PTAB

IPR2015-00387

AT&T Mobility LLC v. Solocron Media LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Video File Format Conversion
  • Brief Description: The ’651 patent describes a method and system for converting the format of a video file received from a first wireless device to a format compatible with a second wireless device. The conversion occurs at an intermediate server, which determines the format requirements of the receiving device before transmitting the converted file. While asserted against modern Multimedia Messaging Service (MMS) systems, the patent specification is directed to downloadable, user-defined ringtones.

3. Grounds for Unpatentability

Ground 1: Claims 1, 12, 16, 23-25, 31-33, and 40 are anticipated by Merritt under 35 U.S.C. §102.

  • Prior Art Relied Upon: Merritt (Patent 6,421,429).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Merritt, which was not considered during prosecution, disclosed every element of the challenged claims more than eighteen months before the ’651 patent’s earliest priority date. Merritt described a network-based "image communications session manager" that functions as an intermediary server. This server received an image or video file from a calling party, determined the format capabilities of the called party's device by querying a database, converted the file to a compatible format if a mismatch was detected, and then communicated the converted file to the called party. Merritt explicitly taught that the devices could be wireless (e.g., PDAs) and that the conversion could alter file size, resolution, or compression format, directly mapping to limitations in the independent and dependent claims. Merritt also disclosed notifying the recipient device that a converted file is available, satisfying the "link" limitation.

Ground 2: Claims 1, 12, 17, 31, and 40 are anticipated by Gaffney under 35 U.S.C. §102.

  • Prior Art Relied Upon: Gaffney (WO 98/19438).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Gaffney, also not considered during prosecution, disclosed a server-based system for video file format conversion that anticipated the challenged claims. Gaffney taught a system with a "translation unit" that receives a multimedia message (including "video sequences") from a first terminal, translates it into a format compatible with the recipient's terminal, and delivers the converted message. The system was described as working with various originating and receiving terminals, including wireless devices like a "digital or analogue mobile telephone." Gaffney also disclosed that its system established the capabilities of the recipient's terminal and sent a notification signal to the user about the incoming message, anticipating the "link" limitation.

Ground 3: Claims 1, 10, 12, 16-17, 21, 23-25, and 31-33, 40 are obvious over Merritt in view of 9110 UM or Morita under 35 U.S.C. §103.

  • Prior Art Relied Upon: Merritt (Patent 6,421,429), 9110 UM (Nokia 9110 Communicator User Manual), and Morita (Japanese Application Publication No. H4-304935).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground was presented as an alternative, arguing that even if Merritt did not explicitly disclose all features, its combination with other prior art rendered the claims obvious. Specifically, this combination addressed the "wireless" aspect and the dependent claims requiring a "digital camera" (claims 10 and 21). Merritt taught a conversion system for devices including PDAs. The 9110 UM and Morita both disclosed wireless communication devices (a PDA/phone combination and a wireless phone, respectively) that were well-known before 1999 and included integrated or detachable digital cameras.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Merritt's network-based file conversion service with a camera-enabled wireless device like the Nokia 9110 or the device in Morita for the predictable benefit of user convenience. This would allow users to capture and send video files seamlessly from a single mobile device, leveraging Merritt’s back-end conversion capability to ensure compatibility for the recipient, thereby enhancing the utility of both technologies.
    • Expectation of Success: The combination would have been straightforward and yielded predictable results. Merritt's system was network-agnostic, and integrating a known type of wireless, camera-enabled endpoint would present no significant technical challenges, as PDAs and similar devices in 1999 already had the capability to incorporate digital cameras and transmit data.

  • Additional Grounds: Petitioner asserted additional challenges, including that claims 1, 12, and 25 are anticipated by Shaffer (Patent 6,092,114) and that various claim sets are obvious over Merritt in view of the general knowledge of a POSITA, or over Merritt in view of Gaffney or Shaffer. These arguments relied on similar theories that it was well-known and obvious to apply server-based format conversion to files transmitted between wireless devices.

4. Key Claim Construction Positions

  • Petitioner argued that several key claim terms lacked written support in the original specification, which was focused on audio ringtones, not video files. For the purpose of the inter partes review (IPR), Petitioner proposed the following constructions:
    • "Digital camera of the first wireless communications device" (claims 10, 21): Should be given its plain and ordinary meaning, or construed as "a digital camera that is part of the first wireless communications device."
    • "Link that identifies the converted file" (claims 31, 40): While arguing the term lacks support for a downloadable link, Petitioner accepted the Patent Owner's proposed construction from district court litigation—"an element that identifies the converted file"—for the purposes of the IPR proceeding.
    • "different file size" / "different resolution" (claims 23-24, 32-33): Petitioner proposed these terms be given their plain and ordinary meaning, noting they also lack explicit support in the specification.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 10, 12, 16, 17, 21, 23-25, 31-33, and 40 of the ’651 patent as unpatentable.