Paper 9
`Trials@uspto.gov
`Entered: November 26, 2014
`Tel: 571-272-7822
`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
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`Trials@uspto.gov
`Entered: November 26, 2014
`Tel: 571-272-7822
`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
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`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 Corrected Petition
`(Paper 4, “Pet.”) to institute an inter partes review of claims 10–20 (the
`“challenged claims”) 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 have jurisdiction under 35 U.S.C.
`§ 314.
`Institution of an inter partes review is authorized by statute when “the
`information presented in the petition filed under section 311 and any
`response filed under section 313 shows that there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” 35 U.S.C. § 314(a). We determine that
`Petitioner has shown a reasonable likelihood that it would prevail with
`respect to at least one of the claims of the ’155 patent. Accordingly, we
`grant the Petition to institute an inter partes review.
`
`Related Proceedings
`B.
`Petitioner discloses that the ’155 patent has been asserted in 49
`infringement actions, most of which are still pending. 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
`
` 2
`
`
`
`
`
`
`
`IPR2014-00788
`Patent 6,738,155 B1
`
`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).
`
`The ’155 Patent
`C.
`The ’155 patent issued on 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 (also called “copy”) 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”
`
` 3
`
`
`
`
`
`
`
`IPR2014-00788
`Patent 6,738,155 B1
`
`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. After alterations are made, new proofs are sent to the end user;
`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 1:35–39. “Imposition”
`involves “the set of pages on a particular plate as well as their positioning
`and orientation.” Id. at 1:38–40. According to the ’155 patent, imposition
`“is particularly important in the creation of booklets or catalogs, where
`pages are positioned using register marks to assist in the stripping, collating,
`and folding of the printed product.” Id. at 1:41–44. A printer makes a plate
`“using the medium created during prepress,” e.g., if a CTP file is used, the
`printer converts the CTP file into a printing plate. Id. at 1:45–48. The
`printer uses the plate on a printing press to reproduce the product; the
`product is bound, finished, and distributed to create the product in its final
`form. 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:
`
` 4
`
`
`
`
`
`
`
`IPR2014-00788
`Patent 6,738,155 B1
`
`
`
`Figure 1 depicts end user facility 300, printing company facility 400,
`and central service facility 105 connected together via either private network
`160 or public network 190. Id. at Fig. 1. In this embodiment, end user
`facility 300 comprises a router, 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, a “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
`
` 5
`
`
`
`
`
`
`
`IPR2014-00788
`Patent 6,738,155 B1
`
`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.
`
`Illustrative Claims
`D.
`Claims 10 and 16 are independent, and are drawn to methods of
`providing printing and publishing services to a remote client in real time
`using a communication network. Id. at 22:4–14, 31–45. Claims 11–15
`depend from claim 10, and claims 17–20 depend from claim 16. Id. at
`22:15–30, 46–61.
`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.
`
`
` 6
`
`
`
`
`
`
`
`IPR2014-00788
`Patent 6,738,155 B1
`
`
`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.
`
`
`Prior Art Relied Upon
`E.
`Petitioner relies upon the following prior-art references:
`
`Ex. 1005
`Nov. 20, 2001
`US 6,321,231
`Jebens
`Ex. 1006
`Feb. 26, 1998
`WO 98/08176
`Dorfman
`Agfa Apogee, The PDF-based Production System (1998) (“Apogee”)
`(Ex. 1007)
`Apple OPI White Paper (“OPI White Paper”) (1995) (Ex. 1008)
`MATTIAS ANDERSSON ET AL., PDF PRINTING AND PUBLISHING, THE
`NEXT REVOLUTION AFTER GUTENBERG (Micro Publishing Press 1997)
`(“Andersson”) (Ex. 1009).
`
`
`
` 7
`
`
`
`
`
`
`
`IPR2014-00788
`Patent 6,738,155 B1
`
`
`Asserted Grounds of Unpatentability
`F.
`Petitioner contends that the challenged claims are unpatentable under
`35 U.S.C. § 103 based on the following specific grounds (Pet. 18–60):
`References
`Basis
`Claims Challenged
`Jebens and Apogee
`§ 103
`10–13 and 15–20
`Jebens, Apogee, and Andersson
`§ 103
`14
`Dorfman and Apogee
`§ 103
`10–13
`Dorfman, Apogee, and Andersson
`§ 103
`14 and 15
`Dorfman, Apogee, and OPI White
`§ 103
`16–20
`Paper
`
`
`II. ANALYSIS
`
`A.
`
`Preliminary Issues
`1.
`The Prior Petition
`Patent Owner argues that we should not consider this Petition because
`we already considered, and denied, a petition for inter partes review of the
`’155 patent: Printing Indus. of Am. v. CTP Innovations, LLC, Case
`IPR2013-00489 (PTAB) (“the ’489 IPR”). Prelim. Resp. 13 (citing Ex.
`1004). Patent Owner contends that the present Petition represents a “second
`bite at the apple,” or a “do over,” of the ’489 IPR, because it relies on “the
`same or equivalent” prior art as the ’489 IPR. Id. at 13–15. First, Patent
`Owner notes that two of the prior-art references asserted here, Dorfman and
`Andersson, were also asserted in the ’489 IPR. Id. at 14. Second, Patent
`Owner alleges that Apogee is equivalent to “Lucivero,” a reference asserted
`in the ’489 IPR. Id. Finally, Patent Owner alleges that OPI White Paper is
`equivalent to “Sands,” another reference asserted in the ’489 IPR.
`Id. at 14–15.
`
` 8
`
`
`
`
`
`
`
`IPR2014-00788
`Patent 6,738,155 B1
`
`
`Patent Owner overstates the overlap between this proceeding and the
`’489 IPR. First, Patent Owner does not adequately support its contention
`that Apogee and OPI White Paper are equivalent to Lucivero and Sands,
`respectively, and such equivalence is not self-evident. The fact that Apogee
`discusses products sold by the same entity that owns Lucivero falls far short
`of establishing that Apogee and Lucivero are equivalent. Patent Owner
`provides no support for its allegation that OPI White Paper and Sands are
`equivalent.
`Second, the fact that Dorfman and Andersson are cited in both
`proceedings does not establish that we are duplicating our efforts in
`considering the Petition. The petitioner in the ’489 IPR alleged that the
`independent claims at issue here, claims 10 and 16, were unpatentable over
`Andersson combined with “Zilles,” “Benson ’818,” “Buckley,” and
`Lucivero. Ex. 1004, 8. Dorfman was added to some of these combinations
`only to allege unpatentability of some of the dependent claims. Id. Here,
`Petitioner proposes combining Dorfman or Andersson, if at all, with Jebens
`and/or OPI White Paper; Zilles, Benson ’818, Buckley, and Lucivero are not
`asserted. Pet. 6–7. For these reasons, we do not consider the Petitioner to
`constitute a “do over” of the ’489 IPR.
`2.
`Real-Parties-In-Interest
`Patent Owner contends that Petitioner failed to comply with 37 C.F.R.
`§ 42.8(b)(1) because it failed to identify all real-parties-in-interest. Prelim.
`Resp. 27–31. According to Patent Owner, all of Petitioner’s customers are
`real-parties-in-interest because Petitioner admitted that it filed the Petition
`on their behalf. Patent Owner relies on a press release in which Petitioner
`states that “[w]e feel it is important to take this action [file petitions for inter
`
` 9
`
`
`
`
`
`
`
`IPR2014-00788
`Patent 6,738,155 B1
`
`partes review of the ’155 patent] to support our customers from these
`frivolous claims [of infringement].” Ex. 2001, 1. Patent Owner argues that
`“the Board should require Petitioner[] to amend the Petition to list all
`customers [as real-parties-in-interest] or, in the alternative, should dismiss
`the Petition in its entirety.” Prelim. Resp. 31.
`On this record, we are not persuaded that any of Petitioner’s
`customers is a real-party-in-interest in this proceeding. A determination
`whether a non-party to an inter partes review is a real-party-in-interest is a
`“highly fact-dependent question,” based on whether the non-party “exercised
`or could have exercised control over a party’s participation in a proceeding.”
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759–60 (Aug.
`14, 2012). Petitioner’s filing of the present petition “to support [its]
`customers” does not, by itself, mean that its customers exercise control over
`Petitioner’s actions in this proceeding.
`Patent Owner also seems to argue that Petitioner filed the Petition on
`behalf of all of the over 10,000 members of the Printing Industries of
`America (“PIA”), the petitioner in the ’489 IPR. For example, Patent Owner
`notes that Thomas Topp, a senior vice president of Heidelberg, USA, one of
`the Petitioner entities, is a member of the board of directors of PIA. Prelim.
`Resp. 30. Patent Owner also notes that Petitioner entities Agfa and Eastman
`Kodak are substantial donors to PIA. Id. But, again, Petitioner’s financial
`and other support of PIA does not, by itself, mean that either PIA or its
`members controls Petitioner’s actions in this proceeding. Therefore, on the
`current record, we are not persuaded that Petitioner failed to identify any
`real-parties-in-interest.
`
`
`
`
`10
`
`
`
`IPR2014-00788
`Patent 6,738,155 B1
`
`
`Claim Construction
`B.
`The Board gives claim terms in unexpired patents their broadest
`reasonable construction in light of the specification in which the terms
`appear. 37 C.F.R. § 100(b). Claim terms are given their ordinary and
`customary meaning as would be understood by one of ordinary skill in the
`art in the context of the entire disclosure. In re Translogic Tech., Inc., 504
`F.3d 1249, 1257 (Fed. Cir. 2007). 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).
`Petitioner proposes constructions for the following terms: “real time”
`and “plate-ready file.” Pet. 21–22. Patent Owner proposes alternative
`constructions for these terms, as well as a construction for “communication
`network.” Prelim. Resp. 7–12. For purposes of this Decision, we need only
`address “real time,” and, in particular, whether this phrase limits the scope of
`the claims.
`The term “real time” appears in the preamble of each of the
`independent claims challenged in the Petition. Claim 10 recites a “method
`of providing printing and publishing services to a remote client in real time
`using a communication network.” Ex. 1001, 22:4–6. Claim 16 contains
`similar language. Id. at 22:31–35. For simplicity, we will limit our
`discussion to the claim 10 language.
`Petitioner contends that under the broadest reasonable interpretation,
`providing services “in real time using a communication network” should be
`interpreted “as encompassing the electronic transmission of data, images,
`files etc. over a communication network.” Pet. 21. According to Petitioner,
`this interpretation is consistent with Patent Owner’s position taken in a civil
`
`
`
`
`11
`
`
`
`IPR2014-00788
`Patent 6,738,155 B1
`
`action asserting infringement of the ’155 patent, in which Patent Owner
`distinguished the provision of services to a remote client “in real time using
`a communication network,” from using mail or express carrier to send disks
`containing pages to be printed or proofed. Id. (citing Ex. 1011 ¶¶ 11, 12).
`Patent Owner disagrees with Petitioner’s interpretation, arguing that it
`“ignores the term ‘real time,’ or equates it to simply mean any electronic
`transmission over a communication network.” Prelim. Resp. 7. According
`to Patent Owner, the Specification makes clear that providing services in
`“real time” requires more than transmission over a communication network,
`because it notes that a prior art system, “WAM!NET,” transmits data over a
`communication network, and yet, according to the Specification, “document
`delivery by WAM!NET is not done in real time.” Id. at 7–8 (citing Ex.
`1001, 6:55–65). Patent Owner proposes interpreting “real time” to mean
`“the immediate processing of input,” based on dictionary definitions. Id. at
`8–9 (citing Ex. 2010, 2011).
`As noted above, the term “real time” appears in the preamble of each
`of the claims at issue. Our reviewing court has stated that “[g]enerally . . .
`the preamble does not limit the claims.” Am. Med. Sys., Inc. v. Biolitec, Inc.,
`618 F.3d 1354, 1358 (Fed. Cir. 2010) (internal citation omitted). While “the
`preamble may be construed as limiting if it recites essential structure or
`steps, or if it is necessary to give life, meaning, and vitality to the claim,” it
`is not separately limiting “when the claim body describes a structurally
`complete invention such that deletion of the preamble phrase does not affect
`the structure or steps of the claimed invention.” Id. at 1358–59 (internal
`citations and quotations omitted). Here, the preamble does not recite any
`essential steps, or provide a necessary antecedent for any terms in the steps
`
`
`
`
`12
`
`
`
`IPR2014-00788
`Patent 6,738,155 B1
`
`in the body of the claim. Thus, it would appear that “the claim drafters did
`not rely on the preamble language to define or refine the scope of the
`asserted claims.” Id. at 1359 (citation omitted).1 Thus, we determine, for
`purposes of this decision and on the present record, that the preambles in the
`claims at issue, including the term “real time,” do not limit the scope of the
`claims.
`The discussion of WAM!NET in the Specification does not persuade
`us otherwise. That discussion does not provide sufficient information about
`WAM!NET for us to make any useful inferences regarding the meaning of
`“real time.” For example, the Specification does not explain the specific
`“documents” that WAM!NET is delivering, from whom and to whom these
`documents are being delivered, the specific method of “delivery,” and why
`that method of delivery is not done in “real time.”
`
`Claims 10–13 and 15–20—Jebens and Apogee
`C.
`Independent claims 10 and 16 are drawn to methods of providing
`printing and publishing services to a remote client. Claims 11–15 depend
`from claim 10, and claims 17–20 depend from claim 16. Petitioner asserts
`
`
`1 To the extent that the term “method of providing printing and publishing
`services to a remote client in real time using a communication network”
`does limit the scope of claim 10, it would only require that printing and
`publishing services be provided using a communication network. The
`phrase “providing printing and publishing services to a remote client in real
`time” is best read to refer to the end result of using a telecommunication
`network, rather than an additional limitation beyond using a
`telecommunication network. By analogy, in a preamble reading “a method
`of providing hot food using a microwave oven,” providing hot food is the
`end result of using a microwave oven, and not, by itself, a separate
`limitation.
`
`
`
`
`13
`
`
`
`IPR2014-00788
`Patent 6,738,155 B1
`
`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.
`1.
`Jebens
`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’s
`invention.
`
`
`
`
`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
`
`
`
`
`14
`
`
`
`IPR2014-00788
`Patent 6,738,155 B1
`
`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 then searches the host
`system and downloads low-resolution copies of desired images, creates the
`brochure using the low-resolution copies, and sends the brochure back to the
`host system. Id. at 5:11–20. The host system replaces the low-resolution
`copies with high-resolution copies of the images, and electronically routes
`the brochure with the high-resolution images to a printer per the agency’s
`instructions. Id. at 5:19–20. 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 6:66–7:4–20.
`2.
`Apogee
`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 format; 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
`
`
`
`
`15
`
`
`
`IPR2014-00788
`Patent 6,738,155 B1
`
`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.
`Claims 10–13 and 15
`We have reviewed Petitioner’s and Patent Owner’s contentions and
`arguments regarding the combination of Jebens and Apogee, and are
`persuaded, on the current record, that there is a reasonable likelihood that
`Petitioner would prevail in showing that independent claim 10, and claims
`11–13 and 15 that depend from claim 10, are unpatentable over that
`combination. We find persuasive based on the current recordPetitioner’s
`contention that Jebens teaches a “central system” (host system 10) that
`“coordinates the OPI process” between a front end user and a remote printer.
`Pet. 24; see Ex. 1005, Fig. 1. That is, Jebens’s host system 10 stores high-
`and low-resolution versions of images in a searchable format; permits a
`remote first user to locate and download low-resolution copies of images;
`receives from the first user an electronic file defining a document that
`incorporates at least one of the downloaded images; and routes the file—
`with high-resolution versions of the images replacing the low-resolution
`versions—to a remote second user, which may be a printer. See, e.g., id. at
`5:5–22.
`Petitioner further contends that these teachings correspond to the
`“storing” and “providing said files” steps of claim 10, as well as the step of
`providing a file intended for publication (although not necessarily a plate-
`ready file) to a remote printer. While Jebens does not expressly teach
`
`
`
`
`16
`
`
`
`IPR2014-00788
`Patent 6,738,155 B1
`
`generating a PDF from the page layout designed by the end user, it does
`teach generating a “page description language” (PDL) file. Ex. 1005,
`13:64–67. According to Petitioner’s declarant, Professor Brian P. Lawler, a
`person of ordinary skill would have known that two main types of PDL files
`are PostScript and PDF files, and that the known benefits of using PDF files
`would have motivated the skilled artisan to use PDF files in Jebens’s
`digitized workflow to obtain “workflow benefits” and “to easily RIP the
`PDF file into a plate-ready format as described by . . . Apogee.” Pet. 25–26
`(citing Ex. 1021 ¶¶ 92–93). Apogee teaches rasterizing PDF files to make a
`“Print Image File” that can be sent to an image setter or platesetter to make a
`plate for offset printing. Ex. 1007 at 6–7; Ex. 1021 ¶ 93. Petitioner relies on
`Apogee as teaching that preparing a plate-ready file is a necessary part of the
`pre-press process for offset printing. According to Professor Lawler, the
`“system describe[d] by Jebens is not limited to any one output type,” but
`“known output devices would simply be incorporated into the workflow by
`the appropriate plate-ready-file RIP.” Ex. 1021 ¶ 94.
`Patent Owner disputes that Jebens and Apogee render claims 10–13
`and 15 obvious. Prelim. Resp. 16–20. First, Patent Owner argues that
`Jebens “does not disclose a real time system as described in the ’155 Patent,
`because the ’155 Patent specification discloses another prior art system with
`more network connectivity than Jebens, yet states that this more-connected
`system is not real time.” Id. at 16. The prior art system to which Patent
`Owner refers is the WAM!NET private communication network discussed
`above in the context of construing “real time.” This argument is based on
`Patent Owner’s position that the term “real time” independently limits the
`
`
`
`
`17
`
`
`
`IPR2014-00788
`Patent 6,738,155 B1
`
`scope of the claims. As discussed above, we disagree with that position.
`Accordingly this argument is not persuasive.
`Second, Patent Owner argues that Jebens does not disclose generating
`a PDF file from a designed page layout, generating a plate-ready file from
`said PDF file, and providing said plate-ready file to a remote printer.
`Prelim. Resp. 17–18. However, Petitioner does not rely on Jebens alone to
`teach these elements, but rather on Jebens combined with Apogee.
`Nonobviousness cannot be established by attacking the references
`individually when the rejection is predicated upon a combination of prior art
`disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
`4.
`Claims 16–20
`Petitioner relies on Jebens and Apogee to teach the limitations of
`claim 16 that are similar to those in claim 10. Pet. 33–37. For the step of
`“providing said PDF file to said remote client,” Petitioner relies on Apogee’s
`teaching that PDF documents can be used for remote proofing. Pet. 31–32
`(citing Ex. 1007, 4–5). For the reasons discussed in the previous section and
`based on this discussion, we are persuaded that there is a reasonable
`likelihood that Petitioner would prevail in showing that claim 16, and claims
`17–20 that depend from claim 16, would have been obvious over Jebens and
`Apogee.
`
`D. Claim 14—Jebens, Apogee, and Andersson
`Claim 14 depends from claim 10 and additionally requires that “the
`step of generating a plate-ready file from said PDF file comprises converting
`said PDF file to a PostScript file.” Ex. 1001, 22:25–27. Petitioner relies on
`Apogee and Andersson (Ex. 1009) for this teaching. Andersson teaches how
`to create, view, and edit PDF files, and how to use them to create and
`
`
`
`
`18
`
`
`
`IPR2014-00788
`Patent 6,738,155 B1
`
`simplify digital prepress workflows as compared with “traditional” prepress
`workflows. Ex. 1009, 66–67. Petitioner points to Apogee’s teaching that
`“Apogee PDF RIPs include an Adobe PostScript 3 interpreter to process
`native PDF and PostScript files and to render them for specific devices.”
`Pet. 38 (citing Ex. 1007, 6). Petitioner also relies on Andersson for teaching
`the “known printing feature that different output devices require the
`documents to be sent in different formats,” and that certain output devices
`require PostScript files as their input language. Id. at 37.
`Based on the current record, we are persuaded that there is a
`reasonable likelihood that Petitioner would prevail in showing that claim 14
`would have been obvious over Jebens, Apogee, and Andersson.
`
`Claims 10–13—Dorfman and Apogee
`E.
`Petitioner contends that claims 10–13 are unpatentable under
`35 U.S.C. § 103(a) as obvious over Dorfman and Apogee. Pet. 39–49.
`1.
`Dorfman
`Dorfman describes a “technique for easily creating and proofing
`customized printed material before printing on a production printing
`system.” Ex. 1006, 1 (abstract). A user can access a template in PDF format
`from the system’s website, modify the template by adding low-resolution
`copies of selected images and other variable data, and thereby create a
`dynamic PDF file. Id. at 4:3–8, 8:1–4.2 The PDF file may be viewed or
`printed to a local low-resolution printer for final proofing. Id. at 8:4–11.
`The user can make any necessary changes or corrections to the PDF file
`
`
`2 We conform to Petitioner’s usage of Dorfman’s original page numbers
`rather that Petitioner’s supplemental page numbers.
`
`
`
`
`19
`
`
`
`IPR2014-00788
`Patent 6,738,155 B1
`
`from the system website and send the file “for printing using conventional
`printing technology where the low resolution images would be replaced by
`the high resolution images by an OPI . . . process before printing.” Id. at
`4:18–21; see id. at 8:23–26.
`Figure 1, reproduced below, depicts an embodiment of this system:
`
`
`
`
`Figure 1 depicts Dorfman’s system comprising front end 2, memory 4,
`PDF builder 6, and production printing system 10. Id. at 5:25–6:7. Front
`end 2 may be the office of a graphic artist employed by an advertising
`agency, and typically includes a PC with internet connectivity and browser
`software. Id. at 5:29–6:10. Memory 4, PDF builder 6, and printing system
`10 are remotely located from front end 2, e.g., at the facilities of a
`commercial printing service. Id. at 6:4–7. Memory 4 may contain a
`reference library, low resolution and high resolution images, and other data.
`Id. at 5:27–29. Commercial printer 10 maintains a website that allows front
`end users access to templates and images stored in memory 4.
`Id. at 6:10–13.
`
`
`
`
`20
`
`
`
`IPR2014-00788
`Patent 6,738,155 B1
`
`
`Analysis
`2.
`Dorfman’s system comprises memory 4 that stores templa
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
