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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`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.
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`_______________
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`Case IPR2014-00788
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`U.S. Patent No. 6,738,155
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`______________
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`PATENTS OWNER’S SUPPLEMENTAL BRIEF
`IN SUPPORT OF
`PATENTABILITY OF CLAIMS 10-20
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`1
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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
`
`BVBA, and HEIDELBERG, USA,
`
`Petitioners,
`
`v.
`
`CTP INNOVATIONS, LLC,
`
`Patent Owner.
`
`_______________
`
`Case IPR2014-00788
`
`U.S. Patent No. 6,738,155
`
`______________
`
`
`PATENTS OWNER’S SUPPLEMENTAL BRIEF
`IN SUPPORT OF
`PATENTABILITY OF CLAIMS 10-20
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`1
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`INTRODUCTION
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`In its September 21, 2016 Decision (Paper 39), the Board partially granted
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`the Petitioner's request for rehearing (Paper 35) with regard to the issue of whether
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`claims 10-20 would have been obvious under the Dorfman grounds light of
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`Apogee (Excerpt 2). The Board solicited further briefing from Patent Owner
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`addressing whether claims 10-20 would have been obvious in light of the
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`Dorfman/Apogee grounds.
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`As discussed below, claims 10-20 remain patentable even in light of the new
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`Dorfman/Apogee grounds. A person of ordinary skill in the art would not find it
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`obvious to modify Dorfman in view of Apogee to generate a plate-ready file from
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`the PDF file and to provide said plate-ready file to a remote printer. In particular,
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`there is no motivation to do so, as the suggested modification reduces the
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`simplicity and efficiency of the Dorfman system, and the proposed combination
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`would change the principle of operation of Dorfman by diverting the dynamic PDF
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`file from being sent directly from the end user to the printing facility. In addition,
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`there remain other defects in the proposed combination of prior art, including the
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`attempt to use Dorfman's low-resolution dynamic PDF file to serve double-duty as
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`both a low-resolution page layout design and a high-resolution PDF file.
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`2
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`ARGUMENT
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`A. There Is No Motivation To Modify Dorfman In Light of Apogee To Divert
`the Dynamic PDF File From Being Sent Directly to the Printing Facility.
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`Petitioners have failed to provide a sufficient rationale for modifying
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`Dorfman in light of Apogee in their suggested combination. The Petitioners must
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`factually support any prima facie assertion of obviousness. The key to supporting
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`any prima facie conclusion of obviousness under 35 U.S.C. § 103 is the clear
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`articulation of the reason(s) why the claimed invention would have been obvious.
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`The Supreme Court in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007),
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`noted that the analysis supporting a rejection under 35 U.S.C. § 103 should be
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`made explicit. Where a party seeks to invalidate a patent based on obviousness, it
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`must demonstrate by a preponderance of evidence that a “skilled artisan would
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`have had reason to combine the teaching of the prior art references to achieve the
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`claimed invention, and that the skilled artisan would have had a reasonable
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`expectation of success from doing so.” In re Cyclobenzaprine Hydrochloride
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`Extended Release Capsule Patent Litig., 676 F.3d 1063, 1068-69 (Fed. Cir. 2012).
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`The Federal Circuit has stated that “rejections on obviousness grounds cannot be
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`sustained with mere conclusory statements; instead, there must be some articulated
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`reasoning with some rational underpinning to support the legal conclusion of
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`obviousness.” In re Kahn, 441 F.3d at 988. See also KSR, 550 U.S. at 418.
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`3
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`Claims 10-20 of the ‘155 patent describe a method of providing printing and
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`publishing services from the perspective of the central facility. The claims refer to
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`files being sent to or received from a “remote client” or a “remote printer.” Ex.
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`1001, Claims 10, 16. The context of the claims, read in light of the specification,
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`demonstrate that all of the steps in the claimed method are carried out at a central
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`facility, not a remote client or remote printer. The central facility (a) provides low-
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`resolution files to a remote client for the designing of a page layout using the low-
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`resolution files, (b) generates a high-resolution PDF file from the designed page
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`layout (after the designed page layout is sent back from the remote client), (c)
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`sends the high-resolution PDF file for additional proofing, (d) generates a plate-
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`ready file from the high-resolution PDF file, and (e) sends the plate-ready file to a
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`remote printer. Id.
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`In contrast, in the Dorfman system a central facility provides low-resolution
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`files to a remote end-user at the front end (ref. 2) for the creation of a low-
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`resolution dynamic PDF file, and the dynamic PDF file is sent to be printed
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`directly to the production printing system from the remote front end (ref. 10). Ex.
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`1006 at p. 8:21-26 & Fig.1. It is at the printing system where low resolution
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`images used in creating the dynamic PDF file are replaced by high resolution
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`images by, for example, an open pre-press interface (OPI) before printing. Id. at p.
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`8:21-26. Figure 1 of Dorfman clearly shows this (reproduced below):
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`4
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`The high resolution images are separately downloaded to the production printing
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`system from the database in the memory (ref. 4), independent from the
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`transmission of the dynamic PDF file. Stevenson Decl. (Ex. 2014), at ¶ 50. The
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`printing facility (ref. 10) then processes the dynamic PDF file in order to be ready
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`for printing. Ex. 1006 at p. 8:21-26. Petitioner's expert, Professor Lawler, also
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`testified that Figure 1 shows the high resolution files being sent to the production
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`printing system separately from the PDF file, with the substitution of high
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`resolution files for low resolution files taking place at the production printing
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`system. Lawler Depo. Tr. (Ex. 2017), at 67:11-20.
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`Even assuming, arguendo, that the Dorfman production printing system is
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`remote from a central service facility, there is no motivation to add an extra step to
`5
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`the Dorfman process to divert the dynamic PDF file from being sent directly to the
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`production printing facility. Petitioner's suggested modification would require the
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`dynamic PDF file effectively to be sent in two steps instead of one, in addition to
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`moving the location for generating a plate-ready file. However, the intent of the
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`Dorfman system is efficiency and simplification of the design process, see Ex.
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`1006 at p. 1:13-21, and adding an additional step to that process, and requiring the
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`dynamic PDF file to be transmitted twice as many times as the Dorfman system, is
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`contrary to that intent. Petitioners fail to demonstrate by a preponderance of
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`evidence that a skilled artisan would have had reason to combine the teaching of
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`the prior art references as suggested. Accordingly, the rejection of claims 10-20
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`based on the proposed combination of Dorfman and Apogee fails.
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`B. The Low-Resolution Dynamic PDF File of Dorfman Cannot Serve As Both
`the Low-Resolution Page Layout Design and High-Resolution PDF File of the
`Claimed Invention.
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`The new Apogee argument regarding a remote printer does not fix other
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`problems with the proposed combination of Dorfman and Apogee (and OPI White
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`Paper, with respect to claims 16-20). Petitioners use Dorfman's low-resolution
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`dynamic PDF file of Dorfman to serve double-duty as both the low-resolution page
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`layout design and the high-resolution PDF file of the claimed invention. In fact, it
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`appears that Petitioners argue that Dorfman's central facility creates the dynamic
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`PDF file. If so, this is directly contrary to how the claimed invention works. In the
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`6
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`claimed invention, the remote client creates the low-resolution page layout design,
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`and the central facility creates the high resolution PDF file. Supra at 4.
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`Dorfman discloses the end-user at the remote front end (ref. 2), using an
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`Internet browser, creating a dynamic PDF file using templates and low-resolution
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`image files from a remote serve, and then send this low-resolution dynamic PDF
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`file directly to the production printing system (ref. 10) for processing to be printed.
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`Ex. 1006 at p. 8:21-26 & Fig.1. It is at the Dorfman printing system where low
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`resolution images used in creating the dynamic PDF file are replaced by high
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`resolution images by, for example, an open pre-press interface (OPI) before
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`printing. Id. at p. 8:21-26.
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`To paper over this defect, for claim 10 Petitioners first correlate the dynamic
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`PDF file creation process to the step of providing files to a remote client for the
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`designing of a page layout. Petition at 45. However, Petitioners also correlate the
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`dynamic PDF file creation process to the subsequent step of generating a PDF file
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`from the designed page layout. Id. at 46. Petitioners make the same assertions
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`regarding claims 16 and 18. Id. at 55-57.
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`The problem is that Dorfman's dynamic PDF file uses low resolution
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`images. Thus, to the extent that the dynamic PDF file corresponds to a claim
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`element, it corresponds to the page layout designed by the remote client. It cannot
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`7
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`correspond to the higher resolution PDF file formed by swapping low resolution
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`files used in the page layout with high resolution files. E.g., Ex. 1001 Claim 18.
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`In fact, Petitioners seemingly posit that the Dorfman central facility
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`generates the dynamic PDF file, by asserting that the dynamic PDF file is created
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`by a PDF builder and then provided to the remote client. See Petition at 55-57
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`(claims 16, 18). In the claimed invention, the remote client creates the low
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`resolution page layout file, and it would be nonsensical to provide or send it to the
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`remote client (a remote client cannot be remote to itself). If one construes
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`Dorfman to teach creating the low resolution page layout file at the central facility
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`and sending it to the remote client, then Dorfman is even further distinguished
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`from the claimed invention. Regardless of where the low-resolution dynamic PDF
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`file of Dorfman is created, however, it is clear that it uses low-resolution images,
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`and does not correspond to a high-resolution PDF file generated by the central
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`facility.
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`Further, claim 18 is not obvious for additional reasons. The proposed
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`ground of rejection for claims 18 is based on the combination of Dorfman, Apogee
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`and OPI White Paper. Claim 18 recites that the step of generating a PDF file at a
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`central facility separate from a remote client and a remote printer comprises
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`receiving a PostScript page layout file from the remote client, and swapping low
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`resolution files in the page layout with high resolution files. OPI White Paper is
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`8
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`cited, but only for the OPI image swapping process. Ex. 1008 at p. 12; Petition at
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`56-57. Dorfman discloses performing OPI, but this is performed at the printing
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`facility on the dynamic PDF file directly received from the remote end-user, as
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`discussed above. Ex. 1006 at p. 7, l. 28 - p. 8, l.5. Claim 18 requires generating
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`the PDF file at the central facility from a PostScript page layout file from the
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`remote client, and the cited prior art does not teach this limitation.
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`C. Patent Owner Does Not Waive Any Previous Arguments.
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`Finally, this supplemental brief is not a waiver of, and Patent Owner does
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`not waive, its previous arguments in this proceeding regarding the patentability of
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`the subject claims, including that Apogee should not be admitted as prior art.
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`Apogee does not itself provide a publication date, and the declarations submitted
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`with the Petition do not prove a date that Apogee was publically available.
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`Petitioners's witness had no personal knowledge of such a date, and could only
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`speculate based on hearsay and excludable evidence. See Ex. 2016 at 11-52.
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`Petitioners' additional declarations and attachments submitted later also did not
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`comply with the requirements of 47 CFR 42.123(a)-(c), which governs filing
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`supplemental information. Supplemental information includes both information
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`that is relevant to a claim for which the trial has been instituted, and information
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`that is not relevant to a claim for which the trial has been instituted.
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`9
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`Even if the additional declarations and attachments are not excluded, the
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`only documentary evidence indicates that an earlier version of Apogee was
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`available online in June 2001, well after the subject patent's critical date. Because
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`the Apogee reference is critical to the finding of obviousness for all asserted prior
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`art combinations, obviousness should not be found on any ground.
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`CONCLUSION
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`Petitioners have failed to demonstrate by a preponderance of the evidence
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`that the proposed Dorfman grounds render claims 10-20 obvious. Accordingly,
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`Patent Owner requests that the Board re-affirm its determination in its Final
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`Written Decision that claims 10-20 are not obvious under the Dorfman grounds.
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`Respectfully submitted,
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`BAKER, DONELSON, BEARMAN,
`CALDWELL & BERKOWITZ, P.C.
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`
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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 CT
`Innovations, LLC
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`10
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`Dated: September 30, 2016
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that, on September 30, 2016, the foregoing
`Patent Owner’s Supplemental Brief in Support of Patentability of Claims 10-20
`was served in its entirety via U.S. Express Mail, postage prepaid, and electronic
`mail upon the following:
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`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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`11
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