Trials@uspto.gov
`571-272-7822
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`Paper No. 39
`Entered: July 23, 2015
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`RECORD OF ORAL HEARING
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`- - - - - -
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`- - - - - -
`
`EASTMAN KODAK CO., AGFA CORP.,
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`ESKO SOFTWARE BVBA, and HEIDELBERG, USA,
`
`Petitioner,
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`v.
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`CTP INNOVATIONS, LLC,
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`Patent Owner.
`
`- - - - - - -
`
`Cases IPR2014-00788 and -00789
`Patent 6,738,155
`
`Cases IPR2014-00790 and -00791
`Patent 6,611,349
`
`Technology Center 2600
`
`- - - - - - -
`
`Oral Hearing Held on Tuesday, June 30, 2015
`
`Before: HOWARD B. BLANKENSHIP, BENJAMIN D. M. WOOD,
`and BRIAN J. McNAMARA, Administrative Patent Judges.
`
`The above-entitled matter came on for hearing on Tuesday, June 30,
`2015, at 1:00 p.m., in Hearing Room D, taken at the U.S. Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`571-272-7822
`
`Paper No. 39
`Entered: July 23, 2015
`
`RECORD OF ORAL HEARING
`
`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.
`
`- - - - - - -
`
`Cases IPR2014-00788 and -00789
`Patent 6,738,155
`
`Cases IPR2014-00790 and -00791
`Patent 6,611,349
`
`Technology Center 2600
`
`- - - - - - -
`
`Oral Hearing Held on Tuesday, June 30, 2015
`
`Before: HOWARD B. BLANKENSHIP, BENJAMIN D. M. WOOD,
`and BRIAN J. McNAMARA, Administrative Patent Judges.
`
`The above-entitled matter came on for hearing on Tuesday, June 30,
`2015, at 1:00 p.m., in Hearing Room D, taken at the U.S. Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`Cases IPR2014-00788 and -00789 (Patent 6,738,155)
`Cases IPR2014-00790 and -00791 (Patent 6,611,349)
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`SCOTT A. McKEOWN, ESQ.
`CHRISTOPHER RICCIUTI, ESQ.
`Oblon, McClelland, Maier & Neustadt, LLP
`1940 Duke Street
`Alexandria, Virginia 22314
`703-413-3000
`
`ON BEHALF OF THE PATENT OWNER:
`
`W. EDWARD RAMAGE, ESQ.
`Baker, Donelson, Bearman, Caldwell and Berkowitz, PC
`Baker Donelson Center, Suite 800
`211 Commerce Street
`Nashville, Tennessee 37201
`615-726-5771
`
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`Cases IPR2014-00788 and -00789 (Patent 6,738,155)
`Cases IPR2014-00790 and -00791 (Patent 6,611,349)
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`(1 : 00 p. m.)
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`P R O C E E D I N G S
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`JUDGE Mc NAMAR A: Please be seated. Good
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`afternoon , ever yo ne. This is the co nsolid ated hearing in
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`IPR2014 -00788 and 789 . Those two involve U.S. Pa tent
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`6 ,738 ,155 . And cases IPR2014 -00790 and 791 . And thos e
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`involve Patent 6 , 611 ,349 .
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`Let me ask counsel to pl ease begin by introducing
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`the mselves. We will start with the Patent Own er, pl eas e.
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`MR. RAMAGE: Edward Ra mage with Baker
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`Donelson . I r ep resent the Patent Owner.
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`MR. Mc KEOWN: Scott Mc Keown and Chris
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`Ricciut i for Petition ers, Kodak, AGFA, ESKO and Heidelberg.
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`JUDGE Mc NAMAR A: Thank you very much.
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`Welco me to the Patent Trial and App eal Board.
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`Today each side will have 90 minu tes of total
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`argu ment t ime. And we will begin with the Petition er b ecause
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`he has the burden to present his c ase, so he will present his
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`case with respect to the challenged claims on the bas is on
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`which we instituted trial. After that the Patent Owner will
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`argue i ts opposition to the Petitioner's case.
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`The Patent Owner also has, I think, presented some
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`motions to exclude. And since the bu rden of persuas ion is on
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`the Patent Owner there, as to i ts m o tions , he will argue thos e
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`at that t ime.
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`Cases IPR2014-00788 and -00789 (Patent 6,738,155)
`Cases IPR2014-00790 and -00791 (Patent 6,611,349)
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`The Petition er may then use any t ime i t reserved to
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`rebut the Patent Owne r's opposition and oppos e the motion s to
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`exclude. And we will conclude with the Patent Own er's
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`rebuttal to the opposition to the motions t o exclude.
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`One other thing as a preli minar y matter, I note that
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`neither side has filed any de monstratives in this case, so none
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`will be pe r mitted at this hearing.
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`If a party does display a docu ment or a part of a
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`docu ment that is of record , the part y m ust identif y where in
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`the pleadings, the pleadin g and the page nu mber , that
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`displayed docu me nt is cited, otherwise you will be asked to
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`remove any docu ments displa yed.
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`Is ever ybod y ready to proceed? Okay.
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`We will begin with the Petitioner. And would you
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`l ike me to alert you as to any t ime?
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`MR. Mc KEOWN: I don't think that's necessar y,
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`Your Honor, but thank you.
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`Good afternoon , Your Honors. As you mentioned,
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`this is a consolidated hearing ac ross four different
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`proceedings , two of which are directe d to each patent. I' m
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`unlikely to take the full 90 minute s but I will reserv e whatever
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`I don't use in this brief introduction as rebuttal so I will
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`probably go about 15 or 20 minutes here.
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`I know the Board has read the briefs, and judgin g
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`from the insti tutio n order understand s the issues well so I will
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`Cases IPR2014-00788 and -00789 (Patent 6,738,155)
`Cases IPR2014-00790 and -00791 (Patent 6,611,349)
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`get right to the i mportant issu es. Both the '349 and '155
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`patents are directed to pre -press work flow. And as the Board
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`is aware, what that is, is ever ything that happens up unti l
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`press, which is up unti l printing .
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`So i t is color correction . It is proo fing. It is all of
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`the thing s that you would do and position OPI to a docu ment
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`in order to get i t ready to be printed.
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`The '155 and the ' 349 patent, what they present as
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`the inventio n is the sort of au to ma ting of what are essenti ally
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`all well -known p re -press processes, whether i t is t yp esetting,
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`et ceter a. So what we are talking a bout here is an as se mbl y of
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`known processes that are interconnected via net work .
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`Specificall y claims 10 throug h 20 of the '155 are
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`directed towards accessing images at a server , that aspect of a
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`pre-press process . There is some c o rrespondin g apparatus
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`claims that prese nt si milar features but in a pre -pre ss
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`architecture.
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`'349 si milarl y has method and apparatus claims
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`where the method claims are generall y talking about image
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`manipulation , whereas apparatus claims 1 through 3 get to the
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`architecture.
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`So we have two main grounds in both of these
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`patents, references common to both of these patents, and that's
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`the Jebens plus the Apogee reference, and the Dorf man plus
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`Apogee, and there are a couple other r eferences that are mixed
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`Cases IPR2014-00790 and -00791 (Patent 6,611,349)
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`in there for some of the dependent clai ms , but these get two
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`features, such as imposition and OPI which are, frankl y,
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`ad mitted in the specification as well kno wn.
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`So I' m going to talk pri ma ril y about Jebens and
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`Apogee and Dorfman and Apog ee as that's sort of the focus of
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`the briefing to date.
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`The pri ma r y a rgument from Patentee as to Do rf man
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`is the concept that Dorf man, while a pre -press work flow, is
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`so mehow l i mit ed in appli cation to the type of press that the
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`output goes to or what happens at the end.
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`And the argu ment is, well, because Dorf man has
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`this te mplate -based pre -press , i t is p robabl y better suited to
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`s maller print jobs and, the refore , to at tach a plate at the end
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`and have sort of a high volu me outpu t is so mehow a teachin g
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`away from what is in the Dorf man refere nc e where i t changes
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`the operatin g principle.
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`And what we've said in the petition and what the
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`Board said in the institution was, w ell, Dorf man is a front end
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`and i t talks about printin g in large qu antities. It tal ks about
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`using conv entional printing technolog y.
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`So what happens once you get throug h the
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`pre-press and how you appl y i t doesn 't change the operatin g
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`principle, doesn 't c hange an ything. The s yste m still works
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`exactl y the way that i t is designed to work. You just print out
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`either small volume or large volume .
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`Cases IPR2014-00788 and -00789 (Patent 6,738,155)
`Cases IPR2014-00790 and -00791 (Patent 6,611,349)
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`So that argu ment has si mpl y been reiterated in the
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`briefing . The Pat ent Owner's respo nse doesn't mention the
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`institution order, doesn't rebut i t . The declaration mention s
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`that the declarant read the institution order. He doesn't
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`an ywhe re refe ren ce i t .
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`So there has been no rebuttal of what the Board has
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`held, which is Dorf man discloses a p re -press work flow and
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`that conventional printin g technol og y that's on the back end is
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`whatever you want i t to be, and then that's exactl y what
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`Dorf man teaches is, well, you can use, whether i t is offset
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`printin g or digital printing , that's up to you, but here is the
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`front end s yste m.
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`So that hasn't changed and there is no reason to
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`disturb what is essentially the record as to Dorf man.
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`The next pri mar y argu ment as to Jebens gets into
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`OPI, which is described in all of these patents as kn own , they
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`mention many di f ferent soft war e packages that do OPI but,
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`nevertheless, they argue that Jebens doesn't in i ts work order
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`flow show or call out the word replace.
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`And that's not responsive to the petitio n because
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`we didn 't cite to the work flow for that aspect of OPI. We
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`cited to figure 4 - C which shows OPI right there in the flow
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`chart. And then there is discussion later of how that work
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`flow a ctuall y uses that OPI.
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`Cases IPR2014-00790 and -00791 (Patent 6,611,349)
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`But instead of focusing or rebuttin g any of that,
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`what the Patentee focuses on is a long explanation about how
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`work o rders are processed in Jebens . So that doesn't reall y get
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`to what the petitio n cited and i t 's reall y non -r esponsive to
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`these grounds . We relied on figure 4 -C and i ts ac comp an ying
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`description in the specification .
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`So, again , that's another aspect of the record that's
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`just si mpl y igno r ed. We didn't rely on the work flow. We
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`relied on figure 4 -C.
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`The vast ma jorit y of the argu ments relating to
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`Dorf man and Jeb ens are directed towards, well, the claims
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`requi re a central server do X, or the PDF has to be c reated at
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`this location , but none of those locations are in the clai ms .
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`And we pointed all of this out in the briefing so I
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`am not goin g into detail. I know that you read i t . The claims
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`are quite broad . They don't requi re any specific compon ent, at
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`least for what has been a rgued here to do these things .
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`For exa mple , in the '349 , claims 1 and 3 don't call
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`out OPI. Claim 2 does. And we cited to, again , figure 4 -C for
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`OPI. So all of these argu ments ab out , you know, the central
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`server has to do certai n steps, i t is just not in the clai ms.
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`And the absence of that is particularl y relevant
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`because the specificatio n even e mp h asizes that any of these
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`ele ments can do any of these functions , so when you don't call
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`i t out in the claim as point X doing functi on Y, you can't l imit
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`Cases IPR2014-00790 and -00791 (Patent 6,611,349)
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`the claim that way be cause i t is not in the claim and the
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`specification makes clear that any of these points can do any
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`of these processe s.
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`So what i t comes down to on all of these grounds ,
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`Jebens and Apog ee, is the argu ment s that w e have seen from
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`the Patentee are s tories that, althoug h interesting , are not
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`responsiv e to the institution order. They are not res ponsiv e to
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`the petition . So I don't have a lot to rebut here tod ay.
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`The one thing that has been new since the
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`preli minar y respons e is the decla ration of the video expert that
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`the Patent Owner has hired. And what we see from the
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`Stevenson declaration is largel y a cut -and-paste from the
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`Patentee a rgu ments. It is the same exact language. It is very
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`concluso ry.
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`Again , i t ac knowledges that the institution order
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`was read. No wh e re is any finding of the institutio n order
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`rebutted. It is just this sort of pick ing an aspect of the
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`specification to try to tell a differ en t stor y that we haven't
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`relied upon .
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`If you look at the te chni cal backgr oun d of Mr.
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`Stevenson , he is an i maging and video expert. When he was
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`depos ed, he had never worked for a printer, never design ed a
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`pre-press work flow, didn't und erstand i mposition, had to
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`Google terms in the specification . So he is clearl y not one of
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`skill in the art.
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`Cases IPR2014-00790 and -00791 (Patent 6,611,349)
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`Furth er mo re, he is a District Court expert. When
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`he was asked why his declaratio n was directed to validit y he
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`confir med that he applied a presu mption of validit y and that
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`was the anal ysis that he did.
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`So when you consid er that and you look at some of
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`the conclusor y s t ate ments about the claim scope, well, the
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`claim means X b ecause i t is in the sp ecification , he was
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`clearl y appl ying a Phillips construction there and there is no
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`explanation whatsoever an ywher e in the declarat ion of a BRI
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`anal ysis or an yth i ng.
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`It is just si mpl y a cut -and -paste of conclusions
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`from the Patentee respons e. So we thin k his declara tio n is
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`plainl y unreliable.
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`MR. Mc NAM AR A: Couns el, there are just two
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`concepts there that you sort of put tog ether, and I und erstand
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`that the claim const ruction concept we appli ed broadest
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`reasonable versu s District Court Phillips, but you also talked
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`about presu mption of validit y.
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`But isn't the burden of proof in our proceeding on
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`the Petitioner?
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`MR. Mc KEOWN: Tha t's correct . There is a
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`presu mption of p atentabilit y here, but that presu mpt ion is not
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`t ied to a clear and convin cing standard.
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`Cases IPR2014-00790 and -00791 (Patent 6,611,349)
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`JUDGE Mc NAMAR A: All right . I just wanted to
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`make sure I und erstood what you were getting at, oka y, all
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`right, because clear and convincing standard does not appl y.
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`MR. Mc KEOWN: Sure, there is a presu mptio n
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`here as there is a presu mption in Dist rict Court but they are
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`just t ied to different inventions .
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`JUDGE Mc NAMAR A: Okay.
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`MR. Mc KEOWN: So that's sort of where we are on
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`the pri mar y refe rences. As the Board is aware as to Apogee ,
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`which is the second ar y reference , or one of the seco ndar y
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`refere nces, I sho uld say, in the vast ma jorit y of the grounds ,
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`we were served with objections under 42 .64 (b)(1 ) .
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`Not su rprisingl y, under 42 .64 (b)(2 ) we served
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`supplemental ev idence. There is nothing nefarious or sneak y
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`about that. In fac t, that's entirel y p redictable. So I don't quit e
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`understand this Trojan Horse argument that we see in the
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`motions to exclude.
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`When you obje ct you t ypi c all y get supplemental
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`evidence. That 's just how the s yste m works . But, again , much
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`l ike the grounds in this case, the P atentee has igno red that
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`evidence as well and sort of r efused to even ackno wledg e i ts
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`existence in the record. They have not deposed a ny of these
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`witnesses. They just ignored i t .
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`The re maining argu ments, again, get to sort of the
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`location processin g in the clai ms, which is unrecited. There is
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`Cases IPR2014-00790 and -00791 (Patent 6,611,349)
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`argu ments as to Dorf man being l i mi ted to all of the printin g
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`and central server being in one room and, therefor e, that figure
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`should be l imited to that.
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`And we've got testi mon y from our expert sa ying,
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`well, one of skill in the art could recogni ze that you could
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`move those wher ever you want. They are network
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`co mponents . And, again , there is no rebutt al of that . There is
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`just, well, figu re 1 is l i mited .
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`So we are just sort of left with two sides of the
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`story, one of which is atto rne y a rgu ment and one of which is
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`based in the evid ence.
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`There is an argu ment about Jebens which, to be
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`honest, I don't q uite und erstand about Jebens so mehow sets up
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`different net works because there is a log -in to the server.
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`Their specification has the same log -in at column 14 . So I' m
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`not reall y sure what that is all about .
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`They have an Internet e mbodi ment in th e
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`specification . Of course there is di fferent conn ection s going
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`on. They are all i nternetworked. Th at's how the s yst e m
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`works. That's how they describe i t .
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`Apog ee is what is relied upon for the plate - ready
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`aspect or the creation of a plate - ready file in these grounds .
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`They argue that Apog ee is l imited to creating that file at the
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`printer. Our exp e rt has said that's not the case. Also, we rely
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`on that teaching . We are not ph ysi call y co mbining Apog ee
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`Cases IPR2014-00788 and -00789 (Patent 6,738,155)
`Cases IPR2014-00790 and -00791 (Patent 6,611,349)
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`with these r efer ences. And i t is pre tty cle ar, no t only in these
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`refere nces, but their own patent, that you can move t hes e
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`features all over the architecture as needed.
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`So, again , we have evidence as to that. We don't
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`necessaril y rely on the ph ysical combination. It is the
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`teachin g from Apogee that modifies the Dorf man and Jebens
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`grounds .
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`So th at's where we are. That's what I have. And
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`unless there are further questions I will reserve the re mainder
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`for rebuttal.
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`JUDGE Mc NAMAR A: Okay. Co uns el, thank you.
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`Actuall y you have 75 minutes left.
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`MR. Mc KEOWN: Okay.
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`MR. RAMAGE: Well, hopefull y you won't need to
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`take that long for rebuttal.
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`JUDGE Mc NAMAR A: Do you want me to alert
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`you to any pa rticular t ime frame or are you okay?
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`MR. RAMAGE: I don't think that I will be needing
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`any assistance in ke eping track of the t ime for this one, Your
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`Honor.
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`JUDGE Mc NAMAR A: All right . Thank you.
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`MR. RAMAGE: Edward Ra mage for the P atent
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`Owner. Since we do have the burden of proof with regard to
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`the motion to ex clude, I would l ike to go ahead and address
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`Cases IPR2014-00788 and -00789 (Patent 6,738,155)
`Cases IPR2014-00790 and -00791 (Patent 6,611,349)
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`that first and add ress the concerns that they have had with
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`regard to the page l imit.
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`I think i t is clear from the record with regard to,
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`you know, what caused the first mo tion, supple mental
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`evidence leading to what has been called as the second motion.
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`I think this can be easil y r esolv ed depending upon how the
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`Board treats the first motion.
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`The Petition ers have basicall y treated i t as
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`objections on the record. And, Your Honors, we have no
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`objectio n to this Board also treating that first motio n as
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`objections on the record. And all of our a rgu ments with
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`regard to any of the evidence with regard to exclud ing the
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`evidence is cont ained in our second motion.
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`JUDGE Mc NAMAR A: What is the objection?
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`MR. RAMAGE: There are actuall y two ob jections ,
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`two pri ma r y obje ctions . One is with the original Ap ogee and
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`the original decl aration , and then the next is with what has
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`been called supple mental evidence, but what clearl y is
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`supplemental infor mation.
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`Would you -- I can start with one or the other .
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`JUDGE Mc NAMAR A: Motion s to exclude are
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`filed to be consistent with objection s under the Federal Rules
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`of Evidence . So I' m wondering what section of the Fed eral
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`Rules of Evidence you are objecting under?
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`Cases IPR2014-00788 and -00789 (Patent 6,738,155)
`Cases IPR2014-00790 and -00791 (Patent 6,611,349)
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`MR. RAMAGE: With regard to the Apogee , we
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`have objected to i t on the basis of not being relevant, as not
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`being -- basicall y as not being prior art that has an established
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`publication date.
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`JUDGE Mc NAMAR A: Okay. But not prior art and
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`the established publi cation date is a substantiv e arg ument. Is
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`there an ob je ction under the Federal Rules of Evidence? Is i t
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`hearsa y?
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`MR. RAMAGE: Other than relevance, Your
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`Honor, I mean, and, quit e honestl y, we know the Board 's
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`prefere nce to r eceiving evid ence and then giving appropriate
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`weight, we would be fine if the Board considered, you know,
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`accepted Apog ee but then deter min ed that i t was not
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`applicable prior art because there was no publi cation date.
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`JUDGE Mc NAMAR A: Here is the issue, and i t is
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`an issue because i f i t were a substantive argu ment , then i t
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`would have been appropriate to address i t in the Patent Owner
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`respons e and not in a motion to exclud e.
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`So add ressin g i t in a motion to exclude, our
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`concern is that's just an end run a roun d the page l imit in the
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`Patent Owner res ponse.
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`MR. RAMAGE: There has been no end run, Your
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`Honor, because i t was full y addressed in actuall y the Patent
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`Owne r's respons es in full in each of those.
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`JUDGE Mc NAMAR A: Okay.
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`Cases IPR2014-00790 and -00791 (Patent 6,611,349)
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`MR. RAMAGE: It was in cluded wi thin the Patent
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`Owne r's respons e.
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`JUDGE Mc NAMAR A: Can you cite to me where in
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`the Patent Owner respons e i t is addressed?
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`MR. RAMAGE: Yes, Your Honor. And you want
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`the paper nu mber s as well?
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`JUDGE Mc NAMAR A: Yes, i f you could. I just
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`need to know, i t 's in the Patent Owner respons e you' re t alking
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`about . So if you can tell me where in the Patent Owner
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`response.
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`MR. RAMAGE: Certain l y.
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`JUDGE Mc NAMAR A: A page range or so mething
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`l ike that would be helpful.
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`MR. RAMAGE: I can tell you the exact page
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`nu mber .
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`JUDGE Mc NAMAR A: Okay. Gre at.
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`MR. RAMAGE: For the 788 i t is page 53 . For the
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`789 i t begins on page 46 . For the 790 i t begin s on page 53 .
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`And for the 791 i t begins on page 39 .
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`Your Honor, you will find that the argu ment s
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`raised, in fact, are al most identical with the argu men ts that
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`were raised in the initial motion, with regard to Apog ee.
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`JUDGE Mc NAMAR A: All right . And that's in the
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`Patent Owner res ponse. Okay.
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`Cases IPR2014-00788 and -00789 (Patent 6,738,155)
`Cases IPR2014-00790 and -00791 (Patent 6,611,349)
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`MR. RAMAGE: Yes. So they are, in fact, in the
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`Patent Owner 's r esponse. We have no intent to try to avoid
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`any of the page l imits.
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`JUDGE Mc NAMAR A: Okay.
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`MR. RAMAG E: With regard to Suetens, what we
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`have was the case where his decl aration that was origin ally
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`filed was wholl y unsupported by his depositio n testimo n y.
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`We have sub mitted that depositio n testi mon y, and I
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`will not belabor you with regard to individual ci tation s to his
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`declaration, how they were undercut by his deposition
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`testi mon y. That's a matter of r ecord , both in the Patent
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`Owne r's respons e and also in that first motion, which we are
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`construin g as ob jections on the reco rd.
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`JUDGE Mc NAMAR A: All right . Because, as I
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`recall, Suetens in his declaratio n d oesn't testif y as to personal
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`knowledge. He says he looked at the archives. Right?
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`MR. RAMAGE: Correct .
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`JUDGE Mc NAMAR A: So Suetens' testimon y is
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`perhaps closer to his assess ment of the busin ess rec o rds?
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`MR. RAMAGE: In fact, i t turns out when
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`questioned about that he is not a custodian of the busin ess
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`records. There is nothing to actuall y support that what he was
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`looking at was the business records.
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`And in his depositio n testi mon y when we were
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`talkin g about so mething that could possibly have been a
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`Cases IPR2014-00788 and -00789 (Patent 6,738,155)
`Cases IPR2014-00790 and -00791 (Patent 6,611,349)
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`business record if introduced by the appropriate individual, he
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`said he had no k nowledge of, basicall y, he wasn't involved
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`with the preparation of that docu me nt or the maintenance of
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`that docu ment.
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`JUDGE Mc NAMAR A: I see. Okay.
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`MR. RAMAGE: With regard to the supple mental
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`declaration and the declaratio n of Jahn, those are, if you look
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`at the substance of those, thos e quit e clearl y are what this
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`Board has construed as suppl e mental infor mation, not
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`supplemental ev idence.
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`JUDGE Mc NAMAR A: Okay. Let me ask you
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`anoth er question about that. And, again, this to some extent
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`goes to procedure and, perhaps, maybe sort of a questio n on
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`dela ying thing s too long in one of these proceedings .
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`You didn't take a deposition, a second depositi on
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`of Suetens or a d eposition of Jahn, is that right?
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`MR. RAMAGE: No, Your Honor, we did not.
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`JUDGE Mc NAMAR A: Okay. All right . The trial
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`practice guide provides that if so mething comes along after
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`your, you know, after your final subst antiv e paper that you can
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`file motions for observations on cros s -exa mination .
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`Why wouldn't that have been the appropriat e
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`avenue here as opposed to a motion to exclude?
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`MR. RAMAGE: This is supple me ntal infor mation,
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`Your Honor. This i sn't supplement al evidence. If, in fact,
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`Cases IPR2014-00788 and -00789 (Patent 6,738,155)
`Cases IPR2014-00790 and -00791 (Patent 6,611,349)
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`these declarations had even appeared to be suppl e me ntal
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`evidence then, yes, we probabl y woul d have taken their
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`depositions to deter mine whether or not they addressed the
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`initial questio n of whether or not the Suete ns declaration , the
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`origin al Suetens declaration, and the Apogee refe rence should
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`be ad mitted as evid ence.
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`And we have alread y add ressed I note the Apogee
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`use, as to whether or not that was a proper evidentiary
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`question as oppo sed to a questio n on the me rits .
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`JUDGE Mc NAMAR A: Then distinguish for me in
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`your mind what the distin ctio n is between suppl e mental
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`evidence and suppl e mental infor mation.
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`MR. RAMAGE: I can quot e you.
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`JUDGE Mc NAMAR A: Sure. Wh atever you want
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`to do. Ho wever you want to handle i t . I just want to clarif y
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`your positio n on i t .
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`MR. RAMAGE: I will quot e this Board from i ts
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`Handi Quilter decision.
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`JUDGE Mc NAMAR A: What is that IPR nu mb er?
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`MR. RAMAGE: I PR2013 -00364 . This is Paper 30
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`from that. It is the me morandu m, condu ct of pr ocee ding .
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`The Board stated: " We explained that we agree
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`with Patent Own er's understanding, Section 42 .123 , addresses
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`the filing of suppl e mental infor mation , not suppl e me ntal
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`evidence.
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`Cases IPR2014-00790 and -00791 (Patent 6,611,349)
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`" The diff erence is that suppl e mental evid en ce
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`served in response to an evidentiary ob jection and filed in
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`respons e to a mo t ion to exclude is o ffered solel y to support
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`ad missibility of the originally filed evidence and to defeat a
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`motion to exclud e that evid ence and not to suppo rt any
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`argu ment on the me rits, i .e., rega rdi n g the patentabilit y or
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`unpatentabilit y of a claim.
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`" Suppl e mental in for mation, on the other hand, is
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`evidence of party intent to support an argu ment on the merits .
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`Such evidence may only be filed if a Sectio n 123 mot io n is
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`both autho rized and granted."
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`Now, with regard to the specific case about
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`whether or not evidenti ar y issues with regard to the
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`publication date or the date that the Apogee re feren ce was
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`publicly available, in the decisio n of To yota Motor
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`Corporatio n versus Ame rican Vehicular Sciences ,
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`IPR2013 -0417 , Paper 78 , the final written decision , footnot e 1 ,
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`the Board stated : " We note that although there are evid entiary
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`issues relating to Frye, the question of whether Frye
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`constitutes prior art is not i tself an evidentiar y issue" -- as, in
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`fact, Your Hono rs alread y noted -- " rather, i t is part of the
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`substantive case that Toyota must p rove."
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`So, th er efore , if you look at these two declarations ,
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`the suppl e mental declaration and the declaratio n of Jahn ,
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`which also has attached to i t addit ion al do cu ments including
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`Cases IPR2014-00788 and -00789 (Patent 6,738,155)
`Cases IPR2014-00790 and -00791 (Patent 6,611,349)
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`what appea r to be variations on the Apogee reference, what the
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`Petitioners are tr ying to do with thos e two decla rations is
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`introduce new ev idence on the me ri ts.
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`They should not be able or per mitte d to do so and
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`this Board shoul d strike those two d eclarations from the record
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`as i mp roperl y sub mitted supple men t al infor mation.
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`JUDGE Mc NAMAR A: Thank you.
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`MR. RAMAGE: Turning now to the merits on the
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`decision , we agree that the p ri mar y references to be addressed
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`are Jebens, Dorf man and Apog ee.
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`With regard to Jebens, our position is that i t
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`appears that the P etition ers misunderstand our basic argu ment .
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`With regard to the ma jorit y of the claims at issu e in all four --
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`excuse me, all two of the patents and all four of the
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`proceedings , one of the pri ma r y iss u es is where is a
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`plate-read y file being generated.
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`Petitioners seem to argue that the swapping out,
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`what they are calling the OPI process , the s wapping out of low
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`resolutio n files in a digital image file cre ated by the end user
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`or a clien t user, that that occurs at the central or the host
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`facilit y in Jebens .
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`Howeve r, what we have point ed out and with what
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`was basicall y dis r egarded as job ord ers versus work orders
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`descriptions , is where Jebens is describing what i t actually
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`does at the c entral facili t y.
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`Cases IPR2014-00788 and -00789 (Patent 6,738,155)
`Cases IPR2014-00790 and -00791 (Patent 6,611,349)
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`All J ebens is doing at the central facility is taking
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`files, high resolutio n files, i t is initi all y using the OPI process
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`to generate the low resolutio n files, and i t is essentiall y
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`serving as a l ibrar y of those digital assets, those dig i tal files.
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`It then, in order to serve i ts purposes of increasing
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`accessibilit y to t hose digit al images and to allow them to be
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`used in a variet y of different ways, i t provides them to be
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`logging on as the front end users who are usin g them to create
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`docu ments.
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`But what Jebens is clear about what happens when
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`that docu ment is then sub mitted to the central facili t y is
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`Jebens does not actuall y do any substantiv e processing of that
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`file. Instead, what i t does is i t takes that file with the low
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`resolutio n images from the front end user and then i t packs i t ,
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`or i t doesn't change that file but i t acco mp anies i t with and
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`packages i t with the high resoluti on files.
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`At best then i t compress es i t and then i t sends that
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`package to what ever print er is used. So J ebens does not
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`actuall y disclose an ything that can be const rued as generating
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`a plate-re ad y file.
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`JUDGE WOOD: So what does the printer do when
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`i t gets that package?
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`MR. RAMAGE: Well, J ebens is silent as to that.
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`But presu mabl y they are going to proce ss that accordin g to
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`whatever type of printin g sy
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