`_______________________
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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
`BVBA, and HEIDELBERG, USA
`
`Petitioners,
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`v.
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`CTP INNOVATIONS, LLC
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`Patent Owner.
`______________
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`Case IPR2014-00788
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`Patent 6,738,155
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`____________
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`PETITIONERS’ REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(d)
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`Case IPR2014-00788
`Petitioners’ Request for Rehearing
`SUMMARY OF ISSUES FOR REHEARING
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`I.
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`Petitioners Eastman Kodak Company, Agfa Corporation, Esko Software
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`BVBA, and Heidelberg, USA, Inc. (“Petitioners”) request rehearing under 37
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`C.F.R. § 42.71(d) of the Board’s Final Written Decision (“Decision,” Paper No.
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`35) finding that Petitioners have not demonstrated that claims 10-20 of U.S. Patent
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`No. 6,738,155 (“the ’155 patent”) are unpatentable.
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`Independent claims 10 and 16 require, inter alia, “providing [a/said] plate-
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`ready file to a remote printer.” Before this occurs, the plate-ready file must be
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`generated. There is no dispute that the Apogee reference teaches the generation of
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`a plate-ready file—what Apogee calls a “PIF,” which is the file that is the output of
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`Apogee’s PDF RIP process. (Ex. 1007 at 6.) Rather, the sole reason the Board
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`ruled in favor of Patent Owner was due to the mistaken belief that there is no
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`teaching in Apogee of providing a plate-ready file to a remote printer—i.e., that
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`“there is no evidence that a person of ordinary skill in the art would have
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`considered generating a plate-ready file anywhere other than where the printing
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`plates are produced: at the printing facility.” (Decision at 27, 31.)
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`In reaching this conclusion, the Board overlooked directly contradictory
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`evidence in the trial record, particularly the cited portion of the Apogee reference
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`1
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`Petitioners’ Request for Rehearing
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`itself. (See Petition1 at 31 and 46-48, citing Ex. 1007 at 6-7.) For the step of
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`“generating a plate-ready file from said PDF file,” Petitioners relied upon
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`Apogee’s teaching of PDF RIPs, which are undisputed to be “plate-ready files”
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`within the meaning of the ’155 patent. Importantly, Apogee expressly describes
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`these plate-ready files as being sent to a remote printer “in another town.” On page
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`7, Apogee describes its PrintDrive system (which receives the plate-ready files
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`after they have been created by the PDF RIP process) as “allow[ing] you to
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`physically separate the rendering from the actual plate production, so your PDF
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`RIP can be in the desktop department and the PrintDrive can sit next to the output
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`device, even in another town.” (Ex. 1007 at 7, emphasis added.) Petitioners’
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`claim charts directed Patent Owner and the Board to this precise portion of Apogee
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`teaching the generation of a plate-ready file at locations remote from the printing
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`company facility, with those files then being sent from the file processing facility
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`to the remote printing facility. (See Petition at 31 and 46-48.) The Board’s sole
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`reason for not holding claims 10-20 unpatentable overlooked this key aspect of the
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`record.
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`Furthermore, although Petitioners did not argue for a construction of the
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`term “remote printer,” the Board’s construction of the term (i.e., an offsite printing
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`company facility accessible via a private or public communication network), was
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`1 Citations to the Petition are to the “corrected” Petition, Paper 4.
`2
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`Petitioners’ Request for Rehearing
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`explicitly addressed in the Petition chart of claim 12. In this chart, accepted by the
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`Board as demonstrating a reasonable likelihood of prevailing on the merits, the
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`exact passage of page 7 of Apogee was explicitly referenced. (See Petition at 47-
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`48.) Patent Owner failed to rebut this evidentiary showing that Apogee employs a
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`remote printer in “another town” from the plate-ready file processing and sends
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`that file to an offsite printing company facility accessible via a private or public
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`communication network.
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`Lastly, Petitioners’ obviousness grounds rely on the system architecture
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`from Jebens and Dorfman as primary references, not Apogee. There is no doubt
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`(or dispute) that the central service of Jebens routes to-be-printed files from a
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`remote client to a remote printer. The Board agreed with the architectural
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`framework of the Jebens Ground in its final written decision. (Decision at 12-13,
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`22-23.) The same holds true for the Dorfman ground. (Decision at 29-30.) When
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`Jebens/Dorfman is modified with the PDF processing teachings of Apogee—as
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`applied in the grounds accepted by the Board—the to-be-printed file routed to the
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`remote printer is the plate-ready file of Apogee. Yet, the Board’s Decision
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`mistakenly looks to the secondary reference (Apogee) for architectural structure
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`relied upon in the primary references, and then suggests that Apogee, not the
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`primary references, would have to be modified to route a plate-ready file to a
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`remote printer. However, the issue for obviousness is not whether Apogee needs
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`Petitioners’ Request for Rehearing
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`to be modified, but whether one of ordinary skill would have been motivated to
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`modify Jebens/Dorfman to include the PDF processing teachings of Apogee. As to
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`this point, and as explained below, the Petition and supporting evidence provided
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`an unrebutted motivation of why the PDF workflow of Apogee and accompanying
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`plate-ready file were desirable and would have been an obvious modification to the
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`Jebens/Dorfman architecture. (See Petition at 25, 28-29, and 43-44.) Thus, even if
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`Apogee’s explicit teaching of remote printing could be ignored, which it cannot,
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`the Board’s Decision misapprehends the trial grounds.
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`Apogee plainly employs a remote printer in “another town” and Petitioners
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`explicitly relied on this teaching in the Petition. The Board has overlooked the
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`record in this proceeding and misapprehended the trial grounds. For these reasons,
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`Petitioners respectfully request that the Board grant rehearing and cancel claims
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`10-20 of the ’155 patent.
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`II. LEGAL STANDARDS
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`“A party dissatisfied with a decision may file a request for rehearing,
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`without prior authorization from the Board.” 37 C.F.R. § 42.71(d). “The request
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`must specifically identify all matters the party believes the Board misapprehended
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`or overlooked, and the place where each matter was previously addressed in a
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`motion, an opposition, or a reply.” Id. Here, the Board overlooked Apogee’s
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`express teaching that one of ordinary skill would have, and in fact did, consider
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`Petitioners’ Request for Rehearing
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`generating a plate-ready file at locations remote from the printing company
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`facility. Similarly, the Board misapprehended Petitioners’ proposed ground of
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`unpatentability, relying on the system structure of Apogee when the proposed
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`ground was based upon the system architecture of the primary references Jebens
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`and Dorfman.
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`III. ARGUMENT
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`A. The Board Overlooked Explicit Evidence That Apogee
`Discloses Sending Plate Ready Files To A Remote Printer
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`The sole reason that claims 10-20 of the ’155 patent were held not
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`unpatentable is because Petitioners allegedly provided “no evidence that a person
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`of ordinary skill in the art would have considered generating a plate-ready file
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`anywhere other than where the printing plates are produced: at the printing
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`facility.” (Decision at 27, 31.) This is incorrect and directly refuted by Apogee,
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`and even by the description of practices known in the art as described by the ’155
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`patent itself.
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`Before a plate-ready file can be provided to a remote printer as specified in
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`claims 10 and 16, the file must be generated. There is no dispute that Apogee
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`teaches the generation of a plate-ready file—what Apogee refers to as the “PIF,”
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`which is the output of the “PDF RIP” process described in Apogee. Specifically,
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`Petitioners’ claim chart points to Apogee as disclosing the generation of a plate-
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`ready file through the PDF RIP process. (See Petition at 31, 46-48, citing Ex. 1007
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`at 6-7.) Patent Owner and its declarant agree that the PDF RIP process in Apogee
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`creates the plate-ready file. (See Decision at 24, citing Ex. 2014 ¶ 30.)
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`In opposing the Petition, Patent Owner urged an interpretation of the claims
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`requiring “offsite” file processing, asserting that a “POSITA would consider [the
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`PDF RIP] process to be occurring at the jobber or supplier, i.e., at a printing
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`company facility.” (PO Resp. at 27, citing Ex. 2014 ¶ 30.) The Board agreed with
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`Patent Owner’s claim construction argument, concluding that Petitioners did not
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`provide “any evidence” “that a person of ordinary skill in the art would have
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`combined Jebens and Apogee in such a way that the plate-ready file would have
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`been produced at Jebens’ host facility or end user facility....” (Decision at 26-27.)
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`As noted above, the parties and the parties’ declarants agree that the Apogee
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`PDF RIP process is the software component of the Apogee system that generates a
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`plate-ready file. (Decision at 24, citing PO Resp. at 27 and Ex. 2014 ¶ 30.) In the
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`Petition, Petitioners relied specifically on this PDF RIP process and based their
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`unpatentability arguments on the processing flow of Apogee’s PIF plate-ready file
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`from the PDF RIP process to a remote printer. (See Petition at 31, 46-48, citing
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`Ex. 1007 at 6-7.) After a plate-ready file is generated by the PDF RIP process, the
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`“Apogee PrintDrive manages the Print Image Files (PIF)” to output “to a variety of
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`output devices including Agfa imagesetters, proofers, and platesetters.” (Petition
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`6
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`at 31, 46-48, citing Ex. 1007 at 6-7.) On the same two pages consistently relied on
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`by Petitioners (pages 6 and 7), Apogee goes on to explain that
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`Apogee PrintDrive can be fed by multiple PDF RIPs over a TCP/IP network.
`This unique feature allows you to physically separate the rendering from
`the actual plate production, so your PDF RIP can be in the desktop
`department and the PrintDrive can sit next to the output device, even in
`another town.
`(Ex. 1007 at 7, Petition at 47-48, emphasis added.) Similarly, the workflow
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`schematic spanning pages 6 and 7 of Apogee shows the Apogee PDF RIP process
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`and the Apogee PrintDrive located at discrete locations, connected over a TCP/IP
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`network, thereby routing the PIF, or plate-ready file, from a remote PDF RIP to a
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`remote or offsite printer. (Petition at 31, 46-48, citing Ex. 1007 at 6-7.) Indeed,
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`this teaching is also corroborated by the ’155 patent itself, which explains in its
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`Background of the Invention Section that remote printing was known long prior to
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`filing the ’155 patent, namely, that “[o]nce approval of the proof is given by the
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`end user, a medium, such as a computer to plate (CTP) file [i.e., plate-ready file] is
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`produced and sent to the printer.” (Ex. 1001 at 1:36-38, emphasis added.)
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`Clearly the end user is remote to the printer, which corroborates the generation of
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`known CTP plate-ready files at locations other than the printing facility.2 See
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`Petition at 8-11; In re Morsa, 803 F.3d 1374, 1378 (Fed. Cir. 2015) (citing
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`approvingly to the Board’s use of the specification of the patent under examination
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`to establish the knowledge of a person of ordinary skill in the art).
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`Thus, contrary to the Board’s sole rationale for not finding claims 10-20
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`unpatentable, there is significant, documentary evidence of record—unrebutted,
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`and relied on by Petitioners—that one of ordinary skill was well aware of
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`generating plate-ready files at locations remote from the printing company facility
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`(i.e., in another town). One benefit of that remote printing arrangement was also
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`explicitly explained by Apogee and relied on by Petitioners: to allow multiple
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`physically separate PDF RIP processes to feed a single printing system, such as the
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`PrintDrive disclosed in Apogee, ensuring that the platesetter, for example, is
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`running at full capacity. (Petition at 31, 46-48, citing Ex. 1007 at 6-7.)
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`2 As other portions of the ’155 patent’s prior art background section indicate, the
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`referenced “printer” was known to be a separate business or entity located at an
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`offsite, remote location. For instance, the patent discusses the “printer” who is sent
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`the plate-ready file as the entity that, e.g., “manufactures a printing plate,”
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`“converts the CTP file into a printing plate,” and “uses the printing plate to create
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`the printed product.” (Ex. 1001 at 1:45-51.)
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`Further, Petitioners’ expert testified that, as a matter of technical
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`implementation, one of ordinary skill would have known that plate-ready files
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`were either produced at a location remote from, or local to, the printer. In other
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`words, there was a known design choice of performing this file processing at either
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`location (see Petitioners Reply at 4) and pages 6 and 7 of Apogee consistently
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`relied upon by Petitioners confirm both options. The Board misapprehended
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`Petitioners’ statement in its Reply that “one of ordinary skill could predictably
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`implement Apogee at a central service facility” as an inadequate motivation to
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`combine argument. Rather, Petitioners’ Reply statement was simply a summary of
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`its Petition grounds, already accepted by the Board, which explicitly referenced
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`Apogee’s remote printing and the preceding generation/processing of the PIF
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`plate-ready file at a geographic location remote from the printer or, alternatively, at
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`the same geographic location as the printer. (Petition at 31, 46-48, citing Ex. 1007
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`at 6-7.) Because Apogee uses the same remote printer arrangement as
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`Jebens/Dorfman, there is simply no need to modify the trial grounds in this regard.
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`Page 7 of Apogee is cited by Petitioners no less than 15 times throughout its
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`petition, and specifically cited in Petitioners’ claim charts for the limitation of
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`generating a plate-ready file. (See Petition at 31, 35, 46-48, and 56.) Indeed, aside
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`from the necessity to read the content of pages 6 and 7 of Apogee for technical
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`context, the exact “another town” sentence quoted above is explicitly reproduced
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`in Petitioners’ chart for claim 12 (see Petition at 47-48)—this record evidence is
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`relied upon by Petitioners for the narrowest presentation of the remote printer
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`claim element (i.e., claim 12).
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`Although Petitioners did not argue for a construction of the term “remote
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`printer,” the Board’s construction of the term (i.e., an offsite printing company
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`facility accessible via a private or public communication network) was squarely
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`addressed with respect to claim 12 in the chart excerpted above. (See Petition at
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`47-48.) That chart cites the very passage of Apogee that forms the basis of
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`Petitioners’ rehearing request and shows plainly that Apogee discloses a “remote
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`printer” even as construed by the Board. Importantly, Patent Owner never rebutted
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`the trial ground in this regard.
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`10
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`Petitioners’ Request for Rehearing
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`Apogee’s teaching with respect to claim 12—that Apogee’s plate-ready file
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`is sent to an offsite printing company facility in another town via a TCP/IP private
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`or public communications network connection—is uncontested in the record.
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`Because “[a] broader independent claim [claim 10] cannot be nonobvious where a
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`dependent claim stemming from that independent claim is invalid for obviousness
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`[claim 12],” the Board must institute rehearing to cancel claims 10-20 of the ’155
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`patent. See Callaway Golf Co. v. Acushnet Co., 576 F.3d 1331, 1344 (Fed. Cir.
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`2009) (citing Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307, 1319 (Fed. Cir.
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`2007)).
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`The requirements of 37 C.F.R. § 42.71(d) have been met. Petitioners
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`respectfully request that the Board institute a rehearing to cancel claims 10-20 of
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`the ’155 patent.
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`B. The Board Misapprehended Petitioners’ Obviousness
`Grounds, Treating Apogee, Rather Than Jebens Or Dorfman,
`As The Primary References
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`Petitioners’ grounds of unpatentability are based upon Jebens and Dorfman
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`as primary references. In this manner, Petitioners rely upon the specific system
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`architecture of Jebens and Dorfman in the proposed grounds, and not the precise
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`architecture of Apogee. For example, Petitioners’ rely on Jeben’s disclosure that
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`the central service facility, or host system, routes to-be-printed files from a remote
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`client to a remote publishing entity such as a printer. (See Petition at 23-24, citing
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`Ex. 1005 at 2:64−3:10; 5:11-22; Petition at 31, citing Ex. 1005 at 5:17-22; Petition
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`at 35.) There is no dispute that Jebens operates in this manner. (Decision at 12-
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`13.) The same analysis applies to Dorfman, which routes to-be-printed files from a
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`remote client to a commercial printer. (See Petition at 47, 56, citing Ex. 1006 at p.
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`8, ll. 21-26; Decision at 28-29.) When combined with Apogee, the to-be-printed
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`file is the plate-ready file produced by Apogee, which is then routed from Jeben’s
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`host system to a “publishing entity such as a printer, where the finalized brochure
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`would be published,” or to Dorfman’s commercial printer. (Petition at 31, citing
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`Ex. 1005 at 5:17-22; Petition at 47, citing Ex. 1006 at p. 8, ll. 21-26.)
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`Petitioners provided an unrebutted rationale, supported by the declaration of
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`Prof. Lawler, for why one of ordinary skill in the art would have been motivated to
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`modify the architecture of the primary references with the PDF workflow and
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`plate-ready file of Apogee; namely, the known and obvious need to include a
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`rasterization process—such as the PDF RIP process of Apogee (by which plate-
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`ready files are generated)—into a printing prepress workflow such as that disclosed
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`by Jebens or Dorfman. (See Petition at 25-29, 43-44.) Because Apogee uses the
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`same remote printer arrangement as Jebens/Dorfman, no modifications of the
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`references are necessary in this regard, and nothing else is required to cancel
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`claims 10-20 as unpatentable.
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`Petitioners’ Request for Rehearing
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`The Board’s Decision mistakenly looks to the secondary reference (Apogee)
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`for architectural features relied upon in the primary references Jebens and
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`Dorfman, and then suggests that Apogee would have to be modified to transmit a
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`plate-ready file to a remote printer. This is incorrect for two reasons. First, as
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`discussed above, Petitioners’ proposed combinations and hypothetical systems are
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`based upon Jebens or Dorfman as primary references, both of which route to-be-
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`printed files to a remote printer. There is no modification of the primary
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`reference/system required to route a plate-ready file to a remote printer as claimed.
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`Stated differently, the obviousness inquiry does not ask “whether [Jebens
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`and Apogee, or Dorfman and Apogee] could be physically combined but whether
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`the claimed inventions are rendered obvious by the teachings of the prior art as a
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`whole.” In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc); see also In re
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`Keller, 642 F.2d 413, 425 (CCPA 1981) (stating “[t]he test for obviousness is not
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`whether the features of a secondary reference may be bodily incorporated into the
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`structure of the primary reference”); M.P.E.P. § 2145(III). Similarly,
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`nonobviousness cannot be established by attacking the references individually
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`when a challenge is predicated upon a combination of prior art disclosures. See In
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`re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Because both Jebens
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`and Dorfman are based on, and explicitly disclose, a distributed system
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`architecture where to-be-printed files are routed to a remote printer, claims 10-20
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`are unpatentable as obvious when combined with Apogee.
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`Second, even if physically combined, Apogee explicitly teaches generating a
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`plate-ready file at a processing location that is geographically remote (as required
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`by the Board’s construction) from a printer, and then routing that file over a
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`communication network to the remote printer in “another town.” That is, even if
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`considering the system architecture of Apogee were proper, which it is not,
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`physical incorporation of Apogee into the primary references would also result in
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`the claims of the ’155 patent because Apogee teaches the same architecture: a
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`remote printer where the printer is located “in another town” from the location
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`where the plate-ready file processing occurs.
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`IV. CONCLUSION
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`For the reasons set forth above, Petitioners respectfully request that the
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`Board institute rehearing and cancel claims 10-20 of the ’155 patent.
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`Dated: December 22, 2015
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`Respectfully submitted,
`Oblon, McClelland, Maier &
`Neustadt, LLP
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`
`
`/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.
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies service of
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`PETITIONERS’ REQUEST FOR REHEARING UNDER 37 C.F.R. § 42.71(d) on
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`the counsel of record for the Patent Owner by filing this document through the
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`Patent Review Processing System as well as delivering a copy via electronic mail
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`to the following address:
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`W. Edward Ramage
`L. Clint Crosby
`BAKER, DONELSON, BEARMAN, CALDWELL
`& BERKOWITZ, P.C.
`eramage@bakerdonelson.com
`ccrosby@bakerdonelson.com
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`
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`Dated: December 22, 2015
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`/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.