Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 39
`Entered: September 21, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`EASTMAN KODAK CO., AGFA CORP., ESKO SOFTWARE BVBA, and
`HEIDELBERG, USA,
`Petitioner,
`
`v.
`
`CTP INNOVATIONS, LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-00788
`Patent 6,738,155 B1
`_______________
`
`
`
`Before HOWARD B. BLANKENSHIP, BENJAMIN D. M. WOOD, and
`BRIAN J. MCNAMARA, Administrative Patent Judges.
`
`WOOD, Administrative Patent Judge.
`
`DECISION
`Granting Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 39
`Entered: September 21, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`EASTMAN KODAK CO., AGFA CORP., ESKO SOFTWARE BVBA, and
`HEIDELBERG, USA,
`Petitioner,
`
`v.
`
`CTP INNOVATIONS, LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-00788
`Patent 6,738,155 B1
`_______________
`
`
`
`Before HOWARD B. BLANKENSHIP, BENJAMIN D. M. WOOD, and
`BRIAN J. MCNAMARA, Administrative Patent Judges.
`
`WOOD, Administrative Patent Judge.
`
`DECISION
`Granting Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`
`IPR2014-00788
`Patent 6,738,155 B1
`
`
`I.
`
`INTRODUCTION
`
`Background
`A.
`Eastman Kodak Co., Agfa Corp., Esko Software BVBA, and
`Heidelberg, USA (collectively, “Petitioner”) filed a request for rehearing
`(Paper 36, “Reh’g Req.”) of our Final Written Decision (Paper 35, “Final
`Dec.”). We requested (Paper 37) a response from CTP Innovations, LLC
`(“Patent Owner”), which was subsequently submitted (Paper 38, “Reh’g
`Req. Resp.”).
`Petitioner requests that we reconsider our decision that Petitioner has
`not demonstrated that claims 10–20 of U.S. Patent No. 6,738,155 (the ’155
`patent) are unpatentable. Patent Owner opposes. For the reasons set forth
`below, the request is granted.
`
`II.
`
`STANDARD OF REVIEW
`
`The burdens and requirements of a request for rehearing are stated in
`37 C.F.R. § 42.71(d):
`(d) Rehearing. . . . The burden of showing a decision should be
`modified lies with the party challenging the decision. The
`request must specifically identify all matters the party believes
`the Board misapprehended or overlooked, and the place where
`each matter was previously addressed in a motion, an opposition,
`or a reply.
`
`III. ANALYSIS
`
`The ’155 Patent
`A.
`The ’155 patent describes a publishing and printing system that is
`distributed among three “facilities”: An end user facility, where content is
`created; a central service facility, where files are stored; and a printing
`
` 2
`
`
`
`
`
`
`
`IPR2014-00788
`Patent 6,738,155 B1
`
`company facility (or printer), where documents are printed. Independent
`claims 10 and 16 are at issue in this case: claim 10 is drawn to a method that
`requires: (1) storing files; (2) providing the files to a remote user for
`designing a page layout; (3) generating a PDF from the designed page
`layout; (4) generating a “plate-ready file” from the PDF; and (5) providing
`the plate-ready file to a remote printer. Claim 10 is reproduced below:
`10. A method of providing printing and publishing services
`to a remote client in real time using a communication network,
`the method comprising:
`storing files on a computer server, the files containing
`information relating to images, text, art, and data;
`providing said files to a remote client for the designing of a
`page layout;
`generating a portable document format (PDF) file from the
`designed page layout;
`generating a plate-ready file from said PDF file; and
`providing said plate-ready file to a remote printer.
`
`Claim 16 is similar.
`We instituted an inter partes review of claims 10–20 based on the
`following five grounds of unpatentability:
`
`
`Basis
`§ 103(a)
`§ 103(a)
`
`Claims Challenged
`10–13 and 15–20
`14
`
`Reference[s]
`Jebens1 and Apogee2
`Jebens, Apogee, and
`Andersson3
`
`1 Jebens, US 6,321,231 (iss. Nov. 20, 2001) (Ex. 1005).
`2 Agfa Apogee, The PDF-based Production System (1998) (Ex. 1007).
`3 MATTIAS ANDERSSON ET AL., PDF PRINTING AND PUBLISHING, THE NEXT
`REVOLUTION AFTER GUTENBERG (Micro Publishing Press 1997)
`(“Andersson”) (Ex. 1009).
`
` 3
`
`
`
`
`
`
`
`IPR2014-00788
`Patent 6,738,155 B1
`
`
`Basis
`§ 103(a)
`§ 103(a)
`
`Claims Challenged
`10–13
`14 and 15
`
`Reference[s]
`Dorfman4 and Apogee
`Dorfman, Apogee, and
`Andersson
`Dorfman, Apogee, and OPI
`White Paper5
`
`Decision on Institution (“Dec. on Inst.”) 25. For purposes of this decision,
`we refer to the first two grounds as the “Jebens/Apogee” grounds, and to the
`last three grounds as the “Dorfman/Apogee” grounds.
`In our Final Decision, we construed “plate-ready file” to mean “a file
`that represents a page layout that has gone through prepress processing,
`including RIPing, and is ready to image to a plate using either a platesetter
`or imagesetter.” Final Dec. 10. We construed “remote printer” to mean “an
`offsite printing company facility accessible (by, e.g., an end user facility or
`central services facility) via a private or public communication network.”
`Id. at 12. Because RIPing is the final step in creating a plate-ready file, we
`construed “providing said plate-ready file to a remote printer” to require
`generation of the plate-ready file, including RIPing, at a facility other than
`the printing company facility. See id. at 26 (“Simply put, a printer cannot be
`‘remote’ with respect to itself. It follows that providing a plate-ready file to
`a ‘remote printer’ cannot be accomplished by the remote printer that receives
`the plate-ready file.”).
`
`§ 103(a)
`
`16, 17, 19, and 20
`
`
`4 Dorfman, WO 98/08176 (iss. Feb. 26, 1998) (Ex. 1006).
`5 Apple OPI White Paper (1995) (Ex. 1008).
`
` 4
`
`
`
`
`
`
`
`IPR2014-00788
`Patent 6,738,155 B1
`
`
`The Jebens/Apogee Grounds
`B.
`The Petition asserted that claims 10–13 and 15–20 would have been
`obvious over Jebens and Apogee, and that claim 14 would have been
`obvious over Jebens, Apogee, and Andersson. Pet. 23–38. Of the
`challenged claims, claims 10 and 16 are independent. For purposes of this
`discussion, we treat claim 10 as representative.
`In arguing that the combination of Jebens and Apogee renders claim
`10 unpatentable, the Petition generally relied on Jebens for its disclosure of a
`“digital data management system” that “can be used to coordinate design,
`prepress, and printing activities, by connecting the front-end users (e.g., page
`designers) to service bureaus and printing companies over a communication
`network.” Pet. 23. Petitioner relied on Apogee to teach the generation of a
`plate-ready file from a digital file (specifically, a PDF file) by subjecting it
`to prepress operations and then RIPing. Petitioner asserted that:
`[T]he generation of a plate-ready file involves subjecting the
`digital file to prepress operations (e.g., imposition, OPI, trapping,
`screening, color management, etc.) and then RIPing the digital
`file into a format that can be used, either directly or indirectly
`(e.g., via an imagesetter), to produce a printing plate. The same
`is disclosed in Apogee. See, e.g., Ex. 1007 at pp. 6 and 7
`(“Apogee Pilot normalizes the incoming files into PDF, collects
`the pages, imposes, does OPI image exchange and sends this
`imposed ‘digital flat’ to an Apogee PDF RIP. In the context of
`Apogee, the PDF RIP takes the device and format independent
`PDF digital master, and renders (rasterizes) it exactly for the
`selected output device. The result is a ‘Print Image File’ (PIF),
`that contains all the dots that will appear on the film or plate. . . .
`Apogee PrintDrive manages the Print Image Files (PIF) output
`by one or more RIPs, and controls output flow to a variety of
`output devices including Agfa imagesetters, proofers, and
`
` 5
`
`
`
`
`
`
`
`IPR2014-00788
`Patent 6,738,155 B1
`
`
`platesetters.”).[6] Petitioners rely upon Apogee in the claim
`charts below as showing what would have been well-known and
`understood to one of ordinary skill—namely, that in order for a
`printing plate to be produced, a software program that rasterizes
`the output of the prepress process must be incorporated into the
`printing system workflow to produce a plate-ready file. Thus,
`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.
`
`Id. at 28–29 (emphasis added). Notably, Petitioner did not rely on Apogee
`to teach providing a plate-ready file to a remote printer.7 Instead, Petitioner
`relied on Jebens to teach this limitation. Id. at 31.
`In its Response, Patent Owner argued, among other things, that claim
`10 requires that the plate-ready file be generated at, and provided from, the
`claimed central service facility, i.e., a facility separate from a remote client
`and a remote printer. PO Resp. 22. Patent Owner acknowledged that
`“Apogee discloses generating a plate-ready file in the form of a Print Image
`File (‘PIF’) through the Apogee PDF RIP process,” but contended that “a
`POSITA would consider this process to be occurring at the jobber or
`supplier, i.e., at a printing company facility.” Id. at 27 (citing Ex. 2014
`¶ 30).
`In its Reply, Petitioner first argued that “there is absolutely no
`requirement in claims 10 and 16 that the step of generating a plate-ready file
`must occur at a central service facility, or that the plate-ready file provided
`to the remote printer must come from a central service facility.” Reply, 2–3
`(emphasis omitted). But Petitioner contended that to the extent claim 10
`
`
`6 We refer to this quoted portion of Apogee as “Apogee Excerpt 1.”
`7 The Petition did not propose a construction for “remote printer.”
`
` 6
`
`
`
`
`
`
`
`IPR2014-00788
`Patent 6,738,155 B1
`
`requires generating a plate-ready file somewhere other than the printing
`company facility, one of ordinary skill “could predictably implement
`Apogee at a central services facility.” Id. at 4.
`In the Final Decision, we reiterated that “for the proposed
`combination of Jebens and Apogee to teach [providing a plate-ready file to a
`remote printer], either the end user or the host facility must produce the
`plate-ready file and provide it to the printer.” Final Dec. 26. We found,
`however, that “Jebens does not teach or suggest generating a ‘plate-ready
`file” and while “Apogee teaches generating a plate-ready file from a PDF,
`[it] does not teach or suggest providing it to a remote printer.” Id. We
`further stated that “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.” Id. at 26–27.
`In its Request for Rehearing, Petitioner’s primary argument is that the
`Board “overlooked directly contradictory evidence in the trial record.”
`Reh’g Req. 1. The evidence to which Petitioner refers is the following
`excerpt from Apogee:
`Apogee PrintDrive can be fed by multiple PDF RIPs over a
`TCP/IP network. This unique feature allows you to physically
`separate the rendering from the actual plate production, so your
`PDF RIP can be in the desktop department and the PrintDrive
`can sit next to the output device, even in another town.
`
`Id. at 7 (citing Ex. 1007, 7 (emphasis omitted)). We refer to this portion of
`Apogee as “Apogee Excerpt 2.” Petitioner argues that “contrary to the
`Board’s sole rationale for not finding claims 10–20 unpatentable, there is
`
` 7
`
`
`
`
`
`
`
`IPR2014-00788
`Patent 6,738,155 B1
`
`significant, documentary evidence of record—unrebutted, and relied on by
`Petitioners—that one of ordinary skill was well aware of generating plate-
`ready files at locations remote from the printing company facility (i.e., in
`another town).” Id. at 8. In response to this argument, Patent Owner
`contends that “Petitioners have not previously made the argument that
`Apogee teaches the provision of a plate-ready file to a remote printer in the
`context of the proposed combination of Jebens and Apogee.” Reh’g Req.
`Resp. 4.
`We are not persuaded to rehear our decision on the basis of this
`argument. First, it relies on evidence—Apogee Excerpt 2—and argument—
`that Apogee teaches providing a plate-ready file to a remote printer—that
`were not presented in the Petition with regard to the Jebens/Apogee grounds.
`Regarding Apogee Excerpt 2, which appears on page 7 of Apogee, Petitioner
`contends that “[p]age 7 of Apogee is cited by Petitioners no less than 15
`times throughout its petition, and specifically cited in Petitioners’ claim
`charts for the limitation of generating a plate-ready file.” Reh’g Req. 9
`(citing Pet. 31, 35, 46–48, and 56). Petitioner’s assertion does not
`demonstrate the Petition advanced this particular argument based on Excerpt
`2. As an initial matter, the citations to which Petitioner refers are to pages 6
`and 7, not to page 7 alone. This is significant because the citations generally
`were pinpoint citations to Apogee Excerpt 1—part of which appears on page
`6 and part of which appears on page 7—not to Apogee Excerpt 2.8 See Pet.
`
`
`8 In two cases, Petitioner cited Apogee at 6–7 to support the narrow
`proposition that the plate-ready file generated by Apogee could be output to
`either an imagesetter or platesetter. See Pet. 29, 44. In another case,
`Petitioner cited Apogee at 6–7 to support the contention that “Apogee
`discloses plate press printing using plate-ready files.” Id. at 54. The one
`
` 8
`
`
`
`
`
`
`
`IPR2014-00788
`Patent 6,738,155 B1
`
`28, 30–31, 35, 36, 43, 46, 56. Moreover, for the Jebens/Apogee grounds,
`Petitioner did not rely on Apogee to teach “providing said plate-ready file to
`a remote printer,” as it does in the Rehearing Request, but only to teach the
`steps of “generating a [PDF] file from the designed page layout,” and
`“generating a plate-ready file from said PDF file.” See id. at 28, 30–31, 35,
`36. Petitioner relied on Jebens, not Apogee, to teach this “providing” step.
`Id. at 31.
`A request for rehearing is not an opportunity to present new
`arguments or evidence that could have been presented in the petition.
`37 C.F.R. § 42.71(d). Petitioner had the burden to identify and explain the
`specific evidence that supports its arguments in the Petition. 35 U.S.C.
`§ 314(a). Thus, the petition itself must identify “[h]ow the construed claim
`is unpatentable” and must identify “specific portions of the evidence that
`support the challenge.” 37 C.F.R. § 42.104(b)(4)–(5) (emphasis added). We
`could not have overlooked Apogee Excerpt 2, as Petitioner contends,
`because Petitioner did not rely on it to support the Jebens/Apogee grounds.
`Moreover, as noted above, Petitioner relied on Jebens, not Apogee, to teach
`the “providing” step. Petitioner cannot rely on Jebens to teach the
`“providing” limitation in the Petition, and then argue in a Rehearing Request
`that we overlooked a portion of a different reference to teach this limitation.
`Accordingly, we are not persuaded that we misapprehended or overlooked
`any evidence or argument in determining that Petitioner did not show that
`claim 10 was unpatentable over Jebens and Apogee.
`
`
`exception in which Apogee Excerpt 2 was relied on was in the context of the
`Dorfman/Apogee grounds, and only with respect to dependent claim 12.
`This citation will be discussed below.
`
` 9
`
`
`
`
`
`
`
`IPR2014-00788
`Patent 6,738,155 B1
`
`
`Petitioner next argues that the Board misapprehended Petitioner’s
`obviousness grounds. Reh’g Req. 11–14. Petitioner asserts that the
`Jebens/Apogee grounds are based on Jebens as the primary reference, and
`relied on Jebens’ “specific system architecture” in which a “host system,
`routes to-be-printed files from a remote client to a remote . . . printer.” Id. at
`11. According to Petitioner, our decision “mistakenly looks to the secondary
`reference (Apogee) for architectural features relied upon in the primary
`references Jebens and Dorfman, and then suggests that Apogee would have
`to be modified to transmit a plate-ready file to a remote printer.” Id. at 13.
`We disagree that we misapprehended Petitioner’s Jebens/Apogee
`grounds. On the contrary, we expressly characterized Petitioner’s position
`to be 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.” Dec. 26–27 (citing
`Pet. 29). We noted, however, that Jebens does not teach or suggest
`generating a plate-ready file as we construed the term above, i.e., a file that
`has gone through prepress processing and that has been RIPed. Id. at 26.
`We further noted that although Apogee teaches generating a plate-ready file
`from a PDF file, “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 facilities or end user facility rather than
`at its printing facility.” Id. at 26–27. Recognizing that Jebens does not
`disclose generating a plate-ready file, we understand Petitioner’s argument
`to be that, to meet the claim language, Petitioner only needed to show that
`Jebens provides files of any type to a printer, where such files are RIPed and
`
`
`
`
`10
`
`
`
`IPR2014-00788
`Patent 6,738,155 B1
`
`thereby converted to a plate-ready file. This is incorrect. It is not sufficient
`that Jebens provides to a remote printer, e.g., a PDF file that has not been
`RIPed. RIPing is the final, and necessary, step in creating a plate-ready file.
`Thus, Petitioner needed to establish that the file that the proposed
`combination provided to the remote printer had been RIPed before
`transmission. Jebens alone fails to teach this, and, with respect to the
`Jebens/Apogee grounds, Petitioner relied on Apogee to teach RIPing a file to
`create a plate-ready file, not to teach that RIPing occurs someplace other
`than at the printer. That is why we determined that Petitioner’s showing was
`insufficient.
`
`C. Dorfman and Apogee
`In the Petition, Petitioner contended that claims 10–13 would have
`been obvious over Dorfman and Apogee, that claims 14 and 15 would have
`been obvious over Dorfman, Apogee, and Andersson, and that claims 16–20
`would have been obvious over Dorfman, Apogee, and OPI White Paper.
`Pet. 6–7. For independent claims 10 and 16, Petitioner relied on Apogee in
`the same way, and to the same extent, as with the Jebens/Apogee grounds.
`See Pet. 43, 44, 46, 54, 56. Accordingly, for the independent claims, our
`analysis above with respect to the Jebens/Apogee grounds applies equally to
`the Dorfman/Apogee grounds. Petitioner presented a different argument,
`however, with respect to claim 12. Claim 12 depends from claim 10, and
`additionally recites “wherein the step of providing said plate-ready file to a
`remote printer comprises communicating said plate-ready file to said remote
`printer via a communication network.” It is here, and only here, that
`Petitioner relies on Apogee Excerpt 2. Specifically, Petitioner contended
`that
`
`
`
`
`11
`
`
`
`IPR2014-00788
`Patent 6,738,155 B1
`
`
`Agfa [sic, Apogee] discloses that the plate-ready file can be sent
`to a remote printer via a communication network:
`Ex. 1007 at pp. 6–7: For ‘direct-to’ production, Agfa developed
`an output manager that is almost a system by itself: the Apogee
`PrintDrive. Apogee PrintDrive manages the Print Image Files
`(PIF) output by one or more RIPs, and controls output flow to a
`variety of output devices including Agfa imagesetters, proofers,
`and platesetters. . . . For volume applications, can be fed by
`multiple PDF RIPs over a TCP/IP network. This unique feature
`allows you to physically separate the rendering from the actual
`plate production, so your PDF RIP can be in the desktop
`department and the PrintDrive can sit next to the output device,
`even in another town.
`
`Pet. 47–48.
`
`Because we determined that Petitioner did not show that independent
`claim 10 would have been obvious over Dorfman and Apogee, we did not
`specifically address the claims depending from claim 10, including claim 12.
`Therefore, we did not address whether Apogee Excerpt 2 corresponds to the
`additional limitation of claim 12. Moreover, because Petitioner did not
`assert that Apogee Excerpt 2 corresponds to the “providing” limitation of
`claim 10, we did not consider that issue. In its Rehearing Request, Petitioner
`states that “[a]lthough Petitioners did not argue for a construction of the term
`‘remote printer,’ the Board’s construction of the term (i.e., an offsite printing
`company facility accessible via a private or public communication network)
`was squarely addressed with respect to claim 12 in the [claim] chart.” Reh’g
`Req. 10. According to Petitioner “[b]ecause ‘[a] broader independent claim
`[claim 10] cannot be nonobvious where a dependent claim stemming from
`that independent claim is invalid for obviousness [claim 12],’ the Board
`must institute rehearing to cancel claims 10–20 of the ’155 patent.” Id. at 11
`
`
`
`
`12
`
`
`
`IPR2014-00788
`Patent 6,738,155 B1
`
`(quoting Callaway Golf Co. v. Acushnet Co., 576 F.3d 1331, 1344 (Fed. Cir.
`2009)).
`We agree with Petitioner that we overlooked Apogee Excerpt 2 as it
`relates to claim 12. We do not believe, however, that the Board is generally
`obliged to comb through a Petitioner’s discussion of dependent claims to
`look for evidence or analysis that Petitioner should have cited to support its
`case with regard to independent claims. But in this case, we agree with
`Petitioner that Apogee Excerpt 2 addresses both the additional limitation of
`claim 12 as well as the “providing” step of claim 10. More importantly,
`Petitioner presented analysis that arguably addresses how Apogee Excerpt 2
`corresponds to the “providing” limitation as we construed the term. Thus,
`after careful consideration, we exercise our discretion and grant Petitioner’s
`rehearing request with respect to the Dorfman/Apogee grounds. In order to
`minimize any prejudice to Patent Owner, however, we will permit Patent
`Owner to submit further briefing on whether claims 10–20 would have been
`obvious under the Dorfman grounds, in light of Apogee Excerpt 2. We will
`also permit Petitioner to submit a responsive brief.
`
`IV. CONCLUSION
`
`For the foregoing reasons, Petitioner’s Request for Rehearing is
`granted.
`
`
`
`
`
`
`
`13
`
`
`
`IPR2014-00788
`Patent 6,738,155 B1
`
`
`V. ORDER
`
`For the reasons given, it is
`
`ORDERED that Petitioner’s Request for Rehearing with respect
`to the Dorfman/Apogee grounds is granted;
`
`FURTHER ORDERED that Patent Owner may submit
`additional briefing, not to exceed 10 pages, addressing whether claims 10–
`20 would have been obvious in light of the Dorfman/Apogee grounds, such
`briefing to be submitted within 10 days of the date of this Order;
`FURTHER ORDERED that Petitioner may submit a responsive brief,
`not to exceed five pages, within 10 days of Patent Owner’s brief; and
`FURTHER ORDERED that no other briefing is authorized.
`
`
`
`
`PETITIONER:
`
`Scott McKeown
`cpdocketmckeown@oblon.com
`
`Michael L. Kiklis
`cpdocketkiklis@oblon.com
`
`
`
`PATENT OWNER:
`
`W. Edward Ramage
`eramage@bakerdonelson.com
`
`
`
`
`
`14
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