UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`
`
`
`
`
`EASTMAN KODAK COMPANY, AGFA CORPORATION, ESKO SOFTWARE
`BVBA, and HEIDELBERG, USA
`
`Petitioners,
`
`v.
`
`CTP INNOVATIONS, LLC
`
`Patent Owner.
`______________
`
`Case IPR2014-00788
`
`Patent 6,738,155
`
`____________
`
`
`
`PETITIONERS’ RESPONSIVE BRIEF PURSUANT TO THE DECISION
`GRANTING PETITIONERS’ REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71
`
`
`
`
`
`
`
`_______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`
`
`
`
`
`EASTMAN KODAK COMPANY, AGFA CORPORATION, ESKO SOFTWARE
`BVBA, and HEIDELBERG, USA
`
`Petitioners,
`
`v.
`
`CTP INNOVATIONS, LLC
`
`Patent Owner.
`______________
`
`Case IPR2014-00788
`
`Patent 6,738,155
`
`____________
`
`
`
`PETITIONERS’ RESPONSIVE BRIEF PURSUANT TO THE DECISION
`GRANTING PETITIONERS’ REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`Case IPR2014-00788
`Petitioners’ Response to Request for Rehearing
`Patent Owner has now squandered all three of its chances to address the
`
`remote printing teachings of Apogee. Claims 10-20 should now be cancelled.
`
`In the Board’s final written decision (Paper 35), the Board held that
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`Petitioners failed to show that the Dorfman/Apogee combination teaches the
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`limitation of “providing a plate-ready file to a remote printer” because “there is no
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`evidence that a person of ordinary skill in the art would have had reason to produce
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`the plate-ready file anywhere other than at Dorfman’s production printing system.”
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`(Paper 35 at 31.) On rehearing, Petitioners directed the Board to the precise
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`portion of Apogee that was previously cited for teaching that the disclosed PDF
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`RIP process “allows you to physically separate the rendering from the actual plate
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`production, so your PDF RIP [i.e., plate-ready file] can be in the desktop
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`department and the PrintDrive can sit next to the output device, even in another
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`town.” (Ex. 1007 at 7, emphasis added.) That is, Apogee was cited for the
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`specific teaching of “providing a plate-ready file to a remote printer” as the term
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`“remote printer” has been construed by the Board (“an offsite printing company
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`facility accessible via a private or public communication network”). Petitioners’
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`expert explained the same, stating that “[i]n the combined system [of Dorfman and
`
`Apogee], the file that is sent to the printing system for production printing would
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`be the plate-ready file or PIF described by Apogee.” (Ex. 1021, ¶ 121.)
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`1
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`Case IPR2014-00788
`Petitioners’ Request for Rehearing
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`In its decision granting rehearing, the Board “agree[d] with Petitioner that
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`Apogee [quoted above] addresses both the additional limitation of claim 12 as well
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`as the ‘providing step’ of claim 10. More importantly Petitioner presented analysis
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`that arguably addresses how Apogee corresponds to the ‘providing’ limitation as
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`we construed the term.” (Paper 39 at 13.) Conspicuously absent from Patent
`
`Owner’s Response or Supplemental Brief is any analysis whatsoever as to the
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`remote printing teaching of Apogee, or its straight forward application to the
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`“providing” limitation of clams 10 and 16. In fact, Patent Owner mostly discusses
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`the Dorfman reference in a vacuum as if Apogee did not exist at all. Petitioners,
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`on the other hand, have presented both documentary evidence (Apogee) and
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`testimonial evidence that the Dorfman/Apogee combination teaches “providing a
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`plate-ready file to a remote printer,” none of which has ever been addressed, let
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`alone rebutted, by Patent Owner. Petitioners respectfully submit that this
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`uncontested, record evidence must now be accepted and claims 10-20 cancelled.
`
`I. PATENT OWNER’S SUPPLEMENTAL BRIEF IS NON-RESPONSIVE
`Patent Owner’s brief, like its previous filings, deliberately ignores Apogee’s
`
`teaching of “providing a plate-ready file to a remote printer.” As discussed above,
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`Patent Owner does not offer a single argument that Apogee does not teach this
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`limitation, which is the only reason the Board found against Petitioner originally
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`
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`2
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`
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`Case IPR2014-00788
`Petitioners’ Request for Rehearing
`
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`and the only question necessary to the resolution of this case. Despite Patent
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`Owner having three opportunities to respond to Petitioners’ argument (Patent
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`Owner Response (Paper 19), Response to Request for Rehearing (Paper 38), and
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`Supplemental Brief (Paper 40))—well beyond a full and fair opportunity to address
`
`the issue—the teachings of Apogee stand unrebutted.
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`The reason for Patent Owner’s Apogee silence and avoidance is clear: in the
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`co-pending litigation of the ’155/’349 patents, Patent Owner insists that “remote
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`printer” does not require geographic remoteness. Specifically, Patent Owner
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`informed the district court that it will appeal the Board’s remote printer
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`construction (“an offsite printing company facility accessible via a private or
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`public communication network”) and that the term does not require the printer to
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`be “geographically separate.” (Ex. 1028 at p. 9:11-15, pp. 67:23–68:6.)1 In other
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`words, Patent Owner’s refusal to address the disputed claim limitation or Apogee’s
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`corresponding teaching is deliberate and tactical. This is because Patent Owner
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`
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`1 Exhibit 1028 is submitted under 35 U.S.C. § 301(a)(2), authorizing any person at
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`any time to provide the Office with evidence of inconsistent statements of the
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`patent owner regarding claim scope. Thus, even if exhibits are not explicitly
`
`permitted in this filing, submission of Exhibit 1028 is authorized by statute.
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`3
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`Case IPR2014-00788
`Petitioners’ Request for Rehearing
`
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`believes that the proper construction of the term “remote printer” is even broader
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`than that adopted by the Board, undercutting the Board’s only rational for
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`distinguishing the Dorfman/Apogee ground in the first place.
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`As to the Patent Owner’s actual arguments of its Supplemental Brief, these
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`have nothing to do with the claim limitations of the ’155 patent or the
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`corresponding record in this proceeding; rather, they are directed to alleged
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`features of the ’155/’349 patent specification. Patent Owner does not even pretend
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`to relate such features to its claim language because it cannot. Patent Owner
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`spends pages discussing independent claims 10 and 16 as (allegedly) limited to
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`processing at certain locations and with a certain resolution. Yet claim 16 only
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`requires that a PDF is generated from the page layout designed by the remote client
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`and that a plate-ready file is sent to a remote printer. Claim 16 is not limited to a
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`PDF of low or high-resolution; not limited to the location of PDF generation; not
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`limited to the plate-ready file being generated from the PDF; and not limited to a
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`location of plate-ready file generation. As to claim 18, Patent Owner alleges that
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`Dorfman performs OPI at the printing facility and, therefore, cannot meet this
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`claim limitation. Setting the veracity of this characterization of Dorfman aside,
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`claim 18 modifies the PDF-generation step of claim 16 which, as noted above, only
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`requires the PDF to be generated from files designed by the remote client—it does
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`4
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`Case IPR2014-00788
`Petitioners’ Request for Rehearing
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`not vitiate and rewrite the PDF-generation step to occur at the central-service
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`facility or at the printing-company facility. Further still, Patent Owner alleges that
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`the proposed combination would result in a less efficient system or a more
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`complex system. But again, setting the veracity of these assertions aside, the
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`claims do not require any sort of simplicity or efficiency that would dissuade one
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`of ordinary skill in the art from combining Dorfman and Apogee as set forth in the
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`record. Moreover, even if true, which it is not, this unclaimed, efficiency gripe is
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`irrelevant to obviousness. In re Hiniker, Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998)
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`Patent Owner is well aware of the non-sequitur arguments it presents. Patent
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`Owner’s hope may be to goad the Board into addressing these arguments. This
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`way, Patent Owner can try to depict the Board as somehow inconsistent in the
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`CAFC appeal of claims 1-9 of the ‘155 patent now awaiting oral argument
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`(IPR2014-00789). The Board should not take this bait. The brief completely
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`ignores Apogee and attacks Dorfman individually. It is non-responsive to the
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`Board’s Order―Apogee’s teachings stand ignored for a third time—and the
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`decision need not address Patent Owner’s transparent attempts at obfuscation.
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`Apogee teaches both a remote printer and sending a plate-ready file to that
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`remote printer; this evidence stands uncontested. Petitioners respectfully request
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`that the Board cancel claims 10-20 of the ’155 patent.
`
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`5
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`Dated: October 10, 2016
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`Case IPR2014-00788
`Petitioners’ Request for Rehearing
`Respectfully submitted,
`
`Oblon, McClelland, Maier &
`Neustadt, LLP
`
`
`
`
`/Scott A. McKeown/
`Scott A. McKeown (Reg. No. 42,866)
`Attorney for Petitioners
`EASTMAN KODAK COMPANY,
`AGFA CORPORATION, ESKO
`SOFTWARE BVBA, and
`HEIDELBERG, USA, INC.
`
`
`
`6
`
`
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`
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`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies service of
`
`PETITIONERS’ RESPONSIVE BRIEF PURSUANT TO THE DECISION
`
`GRANTING PETITIONERS’ REQUEST FOR REHEARING UNDER 37 C.F.R.
`
`§ 42.71 on the counsel of record for the Patent Owner by delivering a copy via
`
`electronic means to the following address:
`
`
`
`W. Edward Ramage
`L. Clint Crosby
`BAKER, DONELSON, BEARMAN, CALDWELL
`& BERKOWITZ, P.C.
`eramage@bakerdonelson.com
`ccrosby@bakerdonelson.com
`
`
`
`
`
`
`
`
`
`
`
`/Scott A. McKeown/
`Scott A. McKeown (Reg. No. 42,866)
`Attorney for Petitioners
`EASTMAN KODAK COMPANY,
`AGFA CORPORATION, ESKO
`SOFTWARE BVBA, and
`HEIDELBERG, USA, INC.
`
`
`Dated: October 10, 2016
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