IPR2015-00349 Petition for Inter Partes Review

Case IPR2015-00349 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 IPR2015-00349 Patent No. 7,319,866

PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,319,866 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 IPR2015-00349 Petition for Inter Partes Review

TABLE OF CONTENTS

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

II. NOTICES, STATEMENTS AND PAYMENT OF FEES ...... 3

A. Real Party In Interest Under 37 C.F.R. § 42.8(b)(1) ...... 3

B. Related Matters Under 37 C.F.R. § 42.8(b)(2) ...... 3

C. Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ...... 4

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

E. Grounds for Standing Under 37 C.F.R. § 42.104(a) ...... 4

F. Fees Under 37 C.F.R. § 42.103 ...... 5

III. THE ‘866 PATENT ...... 5

A. Background ...... 5

B. The Asserted Priority Chain of the ‘866 Patent ...... 8

C. Prosecution History of the ‘866 Patent ...... 10

IV. IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R. § 42.104(B) ...... 12

V. HOW THE CHALLENGED CLAIM IS TO BE CONSTRUED UNDER 37 C.F.R. § 42.104 (B) (3) ...... 13

VI. DETAILED EXPLANATION AND SUPPORTING EVIDENCE UNDER 37 C.F.R. §§ 42.104(B)(4) AND (B)(5) ...... 18

A. Claim 10 Is Not Entitled to a Filing Date Prior To August 2004...... 18

1. Legal Standards Relevant to Priority ...... 19

a. To Evaluate Invalidity Under Anticipation Or Obviousness, The Priority Date Must Be Determined Based Upon The Written Description Requirement ...... 20

Case IPR2015-00349 Petition for Inter Partes Review

b. Adequate Written Description Requires Express Or Inherent Disclosure And Identification Of The “Blaze Marks” Of Later- Claimed Characteristics...... 22

2. The Priority Applications Do Not Reasonably Convey That the Inventor Possessed “Polyphonic Audio Files.” ...... 24

a. The Priority Applications Lack Actual or Inherent Written Description for “Polyphonic Audio Files.”...... 24

b. The Inventor Did Not Provide The Requisite Blaze Marks For Polyphonic Audio Files...... 26

c. Solocron Is Estopped From Asserting Priority Because It Distinguished The Prior Art As Lacking the Same Disclosure That the Priority Applications Lack...... 29

d. Solocron’s New Litigation Citations Similarly Do Not Show That The Inventor Had Possession Of The Concept Of Polyphonic Audio File In The Priority Applications...... 31

B. Claim 10 Is Anticipated by Holm...... 33

C. Claim 10 Is Anticipated by the 3510 UG ...... 42

D. Claim 10 is Rendered Obvious by the Shanahan PCT Application in view of Futamase, Baron, or Nuova ...... 48

E. Claim 10 Is Obvious Over Holm in View of Futamase, Baron or Nuova. . 54

F. Claim 10 Is Obvious Over Holm in View of Perez...... 55

G. Claim 10 Is Obvious Over 3510 UG in View of Perez...... 57

VII. CONCLUSION ...... 58

Case IPR2015-00349 Petition for Inter Partes Review

TABLE OF AUTHORITIES

Page(s)

Cases Agilent Techs., Inc. v. Affymetrix, Inc., 567 F.3d 1366 (Fed. Cir. 2009) ...... 25

Anascape, Ltd. v. Nintendo of Am., Inc., 601 F.3d 1333 (Fed. Cir. 2010) ...... 23

Bradford Co v. Conteyor, 603 F.3d 1262 (Fed. Cir. 2010) ...... 30

Carnegie Mellon Univ. v. Hoffman-La Roche Inc., 541 F.3d 1115 (Fed. Cir. 2008) ...... 1

Chiron Corp. v. Genentech, Inc., 363 F.3d 1247 (Fed. Cir. 2004) ...... 21

Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956 (Fed. Cir. 2002) ...... 21

Hitzeman v. Rutter, 243 F.3d 1345 (Fed. Cir. 2001) ...... 25

Hollmer v. Harari, 681 F.3d 1351 (Fed. Cir. 2012) ...... 20

Hyatt v. Boone, 146 F.3d 1348 (Fed. Cir. 1998) ...... 23

Lockwood v. Am. Airlines, Inc., 107 F.3d 1565 (Fed. Cir. 1997) ...... 21

Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) ...... 16

In re NTP, Inc., 654 F.3d 1268 (Fed. Cir. 2011) ...... 20

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Case IPR2015-00349 Petition for Inter Partes Review

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

Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320 (Fed. Cir. 2000) ...... 23, 24, 27, 28

Research Corp. Techs., Inc. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010) ...... 22

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

Tronzo v. Biomet, Inc., 156 F.3d 1154 (Fed. Cir. 1998) ...... 20, 22

Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916 (Fed. Cir. 2004) ...... 21

Case IPR2015-00349 Petition for Inter Partes Review

PETITIONERS’ EXHIBIT LIST

Exhibit No. Description

Exhibit 1001 U.S. Patent No. 7,319,866 (the ‘866 patent)

Exhibit 1002 Complaint filed in Solocron v. Cellco Partnership et al. (Case No. 2-13-cv-1059) (E.D. Tex.) Exhibit 1003 Copy of U.S. Provisional Patent App. 60/169,158, as filed Dec. 6, 1999 (downloaded from PAIR) Exhibit 1004 Copy of Prosecution History for U.S. Patent App. 09/518,712, filed Mar. 3, 2000 (now U.S. Patent No. 6,496,692) Exhibit 1005 Copy of U.S. Patent App. 10/915,866, as filed Aug. 11, 2004 (now U.S. Patent No. 7,319,866) (downloaded from PAIR) 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 Copy of U.S. Patent App. 09/518,712, as filed Mar. 3, 2000 (now U.S. Patent No. 6,496,692) 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 Excerpts of Documents Showing Mr. Shanahan’s Prosecution and Litigation Experience Exhibit 1012 List of Patents and Patent Applications Issued to Nokia Relating to Ringtones Exhibit 1013 Nokia Application No. 19991865 (the “1999 Nokia Finnish application”) (certified copy (in English) obtained from PAIR in connection with U.S. Patent No. 6,907,113) 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”)

Case IPR2015-00349 Petition for Inter Partes Review

Exhibit 1015 U.S. Patent No. 6,018,654, entitled “Method and Apparatus for Downloading Tones to Mobile Terminals,” filed October 29, 1996, and issued January 25, 2000, to Valentine et al. (“Ericsson” or “Valentine”) Exhibit 1016 “Ring My Bell,” The New Yorker, March 7, 2005. (downloaded from http://www.newyorker.com/magazine/2005/03/07/ring-my- bell) Exhibit 1017 “The Sweet Sound of Success,” Time Magazine Europe, 2004 (downloaded from http://content.time.com/time/magazine/article/0,9171,901040816 -678568,00.html) Exhibit 1018 “Pioneer of the Mobile Ringtone Business,” Mobile Entertainment Forum MEF Special Recognition Award, 2004 Exhibit 1019 Declaration of Internet Archive and Copies of Various Websites

Exhibit 1020 “Yamaha Sound Generator LSI ‘YMU757,’” Yamaha News Release Exhibit 1021 International Publication No. WO 01/16931, entitled “Method And Arrangement For Providing Customized Audio Characteristics To Cellular Terminals,” published March 8, 2001 (“Holm”) 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 U.S. Patent No. 6,506,969, entitled “Automatic Music Generating Method and Device,” filed in the United States under § 371 on Mar. 23, 2001, (claiming priority to PCT Application PCT/FR99/02262 , filed September 23, 1999), and issued Jan. 14, 2003 (“Baron”)

Case IPR2015-00349 Petition for Inter Partes Review

Exhibit 1028 Int’l Application Pub. No. WO 02/054735, entitled, “A Mobile Telephone”, published July 11, 2002 (“Nuova”) Exhibit 1029 U.S. Patent Application No. 2001/0045153

Exhibit 1030 International Publication No. WO 01/41403, entitled “Methods and Apparatuses for Programming User-Defined Information to Electronic Devices”, published June 7, 2001 (“Shanahan PCT”) 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 User’s Guide for Nokia 3510, published in 2002 (“3510 UG”)

Exhibit 1033 March 12, 2002, Nokia Press Release, “The Nokia 3510 Brings GPRS And Polyphonic Sounds To The Consumer Market” Exhibit 1034 Exhibit Not Used

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

Exhibit 1036 Final Decision dated April 22, 2014 in IPR2014-00116

Exhibit 1037 Certified Translation of Japanese Patent Application 11-214083, filed July 28, 1999, and to which Futamase (Exhibit 1026) claims priority. 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

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Case IPR2015-00349 Petition for Inter Partes Review

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

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 Exhibit Not Used

Exhibit 1057 Exhibit Not Used

Exhibit 1058 Exhibit Not Used

Exhibit 1059 Exhibit Not Used

Exhibit 1060 Certified English translations of JukeBoksi websites (corresponding to Exhibit 1019 at 0088-0098). Exhibit 1061 Exhibit Not Used

Exhibit 1062 Exhibit Not Used

Exhibit 1063 Exhibit Not Used

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Exhibit 1064 Exhibit Not Used

Exhibit 1065 Exhibit Not Used

Exhibit 1066 Exhibit Not Used

Exhibit 1067 Exhibit Not Used

Exhibit 1068 Exhibit Not Used

Exhibit 1069 Exhibit Not Used

Exhibit 1070 Exhibit Not Used

Exhibit 1071 Exhibit Not Used

Exhibit 1072 Exhibit Not Used

Exhibit 1073 Declaration of Erin Flaucher re Nokia 3510 with Exhibits

Exhibit 1074 Exhibit Not Used

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 Declaration of Richard T. Mihran, Ph.D., and CV

Exhibit 1081 U.S. Patent No. 6,492,761, filed on January 20, 1998, issued on December 10, 2002 (“Perez”) Exhibit 1082 Exhibit Not Used

Case IPR2015-00349 Petition for Inter Partes Review

Exhibit 1083 Exhibit Not Used

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 Exhibit Not Used

Exhibit 1089 Exhibit Not Used

Exhibit 1090 Exhibit Not Used

Exhibit 1091 Exhibit Not Used

Exhibit 1092 Exhibit Not Used

Exhibit 1093 Exhibit Not Used

Exhibit 1094 Exhibit Not Used

Exhibit 1095 Exhibit Not Used

Exhibit 1096 Exhibit Not Used

Exhibit 1097 Exhibit Not Used

Exhibit 1098 Exhibit Not Used

Exhibit 1099 Exhibit Not Used

Exhibit 1100 Exhibit Not Used

Exhibit 1101 Exhibit Not Used

Case IPR2015-00349 Petition for Inter Partes Review

Exhibit 1102 Exhibit Not Used

Exhibit 1103 Exhibit Not Used

Case IPR2015-00349 Petition for Inter Partes Review

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

(“Petitioners”) request inter partes review of claim 10 of U.S. Patent No.

7,319,866 (“the ‘866 Patent”) (Exhibit 1001).

I. INTRODUCTION AND BACKGROUND

“The basic function of a patent specification is to disclose an invention.”

Carnegie Mellon Univ. v. Hoffman-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir.

2008). Yet, the key element of claim 10 of the ‘866 patent finds no support in the

specifications of the priority applications, but instead was inserted into the claim

years after the asserted priority date and years after the industry described,

patented, and adopted this same technology. In light of this break in the priority

chain, claim 10 of the ‘866 patent cannot claim priority to any earlier filed

application. Under its correct priority date, claim 10 is invalid under 35 U.S.C. §§

102 & 103 over the references discussed herein.

In particular, claim 10 recites a term that is neither expressly nor inherently

disclosed in the ‘866 priority chain: “polyphonic audio file.” This term appeared

for the first time in the initial claims of an application in the ‘866 application in

2004—nearly five years after the earliest asserted priority date and two years after

wireless carriers such as Petitioner released “polyphonic ringtone” products.

Under Federal Circuit law, the complete lack of support for the term “polyphonic

audio file” in the priority applications, as detailed in the attached declaration of

Case IPR2015-00349 Petition for Inter Partes Review musicology expert Dr. John Strawn (Exhibit 1079), precludes the patentee from relying on any earlier priority claim. The Board can assess this priority issue in an inter partes review, and has done so before. E.g., Exhibit 1036.

The ‘866 patent is part of a family of nearly twenty patents owned by

Solocron Media, LLC (“Solocron”), a small company based in Tyler, Texas.

Solocron acquired this family from Michael Shanahan, a telecommunications and electronics patent prosecutor formerly of Fish & Neave and McDermott Will &

Emery. E.g., Exhibit 1011. Mr. Shanahan’s clients over the past fifteen years include Nokia, Inc. (“Nokia”) and other electronics companies. Id.

Solocron alleges that the ‘866 patent relates to a telephone personalized with ringtones. Personalizing a telephone with ringtones was well-known long before the ‘866 patent. Indeed, Nokia entities own at least 101 U.S. patents relating to ringtones, including 17 patents and applications with an earlier filing date than the

‘866 patent. Exhibit 1012. Nokia has even more international patents and applications, including WO 01/16931 (“Holm”) (Exhibit 1021), which discloses the claimed concepts using nearly identical terminology. Holm is one example of a compelling prior art reference that discloses the elements of claim 10 in explicit detail and that was not presented to the Patent Office during the prosecution of the

‘866 patent or any of the applications to which it claims priority.

Significantly, claim 10 had only one substantive Office Action, and the 2

Case IPR2015-00349 Petition for Inter Partes Review

Patent Office never made any written priority determination1 or provided any explanation for issuance—which occurred after a telephonic interview of which there is no written record detailing the allowance reasons. The Patent Office’s limited review of the ‘866 patent is unsurprising: over the past ten years, Mr.

Shanahan and his attorneys submitted hundreds of vaguely-worded claims (many of which recite terms that were never hinted at in the priority applications) and overwhelmed the Patent Office with hundreds of pieces of prior art without any explanation of the art’s relevance.

For the reasons below, there is a reasonable likelihood that claim 10 of the

‘866 patent is 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

‘866 Patent in the Eastern District of Texas on December 6, 2013 (Case No. 2:13-

cv-01059) (“the Litigation”): Sprint Corporation, Sprint Communications

1 As the Federal Circuit recognized, “[t]he PTO’s own procedures indicate that examiners do not make priority determinations except where necessary.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305 (Fed. Cir. 2008). 3

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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 ‘866 patent is

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

from requesting inter partes review based on the grounds herein. Petitioners

Case IPR2015-00349 Petition for Inter Partes Review certify this petition is filed within one year of the service of the Complaint above.

F. Fees Under 37 C.F.R. § 42.103

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

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

III. THE ‘866 PATENT

A. Background

The ‘866 patent was filed on August 11, 2004, and purports to claim priority to applications dating back to December 1999. Exhibit 1001. It generally relates to personalizing telephones with ringtones. Id. at 1:15-19. The disclosures of the

‘866 patent and its priority applications do not support the features claimed nearly five years after the earliest asserted priority date. Figure 4 of the ‘866 patent illustrates that the original disclosures were vague and amorphous and bear little resemblance to the ringtone matter the patentee sought to capture five years later:

In contrast, claim 10 of the ‘866 patent purports to cover a wireless telephone that includes a communications link for connecting to a database storing polyphonic audio files, a display screen, an enhanced speaker,

Case IPR2015-00349 Petition for Inter Partes Review processing circuitry, and programmable memory. Id. at 14:13-35. It reads:

A telephone that may be customized by searching for and selecting an audio file from a remote computer and programming the selected audio file into the telephone for use as an indicia of an incoming communication, the telephone comprising: a communications link capable of connecting to a database in the remote computer that includes a plurality of polyphonic audio files; a display screen and a browsing application program that allows a user of the telephone to browse the polyphonic audio files and select at least one polyphonic audio file therefrom; processing circuitry configured to supervise receipt of a selected polyphonic audio file from the communications link; a programmable memory circuit for allowing the user to optionally store the selected polyphonic audio file for use as an indicia of an incoming communication; and an enhanced performance speaker capable of providing a substantially full range of audio sounds from the selected polyphonic audio file when the selected polyphonic audio file is played.

Id. Several claimed features are barely described or, in some cases, not even

mentioned anywhere in the ‘866 specification. Most notably, neither “polyphonic

audio files” nor any recitation of “polyphony” or anything related to that concept

can be found in the ‘866 specification. See generally Exhibit 1001.

During prosecution of a related application, the inventor conceded that the

Case IPR2015-00349 Petition for Inter Partes Review idea of customized ringtones was known before his earliest filing date. Exhibit

1004 at 0095. This concession is required by the expansive body of pre-1999

ringtone related prior art. Well before Mr. Shanahan’s earliest priority date, entities such as Nokia, Ericsson, Inc. (“Ericsson”), and Philips Electronics N.V.

(“Philips”) pioneered and patented inventions relating to customizing mobile phones with ringtones. Exhibits 1012, 1014-15.

Despite Mr. Shanahan’s assertion that he invented the personalization of ringtones, that technology is also old. Over three years before Mr. Shanahan’s earliest non-provisional application, a Finnish inventor, Vesa-Matti Paananen, designed a product called Harmonium, which allowed users to personalize phones with ringtones delivered over the air. Exhibit 1016. Mr. Paananen has received recognition from the industry, including a special award as “Pioneer of the Mobile

Ringtone Business.” Exhibits 1016-18.

Beyond Mr. Paananen, various companies described and patented this personalization concept long before Mr. Shanahan. Exhibits 1014, 1015. For example, more than a year before Mr. Shanahan’s earliest priority date, Philips described a “telecommunication device and a remote database containing a variety of alternative forms of user selectable and downloadable ringing information.”

Exhibit 1014, Abstract. Similarly, various websites with selectable and downloadable ringtones were available around the globe. Exhibits 1019, 1060. 7

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Even if Mr. Shanahan could properly claim priority to December 1999

(which he cannot), he still would not be the first person to invent polyphonic ringtones and/or enhanced speakers for playing polyphonic ringtones. Such ringtones were simply an evolution in the cell phone industry. The concept of

“polyphonic ringtones” appeared at least as early as September 1999 in European

and Japanese cell phone markets. See, e.g., Exhibit 1020 (Yamaha sound generator

LSI “YMU757”). The Yamaha YMU757 reference above described a chip which permitted the playback of “high quality polyphony” on mobile phones, including

“user-selected sound and melodies.” Id. Moreover, in its July 1999 Japanese

patent application, Yamaha described a “tone generator capable of sounding two or

more tones at a time … in a portable terminal apparatus … [that] reproduces music

which is various in kind and rich in musicality as ringing melodies[.]” Exhibit

1037 ¶ 0017. Yamaha even recognized that “the present invention uses audio

information … [such as] WAV, AIFF, SOUND VQ, or MP3….” Id. ¶ 0108. “The

present invention allows common formatting to capture the audio information

having these formats ….” Id.

B. The Asserted Priority Chain of the ‘866 Patent

The ‘866 patent claims priority to the following U.S. Patent Application

Nos.: (1) 10/223,200, filed on August 16, 2002 (“the August 2002 application”);

(2) 09/518,712, filed on March 3, 2000 (“the March 2000 application”); and (3)

Case IPR2015-00349 Petition for Inter Partes Review

60/169,158, filed December 6, 1999 (“the December 1999 application”). None of these applications disclose—much less mention—polyphonic audio files.

The entirety of the December 1999 application consists of a scant four double-spaced pages of written description, one doubled-spaced page of claims, and four block diagrams. Exhibit 1003. The 1999 provisional does not use the term “polyphonic,” does not discuss polyphony conceptually, does not discuss the fidelity of ringtones, does not reference an “enhanced speaker,” and does not describe how to reproduce any polyphonic ringtone. See generally id.

The March 2000 application also lacks any reference to “polyphonic,”

“polyphony,” or anything related to those concepts, and there is no discussion of the quality of ringtones or the importance of fidelity to the invention. Exhibit

1008. None of the claims in the March 2000 application as filed made any reference to “polyphonic,” and Mr. Shanahan never subsequently amended these claims to recite anything relating to “polyphonic” at any point during the pendency of the March 2000 application. See generally id.

Much like the March 2000 application, the August 2002 application—which shares a substantially identical disclosure to the March 2000 application—does not contain any reference to “polyphonic,” “polyphony,” or anything related to those concepts, nor is there any discussion of the quality of ringtones, or the importance of fidelity to the invention. Exhibit 1006. None of the claims as filed in the 9

Case IPR2015-00349 Petition for Inter Partes Review priority applications made any reference to “polyphonic.” Id.

Unlike its parents, the ‘866 application included claims reciting “polyphonic audio files.” Exhibit 1005 at 0028. Because of the complete lack of underlying support for the “polyphonic audio file” term in every application in the priority chain, claim 10 is not entitled to claim priority to any of these earlier applications.

C. Prosecution History of the ‘866 Patent

On August 11, 2004, the patentee filed the application that matured into the

‘866 patent. Despite the substantial body of prior art disclosing ringtones, the

Patent Office issued only a single substantive Office Action, and never made any written priority determination. The Examiner’s sole procedural rejection was for obviousness-type double patenting. Exhibit 1007 at 0135-36.

In response, the applicant cancelled certain claims, and responded by asserting, without explanation, that “claims 1-40 of this case do not conflict with any of [the] claims [remaining in] the '862 application.” Id. at 0115. The examiner withdrew the obviousness type double patenting rejecting without any reasoning.

The Examiner rejected all pending claims as “unpatentable over Lin et al

(6,366,791) in view of Isomursu et al. (7,088,990).” Id. at 0092-95. In relevant part, the Examiner stated that Isomursu and Lin disclosed polyphonic audio files. Id. In response, the applicant distinguished his invention as follows:

Additional novel features of claims 1, 10 and 31 include the use of

Case IPR2015-00349 Petition for Inter Partes Review

polyphonic audio files as ringtones. Both Isomursu and Lin fail disclose this feature at all. In fact, nowhere in either reference, or any reference of record, is the quality or fidelity of a ringtone mentioned or even recognized as a desirable or relevant feature. The use of high quality audio data such as polyphonic audio files for ringtones is an important feature of certain aspects of applicant's claimed invention. For example, the use of high fidelity ringtones such as polyphonic ringtones (sometimes referred to now as “real tones”, “true tones”, “master tones”, etc.) that may be actual MP3 (or other high quality digital representations of) songs or other audio greatly improves the user’s experience by allowing the user to hear realistic recreations of selected audio. Nowhere in this feature shown or suggested in the prior art of record . . . .

Id. at 0061, 0063-64 (emphasis added). The response detailed alleged

shortcomings of the prior art. However, the alleged shortcomings of the prior art

are similarly missing in the ‘866 specification and therefore cannot provide a

legitimate basis on which to overcome the prior art. As with the obvious type

double patenting response, the argument simply missed the mark because it was

not germane to the underlying legal basis of the rejection.

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 indication of why claims 1-10 were allowable, why claims 11-40 were not

allowable, or even why claims 11-40 were being cancelled. Id. at 0026-31. 11

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

Petitioners request inter partes review of claim 10, in view of the references below, which are all prior art under 35 U.S.C. § 102(b) when claim 10 is assigned its correct priority date of the August 2004 filing of the ‘866 application:

1. Holm (Exhibit 1021), Int’l Pub No. WO 01/16931, published March 8,

2001. The Office never considered Holm during prosecution.

2. 3510 UG (Exhibit 1032), User’s Guide for Nokia 3510. 3510 UG was available on the Internet by no later than June 2002 (see Exhibit 1087 ¶¶ 36-37 and

Exhibit P), and was distributed with the 3510 handset throughout 2002 (see Exhibit

1073 ¶ 6). The Office never considered 3510 UG during prosecution.

3. Shanahan PCT Application (Exhibit 1030), Int’l Pub. No.

WO2001041403, published June 7, 2001. The Office never considered the

Shanahan PCT during prosecution.

4. Futamase (Exhibit 1026), European Patent Application EP1073034, published January 31, 2001. The Office never considered Futamase during prosecution.

5. Baron (Exhibit 1027), U.S. Patent No. 6,506,969, was filed under 371 on

Mar. 23, 2001, and issued Jan. 14, 2003. The Office never considered Baron during prosecution.

6. Nuova (Exhibit 1028), Int’l Pub. No. WO 02/054735, published July 11,

Case IPR2015-00349 Petition for Inter Partes Review

2002. The Office never considered Nuova during prosecution.

7. Perez (Exhibit 1081), U.S. Patent No. 6,492,761, filed Jan. 20, 1998 and issued Dec. 10, 2002. The Office never considered Perez during prosecution.

Petitioners request that claim 10 be cancelled based upon the following grounds, as detailed below, including claim constructions: Ground 1: 35 U.S.C. §

102 as anticipated by Holm (Exhibit 1021); Ground 2: 35 U.S.C. § 102 as anticipated by the 3510 UG (Exhibit 1032); Ground 3: 35 U.S.C. § 103 over the

Shanahan PCT Application (Exhibit 1030) in view of Futamase (Exhibit 1026),

Baron (Exhibit 1027), or Nuova (Exhibit 1028); Ground 4: 35 U.S.C. § 103 over

Holm (Exhibit 1021) in view of Futamase (Exhibit 1026), Baron (Exhibit 1027), or

Nuova (Exhibit 1028); Ground 6: 35 U.S.C. § 103 over Holm (Exhibit 1021) in view of Perez (Exhibit 1081); and Ground 7: 35 U.S.C. § 103 over 3510 UG

(Exhibit 1032) in view of Perez (Exhibit 1081).

V. HOW THE CHALLENGED CLAIM IS TO BE CONSTRUED UNDER 37 C.F.R. § 42.104 (b) (3)

In this proceeding, claim terms are given a broadest reasonable interpretation consistent with the specification and prosecution history. See Office Patent Trial

Practice Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012); 37 C.F.R. § 100(b).

The broadest reasonable interpretation of the relevant claim terms is as follows:

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

Case IPR2015-00349 Petition for Inter Partes Review the applications to which the ‘866 patent claims priority. 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. ¶¶ 62-79.

This construction uses contemporaneous evidence (from 1999 to 2004) of the ordinary meaning of polyphonic content. As Dr. Strawn explains, polyphonic content is distinguished from monophonic content, which consists of a single tone.

Id. ¶ 19. Examples of monophonic content would include a person sequentially

playing an individual key on a piano. Id. By contrast, with polyphonic content, two or more tones are produced at the same time. Id. ¶¶ 20; 61-79. “Monophony” or “polyphony” are known as elements of music. Id. ¶¶ 21-22.

As explained in Dr. Strawn’s Declaration, this definition is confirmed by many extrinsic sources, including the Harvard Dictionary of Music. Id. ¶¶ 64-78

(citing Exhibit 1031 (defining “polyphony” as “music that combines several simultaneous voice-parts of individual design, in contrast to monophonic music, which consists of a single melody”); Exhibit 1041 (defining “polyphony” as “any music in which two or more tones sound simultaneously”); Exhibit 1029 (U.S.

Patent Application 2001/0045153, filed on March 2, 2001, stating “[m]usic comprising a plurality of simultaneous notes is referred to as polyphonic music”

[0005]) and “a single note of a monophonic musical signal and multiple 14

Case IPR2015-00349 Petition for Inter Partes Review simultaneous notes of a polyphonic musical signal” [0039]); Exhibit 1050 U. S.

Pat. No. 6,351,225, filed on August 5, 1999 at 4:1-4 (“polyphonic playing (that is, the playing of simultaneous notes perceived to be sounding at the same time)”).

In the Litigation, Solocron proposes a construction of “audio file having more than one sound.” Exhibit 1038 at 0034. Petitioners do not adopt Solocron’s

construction because it is inconsistent with the basis on which the ‘866 patent was

granted. Exhibit 1079 ¶ 79. Indeed, Solocron’s construction encompasses two

consecutive single keystrokes of the piano, which is classic monophonic content.

This construction provides no basis to distinguish the prior art cited in prosecution,

and yet Solocron (successfully) argued that prior art did not disclose “polyphonic

audio files.”

In the Litigation, Defendants proposed a construction of “a synthesized representation of an audio composition having more than one sound.” This definition is appropriate for district court Markman, but not for an IPR. First,

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 because it includes the restriction of

“synthesized representation.” Additionally, the proper construction of this term includes the concept of “simultaneous” tones as discussed above. The lack of

“simultaneous” in the Defendants’ construction reflects an attempt to narrow the 15

Case IPR2015-00349 Petition for Inter Partes Review issues to the district court—a decision which does not change the appropriate construction to be used by the Board.

As discussed below, however, regardless of whether the Board adopts

Petitioners’ construction, Solocron’s Litigation construction, or the Defendants’

Litigation construction, claim 10 cannot claim priority back to the priority applications because those applications do not provide any disclosure—much less

adequate written description—showing that the number of sounds in an audio file

was important, relevant, or possessed by Mr. Shanahan as of the time of the

priority applications. Therefore, for all of the reasons stated in section VI.A, infra,

the correct priority date is the filing date for the ‘866 application.

“Enhanced performance speaker capable of providing a substantially

full range of audio sounds” is never defined or described with any objective

criteria in the specification, and is the type of subjective term that the Federal

Circuit has repeatedly found indefinite utilizing the district court Markman

approach to claim construction. Markman v. Westview Instruments, Inc., 517 U.S.

370, 373 (1996). This term also lacks written description support and is not

enabled. 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 ‘866 16

Case IPR2015-00349 Petition for Inter Partes Review patent provides no guidance as to what “range” is claimed. Id.

For purposes of this IPR, however, this Board does not apply the strict

Markman rules, but instead uses the broadest reasonable interpretation, and the

Board can provide a broadest reasonable interpretation for this term. Therefore,

Petitioners provide the broadest reasonable construction which: (a) attempts to construe this term (which would be indefinite under a district court Markman analysis) and (b) reflects how this term is used in claim 10, which recites: “an enhanced performance speaker capable of providing a substantially full range of audio sounds from the selected polyphonic audio file when the selected polyphonic audio file is played.” In this phrase, the capabilities of the “enhanced performance speaker” are tied to the contents of the “selected polyphonic audio file.” Thus, the broadest reasonable interpretation would give meaning to the relationship between the enhanced speaker and the polyphonic audio file, as dictated by the context of the claim. Therefore, for purposes of 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.”

The preamble should be construed to be not limiting. A “preamble is not limiting . . . where a patentee defines a structurally complete invention in the claim 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 17

Case IPR2015-00349 Petition for Inter Partes Review

(Fed. Cir. 2008) (internal citations and quotations omitted). The preamble recites a classic intended use (“searching,” “selecting,” and “programming” a ringtone “for use as an indicia of an incoming communication”), and fits 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 preamble

(“searching for and selecting”) and the claim body (“browse … and select”).

VI. 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)-(5), Petitioners set forth an

explanation below of why claim 10 of the ‘866 patent is unpatentable under the

statutory grounds identified above. 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, including an identification of

those specific portions of the evidence that support the challenge. References are

made to the Strawn Declaration (Exhibit 1079) and Mihran Declaration (Exhibit

1080), filed herewith. An Exhibit List (see 37 C.F.R. § 42.63(e)) identifying the exhibits is also included, supra, at p. v.

A. Claim 10 Is Not Entitled to a Filing Date Prior To August 2004.

As a threshold matter, claim 10 is not entitled to the filing date of any earlier application. None of the priority applications comes close to providing sufficient

Case IPR2015-00349 Petition for Inter Partes Review written description to establish that Mr. Shanahan possessed the full scope of the subject matter of claim 10 at any point prior to August 2004. 35 U.S.C. §§ 112,

120.

Because references cited below have an effective date after the priority applications, it is appropriate for this Board to assess priority to determine whether the cited art is “prior art.” See Exhibit 1036, April 22, 2014 Decision in IPR2014-

00116 (“If the challenged claims … are entitled to the benefit of an [earlier]

effective filing date …, then every ground in the Petition would rely on at least one

reference that fails to qualify as prior art …. We must evaluate, therefore, the

priority date, i.e., the effective filing date….”) (emphasis added) (finding patent

not entitled to priority and anticipated by intervening prior art).

The priority applications lack adequate written description for “polyphonic

audio files” regardless of the construction (see Section V, supra) the Board adopts.

The discussion below focuses primarily on Petitioners’ proposed construction, but

applies to all possible constructions because each construction requires that the

term “polyphonic audio file” be defined by the number of sounds in a particular

file. There is no disclosure or “blaze mark” as discussed below even hinting at the

number of sounds in a file, much less identifying that number of sounds as an

important and patentable characteristic as required by the Federal Circuit.

1. Legal Standards Relevant to Priority 19

Case IPR2015-00349 Petition for Inter Partes Review

a. To Evaluate Invalidity Under Anticipation Or Obviousness, The Priority Date Must Be Determined Based Upon The Written Description Requirement

As the Federal Circuit has recognized, “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). “Rather, for a patent’s claims to be

entitled to an earlier priority date, the patentee must demonstrate that the claims

meet the requirements of 35 U.S.C. § 120.” Id. “[I]f any application in the priority

chain fails to make the requisite disclosure of subject matter [under § 112], the

later-filed application is not entitled to the benefit of the filing date of applications preceding the break in the priority chain.” Hollmer v. Harari, 681 F.3d 1351, 1355

(Fed. Cir. 2012).

“For a claim in a later-filed application to be entitled to the filing date of an earlier application under 35 U.S.C. § 120[], the earlier application must comply with the written description requirement of 35 U.S.C. § 112, ¶ 1 [pre-

AIA]. Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158 (Fed. Cir. 1998). “To satisfy the written description requirement the disclosure of the prior application must

‘convey with reasonable clarity to those skilled in the art that, as of the filing date sought, [the inventor] was in possession of the invention.’” PowerOasis, 522 F.3d at 1306 (quoting Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir.

1991)).

Case IPR2015-00349 Petition for Inter Partes Review

This requires a “meaningful disclosure” of the claimed invention in the specification. Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 970 (Fed. Cir.

2002). “While the meaning of terms, phrases, or diagrams in a disclosure is to be .

. . interpreted from the vantage point of one skilled in the art, all the limitations

must appear in the specification.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565,

1572 (Fed. Cir. 1997) (emphasis added). “[T]he purpose of the written description

requirement is to ‘ensure that the scope of the right to exclude, as set forth in the

claims, does not overreach the scope of the inventor’s contribution to the field of

art as described in the patent specification.’” Univ. of Rochester v. G.D. Searle &

Co., 358 F.3d 916, 920 (Fed. Cir. 2004) (quoting Reiffin v. Microsoft Corp., 214

F.3d 1342, 1345 (Fed. Cir. 2000)).

Of particular relevance to this petition, “[t]he written description

requirement prevents applicants from using the amendment process to update their

disclosures (claims or specifications) during their pendency before the patent

office. Otherwise applicants could add new matter to their disclosures and date

them back to their original filing date, thus defeating an accurate accounting of the

priority of invention.” Chiron Corp. v. Genentech, Inc., 363 F.3d 1247, 1255 (Fed.

Cir. 2004). Similarly, applicants may not claim entitlement to a filing date based

on subject matter that would be “obvious over what is expressly

disclosed.” PowerOasis, 522 F.3d at 1306 (internal citations omitted). 21

Case IPR2015-00349 Petition for Inter Partes Review

If an application is denied the benefit of priority, then the inventor’s own foreign published application can be used as prior art to invalidate the United

States patent. See, e.g., Tronzo, 156 F.3d at 1158-60 (finding a priority chain break because the issued claims were not supported by the priority application and allowing the inventor’s own intervening published British application to be used as invalidating prior art); see also Exhibit 1035 at 0008, Final Decision dated April

21, 2014 in IPR2013-00072 (finding that challenged patent was “not entitled to the benefit of the filing date of [the parent application],” and noting that prior issued patents from the same inventor were properly utilized as prior art).

b. Adequate Written Description Requires Express Or Inherent Disclosure And Identification Of The “Blaze Marks” Of Later-Claimed Characteristics.

A “parent application must actually or inherently disclose the elements of the later filed claims.” Research Corp. Techs., Inc. v. Microsoft Corp., 627 F.3d

859, 870 (Fed. Cir. 2010) (citation omitted). The Federal Circuit has articulated the following standard for written description:

[T]o 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 (internal citations omitted).

Case IPR2015-00349 Petition for Inter Partes Review

Inherency requires that the “only reasonable reading” of the priority application disclose all disputed claim elements. See Anascape, Ltd. v. Nintendo of

Am., Inc., 601 F.3d 1333, 1340 (Fed. Cir. 2010) (holding claims as anticipated based upon intervening art after ruling that the “only reasonable reading” of the specification did not disclose the disputed element); Hyatt v. Boone, 146 F.3d

1348, 1354-55 (Fed. Cir. 1998) (affirming BPAI’s “necessary and only reasonable construction” of the specification to determine that there was no written description for the disputed claim element).

Even for characteristics that are expressly disclosed in an application, the applicant is obligated to provide “blaze marks” that direct the skilled artisan to the allegedly present and critical characteristics:

[O]ne cannot disclose a forest in the original application, and then later pick a tree out of the forest and say here is my invention. In order to satisfy the written description requirement, the blaze marks directing the skilled artisan to that tree must be in the originally filed disclosure.

Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1326-27 (Fed. Cir. 2000). It

simply is not permissible to claim a characteristic which was “not discussed even

in passing in the disclosure”:

What the ‘360 patentees have done is to pick a characteristic possessed by two of their formulations, a characteristic that is not

Case IPR2015-00349 Petition for Inter Partes Review

discussed even in passing in the disclosure, and then make it the basis of claims that cover not just those two formulations, but any formulation that has that characteristic. This is exactly the type of overreaching the written description requirement was designed to guard against.

Id. at 1327.

2. The Priority Applications Do Not Reasonably Convey That the Inventor Possessed “Polyphonic Audio Files.”

a. The Priority Applications Lack Actual or Inherent Written Description for “Polyphonic Audio Files.”

The Strawn Declaration details why the priority applications do not actually or inherently disclose “polyphonic audio files.” First, neither that term nor any more generic term such as “polyphony” is found anywhere in the priority applications. Exhibit 1079 ¶ 60. Moreover, the priority applications do not contain any actual discussion of the concept of single or multiple tones or even tones more generally. Id. ¶ 83. One of skill in the art would not have understood that Mr. Shanahan reasonably conveyed any information about aspects of the content of the music such as the number of tones. Id. Thus, there is no actual disclosure under PowerOasis.

The priority applications do not have any inherent disclosure of “polyphonic audio files.” Id. ¶¶ 84-99. “Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of 24

Case IPR2015-00349 Petition for Inter Partes Review circumstances is not sufficient.” Agilent Techs., Inc. v. Affymetrix, Inc., 567 F.3d

1366, 1383 (Fed. Cir. 2009) (quoting In re Oelrich, 666 F.2d 578, 581 (C.C.P.A.

1981)); see also Hitzeman v. Rutter, 243 F.3d 1345, 1355 (Fed. Cir. 2001) (“[A]n inherent property must necessarily be present in the invention . . . and it must be so recognized by persons of ordinary skill in the art.”).

The sole passage of the specification that Mr. Shanahan identified to the

Patent Office as providing support for “polyphonic audio files” confirms the lack of inherent disclosure. Specifically, he pointed to the mere mention of a laundry list of audio file formats such as “MP3, WAV, MPEG, and many MIDI files” as providing support for “polyphonic audio files.” Exhibit 1010 at 0442 (citing

Exhibit 1001 at 3:55-60).

This passage is insufficient because MP3, WAV, MPEG, and MIDI are audio/video formats that contain no information about the content of the audio/ video. Exhibit 1079 ¶¶ 26, 43, 47, 49, 50, 59; Exhibits 1045-48 (MIDI and MPEG file formats). In other words, they can be likened to an envelope containing a letter: the envelope holds the letter but provides no information about what the letter says. Exhibit 1079 ¶ 89. These file formats could thus contain a recording of silence, a monophonic recording such as a single keystroke of a piano, noise, speech, and or any other type of sound known to humanity. Id. ¶¶ 25, 26, 47, 49,

50, 95. 25

Case IPR2015-00349 Petition for Inter Partes Review

Moreover, what they may contain is not relevant, because this is precisely the “probabilit[y] or “possibilit[y]” that the Federal Circuit deems insufficient for inherent disclosure. See Agilent, 567 F.3d at 1383 (“The mere fact that a certain thing may result from a given set of circumstances is not sufficient”) (emphasis added) (internal citation omitted). What matters is that disclosing these formats does not “necessarily disclose” any concept of a “polyphonic audio file” or that the stored sound is polyphonic. Exhibit 1079 ¶¶ 84, 86. Mr. Shanahan’s citation to

“many MIDI files” as purportedly being polyphonic audio files highlights that the application lacks the requisite teaching because the priority applications lack any teaching showing the inventor possessed the knowledge of which MIDI files were, and were not, polyphonic audio files.

b. The Inventor Did Not Provide The Requisite Blaze Marks For Polyphonic Audio Files. Even if “polyphonic” could be considered to be present in some unidentified passage of the priority applications that Mr. Shanahan never sought to rely on in correspondence with the Patent Office (which it cannot), those priority applications lack the requisite “blaze marks” to the concept of polyphonic audio files because they do not indicate that this concept is important (or provides patentability). The priority applications here are nearly identical to those in Purdue Pharma.

First, like Purdue Pharma, the concept of “polyphonic audio file” is “a characteristic that is not discussed even in passing in the disclosure” of the priority 26

Case IPR2015-00349 Petition for Inter Partes Review applications. Second, like Purdue Pharma, the ‘866 patent seeks to “make it the basis of claims that cover not just those” files disclosed in the ‘866 patent, but all

“polyphonic audio files.” Third, like Purdue Pharma, even if the priority applications could be said to contain some examples that might be polyphonic, there is no basis to conclude that those examples were necessarily polyphonic.

There simply were not the requisite “blaze marks” within the written description.

See Purdue Pharma, 230 F.3d at 1326-27.

Moreover, the priority applications do not even exhibit an understanding of the “forest” in which the “tree” of the concept of polyphony exists. The concept of

“polyphony” has long been known to those of skill in the art as one of the elements of music. Exhibit 1079 ¶¶ 21-22. Such elements include pitch; the organization of pitch according to scales, modes, and harmonies; dynamics; rhythm; meter; tempo; duration; harmony; chord progression; register (e.g., high/low); vocal versus instrumental; instrumentation; timbre (e.g., tone color); form (e.g., song, hymn, symphony, waltz, two-step, fugue, canon, …); articulation (e.g., violin bow change

/ no bow change); performance practice; interpretation; performance setting; and style (e.g., jazz, pop, rock, classical, …). Id. (explaining Exhibit 1039).

The inventor’s failure to even mention any of the elements of music—much less provide a “blaze mark” to the concept of “polyphonic audio file”—buttresses the conclusion that the inventor did not have possession of the concept of 27

Case IPR2015-00349 Petition for Inter Partes Review

“polyphonic audio file” and did not demonstrate such possession in the priority applications. Id. ¶¶ 83-88, 92-95. Moreover, the inventor’s citation to file formats such as “MPEG” as alleged support for “polyphony” during prosecution confirms that the inventor did not have possession of the concept of “polyphony” even by

2003-04 , much less at the time of the priority applications. Id. ¶¶ 83-99.

Purdue Pharma resolves this question. “[O]ne cannot disclose a forest in the original application, and then later pick a tree out of the forest and say here is my invention. In order to satisfy the written description requirement, the blaze marks directing the skilled artisan to that tree must be in the originally filed disclosure.” 230 F.3d at 1326-27. The ‘866 applicant cannot pick the tree of

“polyphonic audio file” out of a forest in 2004 and say “here is my invention.”

The priority applications do not even identify the “forest” (the elements of music) much less say that any tree in that forest is important to the invention and even more compellingly, never identify the “polyphonic” tree in that forest with a “blaze mark” denoting its importance to the invention. This is a classic case of impermissible re-writing of an inventor’s purported invention long after the priority date.

In contrast to the priority applications, other contemporaneous patents show how one would convey possession of the concepts of polyphony and polyphonic audio files. For example, the Futamase patent (filed in Japan in July 1999) 28

Case IPR2015-00349 Petition for Inter Partes Review provides such a teaching. See Exhibits 1025-26. Futamase recites “sounding two or more tones at a time” with a ringtone audio file. Exhibit 1025 at 1:32-37.

Futamase extensively discusses elements of music such as timbre, performance,

style, chord, harmony, accompaniment, tempo, and pitch. See id. at Figs. 5, 6, 26-

28, and 5:39-56; 6:5-23; 11:52-61; 12:4-18; 13:30-14:13; 15:35-16:60; 35:31-

39:31. The description of these concepts conveys that Futamase had possession of

the concepts of polyphony and polyphonic audio files. Exhibit 1079 ¶ 77. The

priority applications to the ‘866 do not demonstrate any such possession.

c. Solocron Is Estopped From Asserting Priority Because It Distinguished The Prior Art As Lacking the Same Disclosure That the Priority Applications Lack.

The prosecution history of the ‘866 patent confirms the lack of support for

“polyphonic audio files” in the priority applications. During prosecution, the

Examiner rejected claims based on two references, Isomursu and Lin. In response,

the applicant distinguished his invention based on the recitation of “polyphonic

audio files.” According to the inventor, the prior art lacked “polyphonic audio

files” because “nowhere in either reference, or any reference of record, is the

quality or fidelity of a ringtone mentioned or even recognized as a desirable or

relevant feature.” Exhibit 1052 at 0021.

Ironically, the same criticism the patentee directed at the prior art applies to

‘866 patent and its priority applications: (1) Nowhere in the specification of the 29

Case IPR2015-00349 Petition for Inter Partes Review

‘866 patent and/or its priority applications “is the quality or fidelity of a ringtone mentioned or even recognized as a desirable or relevant feature”; (2) Nowhere in

the specification and/or its priority applications do the terms “polyphonic,” “high

quality” or “realistic recreation [of audio]” appear.

Under Federal Circuit law, Solocron is estopped from claiming priority.

See Bradford Co. v. Conteyor N. Am., Inc., 603 F.3d 1262, 1269-70 (Fed. Cir.

2010). In Bradford, the Federal Circuit ruled that the applicant “is estopped from arguing for an earlier priority date for the [asserted] patent by the prosecution

history of that patent” and affirmed the “decision limiting the priority date of the

[asserted] patent to its own filing date.” Id. The Federal Circuit held that estoppel

applied because the applicant “apparently successful[ly]” overcame an obviousness

rejection by arguing that the prior art did not disclose a particular element when the disputed application did not contain any disclosure beyond that found in the prior

art. Id.

For the ‘866 patent, the applicant claimed that prior art was not polyphonic

because “the quality or fidelity of a ringtone is not mentioned or recognized as a

desirable or relevant feature.” The priority applications a fortiori cannot be considered to disclose polyphonic by the same logic: their failure to discuss the quality or fidelity of a ringtone. Id. at 1269-70. This file history excerpt confirms that Mr. Shanahan did not have possession of “polyphonic audio files.” 30

Case IPR2015-00349 Petition for Inter Partes Review

d. Solocron’s New Litigation Citations Similarly Do Not Show That The Inventor Had Possession Of The Concept Of Polyphonic Audio File In The Priority Applications.

Recognizing that the mere citations of file formats does not show possession of “polyphonic audio files,” Solocron has attempted to identify additional passages that purport to teach the concept—passages that were never cited to the PTO during prosecution. See Exhibit 1038 at 0034 (citing ’692 Patent (Exhibit 1051):

3:30-60; 4:1-28; 9:23-41). As Dr. Strawn explains, these passages do not show that Mr. Shanahan possessed the concept of “polyphonic audio files.” Exhibit

1079 ¶¶ 100-105.

The first passage (3:30-60 in the ‘692 patent) does not disclose “polyphonic

audio file” and merely references different file formats. As discussed above, those

file formats do not teach anything about polyphony, nor are they inherently

polyphonic audio files, for at least the basic reason that the content of files with

those formats can be polyphonic or monophonic. Again, they are merely the

envelope that contains the content. Although this passage mentions “an audio

sample of a popular song, a video clip, or frame, etc.,” those statements do not

disclose “polyphonic audio files.” This passage does not provide any “blaze

marks” that one of skill in the art could understand to have related to the concept of polyphony or polyphonic audio file. Id. ¶¶ 101-103. Moreover, as discussed in

Section VI.A.2.c, the inventor distinguished over prior art which showed popular

Case IPR2015-00349 Petition for Inter Partes Review music as not being “polyphonic audio files.” See id. ¶¶ 102-03.

The second cited passage (4:1-28 in the ‘692 patent) does not disclose anything about the concept of polyphony. This passage generally discusses (a) an ability to process acoustic signals with a transducer and (b) an ability to convert from analog to different digital formats. This passage does not mention or even hint that polyphony (including the concept of the number of sounds within an audio file) was known to—or in the possession of—Mr. Shanahan. Id. ¶ 104.

The third passage (9:23-41 in the ‘692 patent) does not provide any indication that the inventor possessed the concepts of “polyphonic audio file” or

“polyphony.” This passage references editing existing audio files. This description of editing does not disclose anything related to polyphony or polyphonic audio files. Id. ¶ 105. There is not any disclosure in this passage about the number of simultaneous sounds that the content of a file may express. This passage also does not provide any indication that the number of simultaneous sounds, or the number of sounds in a file, is an important aspect of the invention, nor does it disclose that the inventor possessed this concept. Id.

* * *

Because the term “polyphonic audio file” is neither expressly nor inherently supported in the December 1999, March 2000, and/or August 2002 applications,

Solocron is not entitled to claim priority to either of those dates. Instead, claim 10 32

Case IPR2015-00349 Petition for Inter Partes Review correctly has a priority date of the ‘866 patent’s actual filing date in August 2004.

B. Claim 10 Is Anticipated by Holm.

More than six months before Mr. Shanahan filed his earliest non-provisional

application (and four years before Mr. Shanahan submitted any claims about

“polyphonic audio files”), Nokia filed a Finnish patent application for providing

customized ringtones to cellular phones. Exhibit 1013 (the “1999 Finnish

application”). A year later, Nokia filed a substantively identical PCT application

based on the 1999 Finnish application (“Holm”) (Exhibit 1021), and subsequently

entered the United States through a National Phase filing under 35 U.S.C. § 371.

Unlike the ‘866 patent and its ancestors, Holm actually discloses in detail the

elements of claim 10, including explicitly disclosing audio files with polyphony,

Exhibit 1021 at 9:8-19. See also Exhibit 1080 ¶¶ 79-81. Holm teaches a telephone

that can be programmed to use customized audio as a ringing tone. See, e.g.,

Exhibit 1021 at 1:4-8. More particularly, Holm discloses that a telephone having a

“network browser application” can be used to connect to a “database” via an

“internet” link and/or a “cellular radio network” whereby the telephone can

download “sound packets” in varying degrees of “polyphony.” Id. at 12:29-35.

In language peculiarly similar to the later “enhanced speaker” disclosure in

the ‘866 patent, Holm teaches the use of a “more advanced” speaker and

synthesizer so that the audio files being downloaded could be played back “exactly

Case IPR2015-00349 Petition for Inter Partes Review as it was at the composing stage.” Id. at 6:4-6. Holm also discloses the use of a

“processor and its associated circuitry” to execute a “software”-based “file transfer tool” that notified the user of “the completion of the downloading.” Id. at 15:14-

25.

Thus, Nokia invented and disclosed all features recited in claim 10 about five years before the application that became the ‘866 patent. Nokia not only mentioned the word “polyphony” to the PTO in the context of ringtones before Mr.

Shanahan, it also recognized and appreciated the issues polyphonic ringtones present—the meaningful disclosure absent from the ‘866 patent and its priority applications.

Claim charts showing the anticipatory nature of Holm are below. See also

Exhibit 1080 ¶¶ 72-93, 98.

Claim Where Each Limitation Is Found in Holm (Exhibit 1021) Element [10] A Holm is entitled “Method and arrangement for providing customized telephone audio characteristics to cellular terminals.” Holm discloses: that may be “Portable terminals of cellular radio systems have conventionally customized been mobile telephones, but the development trend at the priority date by of this patent application is towards more versatile terminal searching equipment ….” (1:9-12).2 for and selecting an “[T]he mobile telephone is … implicitly taken to be the ultimate audio file receiver of a sound packet…” (18:22-23) from a “The invention concerns generally … furnishing terminal equipment remote of communication systems with selectable audio characteristics.

2 Citations to Holm are in the form of page number: line number. 34

Case IPR2015-00349 Petition for Inter Partes Review computer Especially the invention concerns a method and arrangement for and providing a large degree of selectability to individual users programmi concerning ringing tones… emitted by their terminal equipment.” ng the (1:4-8). selected See also Fig. 5a (showing a wireless phone with a display as terminal audio file equipment 502), Fig. 6 (showing a wireless phone with a display as into the terminal equipment 601 and 611), Fig. 7 (showing a wireless phone as telephone terminal equipment 701) and Fig, 8 (terminal system 807, which is for use as described in the text as also being cellular telephone). an indicia of an “Fig. 4 illustrates an exemplary method for downloading a sound incoming packet from a database according to Fig. 2a or 2b. At step 401 the communica user initiates the procedure by e. g. starting a network browser tion, the application in his terminal and asking for a connection to a certain telephone network address which he knows to lead to the homepage of the comprising sound packet downloading service. At step 402 the terminal performs : the corresponding action, which in the above-mentioned case means contacting the given network address in a way known as such.” (12:29-35). “Fig. 2a illustrates a structure of sound packets stored in a database schematically shown as 200. Said database is most advantageously maintained in a service provider’s computer with fixed connections to a cellular radio network.” (10:4-6) “At step 407 the database composes a selection list consisting of only those stored sound packets which are compatible with the indicated terminal type. At step 408 it sends the composed selection list to the terminal, which displays it to the user at step 409. The user makes his selection at step 410 and the terminal forwards it to the database at step 411. This triggers the actual downloading at step 412.” (13:19- 25); see also Fig. 4. “The architecture of the terminal equipment 701 must enable the communication of received information from the transceiver 702 to the processor 703 …. Additionally the processor 703 must be able to read data … and to transmit it over the transceiver 702 to a cellular radio network.” (16:31-34) [10a] a Holm discloses a “network browser” that works in cooperation with a communica “transceiver” that permits the terminal equipment to connect to a tions link “database” via “internet” link and/or a “cellular radio network” 35

Case IPR2015-00349 Petition for Inter Partes Review capable of whereby the device can download “polyphon[ic]” “sound packets”: connecting “The size of a sound packet 100 in bits, as well as the processing to a capability required to playback the piece of music described therein in database in intended tempo, will depend heavily on the used synthesis the remote technology, the accuracy and quality of the synthesized sounds, the computer diversity of the band or number of different instrument sounds, and that the number of simultaneous voices, i. e. polyphony. … It is possible includes a to compose e. g. … an immensely complex sound packet where a plurality of doubled symphony orchestra with high-quality instrument voices polyphonic performs a Wagner overture backwards in quadrupled tempo.” (9:8- audio files; 19). “The digital representation of the piece of music contains information about e.g. which patch number(s) should be associated with each individual ‘channel’ or voice in a musical score. If a receiving synthesizer uses the same patch map as the one with which the piece was composed, it is able to playback the piece exactly as it was at the composing stage.” (6:2-6). The database comprises a plurality of audio files: “According to the invention a service provider or a similarly acting other body maintains a database that comprises a plurality of sound packets. A sound packet is understood in this context as an entity that comprises a piece of musical score information and a set of parameters that relate to the ‘instruments’ or synthesized sound sources which should be used to play the score. A sound packet is preferably self-contained in the sense that once it has been loaded into terminal equipment with appropriate processing and audio outputting capabilities, it enables the terminal to output a certain passage of audio signal where the synthesized sounds described by the parameters perform the presentation written into the score information. Said database contains also information about the compatibility of the stored sound packets with the capabilities of known terminal types. For downloading into a certain terminal equipment of known type only those sound packets are made available that do not exceed the terminal’s capabilities.” (4:25-5:2) The data stored in the database (see Figs. 1 and 2) comprises data for a plurality of voices that can be played as a “band” of instruments: “Fig. l illustrates the conceptual composition of a sound packet 36

Case IPR2015-00349 Petition for Inter Partes Review

according to an advantageous embodiment of the invention. The sound packet 100 comprises a score information part 101 which may be regarded as a song book … that contains the notes [to] be played and relate synthesis instructions. The score information part may consist of score data subparts 102, 103 each of which comprises the score of a single song. Each score data subpart may further comprise sub-subparts each of which comprises the score of a single voice in that song. Additionally the sound packet comprises a instrument information part 104 which contains the instrument data, i.e. the parameters that a musical synthesizer needs to set up the ‘band’ that should be used to play the score(s) contained in the score information part 101. These parameters are most advantageously organized into instrument data subparts 105, 106 so that each instrument data subpart defines a single instrument that may be used to play one or more of the voices defined by the score information subparts 102, 103.” (7:4- 17) “Fig. 2a illustrates a structure of sound packets stored in a database schematically shown as 200. Said database is most advantageously maintained in a service provider's computer with fixed connections to a cellular radio network.” (10:4-6). A communication link is used to access the database: “Fig. 6 illustrates some communication connections that can be used as channels for downloading sound packets to terminal equipment 601 from one or several databases 602 and 603. If the database 602 is directly connected to a telephone network there may be a direct data call connection between it and the terminal equipment 601. If the database 602 is connected to the Internet 604 or corresponding widespread packet-switched communication network and the terminal equipment 601 is capable of packet radio services, the connection may take the form of a known Internet connection; in this embodiment the file transfer tool to be used between the terminal equipment 601 and the database would be a network browser. There may also be a connection from the Internet 604 through a modem 605 to a desktop computer 606 or a laptop computer 607 which may function as an intermediate stopping point for the sound packets. Once downloaded from the database into a ‘local’ computer 606 or 607 a sound packet may be further transferred to the terminal equipment 601 either directly through a cable connection, an LPRF 37

Case IPR2015-00349 Petition for Inter Partes Review

(Low Power Radio Frequency) link or infrared link, or using an intermediating auxiliary such as the infrared transceiver 608 in Fig. 6” (15:14-29). “The architecture of the terminal equipment 701 must enable the communication of received information from the transceiver 702 to the processor 703 and further to the memory 704. Additionally the processor 703 must be able to read data from the memory 704 and to transmit it over the transceiver 702 to a cellular radio network.” (16:31-34) Fig. 7 shows a “transceiver” which is used to communicate with the wireless cellular radio network. See Fig. 5a (which shows a “File Transfer Tool” as a “means for exchanging sound packet files.”); see Fig. 6 (illustrating links via internet and cellular networks).

Claim Element Where Each Limitation Is Found in Holm (Exhibit 1021) [10b] a display screen Holm has a “display” and a “browser application” that and a browsing allow the user to browse and select a polyphonic audio application program that file. See, e.g., citations in connection with claim [30/39] allows a user of the and [30/39 a] (including “display” in connection with telephone to browse the step 409 and the "network browser application” that is polyphonic audio files used to browse and select “sound packets” for and select at least one “downloading” from the “database” audio files). See polyphonic audio file also Fig. 6 which depicts the terminal display and therefrom; keypad.

Claim Where Each Limitation Is Found in Holm (Exhibit 1021) Element [10c] Holm discloses that a “processor and its associated circuitry” that is processing used in connection with a “software”-based “file transfer tool” that circuitry “indicate[s] to the user” “the completion of the downloading”: configured “The file transfer tool should be applicable for the fast and reliable to transfer of small information parts like terminal types, as well as for supervise opening and closing connections and for transferring the files that receipt of a form the sound packets themselves. File transferring between terminal selected equipment and fixed computer stations is known as such, so it is well polyphonic within the capabilities of a person skilled in the art to construct a 38

Case IPR2015-00349 Petition for Inter Partes Review audio file software tool that may act as the file transfer tool 501 in Fig. 5a.” from the (14:11-17) communica “At step 408 it sends the composed selection list to the terminal, tions link; which displays it to the user at step 409. The user makes his selection at step 410 and the terminal forwards it to the database at step 411. This triggers the actual downloading at step 412. The downloaded sound packet is stored into the memory of the terminal at step 413. … The completion of the downloading is indicated to the user at step 414.” (13:19-28). See also Fig. 4, in relevant part showing files “downloaded” from a database to the “terminal” with an “indicate completion” message provided by the terminal to the “user” after the transfer. “The terminal equipment 701 also needs to comprise a processor 703 with its associated circuitry so that it is able to convert the digital information contained within a sound packet into an audio frequency signal that can be lead to an acoustic transducer. The required processing capability is not exceptionally high if the previously explained file formats are used which have lower degree of polyphony than e. g. the minimum polyphony of the GM-1 or GM-2 specification. The same applies to the memory 704: as long as the sound packet approach is used to guarantee that only that information need to be stored that will actually be used for reproducing the desired acoustic functions….” (16:14-22). [10d] a Holm discloses a processor that works in conjunction with a network programma browser and a transceiver that permits the terminal equipment (e.g., ble telephone) to download a selected polyphonic audio file via an memory internet link and/or a cellular radio network link and store it in the circuit for programmable memory: allowing “Manufacturers have conventionally provided their mobile terminals the user to with a selection of alternative ringing tones by storing a number of optionally different buzzer input sequences into the terminal's memory. A user store the can select one of these preprogrammed tones by performing a simple selected programming step. Practical experience has shown that consumers are polyphonic eager to personalize their mobile terminals according to their own audio file taste, which has led to a phenomenal success of services that sell for use as downloadable ringing tones. The known method of downloading a an indicia ringing tone from a network requires the user to send an SMS

Case IPR2015-00349 Petition for Inter Partes Review of an message (Short Messaging Services) to a certain ringing tone server incoming coupled to the fixed parts of the cellular network, said message communica indicating the user's willingness to download a new ringing tone and tion; and preferably also identifying a particular melody which the user is interested in.” (1:23-33). “It is an object of the present invention to provide a method and an arrangement for offering a wide variety of selectable audio characteristics to the users of terminal equipment with reasonable requirements concerning memory space, processing capability and transmission resources.” (3:4-7). “Fig. 4 illustrates an exemplary method for downloading a sound packet from a database according to Fig. 2a or 2b. At step 401 the user initiates the procedure by e. g. starting a network browser application in his terminal and asking for a connection to a certain network address which he knows to lead to the homepage of the sound packet downloading service. At step 402 the terminal performs the corresponding action, which in the above-mentioned case means contacting the given network address in a way known as such.” (12:29-35). “At step 407 the database composes a selection list consisting of only those stored sound packets which are compatible with the indicated terminal type. At step 408 it sends the composed selection list to the terminal, which displays it to the user at step 409. The user makes his selection at step 410 and the terminal forwards it to the database at step 411. This triggers the actual downloading at step 412. The downloaded sound packet is stored into the memory of the terminal at step 413.” (13:19-25). See Fig. 4, in relevant part:

“The method according to the first embodiment of the invention is characterized in that it comprises the steps of … as a response to a

Case IPR2015-00349 Petition for Inter Partes Review

selection command, downloading said score information part and said instrument information part to terminal equipment through a communication network.” (3:19-31)

“The invention … is characterized in that the network device comprises … means for responding to a selection command by downloading a score information part and a[n] instrument information part to terminal equipment through a communication network.” (4:11-24)

See Figure 5a (which shows a “File Transfer Tool” which is a “means for exchanging sound packet files.”); Fig. 6 and discussion of same, especially how Fig. 6 illustrates some of the communication connections that can be used for downloading sound packets to terminal equipment 601 from one or several databases 602 and 603. [10e] an Holm teaches using a “more advanced” speaker and synthesizer “to enhanced playback the piece exactly as it was at the composing stage” using the performanc “MPEG” and “MIDI” formats: e speaker “The processing capacity required to decode and playback a sound capable of packet is mostly determined by the degree of polyphony associated providing a with the song to be played, i.e. the number of simultaneously playing substantiall voices.” (9:16-19) y full range of audio “Finally the terminal equipment 701 needs to comprise an acoustic sounds transducer 705 that is preferably more advanced than the monophonic from the square-wave driven buzzers of conventional mobile telephones. selected Constructing small-sized lightweight loudspeakers is not difficult as polyphonic such, so it is merely a conventional engineering task to select a audio file suitable transducer type and integrate it to the structures of the when the terminal equipment.” (16:25-30) selected “Within the field of musical synthesizers there are known the polyphonic concepts of patches and patch maps. Each stored synthesized audio file is instrument sound is designated with an associated patch number, and played. the table that correlates patch numbers with instruments is known as the patch map. One of the major standards controlling musical synthesizing and exchange of information related thereto between electronic devices is MIDI (Musical Instrument Digital Interface). It is possible to compose a piece of synthesized music … [and] to playback the piece exactly as it was at the composing stage. Within 41

Case IPR2015-00349 Petition for Inter Partes Review

MIDI the most commonly used standard for instrument mapping is known as the GM or General MIDI. Known extensions to it are known as XG, GS and GM 2.0.” (5:24-6:8) See also citations above in connection with claim limitation [30/39 a]. See also Fig. 7 and discussion of “memory” including: “The terminal equipment 701 also needs to comprise a processor 703 with its associated circuitry so that it is able to convert the digital information contained within a sound packet into an audio frequency signal that can be lead to an acoustic transducer. The required processing capability is not exceptionally high if the previously explained file formats are used which have lower degree of polyphony than e. g. the minimum polyphony of the GM-1 or GM-2 specification. The same applies to the memory 704: as long as the sound packet approach is used to guarantee that only that information need to be stored that will actually be used for reproducing the desired acoustic functions….” (16:14-22).

C. Claim 10 Is Anticipated by the 3510 UG

Two years before Mr. Shanahan used the term “polyphonic audio file” in his

own personal patent application, Nokia introduced its 3510 mobile phone. Exhibit

1033; Exhibit 1073 ¶¶ 3-4. The 3510 User Guide, which bears a 2002 copyright

date and which discloses in detail the handset’s polyphonic ringtone capability,

was released contemporaneously with the 3510 itself. See Exhibit 1032; Exhibit

1087 ¶¶ 36-37 and Exhibit P; Exhibit 1073 ¶ 6.

The 3510 could be programmed to play one of many pre-stored polyphonic

ringing tones or a polyphonic ringing tone that is downloaded from the internet

using the WAP browser. The 3510 was designed to store and play polyphonic

ringtones, and in particular, “several sound components [are] played at the same

Case IPR2015-00349 Petition for Inter Partes Review time through a speaker” to create a “sound like real melodies.” Exhibit 1032 at

0011. The User Guide teaches “40 instruments that can be used for polyphonic

sounds” and that “[up to] four instruments can be played simultaneously.” Id.

The User Guide for Nokia 3510 anticipates claim 10 as shown by this chart.

See also Exhibit 1080 ¶¶ 104-123, 128.

Claim Where Each Limitation Is Found in 3510 UG (Exhibit 1032) Element [10] A The 3510 UG teaches how to customize a telephone by searching, telephone that selecting, and programming the phone with an audio file to serve may be as a ringing tone. customized by “This Quick Guide explains the basic functions of your Nokia searching for 3510 mobile phone.” Exhibit 1032 at 0003. and selecting an audio file “Polyphonic sound consists of several sound components played from a remote at the same time through a speaker. The polyphonic sounds make computer and ringing tones sound like real melodies compared to the beeps in programming traditional ringing tones. The polyphonic sounds are used in the selected ringing tones, message alert tones and in gaming for background audio file into music and sound effects. Your 3510 phone has sound components the telephone from over 40 instruments that can be used for polyphonic sounds. for use as an A maximum of four instruments can be played simultaneously. indicia of an The format supported is the scalable polyphonic MIDI (SP- incoming MIDI).” Id.at 0011. communicatio “You can receive polyphonic ringing tones via multimedia n, the service, see Receiving multimedia messages on page 27 and telephone Tones (Menu 4). You can also download them via WAP via Tone comprising: services menu. See Tones (Menu 4) on page 31.” Id. “You can store three Multimedia messages in the Multimedia inbox. Graphic parts can be saved in the Pictures folder and sound parts in the ringing tone list. See Viewing multimedia messages on page 28.” Id. at 0039. “The following formats are supported: • Text: Unicode • Graphic: GIF87, GIF89a, BMP, PNG, OTA-BMP, JPEG and WBMP •

Case IPR2015-00349 Petition for Inter Partes Review

Sound: Polyphonic sound (MIDI)” Id. (emphasis added). [10a] a The 3510 UG teaches that the 3510 includes a WAP browser that communicatio uses GPRS wireless technology to connect to a website in order to ns link capable download one or more polyphonic ringtones. of connecting “GPRS is a technology that allows mobile phones to be used for to a database sending and receiving data over the mobile network. GPRS is a in the remote data bearer that enables wireless access to data networks such as computer that the Internet. The applications which use GPRS are WAP, MMS includes a and SMS messages.” Id. at 0012. plurality of polyphonic “If you receive a traditional ringing tone as an OTA message, you audio files; can save it in the ringing tone list. You can also download polyphonic ringing tones from a predefined WAP site using the Tone services submenu, or via MMS. The number of ringing tones you can save in the ringing tone list depends on the size of an individual ringing tone. If there is no free space for ringing tones, you can replace a previously stored ringing tone with the received one. The ringing tone list contains both traditional and polyphonic ringing tones.” Id. at 0043. “Basic steps for accessing and using WAP services “1. Save the service settings that are needed to access the WAP service that you want to use. See Setting up the phone for a WAP service on page 44 and Appearance settings of the WAP browser on page 49. “2. Make a connection to the given WAP service. See Making a connection to a WAP service on page 47. “3. Start browsing the pages of the WAP service. See Browsing the pages of a WAP service on page 47.” Id. at 0056. “After you have made a connection to the WAP service, you can start browsing its WAP pages. The function of the phone keys may vary in different WAP services. Follow the text guides on the phone display. For more information, contact your WAP service provider.” Id. at 0059. [10b] a display The 3510 UG teaches that the 3510 has a display screen and a screen and a browsing application for browsing websites and downloading

Case IPR2015-00349 Petition for Inter Partes Review browsing audio files for use as polyphonic ringtones. application “Basic steps for accessing and using WAP services program that allows a user “1. Save the service settings that are needed to access the of the WAP service that you want to use. See Setting up the telephone to phone for a WAP service on page 44 and Appearance browse the settings of the WAP browser on page 49. polyphonic “2. Make a connection to the given WAP service. See audio files and Making a connection to a WAP service on page 47. select at least “3. Start browsing the pages of the WAP service. See one Browsing the pages of a WAP service on page 47.” polyphonic audio file Id. at 0056. See also 3510 UG at 23; 3510 UG at 1 (showing the therefrom; details of the phone including the display screen and keyboard used to browse and select files). “The size of the multimedia message can be a maximum of 30 KB. If the size of the message exceeds 30 KB, you will not be able to receive the message. Depending on your network operator or service provider, you may receive an SMS, which contains an Internet address where you can view the multimedia message. If the multimedia message contains images larger than the display, the phone scales them down to fit the display area.” Id. at 0040. [10c] The 3510 UG discloses that the 3510 includes circuitry that works processing with the display to visually notify a user when a ringing tone has circuitry been received: configured to “Keep the phone dry. Precipitation, humidity and all types of supervise liquids or moisture can contain minerals that will corrode receipt of a electronic circuits. … Do not store the phone in cold areas. When selected it warms up (to its normal temperature), moisture can form inside, polyphonic which may damage electronic circuit boards” Id. at 0070. audio file from the “When you have received a service message, 1 service message communicatio received will be displayed. Press View to access the Service ns link; inbox.” Id. at 0063. See also id. at 0035 showing the “indicator” that is shown on the display when a message is received. [10d] a The 3510 UG teaches that the 3510 includes memory in which programmable polyphonic audio files can be saved to a list of ringtones, and that memory the 3510 can be programed to play the ringtones.

Case IPR2015-00349 Petition for Inter Partes Review circuit for “If you receive a traditional ringing tone as an OTA message, you allowing the can save it in the ringing tone list. You can also download user to polyphonic ringing tones from a predefined WAP site using the optionally Tone services submenu, or via MMS. The number of ringing store the tones you can save in the ringing tone list depends on the size of selected an individual ringing tone. If there is no free space for ringing polyphonic tones, you can replace a previously stored ringing tone with the audio file for received one. The ringing tone list contains both traditional and use as an polyphonic ringing tones.” Id. at 0043. indicia of an “Select Memory and the phone will ask for the security code incoming whenever you want to select the phone’s internal memory or to communicatio copy from one memory to another. See Selecting the phone book n; and settings on page 15 and Copying phone books on page 18.” Id. at 0049. “You can read, write and send text and picture messages or save your messages. All the messages in your phone’s message memory are organized in folders.” Id. at 0033. “You can also receive multimedia messages with text, ringing tones and graphics.” Id. “You can store three Multimedia messages in the Multimedia inbox. Graphic parts can be saved in the Pictures folder and sound parts in the ringing tone list. See Viewing multimedia messages on page 28.” Id. at 0039. “Keep all miniature SIM cards out of the reach of small children. • “The SIM card and its contacts can easily be damaged by scratches or bending, so be careful when handling, inserting or removing the card. • “Before installing the SIM card, always make sure that the phone is switched off and you can then remove the battery. “Insert the SIM card into the phone. Make sure that the SIM card is positioned correctly and that the golden contact area on the card is facing downwards.” See Id. at 0015. “Ringing tone per name “You can assign a ringing tone to each phonebook memory entry. You can, for example, assign the same ringing tone

Case IPR2015-00349 Petition for Inter Partes Review

to all your friends or colleagues. 1. Press Names or Menu and Phone book, and scroll to the entry (name) to which you want to assign a ringing tone. 2. Press Details and then Options. Select Ringing tone and then choose the ringing tone you want to assign to the entry. Note that Default means you will use the same general ringing tone used in the active profile.” Id. at 0033. [10e] an The 3510 UG teaches that the 3510 includes a speaker that can enhanced reproduce “sound components from over 40 instruments” to performance “make ringing tones sound like real melodies.” The UG also speaker teaches that a separate loudspeaker can be attached to the 3510 to capable of produce the polyphonic ringtones in a hands-free mode: providing a “Polyphonic sound consists of several sound components played substantially at the same time through a speaker. The polyphonic sounds make full range of ringing tones sound like real melodies compared to the beeps in audio sounds traditional ringing tones. The polyphonic sounds are used in from the ringing tones, message alert tones and in gaming for background selected music and sound effects. Your 3510 phone has sound components polyphonic from over 40 instruments that can be used for polyphonic sounds. audio file A maximum of four instruments can be played simultaneously. when the The format supported is the scalable polyphonic MIDI (SP- selected MIDI).” Id. at 0011. polyphonic audio file is played.

One of skill in the art would appreciate and understand that the 3510 mobile phone described in the 3510 UG includes a processor and circuitry that works with the display to notify the user when a ringtone has been received. Exhibit 1080 ¶¶

112-114.

If the “enhanced speaker” is construed to require some aspect of high quality sound to be disclosed to invalidate claim 10, additional details on the polyphonic 47

Case IPR2015-00349 Petition for Inter Partes Review speaker referenced in the 3510 UG can be found in the Nokia press release announcing the 3510 phone (Exhibit 1033). As explained in the release, “[t]he polyphonic tones dramatically improves [sic] the sound quality, be it melodious sounds for ring tones, alerts or game sounds. … Polyphonic background music and

sound effects add a new dimension to the mobile gaming.” Exhibit 1033 at 0001-

2. “Polyphonic MIDI ringtones offer a new, high-quality sound experience for the

users of the Nokia 3510. MIDI sounds and traditional ring tones can also be used

as personal ring tones and SMS alert tones. The Nokia 3510 has 15 preloaded

MIDI ring tones and 4 MIDI alert tones, in addition to traditional ring tones.

Additional polyphonic ring tones can be downloaded from Club Nokia or received

over MMS.” Id.; see also Exhibit 1080 ¶¶ 120-123.

D. Claim 10 is Rendered Obvious by the Shanahan PCT Application in view of Futamase, Baron, or Nuova

On December 5, 2000, Mr. Shanahan filed a PCT application that ultimately published as WO/0141403 on June 7, 2001 (Exhibit 1030). Because it published more than a year before the August 11, 2004 filing date of the ‘866 patent, the

Shanahan PCT application is properly considered prior art under 35 U.S.C. §

102(b).

The Shanahan PCT application has the same specification as the March 2000 application, and thus there can be no reasonable debate that it discloses all

Case IPR2015-00349 Petition for Inter Partes Review elements of claim 10 except “polyphonic audio files” in identical fashion to the

‘866 patent.3 Thus, when the ‘866 patent is given its correct priority date of

August 2004, claim 10 is invalid because the only element missing from the

Shanahan PCT application, “polyphonic audio file,” was taught by various prior art references in the ringtone field, including, inter alia, Futamase (Exhibit 1026),

Baron (Exhibit 1027), and/or Nuova (Exhibit 1028).

The following chart identifies potential support from the Shanahan PCT

Application for claim elements other than “polyphonic audio files.” See also

Exhibit 1080 ¶¶ 142-145, 148-153.

Claim Element Exemplary Citations to the Shanahan PCT Application (Exhibit 1030)4 [10] A telephone that may be 4:29-32; 5:17-20. customized by searching for and selecting an audio file from a remote computer and programming the selected audio file into the telephone for use as an indicia of an incoming communication, the telephone comprising: [10a] a communications link capable of 3:10-16; 5:12-6:3;14:3-11; 19:22-29; connecting to a database in the remote 20:14-28; claims 16-18.

3 Petitioners do not concede that any claim element is supported by adequate written description or is sufficiently enabled to teach one of skill in the art how to make or use the claimed invention. For example, as noted above, Petitioners contend that the instant disclosures fail to describe or enable the use of polyphonic ringtones as well as the “enhanced speaker” limitation. 4 Citations are to the Shanahan PCT Application by (page #:line #) except where noted. 49

Case IPR2015-00349 Petition for Inter Partes Review computer that includes a plurality of polyphonic audio files; [10b] a display screen and a browsing 12:13-18; 13:4-13; 14:8-11; claim 25. application program that allows a user of the telephone to browse the polyphonic audio files and select at least one polyphonic audio file therefrom; [10c] processing circuitry configured to 3:10-13; 7:13-15; 12:18-22; claim 23. supervise receipt of a selected polyphonic audio file from the communications link; [10d] a programmable memory circuit 10:28-30; 20:9-13; 25:6-10; claims 11- for allowing the user to optionally store 12. the selected polyphonic audio file for use as an indicia of an incoming communication; and [10e] an enhanced performance speaker 29:9-13; 20:34-21:3. capable of providing a substantially full range of audio sounds from the selected polyphonic audio file when the selected polyphonic audio file is played.

The use of polyphonic audio files for ringtones and the motivations for using

them are disclosed in detail by Futamase (Exhibit 1026), Baron (Exhibit 1027), and

Nuova (Exhibit 1028). Each of the three references teaches different aspects of the

nature, synthesis and playback of polyphonic ringtones. For example, Futamase

describes MIDI-format files that concurrently generate “quality tones … within the

maximum allowable range”; Baron describes a polyphonic synthesizer (and

identifies a specific synthesizer than can be used) to reproduces polyphonic sound

using MIDI files having 16 parallel channels; and Nuova teaches the use of a

Case IPR2015-00349 Petition for Inter Partes Review polyphonic speaker that can be used to reproduce polyphonic sound. Because these references teach different aspects related to the content, synthesis and playback of polyphonic audio, the references are not cumulative. In particular, these references disclose use and playback of polyphonic ringtones on an enhanced speaker as follows. See also Exhibit 1080 ¶¶ 131-136, 147, 154-155.

Claim Where Each Limitation Is Found in Futamase (Exhibit 1026) Element “polyphonic “Recently developed portable telephone terminals have a capability audio files” of sounding a melodious ringing tone to notify call termination on “substantiall them. This ringing melody is a sequence of monotones based on y full range buzzer sound. … However, melodious tone reproducing devices of audio such as mentioned as for use in conventional portable telephone sounds from terminals can neither reproduce music that sounds two or more tones the selected at a time…. Namely, the conventional melody tone reproducing polyphonic devices cannot reproduce various kinds of music for user audio file enjoyment” Futamase ¶ 0002-03. when the “According to the first aspect of the invention, … two or more tones selected can be sounded at a time by use of an FM tone generator for polyphonic example, thereby providing rich and various ringing melodies…. audio file is Consequently, quality tones can be reproduced within the maximum played” allowable range of the data processing and storage capacities of the portable terminal apparatus without weighing upon the memory of the apparatus.” Futamase ¶¶ 0015, 0017. See also claim 1 (“1. A sound control apparatus provided in a portable terminal, operative of receiving a telephone call from a telephone set, for sounding a music tone to provide a ringing melody in association with operation of the portable terminal, comprising: a storage section that stores music information … in a standard MIDI file format; … a tone generating section … to generate the music tone … thereby providing the ringing melody; wherein the tone generating section is … operated to concurrently generate a plurality of music tones having the different timbres.”)

Case IPR2015-00349 Petition for Inter Partes Review

Claim Where Each Limitation Is Found in Baron (Exhibit 1027) Element “polyphonic “In another method of implementation, not shown, the present audio files” invention is applied to a telephone receiver, for example to “substantially control a musical ringing tone customized by the subscriber.” full range of 21:45-48. audio sounds “These parameters suffice for producing music with several from the instruments: MIDI uses 16 parallel polyphonic channels. For selected example, with the G800 system of the ROLAND brand, 64 notes polyphonic played simultaneously can be obtained.” 13:64-67. audio file Claim 36 (“A telephone receiver comprising a music generation when the system as claimed in claim 22.); Claim 37 (“The telephone selected receiver as claimed in claim 36, wherein the music generation polyphonic system is designed to control a musical ringing tone and in that audio file is said telephone receiver comprises means for customizing said played” ringing tone by the subscriber.”) “This movable music generation system comprises, linked together via a data and control bus 700: two electroacoustic transducers 707 which broadcast the music (in the case of the application to a Walkman, these transducers are small loudspeakers integrated into earphones and in the application to a car radio, these transducers are loudspeakers built into the passenger compartment of a vehicle).” 19:32-49. See also Fig. 6 and text discussing same, especially, “polyphonic music synthesizer 409; and two-channel amplifier 411, linked to the output of the polyphonic music synthesizer 409, and two loudspeakers 410 linked to the output of the amplifier 411”

Claim Where Each Limitation Is Found in Nuova (Exhibit 1028) Element “polyphonic “In this embodiment it provides an aperture 99 in which the audio files” polyphonic speaker 27 is located to provide for polyphonic “substantially sound. This additional speaker 27 has not been optimised for use full range of in close proximity to the ear …. This allows [this speaker 27] to audio sounds be more effective as a handsfree speaker and enables a greater from the range of ring tones to be utilised.” 18:9-14 selected “The third element of the rear casing 98 covers the hands free 52

Case IPR2015-00349 Petition for Inter Partes Review polyphonic speaker 27… It will be provided with a suitable aperture 102 to audio file when channel sound from the polyphonic speaker 27 that may be used the selected in hands free mode and for providing an audible ring tone.” polyphonic 19:19-23. audio file is See also Fig. 3 which shows a “polyphonic speaker 27” played” connected to “audio part 29” within the device.

One of skill in the art would have been readily motivated to combine the

Shanahan PCT Application with any of Futamase, Baron, and/or Nuova because

each of the references is generally directed to the same art: namely, downloading

and/or playing ringtones on a wireless handset. Exhibit 1080 ¶¶ 137-140, 147,

154. Moreover, each of Baron, Futamase, and Nuova identifies or recognizes the

shortcomings associated with then-current ringtones on phones, including for

example that “conventional portable telephone terminals can neither reproduce

music that sounds two or more tones at a time nor allow various settings such as

timbre and effect” (Exhibit 1026 ¶ 0003), “the musical variety resulting from the

manipulation of existing musical sequences is necessarily very limited” (Exhibit

1027 at 1:20-27), and a “polyphonic speaker…enables a greater range of ring tones

to be [utilized]” (Exhibit 1028 at 18:10-14). See Exhibit 1080 ¶¶ 137-140, 147,

154.

Baron, Futamase, and Nuova also teach related but distinct ways to

overcome these shortcomings, generally speaking, by utilizing more diverse and

varied ringing tones, including specifically, polyphonic ringing tones, for example,

Case IPR2015-00349 Petition for Inter Partes Review so that the user can enjoy “rich and various ringing melodies” (Exhibit 1026 ¶

0015), enjoy a “very rich variety” of musical ringtones (Exhibit 1027 at 1:56-62), and enjoy a “greater range of ringtones” (Exhibit 1028 at 18:14). One of skill in the art would be motivated to incorporate the higher polyphonic capabilities of

Futamase, Baron or Nuova in order to overcome these identified shortcomings.

Exhibit 1080 ¶¶ 137-140, 147, 154. The introduction of the polyphonic synthesizer and speaker of Baron, Futamase, or Nuova into the system described in the Shanahan PCT application would yield all of the claimed features. Id. ¶ 155.

E. Claim 10 Is Obvious Over Holm in View of Futamase, Baron or Nuova.

Although Holm is anticipatory (see Section VI.B, supra), Petitioners

contend, in the alternative, that claim 10 is obvious over Holm in combination with

Futamase, Baron, or Nuova. As discussed above (see Section VI.D, supra), each

of Futamase, Baron and Nuova teaches additional aspects of polyphonic ringtones

and provides a motivation for combining them with Holm. This position is non-

cumulative for at least the reason that the references teach additional details

regarding polyphonic audio files, and further, given the imprecise language of the

“enhanced speaker” and the lack of detail in the specification for how to construct

such a speaker, it is uncertain what constitutes an “enhanced speaker.”

While Holm speaks in terms of “polyphony” and “simultaneous voices,”

Case IPR2015-00349 Petition for Inter Partes Review

Baron, Futamase, and Nuova teach different aspects of polyphonic ringtones, discussed in Section VI.D, supra, that are not disclosed in Holm.

One of skill in the art would have been readily motivated to combine Holm

with any of Futamase, Baron, and/or Nuova because all of the references are

generally directed to the same art: namely, downloading and/or playing ringtones

on a wireless handset. The introduction of the polyphonic synthesizer and speaker

of Baron, Futamase or Nuova into the system of Holm would yield all of the

features of claim 10 and thus render claim 10 obvious. Exhibit 1080 ¶¶ 157-160.

F. Claim 10 Is Obvious Over Holm in View of Perez.

As discussed above, Holm is anticipatory (see Section VI.B, supra), even if

the Board adopts Solocron’s litigation-proposed construction for the “enhanced

performance speaker” limitation. See Exhibit 1038 at 0057 (“the full range of

sounds within human hearing, or a range of sounds not appreciably smaller than

that range”). Petitioners contend in the alternative, however, that, if the Board

adopts Solocron’s construction, claim 10 is obvious over Holm in combination

with Perez (Exhibit 1081). The teachings of Perez relevant to the “enhanced

performance speaker” limitation are set forth in the table below. See also Exhibit

1080 ¶¶ 94-95.

Claim Where Each Limitation Is Found in Perez (Exhibit 1081) Element “enhanced “The present invention discloses a piezoelectric transducer that is

Case IPR2015-00349 Petition for Inter Partes Review 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. y full range 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, those of skill in the art when the ‘866 patent was filed

had already recognized the desirability of incorporating an “enhanced performance

speaker” as recited in claim 10 into cellular telephones. Exhibit 1080 ¶ 94. It

follows that a person of ordinary skill in the art would have been motivated to

combine the Holm cellular phone 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 6:8-10. Thus, when

combined, Holm and Perez disclose each and every element of claim 10, rendering

it obvious. Exhibit 1080 ¶ 97.

Case IPR2015-00349 Petition for Inter Partes Review

G. Claim 10 Is Obvious Over 3510 UG in View of Perez.

As discussed above, 3510 UG is anticipatory (see Section VI.C, supra), even if the Board adopts Solocron’s litigation-proposed construction for the “enhanced performance speaker” limitation. See Exhibit 1038 at 0057 (“the full range of sounds within human hearing, or a range of sounds not appreciably smaller than that range”). Petitioners contend in the alternative, however, that, if the Board adopts Solocron’s construction, claim 10 is obvious over 3510 UG in combination with Perez.

The teachings of Perez relevant to the “enhanced performance speaker” limitation are set forth in Section VI.F, supra. See also Exhibit 1080 ¶¶ 94-95,

124-125. In addition, in light of Perez’s express disclosure that “cellular phones are an ideal application” for its transducers, for example to “eliminate the noise associated with” analog speakers, the ordinarily skilled artisan would have been motivated to utilize the Perez transducer in the 3510 cellular handset. Id. ¶ 126.

Claim 10 is therefore obvious over the combination of 3510 UG and Perez. Id. ¶¶

127-128.

Case IPR2015-00349 Petition for Inter Partes Review

VII. CONCLUSION

For all of the foregoing reasons, inter partes review of claim 10 of the ‘866

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 IPR2015-00349 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 5th day of December, 2014, a complete and entire copy of this Petition for Inter Partes Review, together with all supporting exhibits, was provided to the

Patent Owner by mailing a copy of the same via FedEx® to the following attorneys of record for the Patent 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