Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 9
`Entered: November 28, 2014
`
`
`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
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 9
`Entered: November 28, 2014
`
`
`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
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
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`
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`IPR2014-00790
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`I.
`
`INTRODUCTION
`
`Background
`A.
`Eastman Kodak Co., Agfa Corp., Esko Software BVBA, and
`Heidelberg, USA (collectively, “Petitioner”) filed a Corrected Petition
`(Paper 4, “Pet.”) to institute an inter partes review of claims 1–3 (the
`“challenged claims”) of U.S. Patent No. 6,611,349 B1 (Ex. 1001, “the ’349
`patent”). CTP Innovations, LLC (“Patent Owner”) filed a Preliminary
`Response (Paper 8, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C.
`§ 314.
`Institution of an inter partes review is authorized by statute when “the
`information presented in the petition filed under section 311 and any
`response filed under section 313 shows 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). We determine that
`Petitioner has shown a reasonable likelihood that it would prevail with
`respect to at least one of the claims of the ’349 patent. Accordingly, we
`grant the Petition for inter partes review of the ’349 patent.
`
`Related Proceedings
`B.
`Petitioner discloses that the ’349 patent has been asserted in 49
`infringement actions, most of which are still pending. Pet. 1; Ex. 1002.
`Petitioner also has filed three additional petitions for inter partes review:
`IPR2014-00791, for review of claims 4–14 of the ’349 patent; IPR2014-
`00788, for review of claims 10–20 of U.S. Patent 6,738,155 (“the ’155
`patent”), which shares the ’349 patent’s disclosure; and IPR2014-00789, for
`review of claims 1–9 of the ’155 patent. Pet. 2. The ’349 and ’155 patents
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`were also the subject of two previous petitions for inter partes review, both
`of which were denied. See Printing Indus. of Am. v. CTP Innovations, LLC,
`Case IPR2013-00474 (PTAB Dec. 31, 2013) (Paper 16) (denying petition
`for inter partes review of the ’349 patent); Printing Indus. of Am. v. CTP
`Innovations, LLC, Case IPR2013-00489 (PTAB Dec. 30, 2013) (Paper 15)
`(denying petition for inter partes review of the ’155 patent).
`
`The ’349 Patent
`C.
`The ’349 patent issued on August 26, 2003, from an application filed
`July 30, 1999. Ex. 1001, cover page. The ’349 patent relates to “a system
`and method of providing publishing and printing services via a
`communications network.” Id. at 1:9–10. According to the ’349 patent,
`“[k]ey steps for producing printed materials using a plate process include
`(1) preparing copy elements for reproduction, (2) prepress production,
`(3) platemaking, (4) printing, and (5) binding, finishing and distribution.”
`Id. at 1:12–15. In the first or “design” stage, an end user—e.g., a publisher,
`direct marketer, advertising agency, or corporate communication
`department—uses a desktop publishing program such as “QuarkXpress” to
`design “pages” from image and data files. Id. at 1:16–25. In the prepress
`production stage, the user-created pages (also called “copy”) are
`“transformed into a medium that is reproducible for printing.” Id. at 1:26–
`28. This transformation typically involves typesetting, image capture and
`color correction, file conversion, “RIPing, trapping, proofing, imposition,
`filmsetting, and platesetting.” Id. at 1:29–32.
`“RIPing” is based on the acronym “RIP,” which stands for raster
`image processor. Id. at 7:57–59. A RIP is a hardware or software
`component that “rasterize[s]” an image file—i.e., converts it to a “bitmap”
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`or raster image. Id. “RIPing” is therefore synonymous with rasterizing. A
`bitmap “is a digitized collection of binary pixel information that gives an
`output device, such [as a printer, proofer, or platesetter,] the ability to image
`data to paper, film, or plate.” Id. at 7:59–62. “Proofing” involves creating a
`sample of the finished product that is sent to the end user for approval. Id. at
`1:32–35. After alterations are made, new proofs are sent to the end user;
`once the end user approves the proof, a medium, such as a computer-to-plate
`(CTP) file, is produced and sent to the printer. Id. at 1:35–39. “Imposition”
`involves “the set of pages on a particular plate as well as their positioning
`and orientation.” Id. at 1:38–40. According to the ’349 patent, imposition
`“is particularly important in the creation of booklets or catalogs, where
`pages are positioned using register marks to assist in the stripping, collating,
`and folding of the printed product.” Id. at 1:41–44. A printer makes a plate
`“using the medium created during prepress,” e.g., if a CTP file is used, the
`printer converts the CTP file into a printing plate. Id. at 1:45–48. The
`printer uses the plate on a printing press to reproduce the product; the
`product is bound, finished, and distributed to create the product in its final
`form. Id. at 1:45–51.
`The ’349 patent describes and claims a publishing and printing system
`in which “[s]ystem components are installed at an end user facility, a
`printing company facility, and a central service facility,” each connected to
`the others via a communication network. Id. at 2:31–36, 51–56. Figure 1,
`reproduced below, depicts an embodiment of the claimed invention:
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`Figure 1 depicts end user facility 300, printing company facility 400,
`and central service facility 105 connected together via either private network
`160 or public network 190. Id. at Fig. 1. In this embodiment, end user
`facility 300 comprises a router, desktop computer for page-building
`operations, and a color proofer and black and white printer for high-
`resolution proofing. Id. at 7:38–40, Figs. 1, 2, 5. Printing company facility
`400 comprises a router, a hub, a server, a laser printer, a color plotter, and a
`platesetter, and performs production management, digital plate-making,
`desktop imposition, and press services. Id. at 8:31–33, 9:38–43, Figs.
`1, 4, 5. Central service facility 105 comprises server 110, “hierarchical
`storage management” (HSM) system 120, a “digital content management”
`system 130, local area network (LAN) 150 and communication routing
`device 200. Id. at 5:34–50. “Data may be exchanged between central
`service facility 105 and either private network 160 or public network 190 in
`any suitable format, such as in accordance with the Internet Protocol (IP),
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`the Transmission Control Protocol (TCP), or other known protocols.” Id. at
`5:21–25. An end user can store files in HSM system 120 to reduce storage
`needs at the end user facility. Id. at 7:19–23, 38–40.
`Server 110 uses software capable of performing “open prepress
`interface” (OPI) operations. Id. at 5:62–64. OPI operations include “high
`resolution image swapping.” Id. at 10:31–33. That is, OPI permits a lower
`resolution image file to be used as a proxy for a higher resolution file during
`page-building operations, which is advantageous because the low resolution
`image can be transmitted and manipulated more quickly. Id. at 7:46–49,
`10:44–49. The low resolution images are replaced by the corresponding
`high resolution images before final proofing and printing. Id. at 7:49–51.
`
`Illustrative Claims
`D.
`Claims 1–3 are independent and are drawn to printing and publishing
`systems comprising, inter alia, an end user facility, a central service facility,
`and a printing company facility. Ex. 1001, 21:18–22:30.
`Claims 1–3 are 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-
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`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.
`
`
`2. A printing and publishing system which generates
`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 said file processing further comprises performing
`open prepress interface (OPI) operations.
`
`
`3. 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:
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`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 printing customer[1] facility further comprises a
`communication routing device coupling the printing company
`facility to the communication network, a computer which
`performs imposition operations, and a platesetter which exposes
`a printing plate.
`
`Prior Art Relied Upon
`E.
`Petitioner relies upon the following prior-art references:
`
`US 6,321,231
`WO 98/08176
`
`Nov. 20, 2001
`Feb. 26, 1998
`
`Ex. 1006
`Ex. 1007
`
`Jebens
`Dorfman
`
`Agfa Apogee, The PDF-based Production System (1998) (“Apogee”)
`(Ex. 1008);
`Apple OPI White Paper (1995) (“OPI White Paper”) (Ex. 1009);
`Mattias Andersson et al., PDF PRINTING AND PUBLISHING, THE NEXT
`REVOLUTION AFTER GUTENBERG (Micro Publishing Press 1997)
`(“Andersson”) (Ex. 1010);
`
`1 “[P]rinting customer facility” should probably read “printing company
`facility” to conform to the term’s antecedent.
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`Richard M. Adams II et al., COMPUTER-TO-PLATE: AUTOMATING THE
`PRINTING INDUSTRY (Graphic Arts Technical Foundation 1996) (Ex. 1011)
`(“Adams II”).
`
`Asserted Grounds of Unpatentability
`F.
`Petitioner contends that the challenged claims are unpatentable under
`35 U.S.C. § 103 based on the following specific grounds (Pet. 6–7):
`Reference[s]
`Basis
`Claims Challenged
`Jebens, Apogee, and OPI White
`§ 103
`1–3
`Paper
`Dorfman, Apogee, and Andersson
`§ 103
`1 and 2
`Dorfman, Apogee, Andersson,
`§ 103
`3
`and OPI White Paper
`
`
`
`II. ANALYSIS
`
`A.
`
`Preliminary Issues
`1.
`The Prior Petition
`Patent Owner argues that we should not consider this Petition because
`we already considered, and denied, a petition for inter partes review of the
`’349 patent: Printing Indus. of Am. v. CTP Innovations, LLC, Case
`IPR2013-00474 (PTAB) (“the ’474 IPR”). Prelim. Resp. 16–18 (citing Ex.
`1004). Patent Owner contends that the present Petition represents a “second
`bite at the apple,” or a “do over,” of the ’474 IPR, because it relies on “the
`same or equivalent” prior art as the ’474 IPR. Id. at 16–17. First, Patent
`Owner notes that two of the prior-art references asserted here, Dorfman and
`Andersson, were also asserted in the ’474 IPR. Id. at 17. Second, Patent
`Owner alleges that Apogee is equivalent to “Lucivero,” a reference asserted
`in the ’474 IPR. Id. Finally, Patent Owner alleges that OPI White Paper is
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`equivalent to “Sands,” another reference asserted in the ’474 IPR.
`Id. at 17–18.
`Patent Owner overstates the overlap between this proceeding and the
`’474 IPR. First, Patent Owner does not adequately support its contention
`that Apogee and OPI White Paper are equivalent to Lucivero and Sands,
`respectively; nor is such equivalence self-evident. The fact that Apogee
`discusses products sold by the same entity that owns Lucivero falls far short
`of establishing that Apogee and Lucivero are equivalent. Patent Owner
`provides no support for the alleged equivalence between OPI White Paper
`and Sands.
`Second, the fact that Dorfman and Andersson are cited in both
`proceedings does not establish that we are duplicating our efforts in
`considering the Petition. Unlike here, the petitioner in the ‘474 IPR did not
`rely on either Dorfman or Andersson in arguing that claims 1–3—the claims
`at issue in this proceeding—are unpatentable. Ex. 1004, 7–8.
`2.
`Real-Parties-In-Interest
`Patent Owner contends that Petitioner failed to comply with 37 C.F.R.
`§ 42.8(b)(1) because it failed to identify all real-parties-in-interest. Prelim.
`Resp. 27–31. According to Patent Owner, all of Petitioner’s customers are
`real-parties-in-interest because Petitioner admitted that it filed the Petition
`on their behalf. Id. at 30. Patent Owner relies on a press release in which
`Petitioner states that “[w]e feel it is important to take this action [file
`petitions for inter partes review of the ’349 patent] to support our customers
`from these frivolous claims [of infringement].” Ex. 2001, 1. Patent Owner
`argues that “the Board should require Petitioner[] to amend the Petition to
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`list all customers [as real-parties-in-interest] or, in the alternative, should
`dismiss the Petition in its entirety.” Prelim. Resp. 31.
`On this record, we are not persuaded that any of Petitioner’s
`customers is a real-party-in-interest in this proceeding. A determination
`whether a non-party to an inter partes review is a real-party-in-interest is a
`“highly fact-dependent question,” based on whether the non-party “exercised
`or could have exercised control over a party’s participation in a proceeding.”
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759–60 (Aug.
`14, 2012). Petitioner’s filing of the present petition “to support [its]
`customers” does not, by itself, mean that its customers exercise control over
`Petitioner’s actions in this proceeding.
`Patent Owner also seems to argue that Petitioner filed the Petition on
`behalf of all of the over 10,000 members of the Printing Industries of
`America (“PIA”), the petitioner in the ’474 IPR. For example, Patent Owner
`notes that Thomas Topp, a senior vice president of Heidelberg, USA, one of
`the Petitioner entities, is a member of the board of directors of PIA. Prelim.
`Resp. 30. Patent Owner also notes that Petitioner entities Heidelberg, Agfa
`and Eastman Kodak are substantial donors to PIA. Id. But, again,
`Petitioner’s financial and other support of PIA does not, by itself, mean that
`either PIA or its members controls Petitioner’s actions in this proceeding.
`Therefore, on the current record, we are not persuaded that Petitioner failed
`to identify any real-parties-in-interest.
`
`Claim Construction
`B.
`The Board gives claim terms in unexpired patents their broadest
`reasonable construction in light of the specification in which the terms
`appear. 37 C.F.R. § 100(b). Claim terms are given their ordinary and
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`customary meaning as would be understood by one of ordinary skill in the
`art in the context of the entire disclosure. In re Translogic Tech., Inc., 504
`F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term
`must be set forth in the specification with reasonable clarity, deliberateness,
`and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`Petitioner proposes constructions for the following terms: “data
`provided remotely in real time,” “plate-ready file,” “end user facility,”
`“central service facility,” “printing company facility,” and “communication
`routing device.” Pet. 20–22. Patent Owner proposes alternative
`constructions for these terms, as well as a construction for “communication
`network.” Prelim. Resp. 7–15. For purposes of this Decision, we need only
`address “real time,” and, in particular, whether this phrase limits the scope of
`the claims.
`The term “real time” appears in the preamble of each of independent
`claims 1–3, as follows: “[a] printing and publishing system which generates
`a printing plate-ready file from data provided remotely in real time using a
`communication network.” Ex. 1001, 21:18–20, 45–47, 22:3–5. Petitioner
`contends that under the broadest reasonable interpretation, data provided
`remotely “in real time using a communication network” should be
`interpreted “as encompassing the electronic transmission of data, images,
`files etc. over a communication network.” Pet. 20. According to Petitioner,
`this interpretation is consistent with Patent Owner’s position taken in a civil
`action asserting infringement of the ’349 patent, in which Patent Owner
`distinguished providing services to a remote client “in real time using a
`communication network,” from using mail or express carrier to send disks
`containing pages to be printed or proofed. Id. (citing Ex. 1012 ¶¶ 11, 12).
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`Patent Owner disagrees with Petitioner’s interpretation, arguing that it
`“ignores the term ‘real time,’ or equates it to simply mean any electronic
`transmission over a communication network.” Prelim. Resp. 7. According
`to Patent Owner, the Specification makes clear that providing services in
`“real time” requires more than transmission over a communication network,
`because it notes that a prior art system, “WAM!NET,” transmits data over a
`communication network, and yet, according to the Specification, “document
`delivery by WAM!NET is not done in real time.” Id. at 7–8 (citing Ex.
`1001, 6:55–65). Patent Owner proposes interpreting “real time” to mean
`“the immediate processing of input,” based on dictionary definitions. Id. at
`8–9 (citing Ex. 2010, 2011).
`As noted above, the term “real time” appears in the preamble of each
`of the claims at issue. Our reviewing court has stated that “[g]enerally . . .
`the preamble does not limit the claims.” Am. Med. Sys., Inc. v. Biolitec, Inc.,
`618 F.3d 1354, 1358 (Fed. Cir. 2010) (internal citation omitted). While “the
`preamble may be construed as limiting if it recites essential structure or
`steps, or if it is necessary to give life, meaning, and vitality to the claim,” it
`is not separately limiting “when the claim body describes a structurally
`complete invention such that deletion of the preamble phrase does not affect
`the structure or steps of the claimed invention.” Id. at 1358–59 (internal
`citations and quotations omitted). Here, the preamble does not recite any
`essential steps, affect the steps in the body of the claim, or provide a
`necessary antecedent for any terms in the steps. Thus, it would appear that
`“the claim drafters did not rely on the preamble language to define or refine
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`the scope of the asserted claims.” Id. at 1359 (citation omitted).2 Thus, we
`determine, for purposes of this decision and on the present record, that the
`preambles in the claims at issue, including the term “real time,” do not limit
`the scope of the claims.
`The discussion of WAM!NET in the Specification does not persuade
`us otherwise. That discussion does not provide sufficient information about
`WAM!NET for us to make any useful inferences regarding the meaning of
`“real time.” For example, the Specification does not explain the specific
`“documents” that WAM!NET is delivering, from whom and to whom these
`documents are being delivered, the specific method of “delivery,” and why
`that method of delivery is not done in “real time.”
`
`Claims 1–3 — Jebens, Apogee, and OPI White Paper
`C.
`Independent claims 1–3 are each drawn to a printing and publishing
`system that generates a printing plate-ready file. Petitioner asserts that claim
`1–3 are unpatentable under 35 U.S.C. § 103(a) as obvious over Jebens,
`Apogee, and OPI White Paper. Pet. 23–39.
`
`
`2 To the extent that the “generat[ing] a plate-ready file from data provided
`remotely in real time using a communication network” does limit the scope
`of the claims, it would only require that the data be provided remotely using
`a communication network. The phrase “generat[ing] a plate-ready file from
`data provided remotely in real time” is best read to refer to the end result of
`using a telecommunication network, rather than an additional limitation
`beyond using a telecommunication network. By analogy, in a preamble
`reading “providing hot food using a microwave oven,” providing hot food is
`the end result of using a microwave oven, and does not, by itself, require
`more than using a microwave oven.
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`Jebens
`1.
`Jebens describes “a digital image management and order delivery
`system.” Ex. 1006, 2:13–14. The system provides a centralized, searchable
`database of digital images that can be used and modified by authorized
`users. Id. at 4:54–56. The system also serves as a job order developer and
`conduit for routing files from a client, such as an advertising agency, to a
`printer. Id. at 4:60–62. Figure 1, reproduced below, illustrates Jebens’s
`invention.
`
`
`Figure 1 depicts an embodiment of Jebens’s data management and
`work-order delivery system. Id. at 4:20–23. The system comprises host
`system 10 in communication with a variety of users, such as browsers and
`client orderers 12, image providers 14, and suppliers 16. Id. at 6:52–65.
`The host system software includes, inter alia, an image database that
`archives low and high resolution copies of digital image files. Id. at 8:9–13.
`The system is “ideally suited for facilitating publication and the like.” Id. at
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`4:66–67. Image providers 14 may include a corporation that stores digital
`images of its products on host system 10 to more efficiently use its in-house
`computer storage facilities. Id. at 4:67–5:5, 6:55–60. Browsers and client
`orderers 12 may include an advertising agency that the corporation hires to
`create a brochure using the stored images; and suppliers 16 may include the
`printer that will print the finished brochure. Id. at 5:5–10, 6:54–65. To use
`the system, the corporation gives the agency information to access the host
`system; the agency then searches the host system and downloads low-
`resolution copies of desired images, creates the brochure using the low-
`resolution copies, and sends the brochure back to the host system. Id. at
`5:11–20. The host system replaces the low-resolution copies with high-
`resolution copies of the images, and electronically routes the brochure with
`the high-resolution images to a printer per the agency’s instructions. Id. at
`5:19–20. Communication between host system 10 and users 12, 14, and 16
`“can be effected by any known means of connectivity,” such as “through
`local area networks or wide area networks,” or “hardwired to one another as
`an intranet.” Id. at 6:66–7:4–20.
`2.
`Apogee
`Apogee describes the Agfa Apogee print-production system. Ex.
`1008, 1. Content can be created in any format and output to Apogee in
`either PostScript or PDF format; Apogee normalizes incoming files to PDF
`“to guarantee complete predictability and compatibility.” Id. at 3–4. The
`PDF files are stored as individual PDF pages and become “Digital Masters”
`to create all production versions of the document and to provide a version
`that can be proofed and edited remotely. Id. at 4, 6. For a specific print job,
`Apogee collects the appropriate pages, automatically imposes the pages into
`
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`a “digital flat,” and rasterizes it for the selected output device (e.g., an image
`setter or plate setter). Id. at 6. The result is a “Print Image File” (PIF) that
`“contains all the dots that will appear on the film or plate.” Id.
`3.
`OPI White Paper
`OPI White Paper describes the OPI “image swapping” process. Ex.
`1009, 10. According to OPI White Paper, “image swapping enables a page
`designer to work with a small screen-resolution picture file during page
`design and then rely on the intervention of the OPI server to swap it out for
`the high-resolution, color-separated file necessary to render the picture in
`print.” Id. at 10, 12, Fig. 2d. OPI White Paper also describes the typical
`manner in which the low-resolution image files, or “preview files,” are
`generated: a user saves a high-resolution file to a particular folder on the OPI
`server, which triggers a routine that creates a preview file and puts it in a
`different folder. Id. at 12. A particular implementation of the OPI process at
`a printing facility is also described. Id. at 31–32, Fig. 4c.
`4.
`Analysis
`We have reviewed Petitioner’s and Patent Owner’s contentions and
`arguments regarding the combination of Jebens, Apogee, and OPI White
`Paper, and are persuaded, on the current record, that there is a reasonable
`likelihood that Petitioner would prevail in showing that claims 1–3 are
`unpatentable over that combination. For example, with respect to
`independent claim 1, we understand Petitioner’s position to be that (1)
`Jebens’s browsers and client orderers 12 correspond to the claimed end user
`facility that performs page-building operations, including the design and
`construction of pages from images, text, and data available via the
`communication network; (2) Jebens’s host system 10 corresponds to the
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`claimed central service facility that provides storage, file processing, remote
`access, and the claimed content management operations; and (3) Jebens’s
`suppliers 16 corresponds to the claimed printing company facility. Pet. 23–
`24, 30–39.
`Petitioner relies on Apogee to teach generating a plate-ready file from
`pages designed at the end-user facility. Pet. 26, 33–34. Petitioner contends
`that producing plate-ready files is necessary to make plates for offset
`printing, so “one of ordinary skill in the art would have been motivated to
`incorporate the teachings of Apogee into the Jebens printing system to allow
`for a printing facility to produce a printing plate for offset printing.” Id. at
`26–27 (citing Ex. 1022 ¶ 95).
`Petitioner relies on OPI White Paper for its teaching of a network
`architecture having a proofer. Id. at 27–28 (citing Ex. 1009, Fig. 3c).
`Petitioner also refers to Andersson for its teaching that “[a] major trend is
`that of remote proofing, where an inkjet or dye sublimation or other color
`proofer is physically installed in a customer location.” Id. at 27 (quoting Ex.
`1010, 44).3 According to Petitioner, a person of ordinary skill in the art
`would have been motivated to “add a proofer to the end user facility to avoid
`the delays and costs associated with providing printed samples directly to the
`end user, and to leverage the flexibility associated with a plate-ready file that
`can be communicated to the end user quickly and cost effectively via a
`communication network.” Id. at 27–28. Petitioner also relies on OPI White
`Paper for its disclosure regarding imposition. Id. at 28. Petitioner contends
`that “[i]f offset printing were the desired output of the printing system
`
`3 This citation is to Andersson’s original page number rather than to
`Petitioner’s supplemental page number.
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`architecture described by Jebens, a person of ordinary skill would have
`known that imposition must occur to place multiple pages on a single
`printing plate, thereby saving resources and time that would be wasted if a
`single printing plate were required for each and every page.” Id.
`Patent Owner disputes that Jebens, Apogee, and OPI White Paper
`render claims 1–3 obvious. Prelim. Resp. 19–23. First, Patent Owner
`argues that Jebens “does not disclose a real time system as described in the
`’349 Patent, because the ’349 Patent specification discloses another prior art
`system with more network connectivity than Jebens, yet states that this
`more-connected system is not real time.” Id. at 19. The prior art system to
`which Patent Owner refers is the WAM!NET private communication
`network discussed above in the context of discussing the “real time” claim
`term. This argument is based on Patent Owner’s position that the term “real
`time” independently limits the scope of the claims. As discussed above, we
`disagree with that position. Accordingly, this argument is not persuasive.
`Second, Patent Owner argues that “Jebens system clearly does not
`generate a plate-ready file at a central service facility.” Prelim. Resp. 22.
`Rather, Patent Owner contends, Jebens’s central facility “simply collects
`data and sends it elsewhere.” Id. Patent Owner also contends that Apogee
`does not cure this defect because “Apogee does not address generating a
`printing plate-ready file from data provided remotely in real time using a
`communication network or generating a plate-ready file at a central service
`facility.” Id.
`We do not find this argument persuasive. First, “generat[ing] a
`printing plate-ready file from data provided remotely in real time using a
`communication network” is part of the preamble for all three claims at issue,
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`and therefore, as discussed above, does not independently limit the claims.
`Second, Petitioner does not rely on either Jebens or Apogee individually to
`teach a central service facility that generates a plate-ready file from pages
`d
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