Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 44
`Entered: September 21, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`EASTMAN KODAK CO., AGFA CORP., ESKO SOFTWARE BVBA, and
`HEIDELBERG, USA,
`Petitioner,
`
`v.
`
`CTP INNOVATIONS, LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-00790
`Patent 6,611,349 B1
`_______________
`
`
`
`Before HOWARD B. BLANKENSHIP, BENJAMIN D. M. WOOD, and
`BRIAN J. MCNAMARA, Administrative Patent Judges.
`
`WOOD, Administrative Patent Judge.
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 44
`Entered: September 21, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`EASTMAN KODAK CO., AGFA CORP., ESKO SOFTWARE BVBA, and
`HEIDELBERG, USA,
`Petitioner,
`
`v.
`
`CTP INNOVATIONS, LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-00790
`Patent 6,611,349 B1
`_______________
`
`
`
`Before HOWARD B. BLANKENSHIP, BENJAMIN D. M. WOOD, and
`BRIAN J. MCNAMARA, Administrative Patent Judges.
`
`WOOD, Administrative Patent Judge.
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`
`IPR2014-00790
`Patent 6,611,349 B1
`
`
`I.
`
`INTRODUCTION
`
`Eastman Kodak Co., Agfa Corp., Esko Software BVBA, and
`Heidelberg, USA (collectively, “Petitioner”) filed a request for rehearing
`(Paper 41, “Reh’g Req.”) of our Final Written Decision (Paper 40, “Final
`Dec.”). We requested (Paper 42) a response from CTP Innovations, LLC
`(“Patent Owner”), which was subsequently submitted (Paper 43, “Reh’g
`Req. Resp.”).
`Petitioner requests that we reconsider our decision that Petitioner has
`not demonstrated that claims 1–3 of U.S. Patent No. 6,611,349 (the ’349
`patent) are unpatentable. Patent Owner opposes. For the reasons set forth
`below, the request is denied.
`
`II.
`
`STANDARD OF REVIEW
`
`The burdens and requirements of a request for rehearing are stated in
`37 C.F.R. § 42.71(d):
`(d) Rehearing. . . . The burden of showing a decision should be
`modified lies with the party challenging the decision. The
`request must specifically identify all matters the party believes
`the Board misapprehended or overlooked, and the place where
`each matter was previously addressed in a motion, an opposition,
`or a reply.
`
`III. ANALYSIS
`
`The ’349 Patent
`A.
`The ’349 patent describes a publishing and printing system that is
`distributed among three “facilities”: An end user facility, where content is
`created; a central service facility, where files are stored; and a printing
`company facility (or printer), where documents are printed. Independent
`
` 2
`
`
`
`
`
`
`
`IPR2014-00790
`Patent 6,611,349 B1
`
`claims 1–3 are at issue in this case. Claim 1 is representative and is
`reproduced below:
`1. A printing and publishing system which generates a
`printing plate-ready file from data provided remotely in real time
`using a communication network, the printing and publishing
`system comprising:
`an end user facility coupled to a communication network, the
`end user facility providing page building operations, the page
`building operations including the design and construction of
`pages from
`images,
`text, and data available via said
`communication network;
`a central service facility coupled to said communication
`network, the central service facility providing storage, file
`processing, remote access, and content management operations;
`the file processing operations including generating a plate-ready
`file from pages designed at said end user facility, said plate-ready
`file having a file format capable of high resolution and ready for
`creation of a printing plate;
`a printing company facility coupled to said communication
`network, the printing company facility providing printing
`operations, the printing operations including producing a
`printing plate from said plate-ready file; and
`wherein
`the end user
`facility
`further comprises a
`communication routing device coupling the end user facility to
`the communication network, a computer which performs page
`building operations, and a proofer which provides printed
`samples of pages.
`
`We instituted an inter partes review of claims 1–3 based on the
`following grounds of unpatentability:
`
` 3
`
`
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`IPR2014-00790
`Patent 6,611,349 B1
`
`
`Basis
`§ 103(a)
`
`Claims Challenged
`1–3
`
`§ 103(a)
`
`1 and 2
`
`§ 103(a)
`
`3
`
`Reference[s]
`Jebens,1 Apogee,2 and OPI White
`Paper3
`Dorfman,4 Apogee, and
`Andersson5
`Dorfman, Apogee, Andersson, and
`OPI White Paper
`
`Decision on Institution 25.
`In our Final Decision, we construed “plate-ready file” to mean “a file
`that represents a page layout that has gone through prepress processing,
`including RIPing, and is ready to image to a plate using either a platesetter
`or imagesetter.” Final Dec. 12. We construed “end user facility,” “printing
`company facility,” and “central service facility,” to be “distinct components
`of the claimed printing and publishing system,” i.e., “separate entities, each
`connected to the same communication network to facilitate the transfer of
`data between each other.” Id. at 10–11.
`
`Petitioner’s Rehearing Request Relies on a New Argument
`B.
`For the Jebens/Apogee ground, the Petition relied on Jebens to teach
`the separate end user facility, central service facility, and printing company
`facility. Pet. 30–35. Likewise, for the Dorfman/Apogee grounds, Petitioner
`
`
`1 Jebens, US 6,321,231 (iss. Nov. 20, 2001) (Ex. 1006).
`2 Agfa Apogee, The PDF–based Production System (Ex. 1008).
`3 Apple OPI White Paper (Ex. 1009).
`4 Dorfman, WO 98/08176 (iss. Feb. 26, 1998) (Ex. 1007).
`5 MATTIAS ANDERSSON ET AL., PDF PRINTING AND PUBLISHING, THE NEXT
`REVOLUTION AFTER GUTENBERG (Micro Publishing Press 1997)
`(“Andersson”) (Ex. 1010).
`
` 4
`
`
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`IPR2014-00790
`Patent 6,611,349 B1
`
`relied on Dorfman to teach separate end user, central service, and printing
`company facilities. Id. at 47–53. For all three grounds, Petitioner relied on
`Apogee to teach the generation of a plate-ready file from a digital file
`(specifically, a PDF file) by subjecting it to prepress operations and then
`RIPing. Id. at 26–27, 44–45. In doing so, Petitioner relied on a specific
`excerpt from Apogee, as follows:
`Apogee Pilot normalizes the incoming files into PDF, collects
`the pages, imposes, does OPI image exchange and sends this
`imposed ‘digital flat’ to an Apogee PDF RIP. In the context of
`Apogee, the PDF RIP takes the device and format independent
`PDF digital master, and renders (rasterizes) it exactly for the
`selected output device. The result is a ‘Print Image File’ (PIF)
`that contains all the dots that will appear on the film or plate. . . .
`Apogee PrintDrive manages the Print Image Files (PIF) output
`by one or more RIPs, and controls output flow to a variety of
`output devices including Agfa imagesetters, proofers, and
`platesetters.
`
`Id. at 26–27 (quoting Ex. 1008, 6–7).6 We refer to this quoted portion of
`Apogee as “Apogee Excerpt 1.”
`Petitioner’s claim charts also relied on Apogee to teach the generation
`of a plate-ready file. See id. at 33–34, 51–52. In doing so, however,
`Petitioner included, after Apogee Excerpt 1, an additional excerpt from
`Apogee. That excerpt is as follows:
`For volume applications, [Apogee PrintDrive] can be fed by
`multiple PDF RIPs over a TCP/IP network. This unique feature
`allows you to physically separate the rendering from the actual
`plate production, so your PDF RIP can be in the desktop
`
`
`6 See also id. at 33 (“Apogee discloses the generation of a plate-ready file
`(“PIF,” below) that is ready for the creation of a printing plate” (citing Ex.
`1008, 6-7)).
`
` 5
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`IPR2014-00790
`Patent 6,611,349 B1
`
`
`department and the PrintDrive can sit next to the output device,
`even in another town.
`
`Id. at 33–34 (citing Ex. 1008, 6–7); see also id. at 51–52 (same). We refer to
`this portion of Apogee as “Apogee Excerpt 2.”
`In its Response, Patent Owner argued, among other things, that the
`proposed combination does not teach a central service facility providing file
`processing services that include generating a plate-ready file. PO Resp. 26.
`Specifically, Patent Owner asserted that “[t]o the extent that Apogee
`discloses PDF RIP process [generating a plate-ready file], a POSITA would
`consider this process to be taking place at the jobber or supplier, i.e., at a
`printing company facility.” Id. at 32 (citing Ex. 2014 ¶ 24; Ex. 2017, 31:12–
`32:4).
`In its Reply, Petitioner argued that “[n]othing in Apogee limits the
`implementation of the processes described therein to occur at a printing
`company facility, and one of ordinary skill could predictably implement
`Apogee at a central service facility.” Reply 5–6. In support of this
`assertion, Petitioner relied on the testimony of its Declarant, Professor
`Lawler, who in turn relied on Apogee Excerpt 1. Id. at 6 (citing Ex. 1022
`¶ 93 (citing Ex. 1008, 7)).
`In the Final Decision, we reiterated that “[a]ll three claims recite a
`‘central service facility’ that provides ‘file processing’ operations, which
`include ‘generating a plate-ready file.’” Final Dec. 27. We found, however,
`that Petitioner has not alleged that Jebens teaches generating a ‘plate-ready
`file’ as we have construed the term above, i.e., a file that ‘has gone through
`prepress processing, including RIPing.’” Id. We stated further that
`“[a]lthough Petitioner alleges that Jebens ‘clearly teaches the incorporation
`
` 6
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`IPR2014-00790
`Patent 6,611,349 B1
`
`of OPI into a pre-press workflow,’ Pet. Reply 8, Petitioner does not allege
`that the resulting file is a ‘plate-ready file,’ because it has not been RIPed.”
`Id. We observed that “Apogee does teach generating a plate-ready file from
`a PDF, but does not teach or suggest that it be generated at any particular
`facility.” Id. We concluded that “Petitioner does not assert, much less point
`us to any evidence, that a person of ordinary skill in the art would have been
`motivated to combine Jebens and Apogee in such a way that a plate-ready
`file would have been produced at Jebens’ host facility (which is alleged to
`correspond to the claimed central service facility) rather than at its printing
`facility.” Id. at 27–28. We reached a similar conclusion with respect to the
`Dorfman/Apogee grounds. Id. at 32–33.
`In its Request for Rehearing, Petitioner’s primary argument is that the
`Board “overlooked directly contradictory evidence in the trial record.”
`Reh’g Req. 1. The evidence to which Petitioner refers is Apogee Excerpt 2.
`Id. at 7. Petitioner argues that “contrary to the Board’s sole rationale for not
`finding claims 10–20 unpatentable, there is significant, documentary
`evidence of record, unrebutted, and relied on by Petitioners—that one of
`ordinary skill was well aware of generating plate-ready files at locations
`remote from the printing company facility (i.e., in another town).” Id. at 8.
`In response to this argument, Patent Owner contends that “Apogee’s alleged
`disclosure of the provision of a plate-ready file to a remote printer does not
`change the Board’s conclusion,” because “it would not be obvious to a
`person of ordinary skill in the art to replace or modify the job order
`developer and conduit function of the central facility of Jebens with the
`Apogee PDF RIP process.” Reh’g Req. Resp. 4.
`
` 7
`
`
`
`
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`
`IPR2014-00790
`Patent 6,611,349 B1
`
`
`A request for rehearing is not an opportunity to present new
`arguments or evidence that could have been presented in the petition.
`37 C.F.R. § 42.71(d). Here, Petitioner’s Rehearing Request relies on an
`argument—that Apogee teaches generating a plate-ready file “remote[ly]
`from the printing company facility”—that was not presented in the Petition.
`In the Petition, Petitioner consistently relied on Apogee to teach generation
`of a plate-ready file, including “raster[izing] the output of the prepress
`process.” Pet. 26, 33, 45, 51. Petitioner did not, however, in either its
`Petition or Reply, argue that Apogee teaches generating a plate-ready file at
`any particular location. Petitioner failed to do so even after Patent Owner
`expressly raised this issue in its Response, where it asserted that a person of
`ordinary skill in the art would have read Apogee to teach generating a plate-
`ready file “at a printing company facility.” PO Resp. 32. Petitioner only
`replied that “[n]othing in Apogee limits the implementation of the processes
`described therein to occur at a printing company facility, and one of ordinary
`skill could predictably implement Apogee at a central service facility.”
`Reply 5–6. Neither Petitioner nor its declarant cited Apogee Excerpt 2 to
`support this contention. If Petitioner believed that Apogee Excerpt 2
`supports the assertion that “one of ordinary skill in the art was well aware of
`generating plate-ready files at locations remote from printing company
`facilities,” as it now asserts (Reh’g Req. 9–10), then it should have, at a
`minimum, stated so in its Reply. Merely including Apogee Excerpt 2 in its
`claim charts to support a different proposition is insufficient to change the
`fact that Petitioner’s Rehearing Request relies on a new reading of Apogee.
`
` 8
`
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`
`IPR2014-00790
`Patent 6,611,349 B1
`
`
`C.
`
`Petitioner Has Not Shown that We Misapprehended its
`Obviousness Grounds
`Petitioner next argues that the Board misapprehended Petitioner’s
`obviousness grounds. Reh’g Req. 11–14. Petitioner asserts that the grounds
`are based on Jebens and Dorfman as the primary references, and relied on
`their “specific system architecture.” Id. at 11. According to Petitioner, our
`decision “mistakenly looks to the secondary reference (Apogee) for
`architectural features relied upon in the primary references Jebens and
`Dorfman, and then suggests that Apogee would have to be modified to
`transmit a plate-ready file to a remote printer.” Id. at 13.
`We disagree that we misapprehended Petitioner’s grounds. On the
`contrary, we understood that Petitioner relied on Jebens and Dorfman to
`teach the separate end user, central service, and printing company facilities.
`Final Dec. 23–24, 31. We noted, however, that neither Jebens nor Dorfman
`teaches generating a plate-ready file as we construed the term above, i.e., a
`file that has gone through prepress processing and that has been RIPed. Id.
`at 26, 32. We further noted that although Apogee teaches generating a plate-
`ready file from a PDF file, “Petitioner does not assert, much less point us to
`any evidence, that a person of ordinary skill in the art would have been
`motivated to combine Jebens and Apogee in such a way that a plate-ready
`file would have been produced at Jebens’ host facility . . . rather than at its
`printing facility.” Id. at 27–28; see also id. at 32. Recognizing that neither
`Jebens nor Dorfman discloses teaches generating a plate-ready file, we
`understand Petitioner’s argument to be that, to meet the claim language,
`Petitioner only needed to show that its proposed combinations teach
`generating at a central service facility files of any type. This is incorrect. It
`
` 9
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`IPR2014-00790
`Patent 6,611,349 B1
`
`is not sufficient that the proposed combination generates any file, e.g., a
`PDF file that has not been RIPed, at a central service facility. RIPing is the
`final, and necessary, step in creating a plate-ready file. Thus, Petitioner
`needed to establish that the file alleged to be the plate-ready file generated at
`a central service facility had been RIPed at the central service facility.
`Petitioner relied on Apogee to teach RIPing a file to create a plate-ready file,
`not to teach that RIPing occurred someplace other than at the printer. That is
`why we determined that Petitioner’s showing was insufficient. Accordingly,
`we are not persuaded that we misapprehended Petitioner’s obviousness
`grounds.
`
`IV. CONCLUSION
`
`For the foregoing reasons, Petitioner’s Request for Rehearing is
`denied.
`
`V. ORDER
`
`For the reasons given, Petitioner’s Request for Rehearing is denied.
`
`
`
`
`10
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`
`IPR2014-00790
`Patent 6,611,349 B1
`
`PETITIONER:
`
`Scott McKeown
`cpdocketmckeown@oblon.com
`
`Michael L. Kiklis
`cpdocketkiklis@oblon.com
`
`
`
`PATENT OWNER:
`
`W. Edward Ramage
`eramage@bakerdonelson.com
`
`
`
`
`
`11
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