modtones Begin U.S. Tour on Verizon Wireless’s Get it Now
`Exhibit 1091
`Service, September 23, 2002
`
`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 Nokia 9110 Startup Slide Show
`
`Exhibit 1095 U.S. Patent No. 7,904,528 (Zilliacus)
`
`Exhibit 1096 Exhibit Not Used
`
`Exhibit 1097 Exhibit Not Used
`
`Exhibit 1098 Exhibit Not Used
`
`Exhibit 1099 Exhibit Not Used
`
`Exhibit 1100 Exhibit Not Used
`
`Exhibit 1101 Exhibit Not Used
`
`Exhibit 1102 Email with Nikkei Publisher
`
`Exhibit 1103 Exhibit Not Used
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`Case IPR2015-00380
`Petition for Inter Partes Review
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`
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`Cellco Partnership d/b/a Verizon Wireless and AT&T Mobility LLC
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`(“Petitioners”) request inter partes review of claims 11-14, 16-17, and 19 (“the
`
`challenged claims”) of U.S. Patent No. 7,295,864 (“the ‘864 Patent”).
`
`I.
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`INTRODUCTION AND BACKGROUND
`
`This petition seeks review of the same claims as IPR2015-00364, but is
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`based on prior art from different time periods. The priority date for the challenged
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`claims depends upon the Board’s evaluation of the term “polyphonic audio files,”
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`which the inventor added to the ‘864 application in August 2003—44 months after
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`the first applications to which the ‘864 patent claims priority. As explained in
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`IPR2015-00364, the challenged claims are only entitled to—at best—a June 2003
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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.
`
`During prosecution, the patentee’s sole support for polyphonic audio files
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`was a citation in the specification to formats such as WAV and MIDI. Yet, even
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`assuming the earliest asserted priority date, the prior art shows those file formats
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`were used for ringtones. The patentee cannot have it both ways: either the prior art
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`identified herein invalidates the challenged claims or the challenged claims have a
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`2003 priority date and the prior art in IPR2015-00364 invalidates them.
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`Thus, even if the Board determines that bare file formats sufficiently
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`1
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`Case IPR2015-00380
`Petition for Inter Partes Review
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`disclose “polyphonic audio files,” the prior art in the present petition still
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`invalidates the challenged claims because: (a) that prior art teaches polyphonic
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`audio files even under the narrowest construction of that term; (b) “polyphonic”
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`audio files were at best an obvious, known variation; and (c) at a minimum, that
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`prior art discloses as much as the priority applications (including, for example,
`
`WAV and MIDI files). See Constant v. Advanced Micro-Devices, Inc., 848 F.2d
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`1560, 1569 (Fed. Cir. 1988) (recognizing that the prior art need only have the same
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`“level of technical detail” as the asserted patent to be invalidating).
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`Indeed, by 1999, the idea of “polyphonic audio files” was not novel and was
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`at most an obvious variation of previous efforts. “Polyphonic” audio files cannot
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`be a basis for patentability because there are only two categories of audio files:
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`monophonic and polyphonic. This is the epitome of “a finite number of identified,
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`predictable solutions” that preclude patentability. KSR Int’l Co. v. Teleflex Inc.,
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`550 U.S. 398, 421 (2007); see also In re Index Sys., 576 F. App’x 976, 980 (Fed.
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`Cir. 2014) (affirming Board decision of obviousness when “only two solutions
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`would have been realistically considered”). Using polyphonic audio files is the
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`“mere substitution of one element [polyphonic files] for another known in the field
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`[monophonic files],” which merely “yields a predictable result” and is therefore
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`non-patentable. KSR, 550 U.S. at 416.
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`Various industry publications preceding 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 adopting “polyphonic audio files” as ringtones.
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`Companies recognizing this included Nokia in Europe and Yamaha and others in
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`Japan. A Nikkei Electronics article (Exhibit 1074) predating the earliest asserted
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`priority date (annotated by counsel) highlights this predictable evolution:
`
`
`
`Figure 2 (above) shows the evolution from “[m]onophonic ringtone
`
`playback (current system)” to “[p]olyphonic ringtone playback (from end of
`
`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 ringtone[s]” to mobile
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`phones. “Two evolutions of the ‘sound’ functions on mobile phones will first start
`
`from mounting a function to simultaneously produce 3 to 4 sounds (chord playback
`
`function) (Figure 2) … for playing ringtones” Id. at 0007. “ROHM Group and
`
`Yamaha respectively released LSIs” which included polyphonic functionality. Id.;
`
`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.
`
`The European wireless industry also recognized the evolution toward
`
`polyphonic ringtones long before the patentee. Indeed, of its over 100 patent
`
`applications related to ringtones, Nokia has 17 separate patents and applications
`
`with an earlier filing date than the ‘864 patent. Nokia also included polyphonic
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`WAV files with its well-known 9110 wireless phone released in 1999. Exhibit
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`1079 ¶¶ 27-42. For example, the May 8, 1999 “FAQ page” of Nokia’s website for
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`the 9110 noted: “WAV files can be downloaded from the Internet … [and] can
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`also be used as ringtones.” Exhibit 1083 at 0004 (emphasis added). This squarely
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`meets the patentee’s statement in prosecution that WAV files are polyphonic. No
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`Nokia 9110 documents were considered by the Patent Office during prosecution.
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`
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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 Nikkei designed to be
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`incorporated into “mobile phones” to provide “ringtones” which had “polyphony
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`of up to 4 sound[s]” simultaneously. See Exhibit 1020 at 0001. “[T]he YMU757,
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`designed for mobile phones and PDAs, now allows the download and playback of
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`user-selected sounds and melodies.” Exhibit 1053 at 0001. Like the 9110, no
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`YMU757 documents were considered during prosecution. This consistent pattern
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`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 Leapfrog Enters., Inc. v.
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`Fisher-Price, Inc., 485 F.3d 1157, 1160-61 (Fed. Cir. 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).
`
`Against this backdrop of industry evolution, the patentee did not advance the
`
`art. The priority applications did not mention “polyphonic audio file” or discuss
`
`any aspect related to polyphony. Exhibit 1079 ¶¶ 80-105. Similarly, the priority
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`applications assumed the existence of the infrastructure needed to transmit such
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`ringtones (e.g., wireless networks), and did not purport to disclose any
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`improvement to existing wireless networks. Simply put, the priority applications
`
`merely reiterated what was already recognized in the industry.
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`The timeline of the inventor’s addition of the term “polyphonic audio files”
`
`confirms that the priority applications did not advance the art. The inventor’s
`
`applications on December 3, 1999, March 3, 2000, and August 16, 2002 did not
`
`discuss any aspect of polyphony. The inventor later submitted two amendments
`
`adding over sixty new claims on June 20 and 24, 2003, neither of which referenced
`
`polyphony. Exhibit 1010 at 0447-52, 0347-359. Just two weeks later, on July 8,
`
`2003, the inventor submitted a third claim set devoted to polyphonic audio files.
`
`Id. at 0440-42. This new terminology only came after companies such as Nokia,
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`Verizon, and AT&T had developed the technology and network infrastructure to
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`commercialize and market “polyphonic” ringtones. Exhibits 1091-1093. For
`
`example, in March 2002, Nokia touted that the “Nokia 3510 ringtones are
`
`polyphonic” downloaded with a WAP browser. Exhibit 1087 at 0018-19.
`
`Despite this significant industry development, the challenged claims
`
`received only a single obviousness-type double patenting rejection, and were never
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`substantively rejected over any prior art. Exhibit 1076 at 0086-87. Nor did the
`
`Office make any written priority determination or provide any issuance
`
`explanation.
`
`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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`Petition for Inter Partes Review
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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.
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`Cir. 2008) (internal quotations and citations omitted). The standards are different
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`for obviousness and written description sufficient to claim priority. Polyphonic
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`audio files may have been obvious, but they surely were not disclosed at all—
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`much less sufficiently—in the priority applications.
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`For the reasons below, there is a reasonable likelihood that the challenged
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`claims are unpatentable in light of the prior art, warranting inter partes review.
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`II. NOTICES, STATEMENTS AND PAYMENT OF FEES
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`A. Real Party In Interest Under 37 C.F.R. § 42.8(b)(1)
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`
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`The real parties in interest are Cellco Partnership d/b/a Verizon Wireless and
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`AT&T Mobility LLC.
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`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
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`
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`Solocron sued the following entities (and Petitioners) for infringement of the
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`‘864 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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`Petitioners designate lead and back-up counsel as noted below. Powers of
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`attorney pursuant to 37 C.F.R. § 42.10(b) accompany this Petition.
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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
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`
`D.
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`Service Information Under 37 C.F.R. § 42.8(b)(4)
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`
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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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`
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`Petitioners certify pursuant to 37 C.F.R. § 42.104(a) that the ‘864 patent is
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`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. Petitioners
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`certify this petition is 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
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`Petitioners concurrently submit fees of $23,000. If more fees are necessary
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`to accord this Petition a filing date, authorization is granted to charge the same to
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`Deposit Account No. 50-1129 with reference to Attorney Docket No. 79244.0187.
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`III. THE ‘864 PATENT
`A. Background
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`The application for the ‘864 patent was filed on June 24, 2003, and purports
`
`to claim priority to applications dating back to December 1999. Exhibit 1001. It
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`generally relates to databases storing ringtones. Id. at 1:60-62. In the
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`specification, the patentee acknowledged that there were “many types of electronic
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`devices” with “user-selectable” audio and video that were already available. Id. at
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`1:17-28. Indeed, in the priority applications, Mr. Shanahan acknowledged that
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`basic ringtone technology was already well-known and established. Exhibit 1004
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`at 0094-95.
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`According to the inventor, a drawback of such technology was that users
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`“ha[d] to choose from a limited selection of pre-programmed information . . .
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`placed there by the manufacturer.” Exhibit 1001 at 1:31-36. To address this
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`purported issue, the ‘864 patent proposes a method for “allow[ing] a user to
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`program user-defined information into his or her electronic device” to “customize”
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`that device. Id. at 1:37; 1:63-66. As shown below, this basic customization
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`technology was well-established long before the ‘864 patent was filed.
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`B.
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`The Priority Chain of the ‘864 Patent
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`The ‘864 patent purports to claim priority to U.S. Patent Application Nos.
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`09/518,846, filed on March 3, 2000 (“the March 2000 application”) and
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`60/169,158, filed December 6, 1999 (“the December 1999 application”). The
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`entirety of the December 1999 application consists of a scant four double-spaced
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`pages of written description, one double-spaced page of claims, and four block
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`diagrams—none of which supports the challenged claims. See Exhibit 1003.
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`Indeed, the December 1999 application fails to disclose numerous elements
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`recited throughout the challenged claims. For example, the following terms are not
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`disclosed: “polyphonic audio files,” “allowing the user of the wireless telephone to
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`search the database of polyphonic audio files,” “allowing the user of the wireless
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`telephone to review the selected polyphonic audio file before downloading the
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`selected polyphonic audio file into a programmable memory in the wireless
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`telephone,” “providing the user of the wireless telephone to with the option of
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`downloading the selected polyphonic audio file into a programmable memory in
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`the wireless telephone after reviewing the selected polyphonic audio file,”
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`“plurality of lists of polyphonic audio files,” “MP3, MPEG, or WAV files,” and
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`“copyright protection.” Exhibit 1089 ¶¶ 50-51. Because of the lack of underlying
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`support for each claimed step in the December 1999 application, the challenged
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`claims are not entitled to claim priority to this application as discussed below.
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`C.
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`Prosecution History of the ‘864 Patent
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`On June 24, 2003, Mr. Shanahan filed the application that eventually
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`matured into the ‘864 patent. The claims that ultimately issued as claims 11-14,
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`16, 17, and 19 were not present in the original application, but were introduced via
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`a preliminary amendment on August 27, 2003. Exhibit 1022; Exhibit 1076,
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`Exhibit 1076 at 0183-91.
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`Despite the substantial body of ringtone-related prior art, the claims that
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`ultimately issued as claims 11-14, 16, 17, and 19 received only a single
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`obviousness-type double patenting rejection and were never substantively rejected
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`over any prior art. Exhibit 1076 at 0086-87. In response to the single rejection,
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`Mr. Shanahan filed a terminal disclaimer. Id. at 0068-71. The Examiner accepted
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`the terminal disclaimer and allowed the claims without further explanation or
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`discussion. Id. at 0044-49.
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`IV.
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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 11-14, 16, 17, and 19 of the
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`‘864 patent in view of the references identified below. All references are prior art
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`under 35 U.S.C. §§ 102(a) or (b):
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`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 as set forth in the accompanying declarations. See, e.g.,
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`Exhibit 1065 ¶¶ 2-6; Exhibit 1082 ¶¶ 5-13. .
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`
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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
`
`at 0002), and was distributed to customers on a CD and in printed form with the
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`9110 by no later than February 1, 1999. Exhibit 1065 ¶ 4; Exhibit 1082 ¶¶ 4-13;
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`Stored Value Solutions, Inc. v. Card Activation Techs. Inc., 499 F. App’x 5, 14
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`(Fed. Cir. 2012) (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
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`no later than February 1, 1999, such that any person interested and ordinarily
`
`skilled in the subject matter would have been able to easily locate it. Exhibit 1082
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`¶¶ 5-13; Exhibit 1065 ¶¶ 5-6. Thus, the 9110 UM is prior art under at least 35
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`U.S.C. § 102(a).
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`2.
`
`Nokia 9110 FAQ (Exhibit 1083), published on the internet at least as early
`
`as May 8, 1999. Exhibit 1087 ¶¶ 38-39 and 0078-81. The Nokia 9110 FAQ is
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`thus an “Internet publication [that] is considered to be [a] ‘printed publication’
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`within the meaning of . . . pre-AIA 35 U.S.C. 102(a) and (b) . . . .” MPEP § 2128;
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`see also Voter Verified, Inc. v. Premier Election Solutions, Inc., 698 F.3d 1374,
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`1379-80 (Fed. Cir. 2012) (online article that had been available on a public website
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`by the critical date qualified as a “printed publication” under 35 U.S.C. § 102(b));
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`Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1364-65 (Fed. Cir. 2014) (post on
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`an internet newsgroup was a printed publication).
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`Moreover, the PTO has long accepted the Wayback Mac