IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Attorney Docket No.: 01869-10IP759
`
` Shanahan
`In re Patent of:
`U.S. Patent No.: 7,742,759
`Issue Date:
`Jun. 22, 2010
`Appl. Serial No.: 11/633,122
`Filing Date:
`Dec. 2, 2006
`Title:
`METHODS AND APPARATUSES FOR PROGRAMMING
`USER-DEFINED INFORMATION INTO ELECTRONIC
`DEVICES
`
`
`
`Declaration of Mark Lanning
`Regarding U.S. Patent No. 7,742,759
`
`I, Mark Lanning, a resident of Greenville, Texas, declare as follows:
`
`1.
`
`I have been retained by McKool Smith, P.C. and Wiley Rein LLP to
`
`provide my opinions concerning the validity of U.S. Patent No. 7,742,759 (“the
`
`’759 Patent”) (Ex. 1001). McKool Smith and Wiley Rein are compensating me for
`
`my time at the rate of $550 per hour.
`
`2. My declaration contains the following sections beginning at the
`
`designated pages:
`
`I.
`Basis for My Opinion ................................................................. 3
`II.
`Introduction and Qualifications .................................................. 6
`III. My Understanding of the Governing Law ................................. 7
`A. Types of Claims—Dependent and Independent Claims ....... 7
`B. Patentability and Validity of Claims ..................................... 8
`C. IPR Proceedings and Claim Interpretation ........................... 9
`D. Relevant Time Period .......................................................... 10
`E. Level of Ordinary Skill in the Art and Relevant Timeframe11
`IV. The ’759 Patent ........................................................................ 12
`
`
`
`
`AT&T - Exhibit 1009
`
`

`

`Attorney Docket No.: 01869-10IP759
`U.S. Patent No. 7,742,759
`
`
`A. Technical Overview of the ’759 Patent ............................... 12
`V. Analysis of the ’759 Patent Based on Merritt .......................... 14
`A. United States Patent No. 6,421,429 (“Merritt”) ................. 14
`B. Invalidity of Independent Claim 53 .................................... 16
`C. Invalidity of Dependent Claim 54 ....................................... 27
`D. Invalidity of Dependent Claim 56 ....................................... 28
`E. Invalidity of Dependent Claim 59 ....................................... 30
`F. Invalidity of Dependent Claim 64 ....................................... 33
`G. Invalidity of Dependent Claim 65 ....................................... 34
`VI. Analysis of the ’759 Patent Based on Gaffney ......................... 35
`A. WIPO Patent Application No. WO 98/19438 (“Gaffney”) . 35
`B. Invalidity of Independent Claim 53 .................................... 37
`C. Invalidity of Dependent Claim 54 ....................................... 43
`D. Invalidity of Dependent Claim 59 ....................................... 44
`VII. Analysis of the ’759 Patent Based over Gaffney in view of
`Merritt ................................................................................................. 46
`VIII. Analysis of the ’759 Patent Based on Apache ......................... 46
`A. Apache ................................................................................. 46
`B. Invalidity of Independent Claim 53 .................................... 47
`C. Invalidity of Dependent Claim 56 ....................................... 51
`D. Invalidity of Dependent Claim 64 ....................................... 52
`E. Invalidity of Dependent Claim 65 ....................................... 52
`IX. Analysis of the ’759 Patent Based over Apache in view of
`Merritt ................................................................................................. 53
`X.
`Compatibility of the References ............................................... 53
`XI. Secondary Considerations of Non-Obviousness ...................... 54
`XII. Supplementation ....................................................................... 55
`XIII. Conclusion ................................................................................ 55
`
`
`
`
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`
`2
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`Attorney Docket No.: 01869-10IP759
`U.S. Patent No. 7,742,759
`
`
`Basis for My Opinion
`3.
`
`In preparing this declaration, I have reviewed:
`
`• US 6,496,692 to Michael E. Shanahan--Methods and apparatuses
`for programming user-defined information into electronic devices
`• US 7,257,395 to Michael E. Shanahan--Methods and apparatuses
`for programming user-defined information into electronic devices
`• US 7,295,864 to Michael E. Shanahan--Methods and apparatuses
`for programming user-defined information into electronic devices
`• US 7,319,866 to Michael E. Shanahan--Methods and apparatus for
`programming user-defined information into electronic devices
`• US 7,742,759 to Twenty Year Innovations, Inc.--Methods and
`apparatuses for programming user-defined
`information
`into
`electronic devices
`• US 8,249,572 to Solocron Media, LLC--Methods and apparatuses
`for programming user-defined information into electronic devices
`• US 8,594,651 to Solocron Media, LLC--Methods and apparatuses
`for programming user-defined information into electronic devices
`• US 5,809,415 to Unwired Planet--Core Wireless Client/Server
`Architecture Patent (WAP).
`• US 5,784,001 to Motorola--Method and apparatus for presenting
`graphic messages in a data communication receiver
`• Prosecution history for US 6,496,692 patent
`• Prosecution history for US 7,257,395 patent
`• Prosecution history for US 7,295,864 patent
`• Prosecution history for US 7,319,866 patent
`• Prosecution history for US 7,742,759 patent
`• Prosecution history for US 8,249,572 patent
`• Prosecution history for US 8,594,651 patent
`• Prosecution history for US 5,809,415 patent
`• Prosecution history for US 5,784,001 patent
`
`3
`
`I.
`
`
`
`
`

`

`Attorney Docket No.: 01869-10IP759
`U.S. Patent No. 7,742,759
`
`• Solocron Media, LLC’s P.R. 3-1 Infringement Contentions and
`supporting claim charts, dated Apr. 4, 2014 and served in Solocron
`v. AT&T Mobility, et al. (E.D. Tex.) (Case No. 2-13-cv-1059)
`• Defendants’ P.R. 3-3 Invalidity Contentions and supporting claim
`charts, dated June 24, 2014 and served in Solocron v. AT&T
`Mobility, et al. (E.D. Tex.) (Case No. 2-13-cv-1059)
`• Exhibits cited in the IPR Petition at Attorney Docket No. 01869-
`10IP651-1 regarding U.S. Patent No. 8,594,651
`• Exhibits cited in the IPR Petition at Attorney Docket No. 01869-
`10IP651-2 regarding U.S. Patent No. 8,594,651
`• Exhibits cited in the IPR Petition at Attorney Docket No. 01869-
`10IP651-3 regarding U.S. Patent No. 8,594,651
`• Exhibits cited in the IPR Petition at Attorney Docket No. 01869-
`10IP759 regarding U.S. Patent No. 7,742,759
`• US 5,794,142 to Nokia--Core SMS Patent: Mobile terminal having
`network services activation through the use of point-to-point short
`message service.
`• US 6,038,295 to Siemens--Apparatus and method for recording,
`communicating and administering digital images.
`• US 6,487,602 to Ericsson--System and method for accessing the
`internet in an internet protocol-based cellular network.
`• US 6,795,711 to Nokia--Multimedia Message Content Adaptation.
`• US 6,192,257 to Lucent--Wireless communication terminal having
`video image capability.
`• US 5,797,089 to Ericsson--A cellular phone combined with a PDA
`with associated programs.
`• US 5,793,416 to LSI (Wireless system for audio, video & data
`signals).
`• US 6,006,105 to LSI (Multi-Freg, Multi-Protocol Wireless Device)
`• US 5,764,235 to Insight (System for Xmit Graphical images from
`server to client)
`• US 5,956,716 to InterVu (Delivery of Video data over a computer
`network)
`
`4
`
`
`
`
`

`

`Attorney Docket No.: 01869-10IP759
`U.S. Patent No. 7,742,759
`
`• US 6,108,655 to Cisco (Transmitting Images & Objects over a
`computer network).
`• WO 1997030556 to Ericsson. Sending graphic images to mobile
`terminals.
`• WO 1998043177 to Intel. System for dynamically transcoding
`data transmitted between computers over a communication link.
`• US 6,516,135 to Matsushita (Video Processing with conversion of
`image compression format).
`• US 6,092,114 to Siemens (performing file conversions of message
`attachments transmitted between computers).
`• US 6,453,340 to Matsushita (Data Converter in an email network)
`• WO1999021351 to Adobe.
`• US 6,421,429 to AT&T (Network-based System Enabling Image
`Communications)
`• US 6,741,608 to Avaya (transcoding streaming data in telecom
`system)
`• US 5,524,137 to AT&T (Multimedia Messaging System)
`• US 6,282,714 to Sharewave (Wireless Home Computer System)
`• US 6,813,777 to Rockwell Collins (Passenger Entertainment
`System)
`• “Connectix Ships Color QuickCam 2 for Windows: Next
`Generation of Best-Selling Digital Camera; Connectix QuickCam
`2 Delivers Sharper Images, Enhanced Software, and Easy
`Applications Integration.” Business Wire, March 10, 1997
`(available
`at
`http://www.thefreelibrary.com/Connectix+Ships+Color+QuickCa
`m+2+for+Windows %3A+Next+Generation+of...-a019185327)
`(last visited Nov. 18, 2014)
`• “First mobile videophone introduced,” CNN.com, May 18, 1999
`(available
`at
`http://www.cnn.com/TECH/ptech/9905/18/japan.phonetv/)
`(last
`visited Nov. 18, 2014)
`
`
`
`
`5
`
`

`

`Attorney Docket No.: 01869-10IP759
`U.S. Patent No. 7,742,759
`
`
`II.
`
`Introduction and Qualifications
`4.
`
`I am currently the president of two consulting companies: Telecom
`
`Architects, Inc. and Reticle Consulting, Inc. I have over 38 years’ experience in a
`
`wide variety of communication technologies including, but not limited to, cellular
`
`networks and their components (e.g., base stations, mobile switching centers, and
`
`handsets), advanced cellular network based services (e.g., Short Message Service
`
`(“SMS”), Enhanced Message Service (“EMS”), and Multimedia Message Service
`
`(“MMS”)), Public Switched Telephone Network (“PSTN”) networks, advanced
`
`services that use Intelligent Networking (“IN”) network elements, and various
`
`signaling protocols (e.g., Signaling System 7 (“SS7”) and Integrated Digital
`
`Services Network (“ISDN”)).
`
`5.
`
`I received a B.S. in Computer Science from Southern Methodist
`
`University (SMU) in 1983.
`
`6.
`
`In 1985, I was hired by Digital Switch Corporation, which is now part
`
`of Alcatel, where I was a software development manager on the team responsible
`
`for converting DSC’s PSTN telephone switch into a Mobile Switching Center
`
`(MSC) for Motorola to sell as a part of their cellular product offering in the U.S.
`
`and many other countries. In 1991, I began working as a consultant to Motorola
`
`for its “SuperCell” base station product and as a consultant to British Telecom on
`
`
`
`
`6
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`

`

`Attorney Docket No.: 01869-10IP759
`U.S. Patent No. 7,742,759
`
`its current analog cellular network and its planned Global System for Mobile
`
`Communications (“GSM”) network.
`
`7. My work as a consultant evolved over the years into many different
`
`cellular network and equipment design and implementation projects. Since 1995, I
`
`have also provided second generation (2G) and third generation (3G) Code
`
`Division Multiple Access (“CDMA”) network architecture and equipment design
`
`and implementation consulting services to companies such as Sprint, Nextel,
`
`Nokia, and Ericsson.
`
`8.
`
`Further detail on my education, work experience, and the cases in
`
`which I have previously given testimony in the past four years is contained in my
`
`CV in Appendix 1.
`
`III. My Understanding of the Governing Law
`A. Types of Claims—Dependent and Independent Claims
`9.
`I understand that patents have two types of claims – independent
`
`claims and dependent claims. I understand that independent claims only include
`
`the aspects stated in those independent claims. I further understand that dependent
`
`claims include the aspects stated in the dependent claim plus the aspects stated in
`
`the independent claim from which the dependent claim depends.
`
`
`
`
`7
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`

`

`Attorney Docket No.: 01869-10IP759
`U.S. Patent No. 7,742,759
`
`
`Patentability and Validity of Claims
`
`I understand that an invention described in a patent must be new, it
`
`B.
`10.
`
`cannot be obvious, and it must be useful to be a valid patent. To determine whether
`
`a patent meets these requirements, one must look at each of the claims. I
`
`understand that a patent claim is not valid if it is not new, obvious, or not useful.
`
`11.
`
`I understand that prior art refers to publically available information
`
`(e.g., published, on sale, or in public use in the United States) before the “critical
`
`date” of a particular patent claim. I understand that the critical date of the ’759
`
`Patent is one year before the patent’s earliest filing date (or “priority date”).
`
`12.
`
`I understand that a patent claim is not new (which I understand to be
`
`termed “anticipated”) if each element of the claim is disclosed expressly or
`
`inherently in a single prior art reference.
`
`13.
`
`I further understand that the determination of whether a claim is
`
`obvious is evaluated from the perspective of a person of ordinary skill in the
`
`relevant area of the invention, at the time the invention was made. In analyzing
`
`obviousness, I understand that it is important to understand the scope of the claims
`
`at issue, the level of skill in the relevant area of the invention, the scope and
`
`content of the prior art references, the differences between the prior art references
`
`and the claims, and any secondary considerations that would demonstrate that an
`
`invention is not obvious. I also understand that if a technique has been used to
`8
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`

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`Attorney Docket No.: 01869-10IP759
`U.S. Patent No. 7,742,759
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`improve one system or method, and a person of ordinary skill in the relevant area
`
`would improve similar systems or methods in the same way, using the technique is
`
`obvious unless actual application is beyond his or her skill to do so. I understand
`
`that if more than one reference is used, there must be a motivation to combine the
`
`references through an explicit or implicit teaching, suggestion or motivation to
`
`arrive at the invention, or of prior art references, such as common sense of a person
`
`of skill in the relevant area, market demand, or an industry need for the invention.
`
`14.
`
`I understand that secondary considerations indicating that a patent
`
`claim is not obvious may include evidence of commercial success caused by the
`
`invention, evidence of a recognized need that was solved by the invention,
`
`evidence that others copied the invention, or evidence that the invention achieved a
`
`surprising result. I understand that such secondary considerations must have a
`
`causal relationship to the elements of a claim.
`
`15.
`
`I am unaware of any such secondary considerations relating to any
`
`claim (namely, claims 1 through 67) of the ’759 patent
`
`C.
`16.
`
`IPR Proceedings and Claim Interpretation
`
`I understand that this “inter partes review” (“IPR”) proceeding is a
`
`proceeding before the United States Patent and Trademark Office (“USPTO”) for
`
`challenging the patentability of the ’759 patent. I understand that an IPR is
`
`
`
`
`9
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`

`Attorney Docket No.: 01869-10IP759
`U.S. Patent No. 7,742,759
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`conducted by the Patent Trial and Appeal Board (the “Board”) if a trial is
`
`instituted.
`
`17.
`
`I understand that in an IPR proceeding, the Board gives the challenged
`
`patent’s claims their broadest reasonable interpretation that is consistent with the
`
`specification of the patent. I understand that the specification of a patent includes
`
`all of the figures, background discussions, any detailed description, examples, and
`
`claims within the patent document.
`
`18.
`
`I also understand that that the Board will refer to the specification of
`
`the patent to see if a claim term has been defined by the patent applicant, and if
`
`not, will apply the broadest reasonable ordinary meaning from the perspective of a
`
`person of ordinary skill in the relevant area. However, I further understand that if a
`
`term has no previous meaning to those of ordinary skill in the relevant area, its
`
`meaning then must be found in the patent. Here, none of the claim terms at issue
`
`require a construction. Thus, I am analyzing all terms under their plain and
`
`ordinary meaning. I have also provided an analysis in the alternative for claims
`
`that Solocron offered a claim construction in the district court litigation.
`
`D. Relevant Time Period
`19.
`I understand that the earliest patent application filing leading to ’759
`
`patent (Ex. 1001) was made on December 6, 1999. I also understand that the
`
`owner of the ’759 patent might try to prove an earlier date of invention, up to one
`10
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`

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`Attorney Docket No.: 01869-10IP759
`U.S. Patent No. 7,742,759
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`year prior to the earliest filing date of the patent, such as when the invention has
`
`been publically available. The earliest filing date was December 6, 1999.
`
`Therefore, I have considered the critical date for prior art purposes in my analysis
`
`of the ’759 patent to be one year prior, which was December 6, 1998.
`
`E.
`Level of Ordinary Skill in the Art and Relevant Timeframe
`20. The stated invention of the ’759 patent relates to an apparatus that
`
`allows a user to program user-defined audio and video information into a
`
`programmable electronic device. The ’759 Patent at 1:59-64.
`
`21. Accordingly, I believe that a person of ordinary skill in the art in the
`
`field of developing or using the technology of the ’759 patent would have at least a
`
`bachelor’s degree in electrical engineering, computer engineering, computer
`
`science or equivalent in combination with at least three or more years of computer
`
`programming experience. This description is approximate, and a higher level of
`
`education or skill might make up for less experience, and vice-versa.
`
`22.
`
`I believe that I qualify as at least a person of ordinary skill in the art in
`
`the fields of using and developing the technology of the ’759 patent, as described
`
`above, and that I have a sufficient level of knowledge, experience and education to
`
`provide an expert opinion in these fields of the ’759 patent. This is true regardless
`
`of whether the testimony provided in this opinion is given in the past during the
`
`relevant time period described above or present tense.
`11
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`

`

`Attorney Docket No.: 01869-10IP759
`U.S. Patent No. 7,742,759
`
`
`IV. The ’759 Patent
`A. Technical Overview of the ’759 Patent
`23. As described above, the disclosed invention of ’759 patent is a device
`
`that allows a user to program user-defined audio and video information into a
`
`programmable electronic device. Contrary to the disclosed invention, Solocron has
`
`asserted this patent against AT&T’s and Verizon’s servers that process Multimedia
`
`Messaging Service (“MMS”) messages. Further, the ’759 patent specification
`
`makes no reference to MMS or Short Message Service (SMS) types of messaging
`
`services. Instead, the ’759 patent specification and claims are directed, at the most
`
`basic level, to a user selecting, editing, converting and downloading audio or video
`
`files to a wireless device. At a more specific level, they are directed to selecting,
`
`editing, converting and downloading ringtones or videos. A downloadable
`
`ringtone is an audio clip that a wireless device user can download and set to play
`
`when the device alerts the user of an occurring event, e.g., an incoming call.
`
`24. One embodiment described in the specification relates to selecting,
`
`converting and downloading user-defined audio or video. Figure 1 depicts a
`
`“source 50,” a “device programmer 30,” and a “device 20”:
`
`
`
`
`12
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`

`

`Attorney Docket No.: 01869-10IP759
`U.S. Patent No. 7,742,759
`
`
`
`
`’759 Patent, Fig. 1. “Device 20” selects a user-defined file from a “source 50,”
`
`such as the Internet. Id. at 3:30-41. The file is then transmitted to “device
`
`programmer 30” that converts the file to a format compatible with “device 20.” Id.
`
`“Device 20” then downloads the user-defined file and may retrieve it when a
`
`certain event occurs, e.g., when receiving an incoming call. Id.
`
`25. Notably, dependent claim 65 requires converting a “video” file from a
`
`first lossy format to a second lossy format. However, the term “lossy” does not
`
`appear in the ’759 patent specification. Rather, the specification includes a list of
`
`exemplary file formats, stating for example, that converting video files “may
`
`include, but is not limited to, converting to or from any of the following format
`
`
`
`
`13
`
`

`

`Attorney Docket No.: 01869-10IP759
`U.S. Patent No. 7,742,759
`
`types: analog; JPEG; MPEG; GIF; AVI, or to or from any other suitable video
`
`format, etc.” ’759 Patent, 3:55-58.
`
`26. The ’759 Patent lists 67 claims, with claims 1, 11, 37, and 53 being
`
`the independent claims. Independent claim 53 is directed to a programmable
`
`memory having instructions for receiving a video file, converting the video file to a
`
`native playback format usable by a playback device, and allowing a user to
`
`download the video file. Claims 54 to 67 are dependent on claim 53.
`
`V. Analysis of the ’759 Patent Based on Merritt
`A. United States Patent No. 6,421,429 (“Merritt”)
`27. U.S. Patent 6,421,429 (“Merritt”) is generally directed to a method for
`
`image communications, and more particularly, to a method and system for
`
`communicating images across a network among users with disparate end systems
`
`running potentially dissimilar image protocols and formats. Merritt discloses an
`
`“image communications session manager,” as shown in Figure 4b from the patent
`
`below.
`
`
`
`
`14
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`

`

`Attorney Docket No.: 01869-10IP759
`U.S. Patent No. 7,742,759
`
`
`
`
`Merritt, Fig. 4B. The image communications session manager is an intermediate
`
`server that receives an image or video file sent from a first device to a second
`
`device, determines the format capabilities of the second device, compares the
`
`format of the received file to the format capabilities of the second device, if
`
`necessary converts the format of the file, and then allows the second device to
`
`download the video file for subsequent use. As will be described in more detail
`
`below, Merritt discloses that the file communicated may be a video, the user-
`
`devices may be wireless telephones, the file type may be converted to and from
`
`JPEG and MPEG, and the file conversion can be from a first lossy native playback
`
`
`
`
`15
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`Attorney Docket No.: 01869-10IP759
`U.S. Patent No. 7,742,759
`
`format to a second lossy native playback format. Thus, in my opinion, Merritt
`
`anticipates all challenged claims for the ’759 patent.
`
`B.
`Invalidity of Independent Claim 53
`28. Claim 53 is reproduced below, with element references added for ease
`
`of reference in my analysis made herein.
`
`29. Claim 53 recites:
`
`Claim 53
`A programmable memory having stored thereon a plurality of sequences of
`instructions including sequences of instructions which, when executed by one or
`more processors cause one or more electronic devices to:
`(a) receive a video file in a native playback format;
`(b) convert the video file to a native playback format usable by a playback
`device; and
`(c) allow a user to download the video file to a playback device for subsequent
`use at a time specified by the user.
`
`
`30. Notably, the “Summary of the Invention” in Merritt alone anticipates
`
`claim 53 of the ’759 patent:
`
`A communication of an originating image from a
`calling party to a called party is diverted to the
`network-based image processing system. The network-
`based image processing system ascertains whether the
`originating image file format and protocol matches the
`called party preferred file format and protocol, which is
`stored in the data base. If there is no match, the
`processing
`system appropriately
`converts
`the
`16
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`

`Attorney Docket No.: 01869-10IP759
`U.S. Patent No. 7,742,759
`
`
`originating image file to the format and protocol of
`the called party. The image file is then communicated to
`the called party. A handshake-like exchange may be used
`to enable image communications of parties that are not
`subscribers and do not have profiles in the database. In a
`further embodiment, the network-based nodal image
`processing system provides for file return to the called
`party.
`
`Merritt, 2:1-15 (emphasis added). I have provided a detailed analysis of each
`
`element of the claim below.
`
`a.
`
`Invalidity Analysis of the preamble of claim 53
`
`Claim 53 preamble
`A programmable memory having stored thereon a plurality of sequences of
`instructions including sequences of instructions which, when executed by one or
`more processors cause one or more electronic devices to:
`
`
`31.
`
`It is my understanding that the preamble is generally not limiting.
`
`However, should the board determine the preamble is limiting, it is my opinion that
`
`Merritt discloses the preamble. The preamble is directed to a programmable
`
`memory having stored thereon a plurality of sequences of instructions. Merritt
`
`discloses an “image communications sessions manager” that has a programmable
`
`memory having stored thereon a plurality of sequences of instructions. For
`
`example, the specification provides that the image communications session
`
`
`
`
`17
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`Attorney Docket No.: 01869-10IP759
`U.S. Patent No. 7,742,759
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`manager must include “memory storage devices” and “one or more programmable
`
`computers or workstations.” Merritt, 4:8-14.
`
`32. Based on the above analysis, it is my opinion that Merritt discloses
`
`the preamble “A programmable memory having stored thereon a plurality of
`
`sequences of instructions including sequences of instructions.”
`
`b.
`
`Invalidity Analysis of Element (a) of claim 53
`
`Claim 53, element (a)
`(a) receive a video file in a native playback format;
`
`
`33. Merritt repeatedly discloses receiving a video file in a native playback
`
`format. For example, in the summary of the invention, Merritt explains that a file
`
`is received by a network-based image processing system in a native playback
`
`format: “[a] communication of an originating image from a calling party to a
`
`called party is diverted to the network-based image processing system. The
`
`network-based image processing system ascertains whether the originating image
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`file format and protocol matches the called party preferred file format and protocol,
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`which is stored in the data base.” Merritt, 2:1-7.
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`34. Merritt elaborates on the reception of the file in Fig. 4B, which
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`depicts an “originating image” being sent from “calling device (30)” to the “image
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`communications session manager (22),” as shown below.
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`Fig. 4B (emphasis added).
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`35. Fig. 1B also discloses the image communications session manager
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`receiving an image file in a native playback format. The specification explains that
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`in step 101, “a calling party 18 initiates an image communication to called part 20.
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`This communication arrives at the network image processing node 12 (step 103),
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`and the originating party’s sending file format and protocol is compared to the
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`preferred profile for the terminating party through a look-up procedure in the
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`network-based database 14 (step 105).” Merritt, 3:8-15. Thus, Merritt discloses
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`the “image communications session manager” receiving an image file in the native
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`playback format of the calling device.
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`36. Merritt also explains that the received file can be a video file. For
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`example, Merritt states that the “system may support myriad image media (e.g.,
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`facsimile, video, graphics, etc.), as well as multiple formats of any given medium,
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`and may convert between different formats of the same medium and between
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`formats of different media as required to provide the preferred or optimum format
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`and/or protocol for receiving the image at the endpoint.” Merritt, 10:18-24
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`(emphasis added). Merritt also provides that its image communications session
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`manager can convert video in a video teleconference service, referred to as
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`“dialable video services.” Merritt explains:
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`include conversions
`Dialable video services may
`among various video standards and among different
`video performance levels. A specific example is a
`teleconferencing application in which a 64 Kb/sec codec
`at one location needs to connect to a codec at another
`location that adheres to another video standard, say
`MPEG (Motion Picture Experts Group) at 1.5 MB/sec.”
`Merritt, 8:50-56.
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`37. Based on the above analysis, it is my opinion that Merritt discloses
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`element 53(a), requiring the programmable memory “receive a video file in a
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`native playback format.”
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`c.
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`Invalidity Analysis of Element (b) of claim 53
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`Claim 53, element (b)
`(b) convert the video file to a native playback format usable by a playback
`device; and;
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`Attorney Docket No.: 01869-10IP759
`U.S. Patent No. 7,742,759
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`38. Merritt discloses converting the video file to a native playback format
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`usable by a playback device. For example, in the summary of the invention,
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`Merritt provides that the network-based image processing system converts the file
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`to the format usable by the called party:
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`A communication of an originating image from a calling
`party to a called party is diverted to the network-based
`image processing system. The network-based image
`processing system ascertains whether the originating
`image file format and protocol matches the called party
`preferred file format and protocol, which is stored in the
`data base. If there is no match, the processing system
`appropriately converts the originating image file to
`the format and protocol of the called party.
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`Merritt, 2:1-9 (emphasis added). Merritt elaborates on this file conversion in Fig.
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`4B, which depicts the “image communications session manager” converting the
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`received image to a native playback format usable by the called device.
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`Attorney Docket No.: 01869-10IP759
`U.S. Patent No. 7,742,759
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`Fig. 4B (emphasis added). In the corresponding text in the specification, Merritt
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`explains that when the format of the received file does not match the format of the
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`called device, the image communications session manager converts the received
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`file to a format usable by the called device:
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`The image communications session manager 22 then
`routes the originating image to the image format and
`protocol conversion process controller 26 which, in turn,
`routes the image data to an appropriate conversion
`processor. The conversion process controller 26 selects
`an appropriate conversion processor based on factors
`such as functionality, as well as availability and load
`balancing (e.g., queue management). Originating image
`data that has been converted is then routed to the called
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`Attorney Docket No.: 01869-10IP759
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`device via the conversion process controller 26 and the
`image communications session manager 22.
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`Merritt, 7:10-26.
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`39. Merritt similarly explains that in one embodiment of the patent, a
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`server in the network compares the format of the originally transmitted file to the
`
`capabilities of the receiving station and performs conversion if necessary:
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`The network service uses the information about the
`originally transmitted image (i.e., format and/or protocol,
`and preferably also image type information) and the
`capabilities (and possibly also preferences) of
`the
`receiving station to select the best possible match or
`preferred image format and/or protocol from among the
`image file formats and/or protocols that are supported by
`the receiving station. The network performs any
`transcoding or
`image
`transformations
`that are
`necessary.
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`Merritt, 10:44-52 (emphasis added). Thus the network service converts the
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`originally transmitted file to a native playback format usable by the receiving
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`station. As noted in my analysis for claim 53, element (a), Merritt provides that
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`the received file can be a video file.
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`40. Based on the above analysis, it is my opinion that Merritt discloses
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`element 53(b), requiring the programmable memory “convert the video file to a
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`native playback format usable by a playback device.”
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`d.
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`Invalidity Analysis of Element (c) of claim 53
`
`Claim 53, element (c)
`(c) allow a user to download the video file to a playback device for subsequent
`use at a time specified by the user.
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`
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`41. Merritt discloses allowing a user to download the video file to a
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`playback device for sub