Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 35
`Entered: November 25, 2015
`
`
`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.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 35
`Entered: November 25, 2015
`
`
`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.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
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`IPR2014-00788
`Patent 6,738,155 B1
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`
`I.
`
`INTRODUCTION
`
`Background
`A.
`Eastman Kodak Co., Agfa Corp., Esko Software BVBA, and
`Heidelberg, USA (collectively, “Petitioner”) filed a Corrected Petition
`(Paper 4, “Pet.”) to institute an inter partes review of claims 10–20 of U.S.
`Patent No. 6,738,155 B1 (Ex. 1001, “the ’155 patent”). CTP Innovations,
`LLC (“Patent Owner”) filed a Preliminary Response (Paper 8) (“Prelim.
`Resp.”). We instituted an inter partes review of claims 10–20 based on the
`following alleged grounds of unpatentability:
`
`Basis
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`References
`Jebens1 and Apogee2
`Jebens, Apogee, and
`Andersson3
`Dorfman4 and Apogee
`Dorfman, Apogee, and
`Andersson
`Dorfman, Apogee, and OPI
`White Paper5
`
`Decision on Institution (“Dec. on Inst.”) 25.
`
`§ 103(a)
`
`Claim(s) Challenged
`10–13 and 15–20
`14
`10–13
`14 and 15
`
`16, 17, 19, and 20
`
`
`1 Jebens et al., US 6,321,231 B1 (iss. Nov. 20, 2001) (Ex. 1005).
`2 AGFA, 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).
`4 Dorfman et al., WO 98/08176 (pub. Feb. 26, 1998) (Ex. 1006).
`5 Apple OPI White Paper (1995) (Ex. 1008).
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`
`After the Board instituted trial, Patent Owner filed a Patent Owner
`Response (Paper 19, “PO Resp.”),6 to which Petitioner replied (Paper 24,
`“Pet. Reply”). Oral Hearing was held on June 30, 2015, and the Hearing
`Transcript (Paper 34, “Tr.”) has been entered in the record.
`We have jurisdiction under 35 U.S.C. § 6(c). This Final Decision is
`entered pursuant to 35 U.S.C. § 318(a). We determine that Petitioner has not
`shown by a preponderance of the evidence that claims 10–20 are
`unpatentable.
`
`Related Proceedings
`B.
`Petitioner discloses that the ’155 patent has been asserted in 49
`infringement actions. Pet. 1; Ex. 1002. Petitioner also has filed three
`additional petitions for inter partes review: IPR2014-00789, for review of
`claims 1–9 of the ’155 patent; IPR2014-00790, for review of claims 1–3 of
`U.S. Patent No. 6,611,349 (“the ’349 patent”), which shares the ’155
`patent’s disclosure; and IPR2014-00791, for review of claims 4–14 of the
`’349 patent. Pet. 2. The ’155 and ’349 patents were also the subject of two
`previous petitions for inter partes review, both of which were denied. See
`Printing Indus. of Am. v. CTP Innovations, LLC, Case IPR2013-00474
`(PTAB Dec. 31, 2013) (Paper 16) (denying petition for inter partes review
`of the ’349 patent); Printing Indus. of Am. v. CTP Innovations, LLC, Case
`IPR2013-00489 (PTAB Dec. 30, 2013) (Paper 15) (denying petition for inter
`partes review of the ’155 patent).
`
`
`6 Patent Owner also filed two motions to exclude evidence, which are
`discussed in section II.B.3 below.
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` 3
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`
`The ’155 Patent
`C.
`The ’155 patent issued May 18, 2004 from an application filed July
`30, 1999. Ex. 1001, cover page. The ’155 patent relates to “a system and
`method of providing publishing and printing services via a communications
`network.” Id. at 1:9–10. According to the ’155 patent, “[k]ey steps for
`producing printed materials using a plate process include (1) preparing copy
`elements for reproduction, (2) prepress production, (3) platemaking,
`(4) printing, and (5) binding, finishing and distribution.” Id. at 1:12–15. In
`the first or “design” stage, an end user—e.g., a publisher, direct marketer,
`advertising agency, or corporate communication department—uses a
`desktop publishing program such as “QuarkXpress” to design “pages” from
`image and data files. Id. at 1:16–25. In the prepress production stage, the
`user-created pages are “transformed into a medium that is reproducible for
`printing.” Id. at 1:26–28. This transformation typically involves
`typesetting, image capture and color correction, file conversion, “RIPing,
`trapping, proofing, imposition, filmsetting, and platesetting.” Id. at 1:29–32.
`“RIPing” is based on the acronym “RIP,” which stands for raster
`image processor. Id. at 7:57–59. A RIP is a hardware or software
`component that “rasterize[s]” an image file—i.e., converts it to a “bitmap”
`or raster image. Id. “RIPing” is therefore synonymous with rasterizing. A
`bitmap “is a digitized collection of binary pixel information that gives an
`output device, such [as a printer, proofer, or platesetter,] the ability to image
`data to paper, film, or plate.” Id. at 7:59–62. “Proofing” involves creating a
`sample of the finished product that is sent to the end user for approval. Id. at
`1:32–35. Once the end user approves the proof, a medium, such as a
`computer-to-plate (CTP) file, is produced and sent to the printer. Id. at
`
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`1:35–39. “Imposition” involves “the set of pages on a particular plate as
`well as their positioning and orientation” to facilitate “the stripping,
`collating, and folding of the printed product.” Id. at 1:38–44. A printer
`makes a plate “using the medium created during prepress,” e.g., a CTP file.
`Id. at 1:45–48. The printer uses the plate on a printing press to reproduce the
`product, which is then bound, finished, and distributed. Id. at 1:45–51.
`The ’155 patent describes and claims a publishing and printing system
`in which “[s]ystem components are installed at an end user facility, a
`printing company facility, and a central service facility,” each connected to
`the others via a communication network. Id. at 2:31–36, 51–56. Figure 1,
`reproduced below, depicts an embodiment of the claimed invention:
`
`Figure 1 depicts end user facility 300, printing company facility 400,
`and central service facility 105 connected together via either private network
`
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`160 or public network 190. Id. at Fig. 1. In this embodiment, end user
`facility 300 comprises a router, a desktop computer for page-building
`operations, and a color proofer and black and white printer for high-
`resolution proofing. Id. at 7:38–40, Figs. 1, 2, 5. Printing company facility
`400 comprises a router, a server, a desktop computer, a laser printer, a color
`plotter, and a platesetter, and performs production management, digital
`plate-making, desktop imposition, and press services. Id. at 8:31–33, 9:38–
`43, Figs. 1, 4, 5. Central service facility 105 comprises server 110,
`“hierarchical storage management” (HSM) system 120, “digital content
`management” system 130, local area network (LAN) 150 and
`communication routing device 200. Id. at 5:34–50. “Data may be
`exchanged between central service facility 105 and either private network
`160 or public network 190 in any suitable format, such as in accordance with
`the Internet Protocol (IP), the Transmission Control Protocol (TCP), or other
`known protocols.” Id. at 5:21–25. An end user can store files in HSM
`system 120 to reduce storage needs at the end user facility. Id. at 7:19–23,
`38–40.
`Server 110 uses software capable of performing “open prepress
`interface” (OPI) operations. Id. at 5:62–64. OPI operations include “high
`resolution image swapping.” Id. at 10:31–33. That is, OPI permits a lower
`resolution image file to be used as a proxy for a higher resolution file during
`page-building operations, which is advantageous because the low resolution
`image can be transmitted and manipulated more quickly. Id. at 7:46–49,
`10:44–49. The low resolution images are replaced by the corresponding
`high resolution images before final proofing and printing. Id. at 7:49–51.
`
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`
`Illustrative Claims
`D.
`Claims 10 and 16 are independent, and are drawn to methods of
`providing printing and publishing services to a remote client using a
`communication network. Claims 11–15 depend from claim 10, and claims
`17–20 depend from claim 16.
`Claims 10 and 16 are 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.
`
`16. A method of providing printing and publishing services
`to a remote client performing any one of page layout designing
`and plate press printing where said printing and publishing
`services are provided
`in real
`time using a wide area
`communication network, the method comprising:
`storing high resolution files on a computer server;
`generating low resolution files corresponding to said high
`resolution files;
`providing said low resolution files to a remote client for the
`designing of a page layout;
`generating a portable document format (PDF) file from the
`page layout designed by said remote client;
`providing said PDF file to said remote client; and
`providing a plate-ready file to a remote printer.
`
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`
`II. ANALYSIS
`
`Claim Construction
`A.
`The claims of an unexpired patent are interpreted using the broadest
`reasonable interpretation in light of the specification of the patent in which
`they appear. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 793
`F.3d 1268, 1278 (Fed. Cir. 2015). Under this standard, the claim language
`should be read in light of the specification as it would be interpreted by one
`of ordinary skill in the art. In re Suitco Surface, Inc., 603 F.3d 1255, 1260
`(Fed. Cir. 2010). Any special definition for a claim term must be set forth in
`the specification with reasonable clarity, deliberateness, and precision. In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`We expressly construe below only those claim terms that require
`analysis to resolve arguments related to the patentability of the challenged
`claims. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999) (holding that “only those [claim] terms need be construed
`that are in controversy, and only to the extent necessary to resolve the
`controversy”). All other terms will be accorded their ordinary and
`customary meaning as would be understood by one of ordinary skill at the
`time of the invention.
`“A method of providing printing and publishing services
`1.
`to a remote client in real time using a communication
`network” (claim 10); “A method of providing printing
`and publishing services to a remote client . . . in real time
`using a wide area communication network” (claim 16)
`The preamble for each of independent claims 10 and 16 recites a
`method of providing printing and publishing services to a remote client “in
`real time.” In the Decision on Institution, we determined that “the
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`preambles in the claims at issue, including the term ‘real time,’ do not limit
`the scope of the claims.” Dec. on Inst. 11–13. Neither Patent Owner in its
`Response nor Petitioner in its Reply disputed this determination. Further,
`we are not aware of any evidence adduced at trial that calls this
`determination into question. Therefore, based on our analysis in the
`Decision on Institution, we determine that the preambles in the claims at
`issue, including the term “real time,” do not limit the scope of the claims.
`plate-ready file (all claims)
`2.
`Each of independent claims 10 and 16 uses the term “plate-ready file.”
`Petitioner asserts that:
`The plate-ready file represents a page layout file that has gone
`through the prepress process (e.g., imposition, screening,
`trapping, color management, etc.) and has been RIPed such that
`it contains the exact dots to be transferred onto a printing plate.
`[Ex. 1021] at ¶ 65. The plate-ready file may be in a format that
`can be used with a platesetter as the output device, such that the
`digital file is directly used to create a printing plate; or in a
`format that can be used with an imagesetter, such that the
`digital file is indirectly used to create a printing plate. Id. at ¶¶
`65–69.
`
`Pet. 22 (footnote omitted).
`Patent Owner asserts that a plate-ready file is “a file that is ready to be
`made into a printing plate.” PO Resp. 10–11 (emphasis omitted). Patent
`Owner relies in part on the deposition testimony of Petitioner’s expert, Brian
`Lawler, which mirrors Petitioner’s contentions above. Id. at 12 (quoting Ex.
`2017 at 35:19–36:3).
`
`The Specification does not define “plate-ready file” expressly, but its
`meaning is discernible from the term itself: a file that can be used to
`produce a printing plate without further modification. See Ex. 1001, 10:7–
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`14 (equating the term “plate-ready file” with “a single file that is stable,
`predictable, and ready to image to proof or plate”). Moreover, as Petitioner
`states, the plate-ready file can be used with a platesetter to create a plate
`directly, or with an imagesetter to produce film that is then used to create the
`plate. Pet. 22. Further, we agree with the parties that because the file is
`“plate-ready,” it represents a page layout file that has gone through the
`prepress process, including RIPing. That is the purpose of prepress
`production: transforming “copy” into “a medium that is reproducible for
`printing,” such as a “computer to plate (CTP) file.” Id. at 1:26–38.
`Accordingly, in addition to the constructions we applied in the Decision on
`Institution, we construe “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.
`remote printer (all claims)
`3.
`Each of independent claims 10 and 16 recites the step of providing a
`plate-ready file to a “remote printer.” Neither party proposes a construction
`for the term. Although the Specification does not define the term expressly,
`it uses the term “printer” to mean the entity or facility that manufactures the
`printing plates and uses the plates to create the final printed product.7 Ex.
`1001, 1:45–50. The Specification also identifies a “printing company
`facility” as performing this “final printing” step, id. at 2:41–44, which
`
`
`7 The Specification uses “printer” in a different context to refer to a specific
`component of the end-user facility, i.e., “black and white laser printer 340.”
`Ex. 1001, 7:20. This component is used for end-user proofing rather than
`final printing, so it is unlikely that the claims use “printer” to refer to this
`component.
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`indicates that “printer” as used in claims 10 and 16 is synonymous with
`“printing company facility.”
`The Specification also does not define “remote.” When the intrinsic
`evidence does not define a term, “one may look to technical dictionaries for
`assistance in determining [the] term’s meaning to a person of ordinary skill
`in the art.” Atofina v. Great Lakes Chem. Corp., 441 F.3d 991, 996 (Fed.
`Cir. 2006). In the context of a telecommunications system, “remote” was
`defined at the time of the invention as “pertaining to a system or device that
`is accessed through a telephone line,” and the opposite of “local.”
`NEWTON’S TELECOM DICTIONARY 692 (15th ed. 1999) (Ex. 3001). This is
`suggestive of the depiction of end-user facility 300, central-service facility
`105, and printing company facility 400 as linked to private network 160 or
`public network 190, except the communication links to the private network
`are T-1 and DS3 lines rather than telephone lines. Ex. 1001, 4:64–65.
`Because these facilities access each other via private network 160 (also
`referred to as “remote network 160,” id. at 5:66) or public network 190, the
`facilities can be said to be “remote” with respect to each other. The
`Specification also uses “remote” in a similar context to mean “offsite.” See
`id. at 5:31–32 (“Offsite storage facility 180 provides remote archival system
`for disaster contingency purposes.” (emphasis added)). This is consistent
`with a plain meaning of the term. See WEBSTER’S DICTIONARY OF MODERN
`ENGLISH 447 (1st ed. 1987) (defining “remote” as “far away, distant”) (Ex.
`3002). It is also consistent with the technical dictionary’s definition of
`“remote” as being the opposite of “local.”
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`Based on the above discussion, “remote printer” means an offsite
`printing company facility accessible (by, e.g., an end user facility or central
`services facility) via a private or public communication network.
`
`Claims 10–13 and 15–20—Jebens and Apogee
`B.
`Petitioner asserts that claims 10–13 and 15–20 are unpatentable under
`35 U.S.C. § 103(a) as obvious over Jebens and Apogee. Pet. 23–37.
`Jebens
`1.
`Jebens describes “a digital image management and order delivery
`system.” Ex. 1005, 2:13–14. The system provides a centralized, searchable
`database of digital images that can be used and modified by authorized
`users. Id. at 4:54–56. The system also serves as a job order developer and
`conduit for routing files from a client, such as an advertising agency, to a
`printer. Id. at 4:60–62. Figure 1, reproduced below, illustrates Jebens’
`invention.
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`Figure 1 depicts a data management and work-order delivery system
`constructed according to Jebens. Id. at 4:20–23. The system comprises host
`system 10 in communication with a variety of users, such as browsers and
`client “orderers” 12, image providers 14, and suppliers 16. Id. at 6:52–65.
`The host system software includes, inter alia, an image database that
`archives low and high resolution copies of digital image files. Id. at 8:12–
`13. The system is “ideally suited for facilitating publication and the like.”
`Id. at 4:66–67. Image providers 14 may include a corporation that stores
`digital images of its products on host system 10 to more efficiently use its
`in-house computer storage facilities. Id. at 4:67–5:5, 6:55–60. Browsers
`and client orderers 12 may include an advertising agency that the
`corporation hires to create a brochure using the stored images, and suppliers
`16 may include the printer that will print the finished brochure. Id. at 5:5–
`10, 6:54–65. To use the system, the corporation gives the agency
`information to access the host system; the agency searches the host system,
`downloads low-resolution copies of desired images, and uses the low-
`resolution images to create the brochure. Id. at 5:11–17. The agency then
`reconnects to the system “to request that the system electronically route the
`created document with high resolution copies of the selected digital images
`to a publishing entity such as a printer, where the finalized brochure would
`be published.” Id. at 5:17–22. Communication between host system 10 and
`users 12, 14, and 16 “can be effected by any known means of connectivity,”
`such as “through local area networks or wide area networks,” or “hardwired
`to one another as an intranet.” Id. at 6:66–7:4, 7:20.
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`Apogee
`2.
`Apogee describes the Agfa Apogee print-production system.
`Ex. 1007, 1. Content can be created in any format and output to Apogee in
`either PostScript or PDF; Apogee normalizes incoming files to PDF “to
`guarantee complete predictability and compatibility.” Id. at 3–4. The PDF
`files are stored as individual PDF pages and become “Digital Masters” to
`create all production versions of the document and to provide a version that
`can be proofed and edited remotely. Id. at 4, 6. For a specific print job,
`Apogee collects the appropriate pages, automatically imposes the pages into
`a “digital flat,” and rasterizes it for the selected output device (e.g., an image
`setter or plate setter). Id. at 6. The result is a “Print Image File” (PIF) that
`“contains all the dots that will appear on the film or plate.” Id.
`3. Whether Apogee Is a Prior Art Publication
`Before discussing the merits of this ground of unpatentability, we first
`address Patent Owner’s contention, PO Resp. 53–59, that Petitioner has not
`shown that Apogee was publicly accessible before July 30, 1999, the ’155
`patent’s filing date. Petitioner contends that Apogee—which bears a
`copyright date of 1998 by Agfa-Gevaert N.V.—was published in 1998, and
`“[a]t the latest” was made available to the public on May 28, 1998. Pet. 5
`(citing Ex. 1022); see Ex. 1007, 8. Petitioner relies on the Declaration of
`Johan Suetens, an employee of Agfa Graphics, to support this contention.
`Mr. Suetens testifies that in 1998 he was responsible for “marketing-
`communications of commercial printing” at Agfa. Ex. 1022 ¶ 4. According
`to Mr. Suetens, the Apogee reference was created to promote the Agfa
`Apogee system to potential customers. Id. ¶ 8. Mr. Suetens further testifies
`that a code appearing on the last page of the Apogee reference—
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`“NEFDU”—is unique to the Apogee reference, and is used by Agfa’s
`“Enterprise Management System” to track the document. Id. ¶ 10.
`Attachment D to Mr. Suetens’ Declaration is a printout from the Enterprise
`Management System that Mr. Suetens asserts shows that 76,030 copies of
`the Apogee reference were printed for Agfa in April 1998. Id. Mr. Suetens
`asserts that this printed version of the Apogee reference was distributed by
`Agfa sales departments at “seminars, exhibitions, and demos of Apogee to
`the public,” and was made available to the public as an electronic PDF file
`on Agfa’s website, www.agfahome.com, no later than May 28, 1998, when
`Agfa issued a press briefing announcing the release of Apogee Pilot. Id.
`¶¶ 8–10.
`Patent Owner counters that “Petitioners have failed to establish that
`[Apogee] was distributed outside of Agfa or was otherwise publicly
`accessible.” PO Resp. 53. Based on Mr. Suetens’ deposition testimony,
`Patent Owner asserts that he “has no actual personal knowledge of when (or
`even if) the Apogee reference was distributed to the public, made available
`to the public, or provided to any member of the public.” Id. at 54.
`According to Patent Owner, Mr. Suetens testified at his deposition that
`(1) Agfa’s marketing-communication department “does not provide
`documents—including the Apogee reference—directly to the public,” but
`only makes documents available to Agfa subsidiaries (id. (citing Ex. 2016,
`23:8–24:10)); (2) he does not have any personal knowledge of the
`distribution of the Apogee reference to a customer or potential customer, or
`when the printed form would have been distributed to Agfa subsidiaries (id.
`at 54–55 (citing Ex. 2016, 34:4–18, 40:7–41:1, 50:5–23)); (3) he does not
`know who, if anyone, posted a PDF version of Apogee on Agfa’s website or
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`when it was posted (id. at 57 (citing Ex. 2016, 48:3–49:21); and (4) he does
`not remember seeing it on the website (id.).
`Petitioner responds to Patent Owner’s contentions by submitting
`additional evidence with its Reply, i.e., a supplemental Declaration from Mr.
`Suetens (“Supplemental Suetens Declaration,” Exhibit 1024), and a
`Declaration from Michael Jahn (“Jahn Declaration,” Exhibit 1023).
`Attached to the Supplemental Suetens Declaration are additional records
`obtained from Agfa’s Electronic Management System. Ex. 1024, Att. E–H.
`According to Mr. Suetens, these records demonstrate how the Electronic
`Management System tracked the ordering and delivery of copies of the
`Apogee reference and other promotional brochures from Agfa headquarters
`to its subsidiaries and regional offices in 1998. For example, Mr. Suetens
`testifies that Attachment H demonstrates that 400 copies of the Apogee
`reference were sent to Declarant Michael Jahn. Id. ¶ 14, Att. H.
`Mr. Jahn testifies that from August 1997 to September 2001 he
`worked for Agfa Corporation as a contract consultant. Ex. 1023 ¶¶ 4–5. Mr.
`Jahn asserts that “it was my job, beginning in August 1997 until leaving the
`company in September 2001, to travel internationally and throughout the
`U.S. to meet with potential customers and industry groups for the purpose of
`educating them on the AGFA Apogee PDF workflow.” Id. ¶ 10. He states
`that he “recognize[d] [the Apogee reference] as one that I personally
`distributed to interested members of the public on behalf of Agfa beginning
`in 1998, and thereafter.” Id. ¶ 9. For example, Mr. Jahn testified that he
`attended the “Vue/Point conference 9th annual communication event held
`April 14–16 in Arlington, Virginia, and the PIRA International meeting held
`in England,” and that “[a]t these conferences, . . . [t]he Apogee [reference]
`
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`was the literature that attendees were given to take back to their office.” Id.
`¶¶ 10–11. Mr. Jahn also testifies that he directed conference attendees to his
`website, www.jahn.org., where he had posted and made publicly available
`an earlier “near identical” version of the Apogee reference. Id. ¶¶ 12, 15,
`Att. C.
`
`a.
`Patent Owner’s First Motion to Exclude Evidence
`On April 2, 2015, concurrently with its Patent Owner Response,
`Patent Owner filed its First Motion to exclude the Apogee reference, Ex.
`1007, and Mr. Sueten’s first Declaration, Ex. 1022. Paper 18, 4–8. On April
`16, 2015, Petitioner responded to Patent Owner’s First Motion as if it were
`evidentiary objections filed under 37 C.F.R. § 42.64(b)(1), and served on
`Patent Owner “supplemental evidence” under 37 C.F.R. § 64(b)(2);
`specifically, the Supplemental Suetens Declaration and the Jahn Declaration.
`Paper 30, 3; Tr. 31:4–8.
`Patent Owner seeks to exclude Mr. Suetens’ first Declaration for
`essentially the same reasons discussed above: that Mr. Suetens lacks
`personal knowledge regarding the public accessibility of Apogee. We have
`reviewed the First Motion and determine that Patent Owner’s objections to
`the First Suetens Declaration go more to the weight of the Declaration than
`to its admissibility. Further, we note that the public accessibility of the
`Apogee reference is a substantive issue that is better suited for Patent
`Owner’s Response than for a motion to exclude. For these reasons, we deny
`Patent Owner’s First Motion to Exclude.
`
`
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`IPR2014-00788
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`
`b.
`
`Patent Owner’s Second Motion to Exclude
`Evidence
`Patent Owner filed its Second Motion on June 11, 2015, ten days after
`Petitioner filed its Reply and Exhibits 1023 and 1024, the Jahn Declaration
`and Supplemental Suetens Declaration, respectively. In the Second Motion
`Patent Owner moves for the exclusion of these Declarations. Patent
`Owner’s principal argument is that the Declarations constitute
`“supplemental information, not supplemental evidence.” Paper 26, 10.
`According to Patent Owner, “[i]nformation submitted to the Board that is
`directed to the public accessibility of Apogee is per se supplemental
`information . . . because Apogee serves as one of Petitioners’ asserted bases
`for unpatentability.” Id. Because Petitioner did not follow the procedure for
`submitting supplemental information under 37 C.F.R. § 42.123(b), Patent
`Owner argues that the Supplemental Suetens Declaration should be
`excluded. Id. at 11.
`Petitioner responds that both the Jahn and Supplemental Suetens
`Declarations are “offered solely to support the admissibility of Apogee,” and
`“are not offered to further support ‘any argument on the merits (i.e.,
`regarding the patentability or unpatentability of a claim)’ in view of Apogee
`and, therefore, are proper supplemental evidence.” Paper 30, 4.
`As an initial matter, we reject the notion that evidence submitted to
`support a reference’s public availability can never be served as
`“supplemental evidence” under 37 C.F.R. § 42.64(b)(2). The rule does not
`limit the subject matter of evidence served under this rule, and at least two
`other panels have noted that such evidence has been served as supplemental
`evidence. See Palo Alto Networks, Inc. v. Juniper Networks, Inc., Case
`
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`IPR2014-00788
`Patent 6,738,155 B1
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`IPR2013-00369, slip op. at 2, 5 (PTAB Feb. 5, 2014) (Paper 37) (noting its
`understanding that the supplemental information under consideration
`previously had been served to Patent Owner in response to Patent Owner’s
`evidentiary objections); Toyota Motor Corp. v. American Vehicular Scis.,
`LLC, Case IPR2013-00417, slip op. at 8 (PTAB Jan. 7, 2015) (Paper 78)
`(noting Petitioner’s submission of supplemental evidence to establish a
`prior-art reference’s publication date).
`More importantly, we disagree with Patent Owner that evidence must
`be submitted as supplemental information in accordance with 37 C.F.R.
`§ 42.123 in order for the evidence to be admitted as rebuttal evidence with
`Petitioner’s Reply. The Board “has broad discretion to regulate the
`presentation of evidence under Fed. R. Evid. 611(a).” Belden Inc. v. Berk-
`Tek LLC, ---F.3d---, 2015 WL 6756451, at *14 (Fed. Cir. Nov. 5, 2015). In
`particular, the Board has discretion to permit Petitioner to submit evidence
`with its Reply to rebut an argument raised in the Patent Owner Response.
`Id.; Flir Sys., Inc. v. Leak Surveys, Inc., Case IPR2014-00411, slip op. at 11
`(PTAB Sept. 3, 2015) (Paper 113).
`Under the circumstances of this case, we determine not to exclude the
`Jahns and Supplemental Suetens Declarations. First, the Declarations serve
`the permissible rebuttal function of responding directly to an argument
`Patent Owner made in its Response, PO Resp. 53, that Petitioner has failed
`to establish that Apogee “was distributed outside of Agfa.” See Belden,
`2015 WL 6756451, at *14 (“the traditional principle [is] that evidence
`offered to rebut must accomplish the function of rebuttal; ‘to explain, repel,
`counteract, or disprove the evidence of the adverse party’” (internal citation
`omitted)); Flir, slip op. at 11 (“[t]he object of a reply is to address arguments
`
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`IPR2014-00788
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`made in an opposition”). Second, Patent Owner had a fair opportunity to
`respond to the Declarations. Because the Declarations were served on
`Patent Owner on April 16,8 well before they were filed with the Reply,
`Patent Owner had ample opportunity to depose Mr. Jahn and Mr. Suetens
`before the June 11 deadline for filing motions for observations regarding
`cross-examination. Indeed, Patent Owner has not argued that it did not
`depose the declarants because it was unable to do so, but rather because it
`believed that such depositions were “unnecessary.” Paper 33, 4–5. Finally,
`the Declarations do not add to the evidence initially presented in the Petition
`to support the grounds of unpatentability authorized in this proceeding, but
`are relied on only to support the public accessibility of a reference that was
`presented with the Petition. See Belden, 2015 WL 6756451, at *11
`(rejecting argument that rebuttal expert declaration was necessary to
`establish prima facie case of unpatentability because “prior art itself,
`together with the Petition, sufficed to supply a prima facie case of
`obviousness”).
`We have reviewed the additional arguments that Patent Owner raises
`in support of its Motion, and determine that they address the weight to be
`given the Declarations rather than their admissib
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