IN THE UNITED STATES PATENT & TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`Eastman Kodak Company, Agfa Corporation,
`Esko Software BVBA, and Heidelberg, USA,
`Petitioners,
`
`v.
`
`CTP Innovations, LLC,
`Patent Owner.
`______________________
`
`Case IPR2014-00788
`Patent U.S. 6,738,155
`______________________
`
`
`PETITION FOR INTER PARTES REVIEW OF
`CLAIMS 10-20 OF U.S. PATENT NO. 6,738,155
`UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`
`
`
`

`

`Inter Partes Review of U.S. Patent No. 6,738,155
`
`TABLE OF CONTENTS
`
`EXHIBIT LIST ........................................................................................................ iii 
`I. 
`INTRODUCTION ........................................................................................... 1 
`II.  MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8 ..................... 1 
`A. 
`Real Party-In-Interest ........................................................................... 1 
`B. 
`Related Matters ..................................................................................... 1 
`1. 
`Related Litigation ....................................................................... 1 
`2. 
`Related Applications .................................................................. 2 
`3. 
`Related PTAB Proceedings ........................................................ 2 
`Lead and Back-Up Counsel .................................................................. 2 
`C. 
`Service Information .............................................................................. 2 
`D. 
`III.  OVERVIEW OF CHALLENGE AND RELIEF REQUESTED .................... 3 
`A.  Grounds for Standing ........................................................................... 3 
`B. 
`Identification of Challenge ................................................................... 4 
`IV.  Background OF THE ‘155 PATENT .............................................................. 7 
`A. 
`Background of the Technology and Overview of the ‘155 Patent ....... 7 
`B. 
`Prosecution History of the ‘155 Patent .............................................. 13 
`C. 
`IPR2013-00489 .................................................................................. 17 
`CLAIM CONSTRUCTION .......................................................................... 20 
`A. 
`“providing . . . to a remote client in real time using a communication
`network” or “provided in real time using a wide area communication
`network” ............................................................................................. 21 
`“plate-ready file” ................................................................................ 21 
`B. 
`VI.  LEVEL OF ORDINARY SKILL IN THE ART ........................................... 22 
`VII.  THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ’155 PATENT IS UNPATENTABLE ............................. 23 
`
`V. 
`
`
`
`
`i
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`

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`Inter Partes Review of U.S. Patent No. 6,738,155
`
`A. 
`
`B. 
`C. 
`D. 
`E. 
`
`Claims 10-13 and 15-20 are Rendered Obvious by Jebens and Apogee
` ............................................................................................................ 23 
`Claim 14 is Rendered Obvious by Jebens, Apogee, and Andersson . 37 
`Statement of Non-redundancy ............................................................ 38 
`Claims 10-13 are Rendered Obvious by Dorfman and Apogee ........ 39 
`Claims 14-15 are Rendered Obvious by Dorfman, Apogee, and
`Andersson ........................................................................................... 48 
`Claims 16-20 are Rendered Obvious by Dorfman, Apogee, and the
`OPI White Paper ................................................................................. 51 
`VIII.  CONCLUSION .............................................................................................. 58 
`
`
`
`F. 
`
`
`
`
`ii
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`

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`Inter Partes Review of U.S. Patent No. 6,738,155
`
`EXHIBIT LIST
`
`U.S. Patent No. 6,738,155 to Rosenlund et al.
`
`Listing of pending litigations involving the ‘155 patent
`
`Excerpts from the prosecution history of U.S. Patent No. 6,738,155
`
`Decision Denying Petition to Institute in IPR2013-00489
`
`U.S. Patent No. 6,321,231 to Jebens et al.
`
`International Publication No. WO 98/08176 to Dorfman et al.
`
`Agfa Apogee, The PDF-based Production System
`
`Apple OPI White Paper
`
`PDF Printing and Publishing, The Next Revolution After Gutenberg
`
`Computer-to-Plate: Automating the Printing Industry
`
`CTP Original Impressions Complaint
`
`ifra Special Report, Picture Replacement Techniques for Newspapers
`
`Adobe PostScript Extreme, Adobe Solutions for Commercial Printing
`
`Teaching Acrobat New Tricks
`
`PDF for Prepress Workflow and Document Delivery
`
`Envision tomorrow: PDF, the next generation of publishing
`workflows
`
`Agfa Apogee, The Future of Production Workflows
`
`Open Prepress Interface—Version 2.0
`
`Planning and Managing AppleTalk Networks
`
`iii
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`
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`
`

`

`Inter Partes Review of U.S. Patent No. 6,738,155
`
`Resolving AppleTalk WAN routing Woes
`
`Declaration of Professor Brian P. Lawler
`
`Declaration of Johan Suetens
`
`1020
`
`1021
`
`1022
`
`
`
`
`
`
`iv
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`

`

`Inter Partes Review of U.S. Patent No. 6,738,155
`
`I.
`
`INTRODUCTION
`
`Eastman Kodak Company (“Kodak”), Agfa Corporation1 (“Agfa”), Esko
`
`Software BVBA (“Esko”), and Heidelberg, USA2 (“Heidelberg”) (collectively,
`
`“Petitioners”) respectfully requests inter partes review (“IPR”) for claims 10-20 of
`
`U.S. Patent No. 6,738,155 (“the ‘155 patent,” attached hereto as Ex. 1001) in
`
`accordance with 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42.100 et seq.
`
`II. MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8
`
`A. Real Party-In-Interest
`
`Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner certifies that Kodak, Agfa,
`
`Esko, and Heidelberg are the real parties-in-interest.
`
`B. Related Matters
`
`1.
`
`Related Litigation
`
`Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioners state that the ‘155 patent is
`
`asserted in 49 filed litigations, which have been listed in Ex. 1002. Patent Owner
`
`has sued numerous printing service providers, for providing printing and
`
`publishing service over the internet. Some of these litigations have settled, but the
`
`majority remain pending.
`
`
`1 Agfa Graphics is a subsidiary of Agfa Corporation.
`2 Heidelberg, USA is a 100% owned subsidiary of Heidelberger Druckmaschinen
`AG, a joint stock company according to German Law.
`
`1
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`

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`Inter Partes Review of U.S. Patent No. 6,738,155
`
`The ‘155 patent shares a common written description with U.S. Patent No.
`
`6,611,349 (“the ‘349 patent”). This petition is directed to the ‘155 patent; two
`
`petitions for inter partes review of the ‘349 patent are being filed concurrently. A
`
`separate petition for inter partes review of claims 1-9 of the ‘155 patent is also
`
`being filed.
`
`2.
`
`Related Applications
`
`As the four petitions directed to the ‘155 and ‘349 patents, two petitions for
`
`each patent, were filed on the same day, and share the same specification, the
`
`Patent Trial and Appeal Board (“PTAB”) may wish to consider assigning the same
`
`panel to these four petitions.
`
`3.
`
`Related PTAB Proceedings
`
`As explained in greater detail in section IV.C, the Printing Industries of
`
`America (“PIA”) previously filed a petition for inter partes review of the ‘155
`
`patent (see IPR2013-00489), which was denied by the PTAB. See Ex. 1004.
`
`C. Lead and Back-Up Counsel
`
`Pursuant to 37 C.F.R. § 42.8(b)(3), Petitioner provides the following
`
`designation of counsel: Lead counsel is Scott A. McKeown (Reg. No. 42,866) and
`
`back-up counsel is Michael L. Kiklis (Reg. No. 38,939).
`
`D.
`
`Service Information
`
`Pursuant to 37 C.F.R. § 42.8(b)(4), papers concerning this matter should be
`
`
`
`
`2
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`

`

`Inter Partes Review of U.S. Patent No. 6,738,155
`
`served on the following.
`
`Address:
`
`Scott McKeown
`Oblon Spivak
`1940 Duke Street
`Alexandria, VA 22314
`cpdocketmckeown@oblon.com and
`Email:
`cpdocketkiklis@oblon.com
`
`Telephone: (703) 412-6297
`Fax:
`
`(703) 413-2220
`
`
`III. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
`
`Pursuant to 37 C.F.R. § 42.22(a)(1) and §§ 42.104(b) and (b)(1) Petitioners
`
`challenge claims 10-20 of the ‘155 patent.
`
`A. Grounds for Standing
`
`Pursuant to 37 C.F.R. § 42.104(a), Petitioners hereby certify that the ‘155
`
`patent is available for inter partes review and that the Petitioners are not barred or
`
`estopped from requesting inter partes review challenging the claims of the ‘155
`
`patent on the grounds identified herein. Although a petition for inter partes review
`
`of the ‘155 patent was previously filed by the Printing Industries of America
`
`(“PIA”) (IPR2013-00489 (“the ‘489 Petition”), see also Ex. 1004), the prohibitions
`
`of 35 U.S.C. §§ 315 (a)-(b) are inapplicable. Petitioners did not participate in that
`
`filing effort, were not the real parties-in-interest or privies to PIA and, in any event,
`
`all of the filed litigations listed in Ex. 1002 were served within the last 12 months.
`
`
`
`
`3
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`Inter Partes Review of U.S. Patent No. 6,738,155
`
`B.
`
`Identification of Challenge
`
`Pursuant to 37 C.F.R. §42.104(b) and (b)(1), Petitioners request inter partes
`
`review of claims 10-20 of the ‘155 patent, and that the PTAB determine the same
`
`to be unpatentable.
`
`Pursuant to 37 C.F.R. § 42.204(b)(2), inter partes review of the ‘155 patent
`
`is requested in view of the following references, each of which is prior art to the
`
`‘155 patent under 35 U.S.C. §§ 102(a), (b), and/or (e):
`
`a. U.S. Patent No. 6,321,231 to Jebens et al. (“Jebens”) issued on
`
`November 20, 2001, based on Application Serial No. 08/908,046, filed August 11,
`
`1997, which is prior to the earliest filing date claimed by the ‘155 patent (July 30,
`
`1999). Jebens is therefore available as prior art under pre-AIA 35 U.S.C. § 102(e).
`
`As set forth in section IV.B, below, Jebens was applied during the original
`
`prosecution of the ‘155 patent. Petitioners present new supporting evidence, an
`
`explanation of Jebens, and a combination with one or more other prior art
`
`references that were never before considered by the Office and render the
`
`challenged claims unpatentable. Jebens was not relied upon by PIA in the ‘489
`
`Petition.
`
`b. International Publication No. WO 98/08176 to Dorfman et al.
`
`(“Dorfman”) was published February 26, 1998, which is prior to the earliest filing
`
`date claimed by the ‘155 patent (July 30, 1999). Dorfman is therefore available as
`
`
`
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`4
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`Inter Partes Review of U.S. Patent No. 6,738,155
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`prior art under pre-AIA 35 U.S.C. § 102(b). Dorfman was not cited during the
`
`original prosecution of the ‘155 patent. Dorfman was generally cited in the ‘489
`
`Petition for its teachings directed to dependent claims 11, 15, and 17 of the ‘155
`
`patent. The Office did not address these claims in its decision denying inter partes
`
`review. See generally Ex. 1004. In any event, Petitioners present new supporting
`
`evidence and an explanation of Dorfman that was absent from the ‘489 Petition
`
`and, therefore, never before considered by the Office.
`
`c. Apogee, The PDF-based Production System (“Apogee”), was
`
`published in 1998, which is prior to the earliest filing date claimed by the ‘155
`
`patent (July 30, 1999). At the latest, Apogee was made available to the public on
`
`May 28, 1998. See Ex. 1022. Apogee is therefore available as prior art under pre-
`
`AIA 35 U.S.C. § 102(b). Apogee was not cited during the original prosecution of
`
`the ‘155 patent, nor the ‘489 Petition.
`
`d. The Apple OPI White Paper (“OPI White Paper”) was published in
`
`1995, which is prior to the earliest filing date claimed by the ‘155 patent (July 30,
`
`1999). The OPI White Paper is therefore available as prior art under pre-AIA 35
`
`U.S.C. § 102(b). The OPI White Paper was not cited during the original
`
`prosecution of the ‘155 patent, nor in the ‘489 Petition. See also Ex. 1021 at ¶¶
`
`102-106.
`
`
`
`
`e. PDF Printing and Publishing, The Next Revolution After Gutenberg,
`
`5
`
`

`

`Inter Partes Review of U.S. Patent No. 6,738,155
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`by Mattias Andersson et al. (“Andersson”), Micro Publishing Press, was published
`
`in March 1997, which is prior to the earliest filing date claimed by the ‘155 patent
`
`(July 30, 1999). Andersson is therefore available as prior art under pre-AIA 35
`
`U.S.C. § 102(b). Andersson was not cited during the original prosecution of the
`
`‘155 patent, but was applied by PIA in the ‘489 Petition. As explained below in
`
`Section IV.C., Andersson was cited in the ‘489 Petition without any explanation as
`
`to how the cited portions of the reference correspond to the claim limitations in
`
`question. Petitioners present new supporting evidence and an explanation of
`
`Andersson in combination with other prior art references that was not before the
`
`Office by virtue of the ‘489 Petition, and that renders the challenged claims
`
`unpatentable in combination with the other references applied herein.
`
`
`
`Petitioner requests cancellation of challenged claims 1-9 under the following
`
`statutory grounds:
`
`A. Claims 10-13 and 15-20 are rendered obvious by Jebens in view of
`
`Apogee.
`
`B. Claim 14 is rendered obvious by Jebens in view of Apogee and further
`
`in view of Andersson.
`
`C. Claims 10-13 are rendered obvious by Dorfman in view of Apogee.
`
`D. Claims 14 and 15 are rendered obvious by Dorfman in view of
`
`Apogee and further in view of Andersson.
`
`
`
`
`6
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`Inter Partes Review of U.S. Patent No. 6,738,155
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`E. Claims 16-20 are rendered obvious by Dorfman in view of Apogee
`
`and further in view of the OPI White Paper.
`
`Section VII demonstrates, for each of the statutory grounds, that there is a
`
`reasonable likelihood that the Petitioner will prevail. See 35 U.S.C. § 314(a).
`
`Additional explanation and support for each ground of the rejection is set forth in
`
`the Expert Declaration of Prof. Brian P. Lawler (Ex. 1021).
`
`IV. BACKGROUND OF THE ‘155 PATENT
`
`A. Background of the Technology and Overview of the ‘155 Patent
`
`
`
`The ‘155 patent relates to a system and method for providing printing and
`
`publishing services over a communication network, such as the internet. See, e.g.,
`
`Ex. 1001 at 1:7-10. More particularly, the ‘155 patent claims the basic and widely
`
`published idea of using a communication network to connect the creative or front-
`
`end of the printing and publishing industry (e.g., graphic artists, publishers, and
`
`those creating page designs) with the services end (e.g., service bureaus and
`
`printing facilities that actually prepare for printing, and print, the designs created
`
`by the front-end users). Ex. 1021 at ¶ 22. By the mid-1990s, and even before, this
`
`process was digitized and integrated with different print-output technologies
`
`
`
`
`7
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`Inter Partes Review of U.S. Patent No. 6,738,155
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`including imagesetting and computer-to-plate technology (CTP3). Ex. 1010 at p. 9;
`
`Ex. 1009 at pp. 64-77.
`
`
`
`In a system outputting to an imagesetter, bit maps are communicated to an
`
`imager and the imagesetter exposes and marks the film corresponding to the
`
`communicated bitmaps. Ex. 1008 at 8, 40. The film generated by the imagesetter
`
`can then be turned into a printing plate for use in offset printing. Ex. 1021 at ¶ 31.
`
`The use of OPI servers, Workflow servers, Database Servers, File Management
`
`and Image Servers spurred the digitization of the printing workflow well before the
`
`filing of the ‘155 patent. See, e.g., Ex. 1009 at pp. 73-77. Ex. 1021 at ¶ 124.
`
`
`
`CTP systems were a natural progression of the existing computer networked
`
`and digitized workflow. In a CTP system, “publishers provide all editorial and
`
`advertising content in digital form (either on disk or by sending the data over
`
`telephone lines) to printers who, in turn, produce electronic web-off-set printing
`
`plates, eliminating all the traditional intermediate film-preparation stages.” Ex.
`
`1010 at p. 9. Because digital transmission of files is faster than shipping files by
`
`courier, costs less, and can be done any time of day, CTP systems also commonly
`
`employed a digital workflow with data being provided and transferred remotely
`
`and in real-time over communications networks. See, e.g., id. at p. 32; Ex. 1021 at
`
`3 CTP, or Computer-to-Plate, is not to be confused with the current owner of the
`‘349 and ‘155 patents, CTP Innovations, LLC. CTP Innovations, LLC was formed
`in 2013, two decades after the first CTP systems were demonstrated in Sept. 1993
`(see Ex. 1010at p. 5), ostensibly for the sole purpose of asserting patents.
`
`8
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`Inter Partes Review of U.S. Patent No. 6,738,155
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`¶¶ 60, 69-71. Thus, and directly contrary to the position advocated by Patent
`
`Owner in the filed litigations involving the ‘155 patent, electronic transmission of
`
`data and files used during the printing workflow was well-known and
`
`commonplace.4 With this background in mind, a more detailed explanation of the
`
`‘155 patent is provided below.
`
`
`
`According to the ‘155 patent, “[k]ey steps for producing printed materials
`
`using a plate process include (1) preparing copy elements for reproduction [e.g.,
`
`the creative front -end referred to above], (2) prepress production, (3) platemaking,
`
`(4) printing, and (5) binding, finishing and distribution.” Ex. 1001 at 1:12-15. The
`
`claims of the ‘155 patent are concerned with steps 1-3, above. In the first step, the
`
`creative or front-end – e.g., a publisher, direct marketer, advertising agency, or
`
`corporate communication department – uses a desktop publishing program such as
`
`“QuarkXpress” to design pages from image and data files. Id. at 1:16-25. As was
`
`ubiquitously well-known in the art, the page building process is enhanced by Open
`
`Prepress Interface (OPI) software and servers. OPI allows the front-end user to
`
`perform page building operations using low-resolution images rather than the high-
`
`resolution images that will ultimately be used for printing. Due to their large size,
`
`the high-resolution images were difficult to transfer over network communication
`
`4 See, e.g., Ex. 1011 (Original Impressions Complaint) at ¶¶ 11 and 12 (alleging
`that “[p]rior to the inventions claimed in the ‘155 and ‘349 patents” pages to be
`printed and printing proofs were sent between front-end users and printing
`companies via mail or express carrier).
`
`
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`Inter Partes Review of U.S. Patent No. 6,738,155
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`links commonly used prior to the filing of the ‘155 patent. Ex. 1021 at ¶¶ 39, 59.
`
`Thus, as would be expected by one of ordinary skill in the art, the system described
`
`by the ‘155 patent also utilizes an OPI server to facilitate page building. See, e.g.,
`
`Ex. 1001 at 5:59 – 6:3, 7:38-51.
`
`
`
`As shown in figure 1, below, the OPI process begins by scanning and saving
`
`high-resolution images to the OPI server. Ex. 1012 at p. 5. The OPI server then
`
`creates a low-resolution image corresponding to the scanned high-resolution
`
`image. Id. at p. 6. The front-end user (labeled “Page Make-Up” in figure 1) then
`
`accesses the OPI server’s file database to select and download the low-resolution
`
`images that will be used during the page design process. Id. Once the page design
`
`is complete, the front-end user transfers its design with embedded OPI comments
`
`to the server. Id. The OPI comments allow the server to locate the high-resolution
`
`images corresponding to the OPI comments and place the high-resolution images
`
`into the design before it is output to the desired printing device. Id. at 7.
`
`
`
`
`10
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`Inter Partes Review of U.S. Patent No. 6,738,155
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`
`
`Next, in step two of the general printing process described and claimed by
`
`the ‘155 patent—e.g., prepress production—the pages created by the front-end user
`
`are “transformed into a medium that is reproducible for printing.” Ex. 1001 at
`
`1:26-28. This involves, for example, “image color correction, file conversion,
`
`RIPing, trapping, proofing, imposition, filmsetting, and platesetting,” id. at 1:29-
`
`32, as well as the OPI process described above. Again, each of these processes,
`
`which are used to produce a “plate-ready file” as described by the ‘155 patent,
`
`were well-known and in wide-spread use prior to its filing date. See, e.g., id. at
`
`1:26-44; Ex. 1021 at ¶ 63-65.
`
`
`
`Lastly, in step three, a printing plate is made at a printing facility. This is
`
`done by “RIPing” the page layout file. Ex. 1021 at ¶¶ 46, 68. “RIP,” which stands
`
`for raster image processor, converts the page layout file to a bitmap. Ex. 1001 at
`
`7:57-59. “A bitmap is a digitized collection of binary pixel information that gives
`
`output device, such [as a laser printer, imagesetter, or platesetter] the ability to
`
`image data to paper, film, or plate.” Id. at 7:59-62. Thus, in this final step, the
`
`printing facility takes the plate-ready-file and produces a printing plate. See, e.g.,
`
`id. at 1:45-51.
`
`
`
`Figure 1 of the ‘155 patent, reproduced below, depicts an embodiment of the
`
`claimed invention wherein “system components [that execute the above
`
`
`
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`11
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`Inter Partes Review of U.S. Patent No. 6,738,155
`
`functionality] are installed at an end user facility, a printing company facility, and a
`
`central service facility.” Id. at 2:35-36.
`
`
`
`
`
`The end user facility 300 “provides page building operations allowing the
`
`design and construction of pages from images, text, and data available via said
`
`communication network.” Id. at 2:56-59. In other words, the end user facility 300
`
`performs the first step described above (for example, a user sitting at a computer
`
`using software such as QuarkXPress). “The central service facility [105] provides
`
`storage, file processing, remote access, and content management operations.” Id.
`
`at 2:62-64. In other words, the central service facility performs step two described
`
`above—prepress production. And, lastly, “[t]he printing company facility [400]
`
`provides printing operations for producing a printing plate from said plate-ready
`
`file,” id. at 2:59-62, which is nothing more than step three, or “platemaking,” as
`
`described above. Accordingly, and as explained in greater detail below, the ‘155
`
`patent describes and claims nothing more than a digital workflow between
`
`12
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`Inter Partes Review of U.S. Patent No. 6,738,155
`
`networked computers that was known, extensively studied, and implemented well
`
`before the filing date of the ‘155 patent.
`
`
`
`B.
`
`Prosecution History of the ‘155 Patent
`
`
`
`On July 30, 1999, Applicants filed Application Serial No. 09/364,935 (“the
`
`‘935 application), which issued as the ‘155 patent on May 18, 2004. In a first
`
`Office Action dated March 25, 2003, claim 4 was rejected as “being indefinite for
`
`failing to particularly point out and distinctly claim the subject matter which
`
`applicant regards as the invention” and claims 1-3 and 5-20 were rejected as
`
`obvious over U.S. Patent No. 6,321,231 to Jebens et al. (“Jebens”) in view of U.S.
`
`Patent No. 6,247,011 to Jecha et al. (“Jecha”). Ex. 1003 at pp. 2-3. Claim 4 was
`
`also rejected as being obvious over Jebens in view of Jecha and further in view of
`
`U.S. Patent No. 6,384,932 to Fujisawa et al. (“Fujisawa”). Id. at p. 7.
`
`
`
`In response, Applicant amended claim 4. Ex. 1003 at p. 16. As to claims 1-
`
`9, Applicant noted that Jecha fails to disclose “‘imposition operations including the
`
`setting of pages on a particular plate as well as positioning and orientation of pages
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`on said plate’ as recited by claim 1.” Id. at pp. 20-21. Applicant further noted that
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`“[i]mposition is not the same as prepress” and that neither Jebens nor Jecha
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`“disclose, suggest, or teach anything about imposition operations and setting of
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`pages on a plate.” Id. at p. 21. As to claims 10-15, Applicant noted that Jecha
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`does not disclose “performing the operation of ‘generating a portable document
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`format (PDF) file from the designed page layout;’ and then the operation of
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`‘generating a plate-ready file from said PDF file” as Jecha “only discloses
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`performing one translation operation.” Id. at p. 22. As to claims 17-20, Applicant
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`noted that neither Jebens nor Jecha discloses “converting a PDF file (or any other
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`already translated file to another file format.” Id. As to claim 4, Applicant noted
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`that there was no motivation to combine the teachings of Jebens or Jecha with
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`Fujisawa as neither Jebens nor Jecha “suggests the use of CTP systems,
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`platesetting devices, or imposition operations” and because there was no
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`suggestion to couple Fujisawa’s imposition apparatus “with a communication
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`network connecting an end user facility, a printing company facility, and a central
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`service facility.” Id. at p. 23.
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`Applicant did not rebut Examiner’s statement that “Jebens discloses a
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`printing and publishing system comprising an end user facility coupled to a
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`communication network, the end user facility page building operations including
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`the construction of pages from images, text and data available via the network
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`(which reads on the user preparing a document); a printing facility coupled to the
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`network , and a central service facility coupled to the communication network , the
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`central service facility providing storage, file processing, remote access (to enable
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`searching), and content management, the content management including the
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`capture and archival, retrieval and reuse of electronic (digital) files containing text;
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`content management operations further including the organization and cataloging
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`of file content (by filename) for browsing, searching and retrieving of files and
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`data. Ex. 1003 at p. 3; see generally id. at pp. 20-24.
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`In a second Office Action dated July 23, 2003, claims 1-3 and 5-20 were
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`rejected as obvious over Jebens in view of Fujisawa. Ex. 1003 at pp. 26-31. In
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`response, Applicant noted that there was no motivation or suggestion to combine
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`the teachings of Jebens with Fujisawa, stating that Jebens does not suggest “the use
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`of CTP systems, platesetting devices, or imposition operations” and noting that
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`there was nothing suggesting coupling Fujisawa’s imposition apparatus “with a
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`communication network connecting an end user facility, a printing company
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`facility, and a central service facility.” Id. at p. 38. Additionally, Applicant noted
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`that Fujisawa only discloses a page description language file but does not teach or
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`suggest the creation of a “PDF file and a plate-ready file.” Id. at pp. 39-40.
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`
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`In a third Office Action dated December 18, 2003, claims 1-3 and 5-20 were
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`again rejected as obvious over Jebens in view of Fujisawa. In rejecting these
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`claims, the examiner rejected Applicant’s argument that there was no motivation to
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`combine Jebens and Fujisawa stating that “it would have been obvious to one of
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`ordinary skill in the art at the time of the invention to have modified Jebens to
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`provide pre-press and imposition services in the print system of Jebens” to
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`“achieve labor savings in the plate making or printing process as well as to
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`improve the printing accuracy.” Ex. 1003 at p. 48. Moreover, as described in the
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`declaration of Prof. Lawler, it would have been obvious to one of ordinary skill in
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`the art to combine imposition and offset printing plate making procedures to the
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`data management and printing system disclosed by Jebens. See, e.g., Ex. 1021 at ¶
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`94.
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`In response, Applicant amended claim 1 to include that the end user facility
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`provided “the generation of a portable document file” and that the printing
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`company “generat[ed] a plate-ready file from said PDF file.” Id. at p. 54.
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`Applicant did not argue that there was no motivation to combine the teachings of
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`Fujisawa with those of Jebens and only noted that neither Jebens nor Fujisawa
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`teaches the generation of a PDF file. Id. at pp. 58-62.
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`A notice of allowability followed. Id. at pp. 63-65. The Examiner did not
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`provide any reasons for allowing the claims after Applicant’s February 9, 2004
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`Amendment, however it would appear that the allowance was based on the
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`addition of the language directed towards generating “a plate-ready file from said
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`PDF file.” That is, the entirety of the workflow was known, but the Examiner was
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`not aware the fact that generating a plate-ready file from a PDF was also a well-
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`known option in the art prior to the filing date of the CTP patent. As set forth in
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`section VII, each of the features claimed in the ‘155 patent, including the
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`generation of a PDF file, are clearly taught by the prior art combinations applied
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`herein.
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`C.
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` IPR2013-00489
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`Printing Industries of America (“PIA”) filed a petition to institute an inter
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`partes review of claims 1-20 of the ‘155 patent. PIA alleged that the challenged
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`claims were either anticipated or rendered obvious is in view of multiple different
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`combinations, relying upon U.S. Patent No. 7,242,487 to Lucivero et al.
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`(“Lucivero”), Mattias Andersson et al., PDF PRINTING AND PUBLISHING, THE NEXT
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`REVOLUTION AFTER GUTENBERG (Micro Publishing Press 1997) (“Andersson”),
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`Stephen N. Zilles, Using PDF for Digital Data Exchange, TAGA PROCEEDINGS
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`1997 (“Zilles”), and U.S. Patent No. 6,046,818 to Benson (“Benson”) as primary
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`references. The following table, reproduced from the PTAB’s decision in IPR
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`2013-00489 (“the ‘489 Decision”), summarizes the grounds raised by PIA.
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`The PTAB denied PIA’s petition to institute inter partes review on the
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`grounds that PIA failed to meet its burden to affirmatively establish a reasonable
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`likelihood that PIA would prevail with respect to at least one of the challenged
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`claims. See generally Ex. 1004. The PTAB found that PIA treated its petition as a
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`notice pleading, consistently failing to “explain how the cited portions [of the
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`applied prior art] correspond to the limitations for which they are cited.” See Ex.
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`1004 at pp. 17, 18-22. Other times PIA cited to portions of the applied prior art
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`without any explanation as to the relevance of the cited portions to the claim
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`limitations at issue. See, e.g., id. at p. 17. Due to these noted deficiencies, and
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`others, the PTAB denied PIA’s petition.
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`Petitioners do not repeat and re-allege the conclusory positions taken by PIA
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`in the ‘489 Petition in the current petition. Instead, Petitioners rely on Jebens and
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`Dorfman as primary references, which recite systems having a printing and
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`publishing system workflow organized around an end user facility, central service
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`facility, and printing company facility as claimed and described by the ‘155 patent.
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`Moreover, as discussed above in section IV.A, the functional limitations recited by
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`the claims of the ‘155 patent describe nothing more than known page building,
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`prepress, or platemaking procedures for digital workflows. Not only were these
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`features well-understood by persons of ordinary skill in the art (Ex. 1021 at ¶¶ 63-
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`72), but they were well documented in a variety of printing and publishing
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`textbooks and technical literatures, such as the Adams II textbook and the
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`Andersson Textbook applied herein and in the ‘489 Petition.
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`However, whereas PIA failed to explain how the cited portions of Adams II
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`or Andersson correspond to the claim limitations in question (see Ex. 1004 at pp.
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`13-15), Petitioners have included the declaration of Prof. Lawler setting forth
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`precisely what one of ordinary skill would have known and understood from these
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`textbooks, as well as how and why one of ordinary skill would have modified the
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`systems disclosed by Jebens and Dorfman to arrive at the claimed invention. Thus,
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