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`Case IPR2015-00383
`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 IPR2015-00383
`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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`Case IPR2015-00383
`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) .......................... 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 ..................................................................... 9 
`
`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) ................................................................................. 15 
`
`VI. THE CHALLENGED CLAIMS ARE NOT ENTITLED TO A PRIORITY
`DATE BEFORE MARCH 3, 2000. .................................................................. 18 
`
`VII. DETAILED EXPLANATION AND SUPPORTING EVIDENCE UNDER 37
`C.F.R. §§ 42.104(B)(4) AND (B)(5) ................................................................. 21 
`
`A.  “Polyphonic Audio Files” Cannot Form the Basis for Patentability. ......... 22 
`
`B.  Claims 11-14 and 16-17 Are Anticipated by Hosoda. ................................ 25 
`
`C.  Claims 11-14, 16-17 and 19 Are Obvious Over Hosoda and Nikkei. ........ 35 
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`Case IPR2015-00383
`Petition for Inter Partes Review
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`D.  Claim 19 Is Obvious over Hosoda and SDMI. ........................................... 39 
`
`E.  Claims 11, 12, 13, 14, 16, 17, and 19 Are Obvious over JukeBoksi and
`Nikkei and/or YMU757. ............................................................................. 42 
`
`F.  Claims 11-14, 16, 17, and 19 Are Obvious over Rizet, Nikkei and/or
`YMU757. .................................................................................................... 49 
`
`G.  Claim 19 Is Obvious over Rizet, YMU757, and SDMI. ............................. 58 
`
`H.  The Asserted References Are Not Cumulative At This Point. ................... 58 
`
`VIII.  CONCLUSION ........................................................................................... 59 
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`Case IPR2015-00383
`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
`
`Agilent Techs., Inc. v. Affymetrix, Inc.,
`567 F.3d 1366 (Fed. Cir. 2009) .......................................................................... 20
`
`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) .......................................................................... 38
`
`Geo M. Martin Co. v. Alliance Mach. Sys. Int’l LLC,
`618 F.3d 1294 (Fed. Cir 2009) ........................................................................... 14
`
`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) .....................................................................................passim
`
`Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
`485 F.3d 1157 (Fed. Cir. 2007) ...................................................................... 5, 39
`
`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) .......................................................................... 19
`
`In re NTP, Inc.,
`654 F.3d 1268 (Fed. Cir. 2011) .......................................................................... 18
`
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`Case IPR2015-00383
`Petition for Inter Partes Review
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`
`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, 19, 20
`
`In re Robertson,
`169 F.3d 743 (Fed. Cir. 1999) ............................................................................ 20
`
`Voter Verified, Inc. v. Premier Election Solutions, Inc.,
`698 F.3d 1374 (Fed. Cir. 2012) .......................................................................... 12
`
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`Petition for Inter Partes Review
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`PETITIONERS’ EXHIBIT LIST
`
`Description
`Exhibit No.
`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
`
`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
`
`
`Exhibit 1010
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`Exhibit 1014
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`Case IPR2015-00383
`Petition for Inter Partes Review
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`Exhibit 1016 Exhibit Not Used
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`Exhibit 1017 Exhibit Not Used
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`Exhibit 1018 Exhibit Not Used
`
`Exhibit 1019 Declaration of Internet Archive and Copies of Various Websites
`Exhibit 1020
`“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
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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
`
`Exhibit 1033 Exhibit Not Used
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`Exhibit 1035
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`Exhibit 1039
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`Case IPR2015-00383
`Petition for Inter Partes Review
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`Exhibit 1034 Exhibit Not Used
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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
`
`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
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`Exhibit 1047 General MIDI Specification
`
`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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`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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`‘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
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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 Certified English translations of JukeBoksi websites
`(corresponding to Exhibit 1019 at 0088-0098).
`Exhibit 1061 Exhibit Not Used
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`Exhibit 1062 Exhibit Not Used
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`Exhibit 1063 Exhibit Not Used
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`Exhibit 1064 Exhibit Not Used
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`Exhibit 1065 Declaration of Jari Valli
`
`Exhibit 1066 The IEEE Standard Dictionary of Electrical and Electronics
`Terms (6th ed. 1997)
`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 1077
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`Exhibit 1078
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`Exhibit 1071
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`Case IPR2015-00383
`Petition for Inter Partes Review
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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
`
`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)
`Japanese Patent Application No. H11-242490 and certified
`translation (“Hosoda”)
`SDMI Portable Device Specification, Part I (July 8, 1988) and
`RIAA Press Release (July 13, 1999) (“SDMI Open Standard”)
`Exhibit 1079 Declaration of John M. Strawn, Ph.D., and CV
`
`Exhibit 1080 Exhibit Not Used
`
`Exhibit 1081 Exhibit Not Used
`
`Exhibit 1082 Exhibit Not Used
`
`Exhibit 1083 Exhibit Not Used
`
`Exhibit 1084 Exhibit Not Used
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`Exhibit 1085 Exhibit Not Used
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`Exhibit 1086 Exhibit Not Used
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`Exhibit 1087 Exhibit Not Used
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`Petition for Inter Partes Review
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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
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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
`
`Exhibit 1101 Exhibit Not Used
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`Exhibit 1102 Email with Nikkei Publisher
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`Exhibit 1103 Exhibit Not Used
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`Case IPR2015-00383
`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.
`
`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.
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`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 IPR2015-0364 invalidates them.
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`Thus, even if the Board determines that bare file formats sufficiently
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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,
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`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).
`
`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 Co.,
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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
`
`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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`Case IPR2015-00383
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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, as well as Yamaha and
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`others in Japan. A Nikkei Electronics article (Exhibit 1074) predating the earliest
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`asserted priority date (annotated by counsel) highlights this predictable evolution:
`
`
`
`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 ringtone[s]” 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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`The European wireless industry also recognized the evolution toward
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`polyphonic ringtones long before the patentee. Indeed, of its over 100 patent
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`applications related to ringtones, Nokia has 17 separate patents and applications
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`with an earlier filing date than the ‘866 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. This squarely meets the
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`patentee’s statement in prosecution that WAV files are polyphonic. No Nokia
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`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
`
`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 sounds” simultaneously. See Exhibit 1020 at 0001. “[T]he YMU757,
`
`designed for mobile phones and PDAs, now allows the download and playback of
`
`user-selected sounds and melodies.” Exhibit 1053 at 0001. Like the 9110, no
`
`YMU757 documents were considered during prosecution. This 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 Leapfrog Enters., Inc. v.
`
`Fisher-Price, Inc., 485 F.3d 1157, 1160 (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 patentee did not mention “polyphonic audio file” or discuss any aspect
`
`related to polyphony. Exhibit 1079 ¶¶ 76-100. Similarly, the priority applications
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`assumed the existence of the infrastructure needed to transmit such ringtones (e.g.,
`
`wireless networks), and did not purport to disclose any improvement to existing
`
`wireless networks. Simply put, the priority applications merely reiterated what
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`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 seventy new claims on June 20, and June 27, 2003, neither of which
`
`referenced polyphony. Exhibit 1010 at 0447-52, 0347-359. Just two weeks later,
`
`on July 11, 2003, the inventor submitted a third claim set devoted to polyphonic
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`audio files. Id. at 440-42. This new terminology only came after industry
`
`participants such as Nokia, Verizon, and AT&T had developed the technology and
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`network infrastructure to commercialize and market “polyphonic” ringtones.
`
`Exhibits 1091-1093. For example, in March 2002, Nokia touted that the “Nokia
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`3510 ringtones are polyphonic” downloaded with a WAP browser. Exhibit 1087 at
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`0018-19.
`
`Despite this significant industry development, the challenged claims
`
`received only a single obviousness-type double patenting rejection, and were never
`
`substantively rejected over any prior art. Exhibit 1076 at 0086-0087. Nor did the
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`Office make any written priority determination or provide any issuance
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`explanation.
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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
`
`disclosed polyphonic audio files. “Entitlement to a filing date does not extend to
`
`subject matter which is not disclosed, but would be obvious over what is expressly
`
`disclosed.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed.
`
`Cir. 2008) (internal quotations and citations omitted). The standards are different
`
`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—
`
`much less sufficiently—in the priority applications.
`
`For the reasons below, there is a reasonable likelihood that the challenged
`
`claims are unpatentable in light of the prior art, warranting inter partes review.
`
`II. NOTICES, STATEMENTS AND PAYMENT OF FEES
`
`A. Real Party In Interest Under 37 C.F.R. § 42.8(b)(1)
`
`
`
`The real parties in interest are Cellco Partnership d/b/a Verizon Wireless and
`
`AT&T Mobility LLC.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`
`
`
`Solocron sued the following entities (and Petitioners) for infringement of the
`
`‘864 Patent in the Eastern District of Texas on December 6, 2013 (Case No. 2:13-
`
`cv-01059)
`
`(“the Litigation”): Sprint Corporation, Sprint Communications
`
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`Case IPR2015-00383
`Petition for Inter Partes Review
`
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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)
`
`
`
`Petitioners designate lead and back-up counsel as noted below. Powers of
`
`attorney pursuant to 37 C.F.R. § 42.10(b) accompany this Petition.
`
`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.
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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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`
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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
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`electronics devices” with “user-selectable” audio and video that were already
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`available. Id. at 1:17-28. Indeed, in the priority applications, Mr. Shanahan
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`acknowledged that basic ringtone technology was already well-known and
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`established. Exhibit 1004 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 1:31-35. 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; 1:63-65. 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 doubled-spaced page of claims, and four block
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`diagrams—none of which supports the challenged claims. See generally Exhibit
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`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 ¶¶ 49-53. 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
`
`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 specification, but were introduced
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`via a preliminary amendment on August 27, 2003. Exhibit 1022 at 0028; Exhibit
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`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 0044-0049.
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`IV.
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`IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R. § 42.104(B)
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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, none of which were
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`considered by the Patent Office during prosecution. All references are prior art
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`under 35 U.S.C. §§ 102(a) or (b):
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`1. 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.
`
`2.
`
`Rizet
`
`(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.
`
`3.
`
`JukeBoksi (Exhibit 1060), the website of a ringtone downloading service
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`with a URL of www.jukeboksi.radiolinja.fi, was published at least as early as
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`January 25, 1999 via the internet. See Exhibit 1019 ¶¶ 39-41 and 0088-98 and
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`Exhibit 1060 (certified translations of same).
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`The Jukeboksi website is an “on-line database or Internet publication that is
`
`considered to be ‘printed publication’ within the meaning of 35 U.S.C. §§ 102(a)
`
`and (b).” MPEP § 2128; see also Voter Verified, Inc. v. Premier Election
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`Solutions, Inc., 698 F.3d 1374, 1380 (Fed. Cir. 2012) (online article that had been
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`available on a public website by the critical date qualified as a “printed
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`publication” under 35 U.S.C. § 102(b)). Moreover, the PTO has long accepted the
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`Wayback Machine as a proper means for establishing a website as prior art. See
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`IPR2013-00086, Paper 66 at 29-31 (accepting web sites as printed publications and
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`citing cases accepting Wayback Machine materials as sufficient authentication).
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`4.
`
`SDMI Open Standard (Exhibit 1078), including the SDMI Portable
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`Device Specification, Part I, dated July 8, 1998, and the RIAA Press Release dated
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`July 13, 1999 (“SDMI Publishes Open Standard for Portable Devices”), which
`
`documents its public availability as an open standard published by an organization
`
`having over 110 members from the “music, consumer electronics and information
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`technology industries,” including Philips, Sony, Sharp, Yamaha, and Samsung.
`
`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
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`magazine
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`published
`
`since
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`1971.
`
`
`
`See
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`http://www.nikkeibp.com/addinfo/printmedia/ne.html. This issue was available in
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`hardcopy form in Japan in November 1999. Exhibit 1102. In the United States,
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`Nikkei was publicly available at the University of California, Berkeley at least as
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`early as January 2000. Exhibit 1088 ¶ 7. If the patentee seeks to show priority
`
`date prior to March 2000, Petitioners expect to be able to introduce additional
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`evidence that Nikkei was available in hardcopy form in Japan in November 1999.
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`Thus, Nikkei is prior art under 35 U.S.C. § 102(a). Nikkei was not considered
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`during prosecution.
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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.
`
`Alliance Mach. Sys. Int’l LLC, 618 F.3d 1294, 1305 (Fed. Cir 2009) (holding that
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`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).
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`6.
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`YMU757 (Exhibits 1020, 1053). Exhibits 1020 and 1053, published in
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`September 1999 an