IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Attorney Docket No.: 01869-10IP651-1
`
` Shanahan
`In re Patent of:
`U.S. Patent No.: 8,594,651
`Issue Date:
`Nov. 26, 2013
`Appl. Serial No.: 13/725,927
`Filing Date:
`Dec. 12, 2012
`Title:
`METHODS AND APPARATUSES FOR PROGRAMMING
`USER-DEFINED INFORMATION INTO ELECTRONIC
`DEVICES
`
`Declaration of Mark Lanning
`Regarding U.S. Patent No. 8,594,651
`
`I, Mark Lanning, a resident of Greenville, Texas, declare as follows:
`
`1.
`
`I have been retained by McKool Smith, P.C. and Wiley Rein LLP to
`
`provide my opinion concerning the validity of U.S. Patent No. 8,594,651 (“the
`
`’651 Patent”) (Ex. 1003). McKool Smith and Wiley Rein are compensating me for
`
`my time at the rate of $550 per hour.
`
`2. My declaration contains the following sections beginning at the
`
`designated pages:
`
`I.
`Basis for My Opinion...................................................................................3
`II.
`Introduction and Qualifications ...................................................................6
`III. My Understanding of the Governing Law ...................................................7
`A.
`Types of Claims—Dependent and Independent Claims ..................7
`B.
`Patentability and Validity of Claims ................................................8
`C.
`IPR Proceedings and Claim Interpretation ....................................10
`D.
`Relevant Time Period ....................................................................11
`E.
`Level of Ordinary Skill in the Art and Relevant Timeframe .........11
`The ’651 Patent ..........................................................................................12
`A.
`Technical Overview of the ’651 Patent .........................................12
`
`IV.
`
`AT&T - Exhibit 1007
`
`

`

`Attorney Docket No.: 01869-10IP651-1
`U.S. Patent No. 8,594,651
`
`
`V.
`
`B.
`Claim Construction ........................................................................14
`Analysis of the ’651 Patent Based on Merritt ............................................17
`A.
`United States Patent No. 6,421,429 (“Merritt”) ............................17
`B.
`Invalidity of Independent Claim 1 .................................................18
`C.
`Invalidity of Dependent Claim 10 ..................................................47
`D.
`Invalidity of Independent Claim 12 ...............................................56
`E.
`Invalidity of Dependent Claim 16 ..................................................67
`F.
`Invalidity of Dependent Claim 17 ..................................................69
`G.
`Invalidity of Dependent Claim 21 ..................................................74
`H.
`Invalidity of Dependent Claim 23 ..................................................74
`I.
`Invalidity of Dependent Claim 24 ..................................................79
`J.
`Invalidity of Dependent Claim 25 ..................................................83
`K.
`Invalidity of Dependent Claim 31 ..................................................87
`L.
`Invalidity of Dependent Claim 32 ..................................................89
`M.
`Invalidity of Dependent Claim 33 ..................................................90
`N.
`Invalidity of Dependent Claim 40 ..................................................90
`VI. Analysis of the ’651 Patent Based on Gaffney ..........................................91
`A. WIPO Patent Application No. WO 98/19438 (“Gaffney”) ...........91
`B.
`Invalidity of Independent Claim 1 .................................................93
`C.
`Invalidity of Independent Claim 12 .............................................115
`D.
`Invalidity of Dependent Claim 17 ................................................122
`E.
`Invalidity of Dependent Claim 31 ................................................124
`F.
`Invalidity of Dependent Claim 40 ................................................128
`VII. Analysis of the ’651 Patent Based on Shaffer ..........................................128
`A.
`United States Patent No. 6,092,114 (“Shaffer”) ..........................128
`B.
`Invalidity of Independent Claim 1 ...............................................130
`C.
`Invalidity of Independent Claim 12 .............................................160
`D.
`Invalidity of Dependent Claim 25 ................................................168
`VIII. Compatibility of the References ..............................................................170
`IX.
`Secondary Considerations of Non-Obviousness ......................................170
`X.
`Supplementation ......................................................................................171
`XI.
`Conclusion ...............................................................................................172
`
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`Attorney Docket No.: 01869-10IP651-1
`U.S. Patent No. 8,594,651
`
`
`Basis for My Opinion
`3.
`
`In preparing
`
`this declaration, I have reviewed
`
`the following
`
`
`
`I.
`
`documents:
`
`
`
`• US 6,496,692 to Michael E. Shanahan--Methods and apparatuses
`for programming user-defined information into electronic devices
`• US 7,257,395 to Michael E. Shanahan--Methods and apparatuses
`for programming user-defined information into electronic devices
`• US 7,295,864 to Michael E. Shanahan--Methods and apparatuses
`for programming user-defined information into electronic devices
`• US 7,319,866 to Michael E. Shanahan--Methods and apparatus for
`programming user-defined information into electronic devices
`• US 7,742,759 to Twenty Year Innovations, Inc.--Methods and
`apparatuses for programming user-defined
`information
`into
`electronic devices
`• US 8,249,572 to Solocron Media, LLC--Methods and apparatuses
`for programming user-defined information into electronic devices
`• US 8,594,651 to Solocron Media, LLC--Methods and apparatuses
`for programming user-defined information into electronic devices
`• US 5,809,415 to Unwired Planet--Core Wireless Client/Server
`Architecture Patent (WAP).
`• US 5,784,001 to Motorola--Method and apparatus for presenting
`graphic messages in a data communication receiver
`• Prosecution history for US 6,496,692 patent
`• Prosecution history for US 7,257,395 patent
`• Prosecution history for US 7,295,864 patent
`• Prosecution history for US 7,319,866 patent
`• Prosecution history for US 7,742,759 patent
`• Prosecution history for US 8,249,572 patent
`• Prosecution history for US 8,594,651 patent
`3
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`Attorney Docket No.: 01869-10IP651-1
`U.S. Patent No. 8,594,651
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`
`• Prosecution history for US 5,809,415 patent
`• Prosecution history for US 5,784,001 patent
`• Solocron Media, LLC’s P.R. 3-1 Infringement Contentions and
`supporting claim charts, dated Apr. 4, 2014 and served in Solocron
`v. AT&T Mobility, et al. (E.D. Tex.) (Case No. 2-13-cv-1059)
`• Defendants’ P.R. 3-3 Invalidity Contentions and supporting claim
`charts, dated June 24, 2014 and served in Solocron v. AT&T
`Mobility, et al. (E.D. Tex.) (Case No. 2-13-cv-1059)
`• Exhibits cited in the IPR Petition at Attorney Docket No. 01869-
`10IP651-1 regarding U.S. Patent No. 8,594,651
`• Exhibits cited in the IPR Petition at Attorney Docket No. 01869-
`10IP651-2 regarding U.S. Patent No. 8,594,651
`• Exhibits cited in the IPR Petition at Attorney Docket No. 01869-
`10IP651-3 regarding U.S. Patent No. 8,594,651
`• Exhibits cited in the IPR Petition at Attorney Docket No. 01869-
`10IP759 regarding U.S. Patent No. 7,742,759
`• US 5,794,142 to Nokia--Core SMS Patent: Mobile terminal having
`network services activation through the use of point-to-point short
`message service.
`• US 6,038,295 to Siemens--Apparatus and method for recording,
`communicating and administering digital images.
`• US 6,487,602 to Ericsson--System and method for accessing the
`internet in an internet protocol-based cellular network.
`• US 6,795,711 to Nokia--Multimedia Message Content Adaptation.
`• US 6,192,257 to Lucent--Wireless communication terminal having
`video image capability.
`• US 5,797,089 to Ericsson--A cellular phone combined with a PDA
`with associated programs.
`• US 5,793,416 to LSI (Wireless system for audio, video & data
`signals).
`• US 6,006,105 to LSI (Multi-Freg, Multi-Protocol Wireless Device)
`
`4
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`Attorney Docket No.: 01869-10IP651-1
`U.S. Patent No. 8,594,651
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`
`• US 5,764,235 to Insight (System for Xmit Graphical images from
`server to client)
`• US 5,956,716 to InterVu (Delivery of Video data over a computer
`network)
`• US 6,108,655 to Cisco (Transmitting Images & Objects over a
`computer network).
`• WO 1997030556 to Ericsson. Sending graphic images to mobile
`terminals.
`• WO 1998043177 to Intel. System for dynamically transcoding
`data transmitted between computers over a communication link.
`• US 6,516,135 to Matsushita (Video Processing with conversion of
`image compression format).
`• US 6,092,114 to Siemens (performing file conversions of message
`attachments transmitted between computers).
`• US 6,453,340 to Matsushita (Data Converter in an email network)
`• WO1999021351 to Adobe.
`• US 6,421,429 to AT&T (Network-based System Enabling Image
`Communications)
`• US 6,741,608 to Avaya (transcoding streaming data in telecom
`system)
`• US 5,524,137 to AT&T (Multimedia Messaging System)
`• US 6,282,714 to Sharewave (Wireless Home Computer System)
`• US 6,813,777 to Rockwell Collins (Passenger Entertainment
`System)
`• “Connectix Ships Color QuickCam 2 for Windows: Next
`Generation of Best-Selling Digital Camera; Connectix QuickCam
`2 Delivers Sharper Images, Enhanced Software, and Easy
`Applications Integration.” Business Wire, March 10, 1997
`(available
`at
`http://www.thefreelibrary.com/Connectix+Ships+Color+QuickCa
`m+2+for+Windows %3A+Next+Generation+of...-a019185327)
`(last visited Nov. 18, 2014)
`
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`Attorney Docket No.: 01869-10IP651-1
`U.S. Patent No. 8,594,651
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`• “First mobile videophone introduced,” CNN.com, May 18, 1999
`(available
`at
`http://www.cnn.com/TECH/ptech/9905/18/japan.phonetv/)
`(last
`visited Nov. 18, 2014)
`
`Introduction and Qualifications
`4.
`
`I am currently the president of two consulting companies: Telecom
`
`
`
`II.
`
`Architects, Inc. and Reticle Consulting, Inc. I have over 38 years’ experience in a
`
`wide variety of communication technologies including, but not limited to, cellular
`
`networks and their components (e.g., base stations, mobile switching centers, and
`
`handsets), advanced cellular network based services (e.g., Short Message Service
`
`(“SMS”), Enhanced Message Service (“EMS”), and Multimedia Message Service
`
`(“MMS”)), Public Switched Telephone Network (“PSTN”) networks, advanced
`
`services that use Intelligent Networking (“IN”) network elements, and various
`
`signaling protocols (e.g., Signaling System 7 (“SS7”) and Integrated Digital
`
`Services Network (“ISDN”)).
`
`5.
`
`I received a B.S. in Computer Science from Southern Methodist
`
`University (SMU) in 1983.
`
`6.
`
`I was hired in 1985 by DSC, now part of Alcatel, where I was a
`
`software development manager on the team responsible for converting DSC’s
`
`PSTN telephone switch into a Mobile Switching Center (MSC) for Motorola to sell
`
`
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`6
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`Attorney Docket No.: 01869-10IP651-1
`U.S. Patent No. 8,594,651
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`as a part of their cellular product offering in the U.S. and many other countries. In
`
`1991, I began working as a consultant to Motorola for its “SuperCell” base station
`
`product and as a consultant to British Telecom on its current analog cellular
`
`network and its planned Global System for Mobile Communications (“GSM”)
`
`network.
`
`7. My work as a consultant evolved over the years into many different
`
`cellular network and equipment design and implementation projects. Since 1995, I
`
`have also provided second generation (2G) and third generation (3G) Code
`
`Division Multiple Access (“CDMA”) network architecture and equipment design
`
`and implementation consulting services to companies such as Sprint, Nextel,
`
`Nokia, and Ericsson.
`
`8.
`
`Further detail on my education, work experience, and the cases in
`
`which I have previously given testimony in the past four years is contained in my
`
`CV in Appendix 1.
`
`III. My Understanding of the Governing Law
`A. Types of Claims—Dependent and Independent Claims
`9.
`I understand that patents have two types of claims – independent
`
`claims and dependent claims. I understand that independent claims only include
`
`the aspects stated in those independent claims. I further understand that dependent
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`Attorney Docket No.: 01869-10IP651-1
`U.S. Patent No. 8,594,651
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`claims include the aspects stated in the dependent claim plus the aspects stated in
`
`the independent claim from which the dependent claim depends.
`
`B.
`10.
`
`Patentability and Validity of Claims
`
`I understand that an invention described in a patent must be new, it
`
`cannot be obvious, and it must be useful to be a valid patent. To determine whether
`
`a patent meets these requirements, one must look at each of the claims. I
`
`understand that a patent claim is not valid if it is not new, obvious, or not useful.
`
`11.
`
`I understand that prior art refers to publically available information
`
`(e.g., published, on sale, or in public use in the United States) before the “critical
`
`date” of a particular patent claim. I understand that the critical date of the ’651
`
`Patent is one year before the patent’s earliest filing date (or “priority date”).
`
`12.
`
`I understand that a patent claim is not new (which I understand to be
`
`termed “anticipated”) if each element of the claim is disclosed expressly or
`
`inherently in a single prior art reference.
`
`13.
`
`I further understand that the determination of whether a claim is
`
`obvious is evaluated from the perspective of a person of ordinary skill in the
`
`relevant area of the invention, at the time the invention was made. In analyzing
`
`obviousness, I understand that it is important to understand the scope of the claims
`
`at issue, the level of skill in the relevant area of the invention, the scope and
`
`
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`Attorney Docket No.: 01869-10IP651-1
`U.S. Patent No. 8,594,651
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`content of the prior art references, the differences between the prior art references
`
`and the claims, and any secondary considerations that would demonstrate that an
`
`invention is not obvious. I also understand that if a technique has been used to
`
`improve one system or method, and a person of ordinary skill in the relevant area
`
`would improve similar systems or methods in the same way, using the technique is
`
`obvious unless actual application is beyond his or her skill to do so. I understand
`
`that if more than one reference is used, there must be a motivation to combine the
`
`references through an explicit or implicit teaching, suggestion or motivation to
`
`arrive at the invention, or of prior art references, such as common sense of a person
`
`of skill in the relevant area, market demand, or an industry need for the invention.
`
`14.
`
`I understand that secondary considerations indicating that a patent
`
`claim is not obvious may include evidence of commercial success caused by the
`
`invention, evidence of a recognized need that was solved by the invention,
`
`evidence that others copied the invention, or evidence that the invention achieved a
`
`surprising result. I understand that such secondary considerations must have a
`
`causal relationship to the elements of a claim.
`
`15.
`
`I am unaware of any such secondary considerations relating to any
`
`claim of the ’651 patent.
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`Attorney Docket No.: 01869-10IP651-1
`U.S. Patent No. 8,594,651
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`IPR Proceedings and Claim Interpretation
`
`I understand that this “inter partes review” (“IPR”) proceeding is a
`
`
`
`C.
`16.
`
`proceeding before the United States Patent and Trademark Office (“USPTO”) for
`
`challenging the patentability of the ’651 patent. I understand that an IPR is
`
`conducted by the Patent Trial and Appeal Board (the “Board”) if a trial is
`
`instituted.
`
`17.
`
`I understand that in an IPR proceeding, the Board gives the challenged
`
`patent’s claims their broadest reasonable interpretation that is consistent with the
`
`specification of the patent. I understand that the specification of a patent includes
`
`all of the figures, background discussions, any detailed description, examples, and
`
`claims within the patent document.
`
`18.
`
`I understand that that the Board will look at the specification of the
`
`patent to see if a claim term has been defined by the patent applicant, and if not,
`
`will apply the broadest reasonable ordinary meaning from the perspective of a
`
`person of ordinary skill in the relevant area. However, I also understand that if a
`
`term has no previous meaning to those of ordinary skill in the relevant area, its
`
`meaning then must be found in the patent.
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`Attorney Docket No.: 01869-10IP651-1
`U.S. Patent No. 8,594,651
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`D. Relevant Time Period
`19.
`I understand that the earliest patent application filing leading to ’651
`
`patent (Ex. 1003) was made on December 6, 1999. I understand that the owner of
`
`the ’651 patent might try to prove an earlier date of invention. However, I
`
`understand that the critical date by which a patent owner must do so is one year
`
`prior to the earliest filing date of a patent, such as when the invention has been
`
`publically available. Therefore, I have considered the critical date for prior art
`
`purposes in my analysis of the ’651 patent to be December 6, 1998.
`
`E.
`Level of Ordinary Skill in the Art and Relevant Timeframe
`20. The stated invention of the ’651 patent relates to an apparatus that
`
`allows a user to program user-defined audio and video information into a
`
`programmable electronic device. The ’651 Patent at 2:7-12.
`
`21. Accordingly, I believe that a person of ordinary skill in the art in the
`
`field of developing or using the technology of the ’651 patent would have at least a
`
`bachelor’s degree in combination with at least three or more years of computer
`
`programming experience. This description is approximate, and a higher level of
`
`education or skill might make up for less experience, and vice-versa.
`
`22.
`
`I believe that I qualify as at least a person of ordinary skill in the art in
`
`the fields of using and developing the technology of the ’651 patent, as described
`
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`Attorney Docket No.: 01869-10IP651-1
`U.S. Patent No. 8,594,651
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`
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`above, and that I have a sufficient level of knowledge, experience and education to
`
`provide an expert opinion in these fields of the ’651 patent. This is true regardless
`
`of whether the testimony provided in this opinion is given in the past during the
`
`relevant time period described above or present tense.
`
`IV. The ’651 Patent
`A. Technical Overview of the ’651 Patent
`23. The specification ’651 patent is generally directed to a device for
`
`programming user-defined information into an electronic device. Though Solocron
`
`has asserted this patent against AT&T’s and Verizon’s servers that process
`
`Multimedia Messaging Service (“MMS”) messages, the ’651 patent makes no
`
`reference to MMS or Short Message Service (SMS) messaging services. The ’651
`
`patent is entirely directed to downloadable ringtones. A downloadable ringtone is
`
`an audio clip that a phone user can download and set to play when the phone
`
`receives an incoming call or text message. The specification generally describes
`
`how devices can browse, preview, and download these ringtones.
`
`24. One embodiment described in the specification relates to converting
`
`and downloading user-defined audio or video. Figure 1 depicts a “source 50,” a
`
`“device programmer 30,” and a “device 20”:
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`
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`12
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`Attorney Docket No.: 01869-10IP651-1
`U.S. Patent No. 8,594,651
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`25. The “source 50” is any device “for providing user-defined information
`
`to programmer 30 . . . .” ’651 Patent, 3:42-57. The “device programmer 30”
`
`communicates with device 20 “to determine which forma
`
`the
`
`incoming
`
`information should be converted to so that the information is compatible with the
`
`downloading requirements of device 20” and processes “this information into a
`
`suitable format.” The file is then transmitted to “device programmer 30” that
`
`converts the file to a format compatible with “device 20.” Id. “Device 20” then
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`downloads the user-defined file and may retrieve it when a certain even occurs,
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`e.g., when receiving an incoming call. Id.
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`13
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`Attorney Docket No.: 01869-10IP651-1
`U.S. Patent No. 8,594,651
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`26. Notably, the ‘651 patent does not refer to MMS or other messaging
`
`
`
`service, and, as discussed below in the claim construction section, does not provide
`
`written support for several of the claims in its specification.
`
`27. The ’651 Patent lists 44 claims, with claims 1 and 12 being
`
`independent claims. Independent claim 1 is directed to a method of format
`
`converting a video file received from one wireless communications device before
`
`communicating to a second wireless communications device. Claims 10, 32, 33,
`
`and 40 each depend from claim 1. Independent claim 12 is directed to a system that
`
`format converts a video file received from one wireless communications device
`
`that is to be communicated to a second wireless communications device. Claim 12
`
`is the system corollary to method claim 1. Claims 16, 17, 21, 23, 24, 25 and 31
`
`depend from claim 12, with claims 21, 23, 24 and 31 being the system corollaries
`
`to method claims 10, 32, 33 and 40, respectively.
`
`B. Claim Construction
`28.
`“Digital camera of the first wireless communications device” has
`
`no written support in the specification or the provisional application, yet appears in
`
`claims 10 and 21. Solocron did not propose a construction for this term in the
`
`district court litigation. Thus, it is my opinion that “digital camera of the first
`
`wireless communications device” should be given its plain and ordinary meaning.
`
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`Attorney Docket No.: 01869-10IP651-1
`U.S. Patent No. 8,594,651
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`If the board determines that a construction is necessary, then it is my opinion this
`
`phrase should be construed as “a digital camera that is part of the first wireless
`
`communications device.”
`
`29.
`
`“Link that identifies the converted file” has no written support in
`
`the specification or the provisional application, yet appears in claims 31 and 40. In
`
`construing this claim, petitioner relies upon Solocron’s implicit claim constructions
`
`within its infringement contentions and proposed claim constructions from the
`
`district court litigation. There, Solocron’s proposed construction for this term is
`
`“an element that identifies the converted file” and it contends that the claim covers
`
`a link sent to the second wireless communications device notifying the user that a
`
`converted file is available to download. It must be noted however, that in order to
`
`make such infringement claims, Solocron has stretched the meaning of this
`
`limitation. The term “link” only appears in the specification in the context of a
`
`wired or wireless “communication link,” not a link that may be used to download a
`
`file whose format has been converted. The only indicia of a file sent to a second
`
`wireless device in the patent specification related an indicia of an unconverted file,
`
`not an indicia of a converted file. Nevertheless, it is my opinion that the patent
`
`owners proposed construction is the broadest reasonable interpretation of the term
`
`“link that identifies the converted file.” Thus, Petitioners propose that the broadest
`
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`Attorney Docket No.: 01869-10IP651-1
`U.S. Patent No. 8,594,651
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`reasonable interpretation of this term is “an element that identifies the converted
`
`file.”
`
`30.
`
`“The format compatible with the second wireless device comprises
`
`a different file size than the format of the selected video file” has no written
`
`support in the specification or the provisional applications, yet appears in claims 23
`
`and 32. Solocron did not propose a construction for this term in the district court
`
`litigation. Thus, it is my opinion that “the format compatible with the second
`
`wireless device comprises a different file size than the format of the selected video
`
`file” should be given its plain and ordinary meaning.
`
`31.
`
`“The format compatible with the second wireless device comprises
`
`a different resolution than the format of the selected video file” has no written
`
`support in the specification or the provisional applications, yet appears in claims 24
`
`and 33. Solocron did not propose a construction for this term in the district court
`
`litigation. Thus, it is my opinion that “The format compatible with the second
`
`wireless device comprises a different resolution than the format of the selected
`
`video file” should be given its plain and ordinary meaning.
`
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`Attorney Docket No.: 01869-10IP651-1
`U.S. Patent No. 8,594,651
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`
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`V. Analysis of the ’651 Patent Based on Merritt
`A. United States Patent No. 6,421,429 (“Merritt”)
`32. U.S. Patent 6,421,429 (“Merritt”) is generally directed to a method for
`
`image communications, and more particularly, to a method and system for
`
`communicating images across a network among users with disparate end systems
`
`running potentially dissimilar image protocols and formats. Merritt discloses a
`
`“network-based image communications processing system,” as shown in Figure 4b
`
`from the patent below.
`
`
`
`33. The image communications session manager is an intermediate server
`
`that receives an image or video file sent from a first user device to a second user
`
`device, determines the format capabilities of the second user’s device, compares
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`17
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`Attorney Docket No.: 01869-10IP651-1
`U.S. Patent No. 8,594,651
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`
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`the format of the file to the format capabilities of the second device, if necessary
`
`converts the format of the file, and then allows the second user to download the
`
`video file for subsequent use. As will be described in more detail below, Merritt
`
`discloses that the file communicated may be a video, the file type may be
`
`converted to and from any format including video formats such as MPEG, the
`
`user-devices may be wireless communications devices such as wireless telephones,
`
`and the communications processing system uses computer processors to compare
`
`the file format requirements of the sending and receiving devices and convert the
`
`transmitted file appropriately.
`
`B.
`Invalidity of Independent Claim 1
`34. Claim 1 is reproduced below, with element references added for ease
`
`of reference in my analysis made herein.
`
`35. Claim 1 recites:
`
`(a)
`
`Claim 1
`A method of format converting a video file received from a first wireless
`communications device for communication to a second wireless communications
`device, the method comprising:
`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;
`(b) determining a format of the selected video file;
`determining from information associated with the second wireless
`communications device video file format requirements of the second
`wireless communications device;
`
`(c)
`
`
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`Attorney Docket No.: 01869-10IP651-1
`U.S. Patent No. 8,594,651
`
`
`(d)
`
`comparing, with one or more computer processors, the video file format
`requirements of the second wireless communications device with the format
`of the selected video file;
`in response to said comparison, converting with one or more computer
`processors, 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
`(f) sending the converted video file to the second wireless communications
`device.
`
`
`(e)
`
`36. Notably, the “Summary of the Invention” in Merritt alone anticipates
`
`claim 1 of the ’651 patent:
`
`A communication of an originating image from a calling
`party to a called party is diverted to the network-based
`image processing system. 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 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 called party. A handshake-like
`exchange may be used to enable image communications
`of parties that are not subscribers and do not have
`profiles in the database. In a further embodiment, the
`network-based nodal image processing system provides
`for file return to the called party. . . . The method and
`system of the present invention may be applied in
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`Attorney Docket No.: 01869-10IP651-1
`U.S. Patent No. 8,594,651
`
`
`premises-based
`local
`from
`ranging
`systems
`communications to wide area communications on either
`private or public networks.
`
`Merritt, 2:1-18. I have provided a detailed analysis of each element of the claim
`
`below.
`
`a. Invalidity Analysis of the preamble of claim 1
`
`Claim 1 preamble
`A method of format converting a video file received from a first wireless
`communications device for communication to a second wireless communications
`device, the method comprising:
`
`
`37.
`
`It is my understanding that the preamble is generally not limiting.
`
`However, should the board determine the preamble is limiting, it is my opinion that
`
`Merritt discloses the preamble. The preamble is directed to a method of format
`
`converting a video file, received from a first wireless communications device that
`
`is to be transmitted to a second wireless communications device. Merritt discloses
`
`an “image communications sessions manager” that format converts a video file
`
`received from a first wireless communications device for communication to a
`
`second wireless communications device. For example, the specification states that
`
`“A communication of an originating image from a calling party to a called party is
`
`diverted to the network-based image processing system,” Merritt, 2:1-3, “the
`
`processing system appropriately converts the originating image file to the format
`
`
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`Attorney Docket No.: 01869-10IP651-1
`U.S. Patent No. 8,594,651
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`
`
`and protocol of the called party. The image file is then communicated to the called
`
`party,” Merritt, 2:8-10, and that the “image file format conversion server converts
`
`the calling party image file to the acceptable or preferred image file format of the
`
`called party.” Id. at 5:12-15.
`
`38. Figure 2 of Merritt discloses a calling device sending a video
`
`(“image”) file to an image communications processing system (10) for eventual
`
`transfer to a called device:
`
`
`As shown above, the image communications processing system (10) includes
`
`image format and protocol conversion control processing capabilities as shown at
`
`element 26.
`
`
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`U.S. Patent No. 8,594,651
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`39. Further, Merritt discloses that the devices sending and receiving the
`
`
`
`files may be wireless communications devices, and that the file converted may be a
`
`video file. For example, the specification states that “method and system of the
`
`present invention may be applied in systems ranging from local premises-based
`
`communications to wide area communications on either private or public
`
`networks,” Id. at 2:15-18, and that the system “may be implemented on a data
`
`network (e.g., public internet or private intranet) using, for example, packet-
`
`switched communications.” Id. at 9:37-41. It would be understood by a person of
`
`ordinary skill in the art when this patent was filed that public internet and private
`
`intranet data networks could include wireless networks, and that wireless networks
`
`utilize packet-switched communications. A computer with a wireless interface
`
`(e.g., a wireless network card), which was well-known in the art when this patent
`
`was filed, is one example of a wireless communications device. Further, Merritt
`
`provides that the playback device can be a PDA and that the communicated file
`
`may be a video file:
`
`It can be understood that the present invention allows
`image communications among dissimilar end systems,
`as well as subscriber access to image processing services,
`including personal computers supporting a range of
`image protocols, image phones, facsimile machines,
`