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`Case IPR2015-00392
`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
`
`v.
`
`
`SOLOCRON MEDIA, LLC
`Patent Owner
`
`
`
`
`
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`
`
`Case IPR2015-00392
`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.
`
`
`
`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 IPR2015-00392
`Petition for Inter Partes Review
`
`
`TABLE OF CONTENTS
`
`
`I. 
`
`INTRODUCTION AND BACKGROUND ........................................................ 1 
`
`II.  NOTICES, STATEMENTS AND PAYMENT OF FEES ................................. 5 
`
`A.  Real Party In Interest Under 37 C.F.R. § 42.8(b)(1) ..................................... 5 
`
`B.  Related Matters Under 37 C.F.R. § 42.8(b)(2) ............................................. 5 
`
`C.  Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) .......................... 5 
`
`D.  Service Information Under 37 C.F.R. § 42.8(b)(4) ....................................... 5 
`
`E.  Grounds for Standing Under 37 C.F.R. § 42.104(a) ..................................... 6 
`
`F.  Fees Under 37 C.F.R. § 42.103 ..................................................................... 6 
`
`III.  THE ‘395 PATENT ............................................................................................. 6 
`
`A.  Background .................................................................................................... 6 
`
`B.  Relevant Prosecution History of the ‘395 Patent .......................................... 7 
`
`IV. IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R. § 42.104(B) .......... 8 
`
`V.  HOW THE CHALLENGED CLAIMS ARE TO BE CONSTRUED UNDER
`37 C.F.R. § 42.104 (B) (3) ................................................................................. 13 
`
`VI. DETAILED EXPLANATION AND SUPPORTING EVIDENCE UNDER 37
`C.F.R. §§ 42.104(B)(4) AND (B)(5) ................................................................. 17 
`
`A.  The Challenged Claims Are Not Entitled to Claim Priority to Any Date
`Earlier Than March 2000. ........................................................................... 18 
`
`B.  Claims 1, 8 and 14 Are Anticipated By, Or Obvious Over, Rizet. ............. 22 
`
`C.  Claim 6 Is Obvious Over the Combination Of Rizet And The 1999 WAP
`Specification. ............................................................................................... 29 
`
`D.  Claim 8 Is Obvious Over the Combination Of Rizet And Either Valentine
`Or Nokia 9110 UM. .................................................................................... 33 
`
`E.  Claim 10 Is Obvious Over The Combination Of Rizet And Either SDMI Or
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`Case IPR2015-00392
`Petition for Inter Partes Review
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`Nikkei. ......................................................................................................... 36 
`
`F.  Claims 14 and 17 Are Obvious By Rizet In View Of The State Of The Art
`As Shown In Nikkei. ................................................................................... 41 
`
`G.  Claims 1, 8, 14 and 17 Are Anticipated by, Or Obvious Under, 9110 UM.
` ..................................................................................................................... 43 
`
`H.  Claim 6 Is Obvious In View of 9110 UM And One Of 1999 WAP
`Specification, 1999 Nokia Press Releases Or Nykanen. ............................ 52 
`
`I.  Claim 10 Is Obvious Over The Combination Of 9110 UM With Either
`Nikkei Or SDMI. ......................................................................................... 56 
`
`J.  Claims 14 and 17 Are Obvious Over The Combination Of 9110 UM And
`9110 FAQ. ................................................................................................... 58 
`
`K.  The Cited References Are Not Cumulative At This Point. ......................... 59 
`
`VII. CONCLUSION ................................................................................................. 60 
`
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`Case IPR2015-00392
`Petition for Inter Partes Review
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Bayer Schering Pharma AG v. Barr Labs., Inc.,
`575 F.3d 1341 (Fed. Cir. 2009) .......................................................................... 28
`
`Biogen, Inc. v. Berlex Laboratories, Inc.,
`318 F.3d 1132 (Fed. Cir. 2003) .......................................................................... 16
`
`Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co.,
`464 F.3d 1356 (Fed. Cir. 2006) .......................................................................... 32
`
`Geo M. Martin Co. v. Alliance Mach. Sys. Int’l LLC,
`618 F.3d 1294 (Fed. Cir 2010) ..................................................................... 10, 22
`
`Monsanto Co. v. Mycogen Plant Sci., Inc.,
`261 F.3d 1356 (Fed. Cir. 2001) .......................................................................... 22
`
`In re Mulder,
`716 F.2d 1542 (Fed. Cir. 1983) .......................................................................... 22
`
`New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co.,
`298 F.3d 1290 (Fed. Cir. 2002) .......................................................................... 18
`
`In re NTP Inc.,
`654 F.3d 1268 (Fed. Cir. 2011) .......................................................................... 18
`
`PowerOasis, Inc. v. T-Mobile USA, Inc.,
`522 F.3d 1299 ..................................................................................................... 19
`
`Suffolk Techs., LLC v. AOL Inc.,
`752 F.3d 1358 (Fed. Cir. 2014) ............................................................................ 9
`
`Typhoon Touch Techs., Inc. v. Dell, Inc.,
`659 F.3d 1376 (Fed. Cir. 2011) .......................................................................... 13
`
`Voter Verified, Inc. v. Premier Election Solutions, Inc.,
`698 F.3d 1374 (Fed. Cir. 2012) ............................................................................ 9
`
`
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`Case IPR2015-00392
`Petition for Inter Partes Review
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`
`PETITIONERS’ EXHIBIT LIST
`
`
`
`
`
`Exhibit No.
`
`Description
`
`
`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 Copy of Prosecution History for U.S. Patent App. 09/518,712,
`filed Mar. 3, 2000 (now U.S. Patent No. 6,496,692) (as produced
`by Solocron)
`Exhibit 1005 Exhibit Not Used
`
`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 Excerpts of Documents Showing Mr. Shanahan’s Prosecution
`and Litigation Experience
`Exhibit 1012 List of Patents and Patent Applications Issued to Nokia Relating
`to Ringtones
`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 1010
`
`Exhibit 1014
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`Petition for Inter Partes Review
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`
`Exhibit 1016
`
`Exhibit 1017
`
`Exhibit 1015 U.S. Patent No. 6,018,654, entitled “Method and Apparatus for
`Downloading Tones to Mobile Terminals,” filed October 29,
`1996, and issued January 25, 2000, to Valentine et al.
`(“Ericsson” or “Valentine”)
`“Ring My Bell,” The New Yorker, March 7, 2005. (downloaded
`from http://www.newyorker.com/magazine/2005/03/07/ring-my-
`bell)
`“The Sweet Sound of Success,” Time Magazine Europe, 2004
`(downloaded from
`http://content.time.com/time/magazine/article/0,9171,901040816
`-678568,00.html)
`“Pioneer of the Mobile Ringtone Business,” Mobile
`Entertainment Forum MEF Special Recognition Award, 2004
`Exhibit 1019 Declaration of Internet Archive and Copies of Various Websites
`
`Exhibit 1020 Exhibit Not Used
`
`Exhibit 1021 Exhibit Not Used
`
`Exhibit 1022 Exhibit Not Used
`
`Exhibit 1023 Exhibit Not Used
`
`Exhibit 1024 Exhibit Not Used
`
`Exhibit 1025 Exhibit Not Used
`
`Exhibit 1026 Exhibit Not Used
`
`Exhibit 1027 Exhibit Not Used
`
`Exhibit 1028 Exhibit Not Used
`
`Exhibit 1029 Exhibit Not Used
`
`Exhibit 1030 Exhibit Not Used
`
`
`Exhibit 1018
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`Exhibit 1031 Exhibit Not Used
`
`Exhibit 1032 Exhibit Not Used
`
`Exhibit 1033 Exhibit Not Used
`
`Exhibit 1034 Exhibit Not Used
`
`Exhibit 1035 Exhibit Not Used
`
`Exhibit 1036 Exhibit Not Used
`
`Exhibit 1037 Exhibit Not Used
`
`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)
`Exhibit 1039 Exhibit Not Used
`
`Exhibit 1040 Exhibit Not Used
`
`Exhibit 1041 Exhibit Not Used
`
`Exhibit 1042 Exhibit Not Used
`
`Exhibit 1043 Exhibit Not Used
`
`Exhibit 1044 Exhibit Not Used
`
`Exhibit 1045 Exhibit Not Used
`
`Exhibit 1046 Exhibit Not Used
`
`Exhibit 1047 Exhibit Not Used
`
`Exhibit 1048 Exhibit Not Used
`
`Exhibit 1049 Exhibit Not Used
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`Exhibit 1050 Exhibit Not Used
`
`Exhibit 1051 Exhibit Not Used
`
`Exhibit 1052 Exhibit Not Used
`
`Exhibit 1053 Exhibit Not Used
`
`Exhibit 1054 Exhibit Not Used
`
`Exhibit 1055 Exhibit Not Used
`
`Exhibit 1056 Exhibit Not Used
`
`Exhibit 1057 Exhibit Not Used
`
`Exhibit 1058 Exhibit Not Used
`
`Exhibit 1059 Exhibit Not Used
`
`Exhibit 1060 Exhibit Not Used
`
`Exhibit 1061 Exhibit Not Used
`
`Exhibit 1062 Exhibit Not Used
`
`Exhibit 1063 Exhibit Not Used
`
`Exhibit 1064 Exhibit Not Used
`
`Exhibit 1065 Declaration of Jari Valli
`
`Exhibit 1066 The IEEE Standard Dictionary of Electrical and Electronics
`Terms (6th ed. 1997)
`Exhibit 1067 Webster’s II New College Dictionary (2001)
`
`Exhibit 1068 Microsoft Press Computer Dictionary (1999)
`
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`Exhibit 1071
`
`Exhibit 1069 The Concise Oxford Dictionary (Judy Pearsall ed., Oxford
`University Press, 10th ed. 1999)
`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.)
`Exhibit 1072 Exhibit Not Used
`
`Exhibit 1073 Exhibit Not Used
`
`Exhibit 1074 Certified translation of Chapters 2-3 of “Nikkei Electronics”
`1999.11.15
`Exhibit 1075 Exhibit Not Used
`
`Exhibit 1076 Exhibit Not Used
`
`Exhibit 1077 Exhibit Not Used
`
`SDMI Portable Device Specification, Part I (July 8, 1988) and
`RIAA Press Release (July 13, 1999) (“SDMI Open Standard”)
`Exhibit 1079 Exhibit Not Used
`
`Exhibit 1080 Exhibit Not Used
`
`Exhibit 1081 Exhibit Not Used
`
`Exhibit 1082 Declaration of Erin Flaucher re Nokia 9110 with Exhibits
`
`9110 Nokia.com web page archived May 8, 1999 for “Frequently
`Asked Questions" (“9110 FAQ”)
`Exhibit 1084 Exhibit Not Used
`
`Exhibit 1085 Exhibit Not Used
`
`Exhibit 1086 Exhibit Not Used
`
`Exhibit 1087 Declaration of Internet Archive re Nokia Websites
`
`
`Exhibit 1078
`
`Exhibit 1083
`
`
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`Exhibit 1088 Declaration from Lisa Rowlison de Ortiz and Attachments
`
`Exhibit 1089 Declaration of Henry Houh, Ph.D., and CV
`
`Exhibit 1090 Exhibit Not Used
`
`Exhibit 1091
`Exhibit Not Used
`
`
`Exhibit 1092 Exhibit Not Used
`
`Exhibit 1093 Exhibit Not Used
`
`Exhibit 1094 Exhibit Not Used
`
`Exhibit 1095 Exhibit Not Used
`
`Exhibit 1096 Exhibit 1096 - Nokia Announces the Nokia WAP Browser (June
`30, 1999)
`The Nokia 9110i Communicator with WAP (February 23, 2000)
`
`Exhibit 1097
`
`Exhibit 1098 The Nokia 9110i Communicator offers WAP services to the
`large community of knowledge workers (February 23, 2000)
`Exhibit 1099 Exhibit Not Used
`
`Exhibit 1100 Exhibit Not Used
`
`Exhibit 1101 Exhibit Not Used
`
`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”)
`Exhibit 1104 Wireless Application Protocol - Wireless Markup Language
`Specification, Version 1.1, June 16, 1999
`Exhibit 1105 WAP References From 1997-99
`
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`Case IPR2015-00392
`Petition for Inter Partes Review
`
`I.
`
`INTRODUCTION AND BACKGROUND
`
`
`
`Petitioners Cellco Partnership d/b/a Verizon Wireless and AT&T Mobility
`
`LLC request inter partes review of claims 1, 6, 8, 10, 14, and 17 (“the challenged
`
`claims”) of U.S. Patent No. 7,257,395 (“the ‘395 Patent”) (Exhibit 1001). Each
`
`challenged claim relates to personalizing ringtones for telephones—“digital audio
`
`files…for use as an indicia of an incoming communication”—a concept that was
`
`known long before the earliest date to which these claims may claim priority.
`
`With respect to the independent claims (1 and 14), the personalization of
`
`ringtones had been developed long before Mr. Shanahan’s earliest priority date by
`
`entities such as Nokia, Ericsson, and Philips. Exhibits 1012, 1014-15. In 1998,
`
`Philips (via the “Rizet” reference) described a “telecommunications device and a
`
`remote database containing a variety of alternative forms of user selectable and
`
`downloadable ringing information.” Exhibit 1014 at 1. Additionally, as far back
`
`as 1996, a Finnish inventor, Vesa-Matti Paananen designed a product called
`
`Harmonium, which allowed users to personalize phones with ringtones delivered
`
`over the air. Exhibit 1016 at 1; Exhibits 1017-18.
`
`Similarly, Nokia was at the forefront of wireless phone personalization. For
`
`example, Nokia has 17 separate patents and applications with an earlier filing date
`
`than the ‘395 patent related to the delivery and personalization of ringing tones.
`
`Exhibit 1012. In 1999, Nokia introduced and sold the Nokia 9110—a wireless
`
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`phone in which the user could download “WAV” digital audio files from the
`
`Internet and program those files as ringtones. Nokia included WAV files for use as
`
`ringtones on a CD with its 9110 product in 1999. The 9110 is described by its
`
`user manual, which recites in detail the operation of the device. Exhibit 1070.
`
`Exhibit 1074 is a November 1999 Nikkei Electronics article describing the
`
`evolution of electronic music delivery—including ringtone technology—and the
`
`fundamental technologies that supported that evolution. As noted in Exhibit 1074,
`
`the delivery of digital audio files as “ringtones” had long been known and already
`
`developed by industry. Figures 4 (Exhibit 1074 at 0003) and Figure 2 (id. at
`
`0006) provide highlights about the evolution of music details from 1999.
`
`In particular, the dependent challenged claims (claims 6, 8, 10 and 17) rely
`
`heavily upon the knowledge of skill in the art. Each of these claims recites
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`elements that are sparsely described in the specification, yet which were fully
`
`known to those in the art. Petitioners do not concede that these claims are enabled
`
`by these sparse references. However, if these claims are enabled, it is only due to
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`heavy reliance on the knowledge of one skilled in the art to fill the many missing
`
`gaps. Because the ‘395 necessarily relies upon the knowledge of one skilled in the
`
`art to fill in the missing gaps and provide enablement for these terms, that
`
`knowledge is similarly available to render these claims obvious.
`
`The specification reveals the paucity of support for the dependent claims.
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`For example, claim 6 adds a single element: a “WAP browser.” The ‘395 patent
`
`has one sentence related to WAP: “[s]uch a browser may be a Wireless
`
`Application Protocol (WAP) compliant browser for supporting wireless Internet
`
`services.” Exhibit 1001 at 6:34-36. Similarly, claim 8 recites a “characteristic”
`
`indicative of a “caller” which is also mentioned in only a single small passage. Id.
`
`at 7:66-8:2. Claim 10 recites “prevent[ing] the unauthorized distribution of a
`
`digital audio file” but the ‘395 patent’s only discussion “unauthorized distribution”
`
`is a small oblique passage referencing “software that conforms with the [then-
`
`already-known] Secure Digital Music Initiative (SDMI).” Id. at 9:59-63. Claim 14
`
`recites a litany of file formats, such as WAV, which were already known in the art
`
`and for which the ‘395 patent adds no teaching not already known.
`
`These features were all well-known in the art. For example, as detailed
`
`below, WAP was an industry-wide effort that started in 1997—two years before
`
`the claimed priority date—as an effort to address the problem of providing Internet
`
`access to wireless devices. By 1999, virtually every major wireless industry
`
`participant was involved in developing WAP products based upon the WAP
`
`specifications released by a standards-setting group. See generally Exhibit 1104.
`
`The ‘395 inventor did not contribute to this effort and instead included only a
`
`passing reference to these already-known WAP browsers in his specification.
`
`Similarly, as detailed in Section VI.E below, SDMI was a large industry
`
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`effort announced in July 1999 to address the known problem of copyright
`
`infringement. SDMI promulgated a standard for protecting content (such as audio
`
`files) downloaded from the Internet from unauthorized distribution. See Exhibit
`
`1078. The ‘395 patent briefly mentions “SDMI” as a known technology, but did
`
`not contribute in any fashion to the recognition of the problem (copyright
`
`protection) or the solution (systems such as SDMI to protect copyrighted content).
`
`Thus, there is nothing independently patentable in the challenged claims
`
`because those claims all recite elements that were: (a) widely known and
`
`recognized in the industry; and (b) not independently described, enabled, or
`
`improved in any fashion in the ‘395 patent. One notable point is that the
`
`December 1999 provisional to which the ‘395 contains priority did not contain
`
`anything about: WAP, copyright/SDMI, “characteristics associated with a caller,”
`
`or the many formats claimed in claim 17 (“MIDI, MPEG, [], WAV, PCM,
`
`Windows Media Audio code (WMA), or Adaptive Transform Acoustic Coding
`
`(ATRAC)”) other than a reference to MP3. The references to these claim elements
`
`that exists in the specification were all added in the March 2000 application—after
`
`each of these technologies had been developed by others in the industry.
`
`For the reasons below, there is a reasonable likelihood that claims 1, 6, 8, 10,
`
`14, and 17 of the ‘395 patent are unpatentable in light of the prior art, warranting
`
`inter partes review.
`
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`
`II. NOTICES, STATEMENTS AND PAYMENT OF FEES
`
`A. Real Party In Interest Under 37 C.F.R. § 42.8(b)(1)
`
`
`
`The real parties in interest are Cellco Partnership d/b/a Verizon Wireless and
`
`AT&T Mobility LLC.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`
`
`
`Solocron sued the following entities (and Petitioners) for infringement of the
`
`‘395 Patent in the Eastern District of Texas (Case No. 2:13-cv-01059) (hereinafter,
`
`“the Litigation”): Sprint Corporation, Sprint Communications Company L.P.,
`
`Sprint Solutions Inc., and T-Mobile USA, Inc. See Exhibit 1002.
`
`C. Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`
`
`
`Petitioners designate lead and back-up counsel as noted below. Powers of
`
`attorney pursuant to 37 C.F.R. § 42.10(b) accompany this Petition.
`
`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
`
`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)
`
`Please address all correspondence to lead counsel at the addresses above.
`
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`Case IPR2015-00392
`Petition for Inter Partes Review
`
`Petitioners consent to electronic service by email at: kanderson@wileyrein.com,
`
`fchapman@wileyrein.com, sfelder@wileyrein.com, shejny@mckoolsmith.com,
`
`tstevenson@mckoolsmith.com, and nmathews@mckoolsmith.com.
`
`E. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`
`
`
`Petitioners certify pursuant to 37 C.F.R. § 42.104(a) that the ‘395 patent is
`
`available for inter partes review, and that Petitioners are not barred or estopped
`
`from requesting inter partes review based on the grounds herein. Petitioners
`
`certify this petition is filed within one year of the service of the Complaint above.
`
`F.
`
`Fees Under 37 C.F.R. § 42.103
`
`
`
`Petitioners concurrently submit fees of $23,000. If more fees are necessary
`
`to accord this Petition a filing date, authorization is granted to charge the same to
`
`Deposit Account No. 50-1129 with reference to Attorney Docket No. 79244.0187.
`
`III. THE ‘395 PATENT
`A. Background
`
`The ‘395 patent is part of a family of nearly twenty patents owned by
`
`Solocron Media, LLC (“Solocron”), a small company in Tyler, Texas. The ‘395
`
`patent was filed on August 16, 2002, and purports to claim priority to applications
`
`dating back to December 1999. Exhibit 1001. It generally relates to personalizing
`
`wireless telephones with ringtones. Id. at 1:13-16. The disclosures of the ‘395
`
`patent and its priority applications, however, do not support the features claimed
`
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`three-and-a-half years after the earliest asserted priority date.
`
`Figure 4 of the ‘395 patent illustrates that the original disclosures were
`
`vague and amorphous and bear little
`
`resemblance to the ringtone matter the
`
`patentee sought to capture years later.
`
`In contrast, the ‘395 patent purports to
`
`cover a wireless telephone that includes
`
`
`
`a communications link for connecting to a database storing polyphonic audio files,
`
`a display screen, an enhanced speaker, processing circuitry, and programmable
`
`memory. Id. at 15:25-46 and 16:13-34.
`
`The inventor admits that he did not invent ringtones, conceding during
`
`prosecution of a related application that the concept of ringtones was known prior
`
`to his earliest filing date. Exhibit 1004 at 0095-96, 98. Mr. Shanahan’s concession
`
`is required by the expansive body of pre-1999 ringtone related prior art. As
`
`mentioned above, well before Mr. Shanahan’s earliest priority date, entities such as
`
`Nokia, Ericsson, and Phillips pioneered and patented inventions relating to
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`customizing mobile phones with ringtones. Exhibits 1012, 1014-15.
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`B. Relevant Prosecution History of the ‘395 Patent
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`On August 16, 2002, the patentee filed U.S. application no. 10/223,200 (“the
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`August 2002 application”), which matured into the ‘395 patent. The Patent Office
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`rejected all claims of the August 2002 application on a restriction requirement.
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`Exhibit 1010 at 306. Two more rejections followed. Id. at 0173; id. at 0080. All
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`pending claims were allowed without explanation on June 18, 2007. Id. at 0023.
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`IV.
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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 claims 1, 6, 8, 10, 14, and 17 in
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`view of the references below, which are all prior art under at least 102(a). None of
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`the art was considered by the Examiner with the exception of the Valentine
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`reference which is cited as a secondary reference.
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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. 9110 UM
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`is properly considered prior art under at least 35 U.S.C. §§ 102(a) and/or 102(b).
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`9110 UM bears a copyright date of 1998 (Exhibit 1070 at 0002), and was
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`distributed to customers on a CD with the 9110 by no later than February 1, 1999.
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`Exhibit 1065 ¶¶ 2-6; Exhibit 1082 ¶¶ 4-13. 9110 UM was also available on the
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`Internet no later than February 1, 1999, such that any person interested and
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`ordinarily skilled would have been able to easily locate it. Exhibit 1082 ¶¶ 5-13;
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`Exhibit 1065 ¶¶ 5-6. 9110 UM is prior art under 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). The PTO has long
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`accepted the Wayback Machine as a proper means for establishing a website as
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`prior art. See IPR2013-00086, Paper 66, at 29-31.
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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 is prior art under 35 U.S.C. § 102(a), (b).
`
`4.
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`Nikkei (Exhibit 1074), November 15, 1999. Nikkei Electronics is a bi-
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`weekly magazine published since 1971. See http://www.nikkeibp.com/. This
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`issue 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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`5.
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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).
`
`6.
`
`Nykanen (Exhibit 1103). U.S. Patent No. 6,661,784, filed Mar 2, 1999 and
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`claiming priority to a Finnish application filed March 3, 1998, and issued on
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`December 9, 2003. Thus, Nykanen is prior art under 35 U.S.C. § 102(e).
`
`7.
`
`SDMI Open Standard (Exhibit 1078), including the SDMI Portable
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`Device Specification, Part I, dated July 8, 1998, and the RIAA Press Release dated
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`July 13, 1999 (“SDMI Publishes Open Standard for Portable Devices”), which
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`documents its public availability as an open standard published by an organization
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`having over 110 members from the “music, consumer electronics and information
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`technology industries,” including Philips, Sony, Sharp, Yamaha, and Samsung.
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`SDMI Open Standard is prior art under 35 U.S.C. § 102(a).
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`8.
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`1999 WAP Specification (Exhibit 1104). “Wireless Application Protocol
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`Wireless Markup Language Specification Version 1.1” is dated “16-Jun-1999” and
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`is prior art under § 102(a). The 1999 WAP Specification bears a copyright date of
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`“Copyright Wireless Application Protocol Forum, Ltd, 1998, 1999” on the bottom
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`of every page. Id. The 1999 WAP Specification states that “[t]his document is
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`available
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`online
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`in
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`the
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`following
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`formats:
`
`
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`PDF
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`format
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`at
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`http://www.wapforum.org/.” Id. at 0006. On June 30, 1999, a press release was
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`issued saying announcing “New Wireless Application Protocol Version 1.1 (30
`
`June 1999).” Exhibit 1105 at 0085; see also id. at 21. These specifications were
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`referenced by press releases issued by companies such as Nokia and others. E.g.,
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`Exhibit 1105 at 0071 (August 9, 1999 press release announcing that “Nokia
`
`implements new WAP 1.1 specifications”); id. at 0020; see also id. 0014, 0017
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`(further reference to WAP 1.1 compliant products). 1999 WAP Specification is
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`clearly prior art under 35 U.S.C. 102(a). If patentee attempts to challenge the prior
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`art status of this reference, Petitioners would introduce additional evidence
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`establishing its public availability as of its release in June 1999.
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`9.
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`Valentine (Exhibit 1015). U.S. Patent No. 6,018,654, entitled “Method and
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`Apparatus for Downloading Tones to Mobile Terminals,” which was filed October
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`29, 1996 and issued January 25, 2000, to Valentine et al. This is prior art under §
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`102(e) regardless of the priority date and § 102(a) if claim 8 (for which it is cited)
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`is not permitted to claim priority to the December 1999 provisional.
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`
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`Petitioners request that claims 1, 6, 8, 10, 14, and 17 be cancelled based
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`upon the following grounds, as detailed below (including relevant claim
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`constructions): Ground 1: claims 1, 8, and 14 as anticipated by, or obvious under,
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`Rizet; Ground 2: claim 6 is obvious over the combination of Rizet and The 1999
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`WAP Specification; Ground 3: claim 8 is obvious over the combination of Rizet
`
`and Either Valentine or Nokia 9110 UM; Ground 4: claim 10 is obvious over the
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`combination of Rizet and Either SDMI Or Nikkei ; Ground 5: claims 14 and 17
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`are obvious over the combination of Rizet and Nikkei; Ground 6: claims 1, 8, 14,
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`and 17 are anticipated by, or obvious under, 9110 UM; Ground 7: claim 6 is
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`obvious under the combination of 9110 UM And One Of 1999 WA Specification,
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`1999 Nokia Press Releases Or Nykanen; Ground 8: claim 10 is obvious under the
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`combination of 9110 UM And Either Nikkei or SDMI; and Ground 9: claims 14
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`and 17 are is obvious under the combination of 9110 UM And 9110 FAQ.
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`V. HOW THE CHALLENGED CLAIMS ARE TO BE CONSTRUED
`UNDER 37 C.F.R. § 42.104 (b) (3)
`
`
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`In this proceeding, claim terms are given their broadest reasonable
`
`interpretation consistent with the specification and prosecution history. See Office
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`Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012); 37 C.F.R.
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`§ 100(b). The broadest reasonable interpretation of the relevant terms is as follows:
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`“Capable of.” The challenged claims all recite the term “capable of” in the
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`context of: “a communications link capable of connecting substantially directly to
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`a database….” For purposes of this IPR only, the “capable of” clauses do not
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`requ