Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 44
`Entered: January 13, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`EASTMAN KODAK CO., AGFA CORP., ESKO SOFTWARE BVBA, and
`HEIDELBERG, USA,
`Petitioner,
`
`v.
`
`CTP INNOVATIONS, LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-00788
`Patent 6,738,155 B1
`_______________
`
`
`
`Before KEVIN F. TURNER,1 BENJAMIN D. M. WOOD, and
`BRIAN J. MCNAMARA, Administrative Patent Judges.
`
`WOOD, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION ON REHEARING
`35 U.S.C. § 318(a) 37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`1 Judge Turner replaces Judge Blankenship on the panel.
`
`
`
`
`Tel: 571-272-7822
`
`Paper 44
`Entered: January 13, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`EASTMAN KODAK CO., AGFA CORP., ESKO SOFTWARE BVBA, and
`HEIDELBERG, USA,
`Petitioner,
`
`v.
`
`CTP INNOVATIONS, LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-00788
`Patent 6,738,155 B1
`_______________
`
`
`
`Before KEVIN F. TURNER,1 BENJAMIN D. M. WOOD, and
`BRIAN J. MCNAMARA, Administrative Patent Judges.
`
`WOOD, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION ON REHEARING
`35 U.S.C. § 318(a) 37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`1 Judge Turner replaces Judge Blankenship on the panel.
`
`
`
`
`
`IPR2014-00788
`Patent 6,738,155 B1
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`I.
`
`INTRODUCTION
`
`Background
`A.
`Eastman Kodak Co., Agfa Corp., Esko Software BVBA, and
`Heidelberg, USA (collectively, “Petitioner”) filed a request for rehearing
`(Paper 36, “Reh’g Req.”) of our Final Written Decision (Paper 35, “Final
`Dec.”). We requested (Paper 37) a response from CTP Innovations, LLC
`(“Patent Owner”), which was subsequently submitted (Paper 38, “Reh’g
`Req. Resp.”). After considering the Petitioner’s Rehearing Request and
`Patent Owner’s Response, we granted rehearing of the Final Decision with
`respect to the following grounds of unpatentability:
`Reference[s]
`Basis
`Claims Challenged
`Dorfman2 and Apogee3
`§ 103(a)
`10–13
`Dorfman, Apogee, and
`§ 103(a)
`14 and 15
`Andersson4
`Dorfman, Apogee, and OPI
`White Paper5
`
`
`16, 17, 19, and 206
`
`§ 103(a)
`
`
`2 Dorfman, WO 98/08176 (iss. Feb. 26, 1998) (Ex. 1006).
`3 Agfa-Gevaert N.V., AGFA APOGEE: THE PDF-BASED PRODUCTION SYSTEM
`(1998) (Ex. 1007).
`4 Mattias Andersson et al., PDF PRINTING AND PUBLISHING, THE NEXT
`REVOLUTION AFTER GUTENBERG (Micro Publishing Press 1997)
`(“Andersson”) (Ex. 1009).
`5 Apple Computer, Inc., OPI WHITE PAPER (1995) (Ex. 1008).
`6 Both Patent Owner and Petitioner discuss claim 18 in their supplemental
`briefs. Paper 40, 8–9; Paper 41, 4–5. However, we did not institute inter
`partes review of claim 18. See Paper 9, 24–25 (“Dec. on Institution”).
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`Paper 39, 4, 14. We permitted supplemental briefing, which the parties duly
`provided. Papers 40, 41.
`Upon consideration of the original papers7 and evidence, as well as
`the parties’ supplemental briefing, and for the reasons set forth below, we
`determine that claims 10–17, 19, and 20 are unpatentable.
`
`II. ANALYSIS
`
`The ’155 Patent
`A.
`The ’155 patent describes a publishing and printing system that is
`distributed among three “facilities”: an end user facility, where content is
`created; a central service facility, where files are stored; and a printing
`company facility (or printer), where documents are printed. Independent
`claims 10 and 16 are at issue in this case. Claim 10 is drawn to a method
`that requires: (1) storing files; (2) providing the files to a remote user for
`designing a page layout; (3) generating a PDF from the designed page
`layout; (4) generating a “plate-ready file” from the PDF; and (5) providing
`the plate-ready file to a remote printer. Claim 10 is reproduced below:
`10. A method of providing printing and publishing services
`to a remote client in real time using a communication network,
`the method comprising:
`storing files on a computer server, the files containing
`information relating to images, text, art, and data;
`providing said files to a remote client for the designing of a
`page layout;
`generating a portable document format (PDF) file from the
`designed page layout;
`generating a plate-ready file from said PDF file; and
`providing said plate-ready file to a remote printer.
`
`7 Corrected Petition (Paper 4, “Pet.”); Patent Owner Response (Paper 19,
`“PO Resp.”); Petitioner’s Reply (Paper 24, “Pet. Reply”).
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`Claim 16 is similar and is reproduced below:
`16. A method of providing printing and publishing services
`to a remote client performing any one of page layout designing
`and plate press printing where said printing and publishing
`services are provided
`in real
`time using a wide area
`communication network, the method comprising:
`storing high resolution files on a computer server;
`generating low resolution files corresponding to said high
`resolution files;
`providing said low resolution files to a remote client for the
`designing of a page layout;
`generating a portable document format (PDF) file from the
`page layout designed by said remote client;
`providing said PDF file to said remote client; and
`providing a plate-ready file to a remote printer.
`
`
`Claim Construction
`B.
`In our Final Decision, we construed “plate-ready file” to mean “a file
`that represents a page layout that has gone through prepress processing,
`including RIPing, and is ready to image to a plate using either a platesetter
`or imagesetter.” Final Dec. 10. We construed “remote printer” to mean “an
`offsite printing company facility accessible (by, e.g., an end user facility or
`central services facility) via a private or public communication network.”
`Id. at 12. Because RIPing is the final step in creating a plate-ready file, we
`construed “providing said plate-ready file to a remote printer” to require
`generation of the plate-ready file, including RIPing, at a facility other than
`the printing company facility. See id. at 26 (“Simply put, a printer cannot be
`‘remote’ with respect to itself. It follows that providing a plate-ready file to
`a ‘remote printer’ cannot be accomplished by the remote printer that receives
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`the plate-ready file.”). Neither party asks us to reconsider these
`constructions, nor are we aware of any reason to do so.
`
`Claims 10–13—Dorfman and Apogee
`C.
`Petitioner contends that claims 10–13 are unpatentable under
`35 U.S.C. § 103(a) as obvious over Dorfman and Apogee. Pet. 39–48.
`Claims 11–13 depend from independent claim 10.
`Dorfman
`1.
`Dorfman describes a “technique for easily creating and proofing
`customized printed material before printing on a production printing
`system.” Ex. 1006 (abstract). A user can access a template in PDF format
`from the system’s website, modify the template by adding low-resolution
`copies of selected images and other variable data, and thereby create a
`dynamic PDF file. Id. at 4:3–8, 8:1–4.8 The PDF file may be viewed or
`printed to a local low-resolution printer for final proofing. Id. at 8:4–11.
`The user can make any necessary changes or corrections to the PDF file
`from the system website and send the file “for printing using conventional
`printing technology where the low resolution images would be replaced by
`the high resolution images by an OPI . . . process before printing.” Id. at
`4:18–21; see id. at 8:23–26.
`
`
`8 We conform to Petitioner’s usage of Dorfman’s original page numbers
`rather that Petitioner’s supplemental page numbers.
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`Dorfman’s Figure 1, reproduced below, depicts an embodiment of this
`system:
`
`
`
`
`Figure 1 depicts Dorfman’s system comprising front end 2, memory 4,
`PDF builder 6, and production printing system 10. Id. at 5:25–6:7. Front
`end 2 may be the office of a graphic artist employed by an advertising
`agency, and typically includes a PC with internet connectivity and browser
`software. Id. at 5:29–6:10. Memory 4, PDF builder 6, and printing system
`10 are remotely located from front end 2, e.g., at the facilities of a
`commercial printing service. Id. at 6:4–7. Memory 4 may contain a
`reference library, low resolution and high resolution images, and other data.
`Id. at 5:27–29. Commercial printer 10 maintains a website that allows front
`end users access to templates and images stored in memory 4.
`Id. at 6:10–13.
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`Apogee9
`2.
`Apogee describes the Agfa Apogee, a PDF-based print production
`system. Ex. 1007, 1. Content can be created in any format and output to
`Apogee in either PostScript or PDF; whichever format is received, Apogee
`normalizes incoming files to PDF “to guarantee complete predictability and
`compatibility.” Id. at 3–4. The PDF files are stored as individual PDF pages
`and become “Digital Masters” to create all production versions of the
`document and to provide a version that can be proofed and edited remotely.
`Id. at 4, 6.
`The Apogee system is composed of three components: (1) Apogee
`“Pilot,” a PDF production manager; (2) one or more Apogee PDF RIPs; and
`(3) the Apogee “PrintDrive,” an engine output manager. Id. at 2. As the
`“operational center in the production process,” Apogee Pilot “normalizes the
`incoming files into PDF, collects the pages, imposes, does OPI image
`exchange and sends this imposed ‘digital flat’ to an Apogee PDF RIP.” Id.
`at 6. The Apogee PDF RIP “takes the device and format independent PDF
`digital master, and renders (rasterizes) it exactly for the selected output
`device,” e.g., an imagesetter of platesetter. Id. The resulting rasterized file
`is a “Print Image File” (PIF) that “contains all the dots that will appear on
`the film or plate.” Id.
`The Apogee PDF RIP sends the PIF to Apogee PrintDrive. Id. at 6–7.
`“Apogee PrintDrive manages the [PIF] output by one or more RIPs, and
`controls output flow to a variety of output devices including Agfa
`
`
`9 In our Final Decision, we determined that Apogee is a prior-art reference
`under 35 U.S.C. § 102. Final Dec. 14–21. That determination is not under
`reconsideration.
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`imagesetters, proofers, and platesetters.” Id. at 7. According to Apogee,
`“Apogee PrintDrive can be fed by multiple PDF RIPs over a TCP/IP
`network.” Id. Doing so allows a user to “physically separate the rendering
`from the actual plate production, so [the] PDF RIP can be in the desktop
`department and the PrintDrive can sit next to the output device, even in
`another town.” Id. This arrangement “ensures that [the] platesetter is
`running at full capacity.” Id.
`Analysis
`3.
`a.
`Independent Claim 10
`Petitioner has shown by a preponderance of the evidence that the
`combination of Dorfman and Apogee discloses all of the limitations of
`independent claim 10. Specifically, a preponderance of the evidence
`supports Petitioner’s contention that Dorfman teaches the steps of:
`(1) “storing files on a computer server, the files containing information
`relating to images, text, art, and data” (e.g., Ex. 1006, 5:27–29, Fig. 1);
`(2) “providing said files to a remote client for the designing of a page
`layout” (e.g., id. at 7:15–8:5, Fig. 1A)); and (3) “generating a [PDF] from
`the designed page layout” (e.g., id. at 7:28–8:5, Fig. 3). Petitioner has also
`established that Apogee teaches “generating a plate-ready file from said PDF
`file.” Pet. 46–47 (citing Ex. 1007, 6–7).
`For the step of “providing said plate-ready file to a remote printer,”
`Petitioner relies on the following teaching from Dorfman:
`[W]here the commercial printer uses conventional printing
`technology, the dynamic PDF file generated for proofing is sent
`to the printing system, and low resolution images used in creating
`the dynamic PDF file are replaced by high resolution images by,
`for example, an open pre-press interface (OPI) before printing.
`
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`Id. at 46–47 (quoting Ex. 1006, 8:21–26). In addition, as discussed in the
`Decision granting Petitioner’s Request for Rehearing (Paper 39, 12–13),
`Petitioner also relies on the following excerpt from Apogee to teach this
`“providing” limitation:
`Agfa [sic, Apogee] discloses that the plate-ready file can be sent
`to a remote printer via a communication network:
`
`Ex. 1007 at pp. 6–7: For “direct-to” production, Agfa developed
`an output manager that is almost a system by itself: the Apogee
`PrintDrive.
`
`Apogee PrintDrive manages the Print Image Files (PIF) output
`by one or more RIPs, and controls output flow to a variety of
`output devices including Agfa imagesetters, proofers, and
`platesetters. . . .
`
`For volume applications, Apogee PrintDrive can be fed by
`multiple PDF RIPs over a TCP/IP network. This unique feature
`allows you to physically separate the rendering from the actual
`plate production, so your PDF RIP can be in the desktop
`department and the PrintDrive can sit next to the output device,
`even in another town.
`
`Pet. 47–48 (quoting Ex. 1007, 6–7).
`We find that the combination of Dorfman and Apogee teaches the step
`of “providing a plate-ready file to a remote printer.” As noted above, the
`Apogee PrintDrive “may be fed by multiple RIPs over a TCP/IP network.”
`Ex. 1007, 7. At the time of the invention, a person of ordinary skill in the art
`would have understood “TCP/IP” to refer to the Internet’s networking
`protocol. NEWTON’S TELECOM DICTIONARY 816 (15th ed. 1999) (Ex. 3003).
`Thus, the Internet is a “TCP/IP network.” The capability to feed the Apogee
`PrintDrive by multiple RIPs connected to it over the Internet allows the
`printer to “physically separate the rendering [i.e., RIPing] from the actual
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`plate production,” so the “PDF RIP can be in the desktop department and the
`PrintDrive can sit next to the output device [e.g., platesetter], even in another
`town.” Ex. 1007, 7. The Apogee PDF RIP creates the PIF, which is a plate-
`ready file because it “contains all the dots that will appear on the film or
`plate.” Id. at 6. When combined with Dorfman, the PDF file that is RIPed
`to create the PIF would be the user-created dynamic PDF file (after OPI
`image exchange, if required). Therefore, the Apogee PDF RIP creates a
`plate-ready file from Dorfman’s dynamic PDF file and “fe[e]d[s]” it to the
`Apogee PrintDrive—which may be in another town, i.e., “remote” with
`respect to the RIP—which in turn sends it to a platesetter or imagesetter for
`offset printing. Id. at 7. Thus, the Apogee PDF RIP “provid[es] said plate-
`ready file to a remote printer.”
`We also agree with Petitioner that a person of ordinary skill in the art
`would have had a reason to combine Dorfman and Apogee. In the combined
`system, Dorfman’s production printing system 10 would use Apogee’s PDF-
`based print production system to produce the printed materials using offset
`printing. Ex. 1021 ¶ 121; see Ex. 1006, 8:23–26. Dorfman teaches that it
`can be used with conventional printing systems, and there is no dispute that
`offset printing is a conventional printing system. Further, large print jobs
`are done at less cost using offset printing rather than digital printing, Ex.
`2014 ¶ 46, and Dorfman teaches that customized printed materials may be
`“ordered in large quantities.” Ex. 1006, 2:13–14. Therefore, a person of
`ordinary skill in the art using Dorfman’s system for a large print job would
`have been motivated to use Apogee’s system to take advantage of the cost
`savings for such jobs offered by offset printing.
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`Further, we agree with Petitioner’s declarant that using Apogee with
`Dorfman’s system would not require either system to be modified. Ex. 1021
`¶ 121. For example, Dorfman’s system produces PDF files and sends them
`for printing using conventional printing technology (e.g., offset printing)
`(Ex. 1006, 4:18–21), and Apogee’s system accepts PDF files for offset
`printing (Ex. 1006, 3, 6). Dorfman contemplates that the printer would
`perform OPI image exchange before printing (Ex. 1006, 4:18–21), and
`Apogee’s system is capable of performing OPI image exchange (Ex. 1007,
`3). In sum, the combination of Dorfman and Apogee amounts to the
`“combination of familiar elements according to known methods [that] does
`no more than yield predictable results,” and therefore is “likely to be
`obvious.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
`Accordingly, because the combination of Dorfman and Apogee
`teaches all of the limitations of claim 10, and a person of ordinary skill in the
`art at the time of the invention would have had reason to combine Dorfman
`and Apogee, we determine that claim 10 is unpatentable under 35 U.S.C.
`§ 103 as obvious over Dorfman and Apogee.
`b.
`Dependent Claims 11–13
`We find that Petitioner has shown by a preponderance of the evidence
`that (1) Dorfman teaches the additional limitation of claim 11 (Ex. 1006,
`7:28–8:5); (2) Apogee teaches the additional limitation of claim 12 (Ex.
`1007, 6–7)); and (3) Dorfman teaches the additional limitation of claim 13
`(Ex. 1006, 5:27–29, 6:20–27, 7:12–20; Ex. 1021 ¶ 133)). Accordingly, for
`the reasons stated above, we determine that claims 11–13 are unpatentable
`under 35 U.S.C. § 103 as obvious over Dorfman and Apogee.
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`Patent Owner’s Arguments Are Not Persuasive
`4.
`Patent Owner disputes that the proposed combination renders
`unpatentable claims 10–13. First, Patent Owner argues that Dorfman is a
`“response on demand” digital printing system, which is “one where a digital-
`based file is printed directly to a variety of media without using printing
`plates.” PO Resp. 34 (citing Ex. 2014 ¶ 38). Patent Owner reasons that
`“[b]ecause Dorfman is a ‘response on demand’ digital printing system using
`variable data, a POSITA would understand that the system of Dorfman does
`not and would not involve the generation of printing plates or plate-ready
`files.” Id. at 38 (citing Ex. 2014 ¶ 46–47). Patent Owner acknowledges that
`“printing plates are inexpensive when producing many identical copies of a
`document,” but contends that “they would be extremely expensive if one
`were to attempt to produce multiple unique documents, or smaller runs of
`documents requiring frequent changes or variable data.” Id. at 38–39 (citing
`Ex. 2014 ¶ 46). Thus, argues Patent Owner, a POSITA would not use a
`digital printing system as disclosed in Dorfman to produce printing plates or
`plate-ready files. Id. at 39.
`We are not persuaded that Dorfman is limited to response-on-demand
`systems or a system for which offset printing is not feasible. As an initial
`matter, it is unclear whether Dorfman actually describes its invention as a
`“response on demand” system, as Patent Owner contends. Dorfman uses the
`term “response on demand” only in the “Background of the Invention”
`section, primarily as an “example” of a printing system that allows a user to
`“readily customize printed materials for a particular need.” Ex. 1006, 1. But
`that term is not used in Dorfman’s summary of the invention or in its
`description of the preferred embodiment. In any event, the premise on
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`which Patent Owner’s argument is based—that Dorfman’s system is limited
`to low volume print jobs that would not be economically feasible to produce
`using offset printing—is not supported by the record. Dorfman expressly
`teaches that customized printed materials may be printed “in large
`quantities.” Ex. 1006, 2:13–16. As Patent Owner and its Declarant
`acknowledge, it is generally less expensive to use offset printing for large
`print jobs. See PO Resp. 39 (printing plates used for offset printing “are
`inexpensive when producing many identical copies”) (citing Ex. 2014 ¶ 36).
`Moreover, Dorfman teaches that its system may be used with “conventional
`printing technology,” and Patent Owner does not dispute the testimony of
`Petitioner’s expert, Professor Lawler, that offset lithography is a
`“conventional printing technology.” Ex. 1021 ¶ 116.
`We also disagree with Patent Owner’s contention that “modify[ing]
`Dorfman to involve the generation of printing plates or plate-ready files
`would change its principle of operation.” PO Resp. 39 (citing Ex. 2014
`¶ 47). According to Patent Owner, such a modification would render
`Dorfman “unfit for its intended purpose of providing on-demand or
`customized printing materials.” Id. This contention, however, is not
`supported by the record. Neither Patent Owner nor its declarant explains
`why offset printing cannot be used to produce on-demand or customized
`printing materials. On the contrary, as noted above, Dorfman teaches that it
`can be used with “conventional” printing methods, which includes offset
`printing.
`Patent Owner next argues that claim 10 “requires a separate central
`service facility and printing company facility,” but Dorfman “merges the
`central service facility and the printing company facility, which are
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`described as all being present at the same remote location, e.g., the facilities
`of a commercial printing service.” PO Resp. 40 (citing Ex. 1006, 6:4–7);
`Paper 40, 4–6. Petitioner disputes that the claims require a separate central
`service facility. Pet. Reply 14.
`We agree with Petitioner that claims 10–13 do not require a separate
`central service facility. The method recited by independent claim 10 only
`requires a “remote client” and a “remote printer,” and none of claims 11–13
`additionally requires a central service facility. In addition, we do not read
`the Specification as expressly disclaiming a system that does not contain a
`separate central service facility. See In re Bigio, 381 F.3d 1320, 1325–26
`(Fed. Cir. 2004) (“Absent claim language carrying a narrow meaning, the
`PTO should only limit the claim based on the specification or prosecution
`history when those sources expressly disclaim the broader definition.”). For
`example, the Specification describes “one embodiment” that includes a
`central service facility and describes the subject matter of claim 10 as
`“another embodiment.” Ex. 1001, 2:51–3:13. This indicates that a central
`service facility was considered a part of certain embodiments of the
`invention, rather than a necessary part of the invention itself. See
`SuperGuide Corp. v. DirecTV Enterps., Inc., 358 F.3d 870, 875 (Fed. Cir.
`2004) (holding that “a particular embodiment appearing in the written
`description may not be read into a claim when the claim language is broader
`than the embodiment”) (citation omitted).
`Patent Owner further argues that the claims require that the PDF be
`created at a central service facility, whereas in Dorfman’s system, the end-
`user creates the dynamic PDF file. Paper 40, 6–8. But, again, the claims do
`not require a separate central service facility, much less that the PDF file be
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`created at a central service facility. In making this argument Patent Owner
`seems to suggest that because the Dorfman’s dynamic PDF file may contain
`low-resolution images, its creation cannot correspond to the step in claim 10
`of “generating a [PDF] file from the designed page layout.” Id. at 7–8.
`However, Patent Owner has provided no support for this contention, and we
`are not aware of any such support. Accordingly, we find it unpersuasive.
`
`D. Claims 14 and 15—Dorfman, Apogee, and Andersson
`Petitioner asserts that claims 14 and 15 would have been obvious over
`Dorfman, Apogee, and Andersson. Pet. 49–51.
`Andersson
`1.
`Andersson describes the PDF format. According to Andersson, a PDF
`document is a self-contained file format that includes multiple objects, e.g.,
`bitmap images, text, font information, and line art. Ex. 1009, 22–24.
`Andersson teaches how to create, view, and edit PDF files, and how to use
`them to create and simplify digital prepress workflows as compared with
`“traditional” prepress workflows. Id. at 66–67. Andersson also discusses
`digital environments, in particular, computer networks and servers, suitable
`for implementing these workflows. Id. at 51.
`Claim 14
`2.
`Claim 14 depends from claim 10 and additionally recites “wherein the
`step of generating a plate-ready file from said PDF file comprises converting
`said PDF file to a PostScript file.” Petitioner relies on Apogee’s teaching
`that “Apogee PDF RIPs include an Adobe PostScript 3 interpreter to process
`native PDF and PostScript files and to render them for specific devices.”
`Pet. 50 (quoting Ex. 1007, 6). Petitioner also relies on Andersson to teach
`“the basic and known requirement that certain devices, such as laser printers,
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`require PostScript files as their input language.” Pet. 50–51 (citing Ex.
`1009, 34). Patent Owner disputes that claim 14 would have been obvious
`over Dorfman, Apogee, and Andersson; in doing so, Patent Owner raises the
`same arguments there were raised in contending that claim 10 would not
`have been obvious over Dorfman and Apogee. PO Resp. 45–46.
`We have reviewed the evidence relied upon by Petitioner and
`determine that Petitioner has shown by a preponderance of the evidence that
`claim 14 would have been obvious over Dorfman, Apogee, and Andersson.
`As Petitioner points out, a PDF would need to be converted to PostScript for
`printing on specific devices, and Apogee PDF RIPs are able to render
`PostScript files for printing on specific devices.
`Claim 15
`3.
`Claim 15 depends from claim 10 and additionally recites “wherein the
`step of storing files on a computer server comprises logging said files into a
`content management database.” Petitioner asserts that “Dorfman discloses a
`reference library . . . that would be understood by one of ordinary skill in the
`art as providing content management operations and a content management
`database.” Pet. 49 (citing Ex. 1006, 5:27–29). Petitioner also asserts that
`“[t]o the extent that Dorfman’s reference library was not, in fact, already
`intended to carry out logging files into a content management database, . . . a
`person of ordinary skill in the art would have been motivated to add the
`content management functions described by Andersson to Dorfman to
`provide the system user with full storage, organization, archival, and reuse
`privileges through the reference library.” Id. at 50 (citing Ex. 1009, 51, 67–
`69, 190; Ex. 1021 ¶ 133). Patent Owner disputes that any of the cited
`references discloses logging files into a content management database.
`
`
`
`
`16
`
`
`
`IPR2014-00788
`Patent 6,738,155 B1
`
`
`We have reviewed the evidence relied upon by Petitioner and
`determine that Petitioner has shown by a preponderance of the evidence that
`claim 14 would have been obvious over Dorfman, Apogee, and Andersson.
`First, we agree that Dorfman would be understood by a person of ordinary
`skill in the art to teach logging stored files into a content management
`database. Specifically, Dorfman makes available to its users stored
`templates that “may be predetermined for a particular customer and
`presented to the user in accordance with the sign-on information by the user
`in accessing the web page.” Ex. 1006, 7:12–20. That is, the templates
`would need to be logged into Dorfman’s system and associated with a
`particular user in order for the templates to be presented to the user when the
`user signed on. We also agree with Petitioner that Andersson teaches
`content management databases. Ex. 1009, 69.
`
`E.
`
`Claims 16, 17, 19, and 20—Dorfman, Apogee, Andersson, and
`OPI White Paper
`Petitioner contends that claims 16, 17, 19, and 20 would have been
`obvious over Dorfman, Apogee, Andersson, and OPI White Paper (Ex.
`1008). Pet. 51–58.
`OPI White Paper
`1.
`OPI White Paper describes the OPI “image swapping” process. Ex.
`1008, 10. “[I]image swapping enables a page designer to work with a small
`screen-resolution picture file during page design and then rely on the
`intervention of the OPI server to swap it out for the high-resolution, color-
`separated file necessary to render the picture in print.” Id. at 10, 12, Fig. 2d.
`OPI White Paper describes the typical manner in which the low-resolution
`image files, or “preview files,” are generated: a user saves a high-resolution
`
`
`
`
`17
`
`
`
`IPR2014-00788
`Patent 6,738,155 B1
`
`file to a particular folder on the OPI server, which triggers a routine that
`creates a preview file and puts it in a different folder. Id. at 12. A particular
`implementation of the OPI process at a printing facility is also described. Id.
`at 31–32, Fig. 4c.
`Claim 16
`2.
`We find that Petitioner has shown by a preponderance of the evidence
`that the combination of Dorfman, Apogee, and OPI White Paper teaches all
`of the limitations of independent claim 16. First, Dorfman teaches “storing
`high-resolution files on a computer server.” Ex. 1006, 5:27–29. Second,
`OPI White Paper teaches “generating low resolution files corresponding to
`said high-resolution files.” Ex. 1008, 12.
`Third, the combination of Dorfman and OPI White Paper teaches
`“providing said low resolution files to a remote client for the designing of a
`page layout.” Dorfman teaches that a remote client designs customized
`materials using, among other things, “low resolution images.” Ex. 1006,
`3:24–4:6, 7:15–8:5. The low resolution images “would be replaced by the
`high resolution images by an OPI . . . process before printing.” Id. at 4:18–
`24. OPI White Paper confirms that in the course of this “OPI process,” the
`OPI server generates low-resolution preview images from the client’s high-
`resolution images, and the client may access the low-resolution preview
`images remotely, e.g., “via modem.” Ex. 1008, 12, Fig. 2d.
`Next, Dorfman teaches “generating a portable document format (PDF)
`file from the page layout designed by said remote client (Ex. 1006, 7:28–
`8:5)” and “providing said PDF file to said remote client” (id. at 8:4–5).
`Finally, as discussed above with respect to claim 10, the combination of
`
`
`
`
`18
`
`
`
`IPR2014-00788
`Patent 6,738,155 B1
`
`Dorfman and Apogee teaches “providing a plate-ready file to a remote
`printer.”
`We also find that a person of ordinary skill in the art would have had a
`reason to combine OPI White Paper with Dorfman and Apogee. Both
`Dorfman and Apogee expressly teach systems that utilize the OPI image-
`exchange process, and OPI White Paper describes the OPI image-exchange
`process. Therefore, a person of ordinary skill in the art would have been
`motivated to implement the process described in the OPI White Paper to
`carry out the OPI image-exchange process required by Dorfman and
`Apogee.
`Accordingly, because the combination of Dorfman and Apogee
`teaches all of the limitations of claim 16, and a person of ordinary skill in the
`art at the time of the invention would have had reason to combine Dorfman,
`Apogee, and OPI White Paper, we determine that claim 16 is unpatentable
`under 35 U.S.C. § 103 as obvious over Dorfman, Apogee, and OPI White
`Paper.
`
`Patent Owner’s Arguments are unpersuasive
`3.
`Patent Owner raises the same arguments in support of the patentability
`of claim 16 as it did for claim 10. That is, Patent Owner argues that
`Dorfman is a “response on demand” system that does not involve generating
`printing plates, and that claim 16 requires a separate central service facility,
`which Dorfman does not disclose. PO Resp. 47–50. For the reasons
`discussed above with respect to claim 10 (sec. II.C.3.a), we find these
`arguments unpersuasive.
`
`
`
`
`19
`
`
`
`IPR2014-00788
`Patent 6,738,155 B1
`
`
`Claim 17
`4.
`Claim 17 depends from claim 16 and additionally requires “wherein
`the low resolution files are stored in a storage device at said remote client.”
`We agree with Petitioner that OPI White Paper teaches this additional
`limitation. Ex. 1008, 12, 32. For example, OPI White Paper teaches that
`low-resolution preview files may be accessed by a remote client “via
`modem.” Accordingly we determine that claim 17 would have been obvious
`over Dorfman, Apogee, and OPI White Paper.
`Claim 19
`5.
`Claim 19 depends from claim 16 and additionally recites “wherein the
`step of providing a plate-ready file to a remote printer comprises converting
`the format of the PDF file to a plate-ready file format and communicating
`the plate-ready file to the remote printer via the communication link.”
`Patent Owner disputes that the proposed combination of references teaches
`this limitation. We agree with Petitioner, however, that the combination of
`Dorfman and Apogee teaches this limitation, for the reason
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