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
`___________________________
`
`REQUEST TO FILE CORRECTED EXHIBIT
`
`Patent Owner CTP Innovations, LLC respectfully requests leave to file the
`
`
`
`attached corrected Exhibit 2014. Exhibit 2014 is the Declaration of Robert L.
`
`Stevenson, and was filed on April 2, 2015. The declaration itself is complete, but
`
`it was filed without including his curriculum vitae with litigation experience,
`
`despite indicating that it was attached. The proposed corrected Exhibit 2014 is
`
`attached hereto. A copy of the exhibit with attachment has been provided to
`
`Petitioners on April 3, 2015, as soon as the error was discovered. It is obvious
`
`from the declaration that the curriculum vitae with litigation experience was
`
`intended to be submitted. See Safeway, Inc., et a. v. Kroy IP Holdings, LLC,
`
`
`___________________________
`
`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
`___________________________
`
`REQUEST TO FILE CORRECTED EXHIBIT
`
`Patent Owner CTP Innovations, LLC respectfully requests leave to file the
`
`
`
`attached corrected Exhibit 2014. Exhibit 2014 is the Declaration of Robert L.
`
`Stevenson, and was filed on April 2, 2015. The declaration itself is complete, but
`
`it was filed without including his curriculum vitae with litigation experience,
`
`despite indicating that it was attached. The proposed corrected Exhibit 2014 is
`
`attached hereto. A copy of the exhibit with attachment has been provided to
`
`Petitioners on April 3, 2015, as soon as the error was discovered. It is obvious
`
`from the declaration that the curriculum vitae with litigation experience was
`
`intended to be submitted. See Safeway, Inc., et a. v. Kroy IP Holdings, LLC,
`
`
`
`IPR2014-00685 (Paper 9) (granting leave to file declaration originally filed
`
`without curriculum vitae). Accordingly, Patent Owner respectfully requests that
`
`the Board grant this request.
`
`
`
`Dated: April 3, 2015
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`BAKER, DONELSON, BEARMAN,
`CALDWELL & BERKOWITZ, P.C.
`
`
`
`/W. Edward Ramage/
`W. Edward Ramage, Reg. No. 50,810
`Samuel F. Miller (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
`
`
`for Patent Owner CTP
`Counsel
`Innovations, LLC
`
`
`
`
`
`2
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that, on April 3, 2015, the foregoing
`
`Request (including attachments) was served in its entirety via U.S. Express Mail,
`
`postage prepaid, and electronic mail upon the following:
`
`
`
`Scot A. McKeown
`OBLON, SPIVAK, MCCLELLAND,
`MAIER & NEUSTADT, LLP
`1940 Duke Street
`Alexandria, VA 22314
`Tel: (703) 412-6297
`Fax: (703) 413-2220
`Email: cpdocketmckeown@oblon.com
` cpdocketkiklis@oblon.com
`
`
`
`
`
`
`
`
`
`
`
`/W. Edward Ramage/
`W. Edward Ramage, Reg. No. 50,810
`
`
`
`3
`
`
`
`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
`___________________________
`
`
`
`
`DECLARATION OF ROBERT L. STEVENSON
`IN SUPPORT OF VALIDITY OF U.S. PATENT NO. 6,611,349
`
`
`
`
`
`
`
`CTP Exhibit 2014
`Eastman Kodak v. CTP Innovations
`IPR 2014-00791
`Page 1
`
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`QUALIFICATIONS ........................................................................................ 3
`
`II. MATERIALS CONSIDERED ........................................................................ 5
`
`III. SUMMARY OF OPINIONS ........................................................................... 6
`
`IV. OPINIONS AND BASES FOR THOSE OPINIONS ..................................... 9
`
`A. One of Ordinary Skill in the Art. .......................................................... 9
`
`B.
`
`Claims 10-14 are Not Obvious from Jebens and Apogee ..................... 9
`
`C.
`
`Claims 10-14 are Not Obvious from Dorfman, OPI White Paper
`and Apogee .......................................................................................... 18
`
`CONCLUSIONS ........................................................................................... 30
`
`
`
`CTP Exhibit 2014
`Eastman Kodak v. CTP Innovations
`IPR 2014-00791
`Page 2
`
`V.
`
`
`
`
`
`
`
`I, Robert L. Stevenson, have been retained to testify as an expert on behalf
`
`of CTP Innovations, LLC in this matter. I declare as follows:
`
`
`
`I. QUALIFICATIONS
`
`
`
`1.
`
`I am a professor of electric of electrical engineering and computer
`
`science at the University of Notre Dame, where I have been employed for the last
`
`24 years. I was granted tenure in 1996 as an Associate Professor and promoted to
`
`the academic rank of full Professor in 2002. I serve concurrently on the faculties
`
`of the Department of Electrical Engineering and the Department of Computer
`
`Science and Engineering. I also presently serve as the Associate Chair and
`
`Director of Undergraduate Studies in the Department of Electrical Engineering.
`
`
`
`2.
`
`I received my bachelor's degree from the University of Delaware in
`
`1986 and my Ph.D. from Purdue University in 1990, both in electrical engineering.
`
`My Ph.D. research was in the area of communications and signal processing. I
`
`have been actively engaged in the field of electrical engineering for over 30 years
`
`and in the field of image processing since 1986.
`
`
`
`3.
`
`I am a member of the Institute of Electronics and Electrical Engineers
`
`(IEEE), the Society of Photographic Instrumentation Engineers (SPIE), and the
`
`
`
`CTP Exhibit 2014
`Eastman Kodak v. CTP Innovations
`IPR 2014-00791
`Page 3
`
`
`
`Society for Imaging Science and Technology (IS&T). In addition, I am a panel
`
`member and reviewer for the National Science Foundation.
`
`
`
`4.
`
`For the past 20 years my work has focused on the design of
`
`techniques, hardware, and software for the processing of digital signals using
`
`digital computing devices, such as image processing. My academic research
`
`focuses on developing novel ideas for systems, then publishing and presenting
`
`those ideas to the technical community.
`
`
`
`5. My early work on digital techniques for printing and image capture
`
`devices led to significant interaction with companies developing consumer
`
`products in the early 1990s as they worked to incorporate those ideas into their
`
`products.
`
`
`
`6.
`
`Several
`
`leading computing companies,
`
`including
`
`Intel, Sun
`
`Microsystems, Apple, and Microsoft, have been involved with and supported my
`
`research at Notre Dame. I have also received significant support for my research
`
`from several U.S. Department of Defense agencies.
`
`
`
`7.
`
`I have published over 100 technical papers related to the field of
`
`image processing and digital systems. In addition, I am an inventor of U.S. Patent
`
`No. 6,081,552, “Video Coding Using A Maximum A Posteriori Loop Filter,”
`
`which issued June 27, 2000.
`
`CTP Exhibit 2014
`Eastman Kodak v. CTP Innovations
`IPR 2014-00791
`Page 4
`
`
`
`
`
`
`
`8.
`
`A copy of my curriculum vitae is attached to this declaration as an
`
`appendix. It includes additional detail regarding my academic and professional
`
`background, and listings of various honors and awards I have received,
`
`professional activities with which I have been involved, papers and other
`
`publications I have authored or co-authored, and matters in which I have testified
`
`during the previous four (4) years.
`
`
`
`9.
`
`I am being compensated for my time working on this case at my
`
`customary hourly rate for all work performed on the case. My compensation is not
`
`in any way related to the outcome of the case.
`
`
`
`II. MATERIALS CONSIDERED
`
`10.
`
`I base the opinions that I express in this declaration on my education
`
`and decades of experience in the fields of electrical engineering and image
`
`processing. I also base my opinions on a review of the materials provided by the
`
`parties in this trial, including a review of United States Patent Nos. 6,611,349 (“the
`
`’349 patent”), 6,738,155 (“the ’155 patent”), and 6,321,231 (“Jebens”), PCT
`
`International Application Publication No. WO 98/08176 (“Dorfman”), as well as
`
`the AGFA Apogee: The PDF-based Production System paper (“Apogee”), and
`
`Apple Computer's OPI White Paper (“OPI White Paper”).
`
`CTP Exhibit 2014
`Eastman Kodak v. CTP Innovations
`IPR 2014-00791
`Page 5
`
`
`
`
`
`
`
`11. The list of materials I reviewed in formulating my opinions consists of
`
`Petitioners’ Corrected Petition (Paper 4) and associated Exhibits (Exhibits 1001-
`
`1023), Patent Owner's Preliminary Response (Paper 8) and associated exhibits
`
`(Exhibits 2001-2013), the Institution Decision (Paper 9), the Deposition Transcript
`
`of Professor Brian P. Lawler (Ex. 2017), and Chapter 8 ("Digital Printing") in The
`
`Columbia Guide to Digital Publishing (Ex.2015).
`
`
`
`III. SUMMARY OF OPINIONS
`
`
`
`12.
`
`I submit this declaration in response to the May 20, 2014 Declaration
`
`of Brian P. Lawler (Ex. 1022), and respond to Professor Lawler's allegations that
`
`certain claims of the ’349 patent are invalid on the following grounds:
`
`
`
`
`
`a. Claims 10-14: obviousness based on Jebens and Apogee;
`
`b. Claims 10-14: obviousness based on Dorfman, OPI White Paper, and
`
`Apogee.
`
`I understand that the trial is limited to the two grounds identified above. This
`
`declaration is limited to responding to the arguments and testimony related to the
`
`grounds set forth above. Should Petitioners attempt to rely upon an argument or
`
`testimony not previously identified as relevant to the above grounds, I reserve the
`
`right to supplement this declaration to address any such argument or testimony.
`
`CTP Exhibit 2014
`Eastman Kodak v. CTP Innovations
`IPR 2014-00791
`Page 6
`
`
`
`
`
`Paragraphs 13-16 below summarize my opinion as to the patentability of claims
`
`10-14 of the ’349 patent.
`
`
`
`13. Claims 10-14 of the ’349 patent are not obvious in light of the
`
`combination of Jebens and Apogee because it would not have been obvious to a
`
`person of ordinary skill in the art at the time of the ’349 patent filing, i.e., July 30,
`
`1999, (“POSITA”) to modify the system of Jebens to replace the job order
`
`developer and conduit function of the central service facility of Jebens with the
`
`Apogee PDF RIP process. More specifically:
`
`
`
`
`
`(a)
`
`Jebens does not disclose processing a created document from
`
`the end-user facility to generate a plate-ready file or providing said plate-ready file
`
`to a remote printer; instead, it 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.
`
`
`
`
`
`(b) 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.
`
`
`
`14. Claims 10-14 of the ’349 patent are not obvious in light of the
`
`combination of Dorfman, OPI White Paper and Apogee because it would not have
`
`been obvious to a POSITA to modify a digital printing system with variable data
`
`
`
`CTP Exhibit 2014
`Eastman Kodak v. CTP Innovations
`IPR 2014-00791
`Page 7
`
`
`
`and short-run features, as disclosed in Dorfman, to incorporate printing plates or
`
`plate-ready files. More specifically:
`
`
`
`
`
`(a) 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 suggested modification would require modifying the principle of
`
`operation of Dorfman, and render it unfit for its intended purposes.
`
`
`
`
`
`(b) Dorfman does not describe a separate central service facility
`
`and remote printer. Dorfman describes these functions as all being present at the
`
`same remote location: i.e., the facilities of a commercial printing service.
`
`
`
`
`
`(c) Dorfman does not provide a plate-ready file to a remote printer.
`
`In Dorfman, a dynamic PDF file with low resolution images (which is not a plate-
`
`ready file) is sent directly by the end-user to the remote printing system for
`
`processing.
`
`
`
`
`
`(d)
`
`In Dorfman, the file generated and sent by the end-user is a
`
`dynamic PDF file, not a PostScript file. There is no conversion of a PostScript file
`
`to a PDF file.
`
`
`
`
`
`
`
`
`
`CTP Exhibit 2014
`Eastman Kodak v. CTP Innovations
`IPR 2014-00791
`Page 8
`
`
`
`IV. OPINIONS AND BASES FOR THOSE OPINIONS
`
`
`
`
`
`A. One of Ordinary Skill in the Art
`
`15. Professor Lawler expresses the opinion that “a person of ordinary skill
`
`in the field, at the time the ’349 patent was effectively filed, would have been
`
`familiar with digital workflows, networked printing and publishing systems, and
`
`the page design, prepress, and printing activities incorporated into digitized
`
`workflows.” Lawler Decl. (Ex. 1022), ¶ 21. I accept this definition for purposes
`
`of this trial. At the time of the invention, I possessed at least these minimum
`
`credentials, as well as others. I am therefor well qualified to testify regarding what
`
`one of skill in the art would have understood at the time of the invention.
`
`
`
`
`
`B. Claims 10-14 Are Not Obvious from Jebens and Apogee
`
`16.
`
`I understand that a patent claim is invalid for obviousness if the
`
`differences between the subject matter of the claim 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 POSITA to which the subject matter pertains. I understand that an
`
`obviousness analysis may also take into account certain objective indicia of
`
`nonobviousness, such as copying, commercial success, and long-felt need.
`
`
`
`17. A POSITA would recognize that claim 10 is a method claim, with
`
`method steps being carried out at a facility separate from a remote client and a
`
`CTP Exhibit 2014
`Eastman Kodak v. CTP Innovations
`IPR 2014-00791
`Page 9
`
`
`
`
`
`remote printer. Based upon the specification, this facility would correspond to the
`
`central service facility described therein. A POSITA also would recognize that
`
`claim 10 also requires that this facility carry out the step of generating a plate-
`
`ready file from a page layout designed by a remote client, and the step of providing
`
`said plate-ready file to a remote printer. See ’349 Patent (Ex. 1001), claim 10,
`
`elements (d), and (e). The specification of the ’349 patent confirms these
`
`operations. See, e.g., id. at 4:25-33; 11:35-49.
`
`
`
`18. A POSITA also would recognize that claims 12-14 further describe
`
`the step of generating a plate-ready file in claim 10. Claim 12 requires that the
`
`page layout received from the remote client comprises a PostScript file, and the
`
`step of generating a plate-ready file comprises swapping low resolution files in the
`
`page layout with high resolution files. Id., claim 12. Claim 13 requires that the
`
`step of generating a plate-ready file comprises converting the page layout from a
`
`PostScript file to a PDF file. Id., claim 13. And claim 14 requires that the step of
`
`generating a plate-ready file further comprises converting the PDF file of claim 13
`
`to the plate-ready file. Id., claim 14.
`
`
`
`19. Professor Lawler asserts the system of Jebens replaces the low-
`
`resolution copies of the digital assets with the original high-resolution copies
`
`before the document created by the graphic designer is routed to the printer.
`
`CTP Exhibit 2014
`Eastman Kodak v. CTP Innovations
`IPR 2014-00791
`Page 10
`
`
`
`
`
`Lawler Decl. (Ex. 1022), at ¶ 87 (“Before the document is routed to the printer,
`
`Jebens includes a system that replaces the low-resolution copies of the digital
`
`assets with the original high-resolution copies.”). I understand that he maintains
`
`this position in his deposition testimony. However, Professor Lawler has mis-read
`
`Jebens, and Jebens does not teach this. The system of Jebens does not actually
`
`replace low-resolution images with high-resolution images in a document; instead,
`
`it simply serves as an image warehouse and job order forwarding service. Jebens
`
`teaches a data management and order delivery system that includes an image
`
`database for archiving low and high resolution copies of digital image files. See
`
`Jebens (Ex. 1006), at Abstract. The graphic designer or advertising agency
`
`downloads low resolution copies of images to be used, and creates a document
`
`incorporating the downloaded images. Id. at 5:11-17. Upon completion of the
`
`document creation, the agency re-connects to the system, and requests that the
`
`system route the created document (i.e., the document created by the graphic
`
`designer) along with high resolution copies of the selected digital images to a
`
`publishing entity, such as a printer:
`
`The agency would then disconnect or logoff from the system and
`
`begin its efforts to create a document incorporating the downloaded
`
`images. Upon completion of that process, the agency would re-
`
`
`
`CTP Exhibit 2014
`Eastman Kodak v. CTP Innovations
`IPR 2014-00791
`Page 11
`
`
`
`connect to the system to request that the system electronically route
`
`the created document with high resolution copies of the selected
`
`digital images to a publishing entity such as a printer, where the
`
`finalized brochure would be published.
`
`Id. at 5:15-22. The Petitioners in this case gloss over the fact that the system of
`
`Jebens is not creating a plate-ready file and sending it to a printing facility, but
`
`merely passing along the document created by the advertising agency along with
`
`high-resolution copies of images in the document.
`
`
`
`20. This is supported by Jebens' detailed discussion of “work orders” and
`
`“job orders.” A “work order" is the set of data transmitted from the first user to the
`
`host system requesting routing to a second user (e.g., printing facility). Id. at
`
`14:11-19. The work order includes a set of instructions identifying the second
`
`user, and identifying any files to be sent from the database. Id. at 14:15-18. The
`
`work order also includes local files created outside of the system (such as the PDL
`
`file or other document created by the first user). Id. at 14:11-25; 14:36-54; 22:51-
`
`55. A “job order” is a collection of data assembled or other developed by the host
`
`system for routing to the second user. Id. at 14:27-29. The job order includes the
`
`created document received from the first user, other local files received from the
`
`first user, and any original data files (such as high resolution image files identified
`
`in the work order). Id. at 14:26-35; 14:45-50.
`
`CTP Exhibit 2014
`Eastman Kodak v. CTP Innovations
`IPR 2014-00791
`Page 12
`
`
`
`
`
`Preferably, the job order includes any local files forwarded by the user
`
`in the work order, and copies of any data files in the database that
`
`were identified in the work order by the first user.
`
`Id. at 14:26-35. The local documents contained in the work order, and the original
`
`data files, are compressed and forwarded to the receiving user (i.e., printing
`
`facility):
`
`
`
`Upon receiving the work order, the host site 10 develops a job
`
`order in accordance with the instructions contained in the work order.
`
`The development of a job order is preferably initiated by the internet
`
`server 24 which parses the destination and instruction form for the
`
`address of the receiving user (block 516). Next, the internet server
`
`locates any original data file(s) (such as high resolution image file(s))
`
`identified in the work order (block 518). The original data files(s) and
`
`any local documents contained in the work order are then compressed
`
`(preferably, pursuant to a user defined algorithm as discussed above in
`
`connection with FIGS. 4A-4C) (block 520) and forwarded to the
`
`receiving user specified in the destination and instruction form (block
`
`522).
`
`Id. at 14:55-66.
`
`
`
`21. The above description of the preparation of a job order corresponds to
`
`Figures 8A and 8B of Jebens, as shown below:
`
`
`
`
`
`CTP Exhibit 2014
`Eastman Kodak v. CTP Innovations
`IPR 2014-00791
`Page 13
`
`
`
`
`
`
`
`CTP Exhibit 2014
`Eastman Kodak v. CTP Innovations
`IPR 2014-00791
`Page 14
`
`
`
`
`
`
`
`
`
`CTP Exhibit 2014
`Eastman Kodak v. CTP Innovations
`IPR 2014-00791
`Page 15
`
`
`
`
`
`The Abstract of Jebens refers to this process as routing a job order compiled by the
`
`job order developer. Id. at Abstract; see also id. at 4:59-62 (“As explained below,
`
`the system is also adapted to serve as a job order developer and conduit for routing
`
`files from a browser or client such as an advertising agency to a jobber or supplier
`
`such as a printer.”).
`
`
`
`22. The fact that the host facility of Jebens does not replace the low
`
`resolution images in the user-created document (which can be a PDL file, see id. at
`
`13:62-67) with high resolution images is further supported by Jebens' later
`
`discussion of the transmission of a job order through its “hot-foldering” process:
`
`
`
`As shown in FIG. 10G, upon receipt of the work order (block
`
`850), the host site 10 will parse the work order for the identifications
`
`of images to be included in the job order and the name of the supplier
`
`16 (block 852) to receive the job. The address of the jobber 16 will be
`
`located in the configuration database 731 (block 854) and high
`
`resolution copies of the identified files will be downloaded from the
`
`file system 729 (block 856). The assembled job order including the
`
`high resolution copies of the images selected by any user and the user
`
`created attachments such as PDF files, will then be automatically
`
`transferred to a sending hot-folder associated with the selected
`
`destination (block 858). The hot folder transport system will then take
`
`
`
`CTP Exhibit 2014
`Eastman Kodak v. CTP Innovations
`IPR 2014-00791
`Page 16
`
`
`
`over, compressing the job order and transferring the job order to the
`
`selected destination as described above in connection with FIG. 10A.
`
`Id. at 22:43-57.
`
`
`
`23. Thus, a POSITA would recognize that there is no substantive
`
`processing of the created document file received from the advertising agency (or
`
`other first user) in the system of Jebens; it is simply bundled with other files and
`
`compressed for transmission to a jobber or supplier. The processing of the created
`
`document file must take place at the jobber or supplier, although Jebens provides
`
`no details of that processing since it is focused on the interaction between the
`
`advertising agency and the central image storage facility, and with the creation and
`
`transmission of the job order to a jobber or supplier at the direction of the
`
`advertising agency.
`
`
`
`24. To the extent that Apogee discloses the generation of a plate-ready
`
`file in the form of a Print Image File (“PIF”) through the Apogee PDF RIP process,
`
`see Apogee (Ex. 1008), at pp. 6-7, a POSITA would consider this process to be
`
`taking place at the jobber or supplier, i.e., at a printing company facility. It would
`
`not be obvious to a POSITA to replace the job order developer and conduit
`
`function of the central facility of Jebens with the Apogee PDF RIP process. In
`
`
`
`CTP Exhibit 2014
`Eastman Kodak v. CTP Innovations
`IPR 2014-00791
`Page 17
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`fact, such a modification would substantially change the manner of operation of the
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`central facility of the Jebens system.
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`25. A POSITA would recognize that dependent claims 11-14 require the
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`same elements as claim 10 as described above, and thus would not find it obvious
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`to combine Jebens and Apogee in the suggested manner for these claims for the
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`same reasons given above with regard to claim 10.
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`C. Claims 10-14 Are Not Obvious from Dorfman, OPI White Paper
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`and Apogee
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`26. A POSITA would recognize that the Dorfman reference describes a
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`“response on demand” digital printing system with variable data. A digital printing
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`system is one where a digital-based file is printed directly to a variety of media
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`without the use of printing plates. Digital printing systems are an alternative to
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`traditional offset printing methods which require the creation and use of printing
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`plates. Because it does not involve printing plates, it allows for on-demand
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`printing, short turnaround times, and variable data or variable information printing.
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`Digital printing systems also are often used for customized printing or personalized
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`printing.
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`
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`27. Chapter 8 (“Digital Printing”) in The Columbia Guide to Digital
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`Publishing (Ex. 2015) (a true and correct copy of which is filed herewith) provides
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`
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`CTP Exhibit 2014
`Eastman Kodak v. CTP Innovations
`IPR 2014-00791
`Page 18
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`
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`a comprehensive overview of digital printing, and
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`the advantages and
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`disadvantages of digital printing as opposed to traditional offset printing methods
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`using printing plates. One such factor is cost:
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`
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`Offset has a higher cost for starting up a job, because plates
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`must be prepared and some paper is wasted during the initial run-up to
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`the first good sheet. The binding process that goes with offset (print
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`in signatures, fold, gather, bind, and trim) can also be more expensive
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`than the binding process for digital printing, where large signatures
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`and gathering are not required. But, at present, the cost per page of
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`the actual printing is lower for offset, and this is the dominant cost in
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`long runs. So short runs are more economical with digital printing,
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`and longer runs are more economical with offset.
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`Id. at p. 53 (original page 378). More specifically, with regard to short-run
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`printing:
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`
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`Some costs are incurred in offset printing before the first good
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`sheet comes off the press. Two such cost areas, the cost associated
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`with platemaking and the cost associated with the wasted sheets used
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`in getting the press “up to color,” are avoided entirely in digital
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`printing. A digital device needs no plate and switches instantly from
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`one job to the next. Normally, neither paper nor time is wasted during
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`the switch. This means that if the print run is short, the overall cost
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`for printing a job digitally can be less than offset even though the cost
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`per page is higher with digital printing.
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`
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`CTP Exhibit 2014
`Eastman Kodak v. CTP Innovations
`IPR 2014-00791
`Page 19
`
`
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`Id. at p. 55 (original page 380).
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`
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`28. The Columbia Guide also notes that digital printing is used for “on
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`demand” printing:
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`Printing on demand is one of two types of printing (the other is
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`variable-data printing)
`
`that digital printing can address but
`
`conventional printing, which is restricted to producing multiple copies
`
`of the same document, cannot.
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`
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`Most printing that is done in the office and the home could be
`
`classified as printing on demand. Items are printed as the need arises,
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`and only the quantity that can be immediately used in produced--often
`
`just one copy.
`
`Id. at p. 53 (original page 378).
`
`
`
`29. Dorfman clearly describes a “response on demand” digital printing
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`system with variable data capabilities. Dorfman addresses a problem for users
`
`building dynamic HTML pages in the context of a digital printing system for
`
`producing customized printed materials with variable data. Dorfman specifically
`
`refers to “[v]ariable printing capabilities …for response-on-demand applications,”
`
`and to the user “providing some variable or selectable data that would be used to
`
`create a form based on the layout instructions.” Dorfman (Ex. 1007), at p. 2:21-28.
`
`The “user provided variable data” is fed into the system and inserted into a
`
`
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`CTP Exhibit 2014
`Eastman Kodak v. CTP Innovations
`IPR 2014-00791
`Page 20
`
`
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`template for the final printing. Id. at p. 3:10-14. This allows the production of
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`“customized printing materials”:
`
`
`
`In accordance with one aspect of the present invention, users
`
`are provided with a visual representation of a template for customized
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`printed materials before user data is entered so the user can better
`
`understand and visualize how the data will ultimately be placed in the
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`final document.
`
`Id. at p. 3:24-27.
`
`
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`30. Dorfman describes this as a “response on demand” system:
`
`
`
`The present invention relates to a technique for creating
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`customized documents or other printed materials. More particularly,
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`the present invention relates to a technique for creating customized
`
`printed materials utilizing
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`template
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`formats, stored
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`reference
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`information and user input data.
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`
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`It is desirable in modern printing systems to allow a user to
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`readily customize printed materials for a particular need. For
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`example, a user may select stored images and combine them with user
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`specified input data to produce a point of sale (POS) display or the
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`like. Such a “response on demand” system increases production
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`flexibility and simplifies the design process. …
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`Id. at p. 1:13-21.
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`
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`31. Dorfman also clearly describes examples of applications of such a
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`system:
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`
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`CTP Exhibit 2014
`Eastman Kodak v. CTP Innovations
`IPR 2014-00791
`Page 21
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`
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`
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`The need for customized printed materials, of course, extends
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`beyond point of sale displays. For example, direct mail marketers
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`continually develop advertising flyers and coupons which are sent
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`through the mail to prospective customers. Event planners and
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`promoters may need printed materials for use in promoting concerts,
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`sporting events, live theatrical performances, etcetera. Similarly,
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`various organizations sometimes utilize custom printed materials to
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`announce seminars, annual meetings, and the like. In other words, the
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`possible applications for customized printed materials are virtually
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`unlimited.
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`Id. at p. 1:31-32; p. 2:1-6.
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`
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`32. The process for the generation of customized printed materials is
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`shown in Figure 1A of Dorfman:
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`
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`CTP Exhibit 2014
`Eastman Kodak v. CTP Innovations
`IPR 2014-00791
`Page 22
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`
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`33.
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`I further note that Figure 1 of Dorfman shows the printer at the
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`production printing system (reference numeral 10) as a digital printer, not as a
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`traditional offset printing press that would use printing plates. The use of this
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`
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`CTP Exhibit 2014
`Eastman Kodak v. CTP Innovations
`IPR 2014-00791
`Page 23
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`
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`image, in conjunction with the textual description of the system in Dorfman,
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`establishes that Dorfman is describing a digital printing system.
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`
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`34. This ability to vary some of the elements in the printed document to
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`achieve some level of customization and response-on-demand printing is
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`fundamentally different from the computer-to-plate (“CTP”) system in the ’349
`
`patent. The production of a printing plate is relatively expensive and as a result is
`
`only used when producing a large volume of identical documents. The printing
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`plate approach to large volume printing is not applicable to situations involving on-
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`demand or customized printing materials, as described in Dorfman. As Dorfman
`
`notes, it is common for a user to need the materials in a short time frame, or desire
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`changes at the last minute. Further, custom promotional materials often change on
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`a frequent basis. Id. at p. 2:1-12. So while printing plates are inexpensive when
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`producing many identical copies of a document, they would be extremely
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`expensive if one were to attempt to produce multiple unique documents, or smaller
`
`runs of documents requiring frequent changes or variable data. As a result, a
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`POSITA would not use a digital printing system as disclosed in Dorfman to
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`produce printing plates or plate-ready files, which is the raison d’être of the CTP
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`system in the ’349 patent.
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`
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`CTP Exhibit 2014
`Eastman Kodak v. CTP Innovations
`IPR 2014-00791
`Page 24
`
`
`
`
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`35. Because Dorfman is a “response on demand” digital printing system
`
`using variable data, a POSITA would understand that the system of Dorfman does
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`not and would not involve the generation of printing plates or plate ready files.
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`Apogee is used for the teaching of generating a plate-ready file, Apogee (Ex.
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`1008), pp. 6-7, and thus there would be no motivation to modify Dorfman in view
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`of Apogee. In fact, attempting to modify Dorfman to involve the generation of
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`printing plates or plate ready files would change its principle of operation. It
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`would no longer be a “response on demand” digital printing system, and thus
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`would be unfit for its intended purpose of providing on-demand or customized
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`printing materials. Accordingly, a POSITA would not find it obvious to combine
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`Dorfman with Apogee to add the generation of printing plates or plate ready files
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`to a “response on demand” digital printing system using variable data.
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`
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`36.
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`I further observe that Dorfman equates the central service facility and
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`the remote printer, which are described as all being present at the same remote
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`location, e.g., the facilities of a
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