Case IPR2015-00349
`Corrected Petition for Inter Partes Review
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`CELLCO PARTNERSHIP D/B/A VERIZON WIRELESS
`AT&T MOBILITY LLC
`Petitioners
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`v.
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`SOLOCRON MEDIA, LLC
`Patent Owner
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`Case IPR2015-00349
`Patent No. 7,319,866
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`CORRECTED 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
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`Case IPR2015-00349
`Corrected Petition for Inter Partes Review
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`TABLE OF CONTENTS
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`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 – Previously Submitted .............................. 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) ........ 11 
`
`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 ............................................. 19 
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`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 
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`G.  Claim 10 Is Obvious Over 3510 UG in View of Perez. .............................. 57 
`
`VII. CONCLUSION ................................................................................................. 58 
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`Case IPR2015-00349
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
`Agilent Techs., Inc. v. Affymetrix, Inc.,
`567 F.3d 1366 (Fed. Cir. 2009) .......................................................................... 24
`
`
`
`Anascape, Ltd. v. Nintendo of Am., Inc.,
`601 F.3d 1333 (Fed. Cir. 2010) .................................................................... 22-23
`
`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) ...................................................................... 20-21
`
`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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`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
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`PETITIONERS’ EXHIBIT LIST
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`Exhibit No.
`
`Description
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`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
`
`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)
`International Publication No. WO 98/25397, entitled
`“Telecommunication Device and a Method for Providing
`Ringing Information”, published June 11, 1998 (“Philips” or
`“Rizet”)
`
`Exhibit 1010
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`Exhibit 1014
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`Exhibit 1016
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`Exhibit 1017
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`Exhibit 1015 U.S. Patent No. 6,018,654, entitled “Method and Apparatus for
`Downloading Tones to Mobile Terminals,” filed October 29,
`1996, and issued January 25, 2000, to Valentine et al.
`(“Ericsson” or “Valentine”)
`“Ring My Bell,” The New Yorker, March 7, 2005. (downloaded
`from http://www.newyorker.com/magazine/2005/03/07/ring-my-
`bell)
`“The Sweet Sound of Success,” Time Magazine Europe, 2004
`(downloaded from
`http://content.time.com/time/magazine/article/0,9171,901040816
`-678568,00.html)
`“Pioneer of the Mobile Ringtone Business,” Mobile
`Entertainment Forum MEF Special Recognition Award, 2004
`Exhibit 1019 Declaration of Internet Archive and Copies of Various Websites
`
`“Yamaha Sound Generator LSI ‘YMU757,’” Yamaha News
`Release
`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”)
`
`Exhibit 1018
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`Exhibit 1020
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`Exhibit 1021
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`Exhibit 1028
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`Exhibit 1030
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`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
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`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
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`Final Decision dated April 21, 2014 in IPR2013-00072
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`Final Decision dated April 22, 2014 in IPR2014-00116
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`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)
`http://www.slideshare.net/JesseTeWeehi/elements-of-music-start
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`Exhibit 1040 Random House Webster’s Unabridged Dictionary
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`Exhibit 1041 Encyclopedia Britannica
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`Exhibit 1042 YM3812 Chip Manual
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`Exhibit 1043 New Grove Dictionary of Music and Musicians
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`Exhibit 1044 Oxford Music Online
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`Exhibit 1035
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`Exhibit 1036
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`Exhibit 1039
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`Exhibit 1046
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`Exhibit 1048
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`Exhibit 1045 MIDI Specification
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`Standard MIDI File Specification
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`Exhibit 1047 General MIDI Specification
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`ISO/IEC standard 11172-3 (“MP3” specification)
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`Exhibit 1049 WMA File Format Specification
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`Exhibit 1050 US 6,351,225 to Moreno
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`Exhibit 1051 U.S. Patent No. 6,496,692 (“the ‘692 patent”)
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`‘866 Prosecution History, Reply to Office Action dated 5/4/2007
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`Exhibit 1053 Yamaha YMU757 Press Release, October 12, 1999
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`Exhibit 1054 Yamaha YMU757 Technical Manual, February 2000
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`Exhibit 1055 Analysis of WAV files provided in 1999 with Nokia 9110
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`Exhibit 1056 Exhibit Not Used
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`Exhibit 1057 Exhibit Not Used
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`Exhibit 1058 Exhibit Not Used
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`Exhibit 1059 Exhibit Not Used
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`Exhibit 1060 Certified English translations of JukeBoksi websites
`(corresponding to Exhibit 1019 at 0088-0098).
`Exhibit 1061 Exhibit Not Used
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`Exhibit 1062 Exhibit Not Used
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`Exhibit 1063 Exhibit Not Used
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`Exhibit 1052
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`Exhibit 1064 Exhibit Not Used
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`Exhibit 1065 Exhibit Not Used
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`Exhibit 1066 Exhibit Not Used
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`Exhibit 1067 Exhibit Not Used
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`Exhibit 1068 Exhibit Not Used
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`Exhibit 1069 Exhibit Not Used
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`Exhibit 1070 Exhibit Not Used
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`Exhibit 1071 Exhibit Not Used
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`Exhibit 1072 Exhibit Not Used
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`Exhibit 1073 Declaration of Erin Flaucher re Nokia 3510 with Exhibits
`
`Exhibit 1074 Exhibit Not Used
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`Exhibit 1075 Exhibit Not Used
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`Exhibit 1076 Exhibit Not Used
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`Exhibit 1077 Exhibit Not Used
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`Exhibit 1078 Exhibit Not Used
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`Exhibit 1079 Declaration of John M. Strawn, Ph.D., and CV
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`Exhibit 1080 Declaration of Richard T. Mihran, Ph.D., and CV
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`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
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`Exhibit 1083 Exhibit Not Used
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`Exhibit 1084 Exhibit Not Used
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`Exhibit 1085 Exhibit Not Used
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`Exhibit 1086 Exhibit Not Used
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`Exhibit 1087 Declaration of Internet Archive re Nokia Websites
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`Exhibit 1088 Exhibit Not Used
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`Exhibit 1089 Exhibit Not Used
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`Exhibit Not Used
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`Exhibit Not Used
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`Exhibit Not Used
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`Exhibit Not Used
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`Exhibit 1090
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`Exhibit 1091
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`Exhibit 1092
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`Exhibit 1093
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`Exhibit 1094 Exhibit Not Used
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`Exhibit Not Used
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`Exhibit 1095
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`Exhibit 1096 Exhibit Not Used
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`Exhibit 1097 Exhibit Not Used
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`Exhibit 1098 Exhibit Not Used
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`Exhibit 1099 Exhibit Not Used
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`Exhibit 1100 Exhibit Not Used
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`Exhibit 1101 Exhibit Not Used
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`Exhibit 1102 Exhibit Not Used
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`Exhibit 1103 Exhibit Not Used
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`Case IPR2015-00349
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`Cellco Partnership d/b/a Verizon Wireless and AT&T Mobility LLC
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`(“Petitioners”) request inter partes review of claim 10 of U.S. Patent No.
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`7,319,866 (“the ‘866 Patent”) (Exhibit 1001).
`
`I.
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`INTRODUCTION AND BACKGROUND
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`“The basic function of a patent specification is to disclose an invention.”
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`Carnegie Mellon Univ. v. Hoffman-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir.
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`2008). Yet, the key element of claim 10 of the ‘866 patent finds no support in the
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`specifications of the priority applications, but instead was inserted into the claim
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`years after the asserted priority date and years after the industry described,
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`patented, and adopted this same technology. In light of this break in the priority
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`chain, claim 10 of the ‘866 patent cannot claim priority to any earlier filed
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`application. Under its correct priority date, claim 10 is invalid under 35 U.S.C. §§
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`102 & 103 over the references discussed herein.
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`In particular, claim 10 recites a term that is neither expressly nor inherently
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`disclosed in the ‘866 priority chain: “polyphonic audio file.” This term appeared
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`for the first time in the initial claims of an application in the ‘866 application in
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`2004—nearly five years after the earliest asserted priority date and two years after
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`wireless carriers such as Petitioner released “polyphonic ringtone” products.
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`Under Federal Circuit law, the complete lack of support for the term “polyphonic
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`audio file” in the priority applications, as detailed in the attached declaration of
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`musicology expert Dr. John Strawn (Exhibit 1079), precludes the patentee from
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`relying on any earlier priority claim. The Board can assess this priority issue in an
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`inter partes review, and has done so before. E.g., Exhibit 1036.
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`The ‘866 patent is part of a family of nearly twenty patents owned by
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`Solocron Media, LLC (“Solocron”), a small company based in Tyler, Texas.
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`Solocron acquired this family from Michael Shanahan, a telecommunications and
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`electronics patent prosecutor formerly of Fish & Neave and McDermott Will &
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`Emery. E.g., Exhibit 1011. Mr. Shanahan’s clients over the past fifteen years
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`include Nokia, Inc. (“Nokia”) and other electronics companies. Id.
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`Solocron alleges that the ‘866 patent relates to a telephone personalized with
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`ringtones. Personalizing a telephone with ringtones was well-known long before
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`the ‘866 patent. Indeed, Nokia entities own at least 101 U.S. patents relating to
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`ringtones, including 17 patents and applications with an earlier filing date than the
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`‘866 patent. Exhibit 1012. Nokia has even more international patents and
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`applications, including WO 01/16931 (“Holm”) (Exhibit 1021), which discloses
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`the claimed concepts using nearly identical terminology. Holm is one example of
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`a compelling prior art reference that discloses the elements of claim 10 in explicit
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`detail and that was not presented to the Patent Office during the prosecution of the
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`‘866 patent or any of the applications to which it claims priority.
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`Significantly, claim 10 had only one substantive Office Action, and the
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`Patent Office never made any written priority determination1 or provided any
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`explanation for issuance—which occurred after a telephonic interview of which
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`there is no written record detailing the allowance reasons. The Patent Office’s
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`limited review of the ‘866 patent is unsurprising: over the past ten years, Mr.
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`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
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`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
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`‘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.
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`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`
`
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`Solocron sued the following entities (and Petitioners) for infringement of the
`
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`1 As the Federal Circuit recognized, “[t]he PTO’s own procedures indicate that
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`examiners do not make priority determinations except where necessary.”
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`PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305 (Fed. Cir. 2008).
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`‘866 Patent in the Eastern District of Texas on December 6, 2013 (Case No. 2:13-
`
`cv-01059)
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`(“the Litigation”): Sprint Corporation, Sprint Communications
`
`Company L.P., Sprint Solutions Inc., and T-Mobile USA, Inc. See Exhibit 1002.
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`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.
`
`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: kanderson@wileyrein.com,
`
`fchapman@wileyrein.com, sfelder@wileyrein.com, shejny@mckoolsmith.com,
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`tstevenson@mckoolsmith.com, and nmathews@mckoolsmith.com.
`
`E. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`
`
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`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
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`from requesting inter partes review based on the grounds herein. The original
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`Petition was filed within one year of the service of the Complaint above.
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`F.
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`Fees Under 37 C.F.R. § 42.103 – Previously Submitted
`
`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
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`to personalizing telephones with ringtones. Id. at 1:15-19. The disclosures of the
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`‘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
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`illustrates that the original disclosures were vague and amorphous and bear little
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`resemblance to the ringtone matter the patentee sought to capture five years later:
`
`In contrast, claim 10 of the ‘866
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`patent purports to cover a wireless
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`telephone
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`that
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`includes
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`a
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`communications link for connecting to a
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`database storing polyphonic audio files,
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`a display screen, an enhanced speaker,
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`
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`processing circuitry, and programmable memory. Id. at 14:13-35. It reads:
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`
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`A telephone that may be customized by searching for and
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`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;
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`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.
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`Id. Several claimed features are barely described or, in some cases, not even
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`mentioned anywhere in the ‘866 specification. Most notably, neither “polyphonic
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`audio files” nor any recitation of “polyphony” or anything related to that concept
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`can be found in the ‘866 specification. See generally Exhibit 1001.
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`During prosecution of a related application, the inventor conceded that the
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`idea of customized ringtones was known before his earliest filing date. Exhibit
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`1004 at 0095. This concession is required by the expansive body of pre-1999
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`ringtone related prior art. Well before Mr. Shanahan’s earliest priority date,
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`entities such as Nokia, Ericsson, Inc. (“Ericsson”), and Philips Electronics N.V.
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`(“Philips”) pioneered and patented inventions relating to customizing mobile
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`phones with ringtones. Exhibits 1012, 1014-15.
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`Despite Mr. Shanahan’s assertion that he invented the personalization of
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`ringtones, that technology is also old. Over three years before Mr. Shanahan’s
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`earliest non-provisional application, a Finnish inventor, Vesa-Matti Paananen,
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`designed a product called Harmonium, which allowed users to personalize phones
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`with ringtones delivered over the air. Exhibit 1016. Mr. Paananen has received
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`recognition from the industry, including a special award as “Pioneer of the Mobile
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`Ringtone Business.” Exhibits 1016-18.
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`Beyond Mr. Paananen, various companies described and patented this
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`personalization concept long before Mr. Shanahan. Exhibits 1014, 1015. For
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`example, more than a year before Mr. Shanahan’s earliest priority date, Philips
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`described a “telecommunication device and a remote database containing a variety
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`of alternative forms of user selectable and downloadable ringing information.”
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`Exhibit 1014, Abstract.
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` Similarly, various websites with selectable and
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`downloadable ringtones were available around the globe. Exhibits 1019, 1060.
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`Even if Mr. Shanahan could properly claim priority to December 1999
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`(which he cannot), he still would not be the first person to invent polyphonic
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`ringtones and/or enhanced speakers for playing polyphonic ringtones. Such
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`ringtones were simply an evolution in the cell phone industry. The concept of
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`“polyphonic ringtones” appeared at least as early as September 1999 in European
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`and Japanese cell phone markets. See, e.g., Exhibit 1020 (Yamaha sound generator
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`LSI “YMU757”). The Yamaha YMU757 reference above described a chip which
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`permitted the playback of “high quality polyphony” on mobile phones, including
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`“user-selected sound and melodies.” Id. Moreover, in its July 1999 Japanese
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`patent application, Yamaha described a “tone generator capable of sounding two or
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`more tones at a time … in a portable terminal apparatus … [that] reproduces music
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`which is various in kind and rich in musicality as ringing melodies[.]” Exhibit
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`1037 ¶ 0017. Yamaha even recognized that “the present invention uses audio
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`information … [such as] WAV, AIFF, SOUND VQ, or MP3….” Id. ¶ 0108. “The
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`present invention allows common formatting to capture the audio information
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`having these formats ….” Id.
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`B.
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`The Asserted Priority Chain of the ‘866 Patent
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`The ‘866 patent claims priority to the following U.S. Patent Application
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`Nos.: (1) 10/223,200, filed on August 16, 2002 (“the August 2002 application”);
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`(2) 09/518,712, filed on March 3, 2000 (“the March 2000 application”); and (3)
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`60/169,158, filed December 6, 1999 (“the December 1999 application”). None of
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`these applications disclose—much less mention—polyphonic audio files.
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`The entirety of the December 1999 application consists of a scant four
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`double-spaced pages of written description, one doubled-spaced page of claims,
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`and four block diagrams. Exhibit 1003. The 1999 provisional does not use the
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`term “polyphonic,” does not discuss polyphony conceptually, does not discuss the
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`fidelity of ringtones, does not reference an “enhanced speaker,” and does not
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`describe how to reproduce any polyphonic ringtone. See generally id.
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`The March 2000 application also lacks any reference to “polyphonic,”
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`“polyphony,” or anything related to those concepts, and there is no discussion of
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`the quality of ringtones or the importance of fidelity to the invention. Exhibit
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`1008. None of the claims in the March 2000 application as filed made any
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`reference to “polyphonic,” and Mr. Shanahan never subsequently amended these
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`claims to recite anything relating to “polyphonic” at any point during the pendency
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`of the March 2000 application. See generally id.
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`Much like the March 2000 application, the August 2002 application—which
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`shares a substantially identical disclosure to the March 2000 application—does not
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`contain any reference to “polyphonic,” “polyphony,” or anything related to those
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`concepts, nor is there any discussion of the quality of ringtones, or the importance
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`of fidelity to the invention. Exhibit 1006. None of the claims as filed in the
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`priority applications made any reference to “polyphonic.” Id.
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`Unlike its parents, the ‘866 application included claims reciting “polyphonic
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`audio files.” Exhibit 1005 at 0028. Because of the complete lack of underlying
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`support for the “polyphonic audio file” term in every application in the priority
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`chain, claim 10 is not entitled to claim priority to any of these earlier applications.
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`C.
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`Prosecution History of the ‘866 Patent
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`On August 11, 2004, the patentee filed the application that matured into the
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`‘866 patent. Despite the substantial body of prior art disclosing ringtones, the
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`Patent Office issued only a single substantive Office Action, and never made any
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`written priority determination. The Examiner’s sole procedural rejection was for
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`obviousness-type double patenting. Exhibit 1007 at 0135-36.
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`In response, the applicant cancelled certain claims, and responded by
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`asserting, without explanation, that “claims 1-40 of this case do not conflict with
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`any of [the] claims [remaining in] the '862 application.” Id. at 0115. The examiner
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`withdrew the obviousness type double patenting rejecting without any reasoning.
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`The Examiner rejected all pending claims as “unpatentable over Lin et al
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`(6,366,791) in view of Isomursu et al. (7,088,990).” Id. at 0092-95. In relevant
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`part, the Examiner stated that Isomursu and Lin disclosed polyphonic audio
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`files. Id. In response, the applicant distinguished his invention as follows:
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`Additional novel features of claims 1, 10 and 31 include the use of
`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
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`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 . . . .
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`Id. at 0061, 0063-64 (emphasis added).
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` The response detailed alleged
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`shortcomings of the prior art. However, the alleged shortcomings of the prior art
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`are similarly missing in the ‘866 specification and therefore cannot provide a
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`legitimate basis on which to overcome the prior art. As with the obvious type
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`double patenting response, the argument simply missed the mark because it was
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`not germane to the underlying legal basis of the rejection.
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`Without explanation, the Examiner issued a Notice of Allowance on July 23,
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`2007, cancelling claims 11-40 and allowing claims 1-10. The file history provides
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`no indication of why claims