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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`EASTMAN KODAK COMPANY, AGFA CORPORATION, ESKO SOFTWARE
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`BVBA, and HEIDELBERG, USA,
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`Petitioners,
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`v.
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`CTP INNOVATIONS, LLC,
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`Patent Owner.
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`____________
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`Case IPR2014-00790
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`U.S. Patent No. 6,611,349
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`____________
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`PETITIONERS’ REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(d)
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`Case IPR2014-00790
`Petitioners’ Request for Rehearing
`SUMMARY OF ISSUES FOR REHEARING
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`I.
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`Petitioners Eastman Kodak Company, Agfa Corporation, Esko Software
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`BVBA, and Heidelberg, USA, Inc. (“Petitioners”) request rehearing under 37
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`C.F.R. § 42.71(d) of the Board’s Final Written Decision (“Decision,” Paper No.
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`40) finding that Petitioners have not demonstrated that claims 1-3 of U.S. Patent
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`No. 6,611,349 (“the ’349 patent”) are unpatentable.
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`Independent claims 1-3 require, inter alia, a “central service facility” that
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`“generat[es] a plate-ready file from pages designed at said end user facility....”
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`There is no dispute that the Apogee reference teaches the generation of a plate-
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`ready file—what Apogee calls a “PIF,” which is the file that is the output of
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`Apogee’s PDF RIP Process. (Ex. 1008 at 6.) Rather, the sole reason the Board
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`ruled in favor of Patent Owner was due to the mistaken belief that there is no
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`evidence “that a person of ordinary skill in the art would have been motivated to
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`combine Jebens and Apogee in such a way that a plate-ready file would have been
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`produced at Jebens’ host facility ... rather than at its printing facility.” (Decision at
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`27-28, 32-33.)
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`In reaching this conclusion, the Board overlooked directly contradictory
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`evidence in the trial record, particularly the cited portion of the Apogee reference
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`itself. For the element of “generating a plate-ready file from pages designed at said
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`end user facility,” Petitioners relied upon Apogee’s teaching of PDF RIPs, which
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`Petitioners’ Request for Rehearing
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`are undisputed to be “plate-ready files” within the meaning of the ’349 patent.
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`Importantly, Apogee expressly describes these plate-ready files as being sent to a
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`remote printing facility “in another town.” (See, e.g., Petition1 at 33-34, 51-52,
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`citing Ex. 1008 at 6-7.) On page 7, Apogee describes its PrintDrive system (which
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`receives the plate-ready files after they have been created by the PDF RIP process)
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`as “allow[ing] you to physically separate the rendering from the actual plate
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`production, so your PDF RIP can be in the desktop department and the PrintDrive
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`can sit next to the output device, even in another town.” (Petition at 33-34, 51-
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`52, citing Ex. 1008 at 7, emphasis added.) Petitioners’ claim charts, accepted by
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`the Board as demonstrating a reasonable likelihood of prevailing on the merits,
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`directed Patent Owner and the Board to this precise portion of Apogee. (See
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`Petition at 33-34, 36, 38, 51-52, 54, and 58.) Patent Owner failed to rebut this
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`evidentiary showing that Apogee employs a printing facility remote from the
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`facility that performs plate-ready file processing, with the plate-ready files then
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`being sent from the file processing facility (i.e., Jeben’s/Dorfman’s central service
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`facility) to the remote printing facility. The Board’s sole reason for not holding
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`claims 1-3 unpatentable overlooked this key aspect of the record.
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`Lastly, Petitioners’ obviousness grounds rely on the system architecture
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`from Jebens and Dorfman as primary references, not Apogee. There is no doubt
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`1 Citations to the Petition are to the “corrected” Petition, Paper 4.
`2
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`Petitioners’ Request for Rehearing
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`(or dispute) that the central service facility of Jebens routes to-be-printed files from
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`a remote client, through its host or central service facility, to a remote printing
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`facility. The Board agreed with the architectural framework of the Jebens Ground
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`in its final written decision. (Decision at 13-14, 23-24.) The same holds true for
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`the Dorfman grounds. (Decision at 29-30.) When Jebens/Dorfman is modified
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`with the PDF processing teachings of Apogee—as applied in the grounds accepted
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`by the Board—the to-be-printed file routed from the central service facility to the
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`remote printing facility is the plate-ready file of Apogee. Yet, the Board’s
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`Decision mistakenly looks to the secondary reference (Apogee) for architectural
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`structure relied upon in the primary references, and then suggests that Apogee, not
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`the primary references, would have to be modified to produce a plate-ready file at a
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`central service facility, rather than at a printing facility.
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`However, the issue for obviousness is not whether Apogee needs to be
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`modified, but whether one of ordinary skill would have been motivated to modify
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`Jebens/Dorfman to include the PDF processing teachings of Apogee at the
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`disclosed central service facilities of the prior art. As to this point, and as
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`explained below, the Petition and supporting evidence provided an unrebutted
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`motivation of why the PDF workflow of Apogee and accompanying plate-ready
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`file were desirable and would have been an obvious modification to the
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`Jebens/Dorfman central service architecture. (See Petition at 25-27 and 43-45.)
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`Petitioners’ Request for Rehearing
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`Thus, even if Apogee’s explicit teaching of remote printing could be ignored,
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`which it cannot, the Board’s Decision misapprehends the trial grounds.
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`Apogee plainly employs a remote printing facility in “another town” from
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`the facility that performs plate-ready file processing (i.e., the central service
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`facilities of Jebens or Dorfman), and Petitioners explicitly relied on this teaching in
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`the Petition. The Board has overlooked the record in this proceeding and
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`misapprehended the trial grounds. For these reasons, Petitioners respectfully
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`request that the Board grant rehearing and cancel claims 1-3 of the ’349 patent.
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`II. LEGAL STANDARDS
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`“A party dissatisfied with a decision may file a request for rehearing,
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`without prior authorization from the Board.” 37 C.F.R. § 42.71(d). “The request
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`must specifically identify all matters the party believes the Board misapprehended
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`or overlooked, and the place where each matter was previously addressed in a
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`motion, an opposition, or a reply.” Id. Here, the Board overlooked Apogee’s
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`express teaching that one of ordinary skill would have, and in fact did, consider
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`generating a plate-ready file at locations remote from the printing company
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`facility, such as the central service facility of Jebens or Dorfman. Similarly, the
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`Board misapprehended Petitioners’ proposed grounds of unpatentability, relying on
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`the system structure of Apogee when the proposed grounds were based upon the
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`system architecture of the primary references Jebens and Dorfman.
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`III. ARGUMENT
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`Case IPR2014-00790
`Petitioners’ Request for Rehearing
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`A. The Board Overlooked Explicit Evidence That Apogee
`Discloses Generating Plate Ready Files At Facilities Remote
`From The Printing Facility
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`The sole reason that claims 1-3 of the ’349 patent were held not unpatentable
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`is because Petitioners allegedly provided no evidence “that a person of ordinary
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`skill in the art would have been motivated to combine Jebens and Apogee in such a
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`way that a plate-ready file would have been produced at Jebens’ host facility ...
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`rather than at its printing facility.” (Decision at 27-28, 32-33.) This rationale is
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`incorrect and directly refuted by Apogee and even by the ’349 patent’s description
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`of known practices in the art.
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`Before a plate-ready file can be provided to a printing company facility as
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`specified in claims 1-3, the file must be generated. There is no dispute that Apogee
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`teaches the generation of a plate-ready file—what Apogee refers to as the “PIF,”
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`which is the output of the “PDF RIP” process described in Apogee. Specifically,
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`Petitioners’ claim charts point to Apogee as disclosing the generation of a plate-
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`ready file through the PDF RIP process. (See Petition at 33-34, 36, 38, 51-52, 54,
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`and 58, citing Ex. 1008 at 6-7.) Patent Owner and its declarant agree that the PDF
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`RIP process in Apogee creates the plate-ready file. (See Decision at 24, citing PO
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`Resp. at 32 and Ex. 2014 ¶ 24.)
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`Petitioners’ Request for Rehearing
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`In opposing the Petition, Patent Owner urged an interpretation of the claims
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`requiring “offsite” file processing, asserting that a “POSITA would consider [the
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`PDF RIP] process to be occurring at the jobber or supplier, i.e., at a printing
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`company facility” and not the central service facility of Jebens. (PO Resp. at 31-
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`32, citing Ex. 2014 ¶ 24.) The Board agreed with Patent Owner’s argument,
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`concluding that Petitioners did not provide “any evidence” “that a person of
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`ordinary skill in the art would have been motivated to combine Jebens and Apogee
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`in such a way that a plate-ready file would have been produced at Jebens’ host
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`facility ... rather than at its printing facility.” (Decision at 27-28.)
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`As noted above, the parties and the parties’ declarants agree that the Apogee
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`PDF RIP process is the software component of the Apogee system that generates a
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`plate-ready file. (Decision at 24, citing PO Resp. at 32 and Ex. 2014 ¶ 24.) In the
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`Petition, Petitioners relied specifically on this PDF RIP process and based their
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`unpatentability arguments on the processing flow of Apogee’s PIF plate-ready file
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`from the PDF RIP process to a remote printing company facility. (See Petition at
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`33-34, 36, 38, 51-52, 54, and 58, citing Ex. 1008 at 6-7.) After a plate-ready file is
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`generated by the PDF RIP process, the “Apogee PrintDrive manages the Print
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`Image Files (PIF)” to output “to a variety of output devices including Agfa
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`imagesetters, proofers, and platesetters.” (Petition at 33-34, 36, 38, 51-52, 54, and
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`Petitioners’ Request for Rehearing
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`58, citing Ex. 1008 at 6-7.) On the same two pages consistently relied on by
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`Petitioners (pages 6 and 7), Apogee goes on to explain that
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`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
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`necessity to read the content of these two pages for technical context, the exact
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`“another town” sentence quoted above is explicitly reproduced in Petitioners’
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`charts for claims 1-3. (See, e.g., Petition at 33-34 (excerpts of pages 33-34
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`reproduced below), 51-52.)
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`*****
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`*****
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`These claim charts cite the very passage of Apogee that forms the basis of
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`Petitioners’ rehearing request and show plainly that one of ordinary skill would
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`have combined Jebens and Apogee in such a way that the plate-ready file would
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`have been produced at Jeben’s central service facility (i.e., at a location remote
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`from the printing facility), and then transmitted to Jeben’s remote printing facility.
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`The same holds true for the Dorfman grounds. Importantly, Patent Owner never
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`rebutted the trial ground in this regard and, thus, Apogee’s teachings stand
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`uncontested in the record.
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`Similarly, the workflow schematic spanning pages 6 and 7 of Apogee shows
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`the Apogee PDF RIP process and the Apogee PrintDrive located at discrete
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`locations, connected over a TCP/IP network, thereby routing the PIF, or plate-
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`ready file, from a remote PDF RIP (e.g., at Jebens or Dorfman’s central service
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`facility) to a remote printing company facility. (Petition at 33-34, 51-52, citing
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`Ex. 1008 at 6-7.) Indeed, this teaching is also corroborated by the ’349 patent
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`itself, which explains in its Background of the Invention Section that remote
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`Petitioners’ Request for Rehearing
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`printing was known long prior to filing the ’349 patent, namely, that “[o]nce
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`approval of the proof is given by the end user, a medium, such as a computer to
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`plate (CTP) file [i.e., plate-ready file] is produced and sent to the printer.” (Ex.
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`1001 at 1:36-38, emphasis added.) Clearly the end user is remote to the printer,
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`which corroborates the generation of known CTP plate-ready files at locations
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`other than the printing facility.2 See also Petition at 8-11; In re Morsa, 803 F.3d
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`1374, 1378 (Fed. Cir. 2015) (citing approvingly to the Board’s use of the
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`specification of the patent under examination to establish the knowledge of a
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`person of ordinary skill in the art).
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`Thus, contrary to the Board’s sole rationale for not finding claims 1-3
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`unpatentable, there is significant, documentary evidence of record—unrebutted,
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`and relied on by Petitioners in their claim charts—that one of ordinary skill was
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`well aware of generating plate-ready files at locations remote from the printing
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`2 As other portions of the ’349 patent’s prior art background section indicate, the
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`referenced “printer” was known to be a separate business or entity located at an
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`offsite, remote location. For instance, the patent discusses the “printer” who is sent
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`the plate-ready file as the entity that, e.g., “manufactures a printing plate,”
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`“converts the CTP file into a printing plate,” and “uses the printing plate to create
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`the printed product.” (Ex. 1001 at 1:45-51.)
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`Petitioners’ Request for Rehearing
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`company facility (i.e., in another town), and would have combined Jebens and
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`Apogee (or Dorfman and Apogee) in such a way that the plate-ready file would
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`have been produced at Jeben’s (or Dorfman’s) central service facility. One benefit
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`of remotely generating the plate-ready file at a central service facility was also
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`explicitly explained by Apogee and relied on by Petitioners: to allow multiple
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`physically separate PDF RIP processes to feed a single printing system at a
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`printing company facility (such as the PrintDrive disclosed in Apogee), ensuring
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`that the platesetter, for example, is running at full capacity. (Petition at 33-34, 51-
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`52, citing Ex. 1008 at 6-7.)
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`Further, Petitioners’ expert testified that, as a matter of technical
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`implementation, one of ordinary skill would have known that plate-ready files
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`were either produced at a location remote from, or local to, the printer. In other
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`words, there was a known design choice of performing this file processing at either
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`a central service facility or a printing company facility (see Reply at 6-7), and
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`pages 6 and 7 of Apogee consistently relied upon by Petitioners confirm both
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`options. The Board misapprehended Petitioners’ statement in its Reply that “one
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`of ordinary skill could predictably implement Apogee at a central service facility”
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`as an inadequate motivation to combine argument. Rather, Petitioners’ Reply
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`statement was simply a summary of its Petition grounds, already accepted by the
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`Board, which explicitly referenced Apogee’s remote printing and the preceding
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`Petitioners’ Request for Rehearing
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`generation/processing of the PIF plate-ready file at a central service facility, for
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`example, or alternatively at the printing company facility. (Petition at 33-34, 51-
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`52, citing Ex. 1008 at 6-7.) Because Apogee uses the same remote printing
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`company facility arrangement as the Jebens/Dorfman references, there is simply no
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`need to modify the trial grounds in this regard.
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`The requirements of 37 C.F.R. § 42.71(d) have been met. Petitioners
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`respectfully request that the Board institute a rehearing to cancel claims 1-3 of the
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`’349 patent.
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`B. The Board Misapprehended Petitioners’ Obviousness
`Grounds, Treating Apogee, Rather Than Jebens Or Dorfman,
`As The Primary References
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`Petitioners’ grounds of unpatentability are based upon Jebens and Dorfman
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`as primary references. In this manner, Petitioners rely upon the specific system
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`architecture of Jebens and Dorfman in the proposed grounds, and not the precise
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`architecture of Apogee. For example, Petitioners’ rely on Jeben’s disclosure that
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`the central service facility, or host system, routes to-be-printed files from a remote
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`client to a remote publishing entity such as a printer. (See Petition at 23-24 (citing
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`Ex. 1006 at 2:64−3:10; 5:1-22), 30-31 (claim 1 preamble and claim 1 element [a]),
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`33 (claim 1 element [d]), 34 (claim 1 element [e]).) There is no dispute that Jebens
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`operates in this manner. (Decision at 13-14.) The same analysis applies to
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`Dorfman’s central service facility (PDF builder 6 and memory 4), which routes to-
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`Petitioners’ Request for Rehearing
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`be-printed files from a remote client to a commercial printer. (See Petition at 47
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`(claim 1 element [a]), 49 (claim 1 element [c]), 51 (claim 1 element [d]), 52 (claim
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`1 element [e]); Decision at 29-30.) When combined with Apogee, the to-be-
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`printed file is the plate-ready file produced by Apogee, which is then routed from
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`Jeben’s host system or central service facility to a “publishing entity such as a
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`printer, where the finalized brochure would be published,” or to Dorfman’s
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`commercial printer from Dorfman’s central service facility (PDF builder 6 and
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`memory 4). (Petition at 34 (claim 1 element [e]); Petition at 52 (claim 1 element
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`[e]).)
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`Petitioners provided an unrebutted rationale, supported by the declaration of
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`Prof. Lawler, for why one of ordinary skill in the art would have been motivated to
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`modify the architecture of the primary references with the PDF workflow and
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`plate-ready file of Apogee; namely, the known and obvious need to include a
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`rasterization process—such as the PDF RIP process of Apogee (by which plate-
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`ready files are generated)—into a printing prepress workflow such as that disclosed
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`by Jebens or Dorfman. (See Petition at 25-27 and 43-45.) Because Apogee uses
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`the same remote printing facility as Jebens/Dorfman from where the plate-ready
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`file processing occurs, no modifications of the references are necessary to generate
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`a plate-ready file at the central service facility of Jebens or Dorfman, and nothing
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`else is required to cancel claims 1-3 as unpatentable.
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`Case IPR2014-00790
`Petitioners’ Request for Rehearing
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`The Board’s Decision mistakenly looks to the secondary reference (Apogee)
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`for architectural features relied upon in the primary references Jebens and
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`Dorfman, and then suggests that Apogee would have to be modified to generate a
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`plate-ready file at a central service facility remote from a printing facility. This is
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`incorrect for two reasons. First, as discussed above, Petitioners’ proposed
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`combinations and hypothetical systems are based upon Jebens or Dorfman as
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`primary references, both of which route to-be-printed files from a central service
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`facility to a remote printing facility. There is no modification of the primary
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`reference/system required to route a to-be-printed file (i.e., the plate-ready file of
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`Apogee) from a central service facility to a printing company facility as claimed.
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`Stated differently, the obviousness inquiry does not ask “whether [Jebens
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`and Apogee, or Dorfman and Apogee] could be physically combined but whether
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`the claimed inventions are rendered obvious by the teachings of the prior art as a
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`whole.” In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc); see also In re
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`Keller, 642 F.2d 413, 425 (CCPA 1981) (stating “[t]he test for obviousness is not
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`whether the features of a secondary reference may be bodily incorporated into the
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`structure of the primary reference”); M.P.E.P. § 2145(III). Similarly,
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`nonobviousness cannot be established by attacking the references individually
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`when a challenge is predicated upon a combination of prior art disclosures. See In
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`re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Because both Jebens
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`Petitioners’ Request for Rehearing
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`and Dorfman are based on, and explicitly disclose, a distributed system
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`architecture where to-be-printed files are routed from a central service facility to a
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`printing company facility, claims 1-3 are unpatentable as obvious when combined
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`with Apogee’s teaching of a plate-ready file.
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`Second, even if physically combined, Apogee explicitly teaches generating a
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`plate-ready file at a processing location that is geographically remote from a
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`printer (such as the central service facility of Jebens or Dorfman), and then routing
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`that file over a communication network to a remote printing facility “in another
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`town.” That is, even if considering the system architecture of Apogee were proper,
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`which it is not, physical incorporation of Apogee into the primary references would
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`also result in the claims of the ’349 patent because Apogee teaches the same
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`architecture: a remote printing facility where the printer is located “in another
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`town” from the central service facility generating the plate-ready file.
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`IV. CONCLUSION
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`For the reasons set forth above, Petitioners respectfully request that the
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`Board institute rehearing and cancel claims 1-3 of the ’349 patent.
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`Dated: December 28, 2015
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`Case IPR2014-00790
`Petitioners’ Request for Rehearing
`Respectfully submitted,
`Oblon, McClelland, Maier &
`Neustadt, LLP
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`
`
`/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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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies service of
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`PETITIONERS’ REQUEST FOR REHEARING UNDER 37 C.F.R. § 42.71(d) on
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`the counsel of record for the Patent Owner by filing this document through the
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`Patent Review Processing System as well as delivering a copy via electronic mail
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`to the following address:
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`W. Edward Ramage
`L. Clint Crosby
`BAKER, DONELSON, BEARMAN, CALDWELL
`& BERKOWITZ, P.C.
`eramage@bakerdonelson.com
`ccrosby@bakerdonelson.com
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`Dated: December 28, 2015
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`/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.