IN THE 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
`___________________________
`
`CTP INNOVATIONS, LLC’S PRELIMINARY RESPONSE TO PETITION
`
`
`Filed on behalf of CTP Innovations, LLC
`
`By: W. Edward Ramage (Lead Counsel)
`Reg. No. 50,810
`Samuel F. Miller (Back-up Counsel)
`(pending pro hac vice admission)
`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: eramage@bakerdonelson.com
`
` smiller@bakerdonelson.com
`
`

`
`EXHIBIT LIST
`
`Case IPR2014-00790
`Patent 6,611,349
`
`
`
`
`2001
`
`Petitioners press release (May 22, 2014)
`
`2002
`
`Printweek.com article (May 23, 2014)
`
`2003
`
`PIA Linked-In webpage
`
`2004
`
`PIA webpage: www.printing.org/news/11375 (Oct. 4, 2013)
`
`2005
`
`PIA webpage: www.printing.org/news/11483 (Oct. 4, 2013)
`
`2006
`
`PIA Board of Directors: www.printing.org/board (Oct. 4, 2013)
`
`2007
`
`PIA Board of Directors: www.printing.org/board (Aug. 26, 2014)
`
`2008
`
`PIA donor list: www.printing.org/page/6687 (Aug. 26, 2014)
`
`2009
`
`Kodak Nexpress Developer's Interface Guide (April 2012)
`
`Webster’s New World Dictionary of Computer Terms, Sixth Edition
`(1997) (defining “real time”)
`
`Webster’s New World Dictionary of Computer Terms, Seventh
`Edition (1999) (defining “real time”)
`
`IPR2013-00474 Petition
`
`PIA Supplier Advisory Committee: www.printing.org/page/9943
`(Aug. 28, 2014)
`
`i
`
`2010
`
`
`
`2011
`
`
`
`2012
`
`2013
`
`
`
`
`
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`
`

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`Case IPR2014-00790
`Patent 6,611,349
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`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II. APPLICABLE LEGAL STANDARDS .......................................................... 4
`
`A.
`
`Institution of Inter Partes Review.......................................................... 4
`
`B. Obviousness under § 103(a). ................................................................. 5
`
`III. CLAIM CONSTRUCTION ............................................................................ 7
`
`A.
`
`“data provided remotely in real time” ................................................... 7
`
`B.
`
`“plate-ready file” ................................................................................... 9
`
`C.
`
`“end user facility,” “central service facility,” and “printing
`company facility” ............................................................................... 12
`
`D.
`
`“communication routing device” ........................................................ 14
`
`E.
`
`“communication network” .................................................................. 14
`
`IV. ARGUMENT ................................................................................................. 16
`
`A.
`
`Petitioners Are Taking A “Second Bite At The Apple.” .................... 16
`
`B.
`
`Petitioners Fail to Demonstrate a Reasonable Likelihood of
`Prevailing. ............................................................................................ 18
`
`1.
`
`2.
`
`3.
`
`The Petition Fails to Establish A Reasonable Likelihood
`That Claims 1-3 Of The ‘349 Patent Would Have Been
`Obvious Based on Jebens, Apogee, and OPI White Paper. ...... 19
`
`The Petition Fails to Establish A Reasonable Likelihood
`That Claims 1-2 Of The ‘349 Patent Would Have Been
`Obvious Based on Dorfman, Apogee, and Andersson. ............ 23
`
`The Petition Fails to Establish A Reasonable Likelihood
`That Claim 3 Of The ‘349 Patent Would Have Been
`Obvious Based on Dorfman, Apogee, Andersson, and
`OPI White Paper. ...................................................................... 26
`
`
`
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`
`C.
`
`Petitioners Fail to Identify All Real Parties in Interest. ...................... 27
`
`V.
`
`CONCLUSION .............................................................................................. 31
`
`
`
`iii
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`

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`Case IPR2014-00790
`Patent 6,611,349
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`
`
`CASES
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`CCS Fitness, Inc. v. Brunswick Corp.,
`288 F.3d 1359 (Fed. Cir. 2002) ............................................................................ 5
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) .................................................................................................. 5
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) .............................................................................. 6
`
`Inline Connection Corp. v. Earthlink, Inc.,
`684 F. Supp. 2d 496 (D. Del. 2010)...................................................................... 6
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .......................................................................................... 5, 6
`
`Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc.,
`520 F.3d 1358 (Fed. Cir. 2008) ............................................................................ 6
`
`Oxford Gene Tech., Ltd. v. Mergen Ltd.,
`345 F. Supp. 2d 431 (D. Del. 2004).................................................................. 5, 6
`
`Perfect Web Technologies, Inc. v. InfoUSA, Inc.,
`587 F.3d 1324 (Fed. Cir. 2009) ............................................................................ 6
`
`Unigene Labs., Inc. v. Apotex, Inc.,
`655 F.3d 1352 (Fed. Cir. 2011) ............................................................................ 6
`
`STATUTES
`
`35 U.S.C. § 103 .......................................................................................................... 5
`
`35 U.S.C. § 313 .......................................................................................................... 1
`
`35 U.S.C. § 314 ...................................................................................................... 4, 7
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.100 ..................................................................................................... 4
`
`
`
`iv
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`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`37 C.F.R. § 42.8 ....................................................................................................... 26
`
`77 Fed. Reg. 48752 .................................................................................................. 27
`
`77 Fed. Reg. 48756, 48766 ........................................................................................ 4
`
`M.P.E.P. §§ 2141, 2142, 2143 .................................................................................. 6
`
`v
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`Case IPR2014-00790
`Patent 6,611,349
`
`
`Patent Owner, CTP Innovations, LLC (“Patent Owner”), pursuant to 35
`
`U.S.C. § 313 and 37 C.F.R. § 42.107, submits its Preliminary Response to Eastman
`
`Kodak Company’s, Agfa Corporation’s, Esko Software BVBA’s, and Heidelberg,
`
`USA’s (collectively, the “Petitioners”) Petition for Inter Partes Review of U.S.
`
`Patent No. 6,611,349 (“the ‘349 Patent”).
`
`I. INTRODUCTION
`
`
`
`This Petition is part of a second barrage of petitions filed against the ‘349
`
`Patent and a related patent (U.S. 6,738,155) on behalf of a group of printing
`
`service providers who have been sued for infringement in a number of cases. See
`
`Ex. 1002. The Petitioners in this matter, like the petitioner in the preceding matter
`
`IPR2013-00474 (i.e., Printing Industries of America, Inc. (PIA)), are not parties in
`
`any litigation involving Patent Owner, but have business relationships with the
`
`printing service providers and are acting on their behalf. In this Petition,
`
`Petitioners assert that claims 1-3 of the ‘349 Patent should be invalidated on the
`
`basis of obviousness. This Petition is one of four filed by Petitioners, which follow
`
`the Board’s determinations to reject similar petitions filed against these same two
`
`patents nearly a year ago.
`
`
`
`Patent Owner intends to vigorously contest this second round of “third-
`
`party” petitions, including Petitioners’ assertions in this Petition, if the Board
`
`initiates an Inter Partes Review. However, for purposes of its preliminary
`
`
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`response, Patent Owner submits that Petitioners have so clearly failed to carry their
`
`burden under the “reasonable likelihood” standard that the Board should not
`
`initiate an Inter Partes Review for at least three reasons.
`
`
`
`First, the Petition is a thinly veiled “second bite of the apple.” The Petition
`
`recycles some of the earlier petition’s lead prior art that the Board rejected in
`
`IPR2013-00474. Ex. 1004. Contrary to Petitioners’ insinuation that the Board
`
`merely rejected the prior petitions on procedural grounds, the Board actually
`
`expressly considered and rejected two of Petitioners’ lead references, Dorfman and
`
`Andersson. Purportedly “new” references in this Petition are materially similar to
`
`other prior art that also was considered and rejected. For example, Apogee appears
`
`to be the commercial embodiment of the Lucivero patent considered and rejected
`
`in the earlier IPR. See Ex. 1004 at 10-12 (discussing Lucivero, U.S. 7,242,487).
`
`
`
`Second, the ‘349 Patent’s specification and disclosure demonstrate outright
`
`that Petitioners’ purported references are inapposite and do not render claims 1-3
`
`obvious. In particular, Petitioners focus their Petition on the phrase “real time,”
`
`and they spend a significant number of pages discussing how a reference, Jebens,
`
`operates in “real time.” However, the specification shows that Jebens is not a “real
`
`time” system. Petitioners’ own characterization of Jebens points out that Jebens
`
`does not possess the network connectivity level of the WAM!NET system
`
`described as prior art in the ‘349 Patent specification and which the specification
`
`
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`also says does not operate in “real time.” Ex. 1001 at p. 23 (col. 6: 55-65). Thus,
`
`if WAM!NET is not real time, then Jebens cannot be real time.
`
`
`
`Petitioners’ Apogee reference discloses the generation of a raster data Print
`
`Image File (PIF) from a PDF file, and imposition processes, but does not address
`
`generating a printing plate-ready file from data provided remotely in real time
`
`using a communication network. In addition, Apogee covers the same general
`
`ground that the Lucivero reference was cited for in the IPR2013-00474 proceeding.
`
`The Lucivero reference was rejected in that proceeding, and the Apogee reference
`
`should be as well.
`
`
`
`The Dorfman reference also does not disclose a system for generating a
`
`printing plate-ready file from data provided remotely in real time using a
`
`communication network. Dorfman reveals in numerous instances that it is a
`
`variable data printing (VDP) system, which does not involve the production of
`
`“plate-ready files,” as is the case for the computer-to-plate (CTP) system that is the
`
`subject of the ‘349 Patent. Indeed, VDP is the very opposite of CTP in that VDP
`
`does not use a printing plate and the “variable data” changes with each document
`
`or even page. In a CTP system, a printing plate is the end result, and each page
`
`printed by the plate is exactly the same as the next. By its very nature, it would not
`
`have been obvious to combine a VDP system with a CTP system.
`
`
`
`
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`3
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`Third, Petitioners also are required to identify all real parties in interest to
`
`the Petition. The Petition simply identifies the four Petitioners as the real parties-
`
`in-interest, but further states that the ‘349 Patent is asserted in 49 filed litigations
`
`against numerous printing service providers, none of which are Petitioners (Ex.
`
`1002). Just as PIA did before, Petitioners are acting as representatives for at least
`
`some or all of these defendants, as indicated by their press release on May 22,
`
`2014, in which they state that the Petition was filed to “support our customers.” Ex.
`
`2001. Based on news coverage regarding this Petition, it appears that Petitioners
`
`may be working in conjunction with PIA, the petitioner in the rejected IPR2013-
`
`00474 proceeding. Ex. 2002. This is further supported by the fact that two or more
`
`of Petitioners have held board positions on PIA or are advisor members of PIA.
`
`Exs. 2007, 2008, 2013. Patent Owner submits that Petitioners should be required
`
`to amend the Petition to list all entities on whose behalf the Petition is brought as
`
`required, or, in the alternative, the Petition should be dismissed in its entirety.
`
`
`
`II. APPLICABLE LEGAL STANDARDS
`
`A.
`
`Institution of Inter Partes Review.
`
`
`
`In instituting an Inter Partes Review, the petitioner must show that there is a
`
`“reasonable likelihood that the petitioner would prevail with respect to at least 1 of
`
`the claims challenged in the petition.” 35 U.S.C. § 314(a). In conducting its
`
`
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`review, the Board should interpret claims using the broadest reasonable
`
`interpretation as understood by one of ordinary skill in the art and consistent with
`
`the disclosure. Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48766
`
`(Aug. 14, 2012); 37 C.F.R. § 42.100(b). There is a heavy presumption that a claim
`
`term carries its ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick
`
`Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).
`
`B. Obviousness under § 103(a).
`
`
`
`A patent is invalid under Section 103(a) if the “differences between the
`
`subject matter sought to be patented and the prior art are such that the subject
`
`matter as a whole would have been obvious at the time the invention was made to a
`
`person having ordinary skill in the art.” 35 U.S.C. § 103(a). An obviousness
`
`inquiry requires considering the following four Graham factors: (1) the scope and
`
`content of the prior art; (2) the differences between the prior art and the claimed
`
`invention; (3) the level of ordinary skill in the art; and (4) objective evidence of
`
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). See also,
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406-07 (2007) (stating that the four
`
`Graham factors continue to define the controlling inquiry). The relevant inquiry is
`
`whether the petition has set forth “some articulated reasoning with some rational
`
`underpinning to support the legal conclusion of obviousness.” KSR Int’l Co., 550
`
`U.S. at 418.
`
`
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`Determining the differences between the prior art and the claimed invention
`
`requires an element-by-element comparison of the claim elements with regard to
`
`the prior art. See, e.g., Oxford Gene Tech., Ltd. v. Mergen Ltd., 345 F. Supp. 2d
`
`431, 437 (D. Del. 2004); Inline Connection Corp. v. Earthlink, Inc., 684 F. Supp.
`
`2d 496, 523 (D. Del. 2010).
`
`
`
`The obviousness analysis also must present evidence of a motivation to
`
`combine or modify the prior art to arrive at the invention as claimed. See Unigene
`
`Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011); Ortho-McNeil
`
`Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d 1358, 1364-65 (Fed. Cir. 2008); In re
`
`Kahn, 441 F.3d 977, 986-88 (Fed. Cir. 2006). There must be “some rationale,
`
`articulation, or reasoned basis to explain why the conclusion of obviousness is
`
`correct.” In re Kahn, 441 F.3d at 986-88. The requirement “remains the primary
`
`guarantor against a non-statutory hindsight analysis.” Ortho-McNeil, 520 F.3d at
`
`1364-65. It is well-established that rejections on obviousness grounds cannot be
`
`sustained by “mere conclusory statements.” KSR Int’l Co., 550 U.S. at 418; see
`
`also, Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1330 (Fed. Cir.
`
`2009); M.P.E.P. §§ 2141, 2142, 2143.
`
`
`
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`III. CLAIM CONSTRUCTION
`
`Petitioners have proposed claim interpretations for six claim elements.
`
`However, Petitioners’ proposed claim constructions are inconsistent with the
`
`disclosure on several points, and are contrary to their ordinary and customary
`
`meanings. Patent Owner further submits
`
`its proposed
`
`interpretation for
`
`“communication network,” which Petitioners did not construe.
`
`A.
`
`“data provided remotely in real time”
`
`
`
`Petitioners construe
`
`this phrase as “encompassing
`
`the electronic
`
`transmission of data, images, files etc. over a communication network.” Petition at
`
`20. This definition ignores the term “real time,” or equates it to simply mean any
`
`electronic transmission over a communication network.
`
`
`
`The specification makes clear that Petitioners’ definition is wrong; merely
`
`transmitting electronic data over a communication network is not doing so in “real
`
`time.” The specification notes a prior art system, WAM!NET, that does just that
`
`and is not “real time.”
`
`
`
`Network access device (NAD) 140 is a device which couples
`
`local network 150 to an external private network, such as, private
`
`network 160. In one embodiment, NAD 140 connects local network
`
`150 with a private network called WAM!NETTM. WAM!NET is a
`
`private communication network which offers connectivity of
`
`
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`databases for content management as well as proofing devices for
`
`proofing a file.
`
` WAM!NET connects printing companies to
`
`advertising agencies, publishers, and graphic design
`
`firms.
`
`Nevertheless, document delivery by WAM!NET is not done in real
`
`time.
`
`Ex. 1001 at p. 23 (col. 6: 55-65).
`
`
`
`Patent Owner proposes that the term should be construed to mean “the
`
`immediate processing of input.” The specification at col. 9, lines 3-8, states:
`
`It also should be noted that the foregoing functional components may
`
`be adapted in a variety of manners for executing the functions
`
`described herein. In general, the functional components facilitate the
`
`printing and publishing services provided at an end user facility and a
`
`printing company facility, which is preferably implemented in a real
`
`time manner to provide increased response time to all of the printing
`
`and publishing services.
`
`Ex. 1001 at p. 25. As such, by providing a processing of input in a real time or
`
`immediate manner the users (facilities) are provided with more response time
`
`between inputs or actions, i.e., the process of manipulating the input is done as
`
`quickly as possible to provide more time to respond to such.
`
`
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`
`
`The extrinsic evidence also supports Patent Owner’s proposed definition of
`
`“the immediate processing of input.” Webster’s New World Dictionary of
`
`Computer Terms, Sixth Edition (1997) defines the term “real time” as “the
`
`immediate processing of input, such as a point-of-sale transaction….” Ex. 2010.
`
`Webster’s New World Dictionary of Computer Terms, Seventh Edition (1999) also
`
`defines the term “real time” as “the immediate processing of input, such as a point-
`
`of-sale transaction….” Ex. 2011.
`
`B.
`
`“plate-ready file”
`
`
`
`Petitioners propose the following construction of this phrase: “a file
`
`containing pages designed from images, texts, and data converted to a digital file
`
`for producing a printing plate.” Petition at 21. This proposed construction does
`
`not capture the concept of the file being ready to produce a printing plate. Patent
`
`Owner proposes the more concise construction: “a file that is ready to be made into
`
`a printing plate.” The specification at col. 10, lines 7-15, col. 11, lines 44-48, col.
`
`12, lines 18-22, and col. 12, line 66 through column 13, line 7 supports Patent
`
`Owner, and its construction is in accord with the broadest reasonable interpretation
`
`standard. See Ex. 1001 at pp. 25-27.
`
`Specifically, the specification at column 10, lines 7-15, states that
`
`File processing includes gathering linked data and supporting art and
`
`fonts into a single file that is stable, predictable, and ready to image to
`
`9
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`proof or plate. The machines and/or programs used to conduct file
`
`processing include the application used to build a page, such as,
`
`QuarkXpress, InDesign by Adobe Systems and the software programs
`
`used to generate stable, predictable, plate-ready files. Such software
`
`programs include Adobe Acrobat Distiller, Art Work System and
`
`Scitex Brisque.
`
`Ex. 1001 at p. 25. The recitation of a “plate-ready file” as being one that is a single
`
`file that is stable, predictable, and ready to image to proof or plate supports the
`
`proposed definition of a file that is ready to be made into a printing plate. Column
`
`11, lines 44-48, state that “[a]t step 655, finished plate-ready files are sent to
`
`printing company facility 400 via a communication link, such as, private network
`
`160 or public network 190. Printing company facility 400 images approved page
`
`layouts to a print at step 660 and prints the pages.” Id. at p. 26. Thus, the plate-
`
`ready file is ready to be used to print the page, i.e., it is a file that is ready to be
`
`made into a printing plate.
`
`The specification at column 12, lines 18-22, further states that “[i]f no
`
`additional revisions are necessary, step 765 is performed in which the finished
`
`plate-ready files are generated at printing company facility 400. At step 770,
`
`printing company facility 400 enters plate-ready files into DCM database 132.” Id.
`
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`Thus, the plate-ready files are those that are ready to be made into the final printing
`
`plate.
`
`Lastly, at column 12, line 66 through column 13, line 7, the specification
`
`recites that
`
`If no additional revisions are necessary step 870 is performed in
`
`which finished plate-ready files are made available to printing
`
`customer facility 400 via communication link. At step 875, printing
`
`company facility 400 enters plate-ready file into DCM database 130.
`
`At step 880, plate-ready files pages are digitally imposed and imaged
`
`to proofing device at printing company facility 400. At step 885,
`
`printing company facility 400 images the proof pages to plate and
`
`prints the job.
`
`Id. at pp. 26-27. This paragraph clearly illustrates that the plate-ready file is
`
`“ready” since there are to be “no additional revisions” and that the plate-ready file
`
`is entered into the database, imposed, proofed, and printed. This supports the
`
`definition of the file being ready to be made into a printing plate, as the formation
`
`of the printing plate is one of the final steps prior to actual printing.
`
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`C.
`
`
`“end user facility,” “central service facility,” and “printing company
`facility”
`
`
`
`Petitioners suggest adopting the construction of these phrases from a
`
`different PTAB proceeding (IPR2013-00489) involving a companion patent (U.S.
`
`Pat. 6,738,155), with the specific requirement that “the claimed facilities must be
`
`distinct from each other in some manner.” Petition at 22. This requirement is not
`
`present in the constructions used in the prior PTAB proceeding for the ‘349 Patent,
`
`IPR2013-00474. Ex. 1004 at pp. 9-10. Moreover, the suggested requirement is
`
`unclear and ambiguous in the use of “in some manner,” which can mean almost
`
`anything. This requirement should not be adopted, and any operational distinctions
`
`that can be made between these facilities are clear from the terms of the applicable
`
`claims.
`
`
`
`Accordingly, for purposes of deciding this Petition, Patent Owner proposes
`
`the following definitions, which are consonant with
`
`the Board's prior
`
`interpretations for this same patent in IPR2013-00474, Ex. 1004 at pp. 9-10, and
`
`are in accord with the broadest reasonable interpretation standard:
`
`
`CLAIM TERM
`
`end user facility
`
`
`central service facility
`
`
`
`PROPOSED
`INTERPRETATION
`facility that provides page
`building
`operations
`allowing the design and
`construction of pages
`facility
`that
`provides
`storage, file processing,
`
`
`CLAIMS
`
`1-3
`
`
`1-3
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`printing company facility
`
`
`content
`and
`access,
`management operations
`facility
`that
`provides
`printing operations
`
`
`1-3
`
`The above interpretation of “end user facility” is directly supported by claim
`
`
`
`1 of the ‘349 Patent, as well as the Abstract and the specification at col. 2, line 34-
`
`39. Ex. 1001 at pp. 1, 21, and 31. The images, text, and data being available via a
`
`communications network is an additional claim limitation that does not need to be
`
`incorporated into the definition of “end user facility” per se.
`
`
`
`The proposed interpretation of “central service facility” is directly supported
`
`by claim 1 of the ‘349 Patent, as well as the Abstract and the specification at col. 2,
`
`line 58 through col. 3, line 3, col. 5, lines 41-50, col. 6, lines 27-65, and col. 7,
`
`lines 20-51. Ex. 1001 at pp. 1, 21-24 and 31.
`
`
`
`The interpretation of “printing company facility” is directly supported by
`
`claim 1, the Abstract, and the specification at col. 2, lines 41-44. Ex. 1001 at pp. 1,
`
`21, and 31. This phrase should not be limited to producing a plate from a plate-
`
`ready file, as the specification at col. 2, lines 41-44, also includes the “final
`
`printing of the created pages at a printing company facility.” Ex. 1001 at p. 21.
`
`The proposed interpretation is in accord with the broadest reasonable interpretation
`
`standard.
`
`
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`Case IPR2014-00790
`Patent 6,611,349
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`D.
`
`“communication routing device”
`
`
`
`Petitioners propose “routers and switches…included at central service
`
`facility 105, end user facility 300, and printing company facility 400.” Petition at
`
`22. This interpretation is unnecessarily narrow, and thus not in accordance with
`
`the broadest reasonable interpretation standard. The specification supports a
`
`broader interpretation.
`
`
`
`Patent Owner proposes the more concise, and broader, definition of “a
`
`device that directs electronic data traffic.” This is supported by the specification at
`
`col. 4, lines 46-49 (“communication routing device 200 directs data traffic…”).
`
`Ex. 1001 at p. 22. While the specification also provides the specific example of
`
`“routers and switches,” this is clearly only one exemplary embodiment: “System
`
`100 preferably includes a communication routing device 200, such as, routers and
`
`switches.” Ex. 1001 at p. 22 (col. 4: 33-35). It should be specifically noted that a
`
`communication routing device can be a router or a switch, and does not need to be
`
`both, and also can be some device that directs data traffic other than a router or a
`
`switch. The term should be more broadly construed, in accordance with both the
`
`specification and the broadest reasonable interpretation standard.
`
`E.
`
`“communication network”
`
`
`
`Patent Owner proposes that this phrase be interpreted as “a private network
`
`such as an extranet or public network such as the Internet.” Support may be found
`
`
`
`14
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`Case IPR2014-00790
`Patent 6,611,349
`
`in claim 1, the Abstract, and the specification at col. 4, lines 29-66, col 5, lines 21-
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`25, and col. 11, lines 60-63. Ex. 1001 at pp. 1, 22-23, 26 and 31. It should be
`
`specifically noted that a communication network can be a private network or a
`
`public network, and does not need to be both. Id. The proposed interpretation is in
`
`accord with the broadest reasonable interpretation standard.
`
`
`
`
`
`
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`15
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`Case IPR2014-00790
`Patent 6,611,349
`
`
`A.
`
`Petitioners Are Taking A “Second Bite At The Apple.”
`
`IV. ARGUMENT
`
`Petitioners seek a “second bite at the apple.” The Board has already denied
`
`one petition seeking to invalidate the ‘349 Patent. Two of the primary references
`
`at issue in the present Petition (Dorfman and Andersson) were expressly
`
`considered in the prior petition, as was Lucivero, et al., U.S. Pat. No. 7,242,487,
`
`which appears to be the commercial equivalent of the Apogee reference. See Ex.
`
`1004 at 8,10-12, 15-17; Ex. 1008.
`
`In an attempt to get beyond the Board’s prior careful consideration of the
`
`previously cited references, Petitioners take the position that the Board denied the
`
`IPR2013-00474 solely on procedural grounds--namely, a failure to properly state
`
`the rationale for combining the cited prior art. See Petition at 5 and 17-18. To the
`
`contrary, the Board did, in fact, consider more than the manner in which the prior
`
`petition was pled. As evidenced by the Board’s seventeen-page decision and
`
`statements therein (see, e.g., Ex. 1004 at 11 (“Nor is such correspondence self-
`
`evident.”); id. at 16 (“Nor do we discern any correspondence.”)), the Board
`
`carefully considered the validity of the petitioner’s arguments even in light of the
`
`manner in which it stated the rationale for the allegedly invalidating combinations.
`
`Petitioners now seek to rearrange the prior art cited in the previous petition
`
`and to swap in other prior art to conduct a “do over.” First, instead of tacking
`
`
`
`16
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`Case IPR2014-00790
`Patent 6,611,349
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`Dorfman onto a list of prior art to invalidate claims 5 and 6, Petitioners rely upon
`
`Dorfman as one of two primary references. Dorfman, however, still specifically
`
`pertains to VDP systems, see Ex. 1007 at 1, 4, and 6, which are the opposite of
`
`CTP systems.
`
`Second, to overcome the obvious difference between VDP and CTP,
`
`Petitioners inserted the Apogee reference for the proposition that it would be
`
`obvious that generating a plate-ready file may be added onto the back-end of the
`
`referenced Dorfman VDP system. Petition at 52. Notwithstanding that adding the
`
`generation of a plate to a non-plate-using VDP system would be counterintuitive
`
`and counterproductive, the systems in the Apogee reference are products of
`
`Petitioner Agfa. Petition at 51; Ex. 1008. The Lucivero patent also is owned by
`
`Agfa. Lucivero discloses the creation of plates and thus the generation of plate-
`
`ready files. Ex. 1004 at 10-12. The Board previously rejected Lucivero alone or in
`
`combination as invalidating prior art for claims 1-3. Petition at 17; Ex. 1004 at 10-
`
`12, 15.
`
`Third, Petitioners cite to Andersson (Ex. 1010) for the element of content
`
`management operation. Petition at 50. Albeit inartfully, the petition in IPR2013-
`
`00474 also cited Andersson for content management. Ex. 2012 at pp. 46-47
`
`(IPR2013-00474 Petition at pp. 39-40). Finally, Petitioners substitute the OPI
`
`
`
`17
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`

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`Case IPR2014-00790
`Patent 6,611,349
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`White Paper (Ex. 1009) for Sands, et al. from IPR2013-00474 for the element of
`
`imposition. Id. at 40 (IPR2013-00474 Petition at p. 34).
`
`The only reference new to the Petition is Jebens. However, Jebens is hardly
`
`a new reference. As Petitioners admit, Jebens is disclosed on the face of the
`
`companion ‘155 Patent, which the prior petitioner also sought to invalidate through
`
`Inter Partes Review.
`
`The real parties in interest in this case, which appear to be Petitioners’
`
`customers, have already had their shot at the ‘349 Patent. There is no reason for
`
`the Board to consider another barrage of petitions that rely upon the same or
`
`equivalent (i.e., cumulative) prior art when the Board already has rejected such
`
`arguments. The present Petition is a misuse of the system. Patent owners
`
`generally should not face repeated barrages of petitions by third parties, especially
`
`when nothing new is raised in subsequent petitions.
`
`B.
`
`Petitioners Fail to Demonstrate a Reasonable Likelihood of Prevailing.
`
`To have the Board institute an Inter Partes Review, a petitioner must show
`
`that there is a “reasonable likelihood that the petitioner would prevail with respect
`
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The
`
`Petitioner has failed to meet this standard with regard to its assertions on
`
`obviousness grounds.
`
`
`
`18
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`

`
`Case IPR2014-00790
`Patent 6,611,349
`
`
`1.
`
`The Petition Fails to Establish A Reasonable Likelihood That
`Claims 1-3 Of The ‘349 Patent Would Have Been Obvious Based
`on Jebens, Apogee, and OPI White Paper.
`
`
`
`The Petition asserts that claims 1-3 are invalid for obviousness based on
`
`Jebens (Ex. 1006) in view of Apogee (Ex. 1008) and OPI White Paper (Ex.