IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________
`
`EASTMAN KODAK COMPANY, AGFA CORPORATION,
`ESKO SOFTWARE BVBA, and HEIDELBERG, USA
`Petitioners
`
`v.
`
`CTP INNOVATIONS, LLC
`Patent Owner
`___________________________
`
`Case IPR2014-00789
`Patent 6,738,155
`___________________________
`
`PATENT OWNER’S NOTICE OF APPEAL
`
`
`
`
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________
`
`EASTMAN KODAK COMPANY, AGFA CORPORATION,
`ESKO SOFTWARE BVBA, and HEIDELBERG, USA
`Petitioners
`
`v.
`
`CTP INNOVATIONS, LLC
`Patent Owner
`___________________________
`
`Case IPR2014-00789
`Patent 6,738,155
`___________________________
`
`PATENT OWNER’S NOTICE OF APPEAL
`
`
`
`
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`
`Patent Owner CTP Innovations, LLC (“Patent Owner”) hereby gives notice
`
`pursuant to 35 U.S.C. § 142 and 37 C.F.R. § 90.2(a) that it appeals to the United
`
`States Court of Appeals for the Federal Circuit from the Board's Final Written
`
`Decision in IPR2014-00789, entered on November 25, 2015 (Paper No. 34), from
`
`the Board's Decision for Institution of Inter Partes Review (Paper No. 9), and from
`
`all orders, decisions, ruling, and opinions underlying the Final Written Decision.
`
`Copies of the Final Written Decision and the Decision for Institution of Inter
`
`Partes Review are attached to this Notice.
`
`
`
`In accordance with 35 C.F.R. § 90.2(a)(3)(ii), Patent Owner asserts that the
`
`issues on appeal will include, but are not limited to, the following:
`
`1. Whether the Board’s decision to institute an inter partes review
`
`proceeding is judicially reviewable, especially in cases where the Board exceeds its
`
`statutory authority in instituting an Inter Partes review proceeding.
`
`2. Whether the Board erred in its decision to institute Inter Partes
`
`Review when Petitioner failed to identify all real parties in interest in its Petition as
`
`required by 37 C.F.R. § 42.8(b)(1).
`
`3. Whether the Board erred in its decision to grant the Petition and
`
`institute Inter Partes Review for claims 1-9 of U.S. Patent No. 6,738,155 B1 (Ex.
`
`1001, “the ’155 patent”).
`
`
`
`
`
`4. Whether the Board erred in determining that claims 1-9 would have
`
`been obvious under 35 U.S.C. § 103(a) over the Jebens (Ex. 1005), Apogee (Ex.
`
`1007), and OPI White Paper (Ex. 1008) references.
`
`5. Whether the Board erred in determining that claims 1, 2, 4, 5 and 9
`
`would have been obvious under 35 U.S.C. § 103(a) over the Dorfman (Ex. 1006),
`
`Apogee (Ex. 1007), OPI White Paper (Ex. 1008), and Andersson (Ex. 1009)
`
`references.
`
`6. Whether the Board erred in determining that claims 3 and 6-8 would
`
`have been obvious under 35 U.S.C. § 103(a) over the Dorfman (Ex. 1006), Apogee
`
`(Ex. 1007), OPI White Paper (Ex. 1008), Andersson (Ex. 1009), and Adams II (Ex.
`
`1010) references.
`
`7. Whether the Board erred in admitting and not excluding from
`
`evidence the first Suetens Declaration (Ex. 1022).
`
`8. Whether the Board erred in admitting and not excluding from
`
`evidence the Apogee reference (Ex. 1007).
`
`9. Whether the Board erred in admitting the Apogee reference (Ex.
`
`1007) as prior art, and in determining that it was publicly accessible before July 30,
`
`1999.
`
`
`
`
`
`10. Whether the Board erred in admitting and not excluding from
`
`evidence the Jahn Declaration (Ex. 1023) and Supplemental Suetens Declaration
`
`(Ex. 1024), and exhibits thereto.
`
`11. Whether the Jahn Declaration (Ex. 1023) and Supplemental Suetens
`
`Declaration (Ex. 1024), and exhibits thereto, were improperly admitted into
`
`evidence, either as supplemental information or supplemental evidence.
`
`12. Whether the Board applied the incorrect standard with respect to
`
`supplemental information and/or supplemental evidence.
`
`13. Whether the Board erred in considering evidence and alleged prior art
`
`that was not submitted with the Petition.
`
`14. Whether the Board erred by construing claims in the ’155 patent
`
`according to their broadest reasonable interpretation rather than their plain and
`
`ordinary meaning.
`
`15. Whether the Board improperly and too broadly construed the relevant
`
`claim terms, and failed to apply the appropriate claim construction standard.
`
`16. Whether 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 a petitioner’s reply.
`
`
`
`
`
`17. Whether the Board, expressly or implicitly, may consider whether a
`
`patent owner does or does not take the deposition of a declarant who submits a
`
`declaration in support of a reply.
`
`18. Whether the Board may consider whether to grant or deny a motion to
`
`exclude declaration evidence due to the patent owner’s not taking the declarant’s
`
`deposition and submitting observations regarding cross-examination.
`
`
`
`Patent owner further anticipates the issues on appeal to include the findings
`
`allegedly supporting the above Board determinations, including, without limitation,
`
`the Board's interpretation of the claim language, the prior art, and the alleged
`
`supporting evidence of obviousness, the Board's consideration of expert evidence,
`
`as well as the Board's application of law on the issue of obviousness in making
`
`such determinations.
`
`
`
`Copies of this Notice of Appeal are being filed simultaneously with the
`
`Patent Trial and Appeal Board, the Director of the United States Patent and
`
`Trademark office, and with the Clerk of the United States Court of Appeals for the
`
`Federal Circuit, along with the required docketing fee.
`
`
`
`
`
`
`
`Dated: January 27, 2016
`
`
`
`
`
`
`
`Respectfully submitted,
`
`BAKER, DONELSON, BEARMAN,
`CALDWELL & BERKOWITZ, P.C.
`
`
`
`/W. Edward Ramage/
`W. Edward Ramage, Reg. No. 50,810
`BAKER, DONELSON, BEARMAN,
`CALDWELL & BERKOWITZ, P.C.
`Baker Donelson Center
`211 Commerce Street, Suite 800
`Nashville, Tennessee 37201
`Tel: (615) 726-5771
`Fax: (615) 744-5771
`Email: eramage@bakerdonelson.com
`smiller@bakerdonelson.com
`
`
`
`
`
`
`Counsel
`for Patent Owner CTP
`Innovations, LLC
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that, on January 27, 2016, the foregoing
`
`Notice of Appeal (including attachments thereto) was served in its entirety via U.S.
`
`Express Mail, postage prepaid, and electronic mail upon the following counsel for
`
`Petitioner:
`
`
`
`Scott A. McKeown
`OBLON, SPIVAK, MCCLELLAND,
`MAIER & NEUSTADT, LLP.
`1940 Duke Street
`Alexandria, VA 22314
`Tel: (703) 412-6297
`Fax: (703) 413-2220
`Email: cpdocketmckeown@oblon.com
` cpdocketkiklis@oblon.com
`
`
`
`
`
`
`
`/W. Edward Ramage/
`W. Edward Ramage, Reg. No. 50,810
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that, on January 27, 2016, pursuant to 35
`
`C.F.R. § 90.2(a), the foregoing Notice of Appeal (including attachments thereto)
`
`was filed by hand and U.S. Express Mail, postage prepaid, with the Director of the
`
`United States Patent and Trademark Office at the following address:
`
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`United States Patent and Trademark Office
`Madison Building East, 10B20
`600 Dulany Street
`Alexandria, VA 22314-5793
`
`
`
`
`
`
`/W. Edward Ramage/
`W. Edward Ramage, Reg. No. 50,810
`
`
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that, on January 27, 2016, the foregoing
`
`Notice of Appeal (including attachments thereto) along with the required docketing
`
`fee were filed via CM/ECF with the Clerk's Office of the United States Court of
`
`Appeals for the Federal Circuit.
`
`
`
`
`
`
`
`/W. Edward Ramage/
`W. Edward Ramage, Reg. No. 50,810
`
`
`
`
`
`
`
`
`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 34
`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 IPR2014-00789
`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
`
`
`
`
`
`
`
`
`
`IPR2014-00789
`Patent 6,738,155 B1
`
`
`A.
`
`Background
`
`I.
`
`INTRODUCTION
`
`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 1–9 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 1–9 based on the
`
`following alleged grounds of unpatentability:
`
`Basis
`
`§ 103(a)
`
`Reference[s]
`Jebens,1 Apogee,2 and OPI White
`Paper3
`Dorfman,4 Apogee, OPI White
`Paper, and Andersson5
`Dorfman, Apogee, OPI White
`Paper, Andersson, and Adams II6
`
`Decision on Institution (“Dec. on Inst.”) 24–25.
`
`§ 103(a)
`
`§ 103(a)
`
`Claims Challenged
`
`1–9
`
`1, 2, 4, 5, and 9
`
`3 and 6–8
`
`
`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 Apple OPI White Paper (1995) (Ex. 1008).
`4 Dorfman et al., WO 98/08176 (pub. Feb. 26, 1998) (Ex. 1006).
`5 MATTIAS ANDERSSON ET AL., PDF PRINTING AND PUBLISHING, THE NEXT
`REVOLUTION AFTER GUTENBERG (Micro Publishing Press 1997)
`(“Andersson”) (Ex. 1009).
`6 RICHARD M. ADAMS II ET AL., COMPUTER-TO-PLATE: AUTOMATING THE
`PRINTING INDUSTRY (Graphic Arts Technical Foundation 1996) (Ex. 1010).
`
` 2
`
`
`
`
`
`
`
`IPR2014-00789
`Patent 6,738,155 B1
`
`
`After the Board instituted trial, Patent Owner filed a Patent Owner
`
`Response (Paper 19, “PO Resp.”),7 to which Petitioner replied (Paper 24,
`
`“Pet. Reply”). Oral Hearing was held on June 30, 2015, and the Hearing
`
`Transcript (Paper 33, “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
`
`shown by a preponderance of the evidence that claims 1–9 are unpatentable.
`
`B.
`
`Related Proceedings
`
`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: IPR2014-00788, for review of
`
`claims 10–20 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).
`
`
`7 Patent Owner also filed two motions to exclude evidence, which are
`discussed in section II.B.4 below.
`
` 3
`
`
`
`
`
`
`
`IPR2014-00789
`Patent 6,738,155 B1
`
`
`C.
`
`The ’155 Patent
`
`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
`
` 4
`
`
`
`
`
`
`
`IPR2014-00789
`Patent 6,738,155 B1
`
`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
`
`
`
` 5
`
`
`
`
`
`
`
`IPR2014-00789
`Patent 6,738,155 B1
`
`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.
`
` 6
`
`
`
`
`
`
`
`IPR2014-00789
`Patent 6,738,155 B1
`
`
`D.
`
`Illustrative Claims
`
`Claim 1 is independent and recites a printing and publishing system
`
`comprising an end user facility, a central service facility, and a printing
`
`company facility. Claims 2–9 depend directly or indirectly from claim 1.
`
`Claim 1 is reproduced below:
`
`1. A printing and publishing system providing prepress,
`content management, infrastructure, and workflow services to
`system subscribers in real time using a communication network,
`the printing and publishing system comprising:
`an end user facility coupled to a communication network,
`the end user facility providing page building operations, the
`page building operations including the design and construction
`of pages from images, text, and data available via said
`communication network and the generation of a portable
`document format (PDF) file;
`a printing company facility coupled to said communication
`network, the printing company facility providing imposition
`operations and generating a plate-ready file from said PDF file,
`the imposition operations including the setting of pages on a
`particular plate as well as positioning and orientation of pages
`on said plate; and
`a central service facility coupled to said communication
`network, the central service facility providing storage, file
`processing, remote access, and content management operations;
`the content management operations including the capture,
`organization, archival, retrieval, and reuse of electronic files
`containing any one of text, graphics, photos, artwork, full
`pages, audio, video, and completed projects; content
`management operations further including the organization and
`cataloging of file content for browsing, searching, and
`retrieving of files and data.
`
` 7
`
`
`
`
`
`
`
`IPR2014-00789
`Patent 6,738,155 B1
`
`
`II. ANALYSIS
`
`A.
`
`Claim Construction
`
`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.
`
`1.
`
`“A printing and publishing system providing . . . services
`to system subscribers in real time using a communication
`network”
`
`The preamble for independent claim 1 recites a printing and
`
`publishing system providing services to system subscribers “in real time.”
`
`In the Decision on Institution, we determined that “the preambles in the
`
`claims at issue, including the term ‘real time,’ do not limit the scope of the
`
` 8
`
`
`
`
`
`
`
`IPR2014-00789
`Patent 6,738,155 B1
`
`claims.” Dec. on Inst. 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.
`
`2.
`
`“end user facility,” “central service facility,” and
`“printing company facility” (all claims)
`
`Independent claim 1 is drawn to a printing and publishing system
`
`comprising, inter alia, an “end user facility,” a “printing company facility,”
`
`and a “central service facility,” each coupled to the same communication
`
`network. Petitioner has “applied the construction of these terms as provided
`
`by the PTAB in connection with the [IPR2013-00489] Petition, which is that
`
`‘the claimed facilities must be distinct from each other in some manner.’”
`
`Pet. 22 (quoting Ex. 1004, 11). Patent Owner responds that this requirement
`
`should not be adopted because it “is unclear and ambiguous,” in that “‘in
`
`some manner’ . . . can mean almost anything.” PO Resp. 13. Patent Owner
`
`further contends that “any operational distinctions that can be made between
`
`these facilities are clear from the terms of the applicable claims.” Id.
`
`We agree with Patent Owner to the extent that the claim itself defines
`
`“end user facility,” “printing company facility,” and “central service facility”
`
`in terms of the particular functions they perform; e.g. the end user facility
`
`performs page building operations, the printing company facility performs
`
`imposition and generates a plate-ready file, and the central service facility
`
`performs content management operations. These functions are not limiting;
`
` 9
`
`
`
`
`
`
`
`IPR2014-00789
`Patent 6,738,155 B1
`
`for example, the printing company facility obviously would also perform
`
`platemaking and offset printing functions.
`
`But we maintain the view that these facilities must be distinct
`
`components of the claimed printing and publishing system. “Where a claim
`
`lists elements separately, the ‘clear implication of the claim language’ is that
`
`those elements are distinct components of the patented invention.” Becton,
`
`Dickenson and Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1254
`
`(Fed. Cir. 2010) (internal citations and quotation marks omitted); cf. Regents
`
`of Univ. of Minn. v. AGA Med. Corp., 717 F.3d 929, 935 (Fed. Cir. 2013)
`
`(holding that phrase “first and second occluding disks” means physically
`
`separate occluding disks). The Specification supports this conclusion
`
`because it consistently describes the three facilities as separate entities, each
`
`connected to the same communication network to facilitate the transfer of
`
`data between each other. See, e.g., Ex. 1001, 2:54–64, 4:26–33, Figs. 1–5.
`
`3.
`
`“plate-ready file”(all claims)
`
`Independent claim 1 requires a printing company facility to generate a
`
`“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. 21 (footnote omitted).
`
`
`
`
`10
`
`
`
`IPR2014-00789
`Patent 6,738,155 B1
`
`
`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, 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–
`
`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. 21. 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 construction 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.
`
`B.
`
`Claims 1–9—Jebens, Apogee, and OPI White Paper
`
`Petitioner asserts that claims 1–9 are unpatentable under 35 U.S.C.
`
`§ 103(a) as obvious over Jebens, Apogee, and OPI White Paper. Pet. 23–40.
`
`
`
`
`11
`
`
`
`IPR2014-00789
`Patent 6,738,155 B1
`
`
`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’
`
`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
`
`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.”
`
`
`
`
`12
`
`
`
`IPR2014-00789
`Patent 6,738,155 B1
`
`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.
`
`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; 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
`
`
`
`
`13
`
`
`
`IPR2014-00789
`Patent 6,738,155 B1
`
`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.
`
`OPI White Paper
`
`OPI White Paper describes the OPI “image swapping” process. Ex.
`
`1008, 10. “[I]image swapping enables a page designer to work with a small
`
`screen-resolution picture file during page design and then rely on the
`
`intervention of the OPI server to swap it out for the high-resolution, color-
`
`separated file necessary to render the picture in print.” Id. at 10, 12, Fig. 2d.
`
`OPI White Paper describes the typical manner in which the low-resolution
`
`image files, or “preview files,” are generated: a user saves a high-resolution
`
`file to a particular folder on the OPI server, which triggers a routine that
`
`creates a preview file and puts it in a different folder. Id. at 12. A particular
`
`implementation of the OPI process at a printing facility is also described. Id.
`
`at 31–32, Fig. 4c.
`
`4. 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. 46–53, 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
`
`
`
`
`14
`
`
`
`IPR2014-00789
`Patent 6,738,155 B1
`
`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—
`
`“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. 46. 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 47.
`
`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
`
`
`
`
`15
`
`
`
`IPR2014-00789
`Patent 6,738,155 B1
`
`when the printed form would have been distributed to Agfa subsidiaries (id.
`
`at 48–49 (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
`
`when it was posted (id. at 50 (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
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
