Case IPR2015-00389
`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 IPR2015-00389
`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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`
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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 IPR2015-00389
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`I.
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`TABLE OF CONTENTS
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`INTRODUCTION AND BACKGROUND ........................................................ 1
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`II. NOTICES, STATEMENTS AND PAYMENT OF FEES ................................. 4
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`A. Real Party In Interest Under 37 C.F.R. § 42.8(b)(1) ..................................... 4
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2) ............................................. 4
`C. Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) .......................... 5
`D. Service Information Under 37 C.F.R. § 42.8(b)(4) ....................................... 5
`E. Grounds for Standing Under 37 C.F.R. § 42.104(a) ..................................... 6
`F. Fees Under 37 C.F.R. § 42.103 ..................................................................... 6
`III. THE ‘651 PATENT ............................................................................................. 6
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`A. Background.................................................................................................... 6
`B. The Asserted Priority Chain of the ’651 Patent ............................................ 9
`C. Prosecution History of the ’651 Patent .......................................................10
`IV. IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R. § 42.104(B) ........11
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`V. HOW THE CHALLENGED CLAIMS ARE TO BE CONSTRUED UNDER
`37 C.F.R. § 42.104 (B) (3) .................................................................................12
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`VI. DETAILED EXPLANATION AND SUPPORTING EVIDENCE UNDER 37
`C.F.R. §§ 42.104(B)(4) AND (B)(5) .................................................................16
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`A. The Challenged Claims Are Not Entitled to a Filing Date Prior To
`December 21, 2012. ....................................................................................16
`1. Legal Standards Relevant to Priority ........................................17
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`a. To Evaluate Invalidity Under Anticipation Or Obviousness,
`The Priority Date Must Be Determined Based Upon The
`Written Description Requirement .............................................17
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`b. Adequate Written Description Requires Express Or Inherent
`Disclosure And Identification Of The “Blaze Marks” Of Later-
`Claimed Characteristics. ...........................................................20
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`2. The Priority Applications Do Not Reasonably Convey That the
`Inventor Possessed “a Digital Camera of the First Wireless
`Communications Device” .........................................................22
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`a. The Priority Applications Lack Actual or Inherent Written
`Description for “A Digital Camera of the First Wireless
`Communications Device” .........................................................22
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`b. The Inventor Did Not Provide The Requisite Blaze Marks For a
`Digital Camera of a Wireless Communications Device. ..........24
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`3. The Priority Applications Do Not Reasonably Convey That the
`Inventor Possessed “the Format Compatible with the Second
`Wireless Communications Device Compris[ing] a Different
`File Size than the Format of the Selected Video File” .............25
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`a. The Priority Applications Lack Actual or Inherent Written
`Description for a Change in File Size .......................................25
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`b. The Inventor Did Not Provide The Requisite Blaze Marks For
`“the Format Compatible with the Second Wireless
`Communications Device Compris[ing] a Different File Size
`Than the Format of the Selected Video File” ...........................26
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`4. The Priority Applications Do Not Reasonably Convey That the
`Inventor Possessed “the Format Compatible with the Second
`Wireless Communications Device Compris[ing] a Different
`Resolution Than the Format of the Selected Video File” .........27
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`a. The Priority Applications Lack Actual or Inherent Written
`Description for a Change in Resolution ....................................27
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`b. The Inventor Did Not Provide The Requisite Blaze Marks For
`“the Format Compatible with the Second Wireless
`Communications Device Compris[ing] a Different Resolution
`Than the Format of the Selected Video File” ...........................29
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`5. The Priority Applications Do Not Reasonably Convey That the
`Inventor Possessed “Sending a Link That Identifies the
`Converted File” .........................................................................29
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`a. The Priority Applications Lack Actual or Inherent Written
`Description for “Sending a Link That Identifies the Converted
`File” ...........................................................................................29
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`b. The Inventor Did Not Provide The Requisite Blaze Marks For a
`Format Compatible with the Second Wireless Communications
`Device Comprising a Different Resolution Than the Format of
`the Selected Video Files. ...........................................................32
`B. The Challenged Claims Are Anticipated by Le Bodic. ...............................33
`C. The Challenged Claims are Rendered Obvious by the Shanahan PCT
`Application in view of Le Bodic .................................................................52
`D. Claims 10, 21, 23, 31, 32, and 40 are Rendered Obvious by Lev in view of
`Le Bodic and the Shanahan PCT Application ............................................57
`VII. CONCLUSION .................................................................................................60
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`TABLE OF AUTHORITIES
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`CASES
`Agilent Techs., Inc. v. Affymetrix, Inc.,
`567 F.3d 1366 (Fed. Cir. 2009) .............................................................. 22, 24, 32
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`Page(s)
`
`Anascape, Ltd. v. Nintendo of Am., Inc.,
`601 F.3d 1333 (Fed. Cir. 2010) .......................................................................... 20
`
`Carnegie Mellon University v. Hoffman-La Roche Inc.,
`541 F.3d 1115 (Fed. Cir. 2008) ............................................................................ 1
`
`Chiron Corp. v. Genentech, Inc.,
`363 F.3d 1247 (Fed. Cir. 2004) .......................................................................... 19
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`Enzo Biochem, Inc. v. Gen-Probe Inc.,
`323 F.3d 956 (Fed. Cir. 2002) ............................................................................ 18
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`Hitzeman v. Rutter,
`243 F.3d 1345 (Fed. Cir. 2001) .......................................................................... 23
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`Hollmer v. Harari,
`681 F.3d 1351 (Fed. Cir. 2012) .......................................................................... 18
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`Hyatt v. Boone,
`146 F.3d 1348 (Fed. Cir. 1998) .......................................................................... 20
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`In re NTP,
`654 F.3d 1268 (Fed. Cir. 2011) .......................................................................... 17
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`Kennecott Corp. v. Kyocera Int'l, Inc.,
`835 F.2d 1419 (Fed. Cir. 1987) .......................................................................... 21
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`Lockwood v. Am. Airlines, Inc.,
`107 F.3d 1565 (Fed. Cir. 1997) .......................................................................... 18
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`PowerOasis, Inc. v. T-Mobile USA, Inc.,
`522 F.3d 1299 (Fed. Cir. 2008) ................................................................ 4, 19, 20
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`Purdue Pharma L.P. v. Faulding Inc.,
`230 F.3d 1320 (Fed. Cir. 2000) .................................................................... 21, 24
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`Research Corp. Techs., Inc. v. Microsoft Corp.,
`627 F.3d 859 (Fed. Cir. 2010) ............................................................................ 20
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`Tronzo v. Biomet, Inc.,
`156 F.3d 1154 (Fed. Cir. 1998) .................................................................... 18, 19
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`Univ. of Rochester v. G.D. Searle & Co.,
`358 F.3d 916 (Fed. Cir. 2004) ............................................................................ 19
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`PETITIONER’S EXHIBIT LIST
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`Exhibit 1001 U.S. Patent No. 8,594,651 (the ’651 patent)
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`Exhibit 1002 Declaration of Mr. Mark Lanning Regarding U.S. Patent No.
`8,594,651, dated 12/06/2014
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`Exhibit 1003
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`Final Decision dated April 22, 2014 in IPR2014-00116
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`Exhibit 1004
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`Excerpts of Documents Showing Mr. Shanahan’s Prosecution
`and Litigation Experience and Former Clients
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`Exhibit 1005
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`Complaint filed in Solocron v. Cellco Partnership et al., (E.D.
`Tex.) (Case No. 2-13-cv-1059)
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`Exhibit 1006 U.S. Patent App. 08/175,022, as filed December 2, 1993
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`Exhibit 1007
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`International Publication Number WO98/19438, filed on October
`28, 1996 and published on May 7, 1998
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`Exhibit 1008
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`Excerpts from: Lincoln Stein and Doug MacEachern, “Writing
`Apache Modules with Perl and C” (March 1999).
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`Exhibit 1009 U.S. Patent App. 13/615,013, filed on Sep. 13, 2012, now Pat.
`No. 8,452,272
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`Exhibit 1010 U.S. Patent App. 13/471,161, filed on May 14, 2012, now Pat.
`No. 8,401,537
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`Exhibit 1011 U.S. Patent App. 13/316,203, filed on Dec. 9, 2011, now Pat. No.
`8,521,234
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`Exhibit 1012 U.S. Patent App. 12/128,991, filed on May 29, 2008, now Pat.
`No. 8,170,538
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`Exhibit 1013 U.S. Patent App. 11/633,142, filed on Dec. 2, 2006, now Pat. No.
`7,555,317
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`Exhibit 1014 U.S. Patent App. 10/600,975, filed on Jun. 20, 2003, now Pat.
`No. 7,149,509
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`Exhibit 1015
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`Exhibit not used
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`Exhibit 1016 U.S. Provisional Patent App. 60/169,158, filed December 6, 1999
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`Exhibit 1017 Gwenael Le Bodic, Mobile Messaging Technologies and Services
`SMS, EMS, and MMS, 2nd edition, (2005).
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`Exhibit 1018
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`Int’l Pub. No. WO2001041403, published Jun 6, 2002
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`Exhibit 1019 U.S. Patent App. No. 10/482,566, published June 30, 2005
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`Exhibit 1020
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`Solocron’s Opening Claim Construction Brief, Dkt. No. 119,
`dated 11/21/2014, in Solocron v. AT&T Mobility, LLC, et al.,
`(E.D. Tex.) (Case No. 2:13-cv-1059)
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`Exhibit 1021
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`Prosecution History for U.S. Patent No. 8,594,651
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`Exhibit 1022
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`Solocron’s Infringement Contentions for the ’651 patent served
`on AT&T in the district court litigation.
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`Exhibit 1023
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`Solocron’s Infringement Contentions for U.S. Patent No.
`7,742,759 served on AT&T in the district court litigation.
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`Exhibit 1024
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`Library of Congress records evidencing 2005 publishing date for
`Le Bodic
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`Exhibit 1025 Newton’s Telecom Dictionary, 15th Edition, 1999, at p. 440
`(defining JPEG as a lossy format)
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`Case IPR2015-00389
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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 10, 21, 23, 24, 25, 31, 32, 33,
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`and 40 (the “challenged claims”) of U.S. Patent No. 8,594,651 (“the ’651 Patent”).
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`Exhibit 1001.
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`I.
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`INTRODUCTION AND BACKGROUND
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`“The basic function of a patent specification is to disclose an invention.”
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`Carnegie Mellon University v. Hoffman-La Roche Inc., 541 F.3d 1115, 1122 (Fed.
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`Cir. 2008). Yet, the challenged claims find no support in the specifications of the
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`priority applications, but instead were added years after the asserted priority date
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`and years after the industry described, patented, and adopted this same technology.
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`In light of this break in the priority chain, the challenged claims cannot claim
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`priority to any earlier filed application. Under their correct priority date, the
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`challenged claims are invalid under 35 U.S.C. §§ 102 & 103 over the references
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`discussed herein.
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`These claims depend from claims 1 and 12, which claim, in relevant part, a
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`method and system for receiving a video file from a first wireless device,
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`converting the format of the received video file, and sending the converted file to a
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`second wireless device. None of the challenged claims are expressly or inherently
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`disclosed in the ’651 priority chain. Camera phones, file size conversion,
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`resolution conversion, and providing the user with a link identifying the location of
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`a converted file all first appeared in the application for the ’651 application—
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`nearly thirteen years after the earliest priority date asserted by the patentee and
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`years after wireless carriers such as Petitioners offered these services. Under
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`Federal Circuit law, the complete lack of support for these terms in the priority
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`applications, as detailed in the attached declaration of telecommunications expert
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`Mark Lanning (Exhibit 1002) (“Lanning Decl.”), precludes the patentee from
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`relying on any earlier priority claim. The Board can assess this priority issue in an
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`inter partes review, and has done so before. E.g., Exhibit 1003. Mr. Lanning has a
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`BS
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`in computer science and has over 35 years of experience
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`in
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`the
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`telecommunications industry.
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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.
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`Solocron
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`acquired
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`this
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`patent
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`family
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`from Michael Shanahan,
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`a
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`telecommunications and electronics patent attorney who prosecuted patent
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`applications at Fish & Neave and McDermott Will & Emery. E.g., Exhibit 1004.
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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. Id.
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`Though Solocron has asserted the ’651 patent against AT&T’s and
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`Verizon’s servers that process Multimedia Messaging Service (“MMS”) messages,
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`the specification makes no reference to MMS or any other type of messaging
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`service. Rather, the ’651 patent specification is entirely directed to user-defined
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`downloadable ringtones.1 Despite the fact that the patent specification lacks any
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`disclosure supporting the conversion of files sent using MMS, Mr. Shanahan
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`waited until 2006—when video transcoding servers were widely used throughout
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`the telecommunications industry—to file his first patent, U.S. Patent No.
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`7,742,759, reciting claims related to file format conversion. Six years later, on
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`December 21, 2012, Mr. Shanahan filed another file format conversion patent, the
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`’651 patent, and included for the first time claim limitations requiring (i) use of a
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`digital camera in a wireless communications device to create a file, (ii) file size
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`conversion, (iii) resolution conversion, and (iv) creation of a link that identifies
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`(and provides a path to) a converted file.
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`The claims of the ’651 patent were rejected only once during prosecution on
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`the procedural ground of non-statutory double patenting. Mr. Shanahan overcame
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`the rejection by filing a terminal disclaimer. The Patent Office never made any
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`1 A downloadable ringtone is an audio clip that a user can download and set to play
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`when his or her phone receives an incoming call or text message.
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`written priority determination2 or provided any explanation for issuance. The
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`Patent Office’s limited review of the ’651 patent is unsurprising: over the past ten
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`years, Mr. Shanahan and his attorneys submitted hundreds of vaguely-worded
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`claims (many of which recite terms that were never hinted at in the priority
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`applications) and overwhelmed the Patent Office with hundreds of pieces of prior
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`art without any explanation of the art’s relevance.
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`For the reasons identified below, there is a reasonable likelihood that the
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`challenged claims are unpatentable in light of the prior art, thereby 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 Party In Interest Under 37 C.F.R. § 42.8(b)(1)
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`The real parties in interest are Cellco Partnership d/b/a Verizon Wireless and
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`AT&T Mobility LLC.
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`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
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`Solocron sued the following entities (and Petitioners) for infringement of the
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`’759 and ‘651 Patents, among other related patents, in the Eastern District of Texas
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`2 As the Federal Circuit recognized, “[t]he PTO’s own procedures indicate that
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`examiners do not make priority determinations except where necessary.”
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`PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305 (Fed. Cir. 2008).
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`on December 6, 2013 (Case No. 2:13-cv-01059) (“the Litigation”): Sprint
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`Corporation, Sprint Communications Company L.P., Sprint Solutions Inc., and T-
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`Mobile USA, Inc. See Exhibit 1005.
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`C. Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
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`Petitioners designate lead and back-up counsel as noted below. Powers of
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`attorney pursuant to 37 C.F.R. § 42.10(b) accompany this Petition.
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`For Petitioner Cellco Partnership d/b/a Verizon Wireless
`Lead Counsel
`Backup Counsel
`Kevin P. Anderson, Reg. No. 43,471
`Floyd B. Chapman, Reg. No. 40,555
`Scott A. Felder, Reg. No. 47,558
`WILEY REIN LLP, ATTN: Patent Administration, 1776 K Street NW,
`Washington, DC 20006, Phone: 202.719.7000 / Fax: 202.719.7049
`For Petitioner AT&T Mobility LLC
`Lead Counsel
`Backup Counsel
`Theodore Stevenson, III, Reg. No. 39,040
`Scott W. Hejny, Reg. No. 45,882
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`Nicholas Mathews, Reg. No. 66,067
`MCKOOL SMITH PC, 300 Crescent Court, Suite 1500, Dallas, TX 75201
`Phone 214.978.4000 / Fax 214.978.4044
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`D.
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`Service Information Under 37 C.F.R. § 42.8(b)(4)
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`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)
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`Petitioners certify pursuant to 37 C.F.R. § 42.104(a) that the ’651 patent is
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`available for inter partes review, and that Petitioners are not barred or estopped
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`from requesting inter partes review based on the grounds herein. Petitioners
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`certify this petition is filed within one year of the service of the Complaint above.
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`F.
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`Fees Under 37 C.F.R. § 42.103
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`Petitioners concurrently submit fees of $23,000. If more fees are necessary
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`to accord this Petition a filing date, authorization is granted to charge the same to
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`Deposit Account No. 50-5723 with reference to Attorney Docket No. 01869-
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`10IP651-3.
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`III. THE ‘651 PATENT
`A. Background
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`The disclosure included in the ’651 patent and the applications to which the
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`’651 patent claims priority do not support the features claimed nearly thirteen years
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`after the earliest asserted priority date. Specifically, the ’651 patent was filed on
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`December 21, 2012, and purports to claim priority to applications dating back to
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`December 1999. Exhibit 1006. Although the primary disclosure in the ’651 patent
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`specification relates to downloadable ringtones,3 the ’651 claims a format
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`3 Mr. Shanahan’s first 7 patents and almost 250 claims in this patent family relate
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`conversion server that can receive pictures from a camera phone, perform size and
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`resolution conversions, and provide the user a link to download converted video
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`files. Figure 4 of the ’651 patent is exemplary of the original disclosures and
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`demonstrates how the original patent specification is vague, amorphous, and bears
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`little resemblance to the video transcoding matter the patentee sought to claim
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`thirteen years later:
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`The terms “file size” (claims 23 and 32) and “resolution” (24 and 33) do not appear
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`in the ’651 patent specification. The term “link” appears only in the context of a
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`“communications link” used to connect a device to a server. See, e.g., Exhibit
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`1001 at 3:33-41 (“In FIG. 1, links 31 and 32 may be, for example, communications
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`to downloadable ringtones, not video transcoding servers.
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`links (e.g., serial ports, parallel ports, universal serial buses (USB), RS232, GPIB,
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`etc.), modems (e.g., any 35 suitable analog or digital modems, cellular modems, or
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`cable modems) . . . .”). The term “link” is never used to indicate, or provide a path
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`to, a converted video file. And while the specification discloses the use of a digital
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`camera, it does not disclose use of a digital camera that is part of a wireless
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`communications device.
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`Video conversion servers that perform the claimed features of the ’651
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`patent were well known in the art long before Mr. Shanahan filed his family of his
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`patents. Indeed, more than six years before Mr. Shanahan filed his provisional
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`application and nineteen years before Mr. Shanahan filed the application that
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`issued as the ’651 patent, AT&T filed a patent application that disclosed every
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`element of Mr. Shanahan’s alleged invention. Exhibit 1006. Patent Application
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`No. 07/175,022, filed in 1993, describes a video conversion server that could
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`receive a video from an “image phone” (see 15:10-19), perform format type and
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`size conversion (see 16:1-10), and provide the receiving phone a link to download
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`the converted video file (see 7:10-19). Exhibit 1006. Beyond AT&T, various
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`companies described and patented video conversion servers. For example, more
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`than a year before Mr. Shanahan’s earliest priority date, Ericsson, one of the
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`largest telecommunications companies in the world, patented a video conversion
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`server that received and converted video files received from mobile phones.
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`Exhibit 1007. Moreover, the group that developed “Apache,” one of the world’s
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`most widely used web server software systems, published a book describing how
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`its video conversion servers worked in March 1999. Exhibit 1008.
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`B.
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`The Asserted Priority Chain of the ’651 Patent
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`The ’651 patent claims priority to the following U.S. Patent Application
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`Nos.: (1) 13/615,013, filed on Sep. 13, 2012, now Pat. No. 8,452,272, (2)
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`13/471,161, filed on May 14, 2012, now Pat. No. 8,401,537, (3) 13/316,203, filed
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`on Dec. 9, 2011, now Pat. No. 8,521,234, (4) 12/128,991, filed on May 29, 2008,
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`now Pat. No. 8,170,538, (5) 11/633,142, filed on Dec. 2, 2006, now Pat. No.
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`7,555,317, (6) 10/600,975, filed on Jun. 20, 2003, now Pat. No. 7,149,509, (7)
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`09/518,846, filed on Mar. 3, 2000, now abandoned,4 and (8) 60/169,158, filed
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`December 6, 1999 (“the December 1999 application”). Exhibits 1009-1016. None
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`of these applications disclose—much less mention—camera phones, file size
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`4 Petitioners were unable to locate the abandoned March 3, 2000 application.
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`However, all later-filed patents that claim priority to this application, up to and
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`including the ’651 patent, are continuations, not continuations-in-part. Therefore,
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`the disclosure of the abandoned March 3, 2000 application will be identical to the
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`disclosure in the subsequent applications.
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`conversion, resolution conversion, or providing a user a link to access and
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`download converted video files.
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`The entirety of the December 1999 application consists of a scant four
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`double-spaced pages of text, one doubled-spaced page of 7 claims, and four block
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`diagrams. Exhibit 1016. Neither the 1999 provisional application nor any of the
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`other priority applications use the terms “digital camera,” “file size,” or
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`“resolution,” and
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`they only use
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`the
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`term “link”
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`in
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`the context of a
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`“communications link” used to connect to a server. Lanning Decl. at ¶¶ 26-28.
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`Moreover, all of the applications in the priority chain are continuation applications,
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`not continuations-in-part, so the absence of disclosure in the original patent
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`specification is pervasive throughout the chain.
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`Unlike its parent applications, the ’651 application included claims reciting
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`camera phones, file size conversion, resolution conversion, and links to download
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`converted video files. Because of the complete lack of underlying support for
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`these features in every application in the priority chain, the challenged claims are
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`not entitled to claim priority to any of these earlier-filed patent applications.
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`C.
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`Prosecution History of the ’651 Patent
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`As noted above, the claims of the ’651 patent were rejected only one time on
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`the ground of non-statutory double patenting as being unpatentable over claims 1-
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`11 of U.S. Patent No. 8,509,759 (another of Mr. Shanahan’s patents). Exhibit
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`1021. That Mr. Shanahan’s application for the ’651 patent was given only a
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`cursory review is evident in view of the fact that the claims cited in support of the
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`double patenting rejection make no mention of a digital camera, file size,
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`resolution, or a link to download a converted video file. Mr. Shanahan overcame
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`the rejection by filing a terminal disclaimer. The Patent Office never made any
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`written priority determination or provided any explanation for issuance.
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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 the challenged claims, in view of
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`the references below, which are all prior art under 35 U.S.C. § 102(b) when the
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`claims are assigned their proper priority date of the December 21, 2012, the filing
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`date of the application that issued as the ’651 patent:
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`1.
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`Le Bodic, Gwenael Le Bodic, Mobile Messaging Technologies and Services:
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`SMS, EMS, and MMS, 2nd Ed., 2005. Exhibit 1017 (Le Bodic); Exhibit 1024
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`(Library of Congress records). The Patent Office never considered Le Bodic
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`during prosecution.
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`2.
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`Shanahan PCT, Int’l Pub. No. WO2001041403, published Jun 6, 2002.
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`Exhibit 1018. The Patent Office never considered the Shanahan PCT during
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`prosecution.
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`3.
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`Lev, U.S. Patent Application No. 10/482,566, filed February 18, 2005,
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`published June 30, 2005. Exhibit 1019. The Patent Office never considered Lev
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`during prosecution.
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`
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`Petitioners request that the challenged claims be cancelled based upon the
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`following grounds, as detailed below, including claim constructions: Ground 1:
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`The challenged claims are invalid under 35 U.S.C. § 102 as anticipated by Le
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`Bodic; Ground 2: The challenged claims are invalid under 35 U.S.C. § 103 as
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`obvious over Shanahan PCT in view of Le Bodic; and Ground 3: Claims 10, 21,
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`23, 31, 32, and 40 are invalid under 35 U.S.C. § 103 as obvious over Lev in view
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`of Shanahan PCT and Le Bodic.
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`V. HOW THE CHALLENGED CLAIMS ARE TO BE CONSTRUED
`UNDER 37 C.F.R. § 42.104 (b) (3)
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`
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`In this proceeding, claim terms are to be given their broadest reasonable
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`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); 37 C.F.R.
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`§ 100(b). Mr. Lanning has provided an opinion regarding each term to be
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`construed in his expert declaration, filed concurrently herewith as Exhibit 1002, at
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`¶¶ 30-33. The broadest reasonable constructions of the claim terms are as follows:
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`“Communications link” appears in claim 12 of the ’651 patent. The ’651
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`specification defines “communication link” as hardwired links such as “serial
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`ports, parallel ports, universal serial buses (USB), RS232, GPIB, etc.” and defines
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`“wireless communications link” as wireless links such as “cellular telephone links,
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`wireless Internet links, infrared links, etc.” Exhibit 1001, 3:33-41. However, in
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`the district court litigation, Solocron seeks to broaden the term “communications
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`link” to include wireless communications links. Exhibit 1020. To that end,
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`Solocron proposed that “communications link” be construed broadly as a
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`“connection that enables data transfer.” Id. Petitioners will accept, for the
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`purposes of this IPR proceeding only, Solocron’s proposed construction as the
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`broadest reasonable interpretation of the term “communications link.” Thus,
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`Petitioners propose that the broadest reasonable interpretation of this term is
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`“connection that enables data transfer.”
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`“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.”
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`“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. See detailed discussion in section VI.A.5 below.
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`Nevertheless, petitioners will accept, for the purposes of this IPR proceeding only,
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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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`the broadest reasonable interpretation of this term is “an element that identifies the
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`converted file.”5
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`5 In the district court litigation, the defendants proposed that this term be construed
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`as “identification of converted file already located on second wireless device.” As
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`“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 “[t]he 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.
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`“Th