UNITED STATES PATENT AND 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 6,738,155
`
`____________
`
`
`PETITIONERS’ REPLY BRIEF
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`Pursuant to 37 C.F.R. §§ 42.23 and 42.24(c)(1), Eastman Kodak Company,
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`Agfa Corporation, Esko Software BVBA, and Heidelberg, USA (“Petitioners”)
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`hereby submit the following Reply in Support of their Petition for Inter Partes
`
`Review (“IPR”).
`
`
`
`
`________________________
`
`
`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 6,738,155
`
`____________
`
`
`PETITIONERS’ REPLY BRIEF
`
`Pursuant to 37 C.F.R. §§ 42.23 and 42.24(c)(1), Eastman Kodak Company,
`
`Agfa Corporation, Esko Software BVBA, and Heidelberg, USA (“Petitioners”)
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`hereby submit the following Reply in Support of their Petition for Inter Partes
`
`Review (“IPR”).
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`
`
`
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`Case IPR2014-00788
`Petitioners’ Reply Brief
`Patent Owner’s response is plainly impertinent to the instituted grounds.
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`Trial has been instituted on claims 10-20 of the ‘155 patent in view of Jebens,
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`Apogee, and Andersson, as well as Dorfman, Apogee, Andersson, and OPI White
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`Paper. (See Paper 9 at 25.) Despite the Board’s admonishment in its institution
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`decision that “nonobviousness cannot be established by attacking the references
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`individually when the rejection is predicated upon a combination of prior art
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`disclosures” (id. at 18), Patent Owner continues to (a) argue the alleged
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`shortcomings of each reference individually; (b) ignore the proposed combinations
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`set forth in the Petition; and (c) reiterate the failed arguments of its preliminary
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`response without explanation.
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`In an attempt to salvage its claims, Patent Owner, and its expert, improperly
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`read limitations from the specification into claims 10-20. Moreover, the testimony
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`of Prof. Robert L. Stevenson (“Prof. Stevenson”) provides unsupported legal
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`conclusions, professes no skill in the pertinent art of printing and pre-press
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`systems, and mistakenly applies a presumption of validity to the challenged claims.
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`Indeed, although Prof. Stevenson acknowledges that he reviewed the Board’s
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`Institution Order (Ex. 2014 at ¶ 11), he does not rebut its findings anywhere.
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`THE JEBENS GROUNDS STAND UNREBUTTED
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`I.
`Claims 10-13 and 15-20 are rendered obvious in view of Jebens and Apogee.
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`Patent Owner’s alleged basis for distinguishing these claims stems from an
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`Petitioners’ Reply Brief
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`improper reading of the claims and the prior art, as well as failing to consider the
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`proposed combination as a whole. Claim 10 of the ‘155 patent recites, in pertinent
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`part, (a) “storing files on a computer server…,” (b) “providing said files to a
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`remote client…,” (c) “generating a … PDF…,” (d) “generating a plate-ready file
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`from said PDF file,” and (e) “providing said plate ready file to a remote printer.”
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`Claim 16 recites these same basic steps but indicates that the files provided to the
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`remote client are low res files that have been generated from high res files.
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`Conspicuously absent from these claims is any requirement regarding where
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`the steps of “generating a … PDF,” “generating a plate-ready file,” or “providing
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`said plate ready file to a remote printer” must occur. Yet Patent Owner attempts to
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`distinguish its claims on the basis of these phantom limitations. In a misguided
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`attempt to import limitations from the specification into claims 10 and 16, Patent
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`Owner (and its expert) simply state that “based upon the specification” (Resp. at
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`22; Ex. 2014 at ¶ 20), these steps would occur at the central service facility. Based
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`upon this unduly narrow claim construction, Patent Owner argues that “Jebens
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`does not teach the step of generating a plate-ready file at a central service facility
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`(i.e., a facility separate from a remote client and a remote printer), and providing
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`that plate-ready file to a remote printer.” (Resp. at 22, emphasis in original.)
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`As an initial matter, and as noted above, there is absolutely no requirement
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`in claims 10 and 16 that the step of generating a plate-ready file must occur at a
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`central service facility, or that the plate-ready file provided to the remote printer
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`must come from a central service facility. Other than referencing a few lines of the
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`specification, Patent Owner provides no analysis as to why this limitation should
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`be read into the claims. See e.g., Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d
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`898, 913 (Fed. Cir. 2004). As Patent Owner has not presented any rationale
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`whatsoever, nor could it, as to why the features of the specification should be
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`incorporated into claims 10 and 16, this argument is baseless.
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`All that claims 10 and 16 require is the generation of a PDF from the page
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`layout designed by the client, and the generation/providing of a plate-ready file to a
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`remote printer. These steps are clearly taught by Apogee. (Petition at 30-31; Ex.
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`1021 at ¶¶ 88-92.) Indeed, Patent Owner agrees that these steps are taught by
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`Apogee. (Resp. at 27.) Patent Owner’s only dispute is that Apogee allegedly
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`describes these steps as occurring at a printing company facility, not at a central
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`service facility. However, this argument is misplaced because claims 10 and 16 do
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`not include any requirement that the steps of generating a PDF, generating a plate-
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`ready file, or providing the plate-ready file have to occur at a specific location.
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`Nonetheless, Prof. Lawler explained in his declaration that “Apogee thus
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`describes one known process for taking a page layout designed by an end user and
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`turning that incoming file, whether in PostScript or PDF, into a PIF or plate-ready
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`file that can be output to a desired device.” (Ex. 1021 at ¶ 92.) Similarly, Prof.
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`Lawler explained that “[f]or ‘direct-to’ production, Agfa developed … the Apogee
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`PrintDrive. Apogee PrintDrive manages the Print Image Files (PIF) output by one
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`or more RIPs, and controls output flow to a variety of output devices including
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`Agfa imagesetters, proofers, and platesetters.” (Ex. 1021 at ¶ 91, citing Ex. 1007
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`at 7.) Nothing in Apogee limits the implementation of the processes described
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`therein to occur at a printing company facility, and one of ordinary skill could
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`predictably implement Apogee at a central service facility (assuming that such was
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`required by claims 10 and 16). Even accepting Patent Owner’s specification-
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`limited construction, the record demonstrates such as an unavailing distinction.
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`Moreover, during his deposition, Prof. Lawler explained that Apogee, and
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`the various processes described therein, can be implemented either at a central
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`service facility or a printing company facility. Specifically, Prof. Lawler testified:
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`Q: So you’re saying Jebens does the swapping, presents it at the host
`facility, and the Apogee citation talks about that same process but at the
`printing facility:
`A: Correct. That could happen in either location.
` (Ex. 2017 at 31:20 – 32:13, emphasis added.) During re-direct examination, Prof.
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`Lawler reiterated that the generation of a plate-ready file as described by Apogee
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`can occur either at the printing facility or the host/central service facility, and that
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`none of the reference are limited to preparing the plate-ready file at the central
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`service facility or the printing company facility. (Id. at 101:21 – 103:3.) Thus, and
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`despite the fact that the claims 10 and 16 do not require the PDF or plate-ready file
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`generation to occur at any specific location, one of ordinary skill would have
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`known that the processes described by Apogee could occur either at a printing
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`company facility or at a central service facility. This teaching stands unrebutted.1
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`Second, Patent Owner confusingly argues (Resp. at 22-27) that the
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`challenged claims are not unpatentable in view of Jebens and Apogee because the
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`central facility of Jebens does not (allegedly) carry out OPI—i.e., the swapping or
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`replacement of low-resolution for-placement-only images with high-resolution
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`copies before printing. As an initial matter, none of the challenged claims recite or
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`require OPI to occur. Claim 10 states that “said files” are provided to a remote
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`client for page building, without specifying whether the files are high or low
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`resolution, and claim 16 states that low resolution files are provided to the remote
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`client, but the claim never requires the corresponding high resolution files to be
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`swapped back in before printing.
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`Despite the absence of an OPI process in the claims, Patent Owner may
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`argue that OPI is necessary before a plate-ready file is produced. However,
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`1 Without any analysis or support, Patent Owner’s expert conclusorily states that “a
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`POSITA would consider this process [i.e., the generation of a plate-ready file in
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`Apogee] to be taking place at the jobber or supplier, i.e., at a printing company
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`facility.” Ex. 2014 at ¶ 30.
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`Petitioners’ rely on Apogee for its teaching of a plate-ready file, not Jebens alone,
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`which clearly teaches the incorporation of OPI into a pre-press workflow. (Ex.
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`1007 at 2, 5). Patent Owner ignores this and, instead, focuses solely on the Jebens
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`reference rather than the proposed combination. The Board has previously warned
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`Patent Owner that such a blinkered analysis is unavailing. (Paper 9 at 18.)
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`In any event, Patent Owner’s argument that Jebens does not perform OPI at
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`its central service facility is incorrect. Petitioners and Prof. Lawler explained that
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`Jebens “describes an Open Prepress Interface system which … create[s] low-
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`resolution files derived from any of the stored assets in the system, and deliver[s]
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`them to the client for building documents in their own workplaces. Once the
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`graphic designer has created the document, the designer can then re-connect to the
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`central system and request that the document be electronically routed [with
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`corresponding high-resolution images] to a publishing entity, such as a printer.”
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`(Ex. 1021 at ¶ 85, citing Ex. 1005 at 5:17-22; Petition at 24, 30, 34.)
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`During deposition, Prof. Lawler further explained that although the quoted
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`section of Jebens does not use the word “replace,” one of ordinary skill would have
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`immediately recognized the description of Jebens as describing an OPI process
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`(Ex. 2017 at 28:17 – 29:14), which could occur either at the central service facility
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`or printing company facility. (Id. at 103:4-12.) The triviality of Patent Owner and
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`its expert’s argument is readily apparent—it hinges on the absence of the word
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`“replace” from the quoted section of Jebens, and ignores the understanding of
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`those of ordinary skill in the art. Patent Owner nowhere rebuts the testimony of
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`record as to the scope and content of Jebens in this regard.
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`Further, the system described by Jebens includes an “autolog server 34 [at
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`the host/central service facility, see Fig. 2, which] determines whether a special
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`low resolution format file such as an OPI … file should be created from the
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`original image file…” (Ex. 1005 at 10:53-56.) Patent Owner fails to address the
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`fact that Jebens’ host facility includes an OPI server that would naturally carry out
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`the OPI process and “replace” the low resolution images for the high resolution
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`images before printing. Further still, there is no question that before the host
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`system of Jebens routes the created document to the printer, it does so while
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`including the “high resolution copies of the selected digital images.” (Ex. 1005 at
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`5:20-21.) Whether the files are already embedded in the page layout, or sent
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`separately, they have been swapped or “replaced” for the low resolution images
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`used during page building operations and, therefore, OPI has occurred. Thus, even
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`if claims 10 and 16 were incorrectly construed to require (a) an OPI process, and
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`(b) that the OPI occur at the host/central service facility, Jebens teaches the same.
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`Claim 12. Claim 12 states that “the step of providing said plate-ready file to
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`a remote printer comprises communicating said plate-ready file to said remote
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`printer via a communication network. Patent Owner alleges that Jebens does not
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`communicate a “plate-ready file,” which is incorrect for two reasons. First, as
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`explained above, Jebens teaches that OPI may occur at the host/central service
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`facility. Thus, the file that is sent to the remote printer is a “plate-ready file.”
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`Second, the combined system relies on Apogee for its teaching of a plate-ready file
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`which, predictably, Patent Owner has ignored.
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`Claim 11. Claim 11 states that the method of claim 10 “further compris[es]
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`providing said PDF file to said remote client for proofing and revision of the page
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`layout.” Patent Owner admits that it was known to use PDF files for remote
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`viewing, proofing, approval, and editing. (Resp. at 29.) Indeed, one of the known
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`reasons for using the PDF file format, as explained by Prof. Lawler, was to “allow
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`for remote proofing because high quality typography, graphics, images, and color
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`are maintained in the file.” (Ex. 1021 at ¶ 92, citing Ex. 1016 at pp. 2 and 3; Ex.
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`1007 at p. 4.) Patent Owner’s only argument against the proposed combination is a
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`hypothetical one, arguing that “to the extent that PDF digital master is an
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`extremely large file,” one of ordinary skill in the art would not have added PDF
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`proofing to Jebens system. Beyond its alleged expert’s say-so, Patent Owner has
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`not provided any evidence that a skilled artisan would not use PDFs for remote
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`viewing—one of the files intended purposes—because of file-size restrictions.
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`Claims 18 and 19. As discussed above, the host/central service facility of
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`Jebens swaps out low resolution files used in the page building process for high
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`resolution files as part of its OPI functionality and, in combination with Apogee,
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`generates a PDF file and a plate-ready file to provide to a remote printer. (Petition
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`at 35-36.) Rather than argue against the combined system of Jebens and Apogee,
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`Patent Owner argues that these features are not taught by Jebens. (Resp. at 31.)
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`Patent Owner’s argument is unavailing.
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`Claims 14 is Rendered Obvious by Jebens, Apogee, and Andersson.
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`Claim 14 depends from claim 10 and further recites “wherein the step of
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`generating a plate-ready file from said PDF file comprises converting said PDF file
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`to a PostScript file.” Patent Owner does not dispute that Andersson teaches
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`converting a PDF file into a PostScript file. (Resp. at 33.) Patent Owner’s only
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`dispute is that, because the cited portion of Andersson describes using the
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`PostScript file for printing to a laser printer, this somehow renders Andersson’s
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`teaching inapplicable to claim 14.
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` Patent Owner attempts again to read a limitation into claim 14 that does not
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`exist. Claim 14 only requires that the step of generating a plate-ready file further
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`comprises converting said PDF file to a PostScript file. As explained by Prof.
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`Lawler, a “plate-ready file is simply indicative of a page layout file that has gone
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`through the prepress process and has been RIPed such that it contains the exact
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`dots to be transferred onto a printing plate, film, or other imaging substrate.” (Ex.
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`1021 at ¶ 80.) The explicit benefit of using a plate-ready file is that it can be RIPed
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`and “output … to a variety of output devices including Agfa imagesetters,
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`proofers, and platesetters.” (Ex. 1021 at ¶ 91, citing Ex. 1007 at 7.) There is no
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`requirement in claim 14, as Patent Owner suggests, that the plate-ready file must
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`only be sent to an imagesetter or platesetter such that a printing plate is necessarily
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`produced. (Resp. at 33.) Rather, as explained in the Petition, if the printing
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`company facility was sending the plate-ready file to a laser printer, it would have
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`to be converted to a PostScript file first. (Petition at 37.)
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`II. THE DORFMAN GROUNDS STAND UNREBUTTED
`A. Dorfman is Not Limited to “Response on Demand” Systems
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`Nearly all of Patent Owner’s arguments regarding Dorfman surround Patent
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`Owner’s unsubstantiated—and previously rejected—argument that Dorfman’s
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`teachings are directed solely to “response on demand” digital printing systems.
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`Patent Owner now calls Dorfman a “response on demand” system, rather than a
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`“variable data printing (VDP) system” as categorized in the preliminary response
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`(Prelim. Resp. at 21); however, Patent Owner’s arguments are the same.
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`Specifically, in its preliminary response, Patent Owner argued that “the
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`Dorfman system is not relevant to the ’155 patent” because it describes a VDP
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`system without an explicit disclosure of a printing plate, “which is the raison
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`d’etre of the computer-to-plate (CTP) system in the ’155 patent.” (Prelim. Resp. at
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`21; see also Resp. at 39, including identical language.) In short, Patent Owner
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`argued, and continues to argue in its Response, that Dorfman’s system is allegedly
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`limited to low volume jobs that involve variable data and, as a result, one of
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`ordinary skill in the art would not use a printing plate for high-volume jobs with
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`Dorfman’s system. (Resp. at 39; Paper 9 at 22, summarizing Patent Owner’s
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`argument from the preliminary response.)
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`However, Dorfman’s teachings are not limited to only low volume-print
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`jobs. This is because Dorfman explicitly emphasizes a broader applicability, as
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`correctly recognized by the Board: “On the contrary, Dorfman’s system is related
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`to ‘customized printed materials,’ which Dorfman teaches may be printed ‘in large
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`quantities.’” (Paper 9 at 22, quoting Ex. 10062 at 2:13-16.) Dorfman also
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`explicitly recognizes that the back-end of the described system, i.e. the printing
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`company facility, may use “conventional printing technology (Ex. 1006 at p. 8, l.
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`23) which includes offset lithography. (Ex. 1021 at ¶ 116.)
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`Similarly, as explained by Prof. Lawler, the novel and inventive aspect of
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`Dorfman surrounds the reference’s description of the system’s front end—i.e.,
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`web-based page design utilizing a dynamic PDF, and distributed processing
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`between the end user and central service processing the user’s page design. (Ex.
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`1021 at ¶¶ 108-111, Ex. 1006 at p. 3, l. 24 – p. 4, l. 23.) Tellingly, Dorfman states
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`that “[a]lthough developed for the internet front end, the technology can similarly
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`2 Citations to Dorfman (Ex. 1007) are to the references original page numbering.
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`be used by front ends other than Internet browsers.” (Ex. 1006 at p. 4, ll. 22-23,
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`emphasis added.) In other words, although Dorfman references “response on
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`demand” systems (id. at pp. 2-3) and allows for user input of “variable data” (id. at
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`p. 4, ll. 3-6), the reference is unconcerned with outputting to any specific back-end
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`printing system, only mentioning that physical act of printing may be done with
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`“conventional printing technology.” (Id. at p. 4, ll. 18-21, p. 8, l. 23.)
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`Modifying Dorfman to incorporate offset lithography and the generation of a
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`plate-ready file as taught by Apogee would not change Dorfman’s principal of
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`operation (Resp. at 39), but was, in fact, explicitly contemplated by the reference
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`and well recognizes by those of skill in the art. (See Petition at 42-44; Ex. 1021 at
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`¶¶ 108-116.) And, as explained by Prof. Lawler, the plate-ready file of Apogee
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`(i.e., the “Print Image File” or “PIF”) can be output to any desired device, whether
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`a digital printer or an imagesetter or platesetter. (Ex. 1021 at ¶¶ 65-69, 80 (“plate-
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`ready files are not limited to outputting on a platesetter, but may also include files
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`RIPed for output onto a digital printer or imagesetter, for example. The plate-
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`ready file is simply indicative of a page layout file that has gone through the
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`prepress process and has been RIPed such that it contains the exact dots to be
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`transferred onto a printing plate, film, or other imaging substrate”), and 120-121.)
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`Thus, whether the document to be printed is a low volume job using a digital
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`printer, or a high volume job using traditional offset printing, the plate-ready file of
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`Apogee, as combined with the Dorfman system, can accommodate either output.
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`Indeed, Patent Owner’s response reinforces the exact motivation that would
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`have driven one of ordinary skill in the art to use offset lithography when using
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`Dorfman’s system to print custom material in large quantities. In particular, there
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`is a trade-off between the cost and the number of copies of a job to be printed.
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`Because the cost per page for offset printing is less than digital or
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`electrophotographic printing, large volume jobs benefit from offset printing. In
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`contrast, digital printing may be more efficient for low volume jobs, even though
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`the cost per page is more expensive, because the initial start-up cost associated
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`with making a printing plate is avoided. The exhibits cited by Patent Owner (Resp.
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`at 35) explain this well-known binary trade-off:
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`Offset has a higher cost for starting up a job, because plates must be
`prepared…. But, at present, the cost per page of the actual printing is
`lower for offset, and this is the dominant cost in long runs. So short
`runs are more economical with digital printing, and longer runs are
`more economical with offset.
`(Ex. 2015 at 53, emphasis added (original page 378); Id. at 55 (original page 380).)
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`As the Board correctly recognized in its institution decision, this is the exact reason
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`offset printing would be used in Dorfman’s system when printing “[c]ustomized …
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`materials … in large quantities.” (Paper 9 at 22, citing Ex. 1006 at 2:13-16.)
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`During his deposition, Prof. Lawler similarly explained that the known
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`choice between printing custom material using a digital printer or offset
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`lithography has to do with “volume, the quantity, the price, the deadline, the
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`budget, [more so] than any particular printing – other printing process.” (Ex. 2017
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`at 47:2-5.) Prof. Lawler also explained that these considerations hold true for “on
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`demand” or variable printing: “a variable data printing system defines a system
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`whereby one or more elements of the job can be changed, and you could certainly
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`use printing plates to produce a variable data job where the volume of copies was
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`worthwhile to be printed by offset lithography using plates.” (Id. at 80:2-7; see
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`also id. at 81:14 – 83:13.) Rather than teaching away from the proposed
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`combination, as Patent Owner alleges, the above design considerations strengthen
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`the rationale for combining Dorfman with Apogee to generate a printing plate.
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`B. Dorfman Teaches Separate Central Service and Printing Facilities
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`Patent Owner argues that the Dorfman grounds do not render the claims
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`unpatentable because “[t]he claimed invention requires a separate central service
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`facility and printing company facility.” (Resp. at 40.) As explained above, see
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`pages 2-3, supra, there is no limitation in claims 10-20 reciting a central service
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`facility, let alone a geographically separate central service and printing company.
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`Nonetheless, Petitioners address the substance of Patent Owner’s assertions.
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`Assuming, arguendo, that independent claims 10 and 16 required the plate-ready
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`file to be transmitted from a central service facility to the remote printer, there is
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`no further requirement demanding the facilities to be geographically separate from
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`one another. Patent Owner alleges that Dorfman does not teach separate central
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`service and printing company facilities because the central service and printing
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`company facilities are described as being “present at the same remote location,
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`e.g., the facilities of a commercial printing service.” (Resp. at 40, emphasis
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`added.) Whether Dorfman’s system must be designed in this way—i.e., with the
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`PDF builder 6 and memory 4, and production printing system 10 located at the
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`same physical location—is inapposite.
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`All claims 10 and 16 require is for the remote printer to receive a plate-ready
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`file. Patent Owner does not propose a construction for the term “remote,” nor is
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`one needed. The plain language of the claims simply require the printer to be
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`distinct (or “remote”) from the components that carry out the other claimed steps.
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`Providing the commercial printing system of Dorfman with a plate-ready file as
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`taught by Apogee renders claims 10 and 16 obvious. Nothing in these claims, or in
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`the claims dependent therefrom, require the facilities to be geographically remote
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`from one another, whether that means different rooms in the same building,
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`different buildings in the same city, or in different cities altogether. The scope of
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`the challenged claims, even after improperly reading a central service facility into
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`the claims as done by Patent Owner, is broad enough to cover all of these
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`scenarios. (See Ex. 2017 at 103:21 – 104:14, Prof. Lawler testifying that one
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`15
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`Case IPR2014-00788
`Petitioners’ Reply Brief
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`skilled in the art would not interpret Fig. 1 of Dorfman as limiting the location of
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`the described elements (i.e., claimed facilities, to any particular location or area.)
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`Further, Patent Owner misguidedly argues that the combination of Dorfman
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`and Apogee is distinguishable from the challenged claims because the creation of
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`the PDF file is carried out at the end-user, and not the central service facility.
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`(Resp. at 40-42.) First, as specified above, there is absolutely no requirement in
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`the challenged claims that any of the recited functions occur at a central service
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`facility. Second, even setting this dispositive distinction aside, Patent Owner is
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`incorrect that the creation of the PDF file occurs at the end-user. Dorfman
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`explicitly states that “[t]he PDF builder 6 [which resides at a remote location from
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`the end-user] then creates a dynamic PDF file on-the-fly…” (Ex. 1007 at p. 7, l.
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`28; see also id. at p. 6, ll. 4-6.) Thus, the PDF file is created at a location remote
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`from the end user, specifically the PDF builder 6 which, in conjunction with the
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`memory 4, constitute a central service facility.
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`Claims 14-15. For at least the reasons set forth above, claims 14 and 15 are
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`unpatentable in view of Dorfman, Apogee, and Andersson. As to claim 15, Patent
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`Owner alleges that Dorfman does not disclose logging files into a content
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`management database. However, as already recognized by the Board (Paper 9 at
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`23), Petitioners rely on Dorfman in combination with Andersson to teach this claim
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`limitation. (Petition at 49-51; Ex. 1021 at ¶¶ 131-133.) Yet again, without
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`16
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`Case IPR2014-00788
`Petitioners’ Reply Brief
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`considering the proposed combination as a whole, Patent Owner simply argues
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`against Dorfman, standing alone. (Resp. at 46.) Because Andersson teaches
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`logging files into content management databases/servers (Petition at 51, citing Ex.
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`1009 at 69), claim 15 should be canceled as unpatentable.
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`Claims 16, 17, 19, and 20. For at least the reasons set forth above, these
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`claims are unpatentable in view of Dorfman, Apogee, and OPI White Paper.
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`Patent Owner also alleges that its claims are distinguishable from Petitioners’
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`ground of unpatentability because Dorfman (allegedly) does not disclose
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`“providing a plate-ready file to a remote printer.” However, as clearly set forth in
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`the Petition, this limitation of the challenged claim is obvious in view of Dorfman
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`in combination with Apogee. (Petition at 55-56.) Seemingly without fail, Patent
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`Owner’s arguments (Resp. at 50) fail to take into consideration the proposed
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`combination and should be ignored. As to claim 19, Patent Owner does not
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`dispute that Apogee teaches the conversion of a PDF file to a plate-ready format.
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`(Resp. at 51.) Rather, Patent Owner reiterates its argument that Dorfman and
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`Apogee would not be combined, which Petitioners have addressed (pp. 11-14).
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`III. APOGEE WAS PUBLICLY AVAILABLE
`In its opening papers, Petitioners established, by a preponderance of the
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`evidence, that at least 76,030 of copies of the Apogee publication (Ex. 1007) were
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`printed and distributed to the public prior to the earliest priority date of the ‘155
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`17
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`Petitioners’ Reply Brief
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`patent. (See Ex. 1022 at pp. 3-4, 21.) Specifically, Petitioners provided the
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`declaration of Johan Suetens establishing that Apogee was distributed to the public
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`via Agfa sales personnel in the normal course of business shortly after a press
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`briefing held on March 17, 1998, but no later than May 28, 1998. (Id. at ¶¶ 8, 11.)
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`On April 2, 2015, Patent Owner simultaneously objected to Mr. Suetens
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`declaration and the Apogee exhibit (Exhibits 1022 and 1007, respectively) under
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`37 C.F.R. § 42.64(b)(1), and prematurely moved to exclude the same for allegedly
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`failing to establish public accessibility of Apogee. As Rule 42.64(b)(2) allows,
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`Petitioners served supplemental evidence on April 16, 2015 (Exs. 1023 and 1024).
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`Because supplemental evidence often moots an objection, motions to exclude are
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`only authorized at the close of trial, after all supplemental evidence has been
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`served. Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48758 (Aug. 14,
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`2012) (“Once the time for taking discovery in the trial has ended, the parties will
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`be authorized to file motions to exclude evidence believed to be inadmissible.”)
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`Similarly, because supplemental evidence may moot many disputes, the
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`Board has instructed that supplemental evidence is usually not filed at the time of
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`service. See, e.g., Handi-Quilter, Inc. v. Bernina Int’l AG, IPR2013-00364, Paper
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`30 at 3 (PTAB June 12, 2014) (“The Rules do not provide for such supplemental
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`evidence to be filed with the Board at the time it is served to the objecting party,
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`because the Board anticipates that a party’s objection to evidence may sometimes
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`18
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`Case IPR2014-00788
`Petitioners’ Reply Brief
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`be overcome by the supplemental evidence. In such situations, the objection
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`would not become the basis of a motion to exclude evidence under § 42.64(c), and
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`the Board need not be made aware of the objection or the supplemental
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`evidence.”). For this reason, the supplemental evidence was served on Patent
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`Owner, but not filed, on April 16.
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`Now, because the Motion to Exclude was filed, prematurely, mid-trial,
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`before supplemental evidence was served, Exhibits 1023 and 1024 are appropriate
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`Reply exhibits. See, e.g., Brookwood Co. Inc. v. Nextex Applications, Inc.,
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`IPR2014-00412, Paper 19 at 5 (PTAB Sept. 24, 2014) (recognizing that petitioner
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`evidence served in response to an evidentiary objection may later be filed via
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`petitioner’s reply and/or in opposition to a motion to exclude). As the
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`supplemental evidence of April 16 is both responsive to the outstanding Motion to
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`Exclude as well as the duplicate argument raised in Patent Owner’s Response, it
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`remains record evidence that further corroborates Apogee’s public accessibility.
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`First, Petitioners served the Supplemental Declaration of Johan Suetens (Ex.
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`1024). There, Mr. Suetens explains exactly how Agfa’s Enterprise Management
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`System works and how Agfa monitored the dissemination of brochures and other
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`documents like Apogee (Ex. 1007) during the regular course of business. In
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`particular, Agfa’s Enterprise Management System logged requests from Agfa’s
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`regional offices for copies of brochures and other documents (see Ex. 1024 at ¶¶ 6,
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`19
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`Case IPR2014-00788
`Petitioners’ Reply Brief
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`10-11, Attachment E), and then logged the date when the ordered brochures were
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`printed and delivered to Agfa’s warehouses (see Ex. 1024 at ¶¶ 6, 12, Attachment
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`F). Following
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