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`Case IPR2015-00391
`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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`CELLCO PARTNERSHIP D/B/A VERIZON WIRELESS
`AT&T MOBILITY LLC
`Petitioners
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`v.
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`SOLOCRON MEDIA, LLC
`Patent Owner
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`Case IPR2015-00391
`Patent No. 7,257,395
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`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 7,257,395
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET SEQ.
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`
`
`Mail Stop: Patent Board
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Case IPR2015-00391
`Petition for Inter Partes Review
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`TABLE OF CONTENTS
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`INTRODUCTION AND BACKGROUND ........................................................ 1
`I.
`II. NOTICES, STATEMENTS AND PAYMENT OF FEES ................................. 7
`A. Real Party In Interest Under 37 C.F.R. § 42.8(b)(1) ..................................... 7
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2) ............................................. 7
`C. Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) .......................... 8
`D. Service Information Under 37 C.F.R. § 42.8(b)(4) ....................................... 8
`E. Grounds for Standing Under 37 C.F.R. § 42.104(a) ..................................... 8
`F. Fees Under 37 C.F.R. § 42.103 ..................................................................... 9
`III. IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R. § 42.104(B) .......... 9
`IV. HOW THE CHALLENGED CLAIM IS TO BE CONSTRUED UNDER 37
`C.F.R. § 42.104 (B) (3) ...................................................................................... 14
`V. THE PATENT AND ITS PROSECUTION HISTORY ................................... 18
`A. Prosecution History of the ‘395 Patent ....................................................... 19
`B. Prosecution History of the Related Child ‘866 Patent ................................ 20
`C. The ‘395 Patent Suffers From the Same Deficiencies That the Inventor
`Identified in the Prior Art In The ‘866 Prosecution. ................................... 22
`VI. THE EARLIEST PRIORITY DATE OF THE CHALLENGED CLAIMS IS
`MARCH 2000. ................................................................................................... 23
`VII. DETAILED EXPLANATION AND SUPPORTING EVIDENCE UNDER 37
`C.F.R. §§ 42.104(B)(4) AND (B)(5) ................................................................. 26
`A. “Polyphonic Audio Files” Cannot Form the Basis for Patentability .......... 27
`B. Claims 22, 25, 30, 39, and 40 are Anticipated Or Rendered Obvious By the
`Nokia 9110 User’s Manual. ........................................................................ 30
`C. Claims 22, 25, 30, 39, and 40 are Obvious In View Of 9110 UM And 9110
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`FAQ. ............................................................................................................ 36
`D. Claims 22, 25, 30, 39, and 40 are Obvious Over 9110 UM, 9110 FAQ, and
`Perez. ........................................................................................................... 37
`E. Claims 22, 25, 30, 39, and 40 Are Obvious Over 9110 UM, 9110 FAQ,
`Perez and Nikkei. ........................................................................................ 39
`F. Claim 36 Is Obvious Over 9110 UM With The 9110 FAQ And Nokia Press
`Releases. ...................................................................................................... 42
`G. Claim 36 Is Obvious Over 9110 UM With The 9110 FAQ, Nikkei and
`Nokia Press Releases. ................................................................................. 43
`H. Claim 36 Is Obvious Over 9110 UM With The 9110 FAQ, Nikkei, Perez,
`and Nykanen. ............................................................................................... 44
`I. Claims 22, 25, 30, 39, and 40 Are Obvious Over Rizet and Either Rolf or
`Fritsch. ......................................................................................................... 46
`J. Claims 22, 25, 30, 39, and 40 are Obvious Over Rizet, Perez and one of
`Rolf or Fritsch. ............................................................................................ 55
`K. Claims 22, 25, 30, 39, and 40 Are Obvious Over Rizet and Nikkei. .......... 56
`L. The Asserted References Are Not Cumulative At This Point. ................... 58
`VIII.CONCLUSION ................................................................................................ 60
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`TABLE OF AUTHORITIES
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`Page(s)
`
`Cases
`Abbvie Inc. v. Mathilda & Terence Kennedy Inst. of Rheumatology,
`764 F.3d 1366 (Fed. Cir. 2014) .................................................................... 28, 29
`
`Geo M. Martin Co. v. Alliance Mach. Sys. Int’l LLC,
`618 F.3d 1294 (Fed. Cir 2010) ..................................................................... 11, 26
`
`In re Index Sys.,
`576 F. App’x 976 (Fed. Cir. 2014) ................................................................. 2, 29
`
`KSR Int’l Co. v. Teleflex Co.,
`550 U.S. 398 (2007) ........................................................................................ 2, 41
`
`Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
`485 F.3d 1157 (Fed. Cir. 2007) ...................................................................... 5, 41
`
`Monsanto Co. v. Mycogen Plant Sci., Inc.,
`261 F.3d 1356 (Fed. Cir. 2001) .......................................................................... 26
`
`In re Mulder,
`716 F.2d 1542 (Fed. Cir. 1983) .......................................................................... 26
`
`New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co.,
`298 F.3d 1290 (Fed. Cir. 2002) .......................................................................... 24
`
`In re NTP Inc.,
`654 F.3d 1268 (Fed. Cir. 2011) .......................................................................... 24
`
`Pfizer Inc. v. Teva Pharms. USA, Inc.,
`460 F. Supp. 2d 659 (D.N.J. 2006) ..................................................................... 27
`
`PowerOasis, Inc. v. T-Mobile USA, Inc.,
`522 F.3d 1299 (Fed. Cir. 2008) ................................................................ 7, 20, 24
`
`Stored Value Solutions, Inc. v. Card Activation Techs. Inc.,
`499 F. App’x 5 (Fed. Cir. 2012) ........................................................................... 9
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`Symantec Corp. v. Computer Assocs. Int’l, Inc.,
`522 F.3d 1279 (Fed. Cir. 2008) .......................................................................... 17
`
`Voter Verified, Inc. v. Premier Election Solutions, Inc.,
`698 F.3d 1374 (Fed. Cir. 2012) .......................................................................... 10
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`Exhibit No.
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`PETITIONERS’ EXHIBIT LIST
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`Description
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`Exhibit 1001 U.S. Patent No. 7,257,395 (the ‘395 patent)
`
`Exhibit 1002 Complaint filed in Solocron v. Cellco Partnership et al. (Case
`No. 2-13-cv-1059) (E.D. Tex.)
`Exhibit 1003 Copy of U.S. Provisional Patent App. 60/169,158, as filed Dec.
`6, 1999 (downloaded from PAIR)
`Exhibit 1004 Exhibit Not Used
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`Exhibit 1005 Exhibit Not Used
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`Exhibit 1006 Copy of U.S. Patent App. 10/223,200, as filed Aug. 16, 2002
`(now U.S. Patent No. 7,257,395) (downloaded from PAIR)
`Exhibit 1007 Copy of Prosecution History for the U.S. Patent No. 7,319,866
`(downloaded from PAIR), including U.S. Patent App.
`10/915,866 as filed Aug. 11, 2004
`Exhibit 1008 Exhibit Not Used
`
`Exhibit 1009 Exhibit Not Used
`
`Prosecution History for the U.S. Patent No. 7,257,395 (U.S.
`Patent App. 10/223,200) (downloaded from PAIR)
`Exhibit 1011 Exhibit Not Used
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`Exhibit 1012 Exhibit Not Used
`
`Exhibit 1013 Exhibit Not Used
`
`International Publication No. WO 98/25397, entitled
`“Telecommunication Device and a Method for Providing
`Ringing Information”, published June 11, 1998 (“Philips” or
`“Rizet”)
`Exhibit 1015 Exhibit Not Used
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`Exhibit 1016 Exhibit Not Used
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`Exhibit 1010
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`Exhibit 1014
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`Exhibit 1020
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`Exhibit 1017 Exhibit Not Used
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`Exhibit 1018 Exhibit Not Used
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`Exhibit 1019 Declaration of Internet Archive and Copies of Various Websites
`
`“Yamaha Sound Generator LSI ‘YMU757,’” Yamaha News
`Release
`Exhibit 1021 Exhibit Not Used
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`Exhibit 1022 Exhibit Not Used
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`Exhibit 1023 Exhibit Not Used
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`Exhibit 1024 Exhibit Not Used
`
`Exhibit 1025 U.S. Patent No. 6,911,592, entitled “Portable Telephony
`Apparatus With Music Tone Generator,” filed July 26, 2000,
`issued June 28, 2005, to Futamase
`
`Exhibit 1026 European Patent Application EP1073034, entitled “Portable
`Telephony Apparatus With Music Tone Generator,” was
`published January 31, 2001 (“Futamase”)
`Exhibit 1027 Exhibit Not Used
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`Exhibit 1028 Exhibit Not Used
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`Exhibit 1029 U.S. Patent Application No. 2001/0045153
`
`Exhibit 1030 Exhibit Not Used
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`Exhibit 1031 Excerpt from Harvard Dictionary of Music, Second Edition,
`Revised and Enlarged, Willi Apel, The Belknap Press of Harvard
`University Press, Cambridge MA, 1975.
`Exhibit 1032 Exhibit Not Used
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`Exhibit 1033 Exhibit Not Used
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`Exhibit 1035
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`Exhibit 1039
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`Exhibit 1034 Exhibit Not Used
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`Final Decision dated April 21, 2014 in IPR2013-00072
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`Exhibit 1036 Exhibit Not Used
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`Exhibit 1037 Exhibit Not Used
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`Exhibit 1038 Local Patent Rule 4-3 Statement filed in Solocron v. Cellco
`Partnership et al. (E.D. Tex.) (Case No. 2-13-cv-1059)
`http://www.slideshare.net/JesseTeWeehi/elements-of-music-start
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`Exhibit 1040 Random House Webster’s Unabridged Dictionary
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`Exhibit 1041 Encyclopedia Britannica
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`Exhibit 1042 YM3812 Chip Manual
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`Exhibit 1043 New Grove Dictionary of Music and Musicians
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`Exhibit 1044 Oxford Music Online
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`Exhibit 1045 MIDI Specification
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`Standard MIDI File Specification
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`Exhibit 1047 General MIDI Specification
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`ISO/IEC standard 11172-3 (“MP3” specification)
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`Exhibit 1049 WMA File Format Specification
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`Exhibit 1050 US 6,351,225 to Moreno
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`Exhibit 1051 U.S. Patent No. 6,496,692 (“the ‘692 patent”)
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`‘866 Prosecution History, Reply to Office Action dated 5/4/2007
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`Exhibit 1046
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`Exhibit 1048
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`Exhibit 1052
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`Exhibit 1053 Yamaha YMU757 Press Release, October 12, 1999
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`Exhibit 1054 Yamaha YMU757 Technical Manual, February 2000
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`Exhibit 1055 Analysis of WAV files provided in 1999 with Nokia 9110
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`Exhibit 1056 U.S. Patent No. 7,319,866 (“the ‘866 patent”)
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`Exhibit 1057 Exhibit Not Used
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`Exhibit 1058 Exhibit Not Used
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`Exhibit 1059 Exhibit Not Used
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`Exhibit 1060 Exhibit Not Used
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`Exhibit 1061 Exhibit Not Used
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`Exhibit 1062 Exhibit Not Used
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`Exhibit 1063 Exhibit Not Used
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`Exhibit 1064 Exhibit Not Used
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`Exhibit 1065 Declaration of Jari Valli
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`Exhibit 1066 The IEEE Standard Dictionary of Electrical and Electronics
`Terms (6th ed. 1997)
`Exhibit 1067 Exhibit Not Used
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`Exhibit 1068 Exhibit Not Used
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`Exhibit 1069 Exhibit Not Used
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`Exhibit 1070 Nokia 9110 User Manual, published at least as early as February
`1, 1999 (“9110 UM”)
`Solocron’s Opening Claim Construction Brief from Solocron v.
`Cellco Partnership et al. (Case No. 2-13-cv-1059) (E.D. Tex.)
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`Exhibit 1071
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`Exhibit 1072 Exhibit Not Used
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`Exhibit 1073 Exhibit Not Used
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`Exhibit 1074 Certified translation of Chapters 2-3 of “Nikkei Electronics”
`1999.11.15
`Exhibit 1075 Exhibit Not Used
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`Exhibit 1076 Exhibit Not Used
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`Exhibit 1077 Exhibit Not Used
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`Exhibit 1078 Exhibit Not Used
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`Exhibit 1079 Declaration of John M. Strawn, Ph.D., and CV
`
`Exhibit 1080 Exhibit Not Used
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`Exhibit 1081 U.S. Patent No. 6,492,761, filed on January 20, 1998, issued on
`December 10, 2002 (“Perez”)
`Exhibit 1082 Declaration of Erin Flaucher re Nokia 9110 with Exhibits
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`9110 Nokia.com web page archived May 8, 1999 for “Frequently
`Asked Questions" (“9110 FAQ”)
`Exhibit 1084 Exhibit Not Used
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`Exhibit 1085 Exhibit Not Used
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`Exhibit 1086 Exhibit Not Used
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`Exhibit 1087 Declaration of Internet Archive re Nokia Websites
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`Exhibit 1088 Declaration from Lisa Rowlinson de Ortiz and Attachments
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`Exhibit 1089 Declaration of Henry Houh, Ph.D., and CV
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`Exhibit 1090 Exhibit Not Used
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`Exhibit 1083
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`Modtones Begin U.S. Tour on Verizon Wireless’s Get it Now
`Exhibit 1091
`Service, September 23, 2002
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`Exhibit 1092 Motorola T720 With New Verizon Wireless Get it Now Service
`Helps Consumers Get Busy in Full Color, September 22, 2002
`Exhibit 1093 AT&T Wireless “Turns On” the World’s Capital, October 14,
`2002
`Exhibit 1094 Exhibit Not Used
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`Exhibit 1095 Exhibit Not Used
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`Exhibit 1096 Exhibit 1096 - Nokia Announces the Nokia WAP Browser (June
`30, 1999)
`Exhibit 1097 The Nokia 9110i Communicator with WAP (February 23, 2000)
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`Exhibit 1098 The Nokia 9110i Communicator offers WAP services to the
`large community of knowledge workers (February 23, 2000)
`Exhibit 1099 U.S. Patent No. 7,065,342, filed, November 22, 2000, claiming
`priority to U.S. Provisional Application Ser. No. 60/167,179,
`filed Nov. 23, 1999, entitled “System, Method, and Device for
`Playing Recorded Music on a Wireless Communications
`Device,” issued to Rolf (“Rolf”)
`Exhibit 1100 U.S. Provisional Application Ser. No. 60/167,179, filed Nov. 23,
`1999, entitled “System, Method, and Device for Playing
`Recorded Music on a Wireless Communications Device” (“Rolf
`Provisional”)
`Exhibit 1101 U.S. Patent No. 6,247,130, filed January 18, 2000, claiming
`priority to U.S. Provisional Application Ser. No. entitled
`“Distribution of musical products by a web site vendor over the
`Internet,” issued to Fritsch (“Fritsch”)
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`Exhibit 1102 Email with Nikkei Publisher
`Exhibit 1103 U.S. Patent No. 6,661,784, filed March 2, 1999, claiming priority
`to Mar. 3, 1998 Finnish Patent Application No. 980485, issued to
`Nokia December 9, 2003 (“Nykanen”)
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`Petitioners Cellco Partnership d/b/a Verizon Wireless and AT&T Mobility
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`LLC request inter partes review of claims 22, 25, 30, 36, 39, and 40 (the
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`“challenged claims”) of U.S. Patent No. 7,257,395 (the “‘395 patent”).
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`I.
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`INTRODUCTION AND BACKGROUND
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`This petition seeks review of some of the claims in IPR2015-00350, but is
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`based on prior art from different time periods. The priority date for claims 36 and
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`40 depends upon the Board’s evaluation of the term “polyphonic audio files,”
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`which the inventor added to the ‘395 application in July 2003—44 months after the
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`first applications to which the ‘395 patent claims priority (“the Priority
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`Applications”). As explained in IPR2015-00350, claims 36 and 40 are entitled to a
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`June 2003 priority date because the Priority Applications do not sufficiently
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`disclose “polyphonic audio files.” See Exhibit 1035, Final Decision in IPR2013-
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`00072 at 0008 (patent “not entitled to the benefit of the filing date of [parent]”).
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`During prosecution, the patentee’s sole support for polyphonic audio files
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`was a citation in the Priority Applications to formats such as WAV and MP3.
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`Even assuming the earliest asserted priority date, the prior art shows those WAV
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`and MP3 file formats in explicit detail. The patentee cannot have it both ways:
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`either the prior art herein invalidates claims 36 and 40 or those claims have a 2003
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`priority date and the prior art in IPR2015-00350 invalidates it.
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`Thus, even if the Board determines that bare file formats sufficiently
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`disclose “polyphonic audio files,” the prior art in the present petition still
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`invalidates claims 36 and 40 because: (a) that prior art teaches polyphonic audio
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`files even under the narrowest construction of that term; (b) “polyphonic” audio
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`files were at best an obvious, known variation; and (c) at a minimum, that prior art
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`discloses as much as the Priority Applications (including, for example, WAV and
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`MP3 files). See Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1569
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`(Fed. Cir. 1988) (recognizing that the prior art need only have the same “level of
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`technical detail” as the asserted patent to be invalidating).
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`Indeed, by 1999, the idea of “polyphonic audio files” was not novel and
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`was—at most—an obvious variation of previous efforts. “Polyphonic” audio files
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`cannot be a basis for patentability because there are only two categories of audio
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`files: monophonic and polyphonic. This is the epitome of “a finite number of
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`identified, predictable solutions” that preclude patentability. KSR Int’l Co. v.
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`Teleflex Inc., 550 U.S. 398, 421 (2007); see also In re Index Sys., 576 F. App’x
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`976, 980 (Fed. Cir. 2014) (affirming Board decision of obviousness when “only
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`two solutions would have been realistically considered”). Adding polyphonic
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`audio files is the “mere substitution of one element [polyphonic files] for another
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`known in the field [monophonic files],” which merely “yield[s] a predictable
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`result[]” and is therefore non-patentable. KSR, 550 U.S. at 416.
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`Various industry publications dated before the earliest asserted priority date
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`confirm this predictability. The industry was fully aware by 1999 that a normal
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`evolution of technology was the use of “polyphonic audio files” as ringtones.
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`Companies recognizing this included Nokia in Europe, as well as Yamaha and
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`others in Japan. The following figures from a Nikkei Electronics article (Exhibit
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`1074 at 0003, 0006) predating the earliest asserted priority date highlight this
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`predictable evolution (with annotations by counsel):
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`Figure 2 (above) shows the evolution from “[m]onophonic ringtone
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`playback (current system)” to “[p]olyphonic ringtone playback (from end of
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`1999).” Id. at 0006. As noted in Exhibit 1074, the evolution depended upon new
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`technologies. One technology was to add “polyphonic functions” to mobile
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`phones. “Two evolutions of the ‘sound’ functions on mobile phones will first start
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`from mounting a function to simultaneously produce 3-4 sounds (chord playback
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`function) (Figure 2) … for playing ringtones” Id. at 0007. “ROHM Group and
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`Yamaha respectively released LSIs” which included polyphonic functionality. Id.;
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`see also id. at 0003 (“to improve the sound quality of the ringing tones is to
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`reproduce chords … [and] simultaneously reproduce three to four sounds”). The
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`Nikkei article was not presented to the Patent Office during prosecution.
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`The European wireless industry also recognized the evolution toward
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`polyphonic ringtones long before the Priority Application. Indeed, of its over 100
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`patent applications related to ringtones, Nokia has 17 separate patents and
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`applications with an earlier filing date than the ‘395 patent. Nokia also included
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`polyphonic WAV files with its well-known 9110 wireless phone released in 1999.
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`Exhibit 1079 ¶¶ 27-42. For example, the May 8, 1999 “FAQ page” of Nokia’s
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`website for the 9110 noted: “WAV files can be downloaded from the Internet …
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`The WAV files can also be used as ringtones.” Exhibit 1083 at 0004 (emphasis
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`added). This squarely meets the patentee’s statement in prosecution that WAV
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`files are polyphonic. No Nokia 9110 related documents were considered by the
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`Patent Office during prosecution.
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`Separately, by September 1999, Yamaha had developed—and was already
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`selling—a specialized chip (“the YMU757”) referenced in the Nikkei article
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`designed to be incorporated into “mobile phones” to provide “ringtones” which
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`had “polyphony of up to 4 sound[s]” simultaneously. See Exhibit 1020 at 0001.
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`“[T]he YMU757, designed for mobile phones and PDAs, now allows the download
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`and playback of user-selected sounds and melodies.” Exhibit 1053 at 0001. Like
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`the 9110, no YMU757 documents were considered during prosecution. This
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`consistent pattern of industry evolution confirms that—at best—the patentee
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`merely adapted an old idea using newer, known technology, which the Federal
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`Circuit has recognized is another quintessential example of obviousness. See
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`Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1160 (Fed. Cir. 2007)
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`(patent claiming “nothing more than the [prior art], updated with modern
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`electronics that were common by the time of the alleged invention,” was obvious).
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`Against this backdrop of industry evolution, the Priority Applications did
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`not advance the art. The Priority Applications did not mention “polyphonic audio
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`files” or discuss any aspect related to polyphony. Exhibit 1079 ¶¶ 80-105.
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`Similarly, the Priority Applications assumed the existence of the infrastructure
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`needed to transmit such ringtones such as wireless networks, and did not purport to
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`disclose any improvement to existing wireless networks. Simply put, the Priority
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`Applications merely reiterate what was already recognized in the industry.
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`The timeline of the inventor’s addition of the term “polyphonic audio files”
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`confirms that the Priority Applications did not advance the art. The inventor’s
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`applications on December 3, 1999, March 3, 2000, and August 16, 2002 did not
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`discuss any aspect of polyphony. The inventor later submitted two amendments
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`adding over sixty new claims on June 20 and June 24, 2003—none of which
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`referenced polyphony. Exhibit 1010 at 0447-52, 0347-359. Just two weeks later,
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`on July 8, 2003, the inventor submitted a third claim set devoted to polyphonic
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`audio files. Id. at 440-42. This new claim terminology only came after companies
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`such as Nokia, Verizon, and AT&T had developed the technology and network
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`infrastructure to commercialize “polyphonic” ringtones. Exhibits 1091-1093. For
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`example, in March 2002, Nokia touted that the “Nokia 3510 ringtones are
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`polyphonic” downloaded with a WAP browser. Exhibit 1087 at 0018-19.
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`Despite this significant industry development, none of the prior art asserted
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`in this Petition was before the Examiner. The inventor distinguished the prior art
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`for some claims based upon “polyphonic audio files”—without ever explaining
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`why the ‘395 patent disclosed polyphonic audio files but the prior art (allegedly)
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`did not. Exhibit 1010 at 0057-58. For claims 22 and 25 (prosecution claims 74
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`and 79), the patentee appeared to have distinguished prior art on the bases of
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`specific file formats such as WAV and MP3 (id. at 0061-62) yet those file formats
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`were readily present in the prior art as is shown in this Petition.
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`Finally, the fact that polyphonic audio files were an obvious evolution in the
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`wireless industry does not lead to the conclusion that the Priority Applications
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`disclosed polyphonic audio files. “Entitlement to a filing date does not extend to
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`subject matter which is not disclosed, but would be obvious over what is expressly
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`disclosed.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed.
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`Cir. 2008) (internal quotations and citations omitted). The standards are different
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`for obviousness and written description sufficient to claim priority. Polyphonic
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`audio files may have been obvious, but they surely were not disclosed at all—
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`much less sufficiently—in the Priority Applications.
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`For the reasons below, there is a reasonable likelihood that claims 22, 25, 30,
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`36, 39 and 40 are unpatentable in light of the prior art, warranting inter partes
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`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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`Case IPR2015-00391
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`‘395 Patent in the Eastern District of Texas on December 6, 2013 (Case No. 2:13-
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`cv-01059)
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`(“the Litigation”): Sprint Corporation, Sprint Communications
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`Company L.P., Sprint Solutions Inc., and T-Mobile USA, Inc. See Exhibit 1002.
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`C. Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
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`
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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
`D.
`Service Information Under 37 C.F.R. § 42.8(b)(4)
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`
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`Please address all correspondence to lead counsel at the addresses above.
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`Petitioners consent to electronic service by email at: kanderson@wileyrein.com,
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`fchapman@wileyrein.com, sfelder@wileyrein.com, shejny@mckoolsmith.com,
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`tstevenson@mckoolsmith.com, and nmathews@mckoolsmith.com.
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`E. Grounds for Standing Under 37 C.F.R. § 42.104(a)
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`
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`Petitioners certify pursuant to 37 C.F.R. § 42.104(a) that the ‘395 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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`
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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. 50-1129 with reference to Attorney Docket No. 79244.0187.
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`III.
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`IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R. § 42.104(b)
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`
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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(a), (b), or (e):
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`1.
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`9110 UM (Exhibit 1070), User’s Manual for Nokia 9110, published no later
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`than February 1, 1999. See Exhibit 1065 ¶¶ 4-6; Exhibit 1082 ¶¶ 5-13. The 9110
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`UM was not considered by the Office during prosecution.
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`The 9110 UM is properly considered prior art under at least 35 U.S.C. §§
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`102(a) and/or 102(b). The 9110 UM bears a copyright date of 1998 (Exhibit 1070
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`at 0002), and was distributed to customers on a CD with the 9110 by no later than
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`February 1, 1999. Exhibit 1065 ¶¶ 2-6; Exhibit 1082 ¶¶ 4-13; Stored Value
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`Solutions, Inc. v. Card Activation Techs. Inc., 499 F. App’x 5, 14 (Fed. Cir. 2012)
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`(user manual was printed publication given that it was dated prior to the critical
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`date and was in fact distributed to customers who purchased the software prior to
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`the critical date). The 9110 UM was also available on the internet no later than
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`February 1, 1999, such that any person interested and ordinarily skilled would have
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`been able to easily locate it. Exhibit 1082 ¶¶ 5-13; Exhibit 1065 ¶¶ 5-6. Thus, the
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`9110 UM is prior art under at least 35 U.S.C. § 102(a).
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`2.
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`Nokia 9110 FAQ (Exhibit 1083), published on the internet at least as early
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`as May 8, 1999. Exhibit 1087 ¶¶ 38-39 and 0078-81. The Nokia 9110 FAQ is
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`thus an “Internet publication[s] that [is] considered to be ‘printed publication[s]’
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`within the meaning of 35 U.S.C. §§ 102(a) and (b).” MPEP § 2128; see also Voter
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`Verified, Inc. v. Premier Election Solutions, Inc., 698 F.3d 1374, 1379-81 (Fed.
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`Cir. 2012) (online article that had been available on a public website by the critical
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`date qualified as a “printed publication” under 35 U.S.C. § 102(b)); Suffolk Techs.,
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`LLC v. AOL Inc., 752 F.3d 1358, 1364-65 (Fed. Cir. 2014) (post on an internet
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`newsgroup was a printed publication).
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`Moreover, the PTO has long accepted the Wayback Machine as a proper
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`means for establishing a website as prior art. See IPR2013-00086, Paper 66, at 29-
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`31 (accepting web sites as printed publications and citing cases accepting Wayback
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`Machine materials as sufficient authentication). The 9110 FAQ was not
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`considered by the Office during prosecution.
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`3.
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`Rizet
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`(Exhibit 1014),
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`Int’l Pub. No. WO 98/25397, entitled
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`“Telecommunication Device and a Method for Providing Ringing Information,”
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`published on June 11, 1998. Rizet was not considered during prosecution.
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`4.
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`Perez (Exhibit 1081), U.S. Patent No. 6,492,761, filed Jan. 20, 1998 and
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`issued Dec. 10, 2002. Perez was not considered by the Office during prosecution.
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`5.
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`Nikkei (Exhibit 1074), Music is From Ringing Tones, Game is from
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`Characters, Nikkei Electronics, November 15, 1999. Nikkei Electronics is a bi-
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`weekly magazine published since 1971. See http://www.nikkeibp.com/. This issue
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`was available and distributed to subscribers in hardcopy form in Japan in
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`November 1999. Exhibit 1102. In the United States, Nikkei was publicly
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`available at the University of California, Berkeley as early as January 2000.
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`Exhibit 1088 ¶ 7. If the patentee seeks to show a priority date prior to March 2000,
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`Petitioners expect to be able to introduce further evidence that Nikkei was
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`available in hardcopy form in Japan in November 1999. Thus, Nikkei is prior art
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`under 35 U.S.C. § 102(a).
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`Additionally,
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`the Board should consider Nikkei as evidence of
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`“simultaneous invention” that shows the level of ordinary skill in the art in 1999.
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`“Independently made, simultaneous inventions, made ‘within a comparatively
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`short space of time,’ are persuasive evidence that the claimed apparatus ‘was the
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`product only of ordinary mechanical or engineering skill.’” Geo M. Martin Co. v.
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`Alliance Mach. Sys. Int’l LLC, 618 F.3d 1294, 1305 (Fed. Cir 2010) (level of skill
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`in the art shown by a reference dated a year after the earliest asserted priority date
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`and using the contents of the reference to invalidate claims under obviousness).
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`6.
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`Nokia Press Releases (Exhibits 1096, 1098). These are press releases
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`issued by Nokia in 1999 (Exhibit 1096) and February 2000 (Exhibit 1098) which
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`were distributed widely (as is the purpose of press releases) and publicly available
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`on Nokia’s website at http://www.nokia.com/press/releases/index.html. One could
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`also subscribe to Nokia’s press releases on that website. Thus, these press releases
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`are prior art under 35 U.S.C. § 102(a).
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`7.
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`Rolf (Exhibit 1100 and 1099). U.S. Patent No. 7,065,342, filed as a
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`provisional application (60/167,179) on November 23, 1999 and issued on June 20,
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`2006 from U.S. non-provisional patent application no. 09/721,120 filed on
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`November 20, 2000. Therefore, Rolf is prior art under 35 U.S.C. § 102(e). Exhibit
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`1099 is U.S. Pat. No. 7,065,342. Exhibit 1100 is provisional application No.
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`60/167,179 and is cited in the claim charts and discussions below.
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`8.
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`Fritsch (Exhibit 1101). U.S. Patent No. 6,247,130, filed January 18, 2000,
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`entitled “Distribution of musical products by a web site vendor over the Internet,”
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`claiming priority
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`to U.S. Provisional Application Ser. Nos. 60/116,918,
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`60/116,910, 60/116,779, 60/116,917, 60/116,780, and 60/116,778, all of which
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`were filed on January 22, 1999. Thus, Fritsch is prior art under 35 U.S.C. § 102(e).
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`9.
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`Nykanen (Exhibit 1103). U.S. Patent No. 6,661,784, filed March 2, 1999
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`and claiming priority to a Finnish app