throbber
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
`
`U.S. Patent No. 6,611,349
`
`____________
`
`
`
`PETITIONERS’ REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`

`
`Case IPR2014-00790
`Petitioners’ Request for Rehearing
`SUMMARY OF ISSUES FOR REHEARING
`
`I.
`
`Petitioners Eastman Kodak Company, Agfa Corporation, Esko Software
`
`BVBA, and Heidelberg, USA, Inc. (“Petitioners”) request rehearing under 37
`
`C.F.R. § 42.71(d) of the Board’s Final Written Decision (“Decision,” Paper No.
`
`40) finding that Petitioners have not demonstrated that claims 1-3 of U.S. Patent
`
`No. 6,611,349 (“the ’349 patent”) are unpatentable.
`
`Independent claims 1-3 require, inter alia, a “central service facility” that
`
`“generat[es] a plate-ready file from pages designed at said end user facility....”
`
`There is no dispute that the Apogee reference teaches the generation of a plate-
`
`ready file—what Apogee calls a “PIF,” which is the file that is the output of
`
`Apogee’s PDF RIP Process. (Ex. 1008 at 6.) Rather, the sole reason the Board
`
`ruled in favor of Patent Owner was due to the mistaken belief that there is no
`
`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.” (Decision at
`
`27-28, 32-33.)
`
`In reaching this conclusion, the Board overlooked directly contradictory
`
`evidence in the trial record, particularly the cited portion of the Apogee reference
`
`itself. For the element of “generating a plate-ready file from pages designed at said
`
`end user facility,” Petitioners relied upon Apogee’s teaching of PDF RIPs, which
`
`1
`
`

`
`Case IPR2014-00790
`Petitioners’ Request for Rehearing
`
`
`are undisputed to be “plate-ready files” within the meaning of the ’349 patent.
`
`Importantly, Apogee expressly describes these plate-ready files as being sent to a
`
`remote printing facility “in another town.” (See, e.g., Petition1 at 33-34, 51-52,
`
`citing Ex. 1008 at 6-7.) On page 7, Apogee describes its PrintDrive system (which
`
`receives the plate-ready files after they have been created by the PDF RIP process)
`
`as “allow[ing] you to physically separate the rendering from the actual plate
`
`production, so your PDF RIP can be in the desktop department and the PrintDrive
`
`can sit next to the output device, even in another town.” (Petition at 33-34, 51-
`
`52, citing Ex. 1008 at 7, emphasis added.) Petitioners’ claim charts, accepted by
`
`the Board as demonstrating a reasonable likelihood of prevailing on the merits,
`
`directed Patent Owner and the Board to this precise portion of Apogee. (See
`
`Petition at 33-34, 36, 38, 51-52, 54, and 58.) Patent Owner failed to rebut this
`
`evidentiary showing that Apogee employs a printing facility remote from the
`
`facility that performs plate-ready file processing, with the plate-ready files then
`
`being sent from the file processing facility (i.e., Jeben’s/Dorfman’s central service
`
`facility) to the remote printing facility. The Board’s sole reason for not holding
`
`claims 1-3 unpatentable overlooked this key aspect of the record.
`
`Lastly, Petitioners’ obviousness grounds rely on the system architecture
`
`from Jebens and Dorfman as primary references, not Apogee. There is no doubt
`
`
`1 Citations to the Petition are to the “corrected” Petition, Paper 4.
`2
`
`

`
`Case IPR2014-00790
`Petitioners’ Request for Rehearing
`
`
`(or dispute) that the central service facility of Jebens routes to-be-printed files from
`
`a remote client, through its host or central service facility, to a remote printing
`
`facility. The Board agreed with the architectural framework of the Jebens Ground
`
`in its final written decision. (Decision at 13-14, 23-24.) The same holds true for
`
`the Dorfman grounds. (Decision at 29-30.) When Jebens/Dorfman is modified
`
`with the PDF processing teachings of Apogee—as applied in the grounds accepted
`
`by the Board—the to-be-printed file routed from the central service facility to the
`
`remote printing facility is the plate-ready file of Apogee. Yet, the Board’s
`
`Decision mistakenly looks to the secondary reference (Apogee) for architectural
`
`structure relied upon in the primary references, and then suggests that Apogee, not
`
`the primary references, would have to be modified to produce a plate-ready file at a
`
`central service facility, rather than at a printing facility.
`
`However, the issue for obviousness is not whether Apogee needs to be
`
`modified, but whether one of ordinary skill would have been motivated to modify
`
`Jebens/Dorfman to include the PDF processing teachings of Apogee at the
`
`disclosed central service facilities of the prior art. As to this point, and as
`
`explained below, the Petition and supporting evidence provided an unrebutted
`
`motivation of why the PDF workflow of Apogee and accompanying plate-ready
`
`file were desirable and would have been an obvious modification to the
`
`Jebens/Dorfman central service architecture. (See Petition at 25-27 and 43-45.)
`
`3
`
`

`
`Case IPR2014-00790
`Petitioners’ Request for Rehearing
`
`
`Thus, even if Apogee’s explicit teaching of remote printing could be ignored,
`
`which it cannot, the Board’s Decision misapprehends the trial grounds.
`
`Apogee plainly employs a remote printing facility in “another town” from
`
`the facility that performs plate-ready file processing (i.e., the central service
`
`facilities of Jebens or Dorfman), and Petitioners explicitly relied on this teaching in
`
`the Petition. The Board has overlooked the record in this proceeding and
`
`misapprehended the trial grounds. For these reasons, Petitioners respectfully
`
`request that the Board grant rehearing and cancel claims 1-3 of the ’349 patent.
`
`II. LEGAL STANDARDS
`
`“A party dissatisfied with a decision may file a request for rehearing,
`
`without prior authorization from the Board.” 37 C.F.R. § 42.71(d). “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.” Id. Here, the Board overlooked Apogee’s
`
`express teaching that one of ordinary skill would have, and in fact did, consider
`
`generating a plate-ready file at locations remote from the printing company
`
`facility, such as the central service facility of Jebens or Dorfman. Similarly, the
`
`Board misapprehended Petitioners’ proposed grounds of unpatentability, relying on
`
`the system structure of Apogee when the proposed grounds were based upon the
`
`system architecture of the primary references Jebens and Dorfman.
`
`4
`
`

`
`
`
`III. ARGUMENT
`
`Case IPR2014-00790
`Petitioners’ Request for Rehearing
`
`
`
`A. The Board Overlooked Explicit Evidence That Apogee
`Discloses Generating Plate Ready Files At Facilities Remote
`From The Printing Facility
`
`The sole reason that claims 1-3 of the ’349 patent were held not unpatentable
`
`
`
`is because Petitioners allegedly provided no 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.” (Decision at 27-28, 32-33.) This rationale is
`
`incorrect and directly refuted by Apogee and even by the ’349 patent’s description
`
`of known practices in the art.
`
`Before a plate-ready file can be provided to a printing company facility as
`
`specified in claims 1-3, the file must be generated. There is no dispute that Apogee
`
`teaches the generation of a plate-ready file—what Apogee refers to as the “PIF,”
`
`which is the output of the “PDF RIP” process described in Apogee. Specifically,
`
`Petitioners’ claim charts point to Apogee as disclosing the generation of a plate-
`
`ready file through the PDF RIP process. (See Petition at 33-34, 36, 38, 51-52, 54,
`
`and 58, citing Ex. 1008 at 6-7.) Patent Owner and its declarant agree that the PDF
`
`RIP process in Apogee creates the plate-ready file. (See Decision at 24, citing PO
`
`Resp. at 32 and Ex. 2014 ¶ 24.)
`
`5
`
`

`
`
`
`Case IPR2014-00790
`Petitioners’ Request for Rehearing
`
`In opposing the Petition, Patent Owner urged an interpretation of the claims
`
`requiring “offsite” file processing, asserting that a “POSITA would consider [the
`
`PDF RIP] process to be occurring at the jobber or supplier, i.e., at a printing
`
`company facility” and not the central service facility of Jebens. (PO Resp. at 31-
`
`32, citing Ex. 2014 ¶ 24.) The Board agreed with Patent Owner’s argument,
`
`concluding that Petitioners did not provide “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.” (Decision at 27-28.)
`
`As noted above, the parties and the parties’ declarants agree that the Apogee
`
`PDF RIP process is the software component of the Apogee system that generates a
`
`plate-ready file. (Decision at 24, citing PO Resp. at 32 and Ex. 2014 ¶ 24.) In the
`
`Petition, Petitioners relied specifically on this PDF RIP process and based their
`
`unpatentability arguments on the processing flow of Apogee’s PIF plate-ready file
`
`from the PDF RIP process to a remote printing company facility. (See Petition at
`
`33-34, 36, 38, 51-52, 54, and 58, citing Ex. 1008 at 6-7.) After a plate-ready file is
`
`generated by the PDF RIP process, the “Apogee PrintDrive manages the Print
`
`Image Files (PIF)” to output “to a variety of output devices including Agfa
`
`imagesetters, proofers, and platesetters.” (Petition at 33-34, 36, 38, 51-52, 54, and
`
`6
`
`

`
`Case IPR2014-00790
`Petitioners’ Request for Rehearing
`
`
`58, citing Ex. 1008 at 6-7.) On the same two pages consistently relied on by
`
`Petitioners (pages 6 and 7), Apogee goes on to explain that
`
`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
`department and the PrintDrive can sit next to the output device, even in
`another town.
`(Ex. 1008 at 7, Petition at 33-34, 51-52, emphasis added.) Aside from the
`
`necessity to read the content of these two pages for technical context, the exact
`
`“another town” sentence quoted above is explicitly reproduced in Petitioners’
`
`charts for claims 1-3. (See, e.g., Petition at 33-34 (excerpts of pages 33-34
`
`reproduced below), 51-52.)
`
`
`
`*****
`
`7
`
`

`
`
`
`
`
`Case IPR2014-00790
`Petitioners’ Request for Rehearing
`
`
`
`*****
`
`
`
`
`
`These claim charts cite the very passage of Apogee that forms the basis of
`
`Petitioners’ rehearing request and show plainly that one of ordinary skill would
`
`have combined Jebens and Apogee in such a way that the plate-ready file would
`
`have been produced at Jeben’s central service facility (i.e., at a location remote
`
`from the printing facility), and then transmitted to Jeben’s remote printing facility.
`
`The same holds true for the Dorfman grounds. Importantly, Patent Owner never
`
`rebutted the trial ground in this regard and, thus, Apogee’s teachings stand
`
`uncontested in the record.
`
`Similarly, the workflow schematic spanning pages 6 and 7 of Apogee shows
`
`the Apogee PDF RIP process and the Apogee PrintDrive located at discrete
`
`locations, connected over a TCP/IP network, thereby routing the PIF, or plate-
`
`ready file, from a remote PDF RIP (e.g., at Jebens or Dorfman’s central service
`
`facility) to a remote printing company facility. (Petition at 33-34, 51-52, citing
`
`Ex. 1008 at 6-7.) Indeed, this teaching is also corroborated by the ’349 patent
`
`itself, which explains in its Background of the Invention Section that remote
`
`8
`
`

`
`Case IPR2014-00790
`Petitioners’ Request for Rehearing
`
`
`printing was known long prior to filing the ’349 patent, namely, that “[o]nce
`
`approval of the proof is given by the end user, a medium, such as a computer to
`
`plate (CTP) file [i.e., plate-ready file] is produced and sent to the printer.” (Ex.
`
`1001 at 1:36-38, emphasis added.) Clearly the end user is remote to the printer,
`
`which corroborates the generation of known CTP plate-ready files at locations
`
`other than the printing facility.2 See also Petition at 8-11; In re Morsa, 803 F.3d
`
`1374, 1378 (Fed. Cir. 2015) (citing approvingly to the Board’s use of the
`
`specification of the patent under examination to establish the knowledge of a
`
`person of ordinary skill in the art).
`
`
`
`Thus, contrary to the Board’s sole rationale for not finding claims 1-3
`
`unpatentable, there is significant, documentary evidence of record—unrebutted,
`
`and relied on by Petitioners in their claim charts—that one of ordinary skill was
`
`well aware of generating plate-ready files at locations remote from the printing
`
`
`
`2 As other portions of the ’349 patent’s prior art background section indicate, the
`
`referenced “printer” was known to be a separate business or entity located at an
`
`offsite, remote location. For instance, the patent discusses the “printer” who is sent
`
`the plate-ready file as the entity that, e.g., “manufactures a printing plate,”
`
`“converts the CTP file into a printing plate,” and “uses the printing plate to create
`
`the printed product.” (Ex. 1001 at 1:45-51.)
`
`9
`
`

`
`Case IPR2014-00790
`Petitioners’ Request for Rehearing
`
`
`company facility (i.e., in another town), and would have combined Jebens and
`
`Apogee (or Dorfman and Apogee) in such a way that the plate-ready file would
`
`have been produced at Jeben’s (or Dorfman’s) central service facility. One benefit
`
`of remotely generating the plate-ready file at a central service facility was also
`
`explicitly explained by Apogee and relied on by Petitioners: to allow multiple
`
`physically separate PDF RIP processes to feed a single printing system at a
`
`printing company facility (such as the PrintDrive disclosed in Apogee), ensuring
`
`that the platesetter, for example, is running at full capacity. (Petition at 33-34, 51-
`
`52, citing Ex. 1008 at 6-7.)
`
`Further, Petitioners’ expert testified that, as a matter of technical
`
`implementation, one of ordinary skill would have known that plate-ready files
`
`were either produced at a location remote from, or local to, the printer. In other
`
`words, there was a known design choice of performing this file processing at either
`
`a central service facility or a printing company facility (see Reply at 6-7), and
`
`pages 6 and 7 of Apogee consistently relied upon by Petitioners confirm both
`
`options. The Board misapprehended Petitioners’ statement in its Reply that “one
`
`of ordinary skill could predictably implement Apogee at a central service facility”
`
`as an inadequate motivation to combine argument. Rather, Petitioners’ Reply
`
`statement was simply a summary of its Petition grounds, already accepted by the
`
`Board, which explicitly referenced Apogee’s remote printing and the preceding
`
`10
`
`

`
`Case IPR2014-00790
`Petitioners’ Request for Rehearing
`
`
`generation/processing of the PIF plate-ready file at a central service facility, for
`
`example, or alternatively at the printing company facility. (Petition at 33-34, 51-
`
`52, citing Ex. 1008 at 6-7.) Because Apogee uses the same remote printing
`
`company facility arrangement as the Jebens/Dorfman references, there is simply no
`
`need to modify the trial grounds in this regard.
`
`
`
`
`
`The requirements of 37 C.F.R. § 42.71(d) have been met. Petitioners
`
`respectfully request that the Board institute a rehearing to cancel claims 1-3 of the
`
`’349 patent.
`
`B. The Board Misapprehended Petitioners’ Obviousness
`Grounds, Treating Apogee, Rather Than Jebens Or Dorfman,
`As The Primary References
`
`Petitioners’ grounds of unpatentability are based upon Jebens and Dorfman
`
`as primary references. In this manner, Petitioners rely upon the specific system
`
`architecture of Jebens and Dorfman in the proposed grounds, and not the precise
`
`architecture of Apogee. For example, Petitioners’ rely on Jeben’s disclosure that
`
`the central service facility, or host system, routes to-be-printed files from a remote
`
`client to a remote publishing entity such as a printer. (See Petition at 23-24 (citing
`
`Ex. 1006 at 2:64−3:10; 5:1-22), 30-31 (claim 1 preamble and claim 1 element [a]),
`
`33 (claim 1 element [d]), 34 (claim 1 element [e]).) There is no dispute that Jebens
`
`operates in this manner. (Decision at 13-14.) The same analysis applies to
`
`Dorfman’s central service facility (PDF builder 6 and memory 4), which routes to-
`
`11
`
`

`
`Case IPR2014-00790
`Petitioners’ Request for Rehearing
`
`
`be-printed files from a remote client to a commercial printer. (See Petition at 47
`
`(claim 1 element [a]), 49 (claim 1 element [c]), 51 (claim 1 element [d]), 52 (claim
`
`1 element [e]); Decision at 29-30.) When combined with Apogee, the to-be-
`
`printed file is the plate-ready file produced by Apogee, which is then routed from
`
`Jeben’s host system or central service facility to a “publishing entity such as a
`
`printer, where the finalized brochure would be published,” or to Dorfman’s
`
`commercial printer from Dorfman’s central service facility (PDF builder 6 and
`
`memory 4). (Petition at 34 (claim 1 element [e]); Petition at 52 (claim 1 element
`
`[e]).)
`
`Petitioners provided an unrebutted rationale, supported by the declaration of
`
`Prof. Lawler, for why one of ordinary skill in the art would have been motivated to
`
`modify the architecture of the primary references with the PDF workflow and
`
`plate-ready file of Apogee; namely, the known and obvious need to include a
`
`rasterization process—such as the PDF RIP process of Apogee (by which plate-
`
`ready files are generated)—into a printing prepress workflow such as that disclosed
`
`by Jebens or Dorfman. (See Petition at 25-27 and 43-45.) Because Apogee uses
`
`the same remote printing facility as Jebens/Dorfman from where the plate-ready
`
`file processing occurs, no modifications of the references are necessary to generate
`
`a plate-ready file at the central service facility of Jebens or Dorfman, and nothing
`
`else is required to cancel claims 1-3 as unpatentable.
`
`12
`
`

`
`
`
`Case IPR2014-00790
`Petitioners’ Request for Rehearing
`
`The Board’s 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 generate a
`
`plate-ready file at a central service facility remote from a printing facility. This is
`
`incorrect for two reasons. First, as discussed above, Petitioners’ proposed
`
`combinations and hypothetical systems are based upon Jebens or Dorfman as
`
`primary references, both of which route to-be-printed files from a central service
`
`facility to a remote printing facility. There is no modification of the primary
`
`reference/system required to route a to-be-printed file (i.e., the plate-ready file of
`
`Apogee) from a central service facility to a printing company facility as claimed.
`
`Stated differently, the obviousness inquiry does not ask “whether [Jebens
`
`and Apogee, or Dorfman and Apogee] could be physically combined but whether
`
`the claimed inventions are rendered obvious by the teachings of the prior art as a
`
`whole.” In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc); see also In re
`
`Keller, 642 F.2d 413, 425 (CCPA 1981) (stating “[t]he test for obviousness is not
`
`whether the features of a secondary reference may be bodily incorporated into the
`
`structure of the primary reference”); M.P.E.P. § 2145(III). Similarly,
`
`nonobviousness cannot be established by attacking the references individually
`
`when a challenge is predicated upon a combination of prior art disclosures. See In
`
`re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Because both Jebens
`
`13
`
`

`
`Case IPR2014-00790
`Petitioners’ Request for Rehearing
`
`
`and Dorfman are based on, and explicitly disclose, a distributed system
`
`architecture where to-be-printed files are routed from a central service facility to a
`
`printing company facility, claims 1-3 are unpatentable as obvious when combined
`
`with Apogee’s teaching of a plate-ready file.
`
`Second, even if physically combined, Apogee explicitly teaches generating a
`
`plate-ready file at a processing location that is geographically remote from a
`
`printer (such as the central service facility of Jebens or Dorfman), and then routing
`
`that file over a communication network to a remote printing facility “in another
`
`town.” That is, even if considering the system architecture of Apogee were proper,
`
`which it is not, physical incorporation of Apogee into the primary references would
`
`also result in the claims of the ’349 patent because Apogee teaches the same
`
`architecture: a remote printing facility where the printer is located “in another
`
`town” from the central service facility generating the plate-ready file.
`
`IV. CONCLUSION
`
`For the reasons set forth above, Petitioners respectfully request that the
`
`Board institute rehearing and cancel claims 1-3 of the ’349 patent.
`
`14
`
`
`
`

`
`
`
`
`Dated: December 28, 2015
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2014-00790
`Petitioners’ Request for Rehearing
`Respectfully submitted,
`Oblon, McClelland, Maier &
`Neustadt, LLP
`
`
`
`
`/Scott A. McKeown/
`Scott A. McKeown (Reg. No. 42,866)
`Attorney for Petitioners
`EASTMAN KODAK COMPANY,
`AGFA CORPORATION, ESKO
`SOFTWARE BVBA, and
`HEIDELBERG, USA, INC.
`
`15
`
`

`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies service of
`
`PETITIONERS’ REQUEST FOR REHEARING UNDER 37 C.F.R. § 42.71(d) on
`
`the counsel of record for the Patent Owner by filing this document through the
`
`Patent Review Processing System as well as delivering a copy via electronic mail
`
`to the following address:
`
`W. Edward Ramage
`L. Clint Crosby
`BAKER, DONELSON, BEARMAN, CALDWELL
`& BERKOWITZ, P.C.
`eramage@bakerdonelson.com
`ccrosby@bakerdonelson.com
`
`
`
`Dated: December 28, 2015
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Scott A. McKeown/
`Scott A. McKeown (Reg. No. 42,866)
`Attorney for Petitioners
`EASTMAN KODAK COMPANY,
`AGFA CORPORATION, ESKO
`SOFTWARE BVBA, and
`HEIDELBERG, USA, INC.

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