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 IPR2014-00790
`
`Patent 6,611,349
`
`____________
`
`
`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 IPR2014-00790
`
`Patent 6,611,349
`
`____________
`
`
`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”).
`
`
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`Case IPR2014-00790
`Petitioners’ Reply Brief
`Patent Owner’s response is plainly impertinent to the instituted grounds.
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`Trial has been instituted on claims 1-3 of the ‘349 patent in view of Jebens,
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`Apogee, and OPI White Paper, as well as Dorfman, Apogee, Andersson, and OPI
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`White Paper. (Paper 9 at 25.) Despite the Board’s admonishment in its institution
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`decision that “nonobviousness cannot be established by attacking the references
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`individually when the rejection is predicated upon a combination of prior art
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`disclosures” (id. at 20), Patent Owner continues to: (a) argue the alleged
`
`shortcomings of individual references; (b) ignore the proposed combinations set
`
`forth in the Petition; and (c) reiterate the failed arguments of its preliminary
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`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 1-3. Moreover, the testimony of
`
`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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`that he reviewed the Board’s Institution Order (Ex. 2014 at ¶ 11), he does not rebut
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`its findings anywhere. The Board’s findings of fact stand unrebutted.
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`1
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`Case IPR2014-00790
`Petitioners’ Reply Brief
`THE JEBENS GROUNDS STAND UNREBUTTED
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`I.
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`Claims 1-3 are rendered obvious in view of Jebens, Apogee, and OPI White
`
`
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`Paper. Patent Owner’s alleged basis for distinguishing these claims stems from an
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`improper reading of the claims and the prior art. Patent Owner also fails to
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`consider the proposed combination as a whole, attacking the references
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`individually instead.
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`A. The End-User, Central Service, and Printing Company Facilities
`Disclosed in Jebens are Coupled to a Communication Network
`
`
`Claims 1-3 of the ‘349 patent include “an end user facility coupled to a
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`communication network,” “a printing company facility coupled to said
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`communication network,” and “a central service facility coupled to said
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`communication network.” Reading from the ‘349 patent’s specification, Patent
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`Owner and its expert attempt to import a requirement into the claim that the
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`communication network must “integrate various processes into ‘one real time
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`system” (Resp. at 33, citing Ex. 1001 at 4:25-33, emphasis added), such that all
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`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
`
`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 37.)
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`2
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`Case IPR2014-00790
`Petitioners’ Reply Brief
`As an initial matter, the Board has already determined that the preamble of
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`claims 1-3, 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 33; Ex.
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`2014 at ¶ 25.) Patent Owner provides no justification to support its bald assertion,
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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 ‘349 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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`Case IPR2014-00790
`Petitioners’ Reply Brief
`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 ‘349 patent.
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`Figure 1 of Jebens, cited on page 31 of the Petition and reproduced by Patent
`
`Owner on page 35 of its Response, clearly shows all three facilities coupled to an
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`intranet or the Internet. Jebens meets this limitation of the challenged claims.
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`B. Jebens in Combination with Apogee Discloses Generating a Plate-Ready
`File at a Central Service Facility
`
`As set forth in the Petition, and as recognized by the Board in its Institution
`
`
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`Decision, Jebens in combination with Apogee, teaches the claimed step of
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`generating a plate-ready file at a central service facility and providing that plate-
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`ready file to a remote printer. (Paper 9 at 17-18.) Patent Owner spends six pages
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`of its Response ignoring the proposed combination set forth by Petitioners and
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`argues that Jebens does not disclose generating a plate-ready file at a central
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`service facility.
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`Just as in its preliminary response, Patent Owner attempts to argue that
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`Jebens central service facility is simply a conduit. This argument is incorrect and
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`was rejected by the Board at institution. (Paper 9 at 19-20.) Finally addressing
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`Apogee (in a mere two paragraphs), Patent Owner concedes that Apogee teaches a
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`plate-ready file as claimed. (Resp. at 32.) Patent Owner’s sole argument against
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`Apogee is incorrect and unsupported by the record.
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`Case IPR2014-00790
`Petitioners’ Reply Brief
`As an initial matter, Petitioners note that claims 1-3 of the ‘349 patent do not
`
`require the central service facility to directly send the generated plate-ready file to
`
`the printing company facility as argued by Patent Owner. (Resp. at 26.) Rather,
`
`the claims state that the file processing operations occurring at the central service
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`facility “include generating a plate-ready file from pages designed at said end user
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`facility,” and that the printing company facility “produc[es] a printing plate from
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`said plate-ready file.” As discussed above, the specification teaches indirect
`
`communication between facilities and, thus, the claims must be interpreted to cover
`
`an embodiment in which the printing company facility indirectly receives a plate-
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`ready file from the central service facility. Finally, even assuming the claims could
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`be so narrowly construed, Jebens in combination with Apogee directly sends the
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`plate-ready file to the printing company facility.
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`As set forth in the Petition, the steps of generating a plate-ready file from the
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`page layout designed by the client and providing the plate-ready file to the printing
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`company facility are clearly taught by Jebens in combination with Apogee.
`
`(Petition at 25-27, 30-39; Ex. 1022 at ¶¶ 89-95.) Indeed, Patent Owner agrees that
`
`these steps are taught by Apogee. (Resp. at 33.) Patent Owner’s only dispute is
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`that Apogee allegedly describes these steps as occurring at a printing company
`
`facility, not at a central service facility.
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`5
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`Petitioners’ Reply Brief
`Prof. Lawler explained in his declaration that “Apogee thus describes one
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`known process for taking a page layout designed by an end user and turning that
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`incoming file, whether in PostScript or PDF, into a PIF or plate-ready file that can
`
`be output to a desired device.” (Ex. 1022 at ¶ 94.) Similarly, Prof. Lawler
`
`explained that “For ‘direct-to’ production, Agfa developed … the Apogee
`
`PrintDrive. Apogee PrintDrive manages the Print Image Files (PIF) output by one
`
`or more RIPs, and controls output flow to a variety of output devices including
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`Agfa imagesetters, proofers, and platesetters.” (Ex. 1022 at ¶ 93, citing Ex. 1008
`
`at 7.) Nothing in Apogee limits implementation of the processes described therein
`
`to a printing company facility and one of ordinary skill in the art could predictably
`
`implement Apogee at a central service facility.
`
`Moreover, during his deposition, Prof. Lawler explained that Apogee, and
`
`the various processes described therein, can be implemented either at a central
`
`service facility or a printing company facility. Specifically, Prof. Lawler testified
`
`on cross examination that:
`
`Q: So you’re saying Jebens does the swapping, presents it at the host
`facility, and the Apogee citation talks about that same process but at the
`printing facility:
`A: Correct. That could happen in either location.
` (Ex. 2017 at 31:20 – 32:13, emphasis added.) During re-direct examination, Prof.
`
`Lawler reiterated that the generation of a plate-ready file as described by Apogee
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`6
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`Petitioners’ Reply Brief
`can occur either at the printing company facility or the host/central service facility,
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`and that none of the references are limited to preparing the plate-ready file at the
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`central service facility or the printing company facility. (Id. at 101:21 – 103:3.)
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`Thus, one of ordinary skill in the art would have known that the processes
`
`described by Apogee could occur at a printing company facility or at a central
`
`service facility. This teaching of Apogee stands unrebutted.1
`
`Second, Patent Owner confusingly argues (Resp. at 27-31) that the
`
`challenged claims are not unpatentable in view of Jebens, Apogee, and OPI White
`
`Paper because the central facility of Jebens does not carry out OPI—i.e., the
`
`swapping or replacement of low-resolution for-placement-only images with high-
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`resolution copies before printing. As an initial matter, claims 1 and 3 of the ‘349
`
`patent do not recite or require OPI to occur, whether at the central service facility
`
`or the printing company facility. Only claim 2 states that the file processing
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`operations occurring at the central service facility “further comprises performing
`
`open prepress interface (OPI) operations.” Thus, Patent Owner’s arguments
`
`regarding Jebens are irrelevant to claims 1 and 3 of the ‘349 patent.
`
`1 Without any analysis or support, Patent Owner’s expert conclusorily states that
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`“a POSITA would consider this process [i.e., the generation of a plate-ready file in
`
`Apogee] to be taking place at the jobber or supplier, i.e., at a printing company
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`facility.” Ex. 2014 at ¶ 24.
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`7
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`Case IPR2014-00790
`Petitioners’ Reply Brief
`Despite the absence of an OPI process in claims 1 and 3, Patent Owner may
`
`argue that OPI is necessary before a plate-ready file is produced.2 However,
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`Petitioners’ rely on Apogee for its teaching of a plate-ready file, not Jebens alone,
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`which clearly teaches the incorporation of OPI into a pre-press workflow (see, e.g.,
`
`Ex. 1008 at 2, 5). Patent Owner ignores this fact and, instead, focuses solely on the
`
`Jebens reference rather than the proposed combination. The Board has previously
`
`warned Patent Owner that such a blinkered analysis is unavailing. (Paper 9 at 20.)
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`In any event, Patent Owner’s argument that Jebens does not perform OPI at
`
`its central service facility is incorrect. Petitioners and Prof. Lawler explained that
`
`Jebens “describes an Open Prepress Interface system which … create[s] low-
`
`resolution files derived from any of the stored assets in the system, and deliver[s]
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`them to the client for building documents in their own workplaces. Once the
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`graphic designer has created the document, the designer can then re-connect to the
`
`central system and request that the document be electronically routed [with
`
`corresponding high-resolution images] to a publishing entity, such as a printer.”
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`(Ex. 1022 at ¶ 87, citing Ex. 1006 at 5:17-22; Petition at 23-24, 31-33.) During
`
`deposition, Prof. Lawler explained that although the quoted section of Jebens does
`
`2 The recitation in claim 2 specifically requiring OPI as part of the file processing
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`operations at the central service facility is further evidence that claims 1 and 3 do
`
`not implicitly recite an OPI process.
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`8
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`Petitioners’ Reply Brief
`not use the word “replace,” one of ordinary skill in the art would immediately
`
`recognize the description of Jebens as describing an OPI process (Ex. 2017 at
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`28:17 – 29:14), which could occur either at the central service facility or printing
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`company facility. (Id. at 103:4-12.) The triviality of Patent Owner’s and its
`
`expert’s argument is readily apparent—it hinges on the absence of the word
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`“replace” from the quoted section of Jebens, and ignores the understanding of
`
`those of ordinary skill in the art. Patent Owner nowhere rebuts the testimony of
`
`record as to the scope and content of Jebens in this regard.
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`Further, the system described by Jebens includes an “autolog server 34 [at
`
`the host/central service facility, see Fig. 2, which] determines whether a special
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`low resolution format file such as an OPI (Open Pre-press Interface) file should be
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`created from the original image file…” (Ex. 1006 at 10:53-56.) Patent Owner
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`fails to address the fact that Jebens host facility includes an OPI server that would
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`naturally carry out the OPI process and “replace” the low resolution images for
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`high resolution images before printing. Further still, there is no question that
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`before the host system of Jebens routes the created document to the printer, it does
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`so while including the “high resolution copies of the selected digital images.” (Ex.
`
`1006 at 5:20-21.) Whether the high resolution files are already embedded in the
`
`page layout, or sent separately, they have been swapped or “replaced” with the low
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`resolution images used during page building and, therefore, OPI has occurred.
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`9
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`Case IPR2014-00790
`Petitioners’ Reply Brief
`Even if claims 1 and 3 were incorrectly construed to require an explicit OPI
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`process occurring at the host/central service facility, Jebens teaches the same.
`
`Claims 1-3 of the ‘349 patent are rendered obvious in view of Jebens, Apogee, and
`
`OPI White Paper.
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`
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`
`
`II. THE DORFMAN GROUNDS STAND UNREBUTTED
`
`A. The Teachings of Dorfman are Not Limited to “Response on Demand”
`Printing Systems
`
`Nearly all of Patent Owner’s arguments regarding Dorfman surround its
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`unsubstantiated—and previously rejected—argument that Dorfman’s teachings are
`
`directed solely to “response on demand” digital printing systems. Patent Owner
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`now calls Dorfman a “response on demand” system, rather than a “variable data
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`printing (VDP) system” as categorized in the preliminary response (Prelim. Resp.
`
`at 24); however, Patent Owner’s arguments are the same.
`
`Specifically, in its preliminary response, Patent Owner argued that “the
`
`Dorfman system is not relevant to the ’349 patent” because it describes a VDP
`
`system without an explicit disclosure of a printing plate, “which is the raison
`
`d’etre of the computer-to-plate (CTP) system in the ’349 patent.” (Prelim. Resp. at
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`24; see also Resp. at 44, including identical language.) In short, Patent Owner
`
`argued, and continues to argue in its Response, that Dorfman’s system is allegedly
`
`limited to low volume jobs that involve variable data and, as a result, one of
`
`ordinary skill in the art would not use a printing plate for high-volume jobs with
`
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`10
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`Case IPR2014-00790
`Petitioners’ Reply Brief
`Dorfman’s system. (Resp. at 40-45; Paper 9 at 23-24, summarizing Patent
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`Owner’s 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
`
`to ‘customized printed materials,’ which Dorfman teaches may be printed ‘in large
`
`quantities.’” (Paper 9 at 24, quoting Ex. 10073 at 2:13-16.) Dorfman also
`
`explicitly recognizes that the back-end of the described system, i.e. the printing
`
`company facility, may use “conventional printing technology (Ex. 1007 at p. 8, l.
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`23) which includes offset lithography using an imagesetter or a platesetter.” (Ex.
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`1022 at ¶ 119.)
`
`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.,
`
`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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`1022 at ¶¶ 111-114, Ex. 1007 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
`
`be used by front ends other than Internet browsers.” (Ex. 1007 at p. 4, ll. 22-23,
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`emphasis added.) In other words, although Dorfman references “response on
`
`
`3 Citations to Dorfman (Ex. 1007) are to the references original page numbering.
`11
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`Case IPR2014-00790
`Petitioners’ Reply Brief
`demand” systems (id. at pp. 2-3) and allows for user input of “variable data” (id. at
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`p. 4, ll. 3-6), the reference is unconcerned with outputting to any specific back-end
`
`printing system, only mentioning that the 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.)
`
`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
`
`operation (Resp. at 44-45), but was, in fact, explicitly contemplated by the
`
`reference and well recognized by those of skill in the art. (See Petition at 43-45;
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`Ex. 1022 at ¶¶ 119, 124.) And, as explained by Prof. Lawler, the plate-ready file
`
`of Apogee (i.e., the “Print Image File” or “PIF”) can be output to any desired
`
`device, whether a digital printer, imagesetter, or platesetter. (Ex. 1022 at ¶¶ 65-69,
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`80 (“plate-ready files are not limited to outputting on a platesetter, but may also
`
`include files RIPed for output onto a digital printer or imagesetter, for example.
`
`The plate-ready file is simply indicative of a page layout file that has gone through
`
`the prepress process and has been RIPed such that it contains the exact dots to be
`
`transferred onto a printing plate, film, or other imaging substrate”), and 122-123.)
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`Thus, whether the document to be printed is a low volume job using a digital
`
`printer, or a high volume job using traditional offset printing, the plate-ready file of
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`Case IPR2014-00790
`Petitioners’ Reply Brief
`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
`
`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
`
`is a trade-off between the cost and the number of copies of a job to be printed.
`
`Because the cost per page for offset printing is less than digital or
`
`electrophotographic printing, large volume jobs benefit from offset printing. In
`
`contrast, digital printing may be more efficient for low volume jobs, even though
`
`the cost per page is more expensive, because the initial start-up cost associated
`
`with making a printing plate is avoided. The exhibits cited by Patent Owner (Resp.
`
`at 40) explain this well-known binary trade-off:
`
`Offset has a higher cost for starting up a job, because plates must be
`prepared…. 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.
`(Ex. 2015 at 53, emphasis added (original page 378); Id. at 55 (original page 380).)
`
`As the Board correctly recognized in its institution decision, this is the exact reason
`
`offset printing would be used in Dorfman’s system when printing “[c]ustomized …
`
`materials … in large quantities.” (Paper 9 at 24, citing Ex. 1007 at 2:13-16.)
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`Petitioners’ Reply Brief
`During his deposition, Prof. Lawler similarly explained that the known
`
`
`
`choice between printing custom material using a digital printer or offset
`
`lithography has to do with “volume, the quantity, the price, the deadline, the
`
`budget, [more so] than any particular printing – other printing process.” (Ex. 2017
`
`at 47:2-5.) Prof. Lawler also explained that these considerations hold true for “on
`
`demand” or variable printing: “a variable data printing system defines a system
`
`whereby one or more elements of the job can be changed, and you could certainly
`
`use printing plates to produce a variable data job where the volume of copies was
`
`worthwhile to be printed by offset lithography using plates.” (Id. at 80:2-7; see
`
`also id. at 81:14 – 83:13.) Rather than teaching away from the proposed
`
`combination, as Patent Owner alleges, the above design considerations strengthen
`
`the rationale for combining Dorfman with Apogee to generate a printing plate for
`
`offset printing.
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`
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`B. Dorfman Teaches Separate Central Service and Printing Facilities
`
`Patent Owner argues that the Dorfman ground does not render the
`
`challenged claims unpatentable because “[t]he claimed invention requires a
`
`separate central service facility and printing company facility.” (Resp. at 45.)
`
`First, there is no requirement in claims 1-3 demanding the facilities to be
`
`geographically separate from one another. Patent Owner alleges that Dorfman
`
`does not teach separate central service and printing company facilities because the
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`Petitioners’ Reply Brief
`central service and printing company facilities are described as being “present at
`
`the same remote location, e.g., the facilities of a commercial printing service.”
`
`(Resp. at 46, emphasis added.) Whether Dorfman’s system must be designed in
`
`this way—i.e., with the PDF builder 6 and memory 4, and production printing
`
`system 10 located at the same physical location—is inapposite.
`
`All claims 1-3 require is for the central service facility to generate a plate-
`
`ready file, and for the printing company facility to produce a printing plate from
`
`the plate-ready file, which is taught by Apogee in combination with Dorfman.
`
`Indeed, this is the exact construction of “end user facility,” “central service
`
`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].”)
`
`Nothing in claims 1-3 require the facilities to be geographically remote from one
`
`another, whether that means different rooms in the same building, different
`
`buildings in the same city, or different cities altogether. The scope of the
`
`challenged claims is broad enough to cover all of these scenarios. (See Ex. 2017 at
`
`103:21 – 104:14, Prof. Lawler testifying that one skilled in the art would not
`
`interpret Fig. 1 of Dorfman as limiting the location of the described elements (i.e.,
`
`claimed facilities, to any particular location or area.)
`
`Further, Patent Owner misguidedly argues that the Dorfman grounds are
`
`distinguishable from claims 1-3 of the ‘349 patent because the creation of the PDF
`
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`15
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`Case IPR2014-00790
`Petitioners’ Reply Brief
`file in Dorfman is carried out at the end-user, and not the central service facility.
`
`(Resp. at 46-47.) First, there is absolutely no element in claims 1-3 of the ‘349
`
`patent requiring the generation of a PDF file. Second, even setting this dispositive
`
`distinction aside, Patent Owner is incorrect that the creation of the PDF file in
`
`Dorfman occurs at the end-user. Dorfman explicitly states that “[t]he PDF builder
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`6 [which resides at a remote location from the end-user] then creates a dynamic
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`PDF file on-the-fly…” (Ex. 1007 at p. 7, l. 28; see also id. at p. 6, ll. 4-6.) The
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`PDF file is created at a location remote from the end user, specifically the PDF
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`builder 6 which, in conjunction with the memory 4, constitute a central service
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`facility. Claims 1-3 are unpatentable in view of the Dorfman grounds.
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`III. APOGEE WAS PUBLICALLY AVAILABLE
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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 copies of the Apogee publication (Ex. 1008) were
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`printed and distributed to the public prior to the earliest priority date of the ‘349
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`patent. (See Ex. 1023 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 1023 and 1008, respectively) under
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`16
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`Case IPR2014-00790
`Petitioners’ Reply Brief
`37 C.F.R. § 42.64(b)(1), and prematurely moved to exclude the same for allegedly
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`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. 1024 and 1025).
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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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`service. See, e.g., Handi-Quilter, Inc. v. Bernina Int’l AG, IPR2013-00364, Paper
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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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`17
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`Case IPR2014-00790
`Petitioners’ Reply Brief
`Now, because the Motion to Exclude was filed, prematurely, mid-trial,
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`before supplemental evidence was served, Exhibits 1024 and 1025 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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`First, Petitioners served the Supplemental Declaration of Johan Suetens (Ex.
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`1025). 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. 1008) 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. 1025 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. 1025 at ¶¶ 6, 12, Attachment
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`F). Following this, and once the document request was prepared and fulfilled,
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`18
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`Case IPR2014-00790
`Petitioners’ Reply Brief
`Agfa’s accounting department would invoice the requesting individual for the
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`ordered document/brochures. (See Ex. 1025 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. 1008). 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. 1025 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. 1008) 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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`an invoice for 400 Apogee brochures was sent to a Mr. Jahn on August 11, 1998.
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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. 1024),
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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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`19
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`Case IPR2014-00790
`Petitioners’ Reply Brief
`included Mr. Jahn giving numerous presentations and seminars throughout the
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`world on Agfa’s products, including Apogee. (Ex. 1024 at ¶¶ 5, 9-11.) Apogee
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`(Ex. 1008) was the brochure that Mr. Jahn handed to conference/seminar attendees
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`after they visited Agfa’s presentation booth. (Ex. 1024 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. 1024 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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`to his website to download Agfa literature, such as Apogee. (Ex. 1024 at ¶¶ 18-
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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. 1024 at ¶ 13.) As can be seen from the Internet
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`Archive’s records (see Ex. 1024 Attachment C at pp. 1-7), the March Apogee
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`Brochure was freely availab
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