UNITED STATES PATENT AND TRADEMARK OFFICE
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`________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`_______________
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`EASTMAN KODAK COMPANY, AGFA CORPORATION, ESKO SOFTWARE
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`BVBA, and HEIDELBERG, USA,
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`Petitioners,
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`v.
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`CTP INNOVATIONS, LLC,
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`Patent Owner.
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`_______________
`
`Case IPR2014-00790
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`U.S. Patent No. 6,611,349
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`______________
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`
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`PATENTS OWNER’S RESPONSE IN OPPOSITION TO
`PETITIONERS’ REQUEST FOR REHEARING
`
`
`
`
`________________
`
`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
`
`U.S. Patent No. 6,611,349
`
`______________
`
`
`
`PATENTS OWNER’S RESPONSE IN OPPOSITION TO
`PETITIONERS’ REQUEST FOR REHEARING
`
`
`
`
`TABLE OF CONTENTS
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`TABLE OF AUTHORITIES .................................................................................... ii
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`I.
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`ARGUMENT ................................................................................................... 2
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`A.
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`B.
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`Petitioners’ Argument Regarding Apogee Does Not Change the
`Board’s Conclusion ............................................................................... 2
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`The Board Properly Considered the Architecture of Jebens and
`Dorfman As Primary References .......................................................... 4
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`CONCLUSION ................................................................................................ 5
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`
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`i
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`II.
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`TABLE OF AUTHORITIES
`
`
`CASES
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) .............................................................................. 3
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`Page(s)
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`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398, 421-23 (2007) ................................................................................ 3
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`OTHER AUTHORITIES
`
`37 C.F.R. § 42.71(d) .................................................................................................. 4
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`
`
`ii
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`
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`On November 25, 2015, the Board issued its Final Written Decision
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`(“Decision”) finding that Petitioners failed to demonstrate that claims 1-3 of U.S.
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`Patent Number 6,611,349 (“the ’349 Patent”) were obvious over the alleged prior
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`art. Petitioners filed a Request for Rehearing (“Request for Rehearing”) on
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`December 28, 2015, asserting that the Board erred on two grounds: (1) the Board
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`overlooked evidence that Apogee discloses the provision of a plate-ready file to a
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`remote printer; and (2) the Board mistakenly looked to the architecture of Apogee
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`as the primary reference, instead of the architecture of Jebens or Dorfman,
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`respectively.
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`
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`The Board has invited Patent Owner to file this response in opposition to the
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`Request for Rehearing. Patent Owner submits that the Final Written Decision was
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`correct and the Request for Rehearing should be denied because, as discussed
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`below: (1) the Board properly and completely considered the arguments based on
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`Jebens and Apogee, and Dorfman and Apogee, previously raised by the Petitioner;
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`and (2) the Board properly considered the architectures of Jebens and Dorfman as
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`primary references in view of Apogee as a secondary reference.
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`1
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`
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`I.
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`ARGUMENT
`A.
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`Petitioners’ Argument Regarding Apogee Does Not Change the
`Board’s Conclusion
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`
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`Petitioners argue that Apogee discloses the provision of a plate-ready file to
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`a remote printer. This is not a valid basis for granting rehearing because it would
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`not have changed the Board's conclusion that the subject claims were not obvious
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`based on Jebens in view of Apogee.
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`
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`Apogee’s alleged disclosure of the provision of a plate-ready file to a remote
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`printer does not change the Board’s conclusion. As Patent Owner has previously
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`pointed out, it would not be obvious to a person of ordinary skill in the art to
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`replace or modify the job order developer and conduit function of the central
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`facility of Jebens with the Apogee PDF RIP process. The host system of Jebens
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`does not generate a PDF file from the document created by the agency (and, in
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`fact; does not process the document created by the agency at all, other than to
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`include it in a job order sent to a printer); does not disclose sending any form of a
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`processed document back to the agency; and does not disclose providing a plate-
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`ready file to a remote printer. See Stevenson Decl. (Ex. 2014), at ¶¶ 25-33. To the
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`extent that Apogee discloses the generation of a plate-ready file in the form of a
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`PIF through the Apogee PDF RIP process, a POSITA would consider this process
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`to be taking place at the jobber or supplier, i.e., at a printing company facility. See
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`Stevenson Decl. (Ex. 2014), at ¶ 30; Lawler Depo. Tr. (Ex. 2017), at 31:12–32:4.
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`2
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`Thus, neither Jebens nor Apogee suggest that this process take place in the host
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`system of Jebens. In fact, such a modification would substantially change the
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`manner of operation of the central facility of the Jebens system. Stevenson Decl.
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`(Ex. 2014), at ¶¶ 30, 33. The proposed modification cannot render the prior art
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`unsatisfactory for its intended purposes. See MPEP 2143.01(V); In re Gordon,
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`733 F.2d 900 (Fed. Cir. 1984). Similarly, the proposed modification or teaching
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`cannot change the principle of operation of the prior art invention or reference.
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`MPEP 2143.01(VI).
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`
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`The Board properly determined that the claims were not obvious in light of
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`the proposed combination of Jebens and Apogee. As the Board concluded,
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`“[e]vidence that a skilled artisan could have generated the plate-ready file at
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`Jebens’ host facility, without any evidence of a reason why the skilled artisan
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`would have done so, is insufficient to show obviousness.” Decision at 27 (citing
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`KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421-23 (2007)). In fact, the Board
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`considered Professor Lawler's deposition testimony in this regard, Decision at 26,
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`and concluded that the Petitioners had not met their burden of proof, Decision at
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`28.
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`
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`With regard to the combination of Dorfman and Apogee, the Board similarly
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`concluded that “Petitioner has not shown that a person of ordinary skill in the art
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`would have had reason to produce the plate-ready file anywhere other than at
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`3
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`
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`Dorfman's production printing system.” Decision at 32. As the Board observed,
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`the proposed combination of Dorfman and Apogee suffers from the same
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`deficiency discussed above with regard to Jebens/Apogee. Id.
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`
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`Accordingly, Petitioners have failed to meet their burden of showing that the
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`Decision of the Board should be modified on this first ground, and the Request for
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`Rehearing should be denied.
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`B.
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`The Board Properly Considered the Architecture of Jebens and
`Dorfman As Primary References
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`
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`Petitioners assert the Board mistakenly looked to the secondary reference
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`(Apogee) for architectural features relied upon in the primary references (Jebens
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`and Dorfman), and then suggested that Apogee would have to be modified to
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`transmit a plate-ready file to a remote printer. Request at 13. Petitioners are
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`incorrect. The Board properly considered modifying the primary references in
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`view of the secondary reference.
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`
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` With regard to Jebens and Apogee, the Decision explicitly states that the
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`Board considered modifying Jebens in view of Apogee:
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`Petitioner asserts that “one of ordinary skill in the art would have been
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`motivated to incorporate Apogee into the Jebens’ printing system to
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`allow for a printing facility to produce a printing plate for offset
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`printing,” Pet. 29, but Petitioner does not assert, much less point us to
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`any evidence, that a person of ordinary skill in the art would have
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`4
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`been motivated to combine Jebens and Apogee in such a way that a
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`plate-ready file would have been produced at Jebens’ host facility
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`(which is alleged to correspond to the claimed central service facility)
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`rather than at its printing facility.
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`Decision at 27-28. That the Board considered Jebens’ architecture is also apparent
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`from its summary of the parties’ contentions. See, e.g., id. at 23 (finding that
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`Petitioners rely on Jebens to teach “a ‘digital management system’ that ‘can be
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`used to coordinate design, prepress, and printing activities, by connecting the front-
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`end users … to service bureau and printing companies over a communication
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`network.’” The Board similarly considered modifying Dorfman as the primary
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`reference, in view of Apogee as the secondary reference. Id. at 29-33.
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`
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`Accordingly, the Board properly considered the proposed modification of
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`the primary references (Jebens and Dorfman) in view of Apogee, the secondary
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`reference. As Petitioners have failed to meet their burden of showing that the
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`Decision of the Board should be modified on this second ground, the Request for
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`Rehearing should be denied.
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`II. CONCLUSION
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`For the above reasons, Petitioners have failed to meet their burden of
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`establishing that the Board's Final Written Decision should be modified on either
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`ground. The Request for Rehearing should be denied in its entirety.
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`5
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`Respectfully submitted,
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`
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`BAKER, DONELSON, BEARMAN,
`CALDWELL & BERKOWITZ, P.C.
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`
`
`/W. Edward Ramage/
`W. Edward Ramage, Reg. No. 50,810
`BAKER, DONELSON, BEARMAN,
`CALDWELL & BERKOWITZ, P.C.
`Baker Donelson Center
`211 Commerce Street, Suite 800
`Nashville, Tennessee 37201
`Tel: (615) 726-5771
`Fax: (615) 744-5771
`Email: ermage@bakerdonelson.com
`
`Counsel for Patent Owner CTP
`Innovations, LLC
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`Dated: August 25, 2016
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`6
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`CERTIFICATE OF SERVICE
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`
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`The undersigned hereby certifies that, on August 25, 2016, the foregoing
`Patent Owner’s Response in Opposition to Petitioners’ Request for Rehearing was
`served in its entirety via U.S. Express Mail, postage prepaid, and electronic mail
`upon the following:
`
`Scott A. McKeown
`OBLON, SPIVAK, MCCLELLAND,
`MAIER & NEUSTADT, LLP.
`1940 Duke Street
`Alexandria, VA 22314
`Tel: (703) 412-6297
`Fax: (703) 413-2220
`Email: cpdocketmckeown@oblon.com
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` cpdocketkiklis@oblon.com
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`/W. Edward Ramage/
`W. Edward Ramage, Reg. No. 50,810
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`7
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