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`UNITED STATES PATENT AND TRADEMARK OFFICE
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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
`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 IPR2014-00791
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`U.S. Patent No. 6,611,349
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`____________
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`PETITIONERS’ REPLY BRIEF
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`Pursuant to 37 C.F.R. §§ 42.23 and 42.24(c)(1), Eastman Kodak Company,
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`Agfa Corporation, Esko Software BVBA, and Heidelberg, USA (“Petitioners”)
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`hereby submit the following Reply in Support of their Petition for Inter Partes
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`Review (“IPR”).
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`I.
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`Case IPR2014-00791
`Petitioners’ Reply Brief
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`INTRODUCTION
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`Patent Owner’s response is plainly impertinent to the instituted grounds.
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`Trial has been instituted on claims 10-14 of the ‘349 patent in view of Jebens and
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`Apogee, as well as Dorfman, Apogee, and OPI White Paper. (See Paper 9 at 27.)
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`Despite the Board’s admonishment in its institution decision that “nonobviousness
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`cannot be established by attacking the references individually when the rejection is
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`predicated upon a combination of prior art disclosures” (id. at 21), Patent Owner
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`(a) continues to focus its arguments on alleged shortcomings of each reference
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`individually; (b) ignores the proposed combinations set forth in the Petition; and
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`(c) reiterates its same arguments from Patent Owner’s preliminary response.
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`Further, in an attempt to salvage its claims, Patent Owner and its expert
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`continually and improperly read limitations from the specification into claims 10-
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`14. As with its preliminary response, Patent Owner fails to rebut the grounds of
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`unpatentability set forth by Petitioners by simply repeating its earlier, failed
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`arguments.
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`II. THE JEBENS GROUND RENDERS CLAIMS 10-14
`UNPATENTABLE
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`Claims 10-14 are rendered obvious in view of Jebens and Apogee. Patent
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`Owner’s alleged basis for distinguishing these claims stems from an improper
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`reading of the claims and the prior art. Patent Owner also fails to consider the
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`1
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`proposed combination as a whole, attacking the references individually instead.
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`Case IPR2014-00791
`Petitioners’ Reply Brief
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`Claim 10 of the ‘349 patent recites, in pertinent part, (a) “storing high resolution
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`files on a computer server;” (b) “generating low resolution files corresponding to
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`said high resolution files;” (c) “providing said low resolution files to a remote
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`client…;” (d) “generating a plate-ready file from the page layout designed by said
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`remote client;” and (e) “providing said plate ready file to a remote printer.”
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`Conspicuously absent from these claims is any requirement regarding where
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`the steps of “generating a plate-ready file…,” or “providing said plate ready file to
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`a remote printer” must occur. Yet Patent Owner attempts to distinguish its claims
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`on the basis of these phantom limitations. In a misguided attempt to import
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`limitations from the specification into claims 10-14, Patent Owner (and its expert)
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`simply state that, “based upon the specification” (Ex. 2014 at ¶ 17), these steps
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`would occur at the central service facility. (Resp. at 21, citing Ex. 2014 at ¶ 17.)
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`Then, based upon this unduly narrow claim construction, Patent Owner argues that
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`“Jebens does not teach the step of generating a plate-ready file at a central service
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`facility (i.e., a facility separate from a remote client and a remote printer), and
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`providing that plate-ready file to a remote printer.” (Resp. at 21-22, emphasis in
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`original.)
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`As an initial matter, and as noted above, there is absolutely no requirement
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`in claim 10 that the step of generating a plate-ready file must occur at a central
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`2
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`service facility, or that the plate-ready file that is provided to the remote printer
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`Case IPR2014-00791
`Petitioners’ Reply Brief
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`must come from a central service facility.1 Other than referencing a few lines of
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`the specification, Patent Owner and its expert provide no analysis as to why this
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`limitation should be read into the claims. See e.g., Liebel-Flarsheim Co. v.
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`Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004) (“it is improper to read
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`limitations from a preferred embodiment described in the specification—even if it
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`is the only embodiment—into the claims absent a clear indication in the intrinsic
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`record that the patentee intended the claims to be so limited”). As Patent Owner
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`has not presented any rationale whatsoever, nor could it, as to why the features of
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`the specification should be incorporated into claims 10-14, this argument is
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`baseless and should be ignored.
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`All that claim 10 requires is the generation of a plate-ready file from the
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`page layout designed by the client, and providing the plate-ready file to a remote
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`1 Claim 11 states that “the low resolution files are stored in a storage device at a
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`central service facility.” This requirement, which only appears in claim 11, and
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`only relates to the storage of low resolution files, further supports Petitioners’
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`argument that claim 10 is not limited to generating a plate-ready file at a central
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`service facility, or limited to the plate-ready file being provided to the remote
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`printer from a central service facility.
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`3
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`printer. As set forth in the Petition, these steps are clearly taught by Apogee.
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`Petitioners’ Reply Brief
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`(Petition at 40-41; Ex. 1022 at ¶¶ 90-94.) Indeed, Patent Owner agrees that these
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`steps are taught by Apogee. (Resp. at 27.) Patent Owner’s only dispute is that
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`Apogee allegedly describes these steps as occurring at a printing company facility,
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`not at a central service facility. However, as set forth above, this argument is
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`entirely misplaced because claim 10 does not include any requirement that the
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`steps of generating a plate-ready file, or providing the plate-ready file to a remote
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`printer, have to occur (or occur from) a specific location.
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`Nonetheless, Prof. Lawler explained in his declaration that “Apogee thus
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`describes one known process for taking a page layout designed by an end user and
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`turning that incoming file, whether in PostScript or PDF, into a PIF or plate-ready
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`file that can be output to a desired device.” (Ex. 1022 at ¶ 94.) Similarly, Prof.
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`Lawler explained that “For ‘direct-to’ production, Agfa developed … the Apogee
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`PrintDrive. Apogee PrintDrive manages the Print Image Files (PIF) output by one
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`or more RIPs, and controls output flow to a variety of output devices including
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`Agfa imagesetters, proofers, and platesetters.” (Ex. 1022 at ¶ 93, citing Ex. 1008
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`at 7.) Nothing in Apogee limits implementation of the processes described therein
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`to a printing company facility and one of ordinary skill in the art could predictably
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`implement Apogee at a central service facility (assuming, arguendo, that such was
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`4
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`required by claim 10). Thus, even accepting Patent Owner’s specification-limited
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`Petitioners’ Reply Brief
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`claim construction, the record demonstrates such as an unavailing distinction.
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`Moreover, during his deposition, Prof. Lawler explained that Apogee, and
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`the various processes described therein, can be implemented either at a central
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`service facility or a printing company facility. Specifically, Prof. Lawler testified
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`on cross examination that:
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`Q: So you're saying Jebens does the swapping, presents it at the host
`facility, and the Apogee citation talks about that same process but at the
`printing facility:
`A: Correct. That could happen in either location.
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`Q: And then Apogee, as you just said, it occurs later at the printing facility?
`A: That is also possible, yes.
`(Ex. 2017 at 31:20 – 32:13, emphasis added.) During re-direct examination, Prof.
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`Lawler reiterated that the generation of a plate-ready file as described by Apogee
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`can occur either at the printing company facility or the host/central service facility,
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`and that none of the references are limited to preparing the plate-ready file at the
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`central service facility or the printing company facility. (Id. at 101:21 – 103:3.)
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`Thus, and despite the fact that the claim 10 does not require the generation of a
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`plate-ready file to occur at any specific location, one of ordinary skill in the art
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`would have known that the processes described by Apogee could occur at a
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`printing company facility or at a central service facility. As noted above, even
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`5
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`accepting the specification-limited claim construction advanced by Patent Owner,
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`Petitioners’ Reply Brief
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`the broader teaching of the references in this regard stand unrebutted.
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`Second, Patent Owner confusingly argues (Resp. at 22-27) that the
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`challenged claims are not unpatentable in view of Jebens and Apogee because the
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`central facility of Jebens does not carry out OPI—i.e., the swapping or replacement
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`of low-resolution for-placement-only images with high-resolution copies before
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`printing. As an initial matter, independent claim 10 does not recite or require OPI
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`to occur. Claim 10 states that the low resolution files are provided to a remote
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`client for page building, but the claim never requires the corresponding high
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`resolution files to be swapped back in before printing. Once again, Patent Owner’s
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`arguments regarding Jebens are irrelevant to the challenged claims.
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`Despite the absence of a complete OPI process in claim 10, Patent Owner
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`may argue that OPI is necessary before a plate-ready file is produced.2 However,
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`Petitioners rely on Apogee for its teaching of a plate-ready file, not Jebens alone,
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`which clearly teaches the incorporation of OPI into a pre-press workflow (see, e.g.,
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`2 The recitation in claim 12 requiring the further step of “swapping low resolution
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`files used in said page layout with high resolution files” is further evidence that
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`claim 10 does not require a final low resolution to high resolution image swapping
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`step.
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`6
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`Ex. 1008 at 2, 5). Patent Owner ignores this fact and, instead, focuses solely on the
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`Petitioners’ Reply Brief
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`Jebens reference rather than the proposed combination. The Board has previously
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`warned Patent Owner that such a blinkered analysis is unavailing. (Paper 9 at 21.)
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`In any event, Patent Owner’s argument that Jebens does not perform OPI at
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`its central service facility is incorrect. Petitioners and Prof. Lawler explained that
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`Jebens “describes an Open Prepress Interface system which … create[s] low-
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`resolution files derived from any of the stored assets in the system, and deliver[s]
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`them to the client for building documents in their own workplaces. Once the
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`graphic designer has created the document, the designer can then re-connect to the
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`central system and request that the document be electronically routed [with
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`corresponding high-resolution images] to a publishing entity, such as a printer.”
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`(Ex. 1022 at ¶ 87, citing Ex. 1006 at 5:17-22; Petition at 30, 40-41.) 3 During
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`deposition, Prof. Lawler explained that although the quoted section of Jebens does
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`not use the word “replace,” one of ordinary skill in the art would immediately
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`recognize the description of Jebens as describing an OPI process (Ex. 2017 at
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`28:17 – 29:14), which could occur either at the central service facility or printing
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`3 Petitioners similarly rely on this description from Jebens as teaching the further
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`step of claim 12 requiring “swapping low resolution files used in said page layout
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`with high resolution files.” (Petition at 41-42.)
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`7
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`company facility. (Id. at 103:4-12.) The triviality of Patent Owner’s and its
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`Petitioners’ Reply Brief
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`expert’s argument is readily apparent—it hinges on the absence of the word
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`“replace” from the quoted section of Jebens, and ignores the understanding of
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`those of ordinary skill in the art. Patent Owner nowhere rebuts the testimony of
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`record as to the scope and content of Jebens in this regard.
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`Further, the system described by Jebens includes an “autolog server 34 [at
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`the host/central service facility, see Fig. 2, which] determines whether a special
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`low resolution format file such as an OPI (Open Pre-press Interface) file should be
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`created from the original image file…” (Ex. 1006 at 10:53-56.) Patent Owner
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`fails to address the fact that Jebens host facility includes an OPI server that would
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`naturally carry out the OPI process and “replace” the low resolution images for
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`high resolution images before printing. Further still, there is no question that
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`before the host system of Jebens routes the created document to the printer, it does
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`so while including the “high resolution copies of the selected digital images.” (Ex.
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`1006 at 5:20-21.) Whether the high resolution files are already embedded in the
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`page layout, or sent separately, they have been swapped or “replaced” with the low
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`resolution images used during page building and, therefore, OPI has occurred.
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`Even if claim 10 was incorrectly construed to require (a) an explicit OPI process,
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`and (b) that OPI occur at the host/central service facility, Jebens teaches the same.
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`8
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`Claims 10-14 of the ‘349 patent are rendered obvious in view of Jebens and
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`Case IPR2014-00791
`Petitioners’ Reply Brief
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`Apogee.
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`III. THE DORFMAN GROUND RENDERS CLAIMS 10-14
`UNPATENTABLE
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`A. The Teachings of Dorfman are Not Limited to “Response on Demand”
`Printing Systems
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`Nearly all of Patent Owner’s arguments regarding Dorfman surround its
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`unsubstantiated—and previously rejected—argument that Dorfman’s teachings are
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`directed solely to “response on demand” digital printing systems. Patent Owner
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`now calls Dorfman a “response on demand” system, rather than a “variable data
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`printing (VDP) system” as categorized in the preliminary response (Prelim. Resp.
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`at 22); however, Patent Owner’s arguments are the same.
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`Specifically, in its preliminary response, Patent Owner argued that “the
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`Dorfman system is not relevant to the ’349 patent” because it describes a VDP
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`system, “which is the raison d’etre of the computer-to-plate (CTP) system in the
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`’349 patent.” (Prelim. Resp. at 22; see also Resp. at 33, including identical
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`language.) In short, Patent Owner argued, and continues to argue in its Response,
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`that Dorfman’s system is allegedly limited to low volume jobs that involve
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`variable data and, as a result, one of ordinary skill in the art would not use a
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`printing plate for high-volume jobs with Dorfman’s system. (Resp. at 29-33; Paper
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`9 at 24, summarizing Patent Owner’s argument from the preliminary response.)
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`9
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`However, Dorfman’s teachings are not limited to only low volume print
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`Case IPR2014-00791
`Petitioners’ Reply Brief
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`jobs. This is because Dorfman explicitly emphasizes a broader applicability, as
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`correctly recognized by the Board: “On the contrary, Dorfman’s system is related
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`to ‘customized printed materials,’ which Dorfman teaches may be printed ‘in large
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`quantities.’” (Paper 9 at 24-25, quoting Ex. 10074 at 2:13-16.) Dorfman also
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`explicitly recognizes that the back-end of the described system, i.e. the printing
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`company facility, may use “conventional printing technology (Ex. 1007 at p. 8, l.
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`23) which includes offset lithography using an imagesetter or a platesetter.” (Ex.
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`1022 at ¶ 119.)
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`Similarly, as explained by Prof. Lawler, the novel and inventive aspect of
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`Dorfman surrounds the references description of the system’s front end—i.e.,
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`web-based page design utilizing a dynamic PDF, and distributed processing
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`between the end user and central service processing the user’s page design. (Ex.
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`1022 at ¶¶ 111-114, Ex. 1007 at p. 3, l. 24 – p. 4, l. 23.) Tellingly, Dorfman states
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`that “[a]lthough developed for the internet front end, the technology can similarly
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`be used by front ends other than Internet browsers.” (Ex. 1007 at p. 4, ll. 22-23,
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`emphasis added.) In other words, although Dorfman references “response on
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`demand” systems (id. at pp. 2-3) and allows for user input of “variable data” (id. at
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`p. 4, ll. 3-6), the reference is unconcerned with outputting to any specific back-end
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`4 Citations to Dorfman (Ex. 1007) are to the references original page numbering.
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`printing system, only mentioning that the physical act of printing may be
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`Case IPR2014-00791
`Petitioners’ Reply Brief
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`accomplished with “conventional printing technology.” (Id. at p. 4, ll. 18-21, p. 8,
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`l. 23.)
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`Modifying Dorfman to incorporate offset lithography and the generation of a
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`plate-ready file as taught by Apogee would not change Dorfman’s principle of
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`operation (Resp. at 33), but was, in fact, explicitly contemplated by the reference
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`and well recognized by those of skill in the art. (See Petition at 46-48; Ex. 1022 at
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`¶¶ 119, 124.) And, as explained by Prof. Lawler, the plate-ready file of Apogee
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`(i.e., the “Print Image File” or “PIF”) can be output to any desired device, whether
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`a digital printer, imagesetter, or platesetter. (Ex. 1022 at ¶¶ 65-69, 80 (“plate-ready
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`files are not limited to outputting on a platesetter, but may also include files RIPed
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`for output onto a digital printer or imagesetter, for example. The plate-ready file is
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`simply indicative of a page layout file that has gone through the prepress process
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`and has been RIPed such that it contains the exact dots to be transferred onto a
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`printing plate, film, or other imaging substrate”), and 122-123.) Thus, whether the
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`document to be printed is a low volume job using a digital printer, or a high
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`volume job using traditional offset printing, the plate-ready file of Apogee, as
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`combined with the Dorfman system, can accommodate either output technology.
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`Indeed, Patent Owner’s response reinforces the exact motivation that would
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`have driven one of ordinary skill in the art to use offset lithography when using
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`11
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`Dorfman’s system to print custom material in large quantities. In particular, there
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`Petitioners’ Reply Brief
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`is a trade-off between the cost and the number of copies of a job to be printed.
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`Because the cost per page for offset printing is less than digital or
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`electrophotographic printing, large volume jobs benefit from offset printing. In
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`contrast, digital printing may be more efficient for low volume jobs, even though
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`the cost per page is more expensive, because the initial start-up cost associated
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`with making a printing plate is avoided. The exhibits cited by Patent Owner (Resp.
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`at 29) explain this well-known binary trade-off:
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`Offset has a higher cost for starting up a job, because plates must be
`prepared and some paper is wasted during the initial run-up to the first good
`sheet. The binding process that goes with offset (print in signatures, fold,
`gather, bind, and trim) can also be more expensive than the binding process
`for digital printing, where large signatures and gathering are not required.
`But, at present, the cost per page of the actual printing is lower for
`offset, and this is the dominant cost in long runs. So short runs are
`more economical with digital printing, and longer runs are more
`economical with offset.
`(Ex. 2015 at 53, emphasis added (original page 378); Id. at 55 (original page 380).)
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`As the Board correctly recognized in its institution decision, this is the exact reason
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`offset printing would be used in Dorfman’s system when printing “[c]ustomized …
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`materials … in large quantities.” (Paper 9 at 24-25, citing Ex. 1007 at 2:13-16.)
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`12
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`During his deposition, Prof. Lawler similarly explained that the known
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`Case IPR2014-00791
`Petitioners’ Reply Brief
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`choice between printing custom material using a digital printer or offset
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`lithography has to do with “volume, the quantity, the price, the deadline, the
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`budget, [more so] than any particular printing – other printing process.” (Ex. 2017
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`at 47:2-5.) Prof. Lawler also explained that these consideration hold true for “on
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`demand” or variable printing: “a variable data printing system defines a system
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`whereby one or more elements of the job can be changed, and you could certainly
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`use printing plates to produce a variable data job where the volume of copies was
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`worthwhile to be printed by offset lithography using plates.” (Id. at 80:2-7; see
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`also id. at 81:14 – 83:13.) Rather than teaching away from the proposed
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`combination, as Patent Owner alleges, the above design considerations strengthen
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`the rationale for combining Dorfman with Apogee to generate a printing plate for
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`offset printing.
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`B. Dorfman Teaches Separate Central Service and Printing Facilities
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`Patent Owner argues that the Dorfman ground does not render the
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`challenged claims unpatentable because “[t]he claimed invention requires a
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`separate central service facility and printing company facility.” (Resp. at 34.) As
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`explained above, see pages 3-4 supra, there is no limitation in claim 10 reciting a
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`central service facility, let alone a geographically separate central service and
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`printing company facility as alleged by Patent Owner. Patent Owner’s arguments
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`Petitioners’ Reply Brief
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`in this regard are irrelevant to challenged claims 10 and 12-14.5
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`Nonetheless, Petitioners address the substance of Patent Owner’s assertions.
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`Assuming, arguendo, that independent claim 10 required the plate-ready file to be
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`transmitted from a central service facility to a remote printer, there is no further
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`requirement demanding the facilities to be geographically separate from one
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`another. Patent Owner alleges that Dorfman does not teach separate central service
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`and printing company facilities because the central service and printing company
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`facilities are described as being “present at the same remote location, e.g., the
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`facilities of a commercial printing service.” (Resp. at 34, emphasis added.)
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`Whether Dorfman’s system must be designed in this way—i.e., with the PDF
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`builder 6 and memory 4, and production printing system 10 located at the same
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`physical location—is inapposite.
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`All claim 10 requires is that the remote printer receives a plate-ready file.
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`Patent Owner does not propose a construction for the term “remote,” nor is one
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`needed. The plain language of the claim simply requires the printer to be distinct
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`5 Although not separately argued by Patent Owner, claim 11 of the ‘349 patent
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`states that the “low resolution files are stored in a storage device at a central
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`service facility.” This is taught by Dorfman. (Petition at 57.)
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`14
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`(or “remote”) from the components that carry out the other claimed steps.
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`Case IPR2014-00791
`Petitioners’ Reply Brief
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`Providing the commercial printing system of Dorfman with a plate-ready file as
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`taught by Apogee renders claim 10 obvious. Nothing in claim 10, or in the claims
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`dependent therefrom, require the facilities to be geographically remote from one
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`another, whether that means different rooms in the same building, different
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`buildings in the same city, or different cities altogether. The scope of the
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`challenged claims, even after improperly reading a central service facility into
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`claim 10 as done by Patent Owner, is broad enough to cover all of these scenarios.
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`(See Ex. 2017 at 103:21 – 104:14, Prof. Lawler testifying that one skilled in the art
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`would not interpret Fig. 1 of Dorfman as limiting the location of the described
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`elements (i.e., claimed facilities) to any particular location or area.)
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`Further, Patent Owner misguidedly argues that the combination of Dorfman
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`Apogee, and OPI White Paper is distinguishable from claims 10-14 because the
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`creation of the PDF file in Dorfman is carried out at the end-user, and not the
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`central service facility. (Resp. at 36-37.) First, as specified above, there is
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`absolutely no requirement in the challenged claims that any of the recited
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`functions, other than storing low resolution files, must occur at a central service
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`facility. Second, there is no element in claims 10-12 requiring the generation of a
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`PDF file. Third, even setting these dispositive distinctions aside, Patent Owner is
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`incorrect that the creation of the PDF file in Dorfman occurs at the end-user.
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`15
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`Dorfman explicitly states that “[t]he PDF builder 6 [which resides at a remote
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`Petitioners’ Reply Brief
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`location from the end-user] then creates a dynamic PDF file on-the-fly…” (Ex.
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`1007 at p. 7, l. 28; see also id. at p. 6, ll. 4-6.) The PDF file is created at a location
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`remote from the end user, specifically the PDF builder 6 which, in conjunction
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`with the memory 4, constitute a central service facility. Claims 10-14 are
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`unpatentable in view of Dorfman, Apogee, and OPI White Paper.
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`IV. APOGEE WAS PUBLICALLY AVAILABLE
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`In its opening papers, Petitioners established, by a preponderance of the
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`evidence, that at least 76,030 copies of the Apogee publication (Ex. 1008) were
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`printed and distributed to the public prior to the earliest priority date of the ‘349
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`patent. (See Ex. 1023 at pp. 3-4, 21.) Specifically, Petitioners provided the
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`declaration of Johan Suetens establishing that Apogee was distributed to the public
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`via Agfa sales personnel in the normal course of business shortly after a press
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`briefing held on March 17, 1998, but no later than May 28, 1998. (Id. at ¶¶ 8, 11.)
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`On April 2, 2015, Patent Owner simultaneously objected to Mr. Suetens
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`declaration and the Apogee exhibit (Exhibits 1023 and 1008, respectively) under
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`37 C.F.R. § 42.64(b)(1), and prematurely moved to exclude the same for allegedly
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`failing to establish public accessibility of Apogee. As Rule 42.64(b)(2) allows,
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`Petitioners served supplemental evidence on April 16, 2015 (Exs. 1024 and 1025).
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`Because supplemental evidence often moots an objection, motions to exclude are
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`16
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`only authorized at the close of trial, after all supplemental evidence has been
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`Case IPR2014-00791
`Petitioners’ Reply Brief
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`served. Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48758 (Aug. 14,
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`2012) (“Once the time for taking discovery in the trial has ended, the parties will
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`be authorized to file motions to exclude evidence believed to be inadmissible.”)
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`Similarly, because supplemental evidence may moot many disputes, the
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`Board has instructed that supplemental evidence is usually not filed at the time of
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`service. See, e.g., Handi-Quilter, Inc. v. Bernina Int’l AG, IPR2013-00364, Paper
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`30 at 3 (PTAB June 12, 2014) (“The Rules do not provide for such supplemental
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`evidence to be filed with the Board at the time it is served to the objecting party,
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`because the Board anticipates that a party’s objection to evidence may sometimes
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`be overcome by the supplemental evidence. In such situations, the objection
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`would not become the basis of a motion to exclude evidence under § 42.64(c), and
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`the Board need not be made aware of the objection or the supplemental
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`evidence.”). For this reason, the supplemental evidence was served on Patent
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`Owner, but not filed on April 16th.
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`Now, because the Motion to Exclude was filed, prematurely, mid-trial,
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`before supplemental evidence was served, Exhibits 1024 and 1025 are appropriate
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`Reply exhibits. See, e.g., Brookwood Co. Inc. v. Nextex Applications, Inc.,
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`IPR2014-00412, Paper 19 at 5 (PTAB Sept. 24, 2014) (recognizing that petitioner
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`evidence served in response to an evidentiary objection may later be filed via
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`17
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`petitioner’s reply and/or in opposition to a motion to exclude). As the
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`Case IPR2014-00791
`Petitioners’ Reply Brief
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`supplemental evidence of April 16th is both responsive to the outstanding Motion
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`to Exclude as well as the duplicate argument raised in Patent Owner’s Response, it
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`is now appropriately filed. This record evidence further corroborates the public
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`accessibility of Apogee as explained next.
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`First, Petitioners served the Supplemental Declaration of Johan Suetens (Ex.
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`1025). There, Mr. Suetens explains exactly how Agfa’s Enterprise Management
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`System works and how Agfa monitored the dissemination of brochures and other
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`documents like Apogee (Ex. 1008) during the regular course of business. In
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`particular, Agfa’s Enterprise Management System logged requests from Agfa’s
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`regional offices for copies of brochures and other documents (see Ex. 1025 at ¶¶ 6,
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`10-11, Attachment E), and then logged the date when the ordered brochures were
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`printed and delivered to Agfa’s warehouses (see Ex. 1025 at ¶¶ 6, 12, Attachment
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`F). Following this, and once the document request was prepared and fulfilled,
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`Agfa’s accounting department would invoice the requesting individual for the
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`ordered document/brochures. (See Ex. 1025 at ¶¶ 7-8, 14, Attachment H.)
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`Between May 15, 1998 and August 13, 1998, Agfa Belgium received
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`714,320 copies of Apogee (Ex. 1008). Specifically, 44,014 copies were received
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`on May 15, 1998; 492,926 copies were received on June 10, 1998; 101,350 copies
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`were received on July 3, 1998; and 76,030 copies were received on August 13,
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`18
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`1998. (See Ex. 1025 at ¶ 13.) Attachment H to Mr. Suetens supplemental
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`Case IPR2014-00791
`Petitioners’ Reply Brief
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`declaration also shows that individuals working for Agfa USA were invoiced for
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`the Apogee brochure (Ex. 1008) throughout 1998. By way of example, an invoice
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`for 1,000 Apogee brochures was sent to a Mr. Morrisey on May 26, 1998; an
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`invoice for 2,500 Apogee brochures was sent to a Mr. Ross on June 11, 1998; and
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`an invoice for 400 Apogee brochures was sent to a Mr. Jahn on August 11, 1998.
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`The supplemental declaration of Mr. Suetens clearly corroborates Petitioners’
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`original assertion—that hundreds of thousands of copies of Apogee were printed,
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`received by Agfa, and then distributed to Agfa’s sales personnel for distribution to
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`the public throughout 1998.
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`Second, Petitioners served the Declaration of Michael Jahn (Ex. 1024),
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`which is the same Mr. Jahn referred to in the paragraph above. Mr. Jahn worked
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`for Agfa from August 1997 to September 2001 and, during that time, he assisted in
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`the product management and development of the Agfa Apogee product. This
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`included Mr. Jahn giving numerous presentations and seminars throughout the
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`world on Agfa’s products, including Apogee. (Ex. 1024 at ¶¶ 5, 9-11.) Apogee
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`(Ex. 1008) was the brochure that Mr. Jahn handed to conference/seminar attendees
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`after they visited Agfa’s presentation booth. (Ex. 1024 at ¶¶ 9, 11.) Not only did
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`Mr. Jahn distribute hard-copies of Apogee to conference/seminar attendees
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`throughout 1998 and thereafter, he also directed attendees to his website
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`19
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`(www.jahn.org), where an earlier version of Apogee was available for download
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`Case IPR2014-00791
`Petitioners’ Reply Brief
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`(the “March Apogee Brochure”). (Ex. 1024 at ¶¶ 12, 14.)
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`More specifically, Mr. Jahn testified that he uploaded the March Apogee
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`Brochure to his website sometime in March 1998; that his website was freely
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`accessible to the public; and that it was his practice to direct conference attendees
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`to his website to download Agfa literature, such as Apogee. (Ex. 1024 at ¶¶ 18-
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`21.) Mr. Jahn’s declaration also includes an affidavit from Christopher Butler of
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`the Internet Archive, attaching a true and correct copy of Mr. Jahn’s website as it
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`existed on January 25, 1999. (Ex. 1024 at ¶ 13.) As can be seen from the Internet
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`Archive’s records (see Ex. 1024 Attachment C at pp. 1-7), the March Apogee
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`Brochure was freely available on jahn.org by January 25, 1999, at the latest, which
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`is the first Wayback Machine capture of Mr. Jahn’s website. (Ex. 1024 at ¶¶ 15-
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`17, Attachment C at p. 7 (“Agfa Apogee” link).) However, as explained above,
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`Mr. Jahn confirmed that the March Apogee Brochure would have been available
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`for download in March 1998. (Ex. 1024 at ¶¶ 17-19.) Mr. Jahn also explained that
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`the differences be
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