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 RESPONSE PURSUANT TO 37 C.F.R. § 42.120
`
`
`
`Filed on behalf of CTP Innovations, LLC
`
`By: W. Edward Ramage (Lead Counsel)
`
`Reg No. 50,810
`
`Samuel F. Miller (Back-up Counsel)
`
`(pending pro hac vice admission)
`
`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
`
`
`
`
`
`

`

`
`
`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES ................................................................................ iii
`
`I.
`
`INTRODUCTION ......................................................................................... 1
`
`A.
`
`Background ........................................................................................... 1
`
`B.
`
`C.
`
`Relief Requested .................................................................................... 2
`
`Related Proceedings .............................................................................. 2
`
`D.
`
`The ’155 Patent ..................................................................................... 3
`
`E.
`
`F.
`
`Summary of Argument .......................................................................... 6
`
`Statement of Material Facts in Dispute ................................................. 7
`
`II. RELEVANT LAW......................................................................................... 7
`
`III. CLAIM CONSTRUCTION ........................................................................ 10
`
`A.
`
`“plate-ready file” ................................................................................. 10
`
`B.
`
`C.
`
`“communication network” .................................................................. 12
`
`“end user facility,” “central service facility,” and “printing
`company facility” ................................................................................ 13
`
`D.
`
`“communication routing device” ........................................................ 14
`
`IV. ART CITED IN THE PETITION .............................................................. 15
`
`A.
`
`Jebens .................................................................................................. 15
`
`B.
`
`C.
`
`Apogee ................................................................................................. 20
`
`Dorfman ............................................................................................... 21
`
`D. OPI White Paper .................................................................................. 23
`
`E.
`
`Andersson ............................................................................................ 24
`
`
`
`i
`
`

`

`F.
`
`Adams II .............................................................................................. 24
`
`V. ARGUMENT ................................................................................................ 25
`
`A.
`
`B.
`
`Claims 1-9 Are Not Rendered Obvious By Jebens, Apogee and
`OPI White Paper. ................................................................................. 25
`
`Claims 1-2, 4-5 and 9 Are Not Rendered Obvious by Dorfman,
`Apogee, OPI White Paper and Andersson. ......................................... 32
`
`1. Dorfman is a “Response On Demand” Digital Printing
`System. ...................................................................................... 33
`
`2.
`
`Dorfman, Apogee, OPI White Paper, and Andersson Do
`Not Disclose or Teach All Claim Limitations. ......................... 40
`
`C.
`
`Claims 3 and 6-8 Are Not Rendered Obvious by Dorfman,
`Apogee, OPI White Paper, Andersson and Adams II. ........................ 41
`
`1. Dorfman is a “Response on Demand” Digital Printing
`System. ...................................................................................... 41
`
`2.
`
` Dorfman, Apogee, OPI White Paper, Andersson and
`Adams II Do Not Disclose or Teach All Claim
`Limitations. ............................................................................... 44
`
`D.
`
`Petitioners Have Failed to Provide A Sufficient Basis For
`Combining the References. ................................................................. 45
`
`E.
`
`Apogee Is Not A Valid Prior Art Reference. ...................................... 46
`
`VI. CONCLUSION ............................................................................................ 53
`
`PATENT OWNER EXHIBIT LIST .................................................................... 54
`
`CERTIFICATE OF SERVICE ............................................................................ 55
`
`ii
`
`
`
`
`
`

`

`
`CASES
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`CA, Inc. v. Simple.com, Inc.,
`780 F. Supp. 2d 196 (E.D.N.Y. 2009) ......................................................... 51, 52
`
`Ex parte Research and Manufacturing Co., Inc.,
`No. 88-3277, 10 U.S.P.Q.2d (BNA) 1657, 1989 Pat. App. LEXIS 2 (Bd. Pat.
`App. & Interf., Jan. 31, 1989) .............................................................................52
`
`Grain Processing Corp. v. Am. Maize-Prods. Co.,
`840 F.2d 902 (Fed. Cir. 1988) .............................................................................. 9
`
`In re Cronyn,
`890 F.2d 1158 (Fed. Cir. 1989) ..........................................................................47
`
`In re Cyclobenzaprine Hydrochloride Extended Release Capsule Patent Litig.,
`676 F.3d 1063 (Fed. Cir. 2012) ............................................................................ 8
`
`In re Fine,
`837 F.2d 1071 (Fed. Cir. 1988) ............................................................................ 9
`
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) ............................................................................10
`
`In re ICON Health & Fitness, Inc.,
`496 F.3d 1374 (Fed. Cir. 2007) ..........................................................................10
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ..................................................................... 10, 45
`
`In re Ratti,
`270 F.2d 810 (CCPA 1959) ................................................................................46
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................. 8, 9, 45, 46
`
`Panduit Corp. v. Dennison Mfg. Co.,
`810 F.2d 1561 (Fed. Cir. 1987) ............................................................................ 9
`
`
`
`iii
`
`

`

`PharmaStem Therapeutics, Inc. v. ViaCell, Inc.,
`491 F.3d 1342 (Fed. Cir. 2007) ............................................................................ 8
`
`Ricoh Co., Ltd. v. Quanta Computer Inc.,
`550 F.3d 1325 (Fed. Cir. 2008) ..........................................................................10
`
`Unigene Labs, Inc. v. Apotex, Inc.,
`655 F.3d 1352 (Fed. Cir. 2011) ........................................................................8, 9
`
`Wyers v. Master Lock Co.,
`616 F.3d 1231 (Fed. Cir. 2010) ........................................................................8, 9
`
`STATUTES
`
`17 U.S.C. § 410(c). ..................................................................................................52
`
`35 U.S.C. § 103(a) ..................................................................................................... 7
`
`OTHER AUTHORITIES
`
`MPEP 2128(II)(A) ...................................................................................................50
`
`MPEP 2128(II)(B) ....................................................................................................50
`
`MPEP 2141.02 ........................................................................................................... 9
`
`MPEP 2143.01(V) ....................................................................................................10
`
`MPEP 2143.01(VI) ..................................................................................................10
`
`
`
`iv
`
`
`
`
`
`

`

`I.
`
`INTRODUCTION
`
`A. Background
`
`
`
`Eastman Kodak Co., Agfa Corp., Esko Software BVBA, and Heidelberg,
`
`USA (collectively, “Petitioners”) filed a Corrected Petition (Paper 4, “Pet.”) to
`
`institute an inter partes review of claims 1-9 (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.”). The
`
`present inter partes review has been instituted for claims 1-9 of the ’155 patent
`
`based solely on obviousness grounds.
`
`Petitioners’ position requires combining features of several patents in order
`
`to render each claim obvious. The prior art references at issue are Jebens (Ex.
`
`1005), Dorfman (Ex. 1006), Apogee (Ex. 1007), OPI White Paper (Ex. 1008),
`
`Andersson (Ex. 1009), and Adams II (Ex. 1010). Petitioners assert various
`
`combinations of the cited references for three sets of claims, as seen in the
`
`summary table below:
`
`
`
`
`
`
`
`1
`
`

`

`
`
`
`
`Claims 1-9
`
`Claims 1-2, 4-5, and 9
`
`Claims 3 and 6-8
`
`• Jebens
`
`• Apogee
`
`• Dorfman
`
`• Apogee
`
`• Dorfman
`
`• Apogee
`
`• OPI White Paper
`
`• OPI White Paper
`
`• OPI White Paper
`
`• Andersson
`
`• Andersson
`
`• Adams II
`
`
`
`
`
`B. Relief Requested
`
`Patent Owner respectfully requests that the Board determine that claims 1-9
`
`of the ’155 patent are valid and patentable in view of the asserted combinations of
`
`the references: (i) Jebens, Apogee and OPI White Paper (claims 1-9); (ii) Dorfman,
`
`Apogee, OPI White Paper and Andersson (claims 1-2, 4-5 and 9); and (iii)
`
`Dorfman, Apogee, OPI White Paper, Andersson and Adams II (claims 3 and 6-8).
`
`C. Related Proceedings
`
`
`
`Petitioners have 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. Except for claims 4-9 of the ’349 patent, all such additional
`
`inter partes reviews have been instituted.
`
`
`
`2
`
`

`

`D. The ’155 Patent
`
`
`
`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” 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
`
`
`
`3
`
`

`

`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 depicts an embodiment of
`
`the claimed invention. It shows end user facility 300, printing company facility
`
`400, and central service facility 105 connected together via either private network
`
`
`
`4
`
`

`

`160 or public network 190. Id. at 4:29-52. 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 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
`
`
`
`5
`
`

`

`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.
`
`E. Summary of Argument
`
`
`
`Petitioners’ position requires combining features of several patents in order
`
`to render each claim obvious. Petitioners’ arguments fail for three reasons. First,
`
`separately or combined, the prior art references do not disclose all of the
`
`limitations of claims 1 through 9 of the ’155 patent. In particular, Petitioners have
`
`misconstrued critical elements of the Jebens and Dorfman references. In addition,
`
`a person of ordinary skill in the art that the time of the ’155 patent’s effective filing
`
`date, i.e., July 30, 1999, (“POSITA”) would not have combined the prior art
`
`references in the manner suggested by Petitioners because, among other things, the
`
`references teach away from Petitioners’ proposed combinations or the proposed
`
`modification would render one or more prior art reference unfit for its intended
`
`purpose. Second, Petitioners have failed to provide a sufficient basis for
`
`combining the references, and instead have only provided conclusory allegations
`
`lacking articulated reasoning, or underlying facts and data. Third, the Apogee
`
`reference is not valid prior art because Petitioners have failed to establish a date
`
`that Apogee was publically accessible.
`
`
`
`6
`
`

`

`
`
`With regard to Jebens, Jebens does not disclose that the end-user facility, the
`
`printing company facility, and the central service facility are all coupled to the
`
`same communication network. Neither Apogee nor OPI White Paper cure this
`
`defect.
`
`
`
`With regard to Dorfman, Dorfman discloses a digital printing system with
`
`variable data and short-run features. These systems do not use printing plates or
`
`plate-ready files. The modification suggested by Petitioners would require
`
`modifying the principle of operation of Dorfman, and render it unfit for its
`
`intended purposes. Dorfman also does not describe a separate central service
`
`facility and printing company facility. Dorfman describes these functions as all
`
`being present at the same remote location: i.e., the facilities of a commercial
`
`printing service. Apogee, Andersson, OPI White Paper, and Adams II do not cure
`
`these defects.
`
`F. Statement of Material Facts in Dispute
`
`
`
`Petitioners did not submit a statement of material facts in the petition for
`
`inter partes review. Accordingly, Patent Owner cannot properly submit, as
`
`required by 37 CFR § 42.23, a statement of material facts in dispute.
`
`
`
`
`
`II. RELEVANT LAW
`
`Under pre-AIA 35 U.S.C. § 103(a), a claim is obvious when the “subject
`
`matter sought to be patented and the prior art are such that the subject matter as a
`
`
`
`7
`
`

`

`whole would have been obvious at the time the invention was made to a person
`
`having ordinary skill in the art to which said subject matter pertains.” See also
`
`Wyers v. Master Lock Co., 616 F.3d 1231, 1237 (Fed. Cir. 2010). “[A] patent
`
`composed of several elements is not proved obvious merely by demonstrating that
`
`each of its elements was, independently, known in the prior art.” KSR Int’l Co. v.
`
`Teleflex Inc., 550 U.S. 398, 418 (2007). Where a party seeks to invalidate a patent
`
`based on obviousness, it must demonstrate by a preponderance of evidence that a
`
`“skilled artisan would have had reason to combine the teaching of the prior art
`
`references to achieve the claimed invention, and that the skilled artisan would have
`
`had a reasonable expectation of success from doing so.” In re Cyclobenzaprine
`
`Hydrochloride Extended Release Capsule Patent Litig., 676 F.3d 1063, 1068-69
`
`(Fed. Cir. 2012).
`
`Obviousness is a question of law based on underlying findings of fact.
`
`Unigene Labs, Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011); Wyers,
`
`616 F.3d at 1237. The factual underpinnings, often referred to as the Graham
`
`factors, to be considered include the following: (1) the scope and content of the
`
`prior art; (2) the differences between the prior art and the claims at issue; (3) the
`
`level of ordinary skill in the art; and (4) any relevant secondary considerations such
`
`as commercial success, long-felt but unsolved needs, and the failure of others.
`
`
`
`8
`
`

`

`Unigene, 655 F.3d at 1360; Wyers, 616 F.3d at 1237 (citing Graham v. John Deere
`
`Co., 383 U.S. 1, 18 (1966)).
`
` “Rejections on obviousness grounds cannot be sustained by mere
`
`conclusory statements; instead there must be some articulated reasoning with some
`
`rational underpinning to support the legal conclusion of obviousness.” KSR, 550
`
`U.S. at 418. “One cannot use hindsight reconstruction to pick and choose among
`
`isolated disclosures in the prior art to depreciate the claimed invention.” In re
`
`Fine, 837 F.2d 1071, 1075 (Fed. Cir. 1988). “Care must be taken to avoid
`
`hindsight reconstruction by using the patent in suit as a guide through the maze of
`
`prior art references, combining the right references in the right way so as to
`
`achieve the result of the claims in suit.” Grain Processing Corp. v. Am. Maize-
`
`Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (internal quotation marks and
`
`citation omitted).
`
`“A prior art reference must be considered in its entirety, i.e., as a whole,
`
`including portions that would lead away from the claimed invention.” MPEP
`
`2141.02. See also, Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1568
`
`(Fed. Cir. 1987) (citing W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540,
`
`1550 (Fed. Cir. 1983)). “A reference may be said to teach away when a person of
`
`ordinary skill, upon reading the reference, would be discouraged from following
`
`the path set out in the reference, or would be led in a direction divergent from the
`
`
`
`9
`
`

`

`path that was taken by the applicant.” Ricoh Co., Ltd. v. Quanta Computer Inc.,
`
`550 F.3d 1325, 1332 (Fed. Cir. 2008) (quoting In re Kahn, 441 F.3d 977, 990 (Fed.
`
`Cir. 2006)). In addition, “a reference may teach away from a use when that use
`
`would render the result inoperable.” In re ICON Health & Fitness, Inc., 496 F.3d
`
`1374, 1381 (Fed. Cir. 2007) (citing McGinley v. Franklin Sports, Inc., 262 F.3d
`
`1339, 1354 (Fed. Cir. 2001)).
`
`The proposed modification thus cannot render the prior art unsatisfactory for
`
`its intended purposes. See MPEP 2143.01(V); In re Gordon, 733 F.2d 900 (Fed.
`
`Cir. 1984). Similarly, the proposed modification or teaching cannot change the
`
`principle of operation of the prior art invention or reference. MPEP 2143.01(VI).
`
`III. CLAIM CONSTRUCTION
`
`A. “plate-ready file”
`
`Petitioners have proposed the following construction of this phrase: “a file
`
`containing pages designed from images, texts, and data converted to a digital file
`
`for producing a printing plate.” Pet. at 21. Petitioners’ construction does not
`
`capture the concept of the file being ready to produce a printing plate. Moreover,
`
`Petitioners’ asserted expert does not actually support the proposed construction.
`
`Patent Owner proposes a construction that is consistent with the language of
`
`the ‘155 patent, the plain and ordinary meaning to one of relevant skill in the art,
`
`and without extraneous limitations: “a file that is ready to be made into a printing
`
`
`
`10
`
`

`

`plate.” This construction is in accord with the broadest reasonable interpretation
`
`standard and is supported by the specification. Ex. 1001 at 10:7-15, 11:44-48,
`
`12:18-22, 12:66–13:7. For example, the specification states:
`
`File processing includes gathering linked data and supporting art and
`
`fonts into a single file that is stable, predictable, and ready to image to
`
`proof or plate. The machines and/or programs used to conduct file
`
`processing include the application used to build a page, such as,
`
`QuarkXpress, InDesign by Adobe Systems and the software programs
`
`used to generate stable, predictable, plate-ready files. Such software
`
`programs include Adobe Acrobat Distiller, Art Work System and
`
`Scitex Brisque.
`
`Id. at 10:7-15 (emphasis added). Similarly, the specification also makes clear that
`
`plate-ready files are those that are ready to be made into the final printing plate. Id.
`
`at 11:44-48, 12:18-22.
`
`
`
`Lastly, the specification recites:
`
`If no additional revisions are necessary step 870 is performed in
`
`which finished plate-ready files are made available to printing
`
`customer facility 400 via communication link. At step 875, printing
`
`company facility 400 enters plate-ready file into DCM database 130.
`
`At step 880, plate-ready files pages are digitally imposed and imaged
`
`to proofing device at printing company facility 400. At step 885,
`
`printing company facility 400 images the proof pages to plate and
`
`prints the job.
`
`
`
`11
`
`

`

`Id. at 12:66–13:7. This paragraph clearly illustrates that the plate-ready file is
`
`“ready” since there are to be “no additional revisions” and that the plate-ready file
`
`is entered into the database, imposed, proofed, and printed. This supports the
`
`definition of the file being ready to be made into a printing plate, as the formation
`
`of the printing plate is one of the final steps prior to actual printing-namely, the
`
`generation of a plate that is used to commence printing.
`
`
`
`Petitioners’ expert supports Patent Owner’s construction. In his deposition,
`
`Professor Lawler testified, “The plate-ready file is simply indicative of a page
`
`layout file that has gone through the prepress process and has been RIPed such that
`
`it contains the exact dots to be transferred onto a printing plate, film or other
`
`imaging substrate.” Deposition Transcript of Brian Lawler (Ex. 2017) at 35:19–
`
`36:3. According to Lawler, a plate-ready file is a “fully rasterized file.” See id. at
`
`38:7-18. Lawler’s deposition testimony does not include additional limitations of
`
`types of data included in the fully rasterized file that are required by Petitioners’
`
`construction.
`
`B. “communication network”
`
`Patent Owner proposes that this phrase be interpreted as “a private network
`
`such as an extranet or public network such as the Internet.” Support may be found
`
`in claim 1, the Abstract, and the specification of the ’155 patent. Ex. 1001 at
`
`Abstract, 4:29-66, 5:21-25, 11:60-63. It should be specifically noted that a
`
`
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`12
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`

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`communication network can be a private network or a public network, and does
`
`not need to be both. Id. The proposed interpretation is in accord with the broadest
`
`reasonable interpretation standard.
`
`C. “end user facility,” “central service facility,” and “printing company
`facility”
`
`
`
`Petitioners suggest adopting the constructions of these phrases from the prior
`
`PTAB proceeding, with the specific requirement that “the claimed facilities must
`
`be distinct from each other in some manner.” Pet. at 22. The suggested
`
`requirement, however, is unclear and ambiguous, particularly in the use of “in
`
`some manner,” which can mean almost anything. This requirement should not be
`
`adopted, and any operational distinctions that can be made between these facilities
`
`are clear from the terms of the applicable claims.
`
`
`
`Accordingly, Patent Owner proposes the following definitions, which are in
`
`accord with the broadest reasonable interpretation standard:
`
`CLAIM TERM
`
`end user facility
`
`
`central service facility
`
`
`printing company facility
`
`
`
`PROPOSED INTERPRETATION
`facility
`that provides page building
`operations allowing
`the design and
`construction of pages
`facility
`that provides
`processing,
`access,
`management operations
`
`facility that provides printing operations
`
`file
` storage,
`and
`content
`
`
`
`13
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`
`
`The above interpretation of “end user facility” is directly supported by claim
`
`1 of the ’155 Patent, as well as the Abstract and the specification. Ex. 1001 at
`
`Abstract, 2:34-39.
`
` The
`
`images,
`
`text, and data being available via a
`
`communications network is an additional claim limitation that does not need to be
`
`incorporated into the definition of “end user facility” per se.
`
`
`
`The proposed interpretation of “central service facility” is directly supported
`
`by claim 1 of the ’155 Patent, as well as the Abstract and the specification. Id. at
`
`Abstract, 2:58-3:3, 5:41-50, 6:27-65, 7:20-51.
`
`
`
`The proposed interpretation of “printing company facility” is directly
`
`supported by claim 1 of the ’155 Patent, the Abstract, and the specification. Id. at
`
`Abstract, 2:41-44. This phrase should not be limited to producing a plate from a
`
`plate-ready file, as the specification also includes the “final printing of the created
`
`pages at a printing company facility.” Id. at 2:43-44. The proposed interpretation
`
`is in accord with the broadest reasonable interpretation standard.
`
`D. “communication routing device”
`
`
`
`Petitioners propose “routers and switches…included at central service
`
`facility 105, end user facility 300, and printing company facility 400.” Pet. at 22.
`
`This interpretation is unnecessarily narrow, and thus not in accordance with the
`
`broadest reasonable interpretation standard. The specification supports a broader
`
`interpretation.
`
`
`
`14
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`

`

`
`
`Patent Owner proposes the more concise, and broader, definition of “a
`
`device that directs electronic data traffic.” This is supported by the specification,
`
`which states: “communication routing device 200 directs data traffic… .” Ex.
`
`1001 at 4:46-49. While the specification also provides the specific example of
`
`“routers and switches,” this is clearly only one exemplary embodiment: “System
`
`100 preferably includes a communication routing device 200, such as, routers and
`
`switches.” Id. at 4:33-35. It should be specifically noted that a communication
`
`routing device can be a router or a switch, and does not need to be both, and also
`
`can be some device that directs data traffic other than a router or a switch. The
`
`term should be broadly construed, in accordance with both the specification and
`
`the broadest reasonable interpretation standard.
`
`IV. ART CITED IN THE PETITION
`
`A. Jebens
`
`
`
`Jebens describes “a digital image management and order delivery system.”
`
`Ex. 1005 at 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 an embodiment of Jebens’s data management and
`
`work-order delivery system.
`
`
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`15
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`

`
`
`
`
`
`
`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 8:9-13. 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
`
`
`
`16
`
`

`

`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 resolution copies of desired images,
`
`creates a publication in page description language file format (“PDL”) using the
`
`low resolution copies, and sends the brochure including the low resolution copies
`
`back to the host system. Id. at 5:11-20. The host system then downloads high
`
`resolution images corresponding to the low-resolution images; assembles a job
`
`order that includes the high resolution images, the electronic file for the brochure,
`
`and any instructions for a supplier (i.e., the printing company); and electronically
`
`routes the assembled job order to a supplier per the agency’s instructions. Id. at
`
`5:19-20, 22:43-53. Jebens does not disclose actually replacing low resolution
`
`images embedded in the electronic file for the brochure with corresponding high
`
`resolution files. Id. at 22:43-53. In fact, Jebens does not use the word “replace” in
`
`connection with the created document or electronic file and high resolution images,
`
`and Jebens does not say that high resolution copies of digital images are inserted
`
`into or swapped into the created document. Ex. 2017 at 28:17–29:7.
`
`
`
`17
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`

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`
`
`Jebens discloses that communication between host system 10 and users 12
`
`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 6:66–7:20. Users 12 and 16 (corresponding to the advertising
`
`agency and se