`Tel: 571-272-7822
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`Paper 34
`Entered: November 25, 2015
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`
`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
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`IPR2014-00789
`Patent 6,738,155 B1
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`A.
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`Background
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`I.
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`INTRODUCTION
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`Eastman Kodak Co., Agfa Corp., Esko Software BVBA, and
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`Heidelberg, USA (collectively, “Petitioner”) filed a Corrected Petition
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`(Paper 4, “Pet.”) to institute an inter partes review of claims 1–9 of U.S.
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`Patent No. 6,738,155 B1 (Ex. 1001, “the ’155 patent”). CTP Innovations,
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`LLC (“Patent Owner”) filed a Preliminary Response (Paper 8) (“Prelim.
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`Resp.”). We instituted an inter partes review of claims 1–9 based on the
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`following alleged grounds of unpatentability:
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`Basis
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`§ 103(a)
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`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
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`Decision on Institution (“Dec. on Inst.”) 24–25.
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`§ 103(a)
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`§ 103(a)
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`Claims Challenged
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`1–9
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`1, 2, 4, 5, and 9
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`3 and 6–8
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`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).
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` 2
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`IPR2014-00789
`Patent 6,738,155 B1
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`After the Board instituted trial, Patent Owner filed a Patent Owner
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`Response (Paper 19, “PO Resp.”),7 to which Petitioner replied (Paper 24,
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`“Pet. Reply”). Oral Hearing was held on June 30, 2015, and the Hearing
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`Transcript (Paper 33, “Tr.”) has been entered in the record.
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`We have jurisdiction under 35 U.S.C. § 6(c). This Final Decision is
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`entered pursuant to 35 U.S.C. § 318(a). We determine that Petitioner has
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`shown by a preponderance of the evidence that claims 1–9 are unpatentable.
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`B.
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`Related Proceedings
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`Petitioner discloses that the ’155 patent has been asserted in 49
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`infringement actions. Pet. 1; Ex. 1002. Petitioner also has filed three
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`additional petitions for inter partes review: IPR2014-00788, for review of
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`claims 10–20 of the ’155 patent; IPR2014-00790, for review of claims 1–3
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`of U.S. Patent No. 6,611,349 (“the ’349 patent”), which shares the ’155
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`patent’s disclosure; and IPR2014-00791, for review of claims 4–14 of the
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`’349 patent. Pet. 2. The ’155 and ’349 patents were also the subject of two
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`previous petitions for inter partes review, both of which were denied. See
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`Printing Indus. of Am. v. CTP Innovations, LLC, Case IPR2013-00474
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`(PTAB Dec. 31, 2013) (Paper 16) (denying petition for inter partes review
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`of the ’349 patent); Printing Indus. of Am. v. CTP Innovations, LLC, Case
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`IPR2013-00489 (PTAB Dec. 30, 2013) (Paper 15) (denying petition for inter
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`partes review of the ’155 patent).
`
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`7 Patent Owner also filed two motions to exclude evidence, which are
`discussed in section II.B.4 below.
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` 3
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`IPR2014-00789
`Patent 6,738,155 B1
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`C.
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`The ’155 Patent
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`The ’155 patent issued May 18, 2004 from an application filed July
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`30, 1999. Ex. 1001, cover page. The ’155 patent relates to “a system and
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`method of providing publishing and printing services via a communications
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`network.” Id. at 1:9–10. According to the ’155 patent, “[k]ey steps for
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`producing printed materials using a plate process include (1) preparing copy
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`elements for reproduction, (2) prepress production, (3) platemaking,
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`(4) printing, and (5) binding, finishing and distribution.” Id. at 1:12–15. In
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`the first or “design” stage, an end user—e.g., a publisher, direct marketer,
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`advertising agency, or corporate communication department—uses a
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`desktop publishing program such as “QuarkXpress” to design “pages” from
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`image and data files. Id. at 1:16–25. In the prepress production stage, the
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`user-created pages are “transformed into a medium that is reproducible for
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`printing.” Id. at 1:26–28. This transformation typically involves
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`typesetting, image capture and color correction, file conversion, “RIPing,
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`trapping, proofing, imposition, filmsetting, and platesetting.” Id. at 1:29–32.
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`“RIPing” is based on the acronym “RIP,” which stands for raster
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`image processor. Id. at 7:57–59. A RIP is a hardware or software
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`component that “rasterize[s]” an image file—i.e., converts it to a “bitmap”
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`or raster image. Id. “RIPing” is therefore synonymous with rasterizing. A
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`bitmap “is a digitized collection of binary pixel information that gives an
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`output device, such [as a printer, proofer, or platesetter,] the ability to image
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`data to paper, film, or plate.” Id. at 7:59–62. “Proofing” involves creating a
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`sample of the finished product that is sent to the end user for approval. Id. at
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`1:32–35. Once the end user approves the proof, a medium, such as a
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`computer-to-plate (CTP) file, is produced and sent to the printer. Id. at
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` 4
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`IPR2014-00789
`Patent 6,738,155 B1
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`1:35–39. “Imposition” involves “the set of pages on a particular plate as
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`well as their positioning and orientation” to facilitate “the stripping,
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`collating, and folding of the printed product.” Id. at 1:38–44. A printer
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`makes a plate “using the medium created during prepress,” e.g., a CTP file.
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`Id. at 1:45–48. The printer uses the plate on a printing press to reproduce the
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`product, which is then bound, finished, and distributed. Id. at 1:45–51.
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`The ’155 patent describes and claims a publishing and printing system
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`in which “[s]ystem components are installed at an end user facility, a
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`printing company facility, and a central service facility,” each connected to
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`the others via a communication network. Id. at 2:31–36, 51–56. Figure 1,
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`reproduced below, depicts an embodiment of the claimed invention:
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`Figure 1 depicts end user facility 300, printing company facility 400,
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`and central service facility 105 connected together via either private network
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` 5
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`IPR2014-00789
`Patent 6,738,155 B1
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`160 or public network 190. Id. at Fig. 1. In this embodiment, end user
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`facility 300 comprises a router, a desktop computer for page-building
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`operations, and a color proofer and black and white printer for high-
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`resolution proofing. Id. at 7:38–40, Figs. 1, 2, 5. Printing company facility
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`400 comprises a router, a server, a desktop computer, a laser printer, a color
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`plotter, and a platesetter, and performs production management, digital
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`plate-making, desktop imposition, and press services. Id. at 8:31–33, 9:38–
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`43, Figs. 1, 4, 5. Central service facility 105 comprises server 110,
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`“hierarchical storage management” (HSM) system 120, “digital content
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`management” system 130, local area network (LAN) 150 and
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`communication routing device 200. Id. at 5:34–50. “Data may be
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`exchanged between central service facility 105 and either private network
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`160 or public network 190 in any suitable format, such as in accordance with
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`the Internet Protocol (IP), the Transmission Control Protocol (TCP), or other
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`known protocols.” Id. at 5:21–25. An end user can store files in HSM
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`system 120 to reduce storage needs at the end user facility. Id. at 7:19–23,
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`38–40.
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`Server 110 uses software capable of performing “open prepress
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`interface” (OPI) operations. Id. at 5:62–64. OPI operations include “high
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`resolution image swapping.” Id. at 10:31–33. That is, OPI permits a lower
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`resolution image file to be used as a proxy for a higher resolution file during
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`page-building operations, which is advantageous because the low resolution
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`image can be transmitted and manipulated more quickly. Id. at 7:46–49,
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`10:44–49. The low resolution images are replaced by the corresponding
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`high resolution images before final proofing and printing. Id. at 7:49–51.
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` 6
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`IPR2014-00789
`Patent 6,738,155 B1
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`D.
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`Illustrative Claims
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`Claim 1 is independent and recites a printing and publishing system
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`comprising an end user facility, a central service facility, and a printing
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`company facility. Claims 2–9 depend directly or indirectly from claim 1.
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`Claim 1 is reproduced below:
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`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.
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` 7
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`IPR2014-00789
`Patent 6,738,155 B1
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`II. ANALYSIS
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`A.
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`Claim Construction
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`The claims of an unexpired patent are interpreted using the broadest
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`reasonable interpretation in light of the specification of the patent in which
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`they appear. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 793
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`F.3d 1268, 1278 (Fed. Cir. 2015). Under this standard, the claim language
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`should be read in light of the specification as it would be interpreted by one
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`of ordinary skill in the art. In re Suitco Surface, Inc., 603 F.3d 1255, 1260
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`(Fed. Cir. 2010). Any special definition for a claim term must be set forth in
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`the specification with reasonable clarity, deliberateness, and precision. In re
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`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
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`We expressly construe below only those claim terms that require
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`analysis to resolve arguments related to the patentability of the challenged
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`claims. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
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`(Fed. Cir. 1999) (holding that “only those [claim] terms need be construed
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`that are in controversy, and only to the extent necessary to resolve the
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`controversy”). All other terms will be accorded their ordinary and
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`customary meaning as would be understood by one of ordinary skill at the
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`time of the invention.
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`1.
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`“A printing and publishing system providing . . . services
`to system subscribers in real time using a communication
`network”
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`The preamble for independent claim 1 recites a printing and
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`publishing system providing services to system subscribers “in real time.”
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`In the Decision on Institution, we determined that “the preambles in the
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`claims at issue, including the term ‘real time,’ do not limit the scope of the
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` 8
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`IPR2014-00789
`Patent 6,738,155 B1
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`claims.” Dec. on Inst. 13. Neither Patent Owner in its Response nor
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`Petitioner in its Reply disputed this determination. Further, we are not
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`aware of any evidence adduced at trial that calls this determination into
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`question. Therefore, based on our analysis in the Decision on Institution, we
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`determine that the preambles in the claims at issue, including the term “real
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`time,” do not limit the scope of the claims.
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`2.
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`“end user facility,” “central service facility,” and
`“printing company facility” (all claims)
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`Independent claim 1 is drawn to a printing and publishing system
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`comprising, inter alia, an “end user facility,” a “printing company facility,”
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`and a “central service facility,” each coupled to the same communication
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`network. Petitioner has “applied the construction of these terms as provided
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`by the PTAB in connection with the [IPR2013-00489] Petition, which is that
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`‘the claimed facilities must be distinct from each other in some manner.’”
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`Pet. 22 (quoting Ex. 1004, 11). Patent Owner responds that this requirement
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`should not be adopted because it “is unclear and ambiguous,” in that “‘in
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`some manner’ . . . can mean almost anything.” PO Resp. 13. Patent Owner
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`further contends that “any operational distinctions that can be made between
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`these facilities are clear from the terms of the applicable claims.” Id.
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`We agree with Patent Owner to the extent that the claim itself defines
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`“end user facility,” “printing company facility,” and “central service facility”
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`in terms of the particular functions they perform; e.g. the end user facility
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`performs page building operations, the printing company facility performs
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`imposition and generates a plate-ready file, and the central service facility
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`performs content management operations. These functions are not limiting;
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` 9
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`IPR2014-00789
`Patent 6,738,155 B1
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`for example, the printing company facility obviously would also perform
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`platemaking and offset printing functions.
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`But we maintain the view that these facilities must be distinct
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`components of the claimed printing and publishing system. “Where a claim
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`lists elements separately, the ‘clear implication of the claim language’ is that
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`those elements are distinct components of the patented invention.” Becton,
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`Dickenson and Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1254
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`(Fed. Cir. 2010) (internal citations and quotation marks omitted); cf. Regents
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`of Univ. of Minn. v. AGA Med. Corp., 717 F.3d 929, 935 (Fed. Cir. 2013)
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`(holding that phrase “first and second occluding disks” means physically
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`separate occluding disks). The Specification supports this conclusion
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`because it consistently describes the three facilities as separate entities, each
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`connected to the same communication network to facilitate the transfer of
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`data between each other. See, e.g., Ex. 1001, 2:54–64, 4:26–33, Figs. 1–5.
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`3.
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`“plate-ready file”(all claims)
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`Independent claim 1 requires a printing company facility to generate a
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`“plate-ready file.” Petitioner asserts that:
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`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.
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`Pet. 21 (footnote omitted).
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`10
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`IPR2014-00789
`Patent 6,738,155 B1
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`Patent Owner asserts that a plate-ready file is “a file that is ready to be
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`made into a printing plate.” PO Resp. 10–11 (emphasis omitted). Patent
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`Owner relies in part on the deposition testimony of Petitioner’s expert, Brian
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`Lawler, which mirrors Petitioner’s contentions above. Id. at 12 (quoting Ex.
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`2017, 35:19–36:3).
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`
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`The Specification does not define “plate-ready file” expressly, but its
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`meaning is discernible from the term itself: a file that can be used to
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`produce a printing plate without further modification. See Ex. 1001, 10:7–
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`14 (equating the term “plate-ready file” with “a single file that is stable,
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`predictable, and ready to image to proof or plate”). Moreover, as Petitioner
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`states, the plate-ready file can be used with a platesetter to create a plate
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`directly, or with an imagesetter to produce film that is then used to create the
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`plate. Pet. 21. Further, we agree with the parties that because the file is
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`“plate-ready,” it represents a page layout file that has gone through the
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`prepress process, including RIPing. That is the purpose of prepress
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`production: transforming “copy” into “a medium that is reproducible for
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`printing,” such as a “computer to plate (CTP) file.” Id. at 1:26–38.
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`Accordingly, in addition to the construction we applied in the Decision on
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`Institution, we construe “plate-ready file” to mean a file that represents a
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`page layout that has gone through prepress processing, including RIPing,
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`and is ready to image to a plate using either a platesetter or imagesetter.
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`B.
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`Claims 1–9—Jebens, Apogee, and OPI White Paper
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`Petitioner asserts that claims 1–9 are unpatentable under 35 U.S.C.
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`§ 103(a) as obvious over Jebens, Apogee, and OPI White Paper. Pet. 23–40.
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`11
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`IPR2014-00789
`Patent 6,738,155 B1
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`1.
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`Jebens
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`Jebens describes “a digital image management and order delivery
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`system.” Ex. 1005, 2:13–14. The system provides a centralized, searchable
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`database of digital images that can be used and modified by authorized
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`users. Id. at 4:54–56. The system also serves as a job order developer and
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`conduit for routing files from a client, such as an advertising agency, to a
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`printer. Id. at 4:60–62. Figure 1, reproduced below, illustrates Jebens’
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`invention.
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`Figure 1 depicts a data management and work-order delivery system
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`constructed according to Jebens. Id. at 4:20–23. The system comprises host
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`system 10 in communication with a variety of users, such as browsers and
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`client “orderers” 12, image providers 14, and suppliers 16. Id. at 6:52–65.
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`The host system software includes, inter alia, an image database that
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`archives low and high resolution copies of digital image files. Id. at 8:12–
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`13. The system is “ideally suited for facilitating publication and the like.”
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`12
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`Id. at 4:66–67. Image providers 14 may include a corporation that stores
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`digital images of its products on host system 10 to more efficiently use its
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`in-house computer storage facilities. Id. at 4:67–5:5, 6:55–60. Browsers
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`and client orderers 12 may include an advertising agency that the
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`corporation hires to create a brochure using the stored images, and suppliers
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`16 may include the printer that will print the finished brochure. Id. at 5:5–
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`10, 6:54–65. To use the system, the corporation gives the agency
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`information to access the host system; the agency searches the host system,
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`downloads low-resolution copies of desired images, and uses the low-
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`resolution images to create the brochure. Id. at 5:11–17. The agency then
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`reconnects to the system “to request that the system electronically route the
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`created document with high resolution copies of the selected digital images
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`to a publishing entity such as a printer, where the finalized brochure would
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`be published.” Id. at 5:17–22. Communication between host system 10 and
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`users 12, 14, and 16 “can be effected by any known means of connectivity,”
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`such as “through local area networks or wide area networks,” or “hardwired
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`to one another as an intranet.” Id. at 6:66–7:4, 7:20.
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`2.
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`Apogee
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`Apogee describes the Agfa Apogee print-production system.
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`Ex. 1007, 1. Content can be created in any format and output to Apogee in
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`either PostScript or PDF; Apogee normalizes incoming files to PDF “to
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`guarantee complete predictability and compatibility.” Id. at 3–4. The PDF
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`files are stored as individual PDF pages and become “Digital Masters” to
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`create all production versions of the document and to provide a version that
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`can be proofed and edited remotely. Id. at 4, 6. For a specific print job,
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`Apogee collects the appropriate pages, automatically imposes the pages into
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`13
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`IPR2014-00789
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`a “digital flat,” and rasterizes it for the selected output device (e.g., an image
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`setter or plate setter). Id. at 6. The result is a “Print Image File” (PIF) that
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`“contains all the dots that will appear on the film or plate.” Id.
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`3.
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`OPI White Paper
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`OPI White Paper describes the OPI “image swapping” process. Ex.
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`1008, 10. “[I]image swapping enables a page designer to work with a small
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`screen-resolution picture file during page design and then rely on the
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`intervention of the OPI server to swap it out for the high-resolution, color-
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`separated file necessary to render the picture in print.” Id. at 10, 12, Fig. 2d.
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`OPI White Paper describes the typical manner in which the low-resolution
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`image files, or “preview files,” are generated: a user saves a high-resolution
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`file to a particular folder on the OPI server, which triggers a routine that
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`creates a preview file and puts it in a different folder. Id. at 12. A particular
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`implementation of the OPI process at a printing facility is also described. Id.
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`at 31–32, Fig. 4c.
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`4. Whether Apogee is a Prior Art Publication
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`Before discussing the merits of this ground of unpatentability, we first
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`address Patent Owner’s contention, PO Resp. 46–53, that Petitioner has not
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`shown that Apogee was publicly accessible before July 30, 1999, the ’155
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`patent’s filing date. Petitioner contends that Apogee—which bears a
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`copyright date of 1998 by Agfa-Gevaert N.V.—was published in 1998, and
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`“[a]t the latest” was made available to the public on May 28, 1998. Pet. 5
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`(citing Ex. 1022); see Ex. 1007, 8. Petitioner relies on the Declaration of
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`Johan Suetens, an employee of Agfa Graphics, to support this contention.
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`Mr. Suetens testifies that in 1998 he was responsible for “marketing-
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`communications of commercial printing” at Agfa. Ex. 1022 ¶ 4. According
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`14
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`to Mr. Suetens, the Apogee reference was created to promote the Agfa
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`Apogee system to potential customers. Id. ¶ 8. Mr. Suetens further testifies
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`that a code appearing on the last page of the Apogee reference—
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`“NEFDU”—is unique to the Apogee reference, and is used by Agfa’s
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`“Enterprise Management System” to track the document. Id. ¶ 10.
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`Attachment D to Mr. Suetens’ Declaration is a printout from the Enterprise
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`Management System that Mr. Suetens asserts shows that 76,030 copies of
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`the Apogee reference were printed for Agfa in April 1998. Id. Mr. Suetens
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`asserts that this printed version of the Apogee reference was distributed by
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`Agfa sales departments at “seminars, exhibitions, and demos of Apogee to
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`the public,” and was made available to the public as an electronic PDF file
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`on Agfa’s website, www.agfahome.com, no later than May 28, 1998, when
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`Agfa issued a press briefing announcing the release of Apogee Pilot. Id.
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`¶¶ 8–10.
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`Patent Owner counters that “Petitioners have failed to establish that
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`[Apogee] was distributed outside of Agfa or was otherwise publicly
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`accessible.” PO Resp. 46. Based on Mr. Suetens’ deposition testimony,
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`Patent Owner asserts that he “has no actual personal knowledge of when (or
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`even if) the Apogee reference was distributed to the public, made available
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`to the public, or provided to any member of the public.” Id. at 47.
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`According to Patent Owner, Mr. Suetens testified at his deposition that
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`(1) Agfa’s marketing-communication department “does not provide
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`documents—including the Apogee reference—directly to the public,” but
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`only makes documents available to Agfa subsidiaries (id. (citing Ex. 2016,
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`23:8–24:10)); (2) he does not have any personal knowledge of the
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`distribution of the Apogee reference to a customer or potential customer, or
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`when the printed form would have been distributed to Agfa subsidiaries (id.
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`at 48–49 (citing Ex. 2016, 34:4–18, 40:7–41:1, 50:5–23)); (3) he does not
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`know who, if anyone, posted a PDF version of Apogee on Agfa’s website or
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`when it was posted (id. at 50 (citing Ex. 2016, 48:3–49:21); and (4) he does
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`not remember seeing it on the website (id.).
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`Petitioner responds to Patent Owner’s contentions by submitting
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`additional evidence with its Reply, i.e., a supplemental Declaration from Mr.
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`Suetens (“Supplemental Suetens Declaration,” Exhibit 1024), and a
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`Declaration from Michael Jahn (“Jahn Declaration,” Exhibit 1023).
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`Attached to the Supplemental Suetens Declaration were additional records
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`obtained from Agfa’s Electronic Management System. Ex. 1024, Att. E–H.
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`According to Mr. Suetens, these records demonstrate how the Electronic
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`Management System tracked the ordering and delivery of copies of the
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`Apogee reference and other promotional brochures from Agfa headquarters
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`to its subsidiaries and regional offices in 1998. For example, Mr. Suetens
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`testifies that Attachment H demonstrates that 400 copies of the Apogee
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`reference were sent to Declarant Michael Jahn. Id. ¶ 14, Att. H.
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`Mr. Jahn testifies that from August 1997 to September 2001 he
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`worked for Agfa Corporation as a contract consultant. Ex. 1023 ¶¶ 4–5. Mr.
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`Jahn asserts that “it was my job, beginning in August 1997 until leaving the
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`company in September 2001, to travel internationally and throughout the
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`U.S. to meet with potential customers and industry groups for the purpose of
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`educating them on the AGFA Apogee PDF workflow.” Id. ¶ 10. He states
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`that he “recognize[d] [the Apogee reference] as one that I personally
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`distributed to interested members of the public on behalf of Agfa beginning
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`in 1998, and thereafter.” Id. ¶ 9. For example, Mr. Jahn testified that he
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`attended the “Vue/Point conference 9th annual communication event held
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`April 14–16 in Arlington, Virginia, and the PIRA International meeting held
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`in England,” and that “[a]t these conferences, . . . [t]he Apogee [reference]
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`was the literature that attendees were given to take back to their office.” Id.
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`¶¶ 10–11. Mr. Jahn also testifies that he directed conference attendees to his
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`website, www.jahn.org., where he had posted and made publicly available
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`an earlier “near identical” version of the Apogee reference. Id. ¶¶ 12, 15,
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`Att. C.
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`a.
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`Patent Owner’s First Motion to Exclude Evidence
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`On April 2, 2015, concurrently with its Patent Owner Response,
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`Patent Owner filed its First Motion to exclude the Apogee reference, Ex.
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`1007, and Mr. Sueten’s first Declaration, Ex. 1022. Paper 18, 3–13. On
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`April 16, 2015, Petitioner responded to Patent Owner’s First Motion as if it
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`were evidentiary objections filed under 37 C.F.R. § 42.64(b)(1), and served
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`on Patent Owner “supplemental evidence” under 37 C.F.R. § 64(b)(2);
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`specifically, the Supplemental Suetens Declaration and the Jahn Declaration.
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`Paper 29, 3; Tr. 31:4–8.
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`Patent Owner seeks to exclude Mr. Suetens’ first Declaration for
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`essentially the same reasons discussed above: that Mr. Suetens lacks
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`personal knowledge regarding the public accessibility of Apogee. We have
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`reviewed the First Motion and determine that Patent Owner’s objections to
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`the First Suetens Declaration go more to the weight of the Declaration than
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`to its admissibility. Further, we note that the public accessibility of the
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`Apogee reference is a substantive issue that is better suited for Patent
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`Owner’s Response than for a motion to exclude. For these reasons, we deny
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`Patent Owner’s First Motion to Exclude.
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`b.
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`Patent Owner’s Second Motion to Exclude
`Evidence
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`Patent Owner filed its Second Motion on June 11, 2015, ten days after
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`Petitioner filed its Reply and Exhibits 1023 and 1024, the Jahn Declaration
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`and Supplemental Suetens Declaration, respectively. In the Second Motion
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`Patent Owner moves for the exclusion of these Declarations. Patent
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`Owner’s principal argument is that the Declarations constitute
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`“supplemental information, not supplemental evidence.” Paper 25, 10.
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`According to Patent Owner, “[i]nformation submitted to the Board that is
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`directed to the public accessibility of Apogee is per se supplemental
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`information . . . because Apogee serves as one of Petitioners’ asserted bases
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`for unpatentability.” Id. Because Petitioner did not follow the procedure for
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`submitting supplemental information under 37 C.F.R. § 42.123(b), Patent
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`Owner argues that the Supplemental Suetens Declaration should be
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`excluded. Id. at 11.
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`Petitioner responds that both the Jahn and Supplemental Suetens
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`Declarations are “offered solely to support the admissibility of Apogee,” and
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`“are not offered to further support ‘any argument on the merits (i.e.,
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`regarding the patentability or unpatentability of a claim)’ in view of Apogee,
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`and, therefore, are proper supplemental evidence.” Paper 29, 4.
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`As an initial matter, we reject the notion that evidence submitted to
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`support a reference’s public availability can never be served as
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`“supplemental evidence” under 37 C.F.R. § 42.64(b)(2). The rule does not
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`limit the subject matter of evidence served under this rule, and at least two
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`other panels have noted that such evidence has been served as supplemental
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`evidence. See Palo Alto Networks, Inc. v. Juniper Networks, Inc., Case
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`IPR2013-00369, slip op. at 2, 5 (PTAB Feb. 5, 2014) (Paper 37) (noting its
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`understanding that the supplemental information under consideration
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`previously had been served to Patent Owner in response to Patent Owner’s
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`evidentiary objections); Toyota Motor Corp. v. American Vehicular Scis.,
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`LLC, Case IPR2013-00417, slip op. at 8 (PTAB Jan. 7, 2015) (Paper 78)
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`(noting Petitioner’s submission of supplemental evidence to establish a
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`prior-art reference’s publication date).
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`More importantly, we disagree with Patent Owner that evidence must
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`be submitted as supplemental information in accordance with 37 C.F.R.
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`§ 42.123 in order for the evidence to be admitted as rebuttal evidence with
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`Petitioner’s Reply. The Board “has broad discretion to regulate the
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`presentation of evidence under Fed. R. Evid. 611(a).” Belden Inc. v. Berk-
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`Tek LLC, –––F.3d–––, 2015 WL 6756451, at *14 (Fed. Cir. Nov. 5, 2015).
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`In particular, the Board has discretion to permit Petitioner to submit
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`evidence with its Reply to rebut an argument raised in the Patent Owner
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`Response. Id.; Flir Sys., Inc. v. Leak Surveys, Inc., Case IPR2014-00411,
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`slip op. at 11 (PTAB Sept. 3, 2015) (Paper 113).
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`Under the circumstances of this case, we determine not to exclude the
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`Jahns and Supplemental Suetens Declarations. First, the Declarations serve
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`the permissible rebuttal function of responding directly to an argument
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`Patent Owner made in its Response, PO Resp. 46, that Petitioner has failed
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`to establish that Apogee “was distributed outside of Agfa.” See Belden,
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`2015 WL 6756451, at *14 (“the traditional principle [is] that evidence
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`offered to rebut must accomplish the function of rebuttal; ‘to explain, repel,
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`counteract, or disprove the evidence of the adverse party’” (internal citation
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`omitted)); Flir, slip op. at 11 (“[t]he object of a reply is to address arguments
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`made in an opposition”). Second, Patent Owner had a fair opportunity to
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`respond to the Declarations. Because the Declarations were served on
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`Patent Owner on April 16,8 well before they were filed with the Reply,
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`Patent Owner had ample opportunity to depose Mr. Jahn and Mr. Suetens
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`before the June 11 deadline for filing motions for observations regarding
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`cross-examination. Indeed, Patent Owner has not argued that it