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
`
`____________
`
`
`PETITIONERS’ REPLY BRIEF
`
`Pursuant to 37 C.F.R. §§ 42.23 and 42.24(c)(1), Eastman Kodak Company,
`
`Agfa Corporation, Esko Software BVBA, and Heidelberg, USA (“Petitioners”)
`
`hereby submit the following Reply in Support of their Petition for Inter Partes
`
`Review (“IPR”).
`
`
`________________________
`
`
`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
`
`____________
`
`
`PETITIONERS’ REPLY BRIEF
`
`Pursuant to 37 C.F.R. §§ 42.23 and 42.24(c)(1), Eastman Kodak Company,
`
`Agfa Corporation, Esko Software BVBA, and Heidelberg, USA (“Petitioners”)
`
`hereby submit the following Reply in Support of their Petition for Inter Partes
`
`Review (“IPR”).
`
`
`
`I.
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`INTRODUCTION
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`Case IPR2014-00789
`Petitioners’ Reply Brief
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`Patent Owner’s response is plainly impertinent to the instituted grounds.
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`Trial has been instituted on claims 1-9 of the ‘155 patent in view of Jebens,
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`Apogee, and OPI White Paper, as well as Dorfman, Apogee, OPI White Paper,
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`Anderson, and Adams II. (See Paper 9 at 24-25.) Despite the Board’s
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`admonishment in its institution decision that “nonobviousness cannot be
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`established by attacking the references individually when the rejection is
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`predicated upon a combination of prior art disclosures” (id. at 18), Patent Owner
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`continues to (a) argue the alleged shortcomings of each reference individually; (b)
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`ignore the proposed combinations set forth in the Petition; and (c) reiterate the
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`failed arguments of its preliminary response.
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`In an attempt to salvage its claims, Patent Owner, and its expert, improperly
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`read limitations from the specification into claims 1-9. Moreover, the testimony of
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`Prof. Robert L. Stevenson (“Prof. Stevenson”) provides unsupported legal
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`conclusions, professes no skill in the pertinent art of printing and pre-press
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`systems, and mistakenly applies a presumption of validity to the challenged claims.
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`As with its preliminary response, Patent Owner fails to rebut the grounds of
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`unpatentability accepted by the Board and simply repeats its earlier, failed
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`arguments without explanation. Indeed, although Prof. Stevenson acknowledges
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`1
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`Case IPR2014-00789
`Petitioner’s Reply Brief
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`that he reviewed the Board’s Institution Order (Ex. 2014 at ¶ 11), he does not rebut
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`its findings anywhere. As such, the Board’s findings of fact stand unrebutted.
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`II. THE JEBENS GROUND STANDS UNREBUTTED
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`Claim 1 of the ‘155 patent, the only independent claim challenged in this
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`IPR, recites “an end user facility coupled to a communication network,” “a printing
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`company facility coupled to said communication network,” and “a central service
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`facility coupled to said communication network.” Reading from the ‘155 patent’s
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`specification, Patent Owner and its expert attempt to import a requirement into the
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`claim that the communication network must “integrate various processes into ‘one
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`real time system” (Resp. at 26, citing Ex. 1001 at 4:25-33, emphasis added), such
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`that all three facilities directly communicate across a singular private network, for
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`example. In particular, Patent Owner alleges that Jebens does not disclose all three
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`facilities coupled to a single network because “[t]here is no communication
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`between the first user and the second users” and “a second communication
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`network” is established between the host site and the printer. (Resp. at 30.)
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`As an initial matter, the Board has already determined that the preamble of
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`claim 1, which includes the only reference in the claim to “real time,” is non-
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`limiting. (Paper 9 at 12-13.) Patent Owner’s reasoning as to why the claimed
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`facilities are integrated into “one real time system” is based solely on the
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`“reflect[ion] in the preamble to claim 1” of this alleged fact. (Resp. at 26; Ex.
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`
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`2
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`
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`2014 at ¶ 19.) Patent Owner provides no justification to support its bald assertion,
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`Case IPR2014-00789
`Petitioner’s Reply Brief
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`nor could it, as to why claim 1 requires all three facilities to be coupled to the
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`same/a singular communication network (which seemingly excludes the Internet
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`embodiment of its own specification!) and that the end user facility must
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`communicate directly with the printing company facility. Patent Owner’s incorrect
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`claim construction argument, under the guise of an analysis of Jebens, should be
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`ignored.
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`Tellingly, the ‘155 patent describes both a private network embodiment and
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`an embodiment operating over the Internet, so the claims must be broad enough to
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`cover both. (See, e.g., Ex. 1001 at 4:29:32, 4:59 – 5:28, 11:18 – 13:7.) Similarly,
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`whether or not the claimed facilities operate through the central service facility is
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`inapposite; the facilities are still internetworked, and the claims require nothing
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`more. Moreover, the specification states that secured access to customer files is
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`controlled by the DCM server located at the central service facility, irrespective of
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`whether the access request comes from an end-user facility or a printing company
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`facility, or whether the request is transmitted over a private network or a public
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`network. (Ex. 1001 at 14:51-62.) Thus, the alleged “log-in” distinction argued by
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`Patent Owner is in direct conflict with the disclosure of the ‘155 patent.
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`Figure 1 of Jebens, cited on page 33 of the Petition and reproduced by Patent
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`Owner on page 27 of its Response, clearly shows all three facilities coupled to an
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`3
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`
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`intranet or the internet. Jebens meets this limitation of the challenged claims.
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`Case IPR2014-00789
`Petitioner’s Reply Brief
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`Patent Owner provides no other basis to distinguish its alleged invention of claims
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`1-9 of the ‘155 patent over the combination of Jebens, Apogee, and OPI White
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`Paper. Accordingly, Petitioners respectfully request that the Board cancels claims
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`1-9 as unpatentable.
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`
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`III. THE DORFMAN GROUNDS STAND UNREBUTTED
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`A. The Teachings of Dorfman are Not Limited to “Response on
`Demand” Printing Systems
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`Nearly all of Patent Owner’s arguments regarding Dorfman surround Patent
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`Owner’s unsubstantiated—and previously rejected—argument that Dorfman’s
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`teachings are directed solely to “response on demand” digital printing systems.
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`Patent Owner now calls Dorfman a “response on demand” system, rather than a
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`“variable data printing (VDP) system” as categorized in the preliminary response
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`(Prelim. Resp. at 23); however, Patent Owner’s arguments are the same.
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`Specifically, in its preliminary response, Patent Owner argued that “the
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`Dorfman system is not relevant to the ’155 patent” because it describes a VDP
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`system without an explicit disclosure of a printing plate, “which is the raison
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`d’etre of the computer-to-plate (CTP) system in the ’155 patent.” (Prelim. Resp at
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`23; see also Resp. at 38, including identical language.) In short, Patent Owner
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`argued, and continues to argue in its Response, that Dorfman’s system is allegedly
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`4
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`
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`limited to low volume jobs that involve variable data and, as a result, one of
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`Case IPR2014-00789
`Petitioner’s Reply Brief
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`ordinary skill in the art would not use a printing plate for high-volume jobs with
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`Dorfman’s system. (Resp. at 38; Paper 9 at 22, summarizing Patent Owner’s
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`argument from the preliminary response.)
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`However, Dorfman’s teachings are not limited to only low volume print
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`jobs. This is because Dorfman explicitly emphasizes a broader applicability, as
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`correctly recognized by the Board: “On the contrary, Dorfman’s system is related
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`to ‘customized printed materials,’ which Dorfman teaches may be printed ‘in large
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`quantities.’” (Paper 9 at 22-23, quoting Ex. 10061 at 2:13-16.) Dorfman also
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`explicitly recognizes that the back-end of the described system, i.e. the printing
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`company facility, may use “conventional printing technology (Ex. 1006 at p. 8, l.
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`23) which includes offset lithography using an imagesetter or a platesetter. (Ex.
`
`1021 at ¶ 116.)
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`Similarly, as explained by Prof. Lawler, the novel and inventive aspect of
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`Dorfman surrounds the reference’s description of the system’s front end—i.e.,
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`web-based page design utilizing a dynamic PDF, and distributed processing
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`between the end user and central service processing the user’s page design. (Ex.
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`1021 at ¶¶ 108-111, Ex. 1006 at p. 3, l. 24 – p. 4, l. 23.) Tellingly, Dorfman states
`
`that “[a]lthough developed for the internet front end, the technology can similarly
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`1 Citations to Dorfman (Ex. 1006) are to the references original page numbering.
`5
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`
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`be used by front ends other than Internet browsers.” (Ex. 1006 at p. 4, ll. 22-23,
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`Petitioner’s Reply Brief
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`emphasis added.) In other words, although Dorfman references “response on
`
`demand” systems (id. at pp. 2-3) and allows for user input of “variable data” (id. at
`
`p. 4, ll. 3-6), the reference is unconcerned with outputting to any specific back-end
`
`printing system, only mentioning that physical act of printing may be
`
`accomplished with “conventional printing technology.” (Id. at p. 4, ll. 18-21, p. 8,
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`l. 23.)
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`Modifying Dorfman to incorporate offset lithography and the generation of a
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`plate-ready file as taught by Apogee would not change Dorfman’s principal of
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`operation (Resp. at 38), but was, in fact, explicitly contemplated by the reference
`
`and well recognized by those of skill in the art. (See Petition at 44-45; Ex. 1021 at
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`¶¶ 108-116.) And, as explained by Prof. Lawler, the plate-ready file of Apogee
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`(i.e., the “Print Image File” or “PIF”) can be output to any desired device, whether
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`a digital printer or an imagesetter or platesetter. (Ex. 1021 at ¶¶ 65-69, 80 (“plate-
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`ready files are not limited to outputting on a platesetter, but may also include files
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`RIPed for output onto a digital printer or imagesetter, for example. The plate-
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`ready file is simply indicative of a page layout file that has gone through the
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`prepress process and has been RIPed such that it contains the exact dots to be
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`transferred onto a printing plate, film, or other imaging substrate”), and 120-121.)
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`Thus, whether the document to be printed is a low volume job using a digital
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`6
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`Petitioner’s Reply Brief
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`printer, or a high volume job using traditional offset printing, the plate-ready file of
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`Apogee, as combined with the Dorfman system, can accommodate either output
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`technology.
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`Indeed, Patent Owner’s response reinforces the exact motivation that would
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`have driven one of ordinary skill in the art to use offset lithography when using
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`Dorfman’s system to print custom material in large quantities. In particular, there
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`is a trade-off between the cost and the number of copies of a job to be printed.
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`Because the cost per page for offset printing is less than digital or
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`electrophotographic printing, large volume jobs benefit from offset printing. In
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`contrast, digital printing may be more efficient for low volume jobs, even though
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`the cost per page is more expensive, because the initial start-up cost associated
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`with making a printing plate is avoided. The exhibits cited by Patent Owner (Resp.
`
`at 29) explain this well-known binary trade-off:
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`Offset has a higher cost for starting up a job, because plates must be
`prepared and some paper is wasted during the initial run-up to the first good
`sheet. The binding process that goes with offset (print in signatures, fold,
`gather, bind, and trim) can also be more expensive than the binding process
`for digital printing, where large signatures and gathering are not required.
`But, at present, the cost per page of the actual printing is lower for
`offset, and this is the dominant cost in long runs. So short runs are
`more economical with digital printing, and longer runs are more
`economical with offset.
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`7
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`Petitioner’s Reply Brief
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`(Ex. 2015 at 53, emphasis added (original page 378); Id. at 55 (original page 380).)
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`As the Board correctly recognized in its institution decision, this is the exact reason
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`offset printing would be used in Dorfman’s system when printing “[c]ustomized …
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`materials … in large quantities.” (Paper 9 at 23, citing Ex. 1006 at 2:13-16.)
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`
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`During his deposition, Prof. Lawler similarly explained that the known
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`choice between printing custom material using a digital printer or offset
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`lithography has to do with “volume, the quantity, the price, the deadline, the
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`budget, [more so] than any particular printing – other printing process.” (Ex. 2017
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`at 47:2-5.) Prof. Lawler also explained that these considerations hold true for “on
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`demand” or variable printing: “a variable data printing system defines a system
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`whereby one or more elements of the job can be changed, and you could certainly
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`use printing plates to produce a variable data job where the volume of copies was
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`worthwhile to be printed by offset lithography using plates.” (Id. at 80:2-7; see
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`also id. at 81:14 – 83:13.) Rather than teaching away from the proposed
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`combination, as Patent Owner alleges, the above design considerations strengthen
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`the rationale for combining Dorfman with Apogee to generate a printing plate for
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`offset printing.
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`
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`B. Dorfman Teaches Separate Central Service and Printing Facilities
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`Claim 1 of the ‘155 patent includes an end user facility, a central service
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`facility, and a printing company facility, each carrying out the functions recited in
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`
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`8
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`
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`the claim. However, the claim does not recite or require the facilities to be
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`Case IPR2014-00789
`Petitioner’s Reply Brief
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`geographically separate from one another. Patent Owner apparently infers this
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`alleged limitation from Fig. 1 of the ‘155 patent and the summary of the invention
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`section (Resp. at 14), but a simple reading of the text of the claim reveals no such
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`distinction.
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`Specifically, Patent Owner alleges that Dorfman does not teach separate
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`central service and printing company facilities because the central service and
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`printing company facilities are described as being “present at the same remote
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`location, e.g., the facilities of a commercial printing service.” (Resp. at 40,
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`emphasis added.) Whether Dorfman’s system must be designed in this way—i.e.,
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`with the PDF builder 6 and memory 4, and production printing system 10 located
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`at the same physical location—is inapposite.
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`All claim 1 requires is that the facilities be coupled to a communication
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`network (see 2-3, supra), and provide the recited functions (see Petition at pp. 50-
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`56). Indeed, this is the exact construction of “end user facility,” “central service
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`facility,” and “printing company facility” offered by Patent Owner. (See Resp. at
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`13, construing each claim term as a “facility that provides [recited functions].”)
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`Nothing in the claim 1, or claims 2-9, require the facilities to be geographically
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`remote from one another, whether that means different rooms in the same building,
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`different buildings in the same city, or different cities altogether. The scope of the
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`9
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`Petitioner’s Reply Brief
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`challenged claims is broad enough to cover all of these scenarios. (See Ex. 2017 at
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`103:21 – 104:14, Prof. Lawler testifying that one skilled in the art would not
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`interpret Fig. 1 of Dorfman as limiting the location of the described elements (i.e.,
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`claimed facilities, to any particular location or area.))
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`Further, Petitioners have shown that, in combination with Andersson, the
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`functions associated with the central service facility correspond to the PDF builder
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`6 and memory 4 of Dorfman (Petition at pp. 54-56) and, in combination with OPI
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`White Paper, the functions associated with the printing company facility
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`correspond to the production printing system 10 of Dorfman (Petition at pp. 52-
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`54). The Board agrees with this analysis (Paper 9 at 21-23) and admonished Patent
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`Owner for attempting to refute Petitioners’ assertions by arguing against Dorfman
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`individually, when the proposed ground of unpatentability includes Apogee,
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`Andersson, and OPI White Paper. (Paper 9 at 23).
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`Lastly, Patent Owner admits that the printing company facility of Dorfman
`
`includes at least three distinct components: “(i) a memory that stores a reference
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`library, low resolution images, high resolution date, and other data, (ii) PDF
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`builder, and (iii) high resolution color production printing system.” (Resp. at 40.)
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`Thus, under a proper construction of above terms, there appears to be no dispute
`
`that the combined system of Dorfman, Apogee, OPI White Paper, and Andersson
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`teach the claimed central service and printing company facilities.
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`
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`10
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`IV. APOGEE WAS PUBLICALLY AVAILABLE
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`Case IPR2014-00789
`Petitioner’s Reply Brief
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`In its opening papers, Petitioners established, by a preponderance of the
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`evidence, that at least 76,030 of copies of the Apogee publication (Ex. 1007) were
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`printed and distributed to the public prior to the earliest priority date of the ‘155
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`patent. (See Ex. 1022 at pp. 3-4, 21.) Specifically, Petitioners provided the
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`declaration of Johan Suetens establishing that Apogee was distributed to the public
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`via Agfa sales personnel in the normal course of business shortly after a press
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`briefing held on March 17, 1998, but no later than May 28, 1998. (Id. at ¶¶ 8, 11.)
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`
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`On April 2, 2015, Patent Owner simultaneously objected to Mr. Suetens
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`declaration and the Apogee exhibit (Exhibits 1022 and 1007, respectively) under
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`37 C.F.R. § 42.64(b)(1), and prematurely moved to exclude the same for allegedly
`
`failing to establish public accessibility of Apogee. As Rule 42.64(b)(2) allows,
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`Petitioners served supplemental evidence on April 16, 2015 (Exs. 1023 and 1024).
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`Because supplemental evidence often moots an objection, motions to exclude are
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`only authorized at the close of trial, after all supplemental evidence has been
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`served. Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48758 (Aug. 14,
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`2012) (“Once the time for taking discovery in the trial has ended, the parties will
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`be authorized to file motions to exclude evidence believed to be inadmissible.”)
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`
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`Similarly, because supplemental evidence may moot many disputes, the
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`Board has instructed that supplemental evidence is usually not filed at the time of
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`11
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`service. See, e.g., Handi-Quilter, Inc. v. Bernina Int’l AG, IPR2013-00364, Paper
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`Case IPR2014-00789
`Petitioner’s Reply Brief
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`30 at 3 (PTAB June 12, 2014) (“The Rules do not provide for such supplemental
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`evidence to be filed with the Board at the time it is served to the objecting party,
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`because the Board anticipates that a party’s objection to evidence may sometimes
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`be overcome by the supplemental evidence. In such situations, the objection
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`would not become the basis of a motion to exclude evidence under § 42.64(c), and
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`the Board need not be made aware of the objection or the supplemental
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`evidence.”). For this reason, the supplemental evidence was served on Patent
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`Owner, but not filed, on April 16.
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`Now, because the Motion to Exclude was filed, prematurely, mid-trial,
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`before supplemental evidence was served, Exhibits 1023 and 1024 are appropriate
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`Reply exhibits. See, e.g., Brookwood Co. Inc. v. Nextex Applications, Inc.,
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`IPR2014-00412, Paper 19 at 5 (PTAB Sept. 24, 2014) (recognizing that petitioner
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`evidence served in response to an evidentiary objection may later be filed via
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`petitioner’s reply and/or in opposition to a motion to exclude). As the
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`supplemental evidence of April 16 is both responsive to the outstanding Motion to
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`Exclude as well as the duplicate argument raised in Patent Owner’s Response, it
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`remains record evidence that further corroborates the public accessibility of
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`Apogee.
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`12
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`First, Petitioners served the Supplemental Declaration of Johan Suetens (Ex.
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`Petitioner’s Reply Brief
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`1024). There, Mr. Suetens explains exactly how Agfa’s Enterprise Management
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`System works and how Agfa monitored the dissemination of brochures and other
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`documents like Apogee (Ex. 1007) during the regular course of business. In
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`particular, Agfa’s Enterprise Management System logged requests from Agfa’s
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`regional offices for copies of brochures and other documents (see Ex. 1024 at ¶¶ 6,
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`10-11, Attachment E), and then logged the date when the ordered brochures were
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`printed and delivered to Agfa’s warehouses (see Ex. 1024 at ¶¶ 6, 12, Attachment
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`F). Following this, and once the document request was prepared and fulfilled,
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`Agfa’s accounting department would invoice the requesting individual for the
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`ordered document/brochures. (See Ex. 1024 at ¶¶ 7-8, 14, Attachment H.)
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`Between May 15, 1998 and August 13, 1998, Agfa Belgium received
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`714,320 copies of Apogee (Ex. 1007). Specifically, 44,014 copies were received
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`on May 15, 1998; 492,926 copies were received on June 10, 1998; 101,350 copies
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`were received on July 3, 1998; and 76,030 copies were received on August 13,
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`1998. (See Ex. 1024 at ¶ 13.) Attachment H to Mr. Suetens supplemental
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`declaration also shows that individuals working for Agfa USA were invoiced for
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`the Apogee brochure (Ex. 1007) throughout 1998. By way of example, an invoice
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`for 1,000 Apogee brochures was sent to a Mr. Morrisey on May 26, 1998; an
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`invoice for 2,500 Apogee brochures was sent to a Mr. Ross on June 11, 1998; and
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`13
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`an invoice for 400 Apogee brochures was sent to a Mr. Jahn on August 11, 1998.
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`Petitioner’s Reply Brief
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`The supplemental declaration of Mr. Suetens clearly corroborates Petitioners’
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`original assertion—that hundreds of thousands of copies of Apogee were printed,
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`received by Agfa, and then distributed to Agfa’s sales personnel for distribution to
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`the public throughout 1998.
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`Second, Petitioners served the Declaration of Michael Jahn (Ex. 1023),
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`which is the same Mr. Jahn referred to in the paragraph above. Mr. Jahn worked
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`for Agfa from August 1997 to September 2001 and, during that time, he assisted in
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`the product management and development of the Agfa Apogee product. This
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`included Mr. Jahn giving numerous presentations and seminars throughout the
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`world on Agfa’s products, including Apogee. (Ex. 1023 at ¶¶ 5, 9-11.) Apogee
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`(Ex. 1007) was the brochure that Mr. Jahn handed to conference/seminar attendees
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`after they visited Agfa’s presentation booth. (Ex. 1023 at ¶¶ 9, 11.) Not only did
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`Mr. Jahn distribute hard-copies of Apogee to conference/seminar attendees
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`throughout 1998 and thereafter, he also directed attendees to his website
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`(www.jahn.org), where an earlier version of Apogee was available for download
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`(the “March Apogee Brochure”). (Ex. 1023 at ¶¶ 12, 14.)
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`More specifically, Mr. Jahn testified that he uploaded the March Apogee
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`Brochure to his website sometime in March 1998; that his website was freely
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`accessible to the public; and that it was his practice to direct conference attendees
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`14
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`to his website to download Agfa literature, such as Apogee. (Ex. 1023 at ¶¶ 18-
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`Petitioner’s Reply Brief
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`21.) Mr. Jahn’s declaration also includes an affidavit from Christopher Butler of
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`the Internet Archive, attaching a true and correct copy of Mr. Jahn’s website as it
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`existed on January 25, 1999. (Ex. 1023 at ¶ 13.) As can be seen from the Internet
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`Archive’s records (see Ex. 1023 Attachment C at pp. 1-7), the March Apogee
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`Brochure was freely available on jahn.org by January 25, 1999, at the latest, which
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`is the first Wayback Machine capture of Mr. Jahn’s website. (Ex. 1023 at ¶¶ 15-
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`17, Attachment C at p. 7 (“Agfa Apogee” link).) However, as explained above,
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`Mr. Jahn confirmed that the March Apogee Brochure would have been available
`
`for download in March 1998. (Ex. 1023 at ¶¶ 17-19.) Mr. Jahn also explained that
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`the differences between the March Apogee Brochure and the Apogee exhibit (Ex.
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`1007) are marketing, rather than technical edits, and that “the architecture and
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`functionality of Apogee did not change in any significant way, if at all,” between
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`versions of the brochure. (Ex. 1023 at ¶¶ 22-28.)
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`Not only have Petitioners’ established, by a preponderance of the evidence
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`(see 35 U.S.C. § 316(e)), that Apogee was publicly accessible before the priority
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`date of the ‘155 patent (July 30, 1999), Petitioners have established that Apogee
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`was publicly accessible by clear and convincing evidence. Patent Owner’s
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`objection to Petitioners’ evidence, and untimely motion to exclude (Paper 23),
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`should be denied as moot.
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`15
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`PROF. STEVENSON’S DECLARATION IS UNRELIABLE
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`Case IPR2014-00789
`Petitioner’s Reply Brief
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`V.
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`Prof. Stevenson’s analysis is fatally flawed. Specifically, Prof. Stevenson
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`provides unsupported legal conclusions, has no skill in the pertinent art of printing
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`and pre-press systems, and has mistakenly applied a presumption of validity to the
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`challenged claims.2
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`As an initial matter, Prof. Stevenson’s declaration fails to provide any
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`analysis of the scope and content of the art—he simply reiterates the arguments set
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`forth by Patent Owner, and then concludes that the challenged claims are not
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`obvious. “[H]owever, an expert’s opinion on the legal conclusion of obviousness
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`is neither necessary nor controlling.” Avia Grp. Int’l, Inc. v. L.A. Gear Cal., Inc.,
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`853 F.2d 1557, 1564 (Fed. Cir. 1988); see also 37 C.F.R. § 42.65. Given Prof.
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`Stevenson’s demonstrated lack of experience in the underlying subject matter of
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`this case (discussed below), his opinions should be accorded no weight.
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`2 Tellingly, the vast majority of Prof. Stevenson’s expert witness work has been
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`before the district courts (see Ex. 2014, “Litigation Experience” appendix), and
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`there is no indication in Prof. Stevenson’s declaration that he was informed of the
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`differences in the standard for claim construction, or the burdens of proof that
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`apply to patentability proceedings before the USPTO, as opposed to patent validity
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`proceedings of district courts.
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`16
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`As explained by Patent Owner in its Response, “[t]he ’155 patent relates to
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`Case IPR2014-00789
`Petitioner’s Reply Brief
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`‘a system and method for providing publishing and printing services via a
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`communications network’” and that the “‘[k]ey steps for producing printed
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`materials using a plate process include (1) preparing copy elements for
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`reproduction, (2) prepress production, (3) platemaking, (4) printing, and (5)
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`binding, finishing, and distribution.’” (Resp. at 3, citing Ex. 1001 at 1:12-15.)
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`Patent Owner goes on to describe how “imposition ‘is particularly important in the
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`creation of booklets or catalogs, where pages are positioned using register marks to
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`assist in the stripping, collating, and folding of the printed product.’” (Resp. at 4,
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`citing Ex. 1001 at 1:41-44.)
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`Despite Patent Owner’s recognition that one of ordinary skill in the art
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`would have a working familiarity and experience with the above subject matter, it
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`is readily apparent that Prof. Stevenson lacks this basic requirement. Even a
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`cursory glance at Prof. Stevenson’s curriculum vitae makes clear that his
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`experience and apparent expertise is in digital image/video processing, but not
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`printing systems as described and claimed in the ‘155 patent—the word printing
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`does not even appear in Prof. Stevenson’s CV. Although the claimed subject
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`matter relates to systems and methods for providing publishing and printing
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`services, Prof. Stevenson has never (a) worked for a printer or prepress production
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`company (Ex. 1025 at 31:10-23); (b) designed a prepress work flow from start to
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`17
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`finish (id. at 27:23 – 28:3); (c) used a platesetter to make a printing plate (id. at
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`Case IPR2014-00789
`Petitioner’s Reply Brief
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`30:5-9); (d) taught a course that teaches film setting or plate setting to produce a
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`printing plate (id. at 29:19 – 30:25); or (e) taught a student how to use a platesetter
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`(id. at 31:7-9).
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`Before his deposition, Prof. Stevenson had never heard of sheetwise or
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`work-and-turn imposition, two fundamental imposition methods. (Id. at 20:20 –
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`21:5.) Further, Prof. Stevenson had to “[do] some Googling” to ascertain what the
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`‘155 patent refers to as an “Extreme application.” (See Ex. 1001 at 10:38; Ex.
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`1025 at 23:15 – 24:20.) As indicated in the Exhibits accompanying the Petition
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`and cited by Petitioner’s expert, Prof. Lawler, Adobe’s Extreme software was at
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`the core of its PDF workflow and RIPing technologies that were licensed to the
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`entire industry. (See, e.g., Exs. 1013, 1015, and 1017.) This is notoriously
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`common knowledge to a skilled artisan, which Prof. Stevenson had to “Google.”
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`That Prof. Stevenson applied a district court validity analysis to the
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`challenged claims further exacerbates the unreliability of his opinions. As the
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`statute governing IPR proceedings makes clear, “petitioner shall have the burden
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`of proving a proposition of unpatentability by a preponderance of the evidence.”
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`35 U.S.C. § 316(e). In other words, the presumption of validity accorded to issued
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`patents under 35 U.S.C. § 282 does not apply to IPR proceedings. In direct
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`contravention of this evidentiary standard, Prof. Stevenson admitted that he
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`18
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`presumed the challenged claims valid, and then looked to see if any of the prior art
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`Case IPR2014-00789
`Petitioner’s Reply Brief
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`changed his mind:
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`Q: So then it’s correct to say you presume this patent was valid?
`A: I started with that idea in mind ****
`Q: Okay. And that you presume this patent was valid?
`A: I started with the idea the patent was valid. I looked at whether these
`pieces of art would invalidate that patent based on their teachings.
`Q: And that would be the same for all of these declarations, I presume?
`A: Yes.
`(Ex. 1025 at p. 26, l. 13 – p. 27, l. 7 (emphasis added).)
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`Thus, the entirety of Prof. Stevenson’s analysis is flawed. By starting with
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`the assumption that the challenged claims are valid, it is impossible for Petitioners
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`and this Board to ascertain Prof. Stevenson’s opinions regarding patentability, the
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`prior art, and the instituted grounds absent the applied presumption of validity, or
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`how the applied presumption influenced Prof. Stevenson’s conclusions. In short,
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`Prof. Stevenson’s testimony is not grounded in an appropriate level of skill, and is
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`tainted by an incorrect validity standard. Therefore, this testimony is unreliable.
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`VI. PATENT OWNER’S OTHER ARGUMENTS
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`Patent Owner proposes alleged broadest reasonable interpretations for the
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`terms “plate-ready file,” “communication network,” “end user/central
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`service/printing company facilities,” and “communication routing device.” Patent
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`19
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`
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`Owner sets forth the same constructions and arguments regarding these terms as
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`Case IPR2014-00789
`Petitioner’s Reply Brief
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`presented in its Preliminary Response (compare Prelim. Resp. at 9-14 with Resp. at
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`10-15), which the Board found unnecessary to address the validity of the
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`challenged claims. (Paper 9 at 11.) Further, Patent Owner’s Response confirms
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`the superfluous nature of these arguments, as Patent Owner does not argue any
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`dispositive distinctions vis-à-vis the construction of these terms and the applied
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`prior art. Indeed, whether Petitioners’ or Patent Owner’s proposed constructions
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`are used in analyzing claims 1-9 of the ‘155 patent, the same are unpatentable in
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`view of the instituted grounds.
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`VII. CONCLUSION
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`For the reasons set forth above and in the Petition, claims 1-9 of the ‘155
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`patent should be canceled as unpatentable.
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`Dated: June 1, 2015
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`20
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`Respectfully submitted,
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`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
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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’ REPLY BRIEF on the counsel of record for the Patent Owner by
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`delivering a copy via electronic means 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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`
`
`Dated: June 1, 2015
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