United States Patent and Trademark Office Before

Case IPR2015-00391 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&T MOBILITY LLC Petitioners

SOLOCRON MEDIA, LLC Patent Owner

Case IPR2015-00391 Patent No. 7,257,395

PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,257,395 UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET SEQ.

Mail Stop: Patent Board Patent Trial and Appeal Board United States Patent and Trademark Office P.O. Box 1450 Alexandria, VA 22313-1450

Case IPR2015-00391 Petition for Inter Partes Review

TABLE OF CONTENTS

I. INTRODUCTION AND BACKGROUND ...... 1

II. NOTICES, STATEMENTS AND PAYMENT OF FEES ...... 7

A. Real Party In Interest Under 37 C.F.R. § 42.8(b)(1) ...... 7

B. Related Matters Under 37 C.F.R. § 42.8(b)(2) ...... 7

C. Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ...... 8

D. Service Information Under 37 C.F.R. § 42.8(b)(4) ...... 8

E. Grounds for Standing Under 37 C.F.R. § 42.104(a) ...... 8

F. Fees Under 37 C.F.R. § 42.103 ...... 9

III. IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R. § 42.104(B) ...... 9

IV. HOW THE CHALLENGED CLAIM IS TO BE CONSTRUED UNDER 37 C.F.R. § 42.104 (B) (3) ...... 14

V. THE PATENT AND ITS PROSECUTION HISTORY ...... 18

A. Prosecution History of the ‘395 Patent ...... 19

B. Prosecution History of the Related Child ‘866 Patent ...... 20

C. The ‘395 Patent Suffers From the Same Deficiencies That the Inventor Identified in the Prior Art In The ‘866 Prosecution...... 22

VI. THE EARLIEST PRIORITY DATE OF THE CHALLENGED CLAIMS IS MARCH 2000...... 23

VII. DETAILED EXPLANATION AND SUPPORTING EVIDENCE UNDER 37 C.F.R. §§ 42.104(B)(4) AND (B)(5) ...... 26

A. “Polyphonic Audio Files” Cannot Form the Basis for Patentability ...... 27

B. Claims 22, 25, 30, 39, and 40 are Anticipated Or Rendered Obvious By the Nokia 9110 User’s Manual...... 30

C. Claims 22, 25, 30, 39, and 40 are Obvious In View Of 9110 UM And 9110

Case IPR2015-00391 Petition for Inter Partes Review

FAQ...... 36

D. Claims 22, 25, 30, 39, and 40 are Obvious Over 9110 UM, 9110 FAQ, and Perez...... 37

E. Claims 22, 25, 30, 39, and 40 Are Obvious Over 9110 UM, 9110 FAQ, Perez and Nikkei...... 39

F. Claim 36 Is Obvious Over 9110 UM With The 9110 FAQ And Nokia Press Releases...... 42

G. Claim 36 Is Obvious Over 9110 UM With The 9110 FAQ, Nikkei and Nokia Press Releases...... 43

H. Claim 36 Is Obvious Over 9110 UM With The 9110 FAQ, Nikkei, Perez, and Nykanen...... 44

I. Claims 22, 25, 30, 39, and 40 Are Obvious Over Rizet and Either Rolf or Fritsch...... 46

J. Claims 22, 25, 30, 39, and 40 are Obvious Over Rizet, Perez and one of Rolf or Fritsch...... 55

K. Claims 22, 25, 30, 39, and 40 Are Obvious Over Rizet and Nikkei...... 56

L. The Asserted References Are Not Cumulative At This Point...... 58

VIII.CONCLUSION ...... 60

Case IPR2015-00391 Petition for Inter Partes Review

TABLE OF AUTHORITIES

Page(s)

Cases Abbvie Inc. v. Mathilda & Terence Kennedy Inst. of Rheumatology, 764 F.3d 1366 (Fed. Cir. 2014) ...... 28, 29

Geo M. Martin Co. v. Alliance Mach. Sys. Int’l LLC, 618 F.3d 1294 (Fed. Cir 2010) ...... 11, 26

In re Index Sys., 576 F. App’x 976 (Fed. Cir. 2014) ...... 2, 29

KSR Int’l Co. v. Teleflex Co., 550 U.S. 398 (2007) ...... 2, 41

Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157 (Fed. Cir. 2007) ...... 5, 41

Monsanto Co. v. Mycogen Plant Sci., Inc., 261 F.3d 1356 (Fed. Cir. 2001) ...... 26

In re Mulder, 716 F.2d 1542 (Fed. Cir. 1983) ...... 26

New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290 (Fed. Cir. 2002) ...... 24

In re NTP Inc., 654 F.3d 1268 (Fed. Cir. 2011) ...... 24

Pfizer Inc. v. Teva Pharms. USA, Inc., 460 F. Supp. 2d 659 (D.N.J. 2006) ...... 27

PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299 (Fed. Cir. 2008) ...... 7, 20, 24

Stored Value Solutions, Inc. v. Card Activation Techs. Inc., 499 F. App’x 5 (Fed. Cir. 2012) ...... 9

iii

Case IPR2015-00391 Petition for Inter Partes Review

Symantec Corp. v. Computer Assocs. Int’l, Inc., 522 F.3d 1279 (Fed. Cir. 2008) ...... 17

Voter Verified, Inc. v. Premier Election Solutions, Inc., 698 F.3d 1374 (Fed. Cir. 2012) ...... 10

Case IPR2015-00391 Petition for Inter Partes Review

PETITIONERS’ EXHIBIT LIST

Exhibit No. Description

Exhibit 1001 U.S. Patent No. 7,257,395 (the ‘395 patent)

Exhibit 1002 Complaint filed in Solocron v. Cellco Partnership et al. (Case No. 2-13-cv-1059) (E.D. Tex.) Exhibit 1003 Copy of U.S. Provisional Patent App. 60/169,158, as filed Dec. 6, 1999 (downloaded from PAIR) Exhibit 1004 Exhibit Not Used

Exhibit 1005 Exhibit Not Used

Exhibit 1006 Copy of U.S. Patent App. 10/223,200, as filed Aug. 16, 2002 (now U.S. Patent No. 7,257,395) (downloaded from PAIR) Exhibit 1007 Copy of Prosecution History for the U.S. Patent No. 7,319,866 (downloaded from PAIR), including U.S. Patent App. 10/915,866 as filed Aug. 11, 2004 Exhibit 1008 Exhibit Not Used

Exhibit 1009 Exhibit Not Used

Exhibit 1010 Prosecution History for the U.S. Patent No. 7,257,395 (U.S. Patent App. 10/223,200) (downloaded from PAIR) Exhibit 1011 Exhibit Not Used

Exhibit 1012 Exhibit Not Used

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

Exhibit 1016 Exhibit Not Used

Case IPR2015-00391 Petition for Inter Partes Review

Exhibit 1017 Exhibit Not Used

Exhibit 1018 Exhibit Not Used

Exhibit 1019 Declaration of Internet Archive and Copies of Various Websites

Exhibit 1020 “Yamaha Sound Generator LSI ‘YMU757,’” Yamaha News Release Exhibit 1021 Exhibit Not Used

Exhibit 1022 Exhibit Not Used

Exhibit 1023 Exhibit Not Used

Exhibit 1024 Exhibit Not Used

Exhibit 1025 U.S. Patent No. 6,911,592, entitled “Portable Telephony Apparatus With Music Tone Generator,” filed July 26, 2000, issued June 28, 2005, to Futamase

Exhibit 1026 European Patent Application EP1073034, entitled “Portable Telephony Apparatus With Music Tone Generator,” was published January 31, 2001 (“Futamase”) Exhibit 1027 Exhibit Not Used

Exhibit 1028 Exhibit Not Used

Exhibit 1029 U.S. Patent Application No. 2001/0045153

Exhibit 1030 Exhibit Not Used

Exhibit 1031 Excerpt from Harvard Dictionary of Music, Second Edition, Revised and Enlarged, Willi Apel, The Belknap Press of Harvard University Press, Cambridge MA, 1975. Exhibit 1032 Exhibit Not Used

Exhibit 1033 Exhibit Not Used

Case IPR2015-00391 Petition for Inter Partes Review

Exhibit 1034 Exhibit Not Used

Exhibit 1035 Final Decision dated April 21, 2014 in IPR2013-00072

Exhibit 1036 Exhibit Not Used

Exhibit 1037 Exhibit Not Used

Exhibit 1038 Local Patent Rule 4-3 Statement filed in Solocron v. Cellco Partnership et al. (E.D. Tex.) (Case No. 2-13-cv-1059) Exhibit 1039 http://www.slideshare.net/JesseTeWeehi/elements-of-music-start

Exhibit 1040 Random House Webster’s Unabridged Dictionary

Exhibit 1041 Encyclopedia Britannica

Exhibit 1042 YM3812 Chip Manual

Exhibit 1043 New Grove Dictionary of Music and Musicians

Exhibit 1044 Oxford Music Online

Exhibit 1045 MIDI Specification

Exhibit 1046 Standard MIDI File Specification

Exhibit 1047 General MIDI Specification

Exhibit 1048 ISO/IEC standard 11172-3 (“MP3” specification)

Exhibit 1049 WMA File Format Specification

Exhibit 1050 US 6,351,225 to Moreno

Exhibit 1051 U.S. Patent No. 6,496,692 (“the ‘692 patent”)

Exhibit 1052 ‘866 Prosecution History, Reply to Office Action dated 5/4/2007

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Case IPR2015-00391 Petition for Inter Partes Review

Exhibit 1053 Yamaha YMU757 Press Release, October 12, 1999

Exhibit 1054 Yamaha YMU757 Technical Manual, February 2000

Exhibit 1055 Analysis of WAV files provided in 1999 with Nokia 9110

Exhibit 1056 U.S. Patent No. 7,319,866 (“the ‘866 patent”)

Exhibit 1057 Exhibit Not Used

Exhibit 1058 Exhibit Not Used

Exhibit 1059 Exhibit Not Used

Exhibit 1060 Exhibit Not Used

Exhibit 1061 Exhibit Not Used

Exhibit 1062 Exhibit Not Used

Exhibit 1063 Exhibit Not Used

Exhibit 1064 Exhibit Not Used

Exhibit 1065 Declaration of Jari Valli

Exhibit 1066 The IEEE Standard Dictionary of Electrical and Electronics Terms (6th ed. 1997) Exhibit 1067 Exhibit Not Used

Exhibit 1068 Exhibit Not Used

Exhibit 1069 Exhibit Not Used

Exhibit 1070 Nokia 9110 User Manual, published at least as early as February 1, 1999 (“9110 UM”) Exhibit 1071 Solocron’s Opening Claim Construction Brief from Solocron v. Cellco Partnership et al. (Case No. 2-13-cv-1059) (E.D. Tex.)

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Case IPR2015-00391 Petition for Inter Partes Review

Exhibit 1072 Exhibit Not Used

Exhibit 1073 Exhibit Not Used

Exhibit 1074 Certified translation of Chapters 2-3 of “Nikkei Electronics” 1999.11.15 Exhibit 1075 Exhibit Not Used

Exhibit 1076 Exhibit Not Used

Exhibit 1077 Exhibit Not Used

Exhibit 1078 Exhibit Not Used

Exhibit 1079 Declaration of John M. Strawn, Ph.D., and CV

Exhibit 1080 Exhibit Not Used

Exhibit 1081 U.S. Patent No. 6,492,761, filed on January 20, 1998, issued on December 10, 2002 (“Perez”) Exhibit 1082 Declaration of Erin Flaucher re Nokia 9110 with Exhibits

Exhibit 1083 9110 Nokia.com web page archived May 8, 1999 for “Frequently Asked Questions" (“9110 FAQ”) Exhibit 1084 Exhibit Not Used

Exhibit 1085 Exhibit Not Used

Exhibit 1086 Exhibit Not Used

Exhibit 1087 Declaration of Internet Archive re Nokia Websites

Exhibit 1088 Declaration from Lisa Rowlinson de Ortiz and Attachments

Exhibit 1089 Declaration of Henry Houh, Ph.D., and CV

Exhibit 1090 Exhibit Not Used

Case IPR2015-00391 Petition for Inter Partes Review

Exhibit 1091 Modtones Begin U.S. Tour on Verizon Wireless’s Get it Now Service, September 23, 2002 Exhibit 1092 Motorola T720 With New Verizon Wireless Get it Now Service Helps Consumers Get Busy in Full Color, September 22, 2002 Exhibit 1093 AT&T Wireless “Turns On” the World’s Capital, October 14, 2002 Exhibit 1094 Exhibit Not Used

Exhibit 1095 Exhibit Not Used

Exhibit 1096 Exhibit 1096 - Nokia Announces the Nokia WAP Browser (June 30, 1999) Exhibit 1097 The Nokia 9110i Communicator with WAP (February 23, 2000)

Exhibit 1098 The Nokia 9110i Communicator offers WAP services to the large community of knowledge workers (February 23, 2000) Exhibit 1099 U.S. Patent No. 7,065,342, filed, November 22, 2000, claiming priority to U.S. Provisional Application Ser. No. 60/167,179, filed Nov. 23, 1999, entitled “System, Method, and Device for Playing Recorded Music on a Wireless Communications Device,” issued to Rolf (“Rolf”) Exhibit 1100 U.S. Provisional Application Ser. No. 60/167,179, filed Nov. 23, 1999, entitled “System, Method, and Device for Playing Recorded Music on a Wireless Communications Device” (“Rolf Provisional”) Exhibit 1101 U.S. Patent No. 6,247,130, filed January 18, 2000, claiming priority to U.S. Provisional Application Ser. No. entitled “Distribution of musical products by a web site vendor over the Internet,” issued to Fritsch (“Fritsch”)

Exhibit 1102 Email with Nikkei Publisher Exhibit 1103 U.S. Patent No. 6,661,784, filed March 2, 1999, claiming priority to Mar. 3, 1998 Finnish Patent Application No. 980485, issued to Nokia December 9, 2003 (“Nykanen”)

Case IPR2015-00391 Petition for Inter Partes Review

Petitioners Cellco Partnership d/b/a Verizon Wireless and AT&T Mobility

LLC request inter partes review of claims 22, 25, 30, 36, 39, and 40 (the

“challenged claims”) of U.S. Patent No. 7,257,395 (the “‘395 patent”).

I. INTRODUCTION AND BACKGROUND

This petition seeks review of some of the claims in IPR2015-00350, but is

based on prior art from different time periods. The priority date for claims 36 and

40 depends upon the Board’s evaluation of the term “polyphonic audio files,”

which the inventor added to the ‘395 application in July 2003—44 months after the

first applications to which the ‘395 patent claims priority (“the Priority

Applications”). As explained in IPR2015-00350, claims 36 and 40 are entitled to a

June 2003 priority date because the Priority Applications do not sufficiently

disclose “polyphonic audio files.” See Exhibit 1035, Final Decision in IPR2013-

00072 at 0008 (patent “not entitled to the benefit of the filing date of [parent]”).

During prosecution, the patentee’s sole support for polyphonic audio files

was a citation in the Priority Applications to formats such as WAV and MP3.

Even assuming the earliest asserted priority date, the prior art shows those WAV

and MP3 file formats in explicit detail. The patentee cannot have it both ways: either the prior art herein invalidates claims 36 and 40 or those claims have a 2003 priority date and the prior art in IPR2015-00350 invalidates it.

Thus, even if the Board determines that bare file formats sufficiently

Case IPR2015-00391 Petition for Inter Partes Review disclose “polyphonic audio files,” the prior art in the present petition still invalidates claims 36 and 40 because: (a) that prior art teaches polyphonic audio files even under the narrowest construction of that term; (b) “polyphonic” audio files were at best an obvious, known variation; and (c) at a minimum, that prior art discloses as much as the Priority Applications (including, for example, WAV and

MP3 files). See Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1569

(Fed. Cir. 1988) (recognizing that the prior art need only have the same “level of

technical detail” as the asserted patent to be invalidating).

Indeed, by 1999, the idea of “polyphonic audio files” was not novel and

was—at most—an obvious variation of previous efforts. “Polyphonic” audio files

cannot be a basis for patentability because there are only two categories of audio

files: monophonic and polyphonic. This is the epitome of “a finite number of

identified, predictable solutions” that preclude patentability. KSR Int’l Co. v.

Teleflex Inc., 550 U.S. 398, 421 (2007); see also In re Index Sys., 576 F. App’x

976, 980 (Fed. Cir. 2014) (affirming Board decision of obviousness when “only

two solutions would have been realistically considered”). Adding polyphonic

audio files is the “mere substitution of one element [polyphonic files] for another

known in the field [monophonic files],” which merely “yield[s] a predictable

result[]” and is therefore non-patentable. KSR, 550 U.S. at 416.

Case IPR2015-00391 Petition for Inter Partes Review

Various industry publications dated before the earliest asserted priority date confirm this predictability. The industry was fully aware by 1999 that a normal evolution of technology was the use of “polyphonic audio files” as ringtones.

Companies recognizing this included Nokia in Europe, as well as Yamaha and others in Japan. The following figures from a Nikkei Electronics article (Exhibit

1074 at 0003, 0006) predating the earliest asserted priority date highlight this predictable evolution (with annotations by counsel):

Case IPR2015-00391 Petition for Inter Partes Review

Figure 2 (above) shows the evolution from “[m]onophonic ringtone

playback (current system)” to “[p]olyphonic ringtone playback (from end of

1999).” Id. at 0006. As noted in Exhibit 1074, the evolution depended upon new

technologies. One technology was to add “polyphonic functions” to mobile

phones. “Two evolutions of the ‘sound’ functions on mobile phones will first start

from mounting a function to simultaneously produce 3-4 sounds (chord playback

function) (Figure 2) … for playing ringtones” Id. at 0007. “ROHM Group and

Yamaha respectively released LSIs” which included polyphonic functionality. Id.;

see also id. at 0003 (“to improve the sound quality of the ringing tones is to

reproduce chords … [and] simultaneously reproduce three to four sounds”). The

Nikkei article was not presented to the Patent Office during prosecution.

The European wireless industry also recognized the evolution toward

polyphonic ringtones long before the Priority Application. Indeed, of its over 100

patent applications related to ringtones, Nokia has 17 separate patents and

applications with an earlier filing date than the ‘395 patent. Nokia also included

polyphonic WAV files with its well-known 9110 wireless phone released in 1999.

Exhibit 1079 ¶¶ 27-42. For example, the May 8, 1999 “FAQ page” of Nokia’s

website for the 9110 noted: “WAV files can be downloaded from the Internet …

The WAV files can also be used as ringtones.” Exhibit 1083 at 0004 (emphasis added). This squarely meets the patentee’s statement in prosecution that WAV

Case IPR2015-00391 Petition for Inter Partes Review files are polyphonic. No Nokia 9110 related documents were considered by the

Patent Office during prosecution.

Separately, by September 1999, Yamaha had developed—and was already selling—a specialized chip (“the YMU757”) referenced in the Nikkei article designed to be incorporated into “mobile phones” to provide “ringtones” which had “polyphony of up to 4 sound[s]” simultaneously. See Exhibit 1020 at 0001.

“[T]he YMU757, designed for mobile phones and PDAs, now allows the download and playback of user-selected sounds and melodies.” Exhibit 1053 at 0001. Like the 9110, no YMU757 documents were considered during prosecution. This consistent pattern of industry evolution confirms that—at best—the patentee merely adapted an old idea using newer, known technology, which the Federal

Circuit has recognized is another quintessential example of obviousness. See

Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1160 (Fed. Cir. 2007)

(patent claiming “nothing more than the [prior art], updated with modern

electronics that were common by the time of the alleged invention,” was obvious).

Against this backdrop of industry evolution, the Priority Applications did

not advance the art. The Priority Applications did not mention “polyphonic audio

files” or discuss any aspect related to polyphony. Exhibit 1079 ¶¶ 80-105.

Similarly, the Priority Applications assumed the existence of the infrastructure needed to transmit such ringtones such as wireless networks, and did not purport to

Case IPR2015-00391 Petition for Inter Partes Review disclose any improvement to existing wireless networks. Simply put, the Priority

Applications merely reiterate what was already recognized in the industry.

The timeline of the inventor’s addition of the term “polyphonic audio files” confirms that the Priority Applications did not advance the art. The inventor’s applications on December 3, 1999, March 3, 2000, and August 16, 2002 did not discuss any aspect of polyphony. The inventor later submitted two amendments adding over sixty new claims on June 20 and June 24, 2003—none of which referenced polyphony. Exhibit 1010 at 0447-52, 0347-359. Just two weeks later, on July 8, 2003, the inventor submitted a third claim set devoted to polyphonic audio files. Id. at 440-42. This new claim terminology only came after companies such as Nokia, Verizon, and AT&T had developed the technology and network infrastructure to commercialize “polyphonic” ringtones. Exhibits 1091-1093. For example, in March 2002, Nokia touted that the “Nokia 3510 ringtones are polyphonic” downloaded with a WAP browser. Exhibit 1087 at 0018-19.

Despite this significant industry development, none of the prior art asserted in this Petition was before the Examiner. The inventor distinguished the prior art for some claims based upon “polyphonic audio files”—without ever explaining why the ‘395 patent disclosed polyphonic audio files but the prior art (allegedly) did not. Exhibit 1010 at 0057-58. For claims 22 and 25 (prosecution claims 74 and 79), the patentee appeared to have distinguished prior art on the bases of

Case IPR2015-00391 Petition for Inter Partes Review specific file formats such as WAV and MP3 (id. at 0061-62) yet those file formats were readily present in the prior art as is shown in this Petition.

Finally, the fact that polyphonic audio files were an obvious evolution in the wireless industry does not lead to the conclusion that the Priority Applications disclosed polyphonic audio files. “Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed.

Cir. 2008) (internal quotations and citations omitted). The standards are different for obviousness and written description sufficient to claim priority. Polyphonic audio files may have been obvious, but they surely were not disclosed at all— much less sufficiently—in the Priority Applications.

For the reasons below, there is a reasonable likelihood that claims 22, 25, 30,

36, 39 and 40 are unpatentable in light of the prior art, warranting inter partes review.

II. NOTICES, STATEMENTS AND PAYMENT OF FEES

A. Real Party In Interest Under 37 C.F.R. § 42.8(b)(1)

The real parties in interest are Cellco Partnership d/b/a Verizon Wireless and

AT&T Mobility LLC.

B. Related Matters Under 37 C.F.R. § 42.8(b)(2)

Solocron sued the following entities (and Petitioners) for infringement of the

Case IPR2015-00391 Petition for Inter Partes Review

‘395 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 Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)

Petitioners designate lead and back-up counsel as noted below. Powers of

attorney pursuant to 37 C.F.R. § 42.10(b) accompany this Petition.

For Petitioner Cellco Partnership d/b/a Verizon Wireless Lead Counsel Backup Counsel Kevin P. Anderson, Reg. No. 43,471 Floyd B. Chapman, Reg. No. 40,555 Scott A. Felder, Reg. No. 47,558 WILEY REIN LLP, ATTN: Patent Administration, 1776 K Street NW, Washington, DC 20006, Phone: 202.719.7000 / Fax: 202.719.7049 For Petitioner AT&T Mobility LLC Lead Counsel Backup Counsel Theodore Stevenson, III, Reg. No. 39,040 Scott W. Hejny, Reg. No. 45,882 Nicholas Mathews, Reg. No. 66,067 MCKOOL SMITH PC, 300 Crescent Court, Suite 1500, Dallas, TX 75201 Phone 214.978.4000 / Fax 214.978.4044 D. Service Information Under 37 C.F.R. § 42.8(b)(4)

Please address all correspondence to lead counsel at the addresses above.

Petitioners consent to electronic service by email at: [email protected], [email protected], [email protected], [email protected], [email protected], and [email protected].

E. Grounds for Standing Under 37 C.F.R. § 42.104(a)

Petitioners certify pursuant to 37 C.F.R. § 42.104(a) that the ‘395 patent is

available for inter partes review, and that Petitioners are not barred or estopped

Case IPR2015-00391 Petition for Inter Partes Review from requesting inter partes review based on the grounds herein. Petitioners

certify this petition is filed within one year of the service of the Complaint above.

F. Fees Under 37 C.F.R. § 42.103

Petitioners concurrently submit fees of $23,000. If more fees are necessary to accord this Petition a filing date, authorization is granted to charge the same to

Deposit Account No. 50-1129 with reference to Attorney Docket No. 79244.0187.

III. IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R. § 42.104(b)

Petitioners request inter partes review of the challenged claims in view of

the references below, which are all prior art under 35 U.S.C. §§ 102(a), (b), or (e):

1. 9110 UM (Exhibit 1070), User’s Manual for Nokia 9110, published no later

than February 1, 1999. See Exhibit 1065 ¶¶ 4-6; Exhibit 1082 ¶¶ 5-13. The 9110

UM was not considered by the Office during prosecution.

The 9110 UM is properly considered prior art under at least 35 U.S.C. §§

102(a) and/or 102(b). The 9110 UM bears a copyright date of 1998 (Exhibit 1070

at 0002), and was distributed to customers on a CD with the 9110 by no later than

February 1, 1999. Exhibit 1065 ¶¶ 2-6; Exhibit 1082 ¶¶ 4-13; Stored Value

Solutions, Inc. v. Card Activation Techs. Inc., 499 F. App’x 5, 14 (Fed. Cir. 2012)

(user manual was printed publication given that it was dated prior to the critical

date and was in fact distributed to customers who purchased the software prior to

the critical date). The 9110 UM was also available on the internet no later than

Case IPR2015-00391 Petition for Inter Partes Review

February 1, 1999, such that any person interested and ordinarily skilled would have been able to easily locate it. Exhibit 1082 ¶¶ 5-13; Exhibit 1065 ¶¶ 5-6. Thus, the

9110 UM is prior art under at least 35 U.S.C. § 102(a).

2. Nokia 9110 FAQ (Exhibit 1083), published on the internet at least as early as May 8, 1999. Exhibit 1087 ¶¶ 38-39 and 0078-81. The Nokia 9110 FAQ is thus an “Internet publication[s] that [is] 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) (online article that had been available on a public website by the critical date qualified as a “printed publication” 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 IPR2013-00086, Paper 66, at 29-

31 (accepting web sites as printed publications and citing cases accepting Wayback

Machine materials as sufficient authentication). The 9110 FAQ was not considered by the Office during prosecution.

3. Rizet (Exhibit 1014), Int’l Pub. No. WO 98/25397, entitled

“Telecommunication Device and a Method for Providing Ringing Information,” published on June 11, 1998. Rizet was not considered during prosecution.

Case IPR2015-00391 Petition for Inter Partes Review

4. Perez (Exhibit 1081), U.S. Patent No. 6,492,761, filed Jan. 20, 1998 and issued Dec. 10, 2002. Perez was not considered by the Office during prosecution.

5. Nikkei (Exhibit 1074), Music is From Ringing Tones, Game is from

Characters, Nikkei Electronics, November 15, 1999. Nikkei Electronics is a bi- weekly magazine published since 1971. See http://www.nikkeibp.com/. This issue was available and distributed to subscribers in hardcopy form in Japan in

November 1999. Exhibit 1102. In the United States, Nikkei was publicly available at the University of California, Berkeley as early as January 2000.

Exhibit 1088 ¶ 7. If the patentee seeks to show a priority date prior to March 2000,

Petitioners expect to be able to introduce further evidence that Nikkei was available in hardcopy form in Japan in November 1999. Thus, Nikkei is prior art under 35 U.S.C. § 102(a).

Additionally, the Board should consider Nikkei as evidence of

“simultaneous invention” that shows the level of ordinary skill in the art in 1999.

“Independently made, simultaneous inventions, made ‘within a comparatively

short space of time,’ are persuasive evidence that the claimed apparatus ‘was the

product only of ordinary mechanical or engineering skill.’” Geo M. Martin Co. v.

Alliance Mach. Sys. Int’l LLC, 618 F.3d 1294, 1305 (Fed. Cir 2010) (level of skill

in the art shown by a reference dated a year after the earliest asserted priority date

and using the contents of the reference to invalidate claims under obviousness).

Case IPR2015-00391 Petition for Inter Partes Review

6. Nokia Press Releases (Exhibits 1096, 1098). These are press releases

issued by Nokia in 1999 (Exhibit 1096) and February 2000 (Exhibit 1098) which

were distributed widely (as is the purpose of press releases) and publicly available

on Nokia’s website at http://www.nokia.com/press/releases/index.html. One could also subscribe to Nokia’s press releases on that website. Thus, these press releases are prior art under 35 U.S.C. § 102(a).

7. Rolf (Exhibit 1100 and 1099). U.S. Patent No. 7,065,342, filed as a provisional application (60/167,179) on November 23, 1999 and issued on June 20,

2006 from U.S. non-provisional patent application no. 09/721,120 filed on

November 20, 2000. Therefore, Rolf is prior art under 35 U.S.C. § 102(e). Exhibit

1099 is U.S. Pat. No. 7,065,342. Exhibit 1100 is provisional application No.

60/167,179 and is cited in the claim charts and discussions below.

8. Fritsch (Exhibit 1101). U.S. Patent No. 6,247,130, filed January 18, 2000, entitled “Distribution of musical products by a web site vendor over the Internet,” claiming priority to U.S. Provisional Application Ser. Nos. 60/116,918,

60/116,910, 60/116,779, 60/116,917, 60/116,780, and 60/116,778, all of which were filed on January 22, 1999. Thus, Fritsch is prior art under 35 U.S.C. § 102(e).

9. Nykanen (Exhibit 1103). U.S. Patent No. 6,661,784, filed March 2, 1999 and claiming priority to a Finnish application filed March 3, 1998, and issued on

December 9, 2003. Thus, Nykanen is prior art under 35 U.S.C. § 102(e).

Case IPR2015-00391 Petition for Inter Partes Review

As explained in detail below (including relevant claim constructions), the challenged claims are invalid on the following grounds:1 Ground 1: claims 22, 25,

30, 39, and 40 are invalid under 35 U.S.C. § 102 and 35 U.S.C. § 103 as anticipated or rendered obvious by Nokia 9110 UM; Ground 2: claims 22, 25, 30,

39, and 40 are invalid under 35 U.S.C. § 103 as obvious over 9110 UM in view of

9110 FAQ; Ground 3: claims 22, 25, 30, 39, and 40 are invalid under 35 U.S.C. §

103 as obvious over 9110 UM, 9110 FAQ and Perez; Ground 4: claims 22, 25,

30, 39, and 40 are invalid under 35 U.S.C. § 103 as obvious over Nokia 9110 UM,

9110 FAQ, Perez and Nikkei; Ground 5: claim 36 is invalid under 35 U.S.C. §

103 as obvious over Nokia 9110 UM, 9110 FAQ, and Nokia Press Releases;

Ground 6: claim 36 is invalid under 35 U.S.C. § 103 as obvious over Nokia 9110

UM, 9110 FAQ, Nikkei, and Nokia Press Releases; Ground 7: claim 36 is invalid under 35 U.S.C. § 103 as obvious over 9110 UM with 9110 FAQ, Nikkei, Perez, and Nykanen; Ground 8:claims 22, 25, 30, 39, and 40 are invalid under 35 U.S.C.

§ 103 as obvious over Rizet in combination with one of Rolf or Fritsch; Ground 9: claims 22, 25, 30, 39, and 40 are invalid under 35 U.S.C. § 103 as obvious over

Rizet in combination with Perez and one of Rolf or Fritsch, and Ground 10: claims 22, 25, 30, 39, and 40 are invalid under 35 U.S.C. § 103 as obvious over

1 Except for what appears to be a typographical error in the (non-limiting) preamble of claim 30 (the omission of the word “use”), claims 30 and 39 are identical. 13

Case IPR2015-00391 Petition for Inter Partes Review

Rizet in combination with Nikkei.

IV. HOW THE CHALLENGED CLAIM IS 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:

“Polyphonic audio file” has no written support in the specification or the

provisional application. Petitioners propose that “polyphonic audio file” be

construed to mean “an audio file with content that produces two or more tones

at the same time.” See Exhibit 1079 ¶ 61 and supporting analyses id. ¶¶ 43-60.

This construction relies on evidence from 1999 to 2004 of the ordinary

meaning of polyphonic content. Polyphonic content is distinguished from

monophonic content, which is a single tone such as a person sequentially playing

an individual key on a piano. Id. ¶ 19. By contrast, with polyphonic content, two

or more tones are produced at the same time. Id. ¶¶ 20; 43-61. “Monophony” or

“polyphony” are known as elements of music. Id. ¶¶ 21-22. Extrinsic sources

confirm this definition. Id. ¶¶ 47-61 (citing Exhibits 1031, 1041, 1050).

Solocron’s Litigation construction of “audio file having more than one

sound” does not distinguish between monophonic and polyphonic content. Exhibit

1038 at 0034. Defendants’ Litigation construction of “a synthesized representation 14

Case IPR2015-00391 Petition for Inter Partes Review of an audio composition having more than one sound” is not appropriate for an

IPR. Id. While the “synthesized representation” language is appropriate under a district court’s Markman approach, such a construction is not appropriate under the broadest reasonable interpretation. Additionally, the lack of “simultaneous” in the

Defendants’ construction reflects an attempt to narrow the issues to the district court—a decision which does not change the appropriate construction here.

Regardless of which construction the Board uses (Petitioners’ construction,

Solocron’s Litigation construction, or the Defendants’ Litigation construction), claims 30, 36, 39 and 40 are invalid under the prior art for the reasons stated below. To the extent that the Board utilizes Solocron’s construction (which provides no basis to distinguish between monophonic and polyphonic content), claims 30, 36, 39, and 40 are even more invalid over the prior art.

“Enhanced performance speaker capable of providing a substantially full range of audio sounds” is never described with any objective criteria in the specification, and is the type of subjective term that the Federal Circuit has found indefinite. This phrase does not define what the extent of the “range” is or of what type of measurement the “range” could be. Many aspects of sound have ranges including amplitude, frequency, phase response, dispersion, distortion, and ranges of linearity or uniformity for many of those aspects. Exhibit 1079 ¶ 99. The ‘395

Case IPR2015-00391 Petition for Inter Partes Review patent provides no guidance as to what “range” is claimed.2 Id.

For purposes of this IPR, the Board uses the broadest reasonable

interpretation and Petitioners provide such a construction which: (a) attempts to

construe this indefinite term and (b) reflects the usage in the claims which recites:

“an enhanced performance speaker capable of providing a substantially full range

of audio sounds from the selected [polyphonic] audio file ….” See claims 30 and

39. For claim 22, and thus claim 25, the full term is “an enhanced performance

speaker capable of providing a substantially full range of audio sounds when one of

the selected audio files is played ….”

In these phrases, the capabilities of the “enhanced performance speaker” are

tied to the contents of the “selected polyphonic audio file” or to the playing of the

“selected audio file.” Therefore, for this IPR, the enhanced performance speaker

should be construed to mean “a speaker that is capable of playing the audio

sounds from the selected [polyphonic] audio file” where “polyphonic” is

included for claims 30, 36, 39, and 40, but not for claims 22 and 25.

The preambles should be construed to be not limiting. A “preamble is not limiting . . . where a patentee defines a structurally complete invention in the claim

2 For these reasons, Solocron’s Litigation construction of “the full range of sounds within human hearing, or a range of sounds not appreciably smaller than that range” is unsupported. Exhibit 1038 at 0057. Solocron’s construction gives no meaning to the claim terms “enhanced performance,” and provides no meaningful guidance on the bounds of the limitation. 16

Case IPR2015-00391 Petition for Inter Partes Review body and uses the preamble only to state a purpose or intended use for the

invention.” Symantec Corp. v. Computer Assocs. Int’l, Inc., 522 F.3d 1279, 1288

(Fed. Cir. 2008) (internal quotations omitted). The preambles for the challenged claims recite a classic intended use (“searching,” “selecting,” and “programming” a ringtone “for use as an indicia of an incoming communication”), and fit comfortably within this Federal Circuit case law. If “searching” is construed, it should be construed to be the same as “browsing” because of parallel language used in the preambles (“searching for and selecting”) and the claim body (“browse

… and select”).

“Capable of.” The challenged claims all recite the term “capable of” in two contexts: “a communications link capable of connecting to a database…” and “an enhanced performance speaker capable of providing….” In their broadest reasonable interpretation, these “capable of” clauses do not require actual operation, but merely require an ability to perform the stated action.

In other words, the claims merely require an ability to connect to the type of database that is recited in the claims. The claims do not require proving that the link actually did connect to such a database nor do the claims require that such a database actually existed. Similarly, with respect to the speaker, the claims merely require a speaker that has the recited capability without needing to establish that the speakers actually played such a file.

Case IPR2015-00391 Petition for Inter Partes Review

Thus, the “capable of” terms should be construed for purposes of this

IPR to require an ability to perform the stated function without proving that

the stated function (or the database or files recited in the stated function)

actually were acted upon.

“Allows” or “for allowing”: The challenged claims all recite the term

“allows” or “for allowing” in two contexts: “a display screen and browsing

application program that allows [a stated operation]” and “a programmable

memory circuit for allowing [a stated operation]….” According to Solocron, these

“capable of” clauses do not require actual operation, but merely require an ability

to permit one to perform the stated action. Exhibit 1038 at 59. Thus, the “allow”

terms should be construed to require only a capability to permit one to

perform the stated functions and not actual performance.

“Database” should be construed to mean “a collection of logically related

data stored together in one or more computerized files.” This construction is

consistent with contemporaneous discussion of the plain and ordinary meaning of

“database.” See, e.g., Exhibit 1066 at 0005.

V. THE PATENT AND ITS PROSECUTION HISTORY

The ‘395 patent was filed on August 16, 2002, and purports to claim priority

back to December 1999. Exhibit 1001. The figures of the ‘395 patent show that

Case IPR2015-00391 Petition for Inter Partes Review the original disclosure was amorphous and bears little resemblance to the ringtone matter the patentee sought to capture five years later. Id. at Figures 4A-4B.

In contrast, the claims of the ‘395 purport to cover a wireless telephone that includes a communications link for connecting to a database storing audio files (in some cases “polyphonic”), a display screen, an enhanced speaker, processing circuitry, and programmable memory. Id. at 14:13-35. Several claimed features

are barely described or not even mentioned anywhere in the ‘395 specification.

Most notably, neither “polyphonic audio files” nor any recitation of “polyphony”

or anything related to that concept can be found in the ‘395 specification. See

generally Exhibit 1001.

A. Prosecution History of the ‘395 Patent On August 16, 2002, the patentee filed U.S. application no. 10/223,200 (“the

August 2002 application”), which matured into the ‘395 patent. As filed, the

August 2002 application, like the March 2000 application with which it shares a

substantially identical disclosure, lacked any reference to “polyphonic,”

“polyphony,” or anything related to those concepts. The August 2002 application

is likewise devoid of any discussion of the quality of ringtones or the importance

of fidelity to the invention. Exhibit 1006. Nor did any of the claims as filed in the

‘200 application make any reference to “polyphonic.” Id.

Nearly a year later, in a preliminary amendment mailed on July 8, 2003, the

Case IPR2015-00391 Petition for Inter Partes Review term “polyphonic audio files” made its first appearance in the August 2002 application—and its first appearance in any application related to the August 2002

application. See Exhibit 1010 at 0441. As support for this language, the patentee

pointed to the specification’s laundry list of file formats. Id. at 0442.

Without commenting on the “polyphonic audio file” element that the

patentee had crafted, the Patent Office rejected all claims of the August 2002

application on May 18, 2005. Id. at 0285-92. Two more rejections followed. Id. at 0172-78 and 0079-84.

In response to each Office action, the patentee identified a laundry list of claimed features, including “the use of polyphonic audio files,” purportedly not disclosed in the asserted prior art. See, e.g., id. at 0224-29, 0129-35, and 0056-64.

All pending claims were allowed without explanation on June 18, 2007. Id.

at 0020-23. At no point in the prosecution, however, did the Patent Office make

any written priority determination or explain the definition of “polyphonic” that

appears to be the basis for claim allowance.3 See generally id.

B. Prosecution History of the Related Child ‘866 Patent

The prosecution history of the ‘866 patent is significant because it relates to

two key issues: how the inventor allegedly disclosed “polyphonic audio files” and

3 As the Federal Circuit recognized, “[t]he PTO’s own procedures indicate that examiners do not make priority determinations except where necessary.” PowerOasis, 522 F.3d at 1305. 20

Case IPR2015-00391 Petition for Inter Partes Review the related aspect of how the inventor distinguished prior art on a basis not found in the ‘866 or ‘395 specifications. The Examiner issued only a single substantive

Office Action, and never performed any analysis of the meaning of “polyphonic audio file” or whether this term was actually disclosed in the specification.

The sole support that the inventor identified for “polyphonic audio files” was the following statement in the ‘395 application (No. 09/518,712): “support for the polyphonic feature may be found on page 6, lines 31-35 and page 8, lines 19-21 as

MP3, WAV, MPEG, and many MIDI files are polyphonic audio files.” Exhibit

1010 at 0442.4 As set forth below, these same file formats are disclosed in a number of prior art references.

The manner in which the inventor distinguished the art is also relevant because the specification does not provide the teachings that the prior art allegedly lacked. The Examiner rejected claims on the basis of two references, Lin and

Isomursu. Exhibit 1007 at 0092-95. In response, the patentee appeared to concede the presence of all limitations other than “polyphonic audio files.” Id. at 0061-64.

The inventor explained how the prior art was allegedly deficient:

[I]n fact, the prior art systems of record are incapable of playing such high quality audio because they lack the proper hardware (e.g., lack appropriate speakers (see applicant's claim 10), circuitry capable of playing high quality audio etc.) and software (e.g., drivers, playback software, etc.) and

4 As Dr. Strawn explains, this statement is incorrect. Exhibit 1079 ¶¶ 24-59, 88-91. 21

Case IPR2015-00391 Petition for Inter Partes Review

other necessary capabilities.

Id. at 0064 (emphasis added). The inventor never explained where these elements could be found in the ‘866 or ‘395 applications.

Without explanation, the Examiner issued a Notice of Allowance on July 23,

2007, cancelling claims 11-40 and allowing claims 1-10. The file history provides no clear indication of why claims 1-10 in the ‘866 were allowable.

C. The ‘395 Patent Suffers From the Same Deficiencies That the Inventor Identified in the Prior Art In The ‘866 Prosecution.

The ‘395 patent suffers from the same infirmities that the inventor identified in the prior art. First, with respect to “enhanced speaker,” the specification does not teach the “proper hardware,” “circuitry,” or “software” for implementing such an “enhanced” speaker. The only reference to an improved speaker is the inventor’s conclusory statement that, “[i]n some embodiments, speaker 540 may be an enhanced performance speaker (as compared to those currently installed in telephones) with a capacity for generating a full range of audio sounds.” Exhibit

1001 at 10:40-43. The inventor does not say what is “enhanced” nor does the inventor ever explain what a “full range of audio sounds” is.

The same deficiencies exist with respect to “circuitry capable of playing” polyphonic audio files and software (e.g., drivers, playback software, etc.). The

‘866 and ‘395 patents are bereft of any discussion of advancements in circuitry related to polyphonic audio files. Similarly, these patents contain no discussion of 22

Case IPR2015-00391 Petition for Inter Partes Review software or other necessary drivers for playing such files. This is significant

because, as set forth below, the prior art need only disclose as much as the patent

to invalidate. Nevertheless, as shown below, the prior art identified in this Petition

contains substantially more technical detail than the ‘395 patent.

VI. THE EARLIEST PRIORITY DATE OF THE CHALLENGED CLAIMS IS MARCH 2000.

As a threshold matter, the challenged claims are not entitled to the filing date

of the December 1999 provisional application because that provisional does not

provide sufficient written description to establish that the inventor possessed the

full scope of the subject matter of those claims on December 6, 1999.5 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). “[T]the 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) (internal

5 Petitioners challenge any assertion of priority to any date prior to its 2004 filing date in IPR2015-00350. This petition assumes a March 3, 2000 priority date. Nevertheless, much of the prior art identified here would invalidate even under a December 1999 priority date. 23

Case IPR2015-00391 Petition for Inter Partes Review citation omitted). To satisfy the written description requirement, “the missing descriptive matter must necessarily be present in the [original] application’s specification such that one skilled in the art would recognize such a disclosure . . .

This requires that the written description actually or inherently disclose the claim

element.” PowerOasis, 522 F.3d at 1306-07 (alteration in original).

Beyond the lack of disclosure of “polyphonic audio files” (Exhibit 1089 ¶

51), the provisional application falls short of actually or inherently disclosing at

least five additional limitations as detailed below.

The provisional application (Exhibit 1003) does not actually or inherently

disclose “an enhanced performance speaker capable of providing a substantially

full range of audio sounds ….” Exhibit 1089 ¶ 52. The provisional has a single

reference to “speaker” on page 3, but in a completely different context: placing a

“speaker/microphone…near the acoustic audio signal source” to “acquire” a

sample. Id. There is no discussion of whether the audio is played on a

“conventional speaker” or an “enhanced speaker,” nor is there any discussion of the quality of any sound that is generated, any “enhancement” or any “full range of audio sounds.” Id. Thus, regardless of any other disclosure, these claims are limited to a March 2000 date.

The provisional does recite “MP3,” but does not disclose “MPEG” or

“WAV” as is required by claims 22, 25, and 40. The patent provides no basis for

Case IPR2015-00391 Petition for Inter Partes Review understanding why “WAV,” for example, would be disclosed by a recitation of

MP3. Id. ¶ 53. There is no apparent linkage other than that these are file formats,

but there are many other potential audio file formats and there is no basis in the

provisional for understanding that WAV falls into some genus for which the single

species of MP3 is sufficient to disclose the entire genus. Thus, claims 22, 25 and

40 are entitled to (at best) only the March 2000 filing date.

The provisional also does not actually or inherently disclose a browser or

even browsing—much less a “browsing application program” or a “mobile Internet

browser” that “allows a user of the telephone to browse the polyphonic audio files” as is recited in claims 22, 25, 30, 36, 39 and 40. Id. ¶ 54. Thus, claims 22, 25, 30,

36, 39 and 40 are entitled to (at best) only the March 2000 filing date.

Claim 36 recites that “the browsing application program is a Wireless

Application Protocol (WAP) compliant browsing program.” The provisional contains no discussion of Wireless Application Protocol or WAP in any form.

Indeed, the provisional does not even recite any “browsing program.” Id. ¶ 55.

Thus, claim 36 is entitled to (at best) only the March 2000 filing date.

Claim 25 recites that “[t]he wireless telephone of claim 22 configured to allow the user to search the database for a certain desired audio file using title or description information to aid in locating a desired file.” The provisional does not contain any discussion of searching in any form. Id. ¶ 56. This language tries to

Case IPR2015-00391 Petition for Inter Partes Review mimic the ‘395 patent at 7:8-10, but that passage is not present in the provisional application. Thus, claim 25 is entitled to (at best) only the March 2000 filing date.

An inventor must provide evidence of possession of every feature in the claims. See Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper

59, at 22-23 (Final Decision). Second, he must corroborate the date and origin of

that evidence. Id. Here, the inventor cannot satisfy either standard. Even if the inventor seeks to introduce an earlier document, he cannot show that he was

“diligent throughout the entire critical period.” Monsanto Co. v. Mycogen Plant

Sci., Inc., 261 F.3d 1356, 1369 (Fed. Cir. 2001). Indeed, the Federal Circuit has recognized that even miniscule delays are sufficient to preclude a finding of diligence. In re Mulder, 716 F.2d 1542, 1545 (Fed. Cir. 1983) (two-day unexplained gap disproves the continuity required for diligence). Accordingly, claims 22, 25, 36 and 40 are only entitled to a March 2000 priority date.

VII. DETAILED EXPLANATION AND SUPPORTING EVIDENCE UNDER 37 C.F.R. §§ 42.104(b)(4) AND (b)(5)

Pursuant to 37 C.F.R. §§ 42.104(b)(4) and (b)(5), Petitioners set forth an explanation below of why the challenged claims 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 of the evidence to the challenge raised, 26

Case IPR2015-00391 Petition for Inter Partes Review 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. “Polyphonic Audio Files” Cannot Form the Basis for Patentability

“Polyphonic audio files” cannot form the basis for patentability for at least six reasons. First, the ‘395 patent contains no discussion related to polyphony.

The inventor simply did not recognize that as a factor relating to his invention when the application was filed in March 2000. An element that is not disclosed in the specification cannot form the basis for patentability. See Pfizer Inc. v. Teva

Pharms. USA, Inc., 460 F. Supp. 2d 659, 667 (D.N.J. 2006) (“The applicable law is

clear that where the particular feature relied upon is nowhere mentioned as an advantage it cannot form the basis of patentability”) (internal citations omitted).

Second, the industry already recognized polyphony and even built functioning products that could process polyphonic audio files. See, e.g., Exhibit

1074 (Nikkei publication); Exhibits 1020, 1053 (Yamaha polyphonic chip);

Exhibit 1079 ¶¶ 27-42 (explaining that WAV files on the CD with the Nokia 9110

in 1999 were polyphonic audio files). Thus, contrary to the inventor’s statements

during prosecution, polyphonic audio files were already well-known and utilized

prior to both: (i) the earliest asserted priority date and (ii) the inventor’s belated addition of “polyphonic” claims to his patents.

Case IPR2015-00391 Petition for Inter Partes Review

Third, the prior art shows the file formats (e.g., WAV and MIDI) that the

inventor asserted sufficiently disclosed “polyphonic audio files” in the

specification. As explained above, the prior art need only disclose as much as the

patent to invalidate. See Constant, 848 F.2d at 1569. Many of the prior art

references in this Petition recite these precise file types.

Fourth, if (as the inventor postulates) the universe is split into “polyphonic”

and non-polyphonic (monophonic) audio files, it cannot be patentable to select one type (the species) out of a universe of only two types (the genus). “[S]pecies are unpatentable when prior art disclosures describe the genus containing those species such that a person of ordinary skill in the art would be able to envision every member of the class.” Abbvie Inc. v. Mathilda & Terence Kennedy Inst. of

Rheumatology Trust, 764 F.3d 1366, 1379 (Fed. Cir. 2014) (invalidating claims to species of a small genus).

According to the inventor himself, the person of ordinary skill in the art in

1999 would have been able to envision every species of the two-member class of music files based on the recitation of certain file formats. Indeed, during prosecution, the inventor asserted that one of skill in the art would have recognized that certain file types are polyphonic, while others are not. See Exhibit 1010 at

0442. For example, the inventor asserted that “many MIDI are polyphonic,” while

other MIDI files (not falling into the “many” category) were monophonic. Id.

Case IPR2015-00391 Petition for Inter Partes Review

(emphasis added). Because a “person of ordinary skill in the art would be able to

envision every member of the class” as of the earliest priority date, any claims reciting the species of “polyphonic audio files” are unpatentable. Abbvie, 764 F.3d at 1379. In this regard, the two-species genus of audio files also falls into the

“finite number of identified, predictable solutions” that preclude patentability.

E.g., Index, 576 F. App’x at 980 (affirming Board decision of obviousness when

“only two solutions would have been realistically considered”).

Fifth, under the claim construction that Solocron asserts in the Litigation, the prior art identified here is polyphonic. Solocron asserts that “polyphonic audio files” are merely “audio file[s] having more than one sound.” Exhibit 1038 at

0034. All of the prior art identified here shows an “audio file having more than one sound.” Indeed, anything other than a monotone buzzer with a single note would seemingly meet this definition, including two single keystrokes on a piano.

Under that definition, each prior art reference below invalidates claims 36 and 40.

Sixth, in the Litigation, Solocron asserts that a “sample [of] a few bars of a popular song” shows “polyphonic audio files.” See id. (citing 9:23-41 in Exhibit

1051). The prior art identified below shows portions of “popular songs” and

therefore discloses “polyphonic audio files” under Solocron’s approach.

Simply stated, there is nothing in the ‘395 patent which is not in the prior art

and which would support a distinction based upon “polyphonic audio files.”

Case IPR2015-00391 Petition for Inter Partes Review

B. Claims 22, 25, 30, 39, and 40 are Anticipated Or Rendered Obvious By the Nokia 9110 User’s Manual.

The 9110 UM teaches all the elements of claims 22, 25, 30, 39, and 40 to

one of skill in the art. Exhibit 1089 ¶¶ 131-94, 195-206. First, the 9110 UM

teaches a telephone with customizable “ringing tones.” Id. ¶¶ 131, 139-40.

Second, the 9110 UM teaches using an Internet browser on a phone to access any available websites and download (save) files from the websites into a

“[d]ownloaded files” folder which is a programmable memory on the phone. Id. ¶¶

135-36. Third, the 9110 UM teaches a program which will “[c]opy to sounds –

You can add the selected tune to the list of ringing tones” for the folder of

“[d]ownloaded files.” Id. ¶ 138. Finally, the 9110 UM teaches programming the

downloaded files as “ringing tones” for different contacts. Id. ¶¶ 139-40. The

9110 UM shows “WAV” files (which the inventor argued were “polyphonic audio

files”) as downloadable ringtones.

With respect to the enhanced speaker, compact disc audio files use 44kHz

PCM encoding and MP3 uses 44kHz sampling. Exhibit 1079 ¶¶ 24, 45. Thus,

9110 UM teaches a phone which has an “enhanced speaker” which can play high

quality WAV files. Exhibit 1089 ¶¶ 184-93. It discloses at least as much

regarding the claimed speaker as the ‘395 does. Id. ¶ 192.

Claim 40 depends on claim 39. Claim 39 is identical to claim 30. Claim 40

(with its recitation of “MP3, MPEG, and WAV” files) is substantively identical to 30

Case IPR2015-00391 Petition for Inter Partes Review claim 22 except that claim 40 includes “polyphonic audio files.” 6

With respect to the “polyphonic audio file” aspect of claims 30, 39, and 40,

9110 UM meets “polyphonic audio files” under Solocron’s Litigation construction and the patentee’s arguments to the Patent Office. First, the 9110 UM shows

“WAV” files (which the inventor argued were “polyphonic audio files”) as downloadable ringtones. While Petitioners do not agree that WAV necessarily discloses polyphonic audio files, the 9110 UM has at least as much detail as the

‘935 patent. If the ‘395 patent sufficiently discloses “polyphonic audio files,” so does the 9110 UM. Second, under Solocron’s Litigation construction, the 9110

UM WAV files include “more than one sound.” Id. ¶ 133.

The 9110 UM anticipates claims 22, 25, 30, 39, and 40 as shown in the following claim charts. See also id. ¶¶ 131-94, 195-206.

Claim Element Where Each Limitation Is Found in Nokia 9110 UM (Exhibit 1070) [22/30/39]. A The 9110 UM describes a telephone that can be customized wireless telephone by searching, selecting and downloading polyphonic audio that may be files (e.g., audio files having a “.WAV extension” … which customized by the user can then set as “ringing tones”): searching for and “The Nokia 9110 is a … wireless phone, messaging device, selecting an audio access terminal ….” Exhibit 1070 at 0011; see also Fig. 1. file from a remote computer and “The Nokia 9110 … supports HTML 3.2.” Id. at 0095. “To programming the fetch a WWW page, 1) Select an entry in the Bookmarks selected audio file list or enter a URL in the address field; [and] 2) Press go.”

6 Because of these similarities, claims 22, 30, and 39 are presented in common claim charts throughout this Petition. 31

Case IPR2015-00391 Petition for Inter Partes Review into the wireless Id. at 0096. telephone for use as The browsing capabilities include a search/find feature: an indicia of an incoming “When you have a WWW page open and you press the communication, the Menu button, the following options become available: … telephone Find – You can search for various items, such as words in comprising: the WWW page…” Id. at 0100. “sound files that the voice recorder can play have a .WAV extension and support the following audio format: 8, 11, 22 or 44khz, PCM/A-law, Stereo/Mono, 8 bit.” Id. at 0143. “…the following options become available: Copy – You can choose a folder into which the selected document can be copied. … Copy to sounds – You can add the selected tune to the list of ringing tones.” Id. at 0110. “Default ringing tone – You can select one of the tones in the pop-up box … If your SIM card supports the alternate line service, you can select a different ringing tone for Line 2 ” Id. at 0123. “… 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. …See Figure 2.” Id. at 0052. [22/30/39a] a The 9110 telephone described in the 9110 UM includes a communications link cellular communications link that is capable of connecting capable of to databases in remote computers (e.g., websites of “service connecting to a providers” that provide services to "subscribers”) that database in the include polyphonic audio files: remote computer that “about cellular data transmission[:] The Nokia 9110 … includes a plurality employs the data transmission capabilities of the GSM of lists of audio files network to send faxes, short messages and email, and to in MPEG, or WAV, establish connections with remote computers.” Id. at 0014. or MP3 format or a The 9110 shows an icon to indicate “An open data combination thereof; connection [to the] ‘Internet’.” Id. at 0023. [30/39a recite “sound files that the voice recorder can play have a .WAV “polyphonic audio extension and support the following audio format: 8, 11, files”] 22 or 44khz, PCM/A-law, Stereo/Mono, 8 bit.” Id. at 0143. “Internet applications … World Wide Web (WWW) -- A hypertext-based system for finding and accessing resources 32

Case IPR2015-00391 Petition for Inter Partes Review

on the Internet.” Id. at 0083. [22b] a display 9110 UM describes the 9110’s display and a browsing screen and a mobile application that allows a user to browse and select audio Internet browser that files from the internet. Fig. 5 shows a display. Id. at 0025. allows a user of the UM provides detailed instructions on how to “subscribe to wireless telephone to the Internet services” (Id. at 0084) and use the web browser browse at least one on the 9110 to navigate the world wide web and to of the lists of lists of subscribe to “Internet services.” E.g., Id. at 0099-0102 audio files and view (section entitled “To navigate in WWW”). “To fetch a selectable audio files WWW page 1) Select an entry in the Bookmarks list or present in the enter a URL in the address field…” Id. at 0096. browsed list; “use the arrow keys to scroll the view and to choose [30/39b] a display hyperlinks and hotspots. Each arrow key press selects the screen and a nearest hyperlink or hotspot, or moves the view one line up browsing application or down. See Figure 8:” Id. at 0099; see also Figure 8. program that allows a user of the wireless The web browser allows a user to save the contents using telephone to browse the “Save” function: “When you have a WWW page open the polyphonic audio and you press the Menu button, the following options files and select at become available: … Save –Saves the page contents or the least one polyphonic image to the Downloaded files folder, ….” Id. at 0100-01. audio file therefrom; The “Notes” folders includes a folder named “Downloaded Files” which contains “Downloaded files — Documents downloaded with the Internet applications.” Id. at 0109. “Note: Downloaded … recordings may take up significant amounts of memory space.” Id. at 0158. UM teaches to access “Operator services” from “network operators”: “With Text Web you can fetch information from the Internet, using SMS. …. You can also access services provided by your network operator and Nokia…. To use the browser – Press the arrow keys on the keyboard to move from one hotspot to another. To follow a hyperlink, press Fetch.” Id. at 0107. “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.” Id. at 0175.

Case IPR2015-00391 Petition for Inter Partes Review

[22c] processing That the handset has a processor to supervise receipt of the circuitry configured polyphonic audio file is met in two ways. First, a cellular to receive a selected phone necessarily has processing circuitry that is able to one of the audio files decode the radio signals received by the antenna and to from the convert them into useable data. Second, 9110 telephone communications has processing circuitry that monitors receipt of link; communications. [30/39c] processing See id. at 0065 (text message Icon). Id. at 0169 discloses circuitry configured circuitry. See element [10a] on communications link. to supervise receipt Further, if a ringtone is downloaded from the internet, 9110 of a selected UM describes two levels of supervising the receipt. polyphonic audio file from the “When the WWW page is being fetched, the line on top of communications the display shows the status of the connection, the title of link; the page, and how many bytes of the page have been received.” Id. at 0099. “After the WWW page has been fetched, the following commands become available: Go – If there is a link to another WWW page in the currently open page, select the link with the selection frame and press Go to fetch the page.....” Id. at 0100 Supervision of receipt is inherent in a saving a file to a folder such as the Downloaded files folder. Id. at 0100, 0109-0113. [22/30/39d] a See discussion in preamble [10] on “copy to sounds” Id. at programmable 0110. See also discussion in [10] above regarding using memory circuit for Voice recorder for ringtones. Id. at 0152. See discussion allowing the user to in [10a] for saving internet files into “Downloaded files” optionally store the folder. Id. at 0100-0101. selected audio file “Notes is used for … managing various documents stored for use as an indicia in the communicator. Folders in the Notes main view are: of an incoming … Downloaded files – Documents downloaded with the communication; and Internet applications.” Id. at 0109. [30/39d recite The “Downloaded files” folder, as well as the “Memory “polyphonic audio card” folder, are depicted in Fig. 1. Id. files”] See discussion in element [10a] on the “Save” feature (Id. at 0101), the “Fetch” feature (at 0096) for downloading.

Case IPR2015-00391 Petition for Inter Partes Review

If a ringing tone is received as an attachment, the attachment can be saved to the Downloaded files folder and copied to the sounds folder. See id. at 0095-96(describing “audio” attachments which can be “saved” into the “Downloaded files folder.”). See id. at 0176 describing “audio fragments” as a MIME type allowed in messages. See id. at 0118(describing the memory application which allows a user to “open up a list of folders and other data in the communicator” including the memory card). See id. at 0032, 0109& 0143 for further discussion of memory card. “… 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. …See Figure 2.” Id. at 0052. “Ringing tone – Determines the ringing tone.” Id. at 0064. [22/30/39e] an The UM describes that the 9110 phone has a “handsfree enhanced loudspeaker” (id. at 0023,0059) that permits the user to performance speaker adjust the volume (id. at 0059)as well as play WAV-based capable of providing sound files that may be stereo or mono using PCM. a substantially full The microphone and earpiece are on the rear of the device. range of audio Id. at 0147; see also Figure 1 (id. at 0018) for speaker. sounds when one of the selected audio “NOTE: sound files that the voice recorder can play have a files is played as an .WAV extension and support the following audio format: indicia of an 8, 11, 22 or 44khz, PCM/A-law, Stereo/Mono, 8 bit.” Id. incoming at 0143. communication. [30/39e recite “polyphonic audio files”]

One of skill in the art would appreciate that the 9110 UM teaches circuitry that supervises receipt of all files. Exhibit 1089 ¶¶ 162-71. One of skill in the art would recognize that the system must update its file system to reflect the addition of a new file and that a cellular phone necessarily has processing circuitry that is

Case IPR2015-00391 Petition for Inter Partes Review able to decode the radio signals received by the antenna and to convert them to useable data. Id. ¶¶ 169-70.

Claim Element Where Each Limitation Is Found in Nokia 9110 UM (Exhibit 1070) 25. … configured to allow The browsing capabilities include a search/find the user to search the feature: database for a certain desired “When you have a WWW page open and you press audio file using title or the Menu button, the following options become description information to available: … Find – You can search for various aid in locating a desired items, such as words in the WWW page…” Id. at audio file. 0100.

One of skill in the art would appreciate that an Internet browser, such as in

disclosed in the 9110 UM, which has feature to “find” words on a WWW page,

discloses searching the database (e.g., the website) using title or description

information to aid in locating a desired audio file. Exhibit 1089 ¶¶ 195-199.

The citations set forth above with respect to element [22/30/39a] relative to the recited file formats apply equally to claim 40.

C. Claims 22, 25, 30, 39, and 40 are Obvious In View Of 9110 UM And 9110 FAQ.

Any doubt regarding the invalidity of claims 22, 25, 30, 39, and 40 is removed by the combination of 9110 UM and 9110 FAQ, which is a publicly

available Nokia.com Internet page archived on May 8, 1999. Exhibit 1083. The

9110 FAQ explicitly states: “Can you store PC audio .WAV files on the unit?

Yes. WAV files can be downloaded from the Internet …. [and] used as ringtones.”

Case IPR2015-00391 Petition for Inter Partes Review

Id. at 0004. The 9110 FAQ reemphasizes “Audio files (WAV files as ringtones)” and “Voice recorder … playback.WAV files.” Id. at 0002. It further teaches “[a]n outstanding mobile phone with … superb audio and voice quality” as one of “the

main new things with Nokia 9110.” Id. (emphasis added).

The 9110 FAQ bolsters the 9110 UM’s teaching regarding downloading

WAV files and using those WAV files as ringtones. Exhibit 1089 ¶¶ 208-13. The

9110 FAQ bolsters 9110 UM’s teaching of “superb audio … quality” relating to

the “enhanced speaker” and matches the inventor’s “wish list” of “playing … high

quality audio” such as WAV files. Exhibit 1083 at 0002.

Because 9110 UM and 9110 FAQ relate to the same product, were both

intended to publicly distribute information about that product, and were produced

and distributed by the same company (Nokia) in the same year (1999), one of skill

in the art would combine these references. Exhibit 1089 ¶ 214. The disclosures of

9110 UM combined with 9110 FAQ render obvious claims 22, 25, 30, 39, and 40.

Id. ¶ 215.

D. Claims 22, 25, 30, 39, and 40 are Obvious Over 9110 UM, 9110 FAQ, and Perez.

If the Board adopts Solocron’s construction for the “enhanced speaker” term

(requiring a full range of human sounds despite the lack of enabling disclosure in

the ‘395 patent for such a speaker), claims 22, 25, 30, 39, and 40 are obvious over

9110 UM and 9110 FAQ in combination with Perez (Exhibit 1081). The teachings 37

Case IPR2015-00391 Petition for Inter Partes Review of Perez relevant to the “enhanced performance speaker” limitation are set forth in the table below. See also Exhibit 1089 ¶¶ 217-23.

Claim Where Each Limitation Is Found in Perez (Exhibit 1081) Element “enhanced “The present invention discloses a piezoelectric transducer that is performanc capable of being directly driven by a digital signal.” 3:41-42 e speaker capable of “A digitally driven piezeoeletric transducer avoids the problems providing a associated with EMI because it eliminates the need for additional substantiall analog circuitry to create sound audible to humans.” 2:59-62; see y full range also 2:40-47. of audio “The acoustic sound energy is designed to be intensified by the sounds” resonant cavity 18 in the range of about 10 HZ to about 30 kHz. This frequency range is chosen because it covers the spectrum of frequencies human beings are capable of hearing.” 3:66-4:3.

Perez recognizes a need “in the electronic industry to replace analog driven

speakers and various products, including cellular phones, with purely digitally

driven speakers which are less susceptible to EMI.” Exhibit 1081 at 2:40-43

(emphasis added). That is, persons of skill in the art had already recognized the

desirability of incorporating an “enhanced performance speaker” into cellular telephones. Exhibit 1089 ¶¶ 224-26. It follows that a person of ordinary skill in the art would have been motivated to combine the 9110 UM and 9110 FAQ cellular phone with the Perez piezoelectric transducer for use as a speaker. Indeed,

Case IPR2015-00391 Petition for Inter Partes Review

FAQ and Perez disclose each and every element of these claims, rendering them

obvious. Exhibit 1089 ¶ 227.

E. Claims 22, 25, 30, 39, and 40 Are Obvious Over 9110 UM, 9110 FAQ, Perez and Nikkei.

Claims 22, 25, 30, 39, and 40 are obvious over 9110 UM and 9110 FAQ

combined with Perez and Nikkei under the basic principles of obviousness law

articulated in Sections V.B, V.C, and V.D above. Exhibit 1089 ¶¶ 228-40. Nikkei

(Exhibit 1074) provides an express recitation of “polyphonic ringtones” if such

recitation is needed for claim 40 and provides a detailed background of the state of

the art of ringtones in 1999 to further support the invalidity of claims 22 and 25.

This renders the claimed invention obvious under any of Petitioners’ construction,

Solocron’s Litigation construction, or Defendants’ Litigation construction for

“polyphonic audio files.” Id. ¶¶ 229-32.

Figure 2 from page 0006 of Exhibit 1074 (shown above) and its

accompanying description extensively describe the evolution of ringtones in 1999.

Exhibit 1074 at 0006. Nikkei teaches evolution from “monophonic ringtone” to

“polyphonic ringtone” and that “enhanced speakers” would be used in that

evolution. The surrounding pages are devoted to discussing this “evolution” and

the new speaker technologies (e.g., “sound generator LSI”) that were to be added

to mobile phones by the end of 1999. Id. at 0003, 0006, 0007.

Nikkei discusses this evolution using both the express “polyphonic” 39

Case IPR2015-00391 Petition for Inter Partes Review terminology and referencing “chords” or the ability to “simultaneously reproduce three sounds” (e.g., Exhibit 1074 at 0003, 0006, 0007)—all of which disclose the

concept of “polyphonic audio files” to one skilled in the art, including under

Petitioners’ construction. See Exhibit 1089 ¶¶ 229-32. Nikkei teaches the wireless

downloading of ringtones, including polyphonic—including figures such as Figs.

5, 1, and 2. Exhibit 1074 at 0004, 0006. Nikkei teaches that “MP3” and “MIDI”

files will be downloadable and usable as ringtones. Id. at 0003-4, 0006-7. It

teaches that circuitry and software, such as “audio decoding LSI” will be built into

mobile phones to support these new formats. Id.

Nikkei recognizes throughout the entire publication an evolution of ringtone

(and music) on mobile phones and the various technologies (including databases,

downloading, speakers, appropriate “polyphonic audio files”, and new networks)

needed to support that evolution. Exhibit 1089 ¶¶ 230, 233.

As discussed in Section V.D, Perez teaches a speaker that covers the full

range of human hearing and recognizes a need “in the electronic industry to replace

analog driven speakers and various products, including cellular phones, with

purely digitally driven speakers which are less susceptible to EMI.” Exhibit 1081

at 2:40-43 (emphasis added). Perez specifically identifies and teaches an

“enhanced speaker” as claimed with particular application to “cellular telephones.”

One of skill would have readily combined 9110 UM, 9110 FAQ, Perez and

Case IPR2015-00391 Petition for Inter Partes Review

Nikkei. Exhibit 1089 ¶¶ 235-40. Nikkei was devoted to the evolution of mobile phone technology from 1999 onwards. 9110 UM and 9110 FAQ taught existing technology in mobile phones. Perez also taught technology related to cellular

telephones specific to improving the sound quality which would be applicable for

music as well. One of skill in the art would readily combine the current state of the

art with articles discussing the future state of the art. That is the normal

evolutionary process of technology. Id.

The disclosure of Nikkei in combination with the 9110 materials confirms

the obviousness of the claims (30, 39, and 40) which recite “polyphonic,”

regardless of which construction is adopted. Indeed, Nikkei’s discussion of the

anticipated industry evolution is the precise type of “design need” or “market

pressure” that KSR emphasizes is “likely the product not of innovation but of

ordinary skill and common sense.” KSR, 550 U.S. at 421; see also Dystar

Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356,

1368 (Fed. Cir. 2006) (“[T]he desire to enhance commercial opportunities by

improving a product or process,” including making it “stronger, cheaper, cleaner,

faster, lighter, smaller, more durable, or more efficient” is “universal—and even

common-sensical”). Moreover, this is the epitome of updating an old concept

using newer technology. See Leapfrog, 485 F.3d at 1160.

Thus, 9110 UM, 9110 FAQ, Perez and Nikkei disclose every element of

Case IPR2015-00391 Petition for Inter Partes Review claims 22, 25, 30, 39, and 40, rendering them obvious. Exhibit 1089 ¶ 240.

F. Claim 36 Is Obvious Over 9110 UM With The 9110 FAQ And Nokia Press Releases.

Claims 30, 36, and 39 are obvious over 9110 UM and 9110 FAQ with 9110i

Press Releases (Exhibits 1096, 1098). Section V.C details the correspondence between the 9110 UM and 9110 FAQ for the elements of claims 30 and 39. Claim

36 depends on claim 30 and requires that the “browsing application program is a

Wireless Application Protocol (WAP) complaint browser.” The ‘395 patent has exactly one sentence of disclosure related to WAP: “Such a browser may be a

Wireless Application Protocol (WAP) compliant browser for supporting wireless

Internet services.” The ‘395 does not describe or enable any aspect of WAP nor

does it teach how WAP might be integrated into a web browser to perform the

requirements of claim 36.

Nokia’s 9110i Press Release, entitled “The Nokia 9110i Communicator

offers WAP services to the large community of knowledge workers” stated: “The

Nokia 9110i Communicator will continue to support the Internet browsing and e-

mail services, but the add-on WAP application will provide users with access to a

new emerging group of mobile Internet services.” Exhibit 1098 at 1. Thus, the

Nokia 9110i Press Release teaches at least as much as the ‘395 patent regarding the

WAP and therefore this combination invalidates claim 36.

The June 30, 1999, press release in which “Nokia Announces The Nokia 42

Case IPR2015-00391 Petition for Inter Partes Review

WAP Browser” similarly invalidates claim 36. Exhibit 1096. “The Nokia WAP

Browser is a software product that can be ported and integrated to wireless devices, like mobile phones.” Id. at 0001. The Nokia browser software provides … support for secure data transmission… and the WAP Protocol Stack for transporting data over wireless bearer services.” Id.

Each of the Nokia Press Releases contains more information about WAP than does the ‘395 patent. To the extent that the ‘395 patent must rely upon the knowledge of one skilled in the art to have enabling disclosure of WAP (and it must), that same knowledge is available for purposes of obviousness.

One of skill in the art would be motivated to combine these references because they relate to the same basic product (Nokia phones) and to specific software (the Internet browser) on that device. Exhibit 1089 ¶ 247. Indeed, the

Nokia 9110i Press Release pertains to a variant of the same device (9110) as does the 9110 UM. Further confirming the motivation is that Nokia announced at the same time as the Nokia 9110i Press Release that “users of the existing 9110

Communicators will be able to upgrade their devices to be WAP compatible with an accessory package.” Exhibit 1097 at 1.

G. Claim 36 Is Obvious Over 9110 UM With The 9110 FAQ, Nikkei and Nokia Press Releases.

To the extent that the Board requires express disclosure of “polyphonic audio files” despite the absence of such disclosure in the ‘395 patent, Nikkei 43

Case IPR2015-00391 Petition for Inter Partes Review supplies that express disclosure as discussed in Section V.E. One of skill in the art would be motivated to add Nikkei to the combination of 9110 UM, 9110 FAQ, and

Nokia Press Releases (see Section V.F) for all of the same reasons stated in Section

V.E for adding Nikkei to the combination of 9110 UM and 9110 FAQ. Exhibit

1089 ¶¶ 250-51. In general, Nikkei details the existing state of the art in 1999 with respect to ringtones for mobile phones. As ringtones using WAV files were one of the features highlighted in the 9110 UM and 9110 FAQ, one of skill in the art would have consulted that general knowledge to understand the present evolution of technology in 1999. Exhibit 1089 ¶ 252 .

H. Claim 36 Is Obvious Over 9110 UM With The 9110 FAQ, Nikkei, Perez, and Nykanen.

To the extent that the Board requires express disclosure of the operation of a

WAP browser despite the absence of such disclosure in the ‘395 patent, Nykanen

(Exhibit 1103) supplies that express disclosure. The concept of using WAP

browsers on mobile stations to download information from Internet servers was

known to Nokia at least 2 full years before March 2000 as Nokia filed Nykanen on

March 3, 1998 in Finland. Nokia filed the U.S. Nykanen application on March 3,

1999. Nykanen is entirely devoted to describing and enabling the concept that the

‘395 patent references in a single sentence: using WAP browsers in a mobile

phone.

Nykanen expressly discloses the use of a WAP internet browser for the 44

Case IPR2015-00391 Petition for Inter Partes Review purposes of communicating with, and transmitting data from, a server on the

Internet. “The purpose of the invention is particularly to define a system for

communication between a WAP server and a WAP client complying with the

WAP application….” Id. at 3:9-12. “[D]ifferent applications and information is presented by means of standardized presentation formats which are browsed e.g. by means of known WWW browsers. Thus, the servers and information in the

WWW network are named according to a Uniform Resource Locator (URL) address complying with the Internet standard.” Id. at 3:26-31. Nykanen discloses using various wireless networks such as GSM, CDMA, IR and other. 2:41-43;

4:25; 4:52; 4:67. Figures 3(a), 3(b) and 4 show transmissions using the various elements of the WAP protocol. The invention details various transmissions to

“WAP clients” including WML browsers. 4:38-45. See also 12:11-13:65

(describing the transmission of data from WAP servers to WAP-enabled mobile stations / clients with WAP browsers).

One of skill in the art would be motivated to add Nykanen to the combination of 9110 UM, 9110 FAQ, Perez, and Nikkei for all of the same reasons stated in the preceding sections because Nykanen expressly references the “Nokia

9000 Communicator” as an exemplary “mobile station” and then goes on to describe the invention in terms of use with a “mobile station” or “MS” throughout the entire patent. E.g., id. at 1:63-65. The 9110 is a related product to the 9000.

Case IPR2015-00391 Petition for Inter Partes Review

Exhibit 1089 ¶ 259. The 9110 UM, 9110 FAQ, and Nykanen all come from the

same company and all generally discuss similar topics including the provision of

data to applications on a mobile phone using wireless networks and Internet

browsers. Nikkei provides the general state of the art with respect to mobile phones in 1999 and supplies, as needed, express polyphonic reference and speaker technology as discussed above. One of skill in the art would have been motivated to combine the Nokia references with the general evolution of the industry in wireless phones in 1999 for the purpose of addressing long-felt needs as is discussed above. Further, the person of skill in the art would have been motivated to use Perez’s speaker in a wireless phone for the reasons discussed above. Id. ¶¶

259-62.

I. Claims 22, 25, 30, 39, and 40 Are Obvious Over Rizet and Either Rolf or Fritsch.

Rizet was published in 1998, and contains strikingly similar wording to the

‘395 patent. Rizet discloses each element of claims 22, 25, 30, 39, and 40, with the possible exception of polyphonic audio files and/or an audio file using MPEG,

MP3 or WAV format. Both Rolf (Exhibit 1100) and Fritsch (Exhibit 1101) teach a database accessible via an Internet website in which MP3 audio files are downloaded via a wireless link to mobile phones.

One of skill in the art would combine Rizet with either Rolf or Fritsch because Rolf and Fritsch describe databases and formats for delivering music to 46

Case IPR2015-00391 Petition for Inter Partes Review mobile phones. Rizet teaches an improvement relating to delivering “high quality”

ringtones in the form of “melody, song, music” and soundtracks to mobile phones,

while Fritsch and Rolf teach the generalized delivery of music to cellular phones

using various formats, including MP3. Rizet and Rolf both use “menu” driven

systems to select their music. One of skill in the art would readily substitute the

MP3 music of Fritsch or Rolf into Rizet – which does not specific any particular file format and is not limited to any particular file format. Exhibit 1089 ¶ 314.

With respect to the “polyphonic audio file” aspect of claim 40, even if Rizet does not incant “polyphonic” for its “ringing information,” selecting “polyphonic” over “monophonic” for ringing files would have been an obvious variation of

Rizet—particularly when Rizet discloses that its ringtones include “melody, song,

[or] music.” Exhibit 1014 at 2:6. Thus, even by itself, Rizet renders claim 40 (and claims 30 and 39) obvious. Selecting one category (polyphonic) from a list of two categories is, at best, an obvious variation for the reasons discussed above.

If an express motivation is needed to use polyphonic ringtones in Rizet (and

equipment to play such ringtones), Rolf supplies that disclosure by disclosing a

“remote, central facility” from which “the selected music recording(s) is/are

transmitted via a wireless data communications link to the cellular telephone.

Preferably, the music recordings are encoded and transmitted in packets, and may

particularly be encoded by a compression algorithm into an encoded (such as MP3

Case IPR2015-00391 Petition for Inter Partes Review or other) format.” Rolf at 1:25-38.

Rizet meets “polyphonic audio files” under Solocron’s Litigation

construction. Moreover, the combination of Rizet with Rolf or Fritsch shows

“MP3” files (which the inventor argued were “polyphonic audio files”) as downloadable ringtones. While Petitioners do not agree that MP3 necessarily discloses polyphonic audio files, this combination has at least as much detail as the

‘395 patent. If the ‘395 patent sufficiently discloses “polyphonic audio files,” so does this combination. Under Solocron’s Litigation construction, the MP3 files of the combination of Rizet with Fritsch or Rolf include “more than one sound.”

Exhibit 1089 ¶¶ 278-79.

The correspondence between Rizet and claims 22, 25, 30, 39, and 40 is shown in the chart below; Rolf’s and Fritsch’s disclosures are discussed further below the chart. See also id. ¶¶ 265-325.

Claim Element Where Each Limitation Is Found in Rizet (Exhibit 1014) [22/30/39]. A Rizet discloses a telephone that can be programmed with wireless telephone “user-defined forms of ringing information” (e.g., “melody, that may be song, music," and “soundtracks”) into a telephone (e.g., a “cellular telephone”): customized by searching for and “A telecommunication device is disclosed comprising a selecting an audio ringing information memory means, and a ringing information memory updating means for updating the file from a remote ringing information content [in] the form of … melodies.” computer and Abstract. programming the “It is an object to provide a multi selection, high quality

Case IPR2015-00391 Petition for Inter Partes Review selected audio file ringing information extend/change feature to a into the wireless telecommunication device such as a telephone [by telephone for use as providing] a public database containing a variety of alternative forms of ringing information …such as a an indicia of an melody, song, music…. 1:27-2:6. incoming communication, the “The database is filled with alternative forms of ringing information such as melodies, songs, sound, soundtracks, telephone speech etcetera.” 3:23-24. comprising: See 3:31-4:17 (describing Figure 2 showing how to search and select ringing information from a database for download into the ringing information memory). Claim 4 ( “the ringing information memory updating means is connected to selection means coupled to the database for selecting user defined forms of ringing information”). [22/30/39a] a Rizet teaches that the telephone can be used to form a communications link “communication link” to a remote “database” that “filled capable of with alternative forms of ringing information such as connecting to a melodies, songs”: database in the See “telecommunications link 2” in Fig. 1 and 3:31-4:17 remote computer that (describing “link 2” between the database and the phone includes a plurality that is used to select and download the ringing of lists of audio files information). in MPEG, or WAV, or MP3 format or a “[T]he telecommunication device … is characterised in that combination thereof; the ringing information memory updating means is connected to the data base via a long distance [30/39a recite communication link. Such a database can comprise one or “polyphonic audio more remotely situated databases, which are connectable files”] 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 at wish download his favourite ringing item.” 2:19-26. “The database is filled with alternative forms of ringing information such as melodies, songs, sound, soundtracks, speech etcetera.” 3:14-30.

Case IPR2015-00391 Petition for Inter Partes Review

[22b] a display See Figure 1 and 3:31-4:17 which shows a “guided menu screen and a mobile (block 11), wherein choices can be made by pushing Internet browser that appropriate keys on a keyboard 12, to choose (block 13) for allows a user of the example for ringing information in the form of music, wireless telephone to tones, speech etcetera to be downloaded by the browse at least one downloading means 7. In block 14 the chosen ringing of the lists of lists of information can at wish be prelistened by audio producing audio files and view means 15 to hear the melody, speech etcetera, before being selectable audio files downloaded. The selection means 8 provide for a stop, next present in the and selection in blocks 16 of a preferred and in block 17 browsed list; confirmed choice of ringing information. In block 18 the [30/39b] a display means 7 download the confirmed choice and block 19 ends screen and a the cession. In an alternative embodiment the browsing application telecommunication device 3 contains a video display means program that allows 20 for selecting ringing information items in the database 6 a user of the wireless on the basis of the name displayed on the video display telephone to browse means 20.” See also Figure 2 for flowchart of steps for the polyphonic audio accessing, reviewing, and downloading files. files and select at least one polyphonic audio file therefrom; [22c] processing See Figure 1 showing block diagram of system and phone circuitry configured including “means 7 for downloading … ringing to receive a selected information.” See also Fig. 2 discussed above with [1b]. one of the audio files 3:14- 4:17 (“ Each telephone 3 is provided with a … means from the 7 for downloading … ringing information to the ringing communications information memory 4….A suitably programmed and link; connected microprocessor 10 in telecommunication device [30/39c] processing 3 provides a guided menu … for ringing information … to circuitry configured be downloaded by the downloading means 7. … In block to supervise receipt 18 [of Fig. 2] the means 7 download the confirmed choice of a selected and block 19 ends the session. …”). polyphonic audio file from the communications link; [22/30/39d] a See “ringing information memory 4” throughout. programmable “Figure 2 shows … one possible way of implementing the 50

Case IPR2015-00391 Petition for Inter Partes Review memory circuit for updating of the ringing information present in the ringing allowing the user to information memory 4. …. … for ringing information in optionally store the the form of music, tones, speech etcetera to be downloaded selected audio file by the downloading means 7. In block 14 the chosen for use as an indicia ringing information can at wish be prelistened by audio of an incoming producing means 15 to hear the melody, speech etcetera, communication; and before being downloaded. The selection means 8 provide [30/39d recite for a stop, next and selection in blocks 16 of a preferred and in block 17 confirmed choice of ringing information. In “polyphonic audio block 18 the means 7 download the confirmed choice and files”] block 19 ends the cession.” 3:31-4: 17. See 3:14-30 (ringing information memory updating); see 2:1-18 (ringing memory update from a public database). [22/30/39e] an See “audio producing means 15” throughout. enhanced “It is an object to provide a multi selection, high quality performance speaker ringing information extend/change feature to a capable of providing telecommunication device such as a telephone [by a substantially full providing] a public database containing a variety of range of audio alternative forms of ringing information …such as a sounds when one of melody, song, music…. 2:1-18. the selected audio files is played as an “The database is filled with alternative forms of ringing indicia of an information such as melodies, songs, sound, soundtracks, incoming speech etcetera.” 3:14-30. communication. “microprocessor 10 in telecommunication device 3 [30/39e recite provides a guided menu (block 11), … to choose … ringing “polyphonic audio information in the form of music, tones, speech etcetera to files”] 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.” 4:2-8.

The disclosure in Rizet of an “audio producing means 15” which has the ability to produce “high quality ringing information … such as melody, song, music” (Exhibit 1014 at 1:26 and 2:6) confirms that Rizet discloses at least as

Case IPR2015-00391 Petition for Inter Partes Review much as the ‘395 patent regarding the “enhanced speaker” limitation and therefore meets this limitation. Exhibit 1089 ¶ 306. Similarly, Rizet necessarily discloses the “processing circuitry configured to supervise receipt” because a mobile telephone that receives wireless transmissions must have circuitry that supervises receipt of the received signals. Id. ¶¶ 296-97. Rizet also teaches that, when a ringing tone is downloaded, the session is terminated. Exhibit 1014 at Figure 2.

This confirms that the circuitry supervises receipt of the audio file. Moreover, one of skill in the art would understand that Rizet teaches going through ringing tones in a list like fashion and further that the database in Rizet has collections of

“melodies, songs, … soundtracks, speech, etc” and therefore discloses a plurality of lists. Exhibit 1089 ¶ 280.

Rolf discloses the following:

a system for transmitting encoded music from a remote, central facility to a wireless communications device, such as a cellular telephone or personal digital assistant. In particular, a user of the cellular telephone (for example) may use the telephone to establish a wireless communications link with the remote, central facility, and then wirelessly download one or more selected music recordings for storage in a memory of the cellular telephone. In particular, the selected music recording(s) is/are transmitted via a wireless data communications link to the cellular telephone. Preferably, the music recordings are encoded and transmitted in packets, and may particularly be encoded by a compression algorithm into an encoded (such as MP3 or

Case IPR2015-00391 Petition for Inter Partes Review

other) format.”

Exhibit 1100 at 0003. See id. 0010 (describing wireless communication link to a

“remote storage facility” which “may be at an address on the world wide web and includes a data base having a plurality of music recordings [that] are preferably encoded in an encoded format, such as MP3 (Mpeg-1 Audio layer 3).” See id. at

0016-0017 (selection of music from database via menu driven system).

Fritsch discloses the following:

the present invention includes a system and method for maintaining a music web site on the Internet. Consumers may access the web site via a personal computer or any other wired or wireless Internet access device, such as WebTV, personal digital assistant, cellular telephone, etc., to obtain a variety of services and products. For instance, a consumer may browse through artists, tracks or albums, pre-listen to a portion of the song and purchase the selected song either by downloading the digital data to her computer hard drive or by placing a mail order for a compact disk (CD). A specially encoded or encrypted MP3 files called ‘NETrax’ are delivered from a server over the Internet ….

Exhibit 1101 at 2:64-3:9. See id. at 9:18-21 (describing Figure 6 as a “ central server 60 is connected to a database which is a repository of sound files in digital format for downloading to the PC users”). See also 8:65-9:3 (describing music player which plays “songs encoded in other formats, such as MP3 for example.”).

Thus, both Rolf and Fritsch describe Internet websites with databases for

Case IPR2015-00391 Petition for Inter Partes Review downloading MP3 music to “cellular telephones.” Applying Rizet’s disclosure that the “database is filled with alternative forms of ringing information such as melodies, songs, sound, soundtracks” and substituting in the disclosure of Rolf or

Fritsch that the form of file with “music” that is in the “database” can be “MP3,” the combination of Rizet with Rolf or Fritsch renders claims 22 and 40 obvious.

Exhibit 1089 ¶¶ 315, 325.

Rizet, Rolf, and Fritsch all disclose the ability to search and select by title or description as claimed in claim 25 as shown in the chart below. Id. ¶¶ 316-20.

Claim Element Where Each Limitation Is Found in Rizet / Rolf / Fritsch 25. … Rizet (Exhibit 1014): “In a further elaboration the configured to telecommunication device according to the invention is allow the user to characterised in that it comprises video display means. The search the advantage thereof is that the user can select his preferred ringing database for a information items, such as melodies, songs etcetera by name. certain desired This reduces the trespassing on communication time over the audio file using communication link.” Exhibit 1014 at 2:31-3:1. Id. at 4:11-15 title or (“the telecommunication device 3 contains a video display description means 20 for selecting ringing information items in the database information to 6 on the basis of the name displayed on the video display means aid in locating a 20 or a reference to a particular ringing item, generally by desired audio displaying characters on the means 20”). file. Rolf (Exhibit 1100): “The remote storage facility may, for example, be at an address on the World Wide Web, and includes a data base having a plurality of music recordings therein. Preferably, the music recordings are categorized by a plurality of selectable fields, such as ‘title’, ‘artist’, ‘album or CD type’, ‘recording label’, etc.” Exhibit 1100 at 0010. “[T]he wireless communications device 12 can be utilized to select recording via a menu or listing of recordings.” Id. at 0017.

Case IPR2015-00391 Petition for Inter Partes Review

Claim Element Where Each Limitation Is Found in Rizet / Rolf / Fritsch Fritsch (Exhibit 1101): “the web site display is divided into 2 portions: main portion 12 on the left side of the screen 10 contains fields for entering music-related search queries. For example, the PC user may search for desired songs by artist after entering the artist's name. The operation is carried out by various search engines for searching relational databases. Alternatively, the PC user may look for a song by title or album name. Furthermore, as shown in FIG. 1A, songs and/or albums attributed to different genres may be displayed on the screen in response to the PC user's selection.” Exhibit 1101 at 3:50-59.

Therefore the combination of Rizet with either Rolf or Fritsch renders claim

25 obvious. Exhibit 1089 ¶ 321.

J. Claims 22, 25, 30, 39, and 40 are Obvious Over Rizet, Perez and one of Rolf or Fritsch.

If the Board adopts Solocron’s construction for the “enhanced speaker” term

(requiring a full range of human sounds despite the lack of enabling disclosure in the ‘395 for such a speaker), claims 22, 25, 30, 39, and 40 are obvious over Rizet and Perez in combination with one of Rolf or Fritsch. The teachings of Perez relevant to the “enhanced performance speaker” limitation are set forth in the table in Section V.D. The combined teachings of Rizet, Rolf and Fritsch are presented in Section V.I.

Perez recognizes a need “in the electronic industry to replace analog driven speakers and various products, including cellular phones, with purely digitally driven speakers which are less susceptible to EMI.” Exhibit 1081 at 2:40-43

Case IPR2015-00391 Petition for Inter Partes Review

(emphasis added). That is, persons of skill in the art had already recognized the

desirability of incorporating an “enhanced performance speaker” into cellular telephones. Exhibit 1089 ¶ 327. It follows that a person of ordinary skill in the art would have been motivated to combine the cellular phone disclosed in Rizet, Rolf and/or Fritsch with the Perez piezoelectric transducer for use as a speaker. Indeed,

Perez expressly discloses that “cellular phones are an ideal application” for its disclosed transducers in order to “eliminate the noise associated with analog speaker systems of the prior art.” Exhibit 1081 at 6:8-11. Thus, Rizet, Perez, and one of Fritsch or Rolf disclose each and every element of these claims, rendering them obvious. Exhibit 1089 ¶ 329.

K. Claims 22, 25, 30, 39, and 40 Are Obvious Over Rizet and Nikkei.

Rizet discloses each element of claims 22, 25, 30, 39, and 40, with the possible exception of polyphonic audio file and/or an audio file using MPEG, MP3 or WAV format. As discussed in detail in Section V.E, Nikkei discusses the state of the art in 1999 and expressly discloses “polyphonic” audio files and the technology, including speakers, used to provide polyphonic ringtones. Nikkei provides an overview of the knowledge of one skill in the art in 1999 with respect to ringtones, including the evolution to “polyphonic ringtones” and “MPEG” and

MP3. Exhibit 1074 at 0002 – 0007. Id. at 0006 (“These are functions to playback music data in formats such as MP3 (MPEG1 Audio Layer III…”); Id. at Figure 2

Case IPR2015-00391 Petition for Inter Partes Review

(showing evolution to MP3 playback); Id. at Figure 1 (Figure of phone: “Audio decoding LSI such as MP3”); Id. at 0003 (discussing MP3); Id. at 0004 at Fig. 5

(discussing MP3 delivery); Id. at 0004-005 (“In order to deliver contents in MP3 or

ATRAC3…”); Id. at 0007 (“Samsung… exhibited a mobile phone with an MP3 playback function at a ‘Telecom 99… in October 1999”).

As discussed in Section V.I above, Rizet alone renders claims 22, 25, and 40 obvious. To the extent that an express motivation is needed to use “polyphonic” ringtones in Rizet (and equipment to play such ringtones), Nikkei supplies that disclosure regardless of which construction is adopted for “polyphonic audio files.”

One of skill in the art would combine Rizet and Nikkei because they both address the same problem of delivering improved ringtones. Exhibit 1089 ¶¶ 335-

39. Rizet teaches an improvement relating to delivering “high quality” ringtones in

the form of “melody, song, music” and soundtracks to mobile phones, while

Nikkei is entitled “Music is from ringing tones…” and focuses throughout on the

ability to transmit music, including ringtones, to mobile phones. Exhibit 1074 at

0002-6; see id. at Table 1 on 0002 (showing popular “ringing tones” songs as

“Livin’ La Vida Loca” and soundtracks as “Theme of Star Wars”). One of skill in

the art would readily combine polyphonic ringtones as taught by Nikkei with Rizet

to meet the growing demand referenced in Nikkei. Exhibit 1089 ¶¶ 335-39.

Case IPR2015-00391 Petition for Inter Partes Review

L. The Asserted References Are Not Cumulative At This Point.

Petitioners agree that the number of grounds can be reduced for trial, but

respectfully submit that this reduction should not occur until after certain threshold

questions have been resolved. The identified references are not cumulative

because they each address potential patentee arguments on threshold questions

such as claim construction and address different claims.

One significant issue is the Board’s construction of the “polyphonic” and

“enhanced speaker” terms—particularly because the ‘395 patent is bereft of any

express discussion of these concepts. If the “enhanced speaker” needs only to play

the selected file and does not have to perform a function not enabled in the ‘395

specification (playing the range of sounds that some humans can hear), then the

grounds with Perez (grounds 3, 4, and 9) may be cumulative. However, if the

enhanced speaker requires the “full range of human hearing” (despite any

description of such concept in the ‘866 patent), then Perez supplies that element

expressly and Nikkei supplies that element in more detail than the ‘395 patent.

Similarly, if “polyphonic” (claims 30, 36, 39 and 40) merely requires “more

than one sound” (as alleged by Solocron in the Litigation), then each ground

invalidates. If “polyphonic” is satisfied by certain file formats (as alleged by the

patentee during prosecution), then each ground shows those formats. If express

discussion of “polyphonic” is required, including multiple simultaneous sounds,

Case IPR2015-00391 Petition for Inter Partes Review then grounds with Nikkei (4, 6, 7, and 10) show these simultaneous sounds.

Similarly, with respect to the “WAP” browser in claim 36, ground 7 (with

Nykanen) may be cumulative if all that is needed in the prior art is the identification of adding a WAP browser to Nokia mobile phones (which is found in the Nokia press releases in ground 6). If the prior art must disclose the specifics of a WAP browser (far beyond the 1 sentence in the ‘395), then Nykanen in ground 7 supplies that disclosure.

If the patentee does not dispute that the 9110 UM discloses the downloading of WAV files to be used as ringtones (which seems indisputable), then ground 2 would be cumulative to ground 1. Petitioners respectfully suggest that any reduction in grounds for trial be made after the petition has been instituted and some of the threshold questions have been addressed.

Case IPR2015-00391 Petition for Inter Partes Review

VIII. CONCLUSION

For all the foregoing reasons, inter partes review of claims 22, 25, 30, 36,

39, and 40 of the ‘395 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

Case IPR2015-00391 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. §§ 42.6(e) and 42.105(b), the undersigned certifies that, on the 8th 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 Owner:

Karen J. Lenker Knobbe Martens Olson & 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