Case IPR2015-00387
`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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`AT&T MOBILITY, LLC
`AND
`CELLCO PARTNERSHIP D/B/A VERIZON WIRELESS,
`Petitioners
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`v.
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`SOLOCRON MEDIA, LLC,
`Patent Owner
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`Case IPR2015-00387
`Patent No. 8,594,651 B2
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`CORRECTED PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,594,651
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET SEQ.
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`
`
`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 IPR2015-00387
`Corrected Petition for Inter Partes Review
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`TABLE OF CONTENTS
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`I.
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`INTRODUCTION AND BACKGROUND ........................................................ 1
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`II. NOTICES, STATEMENTS AND PAYMENT OF FEES ................................. 2
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`A. Real Parties In Interest Under 37 C.F.R. § 42.8(b)(1) .................................. 2
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2) ............................................. 2
`C. Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) .......................... 2
`D. Service Information Under 37 C.F.R. § 42.8(b)(4) ....................................... 3
`E. Grounds for Standing Under 37 C.F.R. § 42.104(a) ..................................... 3
`F. Fees Under 37 C.F.R. § 42.103 ..................................................................... 3
`III. THE ’651 PATENT ............................................................................................. 3
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`IV. IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R. § 42.104(B) .......... 6
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`V. HOW THE CHALLENGED CLAIM IS TO BE CONSTRUED UNDER 37
`C.F.R. § 42.104 (B) (3) ........................................................................................ 8
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`VI. DETAILED EXPLANATION AND SUPPORTING EVIDENCE UNDER 37
`C.F.R. §§ 42.104(B)(4) AND (B)(5) .................................................................10
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`A. The Claims 1, 12, 16, 23, 24, 25, 31, 32, 33 and 40 of the ‘651 Patent Are
`Anticipated by Merritt. ................................................................................10
`B. Claims 1, 12, 16, 17, 23, 24, 25, 31, 32, 33 and 40 Are Rendered Obvious
`by Merritt in light of the Knowledge of a Person of Ordinary Skill...........25
`C. Claims 1, 12, 17, 31 and 40 Are Anticipated by Gaffney ...........................27
`D. Claims 1, 12 and 25 Are Anticipated by Shaffer ........................................39
`E. Claims 1, 10, 12, 16, 17, 21, 23, 24, 25, 31, 32, 33, and 40 Are Rendered
`Obvious by Merritt in light of the 9110 UM or Morita ..............................49
`F. Claims 1, 12, 16, 17, 23, 24, 25, 31, 32, 33 and 40 Are Rendered Obvious
`by Merritt in light of Gaffney or Shaffer. ...................................................56
`VII. CONCLUSION .................................................................................................59
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`Case IPR2015-00387
`Corrected Petition for Inter Partes Review
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`PETITIONER’S EXHIBIT LIST
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`Exhibit 1001
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`Exhibit 1002
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`Excerpts of Documents Showing Mr. Shanahan’s Prosecution
`and Litigation Experience and Former Clients
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`Complaint filed in Solocron v. AT&T Mobility. LLC, et al., (E.D.
`Tex.) (Case No. 2:13-cv-1059)
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`Exhibit 1003
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`U.S. Patent No. 8,594,651
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`Exhibit 1004
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`U.S. Patent No. 6,421,429
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`Exhibit 1005
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`Exhibit 1006
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`Exhibit 1007
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`Copy of U.S. Patent App. 07/175022, as filed Aug. 11, 2004
`(now U.S. Patent No. 6,421,429)
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`Declaration of Jari Valli and Nokia 9110 Communicator User
`Manual
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`Declaration of Mr. Mark Lanning Regarding U.S. Patent No.
`8,594,651, dated 12/05/2014
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`Exhibit 1008
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`International Publication Number WO98/19438
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`Exhibit 1009
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`U.S. Patent No. 6,092,114
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`Exhibit 1010
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`Certified Translation of Japanese Patent Application Publication
`No. H4-304935, published May 13, 1994, filed in MobileMedia
`Ideas, Inc. v. Apple Inc. (Case No. 1:10-cv-00258)
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`Exhibit 1011
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`“Connectix Ships Color QuickCam 2 for Windows,” Business
`Wire, March 10, 1997
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`Exhibit 1012
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`“First mobile videophone introduced,” CNN.com, May 18, 1999
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`Case IPR2015-00387
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`Petitioners AT&T Mobility, LLC and Cellco Partnership d/b/a Verizon
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`Wireless ( “Petitioners”) hereby request inter partes review of claims 1, 10, 12, 16,
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`17, 21, 23, 24, 25, 31, 32, 33, and 40 (“the challenged claims”) of U.S. Patent No.
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`8,594,651 (“the ’651 Patent”).
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`I.
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`INTRODUCTION AND BACKGROUND
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`The ’651 patent is part of a family of nearly twenty patents owned by
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`Solocron Media, LLC (“Solocron”), a small company based in Tyler, Texas near
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`the Eastern District of Texas courthouse. Solocron acquired this portfolio from
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`Michael Shanahan, a telecommunications and electronics patent prosecutor
`formerly of Fish & Neave and McDermott Will & Emery. See, e.g., Exhibit 1001.
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`Mr. Shanahan’s clients over the past fifteen years include Nokia, Inc. (“Nokia”)
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`and other electronics companies. Exhibit 1001.
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`Solocron alleges that the ’651 patent relates to converting video files at an
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`intermediate server. File conversion was well-known long before the ’651 patent,
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`as evidenced by AT&T’s U.S. Patent No. 6,421,429 (“Merritt”), which discloses
`the claimed concepts using nearly identical terminology. Merritt is one example of
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`invalidating prior art that was not presented to the Patent Office during the
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`prosecution of the ‘651 patent or any of the applications to which it claims priority.
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`For the reasons below, there is a reasonable likelihood that the challenged
`claims of the ’651 patent are unpatentable in light of the prior art, warranting inter
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`partes review.
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`II. NOTICES, STATEMENTS AND PAYMENT OF FEES
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`A. Real Parties In Interest Under 37 C.F.R. § 42.8(b)(1)
`The real parties in interest are AT&T Mobility, LLC and Cellco Partnership
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`d/b/a Verizon Wireless.
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`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`Solocron sued the following entities (in addition to AT&T Mobility, LLC
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`and Verizon Wireless) for infringement of the ’651 Patent, along with six other
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`patents, in the Eastern District of Texas on December 6, 2013 (Case No. 2:13-cv-
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`01059) (hereinafter, “the Litigation”): Sprint Corporation, Sprint Communications
`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
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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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`Service Information Under 37 C.F.R. § 42.8(b)(4)
`D.
`Please address all correspondence to lead counsel at the address above.
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`AT&T Mobility, LLC consents
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`to electronic
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`service by email at:
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`shejny@mckoolsmith.com and nmathews@mckoolsmith.com. Verizon Wireless
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`consents to electronic service by email at: kanderso@wileyrein.com and
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`fchapman@wileyrein.com.
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`E. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`Petitioners certify pursuant to 37 C.F.R. § 42.104(a) that the ’651 patent is
`available for inter partes review, and that Petitioners are not barred or estopped
`from requesting inter partes review based on the grounds identified herein.
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`Petitioners also certify this petition for inter partes review is filed within one year
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`of the date of service of the complaint discussed above.
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`Fees Under 37 C.F.R. § 42.103
`F.
`AT&T Mobility, LLC is concurrently submitting fees of $23,000. To the
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`extent any additional fees are deemed necessary to accord this Petition a filing
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`date, authorization is hereby granted to charge the same to Deposit Account No.
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`50-5723 with reference to Attorney Docket No. 01869-10IP651-1.
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`III. THE ’651 PATENT
`The ’651 patent was filed on December 21, 2012, and purports to claim
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`priority to applications dating back to December 1999. Exhibit 1003. Though
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`Solocron has asserted this patent against AT&T’s and Verizon’s servers that
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`process Multimedia Messaging Service (“MMS”) messages, the ’651 patent makes
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`no reference to MMS or any other type of messaging service. Rather, the ’651
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`patent specification is entirely directed to user-defined downloadable ringtones. A
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`downloadable ringtone is an audio clip that a phone user can download and set to
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`play when the phone receives an incoming call or text message. Of the family of
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`patents filed by Mr. Shanahan before filing the ’651 patent, all but one related to
`downloadable ringtones and not file format conversion. Mr. Shanahan waited until
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`2006, when
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`transcoding
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`servers were widely used
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`throughout
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`the
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`telecommunications industry, to file his first patent, U.S. Patent No. 7,742,759,
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`reciting claims related to file format conversion. The only other patent filed
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`related to file format conversion was the ‘651 patent, filed six years later.
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`In support of his 2012 claims, Mr. Shanahan relied on an embodiment in the
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`specification relating to converting and downloading user-defined ringtones.
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`Figure 1 depicts a “source 50,” a “device programmer 30,” and a “device 20”:
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`Exhibit 1003, Figure 1. “Device 20” selects a user-defined file from a “source 50,”
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`such as the Internet. Id. at 3:30-41. The file is then transmitted to “device
`programmer 30” that converts the file to a format compatible with “device 20.” Id.
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`“Device 20” then downloads the user-defined file and may retrieve it when a
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`certain even occurs, e.g., when receiving an incoming call. Id.
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`Servers that performed this type of format conversion were well known in
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`the art long before Mr. Shanahan filed his family of his patents. Indeed, more than
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`six years before Mr. Shanahan filed his provisional application and nineteen years
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`before Mr. Shanahan filed the ’651 patent, AT&T filed a patent application that
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`disclosed every element of Mr. Shanahan’s alleged invention. Exhibit 1005.
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`Patent Application No. 07/175022, filed in 1993, describes a “method and system
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`for communicating images across a network among users with disparate end
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`systems running potentially dissimilar image protocols and formats.” Exhibit
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`1005, p.2. The application teaches a “network-based image processing system”
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`that receives “an originating image,” “converts the originating image file to the
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`format and protocol of the called party,” and then communicates the image to the
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`called party. Exhibit 1005, pp.3-4. The AT&T application explained that the
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`“image file” converted could be a video file. (“At this platform, conversion among
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`the two video formats takes place entirely within the digital domain, without
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`returning to baseband analog video, as is commonplace for current video
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`conversions.”). Exhibit 1005, p.17. About four years after filing its 1993 patent
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`application, AT&T filed a continuation-in-part that was ultimately granted as U.S.
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`Patent No. 6,421,429 (the “Merritt” patent) (Exhibit 1004), described in detail
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`below.
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`IV.
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`IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R. § 42.104(b)
`Petitioners requests inter partes review of claims 1, 10, 12, 16, 17, 21, 23,
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`24, 25, 31, 32, 33, and 40 of the ’651 patent, in view of the references identified
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`below.
`1. Merritt, U.S. Patent No. 6,421,429, filed March 18, 1998 and published
`July 16, 2002. This reference is prior art under 35 U.S.C. § 102(e). The Office
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`never considered Merritt during prosecution.
`2. Gaffney, WO98/19438, filed October 29, 1996 and published May 7, 1998.
`This reference is prior art under 35 U.S.C. § 102(b). The Office never considered
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`Gaffney during prosecution.
`Shaffer, U.S. Patent No. 6,092,114, filed April 17, 1998 and published July
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`3.
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`18, 2000. This reference is prior art under 35 U.S.C. § 102(e). The Office never
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`considered Shaffer during prosecution.
`Nokia 9110 Communicator User Manual (“9110 UM”) (Exhibit 1006),
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`4.
`User’s Manual for Nokia 9110, published no later than February 1, 1999. See
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`Exhibit 1006, pp.2-3 ¶¶ 4-6. The 9110 UM was not considered by the Office
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`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 1006,
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`p.7), and was distributed to customers on a CD with the 9110 by no later than
`February 1, 1999. Exhibit 1006, pp.2-3 ¶¶ 2-6; see also Stored Value Solutions,
`Inc. v. Card Activation Techs. Inc., 499 F. App’x 5, 14 (Fed. Cir. 2012) (user
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`manual was printed publication given that it was dated prior to the critical date and
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`was in fact distributed to customers who purchased the software prior to the critical
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`date). The 9110 UM was also available on the internet no later than February 1,
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`1999, such that any person interested and ordinarily skilled would have been able
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`to easily locate it. Exhibit 1006, p.3 ¶¶ 5-6. Thus, the 9110 UM is prior art under
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`at least 35 U.S.C. § 102(a).
`5. Morita, Japanese Patent Application Publication No. H4-304935, published
`May 13, 1994. This reference is prior art under 35 U.S.C. § 102(a). The PTO never
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`considered Morita during prosecution
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`Petitioners request that the challenged claims be cancelled based upon the
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`following grounds, as explained in detail below (including relevant claim
`constructions): Ground 1: claims 1, 12, 16, 23, 24, 25, 31, 32, 33 and 40 are
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`invalid under 35 U.S.C. § 102 as anticipated by Merritt; Ground 2: claims 1, 12,
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`16, 17, 23, 24, 25, 31, 32, 33 and 40 are invalid under 35 U.S.C. § 103 over Merritt
`in view of the knowledge of a person of ordinary skill in the art; Ground 3: claims
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`1, 12, 17, 31 and 40 are invalid under 35 U.S.C. § 102 as anticipated by Gaffney;
`Ground 4: claims 1, 12 and 25 are invalid under 35 U.S.C. § 102 as anticipated by
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`Shaffer; Ground 5: claims 1, 10, 12, 16, 17, 21, 23, 24, 25, 31, 32, 33, and 40 are
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`invalid under 35 U.S.C. § 103 over Merritt in view of the Nokia 9110 UM or
`Morita; and Ground 6: claims 1, 12, 16, 17, 23, 24, 25, 31, 32, 33 and 40 are
`invalid under 35 U.S.C. § 103 over Merritt in view of Gaffney or Shaffer.
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`V. HOW THE CHALLENGED CLAIM IS TO BE CONSTRUED UNDER
`37 C.F.R. § 42.104 (b) (3)
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`In this proceeding, claim terms are to be given their broadest reasonable
`interpretation consistent with the specification and prosecution history. See Patent
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`Office 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:
`“Digital camera of the first wireless communications device” has no
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`written support in the specification or the provisional application, yet appears in
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`claims 10 and 21. Thus, petitioners propose that “digital camera of the first
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`wireless communications device” be given its plain and ordinary meaning. If the
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`board determines that a construction is necessary, Petitioners propose “a digital
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`camera that is part of the first wireless communications device.” Exhibit 1007 ¶ 28.
`“Link that identifies the converted file” has no written support in the
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`specification or the provisional application, yet appears in claims 31 and 40. In
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`construing this claim, petitioner relies upon Solocron’s implicit claim constructions
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`within its infringement contentions and proposed claim constructions from the
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`district court litigation. There, Solocron’s proposed construction for this term is
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`“an element that identifies the converted file” and it contends that the claim covers
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`a link sent to the second wireless communications device notifying the user that a
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`converted file is available to download. It must be noted however, that in order to
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`make such infringement claims, Solocron has stretched the meaning of this
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`limitation. The term “link” only appears in the specification in the context of a
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`wired or wireless “communication link,” not a link that may be used to download a
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`file whose format has been converted. The only indicia of a file sent to a second
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`wireless device in the patent specification related an indicia of an unconverted file,
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`not an indicia of a converted file. Exhibit 1007, ¶ 29. Nevertheless, while
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`petitioners disagree that Solocron’s proposed construction is proper in the district
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`court litigation, for the purposes of this IPR proceeding only petitioners will accept
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`the patent owner’s proposed construction as the broadest reasonable interpretation
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`of the term “link that identifies the converted file.” Thus, Petitioners propose that
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`for the IPR proceeding the broadest reasonable interpretation of this term is “an
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`element that identifies the converted file.”
`“The format compatible with the second wireless device comprises a
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`different file size than the format of the selected video file” has no written
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`support in the specification or the provisional applications, yet appears in claims 23
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`and 32. Thus, petitioners propose that “the format compatible with the second
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`wireless device comprises a different file size than the format of the selected video
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`file” be given its plain and ordinary meaning. Exhibit 1007, ¶ 30.
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`“The format compatible with the second wireless device comprises a
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`different resolution than the format of the selected video file” has no written
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`support in the specification or the provisional applications, yet appears in claims 24
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`and 33. Thus, petitioners propose that “the format compatible with the second
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`wireless device comprises a different resolution than the format of the selected
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`video file” be given its plain and ordinary meaning. Exhibit 1007, ¶ 31.
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`VI. DETAILED EXPLANATION AND SUPPORTING EVIDENCE
`UNDER 37 C.F.R. §§ 42.104(b)(4) AND (b)(5)
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`Pursuant to 37 C.F.R. §§ 42.104(b)(4) and (b)(5), Petitioners set forth an
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`explanation below of why the challenged claims of the ’651 patent are
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`unpatentable under
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`the statutory grounds
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`identified above,
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`including
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`the
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`identification of where each element is found in the prior art patents or printed
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`publications. The claim charts identify the supporting evidence relied upon to
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`support the challenge by exhibit number and set forth the relevance of the evidence
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`to the challenge raised, including an identification of those specific portions of the
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`evidence that support the challenge. An Exhibit List (see 37 C.F.R. § 42.63(e))
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`identifying the exhibits is also included, supra, at p. iii.
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`A. The Claims 1, 12, 16, 23, 24, 25, 31, 32, 33 and 40 of the ‘651
`Patent Are Anticipated by Merritt.
`More than six years before Mr. Shanahan filed his earliest application (and
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`nineteen years before Mr. Shanahan filed the ’651 patent), AT&T filed a patent
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`application for a “method and system for communicating images across a network
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`among users with disparate end systems running potentially dissimilar image
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`protocols and formats.” Exhibit 1005. About four years after filing this patent
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`application, AT&T filed a continuation-in-part that was ultimately granted as U.S.
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`Patent No. 6,421,429 (the “Merritt” patent) (Exhibit 1004).
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`Merritt discloses an “image communications session manager,” as shown in
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`Figure 4B from the patent below.
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`Exhibit 1004, Figure 4B. The image communications session manager is a server
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`that receives an image or video file sent from a first device to a second device,
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`determines the format capabilities of the second device, compares the format of the
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`file to the format capabilities of the second device, if necessary converts the format
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`of the file, and then allows the second device to download the file for subsequent
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`use. As will be described in more detail below, Merritt discloses that the
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`communicated file may be a video, that the file type may be converted to and from
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`JPEG, that files may be transferred to and from wireless devices such as PDAs,
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`that conversion may result in a change of resolution, file size, or compression
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`format, and that the intermediary server may send a link to the converted file.
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`Thus, AT&T invented and disclosed all features recited in 1, 12, 16, 17, 23,
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`24, 25, 31, 32, 33, and 40 of the ’651 patent more than eighteen months before Mr.
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`Shanahan filed his earliest application and more than fourteen years before he
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`submitted the application that became the ’651 patent. Mr. Mark Lanning, a
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`telecommunications expert with a BS in computer science and over 35 years of
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`experience in the telecommunications industry, has provided an extensive analysis
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`of the disclosure of each ’641 claim element in Merritt in his expert declaration,
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`filed concurrently herewith as Exhibit 1007 at ¶¶ 34-41, 46-71, 76-98, and 107-
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`140. Claim charts showing the anticipatory nature of Merritt are below.
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`CLAIM ELEMENT WHERE ELEMENT IS FOUND IN MERRITT (EXHIBIT 1004)
`1[preamble]. A
`“A communication of an originating image from a calling
`method of format
`party to a called party is diverted to the network-based
`image processing system. If there is no match, the
`converting a video
`file received from a
`processing system appropriately converts the originating
`first wireless
`image file to the format and protocol of the called party.
`communications
`The image file is then communicated to the called party.”
`device for
`(Exhibit 1004, 2:1-10)
`communication to a
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`second wireless
`“It can be understood that the present invention allows
`communications
`image communications among dissimilar end systems, as
`device, the method
`well as subscriber access to image processing services,
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`CLAIM ELEMENT WHERE ELEMENT IS FOUND IN MERRITT (EXHIBIT 1004)
`comprising:
`including personal computers supporting a range of image
`protocols, image phones, facsimile machines, dialable
`video services, optical character recognition, media
`conversion/image translation services, and PDAs (i.e.,
`personal digital assistants)….” (Exhibit 1004, 8:37-49).
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`“The system may support myriad image media (e.g.,
`facsimile, video, graphics, etc.), as well as multiple
`formats of any given medium, and may convert between
`different formats of the same medium and between
`formats of different media as required to provide the
`preferred or optimum format and/or protocol for receiving
`the image at the endpoint.” (Exhibit 1004, 10:17-24).
`“A communication of an originating image from a calling
`party to a called party is diverted to the network-based
`image processing system. . . . The image file is then
`communicated to the called party.” (Exhibit 1004, 2:1-13).
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`[1a] receiving from a
`first wireless
`communications
`device at least one
`video file selected by
`a user of the first
`wireless
`communications
`device for
`transmission to a
`second wireless
`communications
`device having video
`playing capability;
`
`
`
`(Exhibit 1004, Fig. 2).
`
`“In step 101, a calling party 18 initiates an image
`communication to called party 20. This communication
`arrives at the network image processing node 12 (step
`103),…” (Exhibit 1004, 3:8-12).
`
`
`
`
`13
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`Case IPR2015-00387
`Corrected Petition for Inter Partes Review
`
`
`CLAIM ELEMENT WHERE ELEMENT IS FOUND IN MERRITT (EXHIBIT 1004)
`
`
`
`(Exhibit 1004, Fig. 1B).
`“It is further understood that the network may determine
`the format and protocol of the calling party image either
`by looking up this information in the database 14 during
`communications setup, or directly from the image data
`transmission, using either
`in-band or out-of-band
`signaling.” (Exhibit 1004, 3:27-33).
`“In step 101, a calling party 18 initiates an image
`communication to called party 20. This communication
`arrives at the network image processing node 12 (step
`103), and the originating party’s sending file format and
`protocol is compared to the preferred profile for the
`terminating party through a look-up procedure in the
`network-based database 14 (step 105).” (Exhibit 1004,
`3:8-14).
`
`
`[1b] determining a
`format of the selected
`video file;
`
`[1c] determining from
`information
`associated with the
`second wireless
`communications
`device video file
`format requirements
`of the second wireless
`communications
`device.
`
`
`
`(Exhibit 1004, Fig. 1B).
`
`“This database contains a multi-parameter field for each
`subscriber, the elements of which describe the image file
`formats and protocols that can be accepted by this
`subscriber, as well as the preferred file format and
`protocol.” (Exhibit 1004, 4:16-20).
`“The network-based image processing system ascertains
`whether the originating image file format and protocol
`
`14
`
`[1d] comparing, with
`one or more computer
`
`
`
`

`
`Case IPR2015-00387
`Corrected Petition for Inter Partes Review
`
`
`CLAIM ELEMENT WHERE ELEMENT IS FOUND IN MERRITT (EXHIBIT 1004)
`processors, the video
`matches the called party preferred file format and protocol,
`file format
`which is stored in the data base.” (Exhibit 1004, 2:4-8).
`requirements of the
`
`second wireless
`“This communication arrives at the network image
`communications
`processing node 12 (step 103), and the originating party’s
`device with the
`sending file format and protocol is compared to the
`format of the selected
`preferred profile for the terminating party through a look-
`video file;
`up procedure in the network-based database 14 (step
`105).” (Exhibit 1004, 3:8-14).
`
`
`(Exhibit 1004, Fig. 1B).
`
`
`
`
`[1e] in response to
`said comparison,
`converting with one
`or more computer
`
`(Exhibit 1004, Fig. 1A).
`“The network-based image processing system ascertains
`whether the originating image file format and protocol
`matches the called party preferred file format and protocol,
`which is stored in the data base. If there is no match, the
`
`
`
`
`
`15
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`
`Case IPR2015-00387
`Corrected Petition for Inter Partes Review
`
`
`CLAIM ELEMENT WHERE ELEMENT IS FOUND IN MERRITT (EXHIBIT 1004)
`processors, the format
`processing system appropriately converts the originating
`of the selected video
`image file to the format and protocol of the called party.”
`file to a format that is
`(Exhibit 1004, 2:4-9).
`compatible with the
`
`video file format
`“If the originating and terminating image file formats do
`requirements of the
`not match, however, then the network-based service will
`second wireless
`invoke and attach image converter server 16 which will
`communications
`perform the necessary file format and protocol conversions
`device; and
`(step 109), followed by establishing a connection to the
`called party (step 111) for communicating the converted
`file.” (Exhibit 1004, 3:18-23).
`
`
`
`
`(Exhibit 1004, Fig. 1B).
`
`“The image file format conversion server converts the
`calling party image file to the acceptable for preferred
`image file format of the called party, depending on the
`option(s) selected by the calling party. This server
`preferably includes conversion control processor 26 and
`one or more conversion processors 271, 272, . . . 27n.”
`(Exhibit 1004, 5:12-1.
`
`
`
`
`16
`
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`Case IPR2015-00387
`Corrected Petition for Inter Partes Review
`
`
`CLAIM ELEMENT WHERE ELEMENT IS FOUND IN MERRITT (EXHIBIT 1004)
`
`(Exhibit 1004, Fig. 2).
`“If there is no match, the processing system appropriately
`converts the originating image file to the format and
`protocol of the called party. The image file is then
`communicated to the third-party.” Exhibit 1004, 2:4-10.
`
`
`
`See citations above with respect to element 1[preamble].
`
`
`
`See citations above with respect to element 1[a].
`
`
`
`17
`
`[1f] sending the
`converted video file
`to the second wireless
`communications
`device.
`12[preamble]. A
`system that format
`converts a selected
`video file received
`from a first wireless
`communications
`device for
`communication to a
`second wireless
`communications
`device, comprising:
`[12a] a first
`communications link
`configured to receive
`from a first wireless
`communications
`
`
`
`

`
`Case IPR2015-00387
`Corrected Petition for Inter Partes Review
`
`
`CLAIM ELEMENT WHERE ELEMENT IS FOUND IN MERRITT (EXHIBIT 1004)
`device a video file
`selected by a user of
`the first wireless
`communications
`device for
`transmission to a
`second wireless
`communications
`device having video
`playing capability;
`and
`[12b] computer
`hardware comprising
`one or more computer
`processors configured
`to:
`
`
`
`(Exhibit 1004, Fig. 1A).
`
`
`
`
`
`
`18
`
`

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`Case IPR2015-00387
`Corrected Petition for Inter Partes Review
`
`
`CLAIM ELEMENT WHERE ELEMENT IS FOUND IN MERRITT (EXHIBIT 1004)
`
`
`
`(Exhibit 1004, Fig. 2).
`
`“Such processing to determine the preferred file format
`may be logically implemented by using one or more look-
`up tables which account for the possible combinations of
`these parameters, and may be appropriately partitioned in
`various ways between or among various elements of
`network image processing system 10, including image
`processing node 12 and database 15 of FIG. 1A, or session
`manager 22, image profile database 24, and control
`processor 26 of FIG. 2.” (Exhibit 1004, 4:39-46).
`
`See also analysis of elements 1[b]-1[f].
`
`See citations above with respect to element 1[b].
`See citations above with respect to element 1[c].
`
`
`
`
`
`19
`
`[12c] determine a
`format of the selected
`video file;
`[12d] determine from
`information
`associated with the
`second wireless
`communications
`device video file
`
`
`
`

`
`Case IPR2015-00387
`Corrected Petition for Inter Partes Review
`
`
`
`
`See citations above with respect to element 1[d].
`
`
`
`See citations above with respect to element 1[d].
`
`CLAIM ELEMENT WHERE ELEMENT IS FOUND IN MERRITT (EXHIBIT 1004)
`format requirements
`of the second wireless
`communications
`device;
`[12e] compare the
`video file format
`requirements of the
`second wireless
`communications
`device with the
`format of the selected
`video file;
`[12f] in response to
`said comparison,
`convert the format of
`the selected video file
`to a format that is
`compatible with the
`video file format
`requirements of the
`second wireless
`communications
`device; and
`[12g] send the
`converted video file
`to the second wireless
`communications
`device.
`16. The system of
`claim 12, wherein the
`selected video file is a
`JPEG file.
`
`See citations above with respect to element 1[f].
`
`
`
`“By way of example, assuming a photographic image in a
`JPEG format (or other high-resolution format) is to be sent
`to a receiving station which supports a JPEG format (or
`other high-resolution formats) different from that of the
`original image and supports a G3 facsimile format, the
`original image should be converted to another JPEG
`format rather than the G3 fax format in order to provide
`the best
`resolution available
`for
`reproducing
`the
`photographic type image.” (Exhibit 1004, 10:63-11:4).
`20
`
`
`
`

`
`Case IPR2015-00387
`Corrected Petition for Inter Partes Review
`
`
`CLAIM ELEMENT WHERE ELEMENT IS FOUND IN MERRITT (EXHIBIT 1004)
`23. The system of
`“Further,
`if
`the
`image profile database
`includes
`claim 12, wherein the
`information such as whether a subscriber has image
`format compatible
`decompression utilities available, or whether
`the
`with the second
`subscriber only req