Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 34
`Entered: July 23, 2015
`
`RECORD OF ORAL HEARING
`
`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.
`
`- - - - - - -
`
`Cases IPR2014-00788 and -00789
`Patent 6,738,155
`
`Cases IPR2014-00790 and -00791
`Patent 6,611,349
`
`Technology Center 2600
`
`- - - - - - -
`
`Oral Hearing Held on Tuesday, June 30, 2015
`
`
`
`Before: HOWARD B. BLANKENSHIP, BENJAMIN D. M. WOOD,
`and BRIAN J. McNAMARA, Administrative Patent Judges.
`
`
`
`The above-entitled matter came on for hearing on Tuesday, June 30,
`2015, at 1:00 p.m., in Hearing Room D, taken at the U.S. Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`571-272-7822
`
`
`Paper No. 34
`Entered: July 23, 2015
`
`RECORD OF ORAL HEARING
`
`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.
`
`- - - - - - -
`
`Cases IPR2014-00788 and -00789
`Patent 6,738,155
`
`Cases IPR2014-00790 and -00791
`Patent 6,611,349
`
`Technology Center 2600
`
`- - - - - - -
`
`Oral Hearing Held on Tuesday, June 30, 2015
`
`
`
`Before: HOWARD B. BLANKENSHIP, BENJAMIN D. M. WOOD,
`and BRIAN J. McNAMARA, Administrative Patent Judges.
`
`
`
`The above-entitled matter came on for hearing on Tuesday, June 30,
`2015, at 1:00 p.m., in Hearing Room D, taken at the U.S. Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`Cases IPR2014-00788 and -00789 (Patent 6,738,155)
`Cases IPR2014-00790 and -00791 (Patent 6,611,349)
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`
`SCOTT A. McKEOWN, ESQ.
`
`CHRISTOPHER RICCIUTI, ESQ.
`
`
`Oblon, McClelland, Maier & Neustadt, LLP
`
`
`1940 Duke Street
`
`
`Alexandria, Virginia 22314
`
`
`703-413-3000
`
`
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`
`
`
`
`
`
`W. EDWARD RAMAGE, ESQ.
`Baker, Donelson, Bearman, Caldwell and Berkowitz, PC
`Baker Donelson Center, Suite 800
`211 Commerce Street
`Nashville, Tennessee 37201
`615-726-5771
`
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`Cases IPR2014-00788 and -00789 (Patent 6,738,155)
`Cases IPR2014-00790 and -00791 (Patent 6,611,349)
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`P R O C E E D I N G S
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`(1:00 p. m.)
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`JUDGE Mc NAM AR A: Please be seated. Good
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`afternoon, ever yo ne. This is the co nsolidated hearing in
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`IPR2014 -00788 and 789. Those two involve U.S . Pa tent
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`6,738,155. And c ases IPR2014 -00790 and 791. And those
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`involve Patent 6, 611,349.
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`Let me ask counsel to please begin b y introducing
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`the mselves. We will start with the Patent Own er , pl ease.
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`MR. RAMAGE: Edwa rd Ra mage with Baker
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`Donelson. I r epr esent the Patent Owne r.
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`MR. Mc KEOWN: S cott Mc Keown and Chris
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`Ricciuti for Petitioners, Kodak, AGFA, ES KO and Heidelberg.
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`JUDGE Mc NAM AR A: Thank you ver y much .
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`Welco me to the P atent T ri al and Appeal Board.
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`Toda y each side will have 90 minu tes of total
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`argu ment ti me. And we will begi n with the Petitioner because
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`he has the burden to present his c a se, so he will pre sent his
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`case with respect to the challenged clai ms on the bas is on
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`which we instituted trial. Afte r th at the P atent Own er will
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`argue its opposition to the Petitioner's case.
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`The Patent Owne r also has, I think, presented so me
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`motions to exclude. And since the burden of persuas ion is on
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`the Patent Owner there, as to its m otions, he will ar gue those
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`at that ti me .
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`Cases IPR2014-00788 and -00789 (Patent 6,738,155)
`Cases IPR2014-00790 and -00791 (Patent 6,611,349)
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`The Petitioner ma y then use an y ti me it reserved to
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`rebut the Patent Owne r's opposition and oppose the motions to
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`exclude. And we will conclude with the Patent Own er's
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`rebuttal to the opposition to the motions t o exclude.
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`One other thing as a preli minar y matter, I note that
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`neither side has f iled an y de monstratives in this case , so none
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`will be pe r mitted at this hearing.
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`If a part y does di splay a docu ment or a pa rt of a
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`docu ment that is of record , the par t y m ust identif y where in
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`the pleadings, the pleading and the page nu mber , that
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`displayed docu me nt is cited, otherwise you will be asked to
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`re move an y docu ments displa yed.
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`Is ever ybod y read y to proceed? Ok a y.
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`We will begin with the Petitioner. And would you
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`like me to alert you as to an y ti me ?
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`MR. Mc KEOWN: I don't think tha t's necessar y,
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`Your Honor, but t hank you.
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`Good afternoon, Your Honors. As you mentioned,
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`this is a consolidated hearing ac ro ss four differ ent
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`proceedings, two of which are dire cte d to each pate nt. I' m
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`unlikely to take t he full 90 minute s but I will res erv e what ever
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`I don't use in this brief introduction as rebuttal so I will
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`probably go about 15 or 20 minute s here.
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`I know the Board has read the brief s, and judging
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`fro m the insti tution order understa nds the issues we ll so I will
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`Cases IPR2014-00788 and -00789 (Patent 6,738,155)
`Cases IPR2014-00790 and -00791 (Patent 6,611,349)
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`get right to the i mportant issues. Both the '349 and '155
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`patents are dire ct ed to pre -pr ess work flow. And as the Board
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`is awa re, what th at is, is ever ything that happens up until
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`press, which is u p unti l printing.
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`So it is color corr ection. It is proo fing. It is all of
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`the things that yo u would do and p osition OPI to a d ocu ment
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`in order to get it read y to be printed.
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`The '155 and the ' 349 patent, what the y present as
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`the invention is the sort of au to ma ting of what are e ssentially
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`all well -known pr e -press processes, whether it is t yp esetting,
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`et ceter a. So wha t we ar e talking a bout here is an as se mbl y of
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`known processes that are interconnected via net work .
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`Specificall y clai ms 10 through 20 of the '155 ar e
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`directed towards accessing i mages at a se rver , that a spect of a
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`pre-press process. There is so me c orresponding apparatus
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`clai ms that prese nt si milar fe ature s but in a pr e -pre ss
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`architecture.
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`'349 si milarl y has method and appa ratus clai ms
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`where the method clai ms are gener all y talking about i mage
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`manipulation, whereas apparatus cl ai ms 1 through 3 get to the
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`architecture.
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`So we have two main grounds in both of these
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`patents, ref erence s co mmon to both of these patents, and that's
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`the Jebens plus t he Apogee re feren ce, and the Dorf man plus
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`Apogee, and ther e ar e a couple other r efer ences that are mixed
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`Cases IPR2014-00788 and -00789 (Patent 6,738,155)
`Cases IPR2014-00790 and -00791 (Patent 6,611,349)
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`in there for so me of the dependent clai ms , but these get two
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`features, such as i mposition and OPI which ar e, fr ankly,
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`ad mitted in the specification as wel l known.
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`So I' m going to ta lk pri ma ril y about Jebens and
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`Apogee and Dorf man and Apogee as that's sort of t he focus of
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`the briefing to da te.
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`The pri ma r y a rgument fro m Patent ee as to Do rf man
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`is the concept tha t Dorf man, while a pre -pr ess work flow, is
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`so mehow li mit ed in application to the t ype of pr ess t hat the
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`output goes to or what happens at the end.
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`And the a rgu ment is, well , bec ause Dorf man has
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`this te mplate -bas ed pre -press , it is probabl y better s uited to
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`s maller print jobs and, the refore , t o at tach a plate at the end
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`and have sort of a high volu me out put is so mehow a teaching
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`awa y fro m what is in the Dorf man referenc e where i t changes
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`the operating principle.
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`And what we've said in the petition and what the
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`Board said in the institution was, w ell, Dorf man is a front end
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`and it talks about printing in large quantities. It tal ks about
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`using conventional printing technology.
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`So what happens once you get through the
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`pre-press and ho w you appl y it do esn't change the operating
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`principle, doesn't c hange an ything. The s yste m still works
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`exactl y the wa y t hat it is designed to work. You jus t print out
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`either s mall volume or large volume .
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`Cases IPR2014-00788 and -00789 (Patent 6,738,155)
`Cases IPR2014-00790 and -00791 (Patent 6,611,349)
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`So that argu ment has si mpl y been r eiterated in the
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`briefing. The Pat ent Owner's respo nse doesn't mention the
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`institution order, doesn't rebut it. The decl aration mentions
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`that the declarant read the institution order. He doesn't
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`an ywhe re refe ren ce it.
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`So there has been no rebuttal of wh at the Boa rd has
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`held, which is Do rf man discloses a pre -press work fl ow and
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`that conventional printing technolog y that's on the b ack end is
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`whatever you wan t it to be, and the n that's exactl y what
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`Dorf man teaches is, well, you can use, whether it is offset
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`printing or digital printing, that's u p to you, but here is the
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`front end s yste m.
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`So that hasn't changed and there is no reason to
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`disturb what is es sentially the r eco rd as to Dorf man.
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`The next pri mar y argu ment as to Je bens gets into
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`OPI , which is des cribed in all of th ese patents as kn own, the y
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`mention man y dif ferent soft war e p ackages that do OPI but,
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`nevertheless, the y argue that Jebens doesn't in its wor k order
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`flow show or call out the word repl ace.
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`And that's not r esponsive to the petition because
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`we didn't cite to t he work flow for that aspect of OP I. We
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`cited to figu re 4 - C which shows OPI right ther e in t he flow
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`chart. And then t here is discussion later of how that work
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`flow a ctuall y use s that OPI.
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`Cases IPR2014-00788 and -00789 (Patent 6,738,155)
`Cases IPR2014-00790 and -00791 (Patent 6,611,349)
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`But instead of foc using or rebutting an y of that,
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`what the Patentee focuses on is a l ong explanation about how
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`work o rders are p rocessed in Jeben s. So that doesn't reall y get
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`to what the petition cited and it's r eall y non -r esponsive to
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`these grounds. We relied on figure 4 -C and its ac compan ying
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`description in the specification.
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`So, again , that's a nother aspect of t he record that's
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`just si mpl y ignor ed. We didn't r ely on the work flo w. We
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`relied on figure 4 -C.
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`The vast ma jorit y of the argu ments relating to
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`Dorf man and Jebe ns are dir ected to wards, well, the c lai ms
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`require a central server do X, or the P DF has to be c reated at
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`this location, but none of those locations are in the c lai ms .
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`And we pointed a ll of this out in th e briefing so I
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`a m not going into detail. I know th at you read it. The clai ms
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`are quite broad . The y don't r equire an y specific co mponent, at
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`least for what has been a rgued here to do these things.
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`For exa mple , in t he '349, clai ms 1 and 3 don't call
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`out OPI . Clai m 2 does. And we ci ted to, again , figu re 4 -C for
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`OPI . So all of these argu ments ab out, you know, th e central
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`server has to do c ertai n steps, it is just not in the cla i ms.
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`And the absence of that is particul arl y relevant
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`because the speci fication even e mp hasizes that an y o f these
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`ele ments can do a n y of these functi ons, so when you don't call
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`it out in the clai m as point X doing functi on Y, you c an't li mit
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`Cases IPR2014-00788 and -00789 (Patent 6,738,155)
`Cases IPR2014-00790 and -00791 (Patent 6,611,349)
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`the clai m that wa y be cause it is not in the clai m and the
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`specification makes clear that an y of these points ca n do an y
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`of these processe s.
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`So what it co mes down to on all of these grounds,
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`Jebens and Apoge e, is the a rgu ment s that w e have se en fro m
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`the Patentee are s tories that, although interesting, ar e not
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`responsive to the institution order. The y are not res ponsive to
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`the petition. So I don't have a lot t o rebut here today.
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`The one thing that has been ne w since the
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`preli minar y response is the decla ra tion of the video expert that
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`the Patent Owner has hired. And what we see fro m t he
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`Stevenson declara tion is largel y a c ut -and -paste fro m the
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`Patentee a rgu ments. It is the sa me exact language. I t is ver y
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`conclusory.
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`Again, it ac knowl edges that the institution order
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`was read. No whe re is an y finding of the institution order
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`rebutted. It is jus t this sort of pick ing an aspect of t he
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`specification to tr y to tell a differ e nt stor y that we h aven't
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`relied upon.
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`If you look at the te chnical backgr ound of Mr.
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`Stevenson, he is an i maging and video expert. Wh e n he was
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`deposed, he had n ever worked for a printer, never de signed a
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`pre-press work fl ow, didn't understand i mposition, h ad to
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`Google ter ms in t he specification. So he is clearl y n ot one of
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`skill in the art.
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`Cases IPR2014-00788 and -00789 (Patent 6,738,155)
`Cases IPR2014-00790 and -00791 (Patent 6,611,349)
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`Further mo re, he is a District Court expert. When
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`he was asked wh y his declaration was directed to validity he
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`confir med that he applied a pr esu mption of validity and that
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`was the anal ysis that he did.
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`So when you consider that and you look at so me of
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`the conclusor y st ate ments about the clai m scope, we ll, the
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`clai m me ans X be cause it is in the specification, he was
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`clearl y appl ying a Phillips construction there and the re is no
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`explanation whatsoever an ywher e i n the declar at ion of a BRI
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`anal ysis or an ythi ng.
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`It is just si mpl y a cut -and -paste of conclusions
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`fro m the Patentee response. So we think his declara tion is
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`plainly unreliable.
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`MR. Mc NAM AR A: Counsel, ther e ar e just two
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`concepts there th at you sort of put together, and I understand
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`that the clai m construction concept we applied broadest
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`reasonable versus District Court Ph illips, but you als o talked
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`about presu mption of validit y.
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`But isn't the burd en of proof in our proceeding on
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`the Petitioner?
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`MR. Mc KEOWN: Tha t's correct . There is a
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`presu mption of p atentability here , but that presu mpt ion is not
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`tied to a cl ear an d convincing standard.
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`Cases IPR2014-00788 and -00789 (Patent 6,738,155)
`Cases IPR2014-00790 and -00791 (Patent 6,611,349)
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`JUDGE Mc NAM AR A: All right. I just wanted to
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`make sure I under stood what you were getting at , ok a y, all
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`right, because cle ar and convincing standard does not appl y.
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`MR. Mc KEOWN: Sur e, there is a presu mption
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`here as there is a presu mption in District Court but t he y are
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`just tied to diff er ent inventions.
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`JUDGE Mc NAM AR A: Oka y.
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`MR. Mc KEOWN: So that's sort of where we a re on
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`the pri mar y refe r ences. As the Board is a war e as to Apogee ,
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`which is the s econdar y refe rence , or one of the seco ndar y
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`referenc es, I shou ld sa y, in the vast ma jorit y of the g rounds,
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`we we re se rved with objections under 42.64(b)(1) .
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`Not surprisingly, under 42.64(b)(2) we served
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`supplemental evi dence. There is n othing nefarious or sneak y
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`about that. In fa c t, that's entirel y p redictable. So I don't quite
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`understand this Trojan Horse argu ment that we se e in the
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`motions to exclude.
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`Wh en you obje ct you t ypic all y get supplemental
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`evidence. That 's just how the s yste m works . But, ag ain, much
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`like the grounds in this case, the P atentee has ignor ed that
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`evidence as well and sort of r efuse d to even a cknowledge its
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`existence in the r ecord. The y have not deposed a n y of these
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`witnesses. The y just ignored it.
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`The re maining ar gu ments, again, g et to sort of the
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`location processing in the clai ms, which is unrecite d. Ther e is
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`Cases IPR2014-00788 and -00789 (Patent 6,738,155)
`Cases IPR2014-00790 and -00791 (Patent 6,611,349)
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`argu ments as to Dorf man being li mi ted to all of the p rinting
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`and central se rver being in one roo m and, therefor e, that figure
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`should be li mited to that.
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`And we've got testi mon y fro m our expert sa ying,
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`well, one of skill in the art could re cognize that you could
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`move those wher e ver you want. The y are network
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`co mponents. And , again , there is n o rebuttal of that . There is
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`just, well , figure 1 is li mited .
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`So we a re just sor t of left with two sides of the
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`story, one of whi ch is attorne y a rgu ment and one of which is
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`based in the evid ence.
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`There is an argu ment about Jebens which, to be
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`honest, I don't qu ite understand about Jebens so meh ow sets up
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`different net works because there is a log -in to the se rver.
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`Their speci fication has the sa me lo g -in at colu mn 14 . So I' m
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`not reall y sure what that is all about.
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`The y have an Inte rnet e mbodi ment in th e
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`specification. Of course ther e is di fferent connections going
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`on. The y are all i nternetworked. That's how the s yst e m
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`works. That's ho w the y desc ribe it .
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`Apogee is what is relied upon for t he plate -read y
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`aspect or the cre a tion of a plate - re ad y file in these grounds.
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`The y a rgue that Apogee is li mited t o creating that file at the
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`printer. Our expe rt has said that's not the case. Als o, we rel y
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`on that teaching. We ar e not ph ysi call y co mbining Apogee
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`Cases IPR2014-00788 and -00789 (Patent 6,738,155)
`Cases IPR2014-00790 and -00791 (Patent 6,611,349)
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`with these r efer ences. And it is pr e tty cle ar, no t onl y in these
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`referenc es, but their own patent, that you can move t hese
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`features all over t he architecture as needed.
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`So, again , we have evidence as to t hat. We don't
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`necessaril y rel y o n the ph ysical co mbination. It is t he
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`teaching fro m Ap ogee that m odifie s the Dor f man and Jebens
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`grounds.
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`So that's where we ar e. That's wha t I have . And
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`unless there are f urther questions I will reserve the r e mainder
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`for rebuttal.
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`JUDGE Mc NAM AR A: Oka y. Co unsel, thank you.
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`Actuall y you have 75 minutes left .
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`MR. Mc KEOWN: Oka y.
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`MR. RAMAGE: Well, hopefull y you won't need to
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`take that long for rebuttal.
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`JUDGE Mc NAM AR A: Do you wa nt me to alert
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`you to an y pa rtic ular ti me fra me o r ar e you oka y?
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`MR. RAMAGE: I don't think that I will be needing
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`an y assistance in ke eping track of t he ti me for this o ne, Your
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`Honor.
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`JUDGE Mc NAM AR A: All right. Thank you .
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`MR. RAMAGE: Edwa rd Ra mage f or the P atent
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`Owne r. Since we do have the burden of proof with r egard to
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`the motion to exc lude, I would like to go ahead and address
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`Cases IPR2014-00788 and -00789 (Patent 6,738,155)
`Cases IPR2014-00790 and -00791 (Patent 6,611,349)
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`that first and add ress the conce rns that the y have ha d with
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`regard to the page li mit.
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`I think it is clea r fro m the record with regard to,
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`you know, what c aused the first mo tion, supple menta l
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`evidence leading to what has been called as the seco nd motion.
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`I think this can b e easil y r esolved depending upon how the
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`Board treats the f irst motion.
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`The Petitioners have basicall y trea ted it as
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`objections on the record. And, You r Honors, we hav e no
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`objection to this Board also tre ating that first motio n as
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`objections on the record. And all of our a rgu ments with
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`regard to an y o f t he evidence with regard to excludi ng the
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`evidence is contained in our second motion.
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`JUDGE Mc NAM AR A: What is the obje ction?
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`MR. RAMAGE: There are actuall y t wo ob jections,
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`two pri ma r y obje ctions. One is wi th the original Ap ogee and
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`the original decla ration, and then t he next is with what has
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`been called supple mental evidence, but what clearl y is
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`supplemental infor mation.
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`Would you - - I c a n start with one o r the other .
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`JUDGE Mc NA M AR A: Motions to exclude ar e
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`filed to be consistent with objections under the Fede ral Rules
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`of Evidence . So I' m wondering wh at section of the Federal
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`Rules of Evidence you are objecting under?
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`14
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`Cases IPR2014-00788 and -00789 (Patent 6,738,155)
`Cases IPR2014-00790 and -00791 (Patent 6,611,349)
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`MR. RAMAGE: With regard to the Apogee , we
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`have objected to i t on the basis of not being relevant, as not
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`being -- basicall y as not being prio r art that has an e stablished
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`publication date.
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`JUDGE Mc NAM AR A: Oka y. But not prior a rt and
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`the established publication date is a substantive arg u ment. Is
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`there an ob je ction under the Federa l Rules of Eviden ce? Is it
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`hearsa y?
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`MR. RAMAGE: Other than releva nce, Your
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`Honor, I me an, an d, quite honestl y, we know the Boa rd's
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`preference to r ece iving evidence and then giving appropriate
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`weight, we would be fine if the Bo ard considered, you know,
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`accepted Apogee but then deter min ed that it was not
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`applicable prior a rt because the re was no publication date.
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`JUDGE Mc NAM AR A: He re is the issue, and it is
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`an issue because i f it wer e a substantive argu ment , t hen it
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`would have been appropriate to ad dress it in the Pat ent Owner
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`response and not in a motion to ex clude.
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`So addressing it i n a motion to exc lude, our
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`concern is that's just an end run a round the page li mi t in the
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`Patent Owner res ponse.
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`MR. RAMAGE: There has been no end run, Your
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`Honor, be cause it was full y addres sed in actuall y the Patent
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`Owne r's responses in full in e ach o f those.
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`JUDGE Mc NAM AR A: Oka y.
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`Cases IPR2014-00788 and -00789 (Patent 6,738,155)
`Cases IPR2014-00790 and -00791 (Patent 6,611,349)
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`MR. RAMAGE: I t was included wi thin the Patent
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`Owne r's response.
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`JUDGE Mc NAM AR A: Can you ci te to me where in
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`the Patent Owner response it is addressed?
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`MR. RAMAGE: Yes, Your Honor. And you want
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`the paper nu mber s as well?
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`JUDGE Mc NAM AR A: Yes , i f yo u could. I just
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`need to know, it's in the P atent Owner response you' re talking
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`about. So if you can tell me where in the P atent Owner
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`response.
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`MR. RAMAGE: Certainl y.
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`JUDGE Mc NAM AR A: A page ran ge or so mething
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`like that would b e helpful.
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`MR. RAMAGE: I can tell you the exact page
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`nu mber .
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`JUDGE Mc NAM AR A: Oka y. Gre at.
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`MR. RAMAGE: For the 788 it is page 53. For the
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`789 it begins on page 46. For the 790 it begins on page 53.
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`And for the 791 i t begins on page 39.
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`Your Honor, you will find that the argu ments
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`raised, in fact , a r e al most identical with the argu men ts that
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`were raised in the initial motion, with regard to Apogee.
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`JUDGE Mc NAM AR A: All right. And that's in the
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`Patent Owner res ponse. Oka y.
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`Cases IPR2014-00788 and -00789 (Patent 6,738,155)
`Cases IPR2014-00790 and -00791 (Patent 6,611,349)
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`MR. RAMAGE: Yes. So the y a re , in fact , in the
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`Patent Owner 's r e sponse. We have no intent to tr y to avoid
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`an y of the page li mits.
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`JUDGE Mc NAM AR A: Oka y.
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`MR. RAMAG E: With regard to Su etens, what we
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`have was the c ase wher e his decl ar ation that was originally
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`filed was wholl y unsupported b y hi s deposition testimon y.
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`We have sub mitte d that deposition testi mon y, and I
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`will not belabor you with rega rd to individual ci tations to his
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`declaration, how the y wer e underc ut b y his deposition
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`testi mon y. That's a matter of r ecor d, both in the Pat ent
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`Owne r's response and also in that f irst motion, whic h we ar e
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`construing as objections on the rec ord.
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`JUDGE Mc NAM AR A: All right. Because, as I
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`recall, Suetens in his declaration d oesn't testif y as t o personal
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`knowledge. He s a ys he looked at t he archives. Right?
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`MR. RAMAGE: Correct.
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`JUDGE Mc NAM AR A: So Suet ens' testi mon y is
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`perhaps closer to his assess ment of the business rec o rds?
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`MR. RAMAGE: I n fact, it turns ou t when
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`questioned about that he is not a cu stodian of the business
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`records. There is nothing to actuall y support that what he was
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`looking at was th e business record s.
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`And in his deposition testi mon y wh en we were
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`talking about something that could possibly have be e n a
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`Cases IPR2014-00788 and -00789 (Patent 6,738,155)
`Cases IPR2014-00790 and -00791 (Patent 6,611,349)
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`business record if introduced b y th e appropriate indi vidual, he
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`said he had no kn owledge of, basic all y, he wasn't involved
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`with the prepa rati on of that docu me nt or the mainten ance of
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`that docu ment.
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`JUDGE Mc NAM AR A: I se e. Oka y.
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`MR. RAMAGE: With regard to the supple mental
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`declaration and the declar ation of J ahn, those ar e, if you look
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`at the substance o f those, those qui te clearl y are wha t this
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`Board has constru ed as supple mental infor mation, n ot
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`supplemental evi dence.
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`JUDGE Mc NAM AR A: Oka y. Let me ask you
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`another question about that. And, again, this to so me extent
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`goes to procedure and, pe rhaps, ma ybe sort of a ques tion on
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`dela ying things too long in one of these proceedings.
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`You didn't take a deposition, a se cond deposition
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`of Suetens or a deposition of Jahn, is that right?
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`MR. RAMAGE: No, Your Honor, we did not.
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`JUDGE Mc NAM AR A: Oka y. All right. The trial
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`practice guide pr ovides that if so mething co mes along after
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`your, you know, a fter your final substantive paper that you can
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`file motions for o bservations on cross -exa mination.
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`Wh y wouldn't tha t have been the a ppropriate
`
`avenue here as op posed to a motion to exclude?
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`MR. RAMAGE: This is supple me ntal infor mation,
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`Your Honor. This i sn't supple ment al evidence. If , i n fact,
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`Cases IPR2014-00788 and -00789 (Patent 6,738,155)
`Cases IPR2014-00790 and -00791 (Patent 6,611,349)
`
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`these declarations had even appeare d to be supple me ntal
`
`evidence then, ye s, we probabl y would have taken their
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`depositions to deter mine whether o r not the y address ed the
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`initial question of whether or not the Suete ns decl ara tion, the
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`original Suetens declaration, and t he Apogee refe re nce should
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`be ad mitted as evidence.
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`And we have alre ad y addressed I note the Apogee
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`use, as to whether or not that was a proper evidentiar y
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`question as opposed to a question on the me rits .
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`JUDGE Mc NAM AR A: Then distinguish for me in
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`your mind what t he distinction is between supple mental
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`evidence and supple mental infor mation.
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`MR. RAMAGE: I can quote you.
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`JUDGE Mc NAM AR A: Sure . Wh atever you want
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`to do. Ho wever you want to handle it . I just want to clarif y
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`your position on it.
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`MR. RAMAGE: I will quote this B oard fro m its
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`Handi Quilter dec ision.
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`JUDGE Mc NAM AR A: What is that IPR nu mb er?
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`MR. RAMAGE: I PR2013 -00364. This is Pape r 30
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`fro m that. It is t he me morandu m, conduct of pr ocee ding.
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`The Board stated: " We explained that we agre e
`
`with Patent Owne r's understanding, Section 42.123, addresses
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`the filing of supple mental infor mat ion, not supple me ntal
`
`evidence.
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`Cases IPR2014-00788 and -00789 (Patent 6,738,155)
`Cases IPR2014-00790 and -00791 (Patent 6,611,349)
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`"The diff erence i s that supple ment al evidence
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`served in response to an evidentiary ob jection and filed in
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`response to a mot ion to exclude is offered solel y to support
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`ad missibility of the originally file d evidence and to defeat a
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`motion to exclude that evidence and not to support an y
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`argu ment on the me rits, i .e ., rega r din g the patentability or
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`unpatentability of a clai m.
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`"Supple mental in for mation, on the other hand, is
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`evidence of part y intent to support an argu ment on th e merits .
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`Such evidence ma y onl y be filed if a Se ction 123 mot ion is
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`both authorized and granted."
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`Now, with rega rd to the specific ca se about
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`whether or not ev identiar y issues with regard to the
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`publication date or the date that th e Apogee re feren ce was
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`publicly available, in the decision of To yota Motor
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`Corporation versus Ame rican Vehic ular Sciences ,
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`IPR2013 -0417, P aper 78, the final written decision, footnote 1,
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`the Board stated: " We note that although there are e videntiary
`
`issues relating to Fr ye, the question of whether Fr ye
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`constitutes prior art is not itself an evidentiar y issue" -- as, in
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`fact, Your Honors alread y noted -- "rather, it is pa rt of the
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`substantive case t hat To yota must p rove."
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`So, ther efore , if you look at these t wo decla rations,
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`the supple mental declaration and the declar ation of J ahn,
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`which also has attached to it additi onal do cu ments i ncluding
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`Cases IPR2014-00788 and -00789 (Patent 6,738,155)
`Cases IPR2014-00790 and -00791 (Patent 6,611,349)
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`what appea r to be variations on the Apogee ref erenc e, what the
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`Petitioners are tr ying to do with those two decla rati ons is
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`introduce new evi dence on the me ri ts.
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`The y should not be able or per mitte d to do so and
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`this Board should strike those two declarations fro m the re cord
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`as i mp roperl y submitted supple men tal infor mation.
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`JUDGE Mc NAM AR A: Thank you .
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`MR. RAMAGE: Turning now to th e merits on the
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`decision, we agre e that the p ri mar y ref erences to be addressed
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`are Jebens, Dorf man and Apog ee.
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`With regard to Je bens, our position is that it
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`appears that the P etitioners misunderstand our basic argu ment .
`
`With regard to the ma jorit y of the clai ms at issue in all four --
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`excuse me , all two of the patents a nd all four of the
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`proceedings, one of the pri ma r y issues is whe re is a
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`plate-read y file b eing generated.
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`Petitioners see m t o argue that the s wapping out,
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`what the y a re call ing the OP I proce ss, the s wapping out of low
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`resolution files in a digital i mage fi le cre ated b y the end user
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`or a clie nt user, t hat that occurs at the central or the host
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`facilit y in Jebens.
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`Howeve r, what we have pointed out and with what
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`was basicall y disr egarded as job or ders versus wo rk orders
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`descriptions, is where Jebens is des cribing what it ac tually
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`does at the c entra l facilit y.
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`Cases IPR2014-00788 and -00789 (Patent 6,738,155)
`Cases IPR2014-00790 and -00791 (Patent 6,611,349)
`
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`All Jebens is doing at the central fa cility is taking
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`files, high resolution files,
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