Home

IPR2015-00342 - Post

Contents

1. wherein the enabling further comprises transmitting the user defined audio file across a wireless network 2 Loading a published song onto your phone Should you want to obtain a song you have found just send the desired song s ID as found in the ringtone s data for example SGHTVY as a text message to number 1559 After a little while you will get an answer and you can listen and save the new ringtone You can find instructions for saving ringtones in the user guide for your GSM telephone Id The desired ringtone or song is obtained for the phone by sending the ringtone s ID e g GHJSDF as a text message to service number 1559 0014 6 wherein the enabling is characterized Radiolinja s JukeBoksi offers you an opportunity to compose listen to and upload to your GSM telephone your own and others creations as well as ringtones protected by authors rights laws 44 Case IPR2015 00342 Petition for Inter Partes Review by the use ofa that have been produced by JukeBoksi s music playing program telephone call or Harmoni So you should familiarize yourself with the as the incoming instructions so you can have your own songs playing on your communication phone d See also citations and discussion of how to download a ringtone in connection with limitation 1d above F 9110 UM Anticipates Claims 1 and 4 6 of the 692 Patent 9110 UM Exhibit 1031 is
2. Id at 0095 Yet Mr Shanahan s purported distinction contradicted his own admissions that prior art systems such as Napster the well known music sharing service that permitted users to browse and download music from a wide variety of sources had been developed well before his earliest priority date 1d In the same 2001 Office Action response Mr Shanahan introduced the claims that eventually became claims 1 and 4 6 Despite the concessions on the substantial body of available art the Examiner made only a procedural antecedent basis rejection with respect to claims 1 and 4 6 but otherwise allowed those claims pending correction of that antecedent basis issue d at 0134 In his reasons for allowance the Examiner acknowledged that the steps of claim 1 were well known in the art For example the Examiner conceded that one of the cited references Krane taught each of the first three steps of claim 1 of the 692 patent Id The sole basis for patentability was that Krane did not disclose programming that audio file into the device for use as a ringtone Jd However the Examiner did not acknowledge 1 Mr Shanahan s repeated 7 Case IPR2015 00342 Petition for Inter Partes Review concessions concerning the existence of ringtones or 11 the existence of ample ringtone related prior art including prior art that the Examiner himself cited on other claims in the same Office Action Id Indeed the Examiner rejected other claim
3. Case IPR2015 00342 Petition for Inter Partes Review at wish download his favourite ringing item 2 19 26 In a further elaboration the telecommunication device according to the invention is characterised in that it comprises video display means The advantage thereof is that the user can select his preferred ringing information items such as melodies songs etcetera by name This reduces the trespassing on communication time over the communication link 2 31 3 1 In a further embodiment the telecommunication device according to the invention is characterised in that there is provided in selection means in particular user friendly menu driven preferably easily software implemented selection means coupled to the database for selecting user defined forms of ringing information Figure 2 shows a flowchart for elucidating one possible way of implementing the updating of the ringing information present in the ringing information memory 4 Block 9 represents the establishing of a telephone call through a number to make a connection via the telecommunication link 2 to the database 6 usually through a modem not shown A suitably programmed and connected microprocessor 10 in telecommunication device 3 provides a guided menu block 11 wherein choices can be made by pushing appropriate keys on a keyboard 12 to choose block 13 for example for ringing information in the form of music tones speech etcetera to be downloa
4. Petition for Inter Partes Review deciding to save or reject the ringtone For example in connection with Fig 10 Alanara details how the user can scroll down through each of the Top 10 Ringing Tones sent by the server Alanara also teaches the search function generically in connection with applications which include ringing tone Second Alanara teaches that more than one network operators sometimes referred to as service providers can provide such services on the same network and that a phone can be programmed using the sub menus to send a command request to a server of a service provider to get a list of the latest ringing tones e g Nokia s current top 10 ringing tones Given that there can be multiple service providers on the same network Alanara teaches allowing a user to search the multiple service providers for their lists of ringing tones Searching different providers constitutes searching different locations Alanara anticipates claims 1 and 4 6 as indicated below See also Exhibit 1038 ag 94 139 Claim Where Each Limitation Is Found in Alanara Exhibit 1022 Element 1 A method SJub menu Download Ringing Tones can be divided into sub for menus according to ring tone melodies Rock around the clock programming a Those were the days Smoke on the water which can then be user defined chosen as ring tones by selecting the specific sub
5. ee cere we sasaki vat dsc caesar aed Pink arene Patan debe dees 15 DETAILED EXPLANATION AND SUPPORTING EVIDENCE UNDER 37 C F R 42 104 B 4 AND B S ccssccssoessscesecsstensvenscsssernecenssesnasesseuarenses 17 A Mr Shanahan Is Not Entitled to an Invention Date Prior to March 3 2000 geed 18 B Claims 1 4 5 and 6 Are Anticipated by Alanara ooooonoccccnncoccnononcnonnannnnnno 21 C Claims 1 4 5 and 6 Are Anticipated by Rizet cee eeesseceenteceesteeeeees 29 My Nokia Anticipates Or Renders Obvious Claims 1 4 5 and 6 of the 692 ALC gett TO 35 JukeBoksi Anticipates or Renders Obvious Claims 1 4 5 and 6 of the 692 i Case IPR2015 00342 Petition for Inter Partes Review Patada ds do 40 F 9110 UM Anticipates Claims 1 4 5 and 6 of the 692 Patent 45 G 9110 UM Combined With 9110 Documents Render Obvious Claims 1 4 5 and 6 of the 692 Patent arias 51 H Claims 1 4 5 and 6 Are Obvious in view of Nokia 9110 UM in Combiiatior aia My Nod adn 56 I The Cited Bases Are Not Cumulative ccccccccsssssssssssssssesssessssessseeeeees 58 WT GOIN C E ELE 60 Case IPR2015 00342 Petition for Inter Partes Review TABLE OF AUTHORITIES Page s Cases Agilent Techs Inc v Affymetrix Inc 567 F 3d 1366 Fed Cir 2009 WEE 19 Bruckelmyer v Ground Heaters Inc 445 F 3d 1374 Fed Cir 2006 EE 12 Constant v Advanced Micro Devices Inc 848 F 2d 1560 Fed Cir 1988 ai
6. quoting Wyer 655 F 2d at 226 The 9110 CD was clearly 12 Case IPR2015 00342 Petition for Inter Partes Review disseminated and available to any interested purchaser of the device A reference need not be indexed or distributed to qualify as a printed publication Klopfenstein 380 F 3d at 1348 If accessibility is demonstrated there is no requirement to show that particular members of the public actually received the information Constant v Advanced Micro Devices Inc 848 F 2d 1560 1569 Fed Cir 1988 A reference qualifies as a printed publication when its entire purpose is to permit communication with an audience Suffolk Techs 752 F 3d at 1365 upholding district court s finding that newsgroup postings qualified as a printed publication where dialogue with the intended audience was the entire purpose of the newsgroup postings The 9110 CD was distributed to purchasers of the 9110 product Exhibit 1032 41 4 16 The 9110 UM states that the sales package contains the following CD ROM and repeatedly references the CD ROM in the sales package or variants of that phrase Exhibit 1031 at 0017 0035 0040 0046 0051 0095 0105 0131 0135 0167 Numerous Nokia com Internet pages archived on May 8 1999 reference the CD ROM in the sales package or variations Exhibit 1037 f 22 23 38 39 42 43 and 0036 0081 0085 The entire purpose of the 9100 CD as well as all the Internet pages a
7. ringtones are selected are also stored in the internet See e g www my nokia co uk ringtones1 html 0019 and www my nokia co uk ringtones2 html 0021 5 Wherein the enabling further It is in your interest that you check your phone will work before paying for the service Please look up your phone model ask your mobile phone dealer 1f unsure then see what services 39 Case IPR2015 00342 Petition for Inter Partes Review comprises are available to you Y ou are responsible for ensuring your transmitting the phone will work with the service before ordering Y our user defined phone must be enabled to receive SMS text messages In audio file the order form we ask three times for you to check your details across a and it is solely your responsibility to ensure you are putting the wireless right phone number If you still get 1t wrong despite all these network reminders we regret that someone else may receive your order and you will have just purchased them a surprise present 0025 6 wherein Customise your mobile phone with cool new ring tones and the enabling is graphics 0013 characterized by the use ofa telephone call as the incoming communication We offer a unique service that lets you personalise your Nokia mobile phone with new musical ring tone melodies 0017 E JukeBoksi Anticipates or Renders Obvious Claims 1 and
8. Id I The Cited Bases Are Not Cumulative The Board should not find any of the grounds to be cumulative as each ground addresses different arguments that Solocron may make For example Solocron may seek to swear behind certain references such as the My Nokia website Petitioners should be permitted to respond to such attempts because it seems impossible for the inventor to prove diligence as discussed above 58 Case IPR2015 00342 Petition for Inter Partes Review Similarly it is unclear what claim constructions Solocron might seek to use and different references have different strengths For example on the search step if Solocron seeks to restrict the claims to some as yet unstated particular type search which is not in the 692 patent then the websites explicitly show functionality via links and different lists that the other references may not Alanara and Rizet show guided menus used to search while the 9110 UM includes the find feature typically on browsers which allows a user to search a web page For plurality of locations if Solocron seeks to impose a limit that these are different websites as opposed to different URL s on the same site then the 9110 UM which accesses any website discloses this expressly Similarly both Alanara different operators websites and different URL s and Rizet a database can comprise one or more remotely situated database show multiple locations bu
9. all references are prior art under 35 U S C 102 a or b l Alanara Exhibit 1022 U S Patent No 6 292 668 was filed on October 30 1998 as a continuation of Application No 08 804 236 filed on February 20 1997 and issued on September 18 2001 It is prior art under 102 e 2 Rizet Exhibit 1014 Intl Pub No WO 98 25397 entitled Telecommunication Device and a Method for Providing Ringing Information published on June 11 1998 de My Nokia Exhibit 1019 the website of a ringtone downloading service with a URL of www my nokia co uk was published at least as early as November 29 1999 via the Internet See Exhibit 1019 41 7 11 13 14 and 0012 21 0024 28 4 JukeBoksi Exhibit 1023 the website of a ringtone downloading service with a URL of www jukeboksi radiolinja fi was published at least as early as January 25 1999 via the internet See Exhibit 1019 44 39 41 and 0088 98 Exhibit 1023 certified translations of same The My Nokia and JukeBoksi websites are on line database s or Internet publication s that are considered to be printed publication s within the meaning of 35 U S C 102 a and b MPEP 2128 see also Voter Verified Inc v Premier Election Solutions Inc 698 F 3d 1374 1379 81 Fed Cir 2012 9 Case IPR2015 00342 Petition for Inter Partes Review online article that had been available on a public website by the critical date qualified as a printed publi
10. and 4 6 are invalid under 35 U S C 103 as obvious over 9110 UM in combination with My Nokia 14 Case IPR2015 00342 Petition for Inter Partes Review V HOW THE CHALLENGED CLAIMS ARE TO BE CONSTRUED UNDER 37 C F R 42 104 b 3 In this proceeding claim terms are given their broadest reasonable interpretation consistent with the specification and prosecution history See Office Patent Trial Practice Guide 77 Fed Reg 48756 48766 Aug 14 2012 The broadest reasonable interpretation of the relevant claim terms is as follows Allowing a user to search should mean permitting a user to examine a set of items for those that have the desired property This construction is supported by the plain and ordinary meaning of search and with usage of search in the specification E g Exhibit 1027 search is to examine a set of items for those that have a desired property Exhibit 1001 at 3 43 46 7 3 7 The broadest reasonable interpretation of search would at least encompass the ability of a user to manually access and examine different Internet websites for example See id at 6 37 65 7 13 35 Allowing a user to search also includes permitting the user to use well known functions of Internet browsers id at 6 25 36 to search the webpages id at 7 15 17 such as the control f or find option usable on many web browsers In the Litigation Solocron asserts that allowing shoul
11. in the art prior to his filing date Exhibit 1004 at 0094 95 Indeed Nokia owns at least 101 patent applications relating to ringtones including 17 patents and applications pre dating the 692 patent Exhibit 1012 These include U S Patent No 6 292 668 Alanara Exhibit 1022 which predates the 692 patent by over two years and discloses the claim elements in much greater detail than the 692 patent contemplates Alanara and the other references discussed herein were not presented to the Patent Office during prosecution of the 692 patent 1 Case IPR2015 00342 Petition for Inter Partes Review Recognizing this crowded field the inventor tried to distinguish his invention during prosecution by wrongly asserting that prior art systems were confined to predefined audio selections To address this alleged problem Mr Shanahan disclosed downloading audio files without providing any details on how the downloading occurred and utilizing them as indicia of communications But by the filing date of the 692 patent many others in the art solved this same alleged problem using this same method More than two years before the 692 filing Nadege Rizet filed an application for searching browsing selecting and downloading ringtones Exhibit 1014 This application uses strikingly similar language to the 692 patent including the same user defined language that was a purported basis for novelty of
12. items in the database 6 on the basis of the name displayed on the video display means 20 or a reference to a particular ringing item generally by displaying characters on the means 20 The telecommunication device 3 could contain an connector 21 connected to the ringing information updating means 5 for directly inputting updated ringing information to the updating means 5 The inputted information can then be user recorded in order to be further personalised 3 31 4 17 See also Fig 2 depicted above in connection with limitation 1b Rizet discloses a phone with ringing information memory which stores the sound a telephone makes when it rings The phone has a ringing information memory updating means that updates ringtones with user defined forms of ringing information Each telephone 3 is provided with a ringing information memory 4 wherein information or data is stored about the sound a telephone makes when it rings Each telephone 3 is also provided with ringing information memory updating means 5 which means 5 are connected to the memory 4 in order to be able to update the content of the memory 4 The memory updating means 5 is connected via the communication link 2 to a database 6 which is present somewhere in the network 1 The database is filled with alternative forms of ringing information such as melodies songs sound soundtracks speech etcetera The communication link 2 is connected to means 7
13. list of ringtones being received 25 Case IPR2015 00342 Petition for Inter Partes Review Ll WAT WAT SENDING MESSAGE NOKIA TOP 10 REQUEST SENT RINGING TONES WAIT IN DECEMBER e BOOKMARK QUIT SCROLL DOWN 2 MORE SELECT OK SCROLL DOWN 1 POPCORN RINGING RINGING FORM 2 FIREWORKS TONES IREWORKS TONES FINALIZED 3 ICE CREAM ICE CREAM 4 NOKI THEME POPCORN POPCORN MORE Back SELECT quit ok quit SELECT quit ok BACK OK WAIT TIME OUT CLEAR WAIT SENDING MESSAGE O NEW of o RADIOLINJA Of fO RINGING o REQUEST SENT O RINGING of jo oj jo o D TONES al of p RECEIVED d SELECT Quit MENU__ MEMORY RECEIVE Quit RECEIVE gt SCROLL DOWN OK LISTEN WAIT SCROLL UP oa oj O SAVE o RINGING TONE o SAVE D o AYEZ ZA O O PLAYBACK p BLAYBAOR77 B PLays O IERCH 2 PLAYBACK 5 o U o 0 0 D H H OK quit 0K Quit oK Quit oK QUIT OK TIME OUT O RADIOLINJA o o o SAVED A o MENU MEMORY FIG 10 1b allowing the user to browse audio files in one of the plurality of different locations that include audio files See Fig 10 and description relating to scrolling and playing back ringtones as shown in element 1a The users can browse through these services and pick those that interest them 11 23 42 An example of creating a menu for ringing tones is disclosed in FIG 10 as a sequence of displays to illustrate what the user sees on th
14. menu and audio file into a activating it as a command The command is sent to the service telephone provider as a user message according to the invention and as a comprising response to the user message the operator may send the ring tone coded into a user message which can then be stored into a ring 23 Case IPR2015 00342 Petition for Inter Partes Review tone memory of the terminal 11 13 22 The terminal is preferably a mobile phone or communicator which has circuits and a user interface that enable the processing of different applications 20 44 47 see claim 3 la allowing a user to search a plurality of different locations that include audio files Selections made in sub menus cause wide variety of actions Entries in the sub menus can be associated with URL Uniform Resource Locater information which can be used to fetch information from Internet In addition supplementary services can be initiated directly from these entries Actions may cause information to be sent to the terminal by a network entity e g enables selection and then downloading of ringing tones as explained above Thereby the Operator Services menu can cause information to be fetched from Internet based on URL information The users can browse through these services and pick those that interest them 11 23 42 An example of creating a menu for ringing tones is disclosed in FIG 10 as a sequence
15. of public databases accessible by network to include transmissions over the by then ubiquitous Internet network Exhibit 1038 Y 168 D My Nokia Anticipates Or Renders Obvious Claims 1 and 4 6 My Nokia is an internet website that was launched prior to Mr Shanahan s December 1999 filing date and permitted users to search browse and select a wide variety of ringtones on different locations on the website The plurality of locations are the different website URL s that a user may browse to on the My Nokia website One of skill in the art understands a user can access web pages using an Internet browser and that each web page URL generally constitutes a different file or memory location on a computer Exhibit 1038 226 My Nokia invalidates claims 1 and 4 6 as indicated below See also id 99 219 245 Petitioners submit copies of the website as archived no later than November 29 1999 by the Internet Wayback Machine http web archive org See Exhibit 1019 Although the different pages show different archived dates for the My Nokia website the latest of these dates is November 29 1999 indicating that the captured pages are indicative of the state of the website on that date While Petitioners contend that the My Nokia website pages are properly characterized as a single reference that would have been published at least as early as November 29 1999 Petitioners contend in the alternative that the collection of
16. or her electronic device to customize that device Jd at 1 35 1 62 64 As shown below this basic customization technology was well established long before Mr Shanahan s invention date B Prosecution History of the 692 Patent On March 3 2000 Mr Shanahan filed the application that eventually became the 692 patent Mr Shanahan initially presented a different set of claims bearing little resemblance to the issued claims Exhibit 1004 at 0031 35 The Examiner rejected these claims over many references many of which were unrelated to ringtones and the inventor cancelled those claims Jd at 0072 78 Mr Shanahan made several key concessions about the prior art and his purported invention First he conceded that ring sequences or notes provided by a telephone manufacturer or other source were already known in the art prior to his earliest priority date Jd at 0094 95 Second Mr Shanahan admitted that existing prior art systems allowed users to compose a ring sequence using notes 6 Case IPR2015 00342 Petition for Inter Partes Review available on the device d at 0096 Thus Mr Shanahan conceded that he did not invent 1 the concept of ringtones or 11 the personalization of ringtones Mr Shanahan tried to distinguish the prior art by asserting that his invention allowed a user to browse and choose from among a very broad range of audio and or video information found on a wide variety of mediums
17. your Nokia mobile phone with new musical ring tone melodies 0017 TY Jour phone must be enabled to receive SMS text messages In the order form we ask three times for you to check your details and it is solely your responsibility to ensure you are putting the right phone number If you still get it wrong despite all these reminders we regret that someone else may receive your order and you will have just purchased them a surprise present 0025 It is in your interest that you check your phone will work before paying for the service Please look up your phone model ask your mobile phone dealer if unsure then see what services are available to you Y ou are responsible for ensuring your phone will work with the service before ordering Y Jour phone must be enabled to receive SMS text messages In the order form we ask three times for you to check your details and it is solely your responsibility to ensure you are putting the right phone number If you still get it wrong despite all these reminders we regret that someone else may receive your order and you will have just purchased them a surprise present Id 4 wherein the enabling further comprises retrieving the user defined audio file from the Internet My Nokia is an internet based ringtone service that is available for access using an internet browser as evidenced by its URL www my nokia co uk Moreover the pages from which the
18. 102 the section is entitled To navigate in WWW Y ou can subscribe to the Internet services of selected providers in your country When the connection has been made follow the instructions on the display to select a service provider and to subscribe to their Internet services 0084 46 Case IPR2015 00342 Petition for Inter Partes Review With Text Web you can fetch information from the Internet using SMS You can also access services provided by your network operator and Nokia 0107 To fetch a WWW page 1 Select an entry in the Bookmarks list or enter a URL in the address field 2 Press Go Tip To fetch WWW pages stored in the Own texts or Downloaded files folders of the communicator or the memory card use the prefix Error Hyperlink reference not valid note three slashes instead of Error Hyperlink reference not valid 0096 A WWW page may contain hotspots such as selection lists text entry fields and reset submit buttons which enable you to input information into the World Wide Web 0175 After the WWW page has been fetched the following commands become available Saves the page contents or the image to the Downloaded files folder 0109 0101 Moreover the web browser allows a user to search the contents of the website using the Find function When you have a WWW page open and you press the Menu button the following options become available
19. 13 In re Hall OVE 29 ECO MT LO EE 12 In re Klopfenstein 380 F 3d 1345 Fed Cir A A E 12 13 Monsanto Co v Mycogen Plant Sci Inc 2601 F 3d4 1356 Eed Cir 2001 EE 20 In re Mulder 716E 204 1542 Fed Ci 1983 EE 19 20 New Railhead Mfg L L C v Vermeer Mfg Co 298 F 3d 1290 AA 18 In re NTP 654 A 18 PowerOasis Inc v T Mobile USA Inc 522 A A 18 In re Robertson 169 F 3d A A eat 19 Stored Value Solutions Inc v Card Activation Techs Inc 499 ExApp ao CE Odes Tis 2012 iones 14 iii Case IPR2015 00342 Petition for Inter Partes Review Suffolk Techs LLC v AOL Inc Dar odisea E EE 10 13 Voter Verified Inc v Premier Election Solutions Inc OOS Ed 1374 Ped TEE ee e AEE Eada i 9 In re Wyer OD F 24221 C CG PALISI VE 12 iv Case IPR2015 00342 Petition for Inter Partes Review PETITIONERS EXHIBIT LIST Exhibit No Description Exhibit 1001 U S Patent No 6 496 692 the 692 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 Exhibit Not Used Exhib
20. 4 6 JukeBoksi is an internet based ringtone service that was operational at least as early as early 1999 a year before Mr Shanahan s March 2000 filing Jukeboksi similarly permitted users to search browse select and download ringtones from a variety of different sources As with My Nokia the plurality of Petitioners submit copies of the website as archived no later than February 22 1999 by the Internet Wayback Machine http web archive org See Exhibit 1023 Although the different pages show different archived dates for the Jukeboksi website the latest of these dates is February 22 1999 indicating that the captured pages are indicative of the state of the website on that date While Petitioners contend that the three JukeBoksi websites are properly characterized as a single reference Petitioners contend in the alternative that these three websites render claims 1 and 4 6 obvious Since all three websites are related to the same service it would be obvious to one skilled in the art to combine them for use as prior art Exhibit 1038 182 The pages are intended to work together to provide the JukeBoksi service Jd 40 Case IPR2015 00342 Petition for Inter Partes Review locations are the different URL s web pages that the user can access One of skill in the art would understand that a user can access web pages using an Internet browser and that each of these different web pages URL generally con
21. Alanara s services included ringtones See id at 10 26 12 3 14 39 65 Figure 10 Alanara even teaches how these different companies can program their webpages to permit access by a mobile device See id at 16 24 20 30 These webpages program applications like menus which as shown above includes Download Ringing Tones d at 20 11 showing m enu as an application that is provided by an internet server Alanara also teaches a plurality of different locations in at least two independent ways First Alanara teaches that sub menus can be associated with different Uniform Resource Locators or websites to fetch information from the internet an example of this expressly includes using a sub menu to send a command request for the top 10 ringing tones as described in connection with Fig 10 Given that each of the sub commands can be programmed to access different websites Alanara teaches searching a plurality of websites identified by the URLs to fetch information including for example information about ringing tones such as a top 10 list Searching different websites constitutes searching different locations Alanara discloses that using the menu system the user can browse scroll down the list of potential ringtones one at a time and has the option to select a ringtone for downloading and for playback before 22 Case IPR2015 00342
22. 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 amp 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 4 Case IPR2015 00342 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 692 patent 1s avallable for inter partes review and that Petitioners are not barred or estopped from requesting inter parte
23. Case IPR2015 00342 Petition for Inter Partes Review UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD CELLCO PARTNERSHIP D B A VERIZON WIRELESS AT amp T MOBILITY LLC Petitioners V SOLOCRON MEDIA LLC Patent Owner Case IPR2015 00342 Patent No 6 496 692 PETITION FOR INTER PARTES REVIEW OF U S PATENT NO 6 496 692 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 Case IPR2015 00342 Petition for Inter Partes Review IL TIL IV VI TABLE OF CONTENTS INTRODUCTION AND BACKOGROUND 1 NOTICES STATEMENTS AND PAYMENT OF FEES coooocccccccocononcnnnnnnnnonnos 4 A Real Party In Interest Under 37 C F R 42 8 DMl oooooocononociconoccncnonnncnnnnos 4 B Related Matters Under 37 C F R 8 42 8 D 2 occcooococccccnonocnnonccononnnnnccnannnos 4 C Lead and Back Up Counsel Under 37 C F R 42 8 b 3 e eee 4 D Service Information Under 37 C F R SA Shanti 4 E Grounds for Standing Under 37 C F R 42 104 a oooooocononocinonoccnononnncnonnos 5 F Pees Wider 37 O E EE 5 Re Te E PATEN tas 5 e VE 5 B Prosecution History of the 692 Patent lt s ccsececedwscssicarcades edd geed gedoe deg 6 IDENTIFICATION OF CHALLENGE UNDER 37 C F R 42 104 B 8 HOW THE CHALLENGED CLAIMS ARE TO BE CONSTRUED UNDER STOERE ATAB GO
24. Find You can search for various items such as words in the WWW page 0100 1b allowing the user to browse audio files in one of the plurality of different locations that include audio files UM discloses an internet browser called the WWW application which allows the user to browse audio files on a website Internet applications World Wide Web WWW A hypertext based system for finding and accessing resources on the Internet 0083 The Nokia 9110 supports HTML 3 2 0095 UM provides detailed instructions on how to use the web browser on the 9110 to navigate the WWW E g 0099 0102 section entitled To navigate in WWW When you have a WWW page open and you press the Menu button the following options become available Find You can search for various items such as words in the WWW page 0100 UM also teaches how to access Operator services from network operators With Text Web you can fetch information 47 Case IPR2015 00342 Petition for Inter Partes Review from the Internet using SMS You can also access services provided by your network operator and Nokia Operator services allows the network operator to provide various services to the subscribers To use the browser Press the arrow keys on the keyboard to move from one hotspot to another To follow a hyperlink press Fetch 0107 See also the display screen and ke
25. Nokia 9110 Communicator User s Guide 9110 PC Suite Exhibit 1036 Quick Guide for the WAV converter for the Nokia 9110 Communicator 10 22 1999 http nds1 nokia com phones files software wav_converterzip9 10 zip 9110 WAV Converter Exhibit 1037 Declaration of Internet Archive re Nokia Web Sites Exhibit 1038 Declaration of Henry Houh Ph D and CV Exhibit 1039 Merriam Webster Online Dictionary Vil Case IPR2015 00342 Petition for Inter Partes Review I INTRODUCTION AND BACKGROUND Cellco Partnership d b a Verizon Wireless and AT amp T Mobility LLC Petitioners request inter partes review of claims 1 and 4 6 of U S Patent No 6 496 692 the 692 patent Exhibit 1001 The 692 patent is part of a family of nearly twenty patents owned by Solocron Media LLC Solocron a small company in Tyler Texas The portfolio s inventor Michael Shanahan is a former telecommunications and electronics patent prosecutor and litigator whose clients over the past fifteen years include Nokia Inc and other well known electronics companies See e g Exhibit 1011 at 0004 5 0066 0068 81 Solocron alleges that the 692 patent relates to searching for and downloading a user defined audio file from a database and using that audio file as a ringtone Mr Shanahan did not claim to invent ringtones and conceded during prosecution of the 692 patent that ringtones were well known
26. Nokia discloses the elements of claims 1 and 4 6 in concise detail Neither Jukeboksi nor My Nokia were considered by the Examiner during prosecution The lack of consideration of these references is unsurprising given the limited and inconsistent file history of the 692 patent Significantly claims 1 and 4 6 only received a single rejection during prosecution for lack of antecedent basis and do not appear to have ever been substantively examined by the Patent Office Moreover the Examiner allowed the claims on a basis that he previously acknowledged was present in the prior art and changed his reasons for allowance during prosecution without explanation For all the reasons below there is a reasonable likelihood that claims 1 and 4 6 of the 692 patent are unpatentable warranting inter partes review 3 Case IPR2015 00342 Petition for Inter Partes Review Il 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 amp T Mobility LLC B Related Matters Under 37 C F R 42 8 b 2 Solocron sued the entities below and Petitioners for infringement of the 692 patent in the Eastern District of Texas on December 6 2013 Case No 2 13 cv 01059 the Litigation Sprint Corporation Sprint Communications Company L P Sprint Solutions Inc and T Mobile USA Inc See Exhibit 1002 C Lead and
27. PC COM port or establish an infrared connection Id 9110 WAV Converter The WAV converter runs on a PC Exhibit 1036 at 0001 The input and output are files on the PC and the user would click Open and Type or select the name of the Wav file Id at 0002 0003 The converted sound file can be used as a ringing tone d at 0001 A six step process ending with 5 Type or select the name for the converted Wav file 6 Transfer the Wav file to the Nokia 9110 Communicator using the PC Suite Connectivity Software Jd at 0003 1b allowing the user to browse audio files in one of the plurality of different locations that include audio files 9110 Documents discloses the user can browse using either the PC Suite or the WAV Converter 9110 PC Suite allows the user to browse in the different locations discussed in la by providing a list of files which can include the audio files discussed in la in the File Transfer Window Panes which shows d rives and folders for both the Nokia 9110 Communicator and your PC Exhibit 1035 at 0095 See the File Transfer Window figure on page 0094 9110 WAV Converter permits browsing audio files by click Open and Type or select the name of the Wav file Exhibit 1036 at 0002 0003 The converted sound file can be used as a ringing tone Jd at 0001 A six step process ending with 5 Type or select the name for the converted Wav file 6 T
28. al For example the previously mentioned Phone Book application could be introduced to the terminal by a first user message from the service provider creating a first menu e g menu Phone Book after which when sending a request to the service provider the terminal would first receive a menu structure for sending the information needed to get the relevant phone number as was described earlier and after sending the relevant information the terminal would receive a response including the phone number we 16 1 21 Alanara teaches each menu can be associated with a specific short message service centre or to any SM SC of a specific list When using the Menu application with short messages the number of one or several short message service centres SM SC can be related to a menu so that when activating a user message by a menu item the message would be sent via a specific short message service centre or to any SM SC of a specific list The numbers of a specific or different SM SCs can be sent from the network to the terminal in a user message e g when a menu is created or updated This would allow more possibilities for services and quicker and more reliable transmission of user messages when a special service or the server providing that service accessible via a specific menu command is connected to a specific service centre 14 26 38 See Fig 10 and description relating to sending a request for ringtones that results in a
29. anything that seems to be of interest Generally browsing implies observing Exhibit 1030 Survey goods or text in a leisurely and superficial fashion Exhibit 1028 To inspect leisurely and casually b To read superficially This definition is consistent with usage of browse in the patent allowing a user to perform some action when used in a method claim requires the action of a third party the user and does not provide any guidance or restriction on when another party an alleged infringer allows the third party to act independently Thus it is indefinite under the approach dictated by Markman 16 Case IPR2015 00342 Petition for Inter Partes Review See Exhibit 1001 at 4 46 47 7 45 browsing through a menu 8 17 18 10 49 53 11 33 35 Such a definition encompasses a user observing files on a website Id at 10 51 52 User defined audio file should be construed to mean for the purpose of this IPR its broadest reasonable interpretation of a user selected audio file This definition is consistent with Solocron s proposed definition in the Litigation Exhibit 1021 at 0032 Such a definition under the broadest reasonable interpretation encompasses at least a file that a user selects for downloading Audio file should mean its broadest reasonable interpretation of information or data that can be used to produce sound This definition is consistent with the
30. cation under 35 U S C 102 b Suffolk Techs LLC v AOL Inc 752 F 3d 1358 1364 65 Fed Cir 2014 post on an internet newsgroup was a printed publication Moreover the PTO has long accepted the Wayback Machine as a proper means for establishing a website as prior art See Exhibit 1024 at 0009 10 and 0015 32 Sept 10 2013 Decision in Google Inc v Whitserve LLC Paper 11 IPR2013 00249 at 9 10 P T A B 2013 and Exhibit 1003 thereto Internet Archive pages granting IPR based on Wayback Machine archive of pages from wellsfargo com see also Exhibit 1025 at 0003 Examiners utilize commercial databases and the Wayback Machine to help establish website posting dates in order to qualify the website as prior art see also EMC Corp v Personal Web Techs LLC IPR2013 00086 Paper 66 at 29 31 P T A B 2014 accepting web sites as printed publications and citing cases accepting Wayback Machine materials as sufficient authentication 5 9110 UM Exhibit 1031 User s Manual for Nokia 9110 9110 UM was available on the Internet no later than February 1 1999 Exhibit 1026 ag 5 6 9110 UM bears a copyright date of 1998 Exhibit 1031 at 0002 and was distributed to customers on a CD with the 9110 product by no later than February 1 1999 Exhibit 1026 4 4 Exhibit 1032 94 4 13 6 The following publications referenced as 9110 Documents a 9110 PC 10 Case IPR2015 00342 Petition for Inter Partes Review Suite Exhib
31. cation nor does any discussion of any related concepts Jd There is no enabling discussion of the claim step of enabling the user of the telephone to program at least a portion of the user defined audio file into the telephone Jd Y 52 The provisional states this as a goal but does not say how that goal is accomplished d Similarly for claim 4 the provisional provides no description of how retrieving the user defined audio file from the Internet is part of the enabling step Id For claim 5 there is no discussion whatsoever of transmitting the user defined audio file across a wireless network Id Thus there is no actual disclosure as required under PowerOasis Similarly there is no inherent disclosure of these claimed features Inherency may not be established by probabilities or possibilities Agilent Techs Inc v Affymetrix Inc 567 F 3d 1366 1383 Fed Cir 2009 quoting Jn re Oelrich 666 F 2d 578 581 C C P A 1981 Instead inherency requires that the missing descriptive subject matter is necessarily present In re Robertson 19 Case IPR2015 00342 Petition for Inter Partes Review 169 F 3d 743 745 Fed Cir 1999 internal citation and quotation omitted The December 1999 application fails to meet this standard because each of the claimed features listed above is not necessarily present in the December 1999 application Exhibit 1038 41 50 54 The lack of support fo
32. d be given a plain meaning of permitting See Exhibit 1021 at 0059 In the Litigation Defendants assert that these allowing terms are indefinite because these terms do not provide any definition or restriction on the scope of the property right such that one may determine when infringement occurs The phrase 15 Case IPR2015 00342 Petition for Inter Partes Review Plurality of different locations should be construed to mean in its broadest reasonable interpretation application for this proceeding more than one distinct place Plurality means more than one The different locations means distinct places as shown in extrinsic evidence Ee Exhibit 1039 0001 a place or position This includes multiple distinct memory addresses in a computer E g Exhibit 1001 at 3 44 46 10 34 It also includes different places on a single Internet server defined for example by separate URLs which can point to for example different web pages or different files d at 7 15 18 It also encompasses different Internet websites d at 6 50 65 11 41 42 Allowing a user to browse audio files should be construed to mean permitting a user to listen to scan or observe audio files This is consistent with the contemporaneous discussion of the ordinary meaning of browse See e g Exhibit 1029 To scan a database a list of files or the Internet either for a particular item or for
33. d to publicly distribute information about that product and were all distributed by the same company in the same year 1999 one of skill in the art would combine these references Exhibit 1038 44 306 307 The level of cross referencing confirms that one would combine the references d 9 307 9110 Documents teach the ability of a user to search different locations 52 Case IPR2015 00342 Petition for Inter Partes Review multiple directories on PC including multiple directories of WAV audio files provided by Nokia browse those locations select a file and program that file as ringtone using an IR network to download to the phone Zd 308 Thus the plurality of locations element is met in at least 5 separate ways 1 multiple locations on the Internet containing audio files 2 multiple locations on the PC containing audio files such as the multiple directories on the CD with WAV files 3 at least one location on the Internet and one location on the PC 4 at least one location in the directories memory on the phone and one location on the Internet and 5 at least one location in the directories memory on the phone and one location on the PC Id 314 The chart below shows where 9110 Documents disclose each element in claims 1 and 4 6 and should be combined with the citations for 9110 UM above See also id J 303 340 Claim Where Each Limitation Is Found in 9110 Documents Element 1 A method 9110 Documen
34. ded by the downloading means 7 The selection means 8 provide for a stop next and selection in blocks 16 of a preferred and in block 17 confirmed choice of ringing information In block 18 the means 7 download the confirmed choice and block 19 ends the cession In an alternative embodiment the telecommunication device 3 contains a video display means 20 for selecting ringing information items in the database 6 on the basis of the name displayed on the video display means 20 or a reference to a particular ringing item generally by displaying characters on the means 20 3 31 4 14 31 Case IPR2015 00342 Petition for Inter Partes Review FIG 2 T he ringing information updating means comprises a public database containing a variety of alternative forms of ringing information So the personal touch and the diversity of adjustments on this point to the wishes of each individual owning a telecommunication device can be honoured in a recognisable individualised way without expanding hardware or hardware requirements beyond the technical means normally available to an average user This high quality multi diverse extension can be implemented very simple on for example a personal mobile cellular or cordless telephone The public database can be managed by a manufacturer of the telecommunication device or any other professionally suitable instance 2 2 18 1b allowing the user to browse audi
35. divided our ring tones into four new sections to make them easier to find Papo Poggi Ki Classical QUN For seasonal Winterval music including traditional Christmas carols click the Others section TV Movies Popular Classical Others 0015 Clicking on the link for TV Movies takes the user to this web page www my nokia co uk ringtones1 html 0019 Clicking on the link for Popular takes the user to this web page www my nokia co uk ringtones2 html 0021 My Nokia allows the user to browse audio files in one of the plurality of different locations including for example browsing ringtone files on each of TV amp Movies Popular Classical and Others 37 Case IPR2015 00342 Petition for Inter Partes Review files 1c allowing the user to choose the user defined audio file from among the browsed audio files and TY Movies Enjoy a trip down memory land and relive the golden era of Television The ones in Bold are highly recommended See below for ordering information The Adams Family Aint Bisbehavina Men Behavina Badly The A Team Mission Impossible Austin Powers Y i The Avengers The Munsters Bewitched The Muppet Show Blue Peter i Bullseye One Foot in the Grave Carry on Doctor Parki h Coca Cola Advert Postman Pat Crossroads Theme Tune Quincy Dads Army Bed Dwarf Dallas Rhubarb and Custard DrWho Scooby Doo Eastenders The Simpsons Eurot
36. e call as the incoming communication An example of creating a menu for ringing tones is disclosed in FIG 10 as a sequence of displays to illustrate what the user sees on the display The command NEW RINGING TONES is sent in a user message to a server of a ringing tone service provider in order to request for latest ringing tones As a response the server sends a user message containing information relating to the Menu applications for creating a menu from which the user can select a new ringing tone 14 39 47 28 Case IPR2015 00342 Petition for Inter Partes Review See also 10 26 47 discussing personaliz ing C Claims 1 and 4 6 Are Anticipated by Rizet Rizet was not cited during prosecution of the 692 patent Using strikingly similar language to the 692 patent Rizet discloses searching selecting and downloading ringtones from a public database containing a variety of alternative forms of ringing information and programming those ring tones into phones The language overlap is remarkable For example claim 1 focuses on a user defined audio file Exhibit 1001 at 12 58 and Rizet taught user defined forms of ringing information Exhibit 1014 at 2 30 Claim 1 recites to choose the user defined audio file Exhibit 1001 at 12 58 and Rizet discloses selecting user_defined audio files Exhibit 1014 at 2 30 The 692 patent cites accessing user defined files in r
37. e display The command NEW RINGING TONES is sent in a user message to a server of a ringing tone service provider in order to request for latest ringing tones As a response the server sends a user message containing information relating to the Menu applications for creating a menu from which the user can select a new ringing tone The user selects the desirable ringing tone from the menu selects ring tone Popcorn The selection activates a user message to be sent to the server indicating the desired ring tone The user can accept or reject the ring tone If the user selects the Playback option the received ringing tone is played to the user and after that the original selection list displays again If the user gives a rejection of the new ring tone the received ringing tone is discarded 14 39 65 1c allowing the user to choose the user defined audio file from among the browsed audio As a response the server sends a user message containing information relating to the Menu applications for creating a menu from which the user can select a new ringing tone The user selects the desirable ringing tone from the menu selects ring tone Popcorn The selection activates a user message to be sent to the server indicating the desired ring tone After a while the terminal receives the ring tone from the server A received ringing tone is indicated to the user using the 26 Case IPR2015 00342 Pet
38. e of the subject matter of claims 1 and 4 6 prior to March 2000 35 U S C 112 120 A patent s claims are not entitled to an earlier priority date merely because the patentee claims priority In re NTP Inc 654 F 3d 1268 1276 Fed Cir 2011 citations omitted T he specification of the provisional must contain a written description of the invention and the manner and process of making and using it in such full clear concise and exact terms to enable an ordinarily skilled artisan to practice the invention claimed in the non provisional application New Railhead Mfg L L C v Vermeer Mfg Co 298 F 3d 1290 1294 Fed Cir 2002 This requires that the written description actually or inherently disclose the claim element PowerOasis Inc v T Mobile USA Inc 522 F 3d 1299 1306 07 Fed Cir 2008 18 Case IPR2015 00342 Petition for Inter Partes Review The 1999 application falls far short of actually or inherently disclosing all features of claims 1 and 4 6 of the 692 patent See Exhibit 1038 44 50 54 The provisional does not describe allowing a user to search and does not describe the plurality of locations that is searched browsed and selected from as required by 99 cc claim 1 Zd 51 In fact the terms browse browsed audio files search plurality of different locations and indicia of an incoming communication do not appear in the appli
39. eat Blues Forever Stratovarius Heavy 9 Unforgiven Metallica Heavy KKK See also 0009 1b allowing the user to browse audio files in one of the plurality of different locations that include audio files 1 Browsing Published Songs You can browse published songs according to the song name the composer or the style On the TOPTEN page you will always find the currently most popular songs it will list the ten most uploaded ringtones in the last week Lists and even TOPTEN are continuously updated in real time 0015 On this page you will find JukeBoksi s most popular songs from last week The list is updated every day Check the new arrivals and all time favorites every day JukeBoksi s 30 most 42 Case IPR2015 00342 Petition for Inter Partes Review lc allowing the user to choose the user defined audio file from among the browsed audio files and popular songs of this week 0008 On these pages you can browse ringtones made for certain Nokia GSM telephones 0002 Check Finland s hottest ringtones from the TOPTEN list or browse other ringtone lists Jd 1 Browsing Published Songs You can browse published songs according to the song name the composer or the style On the TOPTEN page you will always find the currently most popular songs it will list the ten most uploaded ringtones in the last week Lists and even TOPTEN are continuously updated
40. emote database s using the first communications link Exhibit 1001 at 2 1 2 whereas Rizet taught accessing via the communication link 2 to the database where the database can comprise one or more remotely situated databases Exhibit 1014 at 2 19 26 The one or more databases Exhibit 1044 at 2 22 is a plurality of different locations Given the remarkable extent to which Rizet contains the language of the 692 patent two years before it was filed it is unsurprising that Rizet invalidates claims 1 and 4 6 as indicated below See also id 9 140 180 29 Case IPR2015 00342 Petition for Inter Partes Review Claim Where Each Limitation Is Found in Rizet Exhibit 1014 Element 1 A method Rizet discloses a method for programming a user defined forms of for ringing information eg melody song music and programmin soundtracks into a telephone eg a cellular telephone ed Use A telecommunication device is disclosed comprising a ringing defined information memory means and a ringing information memory audio file updating means for updating the ringing information content in mog the form of melodies Abstract telephone uth ee ey eee comprising It is an object to provide a multi selection high quality ringing information extend change feature to a telecommunication device such as a telephone by providing a public database containing a variety of alter
41. entity e g enables downloading of ringing tones Thereby the Operator Services menu can cause information to be fetched from Internet based on URL information 11 24 35 Claim 1 the mobile terminal has been arranged to open said communication link to the Internet and to download information from a server in the Internet through transmission over said opened communication link and the mobile terminal has been arranged to send requests to and to receive information from a server in the Internet in said user messages 5 wherein the enabling further comprises transmitting the user defined audio file across a wireless network 2 20 40 transmission over t he mobile phone system using GSM and USSD and other wireless standards See 13 5 8 message type which can be any user message as has been specified earlier SMS USSD R data SOC Packet Radio Claims 1 2 mobile device communicates information in user messages over the mobile communication wireless network wherein said user message is one of a short message a message according to the standardized SMS message a message according to the standardized USSD message and a message according to a wireless packet radio service See Fig 2 and 6 6 28 discussing radio interface showing wireless network transmissions 6 wherein the enabling is characterized by the use of a telephon
42. es programming audio files as ringtones claim 1 and transmitting files over the Internet claim 4 The 9110 Documents are 1 the 9110 FAQ Exhibit 1033 webpage from May 8 1999 2 the 9110 PC Suite Exhibit 1035 manual distributed with the 9110 in 1999 3 9110 CD Listing Exhibit 1034 showing the two directories on 51 Case IPR2015 00342 Petition for Inter Partes Review the CD that included WAV audio files and 4 9110 WAV Converter Exhibit 1036 teaching that the converted sound file can be used as a ringing tone after t ransferring the Wav file to the Nokia 9110 Communicator using the PC Suite Connectivity Software These references cite each other The 9110 FAQ recites a free Windows backup and synchronisation package 9110 PC Suite Exhibit 1033 at 0001 and the set of WAV files can be found on the CDROM in the sales package files on the 9110 CD Listing d at 0004 The 9110 WAV Converter references WAV files on the PC Exhibit 1036 at 0001 and the 9110 PC Suite t ransfer ring the Wav file to the Nokia 9110 Communicator using the PC Suite Connectivity Software Ud at 0003 The 9110 CD Listing shows the directories with WAV files 9110 UM and the 9110 PC Suite Exhibit 1034 at 0005 0010 0014 18 The 9110 UM discusses the CD 9110 CD Listing and the 9110 PC Suite Exhibit 1031 at 0017 and 0035 Because 9110 UM and 9110 Documents all relate to the same product were all intende
43. f of distribution Third the files and the listing of files on a CD are printed publications under Federal Circuit law The 9110 CD was distributed in a widespread manner to provide information to consumers and purchasers of the 9110 device A printed publication can be printed handwritten or on microfilm or magnetic disc or tape etc In re Wyer 655 F 2d 221 227 C C P A 1981 T he key to a printed publication is the probability of dissemination rather than the form Ex Parte Mettke Appeal 2008 0610 2008 WL 4448201 at 6 B P A I Sept 30 2008 holding a videotape to be a prior art printed publication citing Wyer 655 F 2d at 226 Courts interpret the term printed publication to give effect to ongoing advances in the technologies of data storage retrieval and dissemination Jn re Hall 781 F 2d 897 898 Fed Cir 1986 P ublic accessibility has been called the touchstone in determining whether a reference constitutes a printed publication Jn re Klopfenstein 380 F 3d 1345 1349 Fed Cir 2004 quoting Hall 781 F 2d at 898 99 A given reference is publicly accessible upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence can locate it Bruckelmyer v Ground Heaters Inc 445 F 3d 1374 1378 Fed Cir 2006
44. for downloading ringing information to the ringing information memory 4 3 18 26 See also Figure 2 depicted above in connection with limitation 1b and discussion of 3 31 4 17 in element 1c on flowchart for updating the ringing information memory T he telecommunication device is characterised in that there is 34 Case IPR2015 00342 Petition for Inter Partes Review provided selection means coupled to the database for selecting user defined forms of ringing information 2 27 30 see also 2 1 18 updating ringing memory with new information Si Sez wherein the enabling further comprises transmitting the user defined audio file across a wireless network Een wherein the enabling is characterized by the use of a telephone call as the incoming communicati on Rizet notes that it is an object that the wishes of each individual owning a telecommunication device can be honoured in afn individualised way without expanding hardware or hardware requirements beyond the technical means normally available to an average user This extension can be implemented very simple on for example a personal mobile cellular or cordless telephone 1 25 2 16 see also claim 9 the device is embodied as a telephone such as for example a conventional telephone a cordless telephone a mobile telephone a cellular telephone 3 31 4 17 describing a con
45. in real time When you click the name of a track from the list the details of the song will be displayed in your window and the ringtone will start to play if your computer has speakers connected In this way you can listen to a ringtone before uploading it to your phone 0015 2 Loading a published song onto your phone Should you want to obtain a song you have found just send the desired song s ID as found in the ringtone s data for example SGHTVY as a text message to number 1559 After a little while you will get an answer and you can listen and save the new ringtone You can find instructions for saving ringtones in the user guide for your GSM telephone Id JukeBoksi s 30 most popular songs of this week Name of Song Performer Style 1 X Files Theme X Files Theme Song long 2 Last Jonna amp Pop Erin 3 McGyver McGyver Theme Song EFFIFY lone 1d enabling the user of the telephone to program at least a portion of the user defined audio See the Jukeboksi s 30 most popular songs of this week figure in element 1c above KKK This is how you upload a song to your own GSM telephone 1 Listen to the song by clicking on the name of the song 2 Send the ID of the song you chose e g YSKLQW as a text message to number 1559 3 Wait a minute or so and your phone will display the text Ringtone received 4 Play the song and save it or delete it Get more information fro
46. it 1007 Exhibit Not Used Exhibit 1008 Exhibit Not Used Exhibit 1009 Exhibit Not Used Exhibit 1010 Exhibit Not Used 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 Exhibit 1014 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 Case IPR2015 00342 Petition for Inter Partes Review Exhibit 1016 Ring My Bell The New Yorker March 7 2005 downloaded from http www newyorker com magazine 2005 03 07 ring my bell Exhibit 1017 The Sweet Sound of Success Time Magazine Europe 2004 downloaded from http content time com time magazine article 0 9171 901040816 678568 00 html Exhibit 1018 Pioneer of the Mobile Ringtone Business Mobile Entertainment Forum MEF Special Recognition Award 2004 Exhibit 1019 Internet Archive Declarations and Copies of Various Websites Exhibit 1020 Exhibit Not Used Exhibit 1021 Local Patent Rule 4 3 Statement filed in Solocron v Cellco Partnership et al Case No 2 13 cv 1059 E D Tex Exhibit 1022 U S Patent No 6 292 668 filed on October 30 1998 as a continuation of N
47. it 1035 PC Suite For Nokia 9110 Communicator User s Guide b 9110 FAQ Exhibit 1033 Frequently asked questions from Nokia 9110 website c 9110 WAV Exhibit 1036 Quick Guide For The WAV Converter For The Nokia 9110 Communicator dated 10 22 1999 and available on Nokia website for downloading no later than December 4 1999 and d 9110 CD List Exhibit 1034 list of files on CD delivered in box with 9110 product The following table shows the widespread public availability and distribution of these publications prior to Mr Shanahan s earliest priority date Publication Hardcopy Nokia Website On CD Distributed With Sales of Product 9110 UM Exhibit Exhibit 1026 5 6 Exhibit 1032 94 4 13 1026 4 4 9110 PC Exhibit 1037 94 24 25 Exhibit 1032 94 4 12 Suite and 0038 15 9110 FAQ Exhibit 1037 1f 38 39 and 0078 81 9110 WAV Exhibit 1037 1f 16 17 and 0028 9110 CD Exhibit 1037 44 22 23 38 Exhibit 1032 94 4 16 Listing 39 42 43 and 0036 0081 0085 Each of these types of distribution constitutes well accepted forms of publication First the publicly available website distribution supported by the Butler Declarations and the Wayback Machine screenshots is routinely accepted as proof of publication as discussed in detail above Second hardcopies to 11 Case IPR2015 00342 Petition for Inter Partes Review consumers supported by declaration is indisputable proo
48. ition for Inter Partes Review files and RINGING TONE RECEIVED notification The user can accept or reject the ring tone 14 44 54 These sub menus may further be divided into sub menus e g sub menu Download Ringing Tones can be divided into sub menus according to ring tone melodies Rock around the clock Those were the days Smoke on the water which can then be chosen as ring tones by selecting the specific sub menu and activating it as a command The command is sent to the service provider as a user message according to the invention and as a response to the user message the operator may send the ring tone coded into a user message which can then be stored into a ring tone memory of the terminal 11 12 22 See also Fig 10 and discussion relating to selection of Popcorn from the list of ringtones as shown in element 1a 1d enabling the user of the telephone to program at least a portion of the user defined audio file into the telephone for use as an indicia of an incoming communication These sub menus may further be divided into sub menus e g sub menu Download Ringing Tones can be divided into sub menus according to ring tone melodies Rock around the clock Those were the days Smoke on the water which can then be chosen as ring tones by selecting the specific sub menu and activating it as a command The command is sent to the service provider as a user message according to the inven
49. m the user guide for your phone 43 Case IPR2015 00342 Petition for Inter Partes Review file into the telephone for use as an indicia of an incoming communication 0008 0009 2 Loading a published song onto your phone Should you want to obtain a song you have found just send the desired song s ID as found in the ringtone s data for example SGHTVY as a text message to number 1559 After a little while you will get an answer and you can listen and save the new ringtone You can find instructions for saving ringtones in the user guide for your GSM telephone 0015 3 Testing an unpublished song with your phone You can get your own unpublished songs for your telephone in the same way just send the ID of your song that is in the song bank as a text to number 15 59 If you have not yet published your song it will display only to you Only after publication will the song name and ID be displayed for all users Also getting this song will cost the same as getting the songs already on the list Id 4 wherein the enabling further comprises retrieving the user defined audio file from the Internet JukeBoksi is a ringtone service that is available for accessed using an internet browser as evidenced by its URL www jukeboksi radiolinja fi Note Advance listening will function best with the Internet Explorer 4 0 1 or Netscape 4 0 5 browsers as well as their newer versions Id 5
50. me Tune Quincy Dads Army Bed Dwarf Dallas Rhubarb and Custard Dr Who Scooby Doo Eastenders The Simpsons Eurotrash Songs of Praise Fawlty Towers Startrek The Flintstones Startrek Communicator Using the Nokia 9110 phone as described in the 9110 UM to access the My 57 Case IPR2015 00342 Petition for Inter Partes Review Nokia website to visit each of the Popular TV and Movies websites would constitute searching two different locations to obtain a list of ringtones satisfying the search limitation using the broadest reasonable interpretation Moreover using the Find function described above in connection with limitation la a user could search each of the two lists 1 e the list of TV amp Movie themes and the list of Popular songs would also satisfy searching a plurality of locations If search is construed more narrowly so as to require searching two unrelated locations then searching the My Nokia website as described in the preceding paragraph would constitute searching a first location Jd Y 343 While My Nokia teaches at least one such website for downloading ringtones it would be obvious to one skilled in the art to utilize additional websites offering similar ringtone services including for example the websites of operators as described in the 9110 UM and the Nokia 9110 would be able to access such other websites via the internet and search for ringtones in the same fashion described above
51. mming a user defined audio file into a telephone comprising The Nokia 9110 is a wireless phone messaging device access terminal 0011 Figure 1 UM teaches how additional ringing tones can be stored in a sounds folder where the user can select them as a ringing tone When you press the Menu button in an opened folder the following options become available Copy to sounds You can add the selected tune to the list of ringing tones 0110 Default ringing tone You can select one of the tones in the pop up box 0123 0133 la allowing a user to search a plurality of different locations that include audio files UM discloses that the 9110 has an Internet browser called the WWW application that allows a user to search a plurality of different websites e g websites operated by Nokia and operated by selected providers in your country to obtain Internet services from a plurality of selected providers in your country The UM discloses using this browser to download audio files into a folder called downloaded files on the 9110 Internet applications World Wide Web WWW A hypertext based system for finding and accessing resources on the Internet 0083 The Nokia 9110 Communicator supports HTML 3 2 0095 UM provides detailed instructions on how to use the web browser on the 9110 to navigate the world wide web See e g 0099 0
52. n the sales package Exhibit 1033 at 0004 See elements la 1d above in 9110 UM 5 wherein the enabling further comprises transmitting the user defined audio file across a wireless network 9110 PC Suite teaches The PC Suite File Transfer functions let you move copy paste Nokia 9110 Communicator and PC files and folders Exhibit 1035 at 0094 Connect your communicator to your PC COM port or establish an infrared connection Id 6 wherein the enabling is characterized by the use of a telephone call as the incoming communication 9110 FAQ Audio files WAV files as ringtones and The WAV files can also be used as ringtones A set of WAV files can be found on the CDROM in the sales package Exhibit 1033 at 0002 0004 H Claims 1 and 4 6 Are Obvious in view of Nokia 9110 UM in Combination with My Nokia Nokia 9110 UM teaches a phone that includes a web browser that can allow a user to subscribe to the Internet services of selected providers in your country directly with your Nokia 9110 Communicator Exhibit 1031 at 0084 as well as access ing services provided by your network operator and Nokia Id at 0107 My Nokia is one such ringtone service provider that was operational at least 56 Case IPR2015 00342 Petition for Inter Partes Review as early as November 1999 See Exhibit 1019 44 7 11 13 14 and 0008 9 The My Nokia services were ex
53. native forms of ringing information such as a melody song music 1 25 2 6 The database is filled with alternative forms of ringing information such as melodies songs sound soundtracks speech etcetera 3 23 24 See also claim 4 wherein the ringing information memory updating means is connected to selection means coupled to the database for selecting user defined forms of ringing information claim 9 the device is a cellular telephone la allowing a user to search a plurality of different locations that include audio files Rizet discloses that a user can connect to one or more remotely situated databases and use a video display to select the user s preferred ringing information items by name thereby reduc ing the time spent trespassing on the communication link 2 23 3 1 In an embodiment the telecommunication device according to the invention is characterised in that the ringing information memory updating means is connected to the data base via a long distance communication link Such a database can comprise one or more remotely situated databases which are connectable directly to the telecommunication device and to the ringing information memory but preferably there is a database which can be consulted by means of a generally long distance communication link to each subscriber of the telecommunication device in order to select and 30
54. nd manuals that reference the 9100 CD was to disseminate information concerning the 9100 CD The 9100 CD the files thereon and the listing of files thereon are 13 Case IPR2015 00342 Petition for Inter Partes Review thus prior art under 35 U S C 102 a See e g Stored Value Solutions Inc v Card Activation Techs Inc 499 F App x 5 14 Fed Cir 2012 upholding district court s finding that software user manual was printed publication given the evidence that it was copyrighted prior to the critical date and was in fact distributed to customers who purchased the software prior to the critical date Petitioners request that claims 1 and 4 6 be cancelled based upon the following grounds as explained in detail below including relevant claim constructions Ground 1 claims 1 and 4 6 are invalid under 35 U S C 102 as anticipated by Alanara Ground 2 claims 1 and 4 6 are invalid under 35 U S C 102 as anticipated by Rizet Ground 3 claims 1 and 4 6 are invalid under 35 U S C 102 and or 35 U S C 103 as anticipated by and or rendered obvious over My Nokia Ground 4 claims 1 and 4 6 are invalid under 35 U S C 102 and or 35 U S C 103 as anticipated by and or rendered obvious over JukeBoksi Ground 5 claims 1 and 4 6 are invalid under 35 U S C 102 as anticipated by 9110 UM Ground 6 claims 1 and 4 6 are invalid under 35 U S C 102 as obvious over 9110 UM in combination with 9110 Documents Ground 7 claims 1
55. nection via telecommunication link 2 to the database 6 usually through a modem Figure 1 shows link 2 between device 3 and network 1 The link enters the telephone at the top of Figure 1 at a point distinct from connector 21 which the device could contain 4 15 A telecommunication device is disclosed comprising a ringing information memory updating means for updating the ringing information content with melodies Abstract The present invention relates to a telecommunication device comprising a ringing information memory and a ringing information memory updating means coupled to the ringing information memory 1 1 3 Each telephone 3 is provided with a ringing information memory 4 wherein information or data is stored about the sound a telephone makes when it rings Each telephone 3 has ringing information memory updating means 5 which means 5 are connected to the memory 4 in order to be able to update the content of the memory 4 The memory updating means 5 is connected via the communication link 2 to a database 6 link 2 is connected to means 7 for downloading at least one or the alternative forms of ringing information to the ringing information memory 4 3 18 26 With respect to claim 4 while Rizet does not incant the word Internet one 35 Case IPR2015 00342 Petition for Inter Partes Review of skill in the art by 1999 would understand Rizet s disclosure
56. ner Karen J Lenker Knobbe Martens Olson amp Bear LLP 2040 Main Street Fourteenth Floor Irvine CA 92614 And to William P Nelson Matthew Douglas Powers Tensegrity Law Group LLP 555 Twin Dolphin Drive Suite 360 Redwood Shores CA 94065 Kevin P Anderson Kevin P Anderson Reg No 43 471
57. network UM discloses retrieving audio files from the internet See the discussions in elements la 1d above regarding subscrib ing to Internet services using the Internet application 0084 to browse select and download files from the WWW into the Downloaded files directory and then using the Copy to sounds You can add the selected tune to the list of ringing tones 0109 0110 See also 0083 0084 0095 0099 0100 0107 0109 0110 UM teaches that the 9110 is a wireless communicator can receive an audio file that was transmitted using cellular technology Facts about cellular data transmission The Nokia 9110 Communicator employs the data transmission capabilities of the GSM network to send messages and to establish connections with remote computers Cellular data connections can be made from most locations 0014 The 9110 displays an communication link 0023 icon when there is an active About a minute after the text is sent your phone will display a message about the received new ringtone 0015 6 wherein the enabling is characterized by the use of a telephone call as the incoming communication As discussed above in connection with limitation 1d UM teaches how a user of a telephone can copy a downloaded file into the sounds folder copy to sounds so that the file is available for selection and assignment as a ringing tone using for exam
58. nge key to tick off selection boxes an audio file on a website to download into the Downloaded files folder 48 Case IPR2015 00342 Petition for Inter Partes Review browsed audio files and To fetch a WWW page 1 Select an entry in the Bookmarks list or enter a URL in the address field 0096 TU se the arrow keys to scroll the view and to choose hyperlinks and hotspots Each arrow key press selects the nearest hyperlink or hotspot or moves the view one line up or down See Figure 8 0099 Figure 8 The web browser allows a user to save the contents using the Save function When you have a WWW page open and you press the Menu button the following options become available Save Saves the page contents or the image to the Downloaded files folder or adds the address to the page of the Bookmarks list 0100 To use the browser Press the arrow keys on the keyboard to move from one hotspot to another To follow a hyperlink press Fetch 0107 As discussed in connection with element 1b the user can save files off the Internet to the Downloaded files folder and then browse those folders and choose items using the Notes applications 0109 0110 See 0175 for hotspots such as selection lists 1d enabling the user of the telephone to program at least a portion of the user defined audio file into the telephone for use as an indicia of an incoming comm
59. o 08 804 236 filed on February 20 1997 issued on September 18 2001 Alanara Exhibit 1023 Certified English translations of JukeBoksi websites corresponding to 1019 0088 0098 Exhibit 1024 Google Inc v Whitserve LLC IPR2013 00249 Decision dated Sept 10 2013 Paper 11 Granting petition based in part on Exhibit 1003 also attached Exhibit 1025 Wynn W Coggins Prior Art in the Field of Business Method Patents When Is an Electronic Document a Printed Publication for Prior Art Purposes AIPLA Fall 2002 available at http www uspto gov patents resources methods aiplafall02pape r Sp Exhibit 1026 Declaration of Jari Valli Exhibit 1027 The IEEE Standard Dictionary of Electrical and Electronics Terms 6th ed 1997 Exhibit 1028 Webster s II New College Dictionary 2001 Exhibit 1029 Microsoft Press Computer Dictionary 1999 Exhibit 1030 The Concise Oxford Dictionary Judy Pearsall ed Oxford University Press 10th ed 1999 vi Case IPR2015 00342 Petition for Inter Partes Review Exhibit 1031 Nokia 9110 User Manual published at least as early as February 1 1999 9110 UM Exhibit 1032 Declaration of Erin Flaucher re Nokia 9110 with Exhibits Exhibit 1033 9110 Nokia com web page archived May 8 1999 for frequently asked questions 9110 FAQ Exhibit 1034 9110 CD Listing Printout 9110 CD Listing Exhibit 1035 9110 PC Suite PC Suite for
60. o files in one of the plurality of different locations that include audio files Rizet discloses allowing the user to browse audio files e g browsing melodies and songs using menu buttons such as stop next and selection in one of the plurality of different locations that include audio files including allowing the user to prelisten to ringtones For example Rizet discloses Figure 2 shows programmed and connected microprocessor 10 in telecommunication device 3 provides a guided menu block 11 wherein choices can be made by pushing appropriate keys on a keyboard 12 to choose block 13 for example for ringing information in the form of music tones speech etcetera to be downloaded by the downloading means 7 In block 14 the chosen ringing information can at wish be prelistened by audio producing means 15 to hear the melody speech etcetera before being downloaded The selection means 8 provide for a stop next and selection in blocks 16 of a preferred and in block 17 confirmed 32 Case IPR2015 00342 Petition for Inter Partes Review choice of ringing information In block 18 the means 7 download the confirmed choice and block 19 ends the cession In an alternative embodiment the telecommunication device 3 contains a video display means 20 for selecting ringing information items in the database 6 on the basis of the name displayed on the video display means 20 or a reference to a particula
61. of displays to illustrate what the user sees on the display The command NEW RINGING TONES is sent in a user message to a server of a ringing tone service provider in order to request the latest ringing tones As a response the server sends a user message containing information relating to the Menu applications for creating a menu from which the user can select a new ringing tone 14 39 47 A network like the GSM network is maintained by several operators and usually each operator has at least one SMS server of their own In this case naturally any SMS server or several servers may be used for the invention 3 30 35 Optionally a service provider or operator may have a separate server GTW 5 41 42 The example shown in FIG 11 illustrates how user messages according to the invention can be used for providing new services to a terminal like a mobile phone by having predetermined signs corresponding to predetermined commands These signs and commands can be stored in a memory in the terminal device of a user e g a mobile phone or of a service provider e g a computer and can be implemented by software 24 Case IPR2015 00342 Petition for Inter Partes Review run by a processor for performing the predetermined commands Also in this way the terminal can be programmed to function in a specific manner The Menu application allows a service provider to introduce new applications into the termin
62. plain and ordinary meaning VI DETAILED EXPLANATION AND SUPPORTING EVIDENCE UNDER 37 C F R SS 42 104 b 4 AND b 5 Pursuant to 37 C F R 42 104 b 4 and b 5 Petitioners explain below why claims 1 and 4 6 are unpatentable under the statutory grounds identified above including the identification of where each element is found in the prior art patents or printed publications The claim charts identify the supporting evidence relied upon to support the challenge by exhibit number and set forth the relevance In the Litigation Defendants have proposed that this term mean an audio file provided by the user See Exhibit 1021 at 0032 Defendants construction This construction 1s narrower than the broadest reasonable construction required here 17 Case IPR2015 00342 Petition for Inter Partes Review of the evidence to the challenge raised including an identification of those specific portions of the evidence that support the challenge An Exhibit List see 37 C F R 42 63 e identifying the exhibits is also included supra at p v A Mr Shanahan Is Not Entitled to an Invention Date Prior to March 3 2000 Claims 1 and 4 6 are not entitled to the filing date of the December 1999 provisional application As set forth in the Declaration of Dr Henry Houh Exhibit 1038 the provisional application does not come close to providing sufficient written description to establish that Mr Shanahan possessed the full scop
63. ple the contact card options which allows the user to select a ringing tone for each contact 0052 See also 0064 Ringing tone Determines the ringing tone 0123 Default ringing tone You can select one of the tones in the pop up box 0140 0142 0148 50 Case IPR2015 00342 Petition for Inter Partes Review G 9110 UM Combined With 9110 Documents Render Obvious Claims 1 and 4 6 The prior section shows that 9110 UM invalidates claims 1 and 4 6 via multiple locations on the Internet More Nokia publicly distributed publications the 9110 Documents confirm the invalidity of claims 1 and 4 6 9110 Documents are not cumulative to 9110 UM for at least four reasons First 9110 Documents describe another location file directories on the user s PC which a user may search browse and select WAV audio files for programming as ringtones This location provides additional support for meeting the claim 1 term plurality of locations Second 9110 Documents expressly state WAV files can be downloaded from the Internet The WAV files can also be used as ringtones See Exhibit 1033 at 0004 This relates to all the claim elements in all 4 disputed claims Third 9110 Documents describe another wireless network an IR network over which the audio files are transmitted which relates to the wireless network in claim 5 Exhibit 1035 at 0094 Fourth the 9110 UM more explicitly disclos
64. pressly intended for use with Nokia phones Based on the teachings in 9110 UM one of skill in the art would have considered accessing the My Nokia website using the web browser on the 9110 in order to download files exactly as taught by 9110 UM Exhibit 1038 341 The MyNokia website had multiple webpages with ringtones including for example a TV amp Movies www my nokia co uk ringtonesl html b Popular www my nokia co uk ringtones2 html c Classical www my nokia co uk ringtones3 html and d Others www my nokia co uk ringtones1 html Clicking on any of these links would take the user to a different web page where the user would be presented with a different list of ringtones for downloading Two examples from Exhibit 1019 are shown below Popular Movies A Better of Alone DJ Jurgen presents Alice Deejay Paris ris Blue De la Dee Aaus Barbie Gil Vengaboys Boom Boom Boom Enjoy a trip down memory land and relive the golden era of Television The ones in Bold are highly recommended See below for ordering information TV Movies Popular Classical Others The Adams Family int Bi i Men Behaving Badly The A Team Mission Impossible Austin Powers Monty Python s Flying Circus The Avengers The Munsters Bewitched The Muppet Show lue Peter j Bullseye One Foot in the Grave Carry on Doctor Parkinson Cha W Coca Cola Advert Postman Pat Crossroads The
65. r ringing item generally by displaying characters on the means 20 3 31 4 14 See Figure 2 shown above in limitation 1b allowing the user to move to the next audio files browse and select those files 1c allowing the user to choose the user defined audio file from among the browsed audio files and Rizet discloses allowing the user to choose the user defined audio file 2 29 30 from among the browsed audio files For example Rizet discloses that a suitably programmed and connected microprocessor 10 selection means provides a guided menu block 11 wherein the user can select one of the audio files using the display and keys on a keyboard including a select key Each telephone 3 is provided memory updating means 5 is connected via the communication link 2 to a database 6 which is present somewhere in the network 1 The database is filled with alternative forms of ringing information such as melodies songs sound soundtracks speech etcetera The communication link 2 is connected to means 7 for downloading at least one or the alternative forms of ringing information to the ringing information memory 4 There is provided in selection means 8 connected to the memory updating means 5 and via the communication link 2 to the database 6 in order to be capable of selectively providing ringing information items from the database 6 to the memory 4 in a way to be described with
66. r the contact in the Nokia 9110 Communicator Exhibit 1035 at 0027 See also 0022 0025 and 0036 0039 on syncing contact cards that including ringing tones for the individual contacts 9110 FAQ Audio files WAV files as ringtones and The WAV files can also be used as ringtones A set of WAV files can be found on the CDROM in the sales package Exhibit 1033 at 0002 0004 9110 WAV Converter The converted sound file can be used as a ringing tone Exhibit 1036 at 0001 One of skill in the art would understand that the 9110 Documents teach the ability to search browse and select any file on the PC This would include the ability to select WAV files on the PC including WAV files referenced in 9110 WAV Converter as well as the WAV files that came on the CD inserted into the 55 Case IPR2015 00342 Petition for Inter Partes Review PC with the 9110 Exhibit 1038 315 9110 WAV Converter teaches that the converted sound file can be used as a ringing tone after the user t ransfer s the Wav file to the Nokia 9110 Communicator using the PC Suite Connectivity Software which is described in PC Suite Exhibit 1036 at 0001 0003 4 wherein the enabling further comprises retrieving the user defined audio file from the Internet 9110 FAQ WAV files can be downloaded from the Internet The WAV files can also be used as ringtones A set of WAV files can be found on the CDROM i
67. r the vast majority of the claim elements in the December 1999 application confirms that Mr Shanahan cannot seek to swear behind references pre dating the December 1999 application date as he may try to do Proving an earlier invention date is a two step process First a patentee must provide evidence that it had possession of every feature recited in the claims at the time of the alleged conception See Garmin Int l Inc v Cuozzo Speed Techs LLC IPR2012 00001 Paper 59 at 22 23 P T A B 2013 Second it must provide independent corroboration of the date and origin of that evidence Id As shown above Mr Shanahan cannot establish that he had possession of every claimed feature in December 1999 much less any earlier date Additionally even if Mr Shanahan attempted to introduce some earlier document he cannot show diligence throughout the entire critical period Monsanto Co v Mycogen Plant Sci Inc 261 F 3d 1356 1369 Fed Cir 2001 The evidence must show that the alleged earlier inventor was diligent throughout the entire critical period emphasis added Indeed the Federal Circuit has recognized that even miniscule delays are sufficient to preclude a finding of diligence Jn re 20 Case IPR2015 00342 Petition for Inter Partes Review Mulder 716 F 2d 1542 1545 Fed Cir 1983 two day unexplained gap disproves the continuity required for due diligence Thus Mr Shanahan is not entitled to a December 1999 priori
68. ransfer the Wav file to the Nokia 9110 Communicator using the PC Suite 54 Case IPR2015 00342 Petition for Inter Partes Review Connectivity Software Id at 0003 1c allowing the user to choose the user defined audio file from among the browsed audio files and 9110 Documents teaches a user choosing 9110 PC Suite Standard Windows file selection methods are used to select files or folders in the File Transfer screen You can select an item by clicking on it with your mouse Files and folders may be copied in the File Transfer window select the item s you want to copy Exhibit 1035 at 0095 See also 0096 2 In either pane select the item or items you want to cut 9110 WAV Converter a user selects audio files by click Open and Type or select the name of the Wav file Exhibit 1036 at 0002 0003 The converted sound file can be used as a ringing tone Jd at 0001 A six step process ending with 5 Type or select the name for the converted Wav file 6 Transfer the Wav file to the Nokia 9110 Communicator using the PC Suite Connectivity Software Id at 0003 1d enabling the user of the telephone to program at least a portion of the user defined audio file into the telephone for use as an indicia of an incoming communication See the discussions in elements la 1d above in 9110 UM 9110 PC Suite Ringing tone The individual ringing tone set fo
69. rash Songs of Praise Fawity Towers Startrek The Elintstones Startrek Communicator Better of Alone DJ Jurgen presents Alice Deejay Paris Blue De la Dee ATB 9pm till come home Agadoo Aha Take on me lin j Aqua ie Girl Vengaboys Boom Boom Boom Exodus Are Friends Electric Eunky Town Girl from something Swear Jesus Christ Superstar Money money money Popcorn remix Relight my fire Spice Girls Wannabee Yakety Yak YMCA ik Food Glorious Food Aint Misbehaving Eleanor Rigby The Beatles Sweet like Chocolate Mr Vain TV Movies Popular Classical Others 0021 The user can choose one of the audio files by clicking on the title on any of the website pages as appearing in the images shown in connection with limitation 1b above One of skill in the art would understand that the presentation of the web pages as shown above in 1b with the selectable links to audio files would allow 38 Case IPR2015 00342 Petition for Inter Partes Review the user to choose one of the offered audio files The underlining in the title indicates that the title is selectable by the user Exhibit 1038 4 231 1d enabling the user of the telephone to program at least a portion of the user defined audio file into the telephone for use as an indicia of an incoming communication Customise your mobile phone with cool new ring tones and graphics 0013 We offer a unique service that lets you personalise
70. reference to the flowchart of figure 2 3 18 30 See Figure 1 showing the transmission from a database through a wireless network to a phone with the elements described above Figure 2 shows a flowchart for elucidating one possible way of implementing the updating of the ringing information present in the ringing information memory 4 A suitably programmed and connected microprocessor 10 in telecommunication device 3 provides a guided menu block 11 wherein choices can be made by pushing appropriate keys on a keyboard 12 to choose block 13 for example for ringing information in the form of music tones speech etcetera to be downloaded by the downloading means 7 In 33 Case IPR2015 00342 Petition for Inter Partes Review 1d enabling the user of the telephone to program at least a portion of the user defined audio file into the telephone for use as an indicia of an incoming communicati on block 14 the chosen ringing information can at wish be prelistened by audio producing means 15 to hear the melody speech etcetera before being downloaded The selection means 8 provide for a stop next and selection in blocks 16 of a preferred and in block 17 confirmed choice of ringing information In block 18 the means 7 download the confirmed choice and block 19 ends the cession In an alternative embodiment the telecommunication device 3 contains a video display means 20 for selecting ringing information
71. rformer lists List of ringtone types 1 Browsing Published Songs You can browse published songs according to the song name the composer or the style On the TOPTEN page you will always find the currently most popular songs 1t will list the ten most uploaded ringtones in the last week Lists and even TOPTEN are continuously updated in real time 0015 41 Case IPR2015 00342 Petition for Inter Partes Review 2 The song bank In the song bank you will see all the unpublished songs you have saved You can edit a song by clicking on its name You will no longer be able to edit published ringtones as they are deleted from your song bank after publication 0016 Lists lists lists Check Finland s hottest ringtones from the TOPTEN list or browse other ringtone lists Newest songs Song name lists Performer lists List of ringtone types 0002 On this page you will find JukeBoksi s most popular songs from last week The list is updated every day Check the new arrivals and all time favorites every day JukeBoksi s 30 most popular songs of this week 0008 JukeBoksi s 30 most popular songs of this week Name of Song Performer Style X Files Theme X Files Theme Song QOYNWLY long Last Jonna amp Pop Erin 3 McGyver McGyver Theme Song EFF long Benny Hill Benny Hill Joik 5 Let s Ride on a Radiolinja Theme Song Tandem long Blue Oyster Club sh Yes Tango Last Nylon b
72. s ultimately cancelled by Mr Shanahan in the face of these rejections over Armanto and Ohayon noting that Armanto disclose s a programming of a telephone s ringing tone and that Ohayon taught playing user audio when receiving an incoming telephone call Id at 0131 The Examiner did not explain why Armanto and or Ohayon were not cited or even discussed with respect to eventual claims 1 and 4 6 Mr Shanahan corrected the antecedent basis issues and the Examiner issued a Notice of Allowability The Examiner changed the reasons for allowance asserting that none of the references teach and fairly suggest that the user to search sic a plurality of different locations including the combination and sic specifically described as claimed Jd at 0162 64 In making that assertion the Examiner did not acknowledge that 1 he had previously conceded that this limitation was taught by at least the Krane reference or 11 he previously agreed that programming ringtones into a device was taught by a number of prior art references Claims 1 and 4 6 subsequently issued IV IDENTIFICATION OF CHALLENGE UNDER 37 C F R 42 104 b Petitioners request inter partes review of claims 1 and 4 6 of the 692 patent 8 Case IPR2015 00342 Petition for Inter Partes Review in view of the references identified below None of the references listed below were considered by the Patent Office during prosecution Except where noted
73. s 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 UL THE 692 PATENT A Background The 692 patent was filed on March 3 2000 and purports to claim priority to a December 1999 provisional application the December 1999 application Exhibit 1001 The 692 patent relates to personalizing telephones with audio files Id at 1 55 57 The specification acknowledged that there were many types of electronics devices with user selectable audio and video that were already available before the invention date Id at 1 15 26 Similarly Mr Shanahan later 5 Case IPR2015 00342 Petition for Inter Partes Review acknowledged that basic ringtone technology was already well known before his earliest invention date Exhibit 1004 at 0094 95 According to Mr Shanahan a drawback of such technology was that users ha d to choose from a limited selection of pre programmed information placed there by the manufacturer Exhibit 1001 at 1 31 34 To address this purported issue Mr Shanahan proposed a method for allow ing a user to program user defined information into his
74. stitutes a different file or memory location on a computer Exhibit 1038 191 JukeBoksi invalidates claims land 4 6 as indicated below See also id If 181 218 Claim Where Each Limitation Is Found in JukeBoksi Exhibit Element 1023 1 A method On these pages you can browse ringtones made for certain for Nokia GSM telephones 0002 This is how you upload a song programming a user defined audio file into a telephone comprising to your own GSM telephone 0009 followed by steps to download a ringing tone into your phone Radiolinja s JukeBoksi offers you an opportunity to compose listen to and upload to your GSM telephone your own and others creations as well as ringtones protected by authors rights laws you should familiarize yourself with the instructions so you can have your own songs playing on your phone 0014 la allowing a user to search a plurality of different locations that include audio files JukeBoksi website offers multiple ways to obtain ringtones for browsing For example the site lets a user search by song name the composer or the style In addition JukeBoksi displays multiple links Lists lists lists each of which links takes the user to a different web page and provides search results for the user to browse including for example the song bank of unpublished songs TOPTEN Newest Songs Song name lists Pe
75. t it 1s not clear how Solocron will construe that term 9110 UM and 9110 Documents are not cumulative to any of the other references because they describe multiple different methods for browsing selecting and downloading ringtones 9110 UM discloses a wireless phone with a generic Internet browser that can search browse select download and program ringtones from any websites Similarly 9110 UM discloses the use of WAV files as ringtones which is one of the identified formats identified in the 692 patent 59 Case IPR2015 00342 Petition for Inter Partes Review VI CONCLUSION For all of the foregoing reasons inter partes review of claims 1 and 4 6 of the 692 patent is respectfully requested Respectfully submitted WILEY REIN LLP By Kevin P Anderson 43 471 Kevin P Anderson Reg No 43 471 Floyd B Chapman Reg No 40 555 Scott A Felder Reg No 47 558 1776 K Street NW Washington DC 20006 Phone 202 719 7000 Fax 202 719 7049 60 Case IPR2015 00342 Petition for Inter Partes Review CERTIFICATE OF SERVICE ON PATENT OWNER UNDER 37 C F R 42 105 A Pursuant to 37 C F R 88 42 6 e and 42 105 b the undersigned certifies that on the 5th day of December 2014 a complete and entire copy of this Petition for Inter Partes Review together with all supporting exhibits was provided to the Patent Owner by mailing a copy of the same via FedEx to the following attorneys of record for the Patent Ow
76. the 692 claims See id at 2 29 30 Almost a year prior to Mr Shanahan s purported invention Nokia published a User s Manual and other documents about a well known device the Nokia 9110 These documents explicitly teach users to search browse and select files from the Internet so that WAV files can be downloaded from the Internet and can also be used as ringtones Exhibit 1033 at 0004 Neither the 9110 nor any documentation concerning the 9110 were considered during prosecution Similarly well before the 692 filing a Finnish carrier Radiolinja worked with an inventor Vesa Matti Paananen to develop and launch a website called Jukeboksi that allowed subscribers to customize their cellular phones with 2 Case IPR2015 00342 Petition for Inter Partes Review ringtones of their choice Mr Pananen has received recognition from the industry including a special award as Pioneer of the Mobile Ringtone Business Exhibits 1016 1018 As shown below in screen captures from the Wayback Machine Jukeboksi permits a user to search browse and download a wide variety of ringtones Exhibit 1019 at 0015 0019 0021 and 0088 98 and Exhibit 1023 Also prior to Mr Shanahan s earliest filing date the My Nokia website launched and permitted users with Nokia phones such as the 9110 to customize those phones with selectable ringtones Exhibit 1019 at 0015 0019 0021 Authenticated screen captures of My Nokia confirm that My
77. the user manual that was sold with the Nokia 9110 telephone and made publicly available on Nokia s website around February 1 1999 Exhibit 1026 41 4 6 Exhibit 1032 41 4 14 The manual has nearly 200 pages of detailed instructions teaching users how to set ringtones for individual callers as well as how to download audio files and copy them to the sounds folder for use as a ringing tone 9110 UM teaches that the user can browse search and select files from any location on the Internet using an integrated browser and then copy those files for use as a ringing tone 9110 UM also teaches that the user can uses a Notes application to browse search and select the different files in different folders in the memory of the phone itself These different folders can contain ringing tones Thus for 9110 UM the plurality of locations element is met in at least 2 separate ways 1 multiple locations on the Internet containing audio files 2 at least one location in the directories memory on the phone and at least one location on the Internet Exhibit 1038 261 45 Case IPR2015 00342 Petition for Inter Partes Review 9110 UM invalidates claims 1 and 4 6 as indicated below See also id 99 246 302 Claim Where Each Limitation Is Found in Nokia 9110 UM Exhibit Element 1031 1 A method UM discloses programming a user defined audio file e g a for WAV file into a telephone to be used as a ringing tone progra
78. tion and as a response to the user message the operator may send the ring tone coded into a user message which can then be stored into a ring tone memory of the terminal 11 12 22 The selection activates a user message to be sent to the server indicating the desired ring tone the terminal receives the ring tone from the server A received ringing tone is indicated to the user using the RINGING TONE RECEIVED notification The user can accept or reject the ring tone Once the user has given acceptance the selection menu with the options Save and Playback displays If the user selects the Save option the received ringing tone is saved to the phone and it appears to a ringing tone options menu 14 48 57 See also Fig 10 relating to saving the received ringtone above in element 1a discussing save and saved 4 wherein As discussed above with lc and 1d above Alanara teaches Ba Case IPR2015 00342 Petition for Inter Partes Review the enabling further comprises retrieving the user defined audio file from the Internet that the submenus can be linked to URLs which can be used to fetch ringing tones from the internet Entries in the sub menus can be associated with URL Uniform Resource Locater information which can be used to fetch information from Internet Actions may cause information to be sent to the terminal by a network
79. ts discloses a method for programming a user for defined audio file e g a WAV file into a telephone which programming a can be used as a ringing tone user defined 9110 FAQ Audio files WAV files as ringtones and WAV audio file into a files can be downloaded from the Internet The WAV files can telephone also be used as ringtones A set of WAV files can be found on aa the CDROM in the sales package Exhibit 1033 at 0002 0004 la allowinga 9110 Documents discloses searching a plurality of locations that user to search a include audio files the two directories with WAV files provided plurality of 53 Case IPR2015 00342 Petition for Inter Partes Review different locations that include audio files on the CD with the 9110 and or other directories on the PC 9110 FAQ Audio files WAV files as ringtones and The WAV files can also be used as ringtones A set of WAV files can be found on the CDROM in the sales package 1d 9110 CD Listing Exhibit 1032 91 4 12 16 and Exhibit B thereto showing listing with two directories containing WAN files on the CD publicly distributed with the 9110 in 1999 9110 PC Suite teaches The PC Suite File Transfer functions let you move copy paste rename and delete Nokia 9110 Communicator and PC files and folders in a familiar Windows Explorer type environment Exhibit 1035 at 0094 Connect your communicator to your
80. ty date and cannot swear behind any of the references below B Claims 1 and 4 6 Are Anticipated by Alanara Alanara is one of many Nokia patents that expressly discloses a mobile phone that wirelessly communicates with an Internet server to search browse select download and program applications which include ringtones into a wireless phone See e g Exhibit 1022 at 14 39 65 Figure 10 claim 1 In sharp contrast to the sparse disclosure of the 692 patent Alanara details how a mobile phone and an Internet server would be programmed to download ringtones For example Alanara extensively details how to create menus on the phone that link to different websites in order to download ringing tones the phone Id at 10 26 12 3 The ringtones are shown as sub menu Download Ringing Tones option on the phone and e ntries in the sub menus can be associated with URL Uniform Resource Locater information which can be used to fetch information from Internet d at 11 13 26 Thus each ringtone submenu can link to a different location URL on the Internet which can be used to search download ringtones See id at 14 39 65 Alanara teaches website programming for ringtone websites as well 21 Case IPR2015 00342 Petition for Inter Partes Review Alanara teaches that a number of different companies have their own services pages on the Internet through which a user may order information on a service Id at 16 48 50
81. unication UM teaches how a user can program the phone to use a particular ringing tone to indicate an incoming phone call by copying a file to the sounds folder after it has been downloaded into the downloaded files folder As discussed in connection with element 1b the user can save files off the Internet to the Downloaded files folder and then browse those folders and choose items using the Notes applications 0109 0110 The user may copy the downloaded files to the sounds directory When you press the Menu button in an opened folder the following options become available Copy to sounds You can add the selected tune to the list of ringing tones 0110 UM teaches how an audio file in the sounds folder is assigned and used as a ringing tone to a contact stored as a contact card 49 Case IPR2015 00342 Petition for Inter Partes Review Contact card options When you press Options in an opened contact card the following options become available Ringing tone You can set a specific ringing tone for each contact in the Contracts directory Select a tone from the list and press Select The icon appears at the top of the contract card See Figure 2 0052 4 wherein the enabling further comprises retrieving the user defined audio file from the Internet 5 wherein the enabling further comprises transmitting the user defined audio file across a wireless
82. website printouts renders claims and 4 6 obvious Since all of these websites are related to the same service and indeed interconnected by hyperlinks it would be obvious to one skilled in the art to combine them Exhibit 1038 4 220 The pages are intended to work together to provide the My Nokia service Jd Collectively the website printouts yield the inventions of claims 1 and 4 6 36 Case IPR2015 00342 Petition for Inter Partes Review Claim Where Each Limitation Is Found in My Nokia Exhibit 1019 Element 1 A method Customise your mobile phone with cool new ring tones and for programming a user defined audio file into a telephone comprising graphics 0013 We offer a unique service that lets you personalise your Nokia mobile phone with new musical ring tone melodies 0017 la allowing a user to search a plurality of different locations that include audio files lb allowing the user to browse audio files in one of the plurality of different locations that include audio My Nokia has a plurality of related websites where a user can search for ringtones including TV Movies Popular Classical and Others As indicated by the underlining at the bottom of the screen image below each of these four new sections are links that take the user to different web pages and thus constitute a plurality of different locations Nokia Ring Tones We have
83. ys that are designed for navigating the web in Figure 5 0025 Using the Notes application the user can visually manage folders and store downloaded files first to the downloaded files folder and then copy them to the sounds folder for use as a ringtone Notes is used for managing various documents stored in the communicator Note When you open a document the document is opened in the appropriate editor or viewer The available commands vary according to the editor viewer 0109 Folders in the Notes main view are Downloaded files Documents downloaded with the Internet applications Id with Figure 1 below Notes Open C E Own texts Gay Received faxes Write note O Received messages Gj Received mail Ea Downloaded files C B Memory card A Document outbox Settings C Figure 1 When you press the Menu button in an opened folder the following options become available Copy to sounds You can add the selected tune to the list of ringing tones 0110 A WWW page may contain hotspots such as selection lists text entry fields and reset submit buttons which enable you to input information into the World Wide Web 0175 1c allowing the user to choose the user defined audio file from among the UM teaches a telephone that includes a web browser that allows a user to select audio files e g using the Fetch key Save option or using the Cha

Download Pdf Manuals

Related Search

Related Contents

SIIDJ Cambio de Funcionalidad Operaciones ETF  取扱説明書[HH-LP361L] (498.16 KB/PDF)  Atcom Rainbow 1 User Manual  JVC GR-DVL410 Camcorder User Manual  Betriebsanleitung (MY 11.6)  Samsung P2270H Uporabniški priročnik  Télécharger (615 ko)  KDC-M7024 KDC-7024  

Copyright © All rights reserved. Failed to retrieve file