`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Attorney Docket No.: 01869-10IP651-3
`
` 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. 21, 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 opinions concerning the validity of U.S. Patent No. 8,594,651 (“the
`
`’651 Patent”) (Ex. 1001). 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:
`
`Basis for My Opinion ................................................................. 3
`I.
`Introduction and Qualifications .................................................. 3
`II.
`III. My Understanding of the Governing Law ................................. 8
`Types of Claims—Dependent and Independent Claims .. 8
`A.
`Patentability and Validity of Claims ................................ 8
`B.
`IPR Proceedings and Claim Interpretation .................... 10
`C.
`Relevant Time Period .................................................... 11
`D.
`Level of Ordinary Skill in the Art and Relevant
`E.
`Timeframe ................................................................................ 12
`IV. The ’651 Patent ........................................................................ 12
`
`
`
`
`

`

`Attorney Docket No.: 01869-10IP651-3
`U.S. Patent No. 7,742,651
`
`
`V.
`
`Technical Overview of the ’651 Patent ......................... 12
`A.
`The Asserted Priority Chain of the ‘651 Patent ............. 15
`B.
`Prosecution History of the ‘866 Patent .......................... 17
`C.
`Claim Construction ........................................................ 17
`D.
`Priority Analysis ....................................................................... 19
`Priority of “a Digital Camera of the First Wireless
`A.
`Communications Device” ........................................................ 20
`Priority of “the Format Compatible with the Second
`B.
`Wireless Communications Device Compris[ing] a Different
`File Size than the Format of the Selected Video File” ............. 22
`Priority of “the Format Compatible with the Second
`C.
`Wireless Communications Device Compris[ing] a Different
`Resolution than the Format of the Selected Video File” ......... 24
`Priority of “Sending a Link That Identifies the Converted
`D.
`File” 26
`Conclusion Regarding Priority of the Challenged Claims29
`E.
`VI. Analysis of the ’651 Patent Based on Le Bodic ....................... 29
`Le Bodic Discloses Independent Claim 1 ...................... 30
`A.
`Invalidity Analysis of Dependent Claim 10 .................. 45
`B.
`Le Bodic Disclosure of Independent Claim 12 .............. 46
`C.
`Invalidity of Dependent Claim 21 ................................. 53
`D.
`Invalidity of Dependent Claim 23 ................................. 54
`E.
`Invalidity of Dependent Claim 24 ................................. 56
`F.
`Invalidity of Claim 31 .................................................... 58
`G.
`Invalidity of Dependent Claim 32 ................................. 59
`H.
`Invalidity of Dependent Claim 33 ................................. 60
`I.
`Invalidity of Dependent Claim 40 ................................. 60
`J.
`VII. Analysis of the ’651 Patent Based on Shanahan PCT in view of
`Le Bodic .............................................................................................. 61
`Shanahan PCT Discloses Independent Claim 1 ............ 62
`A.
`Shanahan PCT Disclosure of Independent Claim 12 .... 68
`B.
`
`
`
`
`2
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`

`

`Attorney Docket No.: 01869-10IP651-3
`U.S. Patent No. 7,742,651
`
`
`VIII. Analysis of the ’651 Patent Based on Lev in view of Shanahan
`PCT and Le Bodic ............................................................................... 73
`Invalidity Analysis of Dependent Claim 10 .................. 74
`A.
`Invalidity of Dependent Claim 21 ................................. 75
`B.
`Invalidity of Dependent Claim 23 ................................. 75
`C.
`Invalidity of Claim 31 .................................................... 76
`D.
`Invalidity of Dependent Claim 32 ................................. 77
`E.
`Invalidity of Dependent Claim 40 ................................. 78
`F.
`IX. Compatibility of the References ............................................... 78
`Secondary Considerations of Non-Obviousness ...................... 78
`X.
`Supplementation ....................................................................... 79
`XI.
`XII. Conclusion ................................................................................ 79
`
`
`I.
`
`Basis for My Opinion
`3.
`
`In preparing this declaration, I have reviewed:
`
`• 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
`3
`
`
`
`
`

`

`Attorney Docket No.: 01869-10IP651-3
`U.S. Patent No. 7,742,651
`
`• 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
`• 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.
`
`
`
`
`4
`
`

`

`Attorney Docket No.: 01869-10IP651-3
`U.S. Patent No. 7,742,651
`
`• 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)
`• 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)
`
`
`
`
`5
`
`

`

`Attorney Docket No.: 01869-10IP651-3
`U.S. Patent No. 7,742,651
`
`• 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)
`• “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)
`
`II.
`
`Introduction and Qualifications
`4.
`
`I am currently the president of two consulting companies: Telecom
`
`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”)).
`
`
`
`
`6
`
`

`

`Attorney Docket No.: 01869-10IP651-3
`U.S. Patent No. 7,742,651
`
`I received a B.S. in Computer Science from Southern Methodist
`
`5.
`
`University (SMU) in 1983.
`
`6.
`
`In 1985, I was hired by Digital Switch Corporation, which is 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 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.
`
`
`
`
`7
`
`

`

`Attorney Docket No.: 01869-10IP651-3
`U.S. Patent No. 7,742,651
`
`
`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
`
`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.
`
`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
`
`
`
`
`8
`
`

`

`Attorney Docket No.: 01869-10IP651-3
`U.S. Patent No. 7,742,651
`
`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
`
`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.
`
`
`
`
`9
`
`

`

`Attorney Docket No.: 01869-10IP651-3
`U.S. Patent No. 7,742,651
`
`I am unaware of any such secondary considerations relating to any
`
`15.
`
`claim of the ’651 patent
`
`C.
`16.
`
`IPR Proceedings and Claim Interpretation
`
`I understand that this “inter partes review” (“IPR”) proceeding is a
`
`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 also understand that that the Board will refer to 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 further 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.
`
`
`
`
`10
`
`

`

`Attorney Docket No.: 01869-10IP651-3
`U.S. Patent No. 7,742,651
`
`
`D. Relevant Time Period
`19.
`I understand that the earliest patent application filing leading to ’651
`
`patent (Ex. 1001) was made on December 6, 1999. I also understand that to
`
`evaluate invalidity under anticipation or obviousness, the priority date must be
`
`determined based upon the written description requirement and that applicants may
`
`not claim entitlement to a filing date based on subject matter that would be obvious
`
`over what is expressly disclosed. I understand that to satisfy the written
`
`description requirement, the priority application must expressly or inherently
`
`disclose the claimed limitation and that inherency requires that the missing
`
`descriptive matter must necessarily be present in the priority application. I also
`
`understand that even for characteristics that are expressly disclosed in an
`
`application, the applicant is obligated to provide “blaze marks” that direct the
`
`skilled artisan to the allegedly present and critical characteristics.
`
`20. As I discuss in detail below, it is my opinion that claims 10, 21, 23,
`
`24, 25, 31, 32, 33, and 40 of the ‘651 patent are not entitled to the filing date of any
`
`application prior to the application for the ’651 patent. None of these applications
`
`provide sufficient written description to establish that Mr. Shanahan possessed the
`
`full scope of the subject matter of the challenged claims at any point prior to
`
`December 21, 2012. Thus, the priority date for claims 10, 21, 23, 24, 25, 31, 32,
`
`33, and 40 of the ‘651 patent should be December 21, 2012.
`11
`
`
`
`
`

`

`Attorney Docket No.: 01869-10IP651-3
`U.S. Patent No. 7,742,651
`
`
`E.
`Level of Ordinary Skill in the Art and Relevant Timeframe
`21. 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.
`
`22. 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 electrical engineering, computer engineering, computer
`
`science or equivalent 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.
`
`23.
`
`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
`
`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
`24. The disclosure included in the ‘651 patent and the applications to
`
`which the ‘651 patent claims priority do not support the features claimed nearly
`
`
`
`
`12
`
`

`

`Attorney Docket No.: 01869-10IP651-3
`U.S. Patent No. 7,742,651
`
`thirteen years after the earliest asserted priority date. Specifically, the ‘651 patent
`
`was filed on December 21, 2012, and purports to claim priority to applications
`
`dating back to December 1999. Exhibit 1001. Although the primary disclosure in
`
`the ’651 patent specification relates to downloadable ringtones,1 the ‘651 claims a
`
`format conversion server that can receive pictures from a camera phone, perform
`
`size and resolution conversions, and provide the user a link to download converted
`
`video files. Figure 4 of the ‘651 patent is exemplary of the original disclosures and
`
`demonstrates how the original patent specification is vague, amorphous, and bears
`
`little resemblance to the video transcoding matter the patentee sought to claim
`
`thirteen years later:
`
`
`1 Mr. Shanahan’s first 7 patents and almost 250 claims in this patent family relate
`
`to downloadable ringtones, not video transcoding servers.
`
`
`
`
`13
`
`

`

`Attorney Docket No.: 01869-10IP651-3
`U.S. Patent No. 7,742,651
`
`
`
`The terms “file size” (claims 23 and 32) and “resolution” (24 and 33) do not appear
`
`in the ’651 patent specification. The term “link” appears only in the context of a
`
`“communications link” used to connect a device to a server. The term “link” is
`
`never used to indicate, or provide a path to, a converted video file. And while the
`
`specification discloses the use of a digital camera, it does not disclose use of a
`
`digital camera that is part of a wireless communications device.
`
`25. Video conversion servers that perform the claimed features of the
`
`’651 patent were well known in the art long before Mr. Shanahan filed his family
`
`of his patents. Indeed, more than six years before Mr. Shanahan filed his
`
`provisional application and nineteen years before Mr. Shanahan filed the
`
`application that issued as the ’651 patent, AT&T filed a patent application that
`
`disclosed every element of Mr. Shanahan’s alleged invention. Exhibit 1006.
`14
`
`
`
`
`

`

`Attorney Docket No.: 01869-10IP651-3
`U.S. Patent No. 7,742,651
`
`Patent Application No. 07/175,022, filed in 1993, describes a video conversion
`
`server that could receive a video from an “image phone” (see 15:10-19), perform
`
`format type and size conversion (see 16:1-10), and provide the receiving phone a
`
`link to download the converted video file (see 7:10-19). Exhibit 1006. Beyond
`
`AT&T, various companies described and patented video conversion servers. For
`
`example, more than a year before Mr. Shanahan’s earliest priority date, Ericsson,
`
`one of the largest telecommunications companies in the world, patented a video
`
`conversion server that received and converted video files received from mobile
`
`phones. Exhibit 1007. Moreover, the group that developed “Apache,” one of the
`
`world’s most widely used web server software systems, published a book
`
`describing how its video conversion servers worked in March 1999. Exhibit 1008.
`
`B.
`The Asserted Priority Chain of the ‘651 Patent
`26. The ‘651 patent claims priority to the following U.S. Patent
`
`Application Nos.: (1) 13/615,013, filed on Sep. 13, 2012, now Pat. No. 8,452,272,
`
`(2) 13/471,161, filed on May 14, 2012, now Pat. No. 8,401,537, (3) 13/316,203,
`
`filed on Dec. 9, 2011, now Pat. No. 8,521,234, (4) 12/128,991, filed on May 29,
`
`2008, now Pat. No. 8,170,538, (5) 11/633,142, filed on Dec. 2, 2006, now Pat. No.
`
`7,555,317, (6) 10/600,975, filed on Jun. 20, 2003, now Pat. No. 7,149,509, (7)
`
`09/518,846, filed on Mar. 3, 2000, now abandoned, and (8) 60/169,158, filed
`
`December 6, 1999 (“the December 1999 application”). None of these applications
`15
`
`
`
`
`

`

`Attorney Docket No.: 01869-10IP651-3
`U.S. Patent No. 7,742,651
`
`disclose—much less mention—camera phones, file size conversion, resolution
`
`conversion, or providing a user a link to access and download converted video
`
`files.
`
`27. The entirety of the December 1999 application consists of a scant four
`
`double-spaced pages of text, one doubled-spaced page of 7 claims, and four block
`
`diagrams. Exhibit 1003. Neither the 1999 provisional application nor any of the
`
`other priority applications use the terms “digital camera,” “file size,” or
`
`“resolution,” and
`
`they only use
`
`the
`
`term “link”
`
`in
`
`the context of a
`
`“communications link” used to connect to a server. None of the claims in any of
`
`the parent applications made any reference to these features. See generally id.
`
`Moreover, all of the applications in the priority chain are continuation applications,
`
`not continuations-in-part, so the absence of disclosure in the original patent
`
`specification is pervasive throughout the chain.
`
`28. Unlike its parent applications, the ‘651 application included claims
`
`reciting camera phones, file size conversion, resolution conversion, and links to
`
`download converted video files. Because of the complete lack of underlying
`
`support for these features in every application in the priority chain, claims 10, 21,
`
`23, 24, 25, 31, 32, 33, and 40 are not entitled to claim priority to any of these
`
`earlier-filed patent applications.
`
`
`
`
`16
`
`

`

`Attorney Docket No.: 01869-10IP651-3
`U.S. Patent No. 7,742,651
`
`
`C.
`Prosecution History of the ‘866 Patent
`29. As noted above, the claims of the ’651 patent were rejected only one
`
`time on the ground of non-statutory double patenting as being unpatentable over
`
`claims 1-11 of U.S. Patent No. 8,509,759 (another of Mr. Shanahan’s patents).
`
`That the patent examiner performed only a cursory review of Mr. Shanahan’s
`
`claims in the ‘651 patent is evident in view of the fact that the claims cited in
`
`support of the double patenting rejection make no mention of a digital camera, file
`
`size, resolution, or a link to download a converted video file. Mr. Shanahan
`
`overcame the rejection by filing a terminal disclaimer. The Patent Office never
`
`made any written priority determination or provided any explanation for issuance.
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`D. Claim Construction
`30.
`“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.
`
`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.”
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`U.S. Patent No. 7,742,651
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` “Link that identifies the converted file” has no written support in
`
`31.
`
`the 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
`
`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
`
`“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
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`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
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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 is an indicia of an unconverted file, not
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`an indicia of a converted file. See detailed discussion in section V.D below.
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`Nevertheless, it is my opinion that the patent owners proposed construction is the
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`broadest reasonable interpretation of the term “link that identifies the converted
`
`file.” Thus, Petitioners propose that the broadest reasonable interpretation of this
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`term is “an element that identifies the converted file.”
`
`32.
`
` “The format compatible with the second wireless device
`
`comprises a different file size than the format of the selected video file” has no
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`Attorney Docket No.: 01869-10IP651-3
`U.S. Patent No. 7,742,651
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`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 “digital camera of the first
`
`wireless communications device” should be given its plain and ordinary meaning.
`
`33.
`
`“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.
`
`V.
`
`Priority Analysis
`34. As a threshold matter, the challenged claims are not entitled to the
`
`filing date of any application prior to the application for the ’651 patent. None of
`
`these applications provide sufficient written description to establish that Mr.
`
`Shanahan possessed the full scope of the subject matter of the challenged claims at
`
`any point prior to December 2012.
`
`35. The priority applications lack adequate written description for the
`
`challenged claims regardless of the particular construction used by the Board.
`
`There is no disclosure or “blaze mark” as discussed below even hinting at camera
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`Attorney Docket No.: 01869-10IP651-3
`U.S. Patent No. 7,742,651
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`phones, file size conversion, resolution conversion, or providing the user with a
`
`link to download converted video files.
`
`A.
`Priority of “a Digital Camera of
`Communications Device”
`36.
`
`It is my opinion that the priority applications do not expressly or
`
`the First Wireless
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`inherently disclose “a digital camera of the first wireless communications device.”
`
`First, neither that term nor any more generic term such as “camera phone” is found
`
`anywhere in the priority applications. Moreover, the priority applications do not
`
`contain any actual discussion of the concept of a digital camera being a wireless
`
`communications device or part of a wireless communications device. One of skill
`
`in the art would not have understood that Mr. Shanahan reasonably conveyed any
`
`information about whether the digital camera is or is not part of the wireless
`
`communications device communicating a video file to a video conversion server.
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`Thus, there is no “actual” disclosure.
`
`37. Furthermore, the priority applications do not have any inherent
`
`disclosure of “a digital camera of the first wireless communications device.”
`
`Solocron may argue that the sole appearance of the term “digital camera” in the
`
`priority applications supports the camera phone limitation. The ’651 specification
`
`explains that the original video file is sent from “the source 50” to “programmer
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`30” for conversion and that:
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`Attorney Docket No.: 01869-10IP651-3
`U.S. Patent No. 7,742,651
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`
`Source 50 may be any device or combination of devices
`suitable for providing user-defined
`information
`to
`programmer 30 (e.g., the Internet, an optical disc player
`(CD, DVD), a cassette player, a VCR, a digital camera,
`or any suitable storage device containing computer
`programs or files, etc.)” 651, 3:42-46.
`
`
`
`38. This is the only appearance of the word “camera” in the priority
`
`applications. As evident from the excerpt, the specification makes no reference to
`
`a digital camera that is either part of a wireless communications device, e.g., a cell
`
`phone, or to a digital camera that is itself a wireless communications device.
`
`Further, the other exemplary devices listed for Source 50, such as a VCR and a
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`cassette player, are not wireless communications devices.
`
`39. Even if “a digital camera of [a] wireless communications device”
`
`could be considered to be present in some unidentified passage of the priority
`
`applications, those priority applications lack the requisite “blaze marks” to the
`
`concept of a digital camera embedded in, or part of, a wirele