IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________
`
`EASTMAN KODAK COMPANY, AGFA CORPORATION,
`ESKO SOFTWARE BVBA, and HEIDELBERG, USA
`Petitioners
`
`v.
`
`CTP INNOVATIONS, LLC
`Patent Owner
`___________________________
`
`Case IPR2014-00791
`Patent 6,611,349
`___________________________
`
`PATENT OWNER’S RESPONSE PURSUANT TO 37 C.F.R. § 42.120
`
`
`
`Filed on behalf of CTP Innovations, LLC
`
`By: W. Edward Ramage (Lead Counsel)
`
`Reg No. 50,810
`
`Samuel F. Miller (Back-up Counsel)
`
`(pending pro hac vice admission)
`
`BAKER, DONELSON, BEARMAN,
`
`CALDWELL & BERKOWITZ, P.C.
`
`Baker Donelson Center
`
`211 Commerce Street, Suite 800
`
`Nashville, Tennessee 37201
`
`Tel: (615) 726-5771
`
`Fax: (615) 744-5771
`
`Email: eramage@bakerdonelson.com
`
`
` smiller@bakerdonelson.com
`
`
`
`
`
`

`

`
`
`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES ................................................................................ iii
`
`I.
`
`INTRODUCTION ......................................................................................... 1
`
`A.
`
`Background ........................................................................................... 1
`
`B.
`
`C.
`
`Relief Requested .................................................................................... 2
`
`Related Proceedings .............................................................................. 2
`
`D.
`
`The ’349 Patent .................................................................................... 2
`
`E.
`
`F.
`
`Summary of Argument .......................................................................... 5
`
`Statement of Material Facts in Dispute ................................................. 7
`
`II. RELEVANT LAW......................................................................................... 7
`
`III. CLAIM CONSTRUCTION ........................................................................ 10
`
`A.
`
`“plate-ready file” ................................................................................. 10
`
`B.
`
`“communication network” .................................................................. 12
`
`IV. ART CITED IN THE PETITION .............................................................. 12
`
`A.
`
`Jebens .................................................................................................. 12
`
`B.
`
`C.
`
`Apogee ................................................................................................. 16
`
`Dorfman ............................................................................................... 17
`
`D. OPI White Paper .................................................................................. 20
`
`V. ARGUMENT ................................................................................................ 20
`
`A.
`
`Claims 10-14 are not Rendered Obvious by Jebens and Apogee. ...... 21
`
`B.
`
`Claims 10-14 Are Not Rendered Obvious by Dorfman, OPI
`White Paper, and Apogee. ................................................................... 28
`
`
`
`i
`
`

`

`1. Dorfman is a “Response On Demand” Digital Printing
`System. ...................................................................................... 28
`
`2. Dorfman, OPI White Paper and Apogee Do Not Disclose
`or Teach All Claim Limitations. ............................................... 34
`
`C.
`
`Petitioners Have Failed to Provide A Sufficient Basis For
`Combining the References. ................................................................. 37
`
`D. Apogee Is Not A Valid Prior Art Reference. ...................................... 39
`
`VI. CONCLUSION ............................................................................................ 45
`
`PATENT OWNER EXHIBIT LIST .................................................................... 47
`
`CERTIFICATE OF SERVICE ............................................................................ 48
`
`
`
`
`
`
`
`
`
`
`ii
`
`

`

`
`CASES
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`CA, Inc. v. Simple.com, Inc.,
`780 F. Supp. 2d 196 (E.D.N.Y. 2009) ................................................................44
`
`Ex parte Research and Manufacturing Co., Inc.,
`No. 88-3277, 10 U.S.P.Q.2d (BNA) 1657, 1989 Pat. App. LEXIS 2 (Bd. Pat.
`App. & Interf., Jan. 31, 1989) .............................................................................44
`
`Grain Processing Corp. v. Am. Maize-Prods. Co.,
`840 F.2d 902 (Fed. Cir. 1988) .............................................................................. 9
`
`In re Cronyn,
`890 F.2d 1158 (Fed. Cir. 1989) ..........................................................................39
`
`In re Cyclobenzaprine Hydrochloride Extended Release Capsule Patent Litig.,
`676 F.3d 1063 (Fed. Cir. 2012) ............................................................................ 8
`
`In re Fine,
`837 F.2d 1071 (Fed. Cir. 1988) ............................................................................ 9
`
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) ............................................................................10
`
`In re ICON Health & Fitness, Inc.,
`496 F.3d 1374 (Fed. Cir. 2007) ..........................................................................10
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ........................................................................9, 38
`
`In re Ratti,
`270 F.2d 810 (CCPA 1959) ................................................................................38
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................. 8, 9, 37, 38
`
`Panduit Corp. v. Dennison Mfg. Co.,
`810 F.2d 1561 (Fed. Cir. 1987) ............................................................................ 9
`
`
`
`iii
`
`

`

`PharmaStem Therapeutics, Inc. v. ViaCell, Inc.,
`491 F.3d 1342 (Fed. Cir. 2007) ............................................................................ 8
`
`Ricoh Co., Ltd. v. Quanta Computer Inc.,
`550 F.3d 1325 (Fed. Cir. 2008) ............................................................................ 9
`
`Unigene Labs, Inc. v. Apotex, Inc.,
`655 F.3d 1352 (Fed. Cir. 2011) ............................................................................ 8
`
`Wyers v. Master Lock Co.,
`616 F.3d 1231 (Fed. Cir. 2010) ........................................................................7, 8
`
`STATUTES
`
`17 U.S.C. § 410(c) ............................................................................................ 44, 45
`
`35 U.S.C. § 103(a) ..................................................................................................... 7
`
`OTHER AUTHORITIES
`
`MPEP 2128(II)(A) ...................................................................................................42
`
`MPEP 2128(II)(B) ....................................................................................................42
`
`MPEP 2141.02 ........................................................................................................... 9
`
`MPEP 2143.01(V) ....................................................................................................10
`
`MPEP 2143.01(VI) ..................................................................................................10
`
`
`
`
`
`
`
`
`
`
`
`iv
`
`

`

`I.
`
`INTRODUCTION
`
`A. Background
`
`
`
`Eastman Kodak Co., Agfa Corporation., Esko Software BVBA, and
`
`Heidelberg, USA (collectively, “Petitioners”) filed a Corrected Petition (Paper 4,
`
`“Pet.”) to institute an inter partes review of claims 4-14 (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.”).
`
`The present inter partes review has been instituted for claims 10-14 of the ’349
`
`patent based solely on obviousness grounds.
`
`Petitioners’ position requires combining features of several patents in order
`
`to render each claim obvious. The prior art references at issue are Jebens (Ex.
`
`1006), Dorfman (Ex. 1007), Apogee (Ex. 1008), and OPI White Paper (Ex. 1009).
`
`Petitioners assert various combinations of the cited references for two sets of
`
`claims, as seen in the summary table below.
`
`Claims 10-14
`
`Claims 10-14
`
`• Jebens
`
`• Apogee
`
`• Dorfman
`
`• OPI White Paper
`
`• Apogee
`
`
`
`
`
`
`
`
`
`1
`
`

`

`B. Relief Requested
`
`
`
`Patent Owner respectfully requests that the Board determine that claims 10-
`
`14 of the ’349 patent are valid and patentable in view of the asserted combinations
`
`of the references: (i) Jebens and Apogee (claims 10-14); and (ii) Dorfman, OPI
`
`White Paper and Apogee (claims 10-14).
`
`C. Related Proceedings
`
`
`
`Petitioners have filed three additional petitions for inter partes review:
`
`IPR2014-00788, for review of claims 10-20 of U.S. Patent No. 6,738,155 (“the
`
`’155 patent”), which generally shares the ’349 patent’s disclosure; IPR2014-00789,
`
`for review of claims 1–9 of the ’155 patent; and IPR2014-00790, for review of
`
`claims 1–3 of the ’349 patent. Except for claims 4-9 of the ’349 patent, all such
`
`additional inter partes reviews have been instituted.
`
`D. The ’349 Patent
`
`
`
`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
`
`
`
`2
`
`

`

`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” or raster image. Id. 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
`
`
`
`3
`
`

`

`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 depicts an embodiment
`
`of the claimed invention. It shows 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 4:29-52. 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,
`
`7:14-20, 9:21-27, Figs. 1, 2, 5. Printing company facility 400 comprises a router, a
`
`server, a desktop computer, 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
`
`
`
`4
`
`

`

`“digital content management” system 130, a
`
`local network 150, and
`
`communication routing device 200. Id. at 4:34-35, 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), 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 7:19-24, 7:38-43.
`
`
`
`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.
`
`E. Summary of Argument
`
`
`
`Petitioners’ position requires combining features of several patents in order
`
`to render each claim obvious. Petitioners’ arguments fail for three reasons. First,
`
`separately or combined, the prior art references do not disclose all of the
`
`limitations of claims 10 through 14 of the ’349 patent. As detailed below,
`
`
`
`5
`
`

`

`Petitioners have misconstrued critical elements of the Jebens and Dorfman
`
`references, and a person of ordinary skill in the art at the time of the ’349 patent’s
`
`effective filing date, i.e., July 30, 1999, (“POSITA”) would not have combined the
`
`prior art references in the manner Petitioners suggest. Second, Petitioners have
`
`failed to provide a sufficient basis for combining the references, and instead have
`
`only provided conclusory allegations lacking articulated reasoning, or underlying
`
`facts and data. Third, the Apogee reference is not valid prior art because
`
`Petitioners have failed to establish a date that Apogee was publically accessible.
`
`
`
`With regard to Jebens, Jebens does not disclose processing a created
`
`document from the end-user facility to generate a plate-ready file, as asserted by
`
`Petitioners. Instead, the Jebens system simply passes the created document, along
`
`with copies of high-resolution images, on to a publishing entity. Jebens does not
`
`insert high-resolution images into the created document. Apogee discloses the
`
`generation of a PIF file from a PDF RIP process carried out at a print facility, not
`
`at a central service facility, and thus does not cure this defect.
`
`
`
`With regard to Dorfman, Dorfman discloses a digital printing system with
`
`variable data and short-run features. These systems do not use printing plates or
`
`plate-ready files. The modification suggested by Petitioners would require
`
`modifying the principle of operation of Dorfman, and render it unfit for its
`
`intended purposes. Dorfman also does not describe a separate central service
`
`
`
`6
`
`

`

`facility and printing company facility. Dorfman describes these functions as all
`
`being present at the same remote location: i.e., the facilities of a commercial
`
`printing service.
`
`
`
`Further, even if Dorfman did disclose a separate central service facility and
`
`printing company facility, it still does not disclose providing a plate-ready file to a
`
`remote printer. In Dorfman, the dynamic PDF file constructed by the end-user, is
`
`sent directly to the printing system for processing, bypassing any separate central
`
`service facility. Any swapping of high resolution files for low resolution files
`
`occurs at the remote printer. The file is a PDF file, not a PostScript file. Apogee
`
`and OPI White Paper do not cure these defects.
`
`F. Statement of Material Facts in Dispute
`
`
`
`Petitioners did not submit a statement of material facts in the petition for
`
`inter partes review. Accordingly, Patent Owner cannot properly submit, as
`
`required by 37 CFR § 42.23, a statement of material facts in dispute.
`
`
`
`II. RELEVANT LAW
`
`Under pre-AIA 35 U.S.C. § 103(a), a claim is obvious when the “subject
`
`matter sought to be patented and the prior art are such that the subject matter as a
`
`whole would have been obvious at the time the invention was made to a person
`
`having ordinary skill in the art to which said subject matter pertains.” See also
`
`Wyers v. Master Lock Co., 616 F.3d 1231, 1237 (Fed. Cir. 2010). “[A] patent
`
`
`
`7
`
`

`

`composed of several elements is not proved obvious merely by demonstrating that
`
`each of its elements was, independently, known in the prior art.” KSR Int’l Co. v.
`
`Teleflex Inc., 550 U.S. 398, 418 (2007). Where a party seeks to invalidate a patent
`
`based on obviousness, it must demonstrate by a preponderance of evidence that a
`
`“skilled artisan would have had reason to combine the teaching of the prior art
`
`references to achieve the claimed invention, and that the skilled artisan would have
`
`had a reasonable expectation of success from doing so.” In re Cyclobenzaprine
`
`Hydrochloride Extended Release Capsule Patent Litig., 676 F.3d 1063, 1068-69
`
`(Fed. Cir. 2012).
`
`Obviousness is a question of law based on underlying findings of fact.
`
`Unigene Labs, Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011); Wyers,
`
`616 F.3d at 1237. The factual underpinnings, often referred to as the Graham
`
`factors, to be considered include the following: (1) the scope and content of the
`
`prior art; (2) the differences between the prior art and the claims at issue; (3) the
`
`level of ordinary skill in the art; and (4) any relevant secondary considerations such
`
`as commercial success, long-felt but unsolved needs, and the failure of others.
`
`Unigene, 655 F.3d at 1360; Wyers, 616 F.3d at 1237 (citing Graham v. John Deere
`
`Co., 383 U.S. 1, 18 (1966)).
`
` “Rejections on obviousness grounds cannot be sustained by mere
`
`conclusory statements; instead there must be some articulated reasoning with some
`
`
`
`8
`
`

`

`rational underpinning to support the legal conclusion of obviousness.” KSR, 550
`
`U.S. at 418. “One cannot use hindsight reconstruction to pick and choose among
`
`isolated disclosures in the prior art to depreciate the claimed invention.” In re
`
`Fine, 837 F.2d 1071, 1075 (Fed. Cir. 1988). “Care must be taken to avoid
`
`hindsight reconstruction by using the patent in suit as a guide through the maze of
`
`prior art references, combining the right references in the right way so as to
`
`achieve the result of the claims in suit.” Grain Processing Corp. v. Am. Maize-
`
`Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (internal quotation marks and
`
`citation omitted).
`
`“A prior art reference must be considered in its entirety, i.e., as a whole,
`
`including portions that would lead away from the claimed invention.” MPEP
`
`2141.02. See also, Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1568
`
`(Fed. Cir. 1987) (citing W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540,
`
`1550 (Fed. Cir. 1983)). “A reference may be said to teach away when a person of
`
`ordinary skill, upon reading the reference, would be discouraged from following
`
`the path set out in the reference, or would be led in a direction divergent from the
`
`path that was taken by the applicant.” Ricoh Co., Ltd. v. Quanta Computer Inc.,
`
`550 F.3d 1325, 1332 (Fed. Cir. 2008) (quoting In re Kahn, 441 F.3d 977, 990 (Fed.
`
`Cir. 2006)). In addition, “a reference may teach away from a use when that use
`
`would render the result inoperable.” In re ICON Health & Fitness, Inc., 496 F.3d
`
`
`
`9
`
`

`

`1374, 1381 (Fed. Cir. 2007) (citing McGinley v. Franklin Sports, Inc., 262 F.3d
`
`1339, 1354 (Fed. Cir. 2001)).
`
`The proposed modification thus cannot render the prior art unsatisfactory for
`
`its intended purposes. See MPEP 2143.01(V); In re Gordon, 733 F.2d 900 (Fed.
`
`Cir. 1984). Similarly, the proposed modification or teaching cannot change the
`
`principle of operation of the prior art invention or reference. MPEP 2143.01(VI).
`
`III. CLAIM CONSTRUCTION
`
`A. “plate-ready file”
`
`Petitioners have proposed the following construction of this phrase: “a file
`
`containing pages designed from images, texts, and data converted to a digital file
`
`for producing a printing plate.” Pet. at 21. Petitioners’ construction does not
`
`capture the concept of the file being ready to produce a printing plate. Moreover,
`
`Petitioners’ asserted expert does not actually support the proposed construction.
`
`Patent Owner proposes a construction that is consistent with the language of
`
`the ’349 patent, the plain and ordinary meaning to one of relevant skill in the art,
`
`and without extraneous limitations: “a file that is ready to be made into a printing
`
`plate.” This construction is in accord with the broadest reasonable interpretation
`
`standard and is supported by the specification. Ex. 1001 at 10:7-15, 11:44-48,
`
`12:18-22, 12:66–13:7. For example, the specification states:
`
`File processing includes gathering linked data and supporting art and
`
`fonts into a single file that is stable, predictable, and ready to image to
`
`
`
`10
`
`

`

`proof or plate. The machines and/or programs used to conduct file
`
`processing include the application used to build a page, such as,
`
`QuarkXpress, InDesign by Adobe Systems and the software programs
`
`used to generate stable, predictable, plate-ready files. Such software
`
`programs include Adobe Acrobat Distiller, Art Work System and
`
`Scitex Brisque.
`
`Id. at 10:7-15 (emphasis added). Similarly, the specification also makes clear that
`
`plate-ready files are those that are ready to be made into the final printing plate.
`
`Id. at 11:44-48, 12:18-22.
`
`
`
`Lastly, the specification recites:
`
`If no additional revisions are necessary step 870 is performed in
`
`which finished plate-ready files are made available to printing
`
`customer facility 400 via communication link. At step 875, printing
`
`company facility 400 enters plate-ready file into DCM database 130.
`
`At step 880, plate-ready files pages are digitally imposed and imaged
`
`to proofing device at printing company facility 400. At step 885,
`
`printing company facility 400 images the proof pages to plate and
`
`prints the job.
`
`Id. at 12:66–13:7. This paragraph clearly illustrates that the plate-ready file is
`
`“ready” since there are to be “no additional revisions” and that the plate-ready file
`
`is entered into the database, imposed, proofed, and printed. This supports the
`
`definition of the file being ready to be made into a printing plate, as the formation
`
`of the printing plate is one of the final steps prior to actual printing--namely, the
`
`generation of a plate that is used to commence printing.
`
`
`
`11
`
`

`

`
`
`Petitioners’ asserted expert, Professor Lawler, supports Patent Owner’s
`
`construction. In his deposition, Professor Lawler testified, “The plate-ready file is
`
`simply indicative of a page layout file that has gone through the prepress process
`
`and has been RIPed such that it contains the exact dots to be transferred onto a
`
`printing plate, film or other imaging substrate.” Deposition Transcript of Brian
`
`Lawler (Ex. 2017) at 35:19–36:3. According to Lawler, a plate-ready file is a
`
`“fully rasterized file.” See id. at 38:7-18. Lawler’s deposition testimony does not
`
`include additional limitations of types of data included in the fully rasterized file
`
`that are required by Petitioners’ construction.
`
`B. “communication network”
`
`Patent Owner proposes that this phrase be interpreted as “a private network
`
`such as an extranet or public network such as the Internet.” Support may be found
`
`in claim 1, the Abstract, and the specification of the ’349 patent. Ex. 1001 at
`
`Abstract, 4:29-66, 5:21-25, 11:60-63. It should be specifically noted that a
`
`communication network can be a private network or a public network, and does
`
`not need to be both. Id. The proposed interpretation is in accord with the broadest
`
`reasonable interpretation standard.
`
`IV. ART CITED IN THE PETITION
`
`A. Jebens
`
`
`
`Jebens describes “a digital image management and order delivery system.”
`
`Ex. 1006 at 2:13-14. The system provides a centralized, searchable database of
`
`
`
`12
`
`

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`digital images that can be used and modified by authorized users. Id. at 4:54-56.
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`The system also serves as a job order developer and conduit for routing files from a
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`client, such as an advertising agency, to a printer. Id. at 4:60-62. Figure 1 illustrates
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`an embodiment of Jebens’s data management and work-order delivery system.
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`
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`Id. at 4:20-23. The system comprises host system 10 in communication with a
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`variety of users, such as browsers and client orderers 12, image providers 14, and
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`suppliers 16. Id. at 6:52-65. The host system software includes, inter alia, an
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`image database that archives low and high resolution copies of digital image files.
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`Id. at 8:9-13. The system is “ideally suited for facilitating publication and the
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`
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`13
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`like.” Id. at 4:66-67. Image providers 14 may include a corporation that stores
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`digital images of its products on host system 10 to more efficiently use its in-house
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`computer storage facilities. Id. at 4:67–5:5, 6:55-60. Browsers and client orderers
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`12 may include an advertising agency that the corporation hires to create a
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`brochure using the stored images, and suppliers 16 may include the printer that will
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`print the finished brochure. Id. at 5:5-10, 6:54-65.
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`
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`To use the system, the corporation gives the agency information to access
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`the host system; the agency then searches the host system and downloads
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`resolution copies of desired images, creates a publication in page description
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`language file format (“PDL”) using the low resolution copies, and sends the
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`brochure including the low resolution copies back to the host system. Id. at 5:11-
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`20. The host system then downloads high resolution images corresponding to the
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`low-resolution images; assembles a job order that includes the high resolution
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`images, the electronic file for the brochure, and any instructions for a supplier (i.e.,
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`the printing company); and electronically routes the assembled job order to a
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`supplier per the agency’s instructions. Id. at 5:19-20, 22:43-53.
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`
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`Jebens does not disclose actually replacing low resolution images embedded
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`in the electronic file for the brochure with corresponding high resolution files. Id.
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`at 22:43-53. In fact, Jebens does not use the word “replace” in connection with the
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`created document or electronic file and high resolution images, and Jebens does
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`14
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`not say that high resolution copies of digital images are inserted into or swapped
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`into the created document. Ex. 2017 at 28:17–29:7.
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`
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`Jebens discloses that communication between host system 10 and users 12
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`and 16 “can be effected by any known means of connectivity,” such as “through
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`local area networks or wide area networks,” or “hardwired to one another as an
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`intranet.” Id. at 6:66–7:20. Users 12 and 16 (corresponding to the advertising
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`agency and several options for printing companies, respectively) do not disclose
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`the use of a single network. Instead, as shown on Figure 1 of Jebens, user 12
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`communicates with the hosting system via a network separate and apart from the
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`communication network used by hosting system to communicate with one of the
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`several printing companies that are separate users 16. Jebens does not show a
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`communication network established between user 12 and users 16. Once user 12
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`sends the work order to the host site, the host system must establish a second
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`communication network by dialing or sending a network request to the supplier,
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`establishing a valid communication link, passing log in information before it can
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`transmit the job order. Id. at 2:40-42, 2:60-63.
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`
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`Jebens further discusses this in the context of “work orders” and “job
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`orders.” A “work order” is the set of data transmitted from the first user to the
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`host system requesting routing to a second user (e.g., printing facility). Id. at
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`14:11-19. The work order includes a set of instructions identifying the second
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`15
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`user, and identifying any files to be sent from the database. Id. at 14:15-18. The
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`work order also includes local files created outside of the system (such as the PDL
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`file or other document created by the first user). Id. at 14:11-25, 14:36-54, 22:51-
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`55. A “job order” is a collection of data assembled or otherwise developed by the
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`host system for routing to the second user. Id. at 14:27-29. The job order includes
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`the created document received from the first user, other local files received from
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`the first user, and any original data files (such as high resolution image files
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`identified in the work order). Id. at 14:27-34, 14:45-50. The local documents
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`contained in the work order, and the original high resolution data files, are
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`compressed and forwarded to the receiving user (i.e., printing facility). Id. at
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`14:55-66. Jebens refers to this process as routing a job order compiled by the job
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`order developer. Id. at Abstract. See also Declaration of Robert Stevenson (Ex.
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`2014) ¶¶ 20-22.
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`B. Apogee
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`The Apogee reference describes the Agfa Apogee print-production system.
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`Ex. 1008 at 1. Content can be created in any format and output to Apogee in either
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`PostScript or PDF format; Apogee normalizes incoming files to PDF “to guarantee
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`complete predictability and compatibility.” Id. at 3-4. The PDF files are stored as
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`individual PDF pages and become “Digital Masters” to create all production
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`versions of the document and to provide a version that can be proofed and edited
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`
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`16
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`remotely. Id. at 4, 6. For a specific print job, Apogee collects the appropriate
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`pages, automatically imposes the pages into a “digital flat,” and rasterizes it for the
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`selected output device (e.g., an imagesetter or plate setter). Id. at 6. The result is a
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`“Print Image File” (PIF) that“contains all the dots that will appear on the film or
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`plate.” Id.
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`
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`Apogee thus is used to provide a teaching of normalizing incoming files into
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`PDF digital master files and subsequently rendering those files through the PDF
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`RIP process into PIF files. Id. at 6-7. As Petitioners’ expert notes, Apogee teaches
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`that these activities are carried out at a printing facility. Ex. 2017 at 31:12–32:4.
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`
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`In addition, as set forth below, Patent Owner submits that Apogee is not
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`applicable prior art because it is not a “printed publication.” Petitioners have failed
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`to establish that Apogee was publicly accessible prior to the critical date of the
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`subject patent.
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`C. Dorfman
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`
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`Dorfman describes a “technique for easily creating and proofing customized
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`printed material before printing on a production printing system.” Ex. 1007 at
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`Abstract. Dorfman describes a “response on demand” digital printing system with
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`variable data capabilities. Id. at 1:13-21, 2:21-28. Dorfman specifically refers to
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`“[v]ariable printing capabilities…for response-on-demand applications,” and to the
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`user “providing some variable or selectable data that would be used to create a
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`17
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`form based on the layout instructions.” Id. at 2:21-28. The “user provided variable
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`data” is fed into the system and inserted into a templa