IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`SOLOCRON MEDIA, LLC,
`
`
`Plaintiff,
`
`v.
`
`Case No. 2:13-cv-1059-JRG
`
`
`
`
`
`[JURY TRIAL DEMANDED]
`
`
`
`
`
`
`VERIZON COMMUNICATIONS INC., CELLCO
`PARTNERSHIP D/B/A VERIZON WIRELESS,
`AT&T INC., AT&T MOBILITY LLC, SPRINT
`SPECTRUM L.P., AND T-MOBILE USA, INC.,
`
`
`Defendants.
`
`
`
`
`
`
`
`DEFENDANTS’ INVALIDITY CONTENTIONS
`
`Pursuant to the Docket Control Order in the above-captioned case, Defendants Verizon
`
`Communications Incf., Cellco Partnership d/b/a Verizon Wireless, AT&T Mobility LLC, T-
`
`Mobile USA, Inc., and Sprint Spectrum L.P. (collectively “Defendants”) hereby provide Plaintiff
`
`Solocron Media, LLC (“Solocron”) with notice of Defendants’ initial invalidity contentions.
`
`This pleading is being served jointly on behalf of all defendants. However, certain claims have
`
`been asserted against some defendants but not others. Accordingly, each Defendant joins in
`
`these contentions only to the extent they address claims asserted against that Defendant.
`
`Page 2026-001
`
`Solocron Ex. 2026 - Verizon Wireless, AT&T Mobility - IPR2015-00390
`
`

`

`TABLE OF CONTENTS
`
`I. RESERVATION OF RIGHTS ............................................................................................... 1
`
`II.
`
`IDENTIFICATION OF PRIOR ART ..................................................................................... 5
`
`A. Prior Art Under 35 U.S.C. § 102 Which Anticipates the Asserted Claims of the Patents-
`in-Suit. .............................................................................................................................. 5
`1. Reservation of Rights ................................................................................................. 5
`2. Local Patent Rule 3-3(a) ............................................................................................ 6
`B. Prior Art Under 35 U.S.C. § 103 Which Renders Obvious the Asserted Claims of the
`Patents-in-Suit.................................................................................................................. 9
`1. Identification of Combinations of Prior Art............................................................... 9
`2. Motivation for Combining Identified Prior Art ....................................................... 10
`3. Bases for Obviousness Contentions Independent of Prior Art Combinations ......... 16
`C. Prior Art Claim Charts ..................................................................................................... 16
`
`III. INDEFINITENESS, ENABLEMENT, AND WRITTEN DESCRIPTION – PATENT
`LOCAL RULE 3-3(D) .......................................................................................................... 19
`
`A. Lack of Written Description / Enablement Under 35 U.S.C. § 112(1) ............................. 19
`1. Ringtone Patents (‘692, ‘395, ‘866, ‘864, and ‘572 Patents) ................................... 19
`2. Messaging Patents (‘759 and ‘651 Patents) ............................................................. 28
`B. Indefiniteness Under 35 U.S.C. § 112(2) .......................................................................... 34
`1. Ringtone Patents (‘692, ‘395, ‘866, ‘864, and ‘572 Patents) ................................... 34
`2. Messaging Patents (‘759 and ‘651 Patents) .............................................................. 37
`
`IV. SOLOCRON IS NOT ENTITLED TO A DECEMBER 1999 PRIORITY DATE. ............. 38
`
`V. NEAR-SIMULTANEOUS INVENTION ............................................................................ 38
`
`VI. DOUBLE PATENTING ....................................................................................................... 39
`
`VII. ACCOMPANYING DOCUMENT PRODUCTION ............................................................ 40
`
`-2-
`
`Page 2026-002
`
`

`

`I.
`
`
`
`RESERVATION OF RIGHTS
`
`At this early stage in the case, prior to the close of discovery and prior to a ruling on the
`
`meaning of the claims, Defendants’ investigation and analysis of prior art is continuing, and
`
`Defendants reserve the right to supplement and to revise the information provided herein as
`
`additional information becomes available. Defendants reserve the right to identify other art or to
`
`supplement its disclosures or contentions for the following reasons:
`
` Solocron’s purported infringement contentions fail to comply with this Court’s local
`
`rules. In particular, Solocron’s infringement contentions merely mimic the claim
`
`language in many instances. Defendants do not believe that they infringe any
`
`asserted claim under any construction, but if the asserted patent claims are broadened
`
`to attempt to encompass Defendants’ products, systems or methods, those claims also
`
`encompass the prior art and, a fortiori, are invalid. Defendants expressly reserve the
`
`right to amend the disclosures herein should Solocron provide any information that it
`
`failed to provide in its infringement contentions or should Solocron amend, either
`
`voluntarily or by Court Order, its infringement contentions. For example, Solocron
`
`has stated in its infringement contentions “that each asserted claim thereof is entitled
`
`to a priority date of at least as early as December 6, 1999.” Solocron proceeded to
`
`subsequently assert in its interrogatory responses that it was entitled to a March 2000
`
`date. If Solocron subsequently seeks a date of conception prior to December 6, 1999
`
`or March 2000, Defendants reserve the right to amend their invalidity contentions to
`
`assert new prior art.
`
` Solocron has added many limitations to its claims without support, as described more
`
`fully below, which renders such claims invalid for lack of written description. If any
`
`Page 2026-003
`
`

`

`of the asserted claims do not get a priority date as of March 2000, then Defendants
`
`reserve the right to rely on the accused products as prior art.
`
` Because the invalidity of particular claims will depend on how those claims are
`
`construed by the Court, and because the Court may construe those claims to mean
`
`something different from what Defendants assume them to mean for purposes of
`
`these initial invalidity contentions, Defendants cannot take a final position on the
`
`bases of invalidity of the asserted claims. By applying any of Solocron’s proposed
`
`constructions herein, Defendants do not concede in any way that those proposed
`
`constructions are correct. Defendants reserve the right to revise its ultimate
`
`contentions concerning the invalidity of the asserted claims, which may change
`
`depending upon the Court’s construction of the asserted claims, any findings as to the
`
`priority date of the asserted claims, and/or positions that Solocron or expert
`
`witness(es) may take concerning claim construction, infringement, and/or invalidity.
`
` Defendants have not yet completed their search for prior art.
`
` Defendants have received only limited discovery from Solocron and Defendants’
`
`discovery of information and documents known or available to Solocron is not
`
`complete.
`
` Defendants have not yet completed its discovery from third parties who have
`
`information concerning prior art. Such discovery likely will reveal information that
`
`affects the disclosures and contentions herein.
`
`The disclosures and contentions herein are based on the claim construction anticipated to
`
`be advanced by Solocron (as reflected in Solocron’s infringement contentions), which
`
`Defendants dispute, and are not based on constructions that Defendants contend are the proper
`
`-2-
`
`Page 2026-004
`
`

`

`constructions. By applying Solocron’s constructions, Defendants do not concede in any way that
`
`those constructions are correct, and instead expressly reserve the right to oppose those
`
`constructions at the appropriate time specified in the Local Rules. To the extent Defendants’
`
`invalidity contentions reflect constructions of claim limitations consistent with or implicit in
`
`Solocron’s infringement contentions, no inference is intended and none should be drawn that
`
`Defendants agree with Solocron’s claim constructions, and Defendants expressly reserve the
`
`right to contest such claim constructions. Defendants offer such contentions in response to
`
`Solocron’s infringement contentions and without prejudice to any position Defendants may
`
`ultimately take individually or collectively as to any claim construction issues.
`
`Defendants also expressly reserve the right to amend these contentions and disclosures
`
`after the Court has construed all relevant claim terms. However, to be clear, Defendants
`
`anticipate that many of the disclosures and contentions herein will also apply to and invalidate
`
`the asserted claims, even under the constructions that Defendants intend to propose. Defendants
`
`reserve the right to prove the invalidity of the asserted claims on bases other than those required
`
`to be disclosed in these disclosures. With respect to the prior art patents identified below, they
`
`are U.S. patents unless otherwise noted.
`
`Defendants’ invalidity contentions are based upon information reasonably available to
`
`Defendants as of the date of these contentions. Because discovery is ongoing, Defendants
`
`expressly reserve the right to clarify, alter, amend, modify, or supplement these invalidity
`
`contentions, to identify additional prior art, and to rely on additional information, tangible things,
`
`and testimony obtained during discovery, including discovery obtained from third parties. If and
`
`when Defendants locate those documents, Defendants will timely supplement their disclosures.
`
`Defendants’ claim charts cite to particular teachings and disclosures of the prior art as
`
`-3-
`
`Page 2026-005
`
`

`

`applied to features of the asserted claims. However, persons having ordinary skill in the art
`
`generally view an item of prior art in the context of other publications, literature, products, and
`
`their own experience and understanding. As such, the cited portions in Defendants’ claim charts
`
`are only examples, and Defendants reserve the right to rely on uncited portions of the prior art
`
`references and on other publications and expert testimony as aids in understanding and
`
`interpreting the cited portions, as providing context thereto, as additional evidence that the prior
`
`art discloses a claim limitation or the invention as a whole, as evidence of the state of the art at a
`
`particular time, or as evidence of the obviousness factor of contemporaneous development by
`
`others. Defendants further reserve the right to rely on uncited portions of the prior art references,
`
`other publications, and
`
`testimony,
`
`including expert
`
`testimony,
`
`to establish bases for
`
`combinations of prior art references that would have rendered the asserted claims obvious.
`
`The references discussed in the claim charts may disclose the elements of the asserted
`
`claims explicitly and/or inherently, and/or they may be relied upon to show the state of the art in
`
`the relevant time frame. The suggested obviousness combinations are provided in the alternative
`
`to Defendants’ anticipation contentions and are not to be construed to suggest that any reference
`
`included in any combination is not by itself anticipatory. Also, the suggested obviousness
`
`combinations are provided as examples, and it should be understood that other combinations of
`
`the prior art disclosed and cited herein could be used in such combinations.
`
`Defendants note that Plaintiff relied upon P.R. 3-1(g) in its infringement contentions for
`
`the vast majority of the claim elements. Accordingly, Defendants reserve the right to serve
`
`supplemental invalidity contentions under P.R. 3-3(e) for each such claim element, as set forth in
`
`paragraph 3(a) of the Court’s Discovery Order (Dkt. No. 84).
`
`
`
`Furthermore, on information and belief, each listed publication or invention became prior
`
`-4-
`
`Page 2026-006
`
`

`

`art at least as early as the dates given. Defendants also incorporate, in full, all prior art
`
`references cited in U.S. Patent Nos. 6,496,692 (“the ‘692 patent”), 7,257,395 (“the ‘395 patent”),
`
`7,319,866 (“the ‘866 patent”), 7,295,864 (“the ‘864 patent”), 7,742,759 (“the ‘759 patent”),
`
`8,249,572 (“the ‘572 patent”), and 8,594,651 (“the ‘651 patent”) (collectively, “the asserted
`
`patents”) and their prosecution histories.
`
`II.
`
`IDENTIFICATION OF PRIOR ART
`
`Based on a diligent search of prior art to date, with respect to the asserted patents, at least
`
`the prior art listed in Appendices A-B, individually or in combination, invalidates the asserted
`
`claims of the patents-in-suit. See LPR 3-3(a). As noted in Appendices A-B, references indicated
`
`with a * are prior art under 35 U.S.C. § 102, as well as 35 U.S.C. § 103. The references without
`
`a * are prior art under 35 U.S.C. § 103. See LPR 3-3(b).
`
`A.
`
`Prior Art Under 35 U.S.C. § 102 Which Anticipates the Asserted Claims of
`the Patents-in-Suit.
`
`1.
`
`Reservation of Rights
`
`The prior art listed in Appendices A-B anticipates the asserted claims of the asserted
`
`patents either expressly or inherently as understood by a person having ordinary skill in the art.
`
`The specific anticipation assertions with respect to each asserted claim are set forth in the
`
`accompanying claim charts for each reference listed below. For references that were filed but
`
`not yet published prior to Solocron’s earliest asserted priority date, Defendants contend that
`
`those references are prior art under at least 35 U.S.C. §§ 102(a), (e), (f), and (g). For any
`
`references that were described in a printed publication or on sale or in public use in this country
`
`more than a year before each of the patents-in-suit respective U.S. filing dates, Defendants
`
`contend that such references are also prior art under 35 U.S.C. § 102(b).
`
`Defendants have endeavored to identify the most relevant portions of identified
`
`-5-
`
`Page 2026-007
`
`

`

`references. The references may contain additional support, however, for a particular claim
`
`element. Defendants may rely on uncited portions of the prior art references and/or other
`
`publications and expert testimony to provide context and as aids to understanding and
`
`interpreting the portions that are cited.
`
`2.
`
`Local Patent Rule 3-3(a)
`
`Pursuant to Local Patent Rule 3-3(a), Defendants provide the following information
`
`regarding prior art which were on sale and/or in public use prior to the earliest permissible
`
`priority date of the asserted patents. The following table further includes information regarding
`
`derivation, and also regarding prior art which was made in this country and not abandoned,
`
`suppressed, or concealed prior to earliest asserted conception date of the asserted patents.
`
`Item Offered for
`Sale or Publicly
`Used or Known
`
`Date the Offer
`Took Place,
`Information
`Became Known,
`or Invention Took
`Place
`
`Napster
`
`1999
`
`Identity of
`Persons or
`Entity Which
`Made the Use,
`Made or Made
`and Received
`the Offer
`John Fanning,
`Shawn Fanning,
`and Sean Parker
`
`Identity of Person or Entity
`Which or Made and Received
`Offer and Additional
`Circumstances
`
`Napster was a commercial product
`offered to general public, which was
`publicly known and discussed in
`several printed publications.
`Napster provided an audio file
`sharing service in late 1999. On
`information and belief, aspects of
`the Napster service are described in
`U.S. Patent No. 6,366,907
`(describing searching, such as by
`using the “name of the author or
`artist, the song title, the genre, and
`the title of the album”).1
`Scour was a commercial product
`offered to general public, which was
`publicly known and discussed in
`
`December 1997
`
`Vince Busam,
`Michael Todd,
`Dan Rodrigues,
`
`Scour.Net / Scour
`Media Agent /
`Scour.com
`
`See http://computer.howstuffworks.com/napster.htm/printable ;
`1
`http://iml.jou.ufl.edu/projects/spring01/burkhalter/napster%20history.html;
`http://www.britannica.com/EBchecked/topic/754550/Napster ; http://www.wired.com/2013/04/napster/
`
`-6-
`
`Page 2026-008
`
`

`

`Jason Droege,
`Kevin Smilak,
`Ilya Haykinson,
`Travis Kalanick
`(UCLA
`Computer
`Science Dept.)
`
`Philippe Kahn
`
`Kyocera
`
`several printed publications.
`Starting December 1997, several
`students at the UCLA computer
`science department provided a
`search engine (Scour Media Agent)
`to search for and download music
`audio files (including MP3 files)
`from the internet.2
`In June 1997, Philippe Kahn created
`a camera phone solution to share
`pictures on public networks.3 Mr.
`Kahn’s technology was publicly
`known and discussed in several
`printed publications.
`Kyocera provided a commercial
`product to the general public, which
`was publicly known and discussed
`in several printed publications. By
`May 18, 1999, Kyocera released its
`VisualPhone VP-210. The VP-210
`came equipped with a small built-in
`camera and could transmit and
`receive image files with other
`mobile phones.4
`James Winsoar My Nokia was a website offering
`downloadable ringtones for mobile
`phones and, on information and
`belief, would have been publicly
`known and used in the United
`States.5
`Mobile Melodies was a website
`offering downloadable ringtones for
`mobile phones and, on information
`and belief, would have been
`
`LightSurf
`
`June 1997
`
`VP-210
`
`By May 18, 1999
`
`My Nokia
`website
`
`By at least
`November 28,
`1999
`
`Mobile Meloides
`website
`
`By at least May 8,
`1999
`
`Smart Media
`
`
`See http://online.wsj.com/news/articles/SB928970934179363266?mg=reno64-
`2
`wsj&url=http%3A%2F%2Fonline.wsj.com%2Farticle%2FSB928970934179363266.html ;
`http://www.nytimes.com/2000/05/22/business/agent-s-role-in-music-site-may-be-shift-in-rights-war.html
`3
`See http://archive.wired.com/wired/archive/8.10/kahn.html; http://en.wikipedia.org/wiki/Philippe_Kahn;
`http://en.wikipedia.org/wiki/LightSurf ;
`http://www.macworld.com/article/1163185/iphoneographers_learn_from_the_pros_at_1197_conference.html ;
`http://poy.time.com/2013/12/07/why-philippe-kahn-should-be-the-person-of-the-year/ ;
`https://web.archive.org/web/20000303141313/http://www.lightsurf.com/about/about.htm
`
` 4
`
`See http://www.cnn.com/TECH/ptech/9905/18/japan.phonetv/ ; http://www.gsmhistory.com/vintage-
`
`mobiles/#kyocera_vp210_1999 ;
`http://www.phonecruncher.com/features/2227176/5_tech_innovations_weve_seen_before.html
`5
`See https://web.archive.org/web/19991127110634/http://www.my-nokia.co.uk/
`
`-7-
`
`Page 2026-009
`
`

`

`Modtones
`website
`
`By at least June 28,
`2002
`
`Verizon
`Wireless; Faith
`West Inc.
`
`Palavista website By at least
`December 1998
`
`Palavista
`
`JukeBoksi
`website
`
`By at least January
`25, 1999
`
`Radiolinja
`
`Harmonium
`Service
`
`By at least 1998
`
`Vesa-Matti
`Paananen
`
`AT&T’s
`PocketNet
`System
`
`Nokia 7190
`phone
`
`Nokia 6150
`phone
`Nokia 9110
`
`By at least
`February 1997
`
`AT&T/Unwired
`Planet
`
`By at least
`September 21,
`1999
`
`Nokia
`
`By at least August
`1998
`By at least October Nokia
`
`Nokia
`
`publicly known and used in the
`United States.6
`Modtones was a website offering
`downloadable ringtones for mobile
`phones and was publicly known and
`used in the United States.
`Palavista was a search engine for
`music files publicly known and used
`in the United States.7
`JukeBoksi was a website offering
`downloadable ringtones for mobile
`phones and, on information and
`belief, would have been publicly
`known and used in the United
`States8
`Harmonium was a freeware service
`offering downloadable ringtones for
`mobile phones and, on information
`and belief, would have been
`publicly known and used in the
`United States.9
`AT&T’s PocketNet System was an
`implementation of Unwired Planet’s
`UP.Link platform and allowed for
`the provisioning of content and
`applications to mobile devices.10
`The Nokia 7190 phone was
`demonstrated at the PCS ’99
`conference in New Orleans,
`Louisiana in September 1999.11
`The Nokia 6150 was announced in
`August 1998.12
`The Nokia 9110 Communicator was
`
`
`6
`See https://web.archive.org/web/19990225134139/http://www.smartmedia.nl/
`mobile_melodies/
`7
`See https://web.archive.org/web/19981206022956/http://www.palavista.com/;
`http://www.emory.edu/BUSINESS/et/P98/mp3/.
`8
`See https://web.archive.org/web/19990125090438/http://jukeboksi.radiolinja.fi/
`9
`See Ring My Bell, The New Yorker March 7, 2005, Sasha Frere-Jones
`(http://www.newyorker.com/archive/2005/03/07/050307crmu_music?currentPage=all) (last visited June 12, 2014)
`(“The New Yorker”)
`10
`See Unwired Planet – UP.Link Gateway (“UP.Link Gateway page”)
`(http://web.archive.org/web/19980127173147/http://www.uplanet.com/tech/products/uplink.html)
`11
`See http://www.mobic.com/oldnews/9909/fusionone_joins_wap_forum_.htm;
`http://www.twice.com/news/accessories/nokia-shows-new-wap-phone-pcs-99/978
`12 See http://nokiamuseum.info/nokia-6150/.
`
`-8-
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`Page 2026-010
`
`

`

`Communicator
`
`1998
`
`Verizon Wireless
`Get It Now
`
`April 2002
`
`Verizon
`Wireless /
`Qualcomm
`
`
`
`well known and on-sale since at
`least May 1998.
`The Verizon Wireless Get It Now
`service (previously known as the
`BREW Store) was a service that
`launched commercially no later than
`March 18, 2002. See
`SOLOCRON_PRIOR_ART_20155-
`56. This would include the Verizon
`Wireless wireless telephones which
`accessed the Get It Now service
`which includes the Z800, Motorola
`T720, CDM-9500 and VX 4400
`phones.
`
`Discovery is expected to yield more specific information regarding the dates and entities
`
`involved in the invalidating transactions. Accordingly, Defendants expressly reserve the right to
`
`amend or supplement this section.
`
`B.
`
`Prior Art Under 35 U.S.C. § 103 Which Renders Obvious the Asserted
`Claims of the Patents-in-Suit
`
`1.
`
`Identification of Combinations of Prior Art
`
`The prior art listed in Appendices A-B, individually or in combinations of two or more
`
`references also listed in Appendices A-B, renders obvious the asserted claims, either expressly or
`
`inherently.
`
`
`
`Should any prior art cited in Appendices A-B above be deemed not to disclose, explicitly
`
`or inherently, any limitation of an asserted claim, Defendants reserve the right to argue that any
`
`such difference between that prior art and the corresponding patent claim would have been
`
`obvious to one of ordinary skill in the art. If Defendants cite to support for a given limitation
`
`that is later determined not to be satisfied by such prior art reference notwithstanding
`
`Defendant’s belief to the contrary, Defendants put plaintiff on notice that to the extent they have
`
`expressly cited to obviousness Appendix D for a similar such limitation, that they intend to
`
`-9-
`
`Page 2026-011
`
`

`

`likewise rely on the support cited in Appendix D for such limitation. To the extent that such an
`
`argument is deemed a “combination” analysis for purposes of obviousness, Defendants disclose
`
`their present intention to rely on the separate combination of the knowledge of a person of
`
`ordinary skill in the art with each item of prior art in Appendix A above.
`
`2.
`
`Motivation for Combining Identified Prior Art
`
`Motivation to combine any of these references with the others exists within the references
`
`themselves, as well as within the knowledge of those of ordinary skill in the art.13 These
`
`references identify and address the same or similar technical issues and suggest very similar
`
`solutions to these issues. For example, many of these references cross-reference one another,
`
`further illustrating the close technical relationship among the group of references.
`
`Moreover, a person of skill in the art would have been motivated to combine each of the
`
`above-referenced combinations of prior art. As the United States Supreme Court held in KSR
`
`Int’l Co. v. Teleflex Inc. et al., “[t]he combination of familiar elements according to known
`
`methods is likely to be obvious when it does no more than yield predictable results.” 127 U.S.
`
`1727, 1731 (2007). The Supreme Court further held that, “[w]hen a work is available in one
`
`field of endeavor, design incentives and other market forces can prompt variations of it, either in
`
`the same field or a different one. If a person of ordinary skill can implement a predictable
`
`variation, § 103 likely bars its patentability. For the same reason, if a technique has been used to
`
`
`13
`Pursuant to Local Rule 3-3(b), Defendants have included this section discussing
`motivation to combine. In KSR v. Teleflex, however, the Supreme Court rejected the idea that a
`“teaching, suggestion, or motivation to combine” is a prerequisite for proving obviousness. See
`KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1739-40 (2007) (rejecting the Federal Circuit’s
`“rigid” application of the teaching, suggestion, or motivation to combine test, and instead
`espousing an “expansive and flexible” approach). Indeed, the Supreme Court held that a person
`of ordinary skill in the art is “a person of ordinary creativity, not an automaton” and “in many
`cases a person of ordinary skill in the art will be able to fit the teachings of multiple patents
`together like pieces of a puzzle.” Id. at 1742.
`
`
`-10-
`
`Page 2026-012
`
`

`

`improve one device, and a person of ordinary skill in the art would recognize that it would
`
`improve similar devices in the same way, using the technique is obvious unless its actual
`
`application is beyond his or her skill. . . .” Id. at 1740.
`
`
`
`Accordingly, a person of ordinary skill in the art would have been motivated to combine
`
`or adapt known or familiar methods in art, especially where market forces prompt such
`
`variations. Each prior art item or reference above provided methods that were known to offer
`
`such improvements and, accordingly, one of skill in the art would have been motivated to
`
`combine or modify the prior art as identified in each of the combinations above.
`
`
`
`Additionally, the Supreme Court held that “familiar items may have obvious uses beyond
`
`their primary purposes, and in many cases a person of ordinary skill will be able to fit the
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`teachings of multiple patents together like pieces of a puzzle.” Id. at 1742. Indeed, the Supreme
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`Court held that it is sufficient that a combination of elements was “obvious to try” holding that,
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`“[w]hen there is a design need or market pressure to solve a problem and there are a finite
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`number of identified, predictable solutions, a person of ordinary skill has good reason to pursue
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`the known options within his or her technical grasp.” Id. Again, market forces prompted
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`solutions for overlaying traffic information on a map, and thus one of ordinary skill in the art
`
`would have been motivated to combine known prior-art solutions, as identified in each of the
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`combinations in Appendix B. Similarly, almost all of the references are directed to a common
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`goal of providing user-customizable ringtones and/or converting messages from one media
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`format to another, and thus, one of ordinary skill in the art would have been motivated to
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`combine known prior art solutions.
`
`
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`Motivation to combine may also be found in the “nature of the problem.” Id. at 1734. As
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`stated in the ‘692 patent, the inventor asserts that “there are many electronic products that offer
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`an audio/video playing capability that are not fully user-programmable.” 1:27-29. Those of skill
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`in the art understood the following:
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`“The user can benefit by knowing whether the personal or business number has been
`called by the use of an indicator that does not require the user to look at the phone. This
`will enable the user to answer the mobile telephone unit differently based upon whether
`the business number or personal number was called. Thus, a mobile telephone unit
`providing the user with the option to select and download new tones to be used for
`different call scenarios would provide an ease of use and flexibility that would greatly
`benefit the user.” U.S. Pat. no. 6,018,654 to Valentine at 1:29-39
`
`“A current popular trend is to program the MS 20 to ring with popular music, instead of
`the normal ringing tone. There is a series of books published by Futabasha Publishers
`Ltd., such as the book entitled "Ringing-tone for Cellular Phones, Do Re Mi" that
`teaches mobile subscribers how to program the musical ringing tone(s) into their MSs
`20. For example, a mobile subscriber can program his or her MS 20 to ring with a
`popular song by inputting symbols and/or numbers into his or her MS 20. However,
`programming the MS 20 directly by the mobile subscriber is not easy. Different MSs 20
`require different programming methods. Thus, if a mobile subscriber purchases a new
`MS 20, the programming technique used before may not work anymore. Therefore,
`many mobile subscribers may want the option of an alternative ringing tone without
`having to buy a book and program the MS 20 by themselves. In addition, with the
`demand for alternative ringing tones rising, many network operators are looking for
`ways to capitalize on this trend. By allowing the mobile subscribers to program the
`musical tones into their MSs 20 themselves, the network operators are losing out on a
`potential source of revenue.” U.S. Pat. No. 6,366,791 to Lin at 2:6-29.
`
`Accordingly, one of ordinary skill in the art would have been motivated to combine prior art
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`directed at allowing a user to download ringtones in the claimed manner, and thus would have
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`been motivated to combine all of the prior art as identified in the above combinations.
`
`
`
`Many other references identify these same issues:
`
`“Over the ages, the types of media by which people have shared information have
`changed in stride with advancements in technology, as is especially evident in the
`present electronic age. Consequently, today there are numerous media for transferring
`information in a faster and in a more efficient manner than ever before. Examples of
`such media presently being used include telephone (voice-mail), e-mail, fax, etc., each
`of which has its own advantages and disadvantages. As a result, in the current
`competitive market place, reliable communication and the choice of media has come to
`play a critical role in the success (if not survival) of many businesses, especially those
`that are geographically diversified. Particularly, the ability to communicate specific
`information to a person or entity in a reliable, cost effective, and efficient manner is
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`now more of a necessity than a luxury. Moreover, all indications are that this ability to
`communicate will only increase in importance in the coming years as an individual's
`time becomes more costly because businesses are driven to even greater efficiencies,
`and as the Internet and the Information Superhighway (e.g., the National Information
`Infrastructure (NII) or the Global Information Infrastructure (GII)) become globally
`accessible. A problem created by having all these different media of communication
`available is the inability to communicate between the different media. Presently, several
`communication systems exist that allow a recipient to receive communications in a
`limited number of different media and then to convert them into a native media. An
`example of such a system is disclosed in U.S. Pat. No. 4,837,798, issued on Jun. 6,
`1989, to Cohen et al., which provides for a single electronic mailbox for receiving
`messages in different media such as telephone or fax. In the patent to Cohen et al, the
`unified message system located at the recipient's end converts all the received messages
`in the user's electronic mailbox into a single native media. This system provides a
`certain amount of versatility in that the user can receive messages in a given media and
`covert those messages into a native media of the user. However, the media conversion
`only occurs post-delivery which prevents the sender from taking advantage of tariffs
`and competitive service offerings across available media. Further, this system fails to
`provide any one of the following: acknowledgment or notification to the sender that the
`recipient actually received the message, acknowledgment or notification to the sender of
`the success or failure of the message conversion, or a retry mechanism. Therefore, a
`heretofore unaddressed need exists in the industry for a payload delivery system that
`eliminates the incompatibility between di