UNITED STATES PATENT AND TRADEMARK OFFICE
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`________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`_______________
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`EASTMAN KODAK COMPANY, AGFA CORPORATION, ESKO SOFTWARE
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`BVBA, and HEIDELBERG, USA,
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`Petitioners,
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`v.
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`CTP INNOVATIONS, LLC,
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`Patent Owner.
`
`_______________
`
`Case IPR2014-00788
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`U.S. Patent No. 6,738,155
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`______________
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`
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`PATENTS OWNER’S RESPONSE IN OPPOSITION TO
`PETITIONERS’ REQUEST FOR REHEARING
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`________________
`
`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
`
`U.S. Patent No. 6,738,155
`
`______________
`
`
`
`PATENTS OWNER’S RESPONSE IN OPPOSITION TO
`PETITIONERS’ REQUEST FOR REHEARING
`
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`TABLE OF CONTENTS
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`TABLE OF CONTENTS
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`TABLE OF AUTHORITIES .................................................................................... ii
`TABLE OF AUTHORITIES .................................................................................. .. ii
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`I. ARGUMENT .................................................................................................... 2
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`I.
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`ARGUIVIENT .................................................................................................. ..2
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`A. Petitioners’ New Argument Regarding Apogee Does Not Change the
`A. Petitioners’ New Argument Regarding Apogee Does Not Change the
`Board’s Conclusion ......................................................................................... 2
`Board’s Conclusion ....................................................................................... ..2
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`
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`B. The Broad Properly Considered The Architecture of Jebens and Dorfman
`B. The Broad Properly Considered The Architecture of Jebens and Dorfman
`As Primary References. ................................................................................... 5
`As Primary References. ................................................................................. ..5
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`II. CONCLUSION ................................................................................................ 7
`II.
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`CONCLUSION .............................................................................................. . .7
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`i
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`TABLE OF AUTHORITIES
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`CASES
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) .............................................................................. 3
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` Page(s)
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`KSR Int’l Co. v. Teleflex, Inc.,
` 550 U.S. 398, 421-23 (2007) ............................................................................... 3
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`OTHER AUTHORITIES
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`37 C.F.R. § 42.71(d) .................................................................................................. 4
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`ii
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`On November 25, 2015, the Board issued its Final Written Decision
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`(“Decision”) finding that Petitioners failed to demonstrate that claims 10-20 of
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`U.S. Patent Number 6,738,155 (“the ’155 Patent”) were obvious over the alleged
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`prior art. Petitioners filed a Request for Rehearing (“Request for Rehearing”) on
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`December 22, 2015, asserting that the Board erred on two grounds: (1) the Board
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`overlooked evidence that Apogee discloses the provision of a plate-ready file to a
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`remote printer; and (2) the Board mistakenly looked to the architecture of Apogee
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`as the primary reference, instead of the architecture of Jebens or Dorfman,
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`respectively.
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`The Board has invited Patent Owner to file this response in opposition to the
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`Request for Rehearing. Patent Owner submits that the Final Written Decision was
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`correct and the Request for Rehearing should be denied because, as discussed
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`below: (1) the Board properly and completely considered the arguments based on
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`Jebens and Apogee, and Dorfman and Apogee, previously raised by the Petitioner,
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`and the specific argument raised in the Request for Rehearing has been waived;
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`and (2) the Board properly considered the architectures of Jebens and Dorfman as
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`primary references in view of Apogee as a secondary reference.
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`1
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`I. ARGUMENT
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`A. Petitioners’ New Argument Regarding Apogee Does Not Change the
`Board’s Conclusion
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`
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`For the first time in this proceeding, Petitioners argue that Apogee discloses
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`the provision of a plate-ready file to a remote printer with regard to the proposed
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`combination of Jebens and Apogee. This is not a valid basis for granting rehearing
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`for two reasons. First, even if the argument had been properly made, it would not
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`have changed the Board's conclusion that the subject claims were not obvious
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`based on Jebens in view of Apogee, or based on Dorfman in view of Apogee.
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`Second, because the argument was not previously made or addressed with regard
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`to the combination of Jebens and Apogee, Petitioners have waived it.
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`Apogee’s alleged disclosure of the provision of a plate-ready file to a remote
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`printer does not change the Board’s conclusion. As Patent Owner has previously
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`pointed out, it would not be obvious to a person of ordinary skill in the art to
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`replace or modify the job order developer and conduit function of the central
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`facility of Jebens with the Apogee PDF RIP process. The host system of Jebens
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`does not generate a PDF file from the document created by the agency (and, in
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`fact; does not process the document created by the agency at all, other than to
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`include it in a job order sent to a printer); does not disclose sending any form of a
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`processed document back to the agency; and does not disclose providing a plate-
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`ready file to a remote printer. See Stevenson Decl. (Ex. 2014), at ¶¶ 25-33. To the
`2
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`extent that Apogee discloses the generation of a plate-ready file in the form of a
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`PIF through the Apogee PDF RIP process, a POSITA would consider this process
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`to be taking place at the jobber or supplier, i.e., at a printing company facility. See
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`Stevenson Decl. (Ex. 2014), at ¶ 30; Lawler Depo. Tr. (Ex. 2017), at 31:12–32:4.
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`Thus, neither Jebens nor Apogee suggest that this process take place in the host
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`system of Jebens. In fact, such a modification would substantially change the
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`manner of operation of the central facility of the Jebens system. Stevenson Decl.
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`(Ex. 2014), at ¶¶ 30, 33. The proposed modification cannot render the prior art
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`unsatisfactory for its intended purposes. See MPEP 2143.01(V); In re Gordon, 733
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`F.2d 900 (Fed. Cir. 1984). Similarly, the proposed modification or teaching cannot
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`change the principle of operation of the prior art invention or reference. MPEP
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`2143.01(VI).
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`
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`The Board properly determined that the claims were not obvious in light of
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`the proposed combination of Jebens and Apogee. As the Board concluded,
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`“[e]vidence that a skilled artisan could have generated the plate-ready file at
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`Jebens’ host facility, without any evidence of a reason why the skilled artisan
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`would have done so, is insufficient to show obviousness.” Decision at 27 (citing
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`KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421-23 (2007)). In fact, the Board
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`considered Professor Lawler's deposition testimony in this regard, Decision at 24,
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`3
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`and concluded that the Petitioners had not met their burden of proof, Decision at
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`27.
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`With regard to the combination of Dorfman and Apogee, the Board similarly
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`concluded that there was “no evidence that a person of ordinary skill in the art
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`would have had reason to produce the plate-ready file anywhere other than at
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`Dorfman's production printing system.” Decision at 31. As the Board observed,
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`the proposed combination of Dorfman and Apogee suffers from the same
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`deficiency discussed above with regard to Jebens/Apogee. Id.
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`Petitioners’ argument also should be rejected because it has not been
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`previously raised in his matter with regard to the proposed combination of Jebens
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`and Apogee. A request for rehearing may not raise new arguments or grounds not
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`previously made or raised in the proceeding. “The burden of showing a decision
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`should be modified lies with the party challenging the decision. The request must
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`specifically identify all matters the party believes the Board misapprehended or
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`overlooked, and the place where each matter was previously addressed in a motion,
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`an opposition, or a reply.” 37 C.F.R. § 42.71(d).
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`Petitioners have not previously made the argument that Apogee teaches the
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`provision of a plate-ready file to a remote printer in the context of the proposed
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`combination of Jebens and Apogee. Petitioners assert that they raised this
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`argument at pages 31 and 46-48 of the Petition. Request for Rehearing at 2.
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`4
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`However, this is not so. The Petition at page 31 includes claim charts for the
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`proposed combination of Jebens and Apogee. For the claim element “providing
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`said plate-ready file to a remote printer,” Petitioners do not even mention Apogee,
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`and instead, cite only to Jebens. Petition at 31. Pages 46-48 of the Petition apply
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`only to the combination of Dorfman and Apogee, and not to the combination of
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`Jebens and Apogee. Id. at 46-48. The section of the Petition discussing the
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`proposed combination of Jebens and Apogee does not contain any statement or
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`assertion that Apogee teaches providing a plate-ready file to a remote printer.
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`Accordingly, for the combination of Jebens and Apogee, Petitioners have waived
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`any argument that Apogee discloses the provision of a plate-ready file to a remote
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`printer.
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`Petitioners have failed to meet their burden of showing that the Decision of
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`the Board should be modified on this first ground. Thus, the Request for
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`Rehearing should be denied.
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`B. The Broad Properly Considered The Architecture of Jebens and
`Dorfman As Primary References.
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`
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`Petitioners assert the Board mistakenly looked to the secondary reference
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`(Apogee) for architectural features relied upon in the primary references (Jebens
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`and Dorfman), and then suggested that Apogee would have to be modified to
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`transmit a plate-ready file to a remote printer. Request at 13. Petitioners are
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`5
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`incorrect. The Board properly considered modifying the primary references in
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`view of the secondary reference.
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`With regard to Jebens and Apogee, the Decision explicitly states that the
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`Board considered modifying Jebens in view of Apogee:
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`Petitioner asserts that “one of ordinary skill in the art would have been
`motivated to incorporate Apogee into the Jebens printing system to
`allow for a printing facility to produce a printing plate for offset
`printing.” Pet. 29. But Petitioner does not point us to any evidence—
`in Jebens, Apogee, or otherwise—that a person of ordinary skill in the
`art would have combined Jebens and Apogee in such a way that a
`plate-ready file would have been produced at Jebens’ host facility or
`end user facility rather than at its printing facility.
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`Decision at 26-27. That the Board considered Jebens’ architecture is also apparent
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`from its summary of the parties’ contentions. See, e.g., id. at 22-23 (finding that
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`Petitioners rely on Jebens to teach “storing files on a computer server,” “providing
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`said files to a remote client for the designing of a page layout,” and “providing said
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`plate-ready file to a remote printer.”). The Board similarly considered modifying
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`Dorfman as the primary reference, in view of Apogee as the secondary reference.
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`Id. at 30-32.
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`Accordingly, the Board properly considered the proposed modification of
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`the primary references (Jebens and Dorfman) in view of Apogee, the secondary
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`6
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`reference. Petitioners have failed to meet their burden of showing that the
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`Decision of the Board should be modified on this second ground. The Request for
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`Rehearing should be denied.
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`II. CONCLUSION
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`For the above reasons, Petitioners have failed to meet their burden of
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`establishing that the Board's Final Written Decision should be modified on either
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`ground. The Request for Rehearing should be denied in its entirety.
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`Dated: August 25, 2016
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`Respectfully submitted,
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`BAKER, DONELSON, BEARMAN,
`CALDWELL & BERKOWITZ, P.C.
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`
`
`/W. Edward Ramage/
`W. Edward Ramage, Reg. No. 50,810
`BAKER, DONELSON, BEARMAN,
`CALDWELL & BERKOWITZ, P.C.
`Baker Donelson Center
`211 Commerce Street, Suite 800
`Nashville, Tennessee 37201
`Tel: (615) 726-5771
`Fax: (615) 744-5771
`Email: ermage@bakerdonelson.com
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`Counsel for Patent Owner CTP
`Innovations, LLC
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`7
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that, on August 25, 2016, the foregoing
`Patent Owner’s Response in Opposition to Petitioners’ Request for Rehearing was
`served in its entirety via U.S. Express Mail, postage prepaid, and electronic mail
`upon the following:
`
`Scott A. McKeown
`OBLON, SPIVAK, MCCLELLAND,
`MAIER & NEUSTADT, LLP.
`1940 Duke Street
`Alexandria, VA 22314
`Tel: (703) 412-6297
`Fax: (703) 413-2220
`Email: cpdocketmckeown@oblon.com
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` cpdocketkiklis@oblon.com
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`/W. Edward Ramage/
`W. Edward Ramage, Reg. No. 50,810
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`8
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