IN THE UNITED STATES PATENT & 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 U.S. 6,611,349
`______________________
`
`
`CORRECTED PETITION FOR INTER PARTES REVIEW OF
`CLAIMS 4-14 OF U.S. PATENT NO. 6,611,349
`UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`
`
`
`

`

`Inter Partes Review of U.S. Patent No. 6,611,349
`
`TABLE OF CONTENTS
`
`EXHIBIT LIST ........................................................................................................ iii 
`I. 
`INTRODUCTION ........................................................................................... 1 
`II.  MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8 ..................... 1 
`A. 
`Real Party-In-Interest ........................................................................... 1 
`B. 
`Related Matters ..................................................................................... 1 
`1. 
`Related Litigation ....................................................................... 1 
`2. 
`Related Applications .................................................................. 2 
`3. 
`Related PTAB Proceedings ........................................................ 2 
`Lead and Back-Up Counsel .................................................................. 2 
`C. 
`Service Information .............................................................................. 2 
`D. 
`III.  OVERVIEW OF CHALLENGE AND RELIEF REQUESTED .................... 3 
`A.  Grounds for Standing ........................................................................... 3 
`B. 
`Identification of Challenge ................................................................... 4 
`IV.  Background OF THE ‘349 PATENT .............................................................. 7 
`A. 
`Background of the Technology and Overview of the ‘349 Patent ....... 7 
`B. 
`Prosecution History of the ‘349 Patent .............................................. 13 
`C. 
`IPR2013-00474 .................................................................................. 17 
`CLAIM CONSTRUCTION .......................................................................... 19 
`A. 
`“plate-ready file … being provided in real time …” ......................... 20 
`B. 
`“plate-ready file” ................................................................................ 21 
`C. 
`“thin PostScript file” .......................................................................... 22 
`D. 
`“fat PostScript file” ............................................................................ 23 
`VI.  LEVEL OF ORDINARY SKILL IN THE ART ........................................... 23 
`VII.  THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ‘349 PATENT IS UNPATENTABLE ............................. 24 
`
`V. 
`
`
`
`
`i
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`

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`Inter Partes Review of U.S. Patent No. 6,611,349
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`A. 
`
`B. 
`C. 
`D. 
`
`Claims 4-9 are Rendered Obvious by Jebens, the OPI White Paper,
`and Apogee ......................................................................................... 24 
`Claims 10-14 are Rendered Obvious by Jebens and Apogee ............ 39 
`Statement of Non-redundancy ............................................................ 42 
`Claims 4-8 and 10-14 are Rendered Obvious by Dorfman, OPI White
`Paper, and Apogee .............................................................................. 44 
`Claim 9 is Rendered Obvious by Dorfman, OPI White Paper, Apogee,
`and Adams II ...................................................................................... 59 
`VIII.  CONCLUSION .............................................................................................. 60 
`
`
`
`E. 
`
`
`
`
`ii
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`Inter Partes Review of U.S. Patent No. 6,611,349
`
`EXHIBIT LIST
`
`U.S. Patent No. 6,611,349 to Vogt et al.
`
`Listing of pending litigations involving the ‘349 patent
`
`Excerpts from the prosecution history of U.S. Patent No. 6,611,349
`
`Decision Denying Petition to Institute in IPR2013-00474
`
`Excerpts from the prosecution history of U.S. Patent No. 6,738,155
`
`U.S. Patent No. 6,321,231 to Jebens et al.
`
`International Publication No. WO 98/08176 to Dorfman et al.
`
`Apogee, The PDF-based Production System
`
`Apple OPI White Paper
`
`PDF Printing and Publishing, The Next Revolution After Gutenberg
`
`Computer-to-Plate: Automating the Printing Industry
`
`CTP Original Impressions Complaint
`
`ifra Special Report, Picture Replacement Techniques for Newspapers
`
`Adobe PostScript Extreme, Adobe Solutions for Commercial Printing
`
`Teaching Acrobat New Tricks
`
`PDF for Prepress Workflow and Document Delivery
`
`Envision tomorrow: PDF, the next generation of publishing
`workflows
`
`Agfa Apogee, The Future of Production Workflows
`
`Open Prepress Interface—Version 2.0
`
`iii
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
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`

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`Inter Partes Review of U.S. Patent No. 6,611,349
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`
`
`1020
`
`1021
`
`1022
`
`1023
`
`Planning and Managing AppleTalk Networks
`
`Resolving AppleTalk WAN routing Woes
`
`Declaration of Professor Brian P. Lawler
`
`Declaration of Johan Suetens
`
`
`
`
`iv
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`

`

`Inter Partes Review of U.S. Patent No. 6,611,349
`
`I.
`
`INTRODUCTION
`Eastman Kodak Company (“Kodak”), Agfa Corporation1 (“Agfa”), Esko
`
`Software BVBA (“Esko”), and Heidelberg, USA2 (“Heidelberg”) (collectively,
`
`“Petitioners”) respectfully requests inter partes review (“IPR”) for claims 4-14 of
`
`U.S. Patent No. 6,611,349 (“the ‘349 patent,” attached hereto as Ex. 1001) in
`
`accordance with 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42.100 et seq.
`
`II. MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8
`A. Real Party-In-Interest
`
`Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner certifies that Kodak, Agfa,
`
`Esko, and Heidelberg are the real parties-in-interest.
`
`B. Related Matters
`
`1.
`
`Related Litigation
`
`Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioners state that the ‘349 patent is
`
`asserted in 49 filed litigations, which have been listed in Ex. 1002. Patent Owner
`
`has sued numerous printing service providers, for providing printing and
`
`publishing service over the internet. Some of these litigations have settled, but the
`
`majority remain pending.
`
`
`1 Agfa Graphics is a subsidiary of Agfa Corporation.
`
`2 Heidelberg, USA is a 100% owned subsidiary of Heidelberger Druckmaschinen
`
`AG, a joint stock company according to German Law.
`
`
`
`
`1
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`

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`Inter Partes Review of U.S. Patent No. 6,611,349
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`The ‘349 patent shares a common written description with U.S. Patent No.
`
`6,738,155 (“the ‘155 patent”). This petition is directed to claims 4-14 ‘349 patent;
`
`two petitions for inter partes review of the ‘155 patent are being filed concurrently.
`
`A separate petition for inter partes review of claims 1-3 of the ‘349 patent is also
`
`being filed.
`
`2.
`
`Related Applications
`
`As the four petitions directed to the ‘349 and ‘155 patents, two petitions for
`
`each patent, were filed on the same day, and share the same written description, the
`
`Patent Trial and Appeal Board (“PTAB”) may wish to consider assigning the same
`
`panel to these four petitions.
`
`3.
`
`Related PTAB Proceedings
`
`As explained in greater detail in section IV.C, the Printing Industries of
`
`America previously filed a petition for inter partes review of the ‘349 patent (see
`
`IPR2013-00474), which was denied by the PTAB. See Ex. 1004.
`
`C. Lead and Back-Up Counsel
`
`Pursuant to 37 C.F.R. § 42.8(b)(3), Petitioner provides the following
`
`designation of counsel: Lead counsel is Scott A. McKeown (Reg. No. 42,866) and
`
`back-up counsel is Michael L. Kiklis (Reg. No. 38,939).
`
`D. Service Information
`
`Pursuant to 37 C.F.R. § 42.8(b)(4), papers concerning this matter should be
`
`
`
`
`2
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`

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`Inter Partes Review of U.S. Patent No. 6,611,349
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`served on the following.
`
`Address:
`
`Scott McKeown
`Oblon Spivak
`1940 Duke Street
`Alexandria, VA 22314
`cpdocketmckeown@oblon.com and
`Email:
`cpdocketkiklis@oblon.com
`
`Telephone: (703) 412-6297
`Fax:
`
`(703) 413-2220
`
`
`III. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
`Pursuant to 37 C.F.R. § 42.22(a)(1) and §§ 42.104(b) and (b)(1) Petitioners
`
`challenge claims 4-14 of the ‘349 patent.
`
`A. Grounds for Standing
`
`Pursuant to 37 C.F.R. § 42.104(a), Petitioners hereby certify that the ‘349
`
`patent is available for inter partes review and that the Petitioners are not barred or
`
`estopped from requesting inter partes review challenging the claims of the ‘349
`
`patent on the grounds identified herein. Although a petition for inter partes review
`
`of the ‘349 patent was previously filed by the Printing Industries of America
`
`(“PIA”) (IPR2013-00474 (“the ‘474 Petition”), see also Ex. 1004), the prohibitions
`
`of 35 U.S.C. §§ 315 (a)-(b) are inapplicable. Petitioners did not participate in that
`
`filing effort, were not the real parties-in-interests or privies to PIA, and, in any
`
`event, all of the filed litigations listed in Ex. 1002 were served within the last 12
`
`months.
`
`
`
`
`3
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`Inter Partes Review of U.S. Patent No. 6,611,349
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`B.
`
`Identification of Challenge
`
`Pursuant to 37 C.F.R. §42.104(b) and (b)(1), Petitioners request inter partes
`
`review of claims 4-14 of the ‘349 patent, and that the PTAB determine the same to
`
`be unpatentable. Pursuant to 37 C.F.R. § 42.204(b)(2), inter partes review of the
`
`‘349 patent is requested in view of the following references, each of which is prior
`
`art to the ‘349 patent under 35 U.S.C. §§ 102(a), (b), and/or (e):
`
`a. U.S. Patent No. 6,321,231 to Jebens et al. (“Jebens”) issued on
`
`November 20, 2001, based on Application Serial No. 08/908,046, filed August 11,
`
`1997, which is prior to the earliest filing date claimed by the ‘349 patent (July 30,
`
`1999). Jebens is therefore available as prior art under pre-AIA 35 U.S.C. § 102(e).
`
`As set forth in section IV.B, below, Jebens was not cited during the original
`
`prosecution of the ‘349 patent despite Applicant being aware of the reference and
`
`its materiality. Jebens was applied during the original prosecution of the ‘155
`
`patent, which was filed on the same day as the ‘349 patent by the same entity and
`
`shares a materially identical specification. Petitioners present new supporting
`
`evidence, an explanation of Jebens, and a combination with one or more other prior
`
`art references that were never before considered by the Office and renders the
`
`challenged claims unpatentable. Jebens was not relied upon by PIA in the ‘474
`
`Petition.
`
`
`
`
`b. International Publication No. WO 98/08176 to Dorfman et al.
`
`4
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`Inter Partes Review of U.S. Patent No. 6,611,349
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`(“Dorfman”) was published February 26, 1998, which is prior to the earliest filing
`
`date claimed by the ‘349 patent (July 30, 1999). Dorfman is therefore available as
`
`prior art under pre-AIA 35 U.S.C. § 102(b). Dorfman was not cited during the
`
`original prosecution of the ‘349 patent. Dorfman was generally cited in the ‘474
`
`Petition for its teachings directed to dependent claims 5 and 6 of the ‘349 patent.
`
`The Office did not address these claims in its decision denying inter partes review.
`
`See generally Ex. 1004. In any event, Petitioners present new supporting evidence
`
`and an explanation of Dorfman that was absent from the ‘474 Petition and,
`
`therefore, never before considered by the Office.
`
`c. Apogee, The PDF-based Production System (“Apogee”), was
`
`published in 1998, which is prior to the earliest filing date claimed by the ‘349
`
`patent (July 30, 1999). At the latest, Apogee was made available to the public on
`
`May 28, 1998. See Ex. 1022. Apogee is therefore available as prior art under pre-
`
`AIA 35 U.S.C. § 102(b). Apogee was not cited during the original prosecution of
`
`the ‘349 patent, nor the ‘474 Petition.
`
`d.
`
`The Apple OPI White Paper (“OPI White Paper”) was published in
`
`1995, which is prior to the earliest filing date claimed by the ‘349 patent (July 30,
`
`1999). The OPI White Paper is therefore available as prior art under pre-AIA 35
`
`U.S.C. § 102(b). The OPI White Paper was not cited during the original
`
`
`
`
`5
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`

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`Inter Partes Review of U.S. Patent No. 6,611,349
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`prosecution of the ‘‘349 patent, nor the ‘474 Petition. See also Ex. 1022 at ¶¶ 105-
`
`109.
`
`e. Computer-to-Plate: Automating the Printing Industry by Richard M.
`
`Adams II and Frank J. Romano (“Adams II”), Graphic Arts Technical Foundation,
`
`was published in 1996, which is prior to the earliest filing date claimed by the ‘349
`
`patent (July 30, 1999). Adams II is therefore available as prior art under pre-AIA
`
`35 U.S.C. § 102(b). Adams II was not cited during the original prosecution of the
`
`‘349 patent, but was applied by PIA in the ‘474 Petition against claims 2 and 4 of
`
`the ‘349 patent for its teachings directed to the OPI process. The Office did not
`
`address Adams II in its decision denying inter partes review. See generally Ex.
`
`1004. In any event, in addition to presenting a combination of references not
`
`previously considered by the PTAB, Petitioners present new supporting evidence
`
`and an explanation of Adams II that was absent from the ‘474 Petition and,
`
`therefore, never before considered by the Office.
`
`
`
`Petitioner requests cancellation of challenged claims 4-14 under the
`
`following statutory grounds:
`
`A. Claims 4-9 are rendered obvious by Jebens in view of the OPI White
`
`Paper and further in view of Apogee.
`
`B. Claims 10-14 are rendered obvious by Jebens in view of Apogee
`
`C. Claims 4-8 and 10-14 are rendered obvious by Dorfman in view of the
`
`
`
`
`6
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`Inter Partes Review of U.S. Patent No. 6,611,349
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`OPI White Paper and further in view of Apogee.
`
`D. Claim 9 is rendered obvious by Dorfman in view of the OPI White
`
`Paper and further in view of Apogee and Adams II.
`
`Section VII demonstrates, for each of the statutory grounds, that there is a
`
`reasonable likelihood that the Petitioner will prevail. See 35 U.S.C. § 314(a).
`
`Additional explanation and support for each ground of the rejection is set forth in
`
`the Expert Declaration of Prof. Brian P. Lawler (Exhibit 1022).
`
`IV. BACKGROUND OF THE ‘349 PATENT
`A. Background of the Technology and Overview of the ‘349 Patent
`
`
`
`The ‘349 patent relates to a system and method for providing printing and
`
`publishing services over a communication network, such as the internet. See, e.g.,
`
`Ex. 1001 at 1:7-10. More particularly, the ‘349 patent claims the basic and widely
`
`published idea of using a communication network to connect the creative or front-
`
`end of the printing and publishing industry (e.g., graphic artists, publishers, and
`
`those creating page designs) with the services end (e.g., service bureaus and
`
`printing facilities that actually prepare for printing, and print, the designs created
`
`by the front-end users). Ex. 1022 at ¶ 22. By the mid-1990s, and even before, this
`
`process was digitized and integrated with different print-output technologies
`
`
`
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`7
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`Inter Partes Review of U.S. Patent No. 6,611,349
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`including imagesetting and computer-to-plate technology (CTP3). Ex. 1011 at p. 9;
`
`Ex. 1010 at pp. 64-77.
`
`
`
`In a system outputting to an imagesetter, bit maps are communicated to an
`
`imager and the imagesetter exposes and marks the film corresponding to the
`
`communicated bitmaps. Ex. 1009 at 8, 40. The film generated by the imagesetter
`
`can then be turned into a printing plate for use in offset printing. Ex. 1022 at ¶ 31.
`
`The use of OPI servers, Workflow servers, Database Servers, File Management
`
`and Image Servers spurred the digitization of the printing workflow well before the
`
`filing of the ‘349 patent. See, e.g., Ex. 1010 at pp. 73-77. Ex. 1022 at ¶ 124.
`
`
`
`CTP systems were a natural progression of the existing computer networked
`
`and digitized workflow. In a CTP system, “publishers provide all editorial and
`
`advertising content in digital form (either on disk or by sending the data over
`
`telephone lines) to printers who, in turn, produce electronic web-off-set printing
`
`plates, eliminating all the traditional intermediate film-preparation stages.” Ex.
`
`1011 at p. 9. Because digital transmission of files is faster than shipping files by
`
`courier, costs less, and can be done any time of day, CTP systems also commonly
`
`3 CTP, or Computer-to-Plate, is not to be confused with the current owner of the
`
`‘349 and ‘155 patents, CTP Innovations, LLC. CTP Innovations, LLC was formed
`
`in 2013, two decades after the first CTP systems were demonstrated in Sept. 1993
`
`(see Ex. 11 at p. 13), ostensibly for the sole purpose of asserting patents.
`
`
`
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`8
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`Inter Partes Review of U.S. Patent No. 6,611,349
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`employed a digital workflow with data being provided and transferred remotely
`
`and in real-time over communications networks. See, e.g., id. at p. 32; Ex. 1022 at
`
`¶¶ 60, 69-71. Thus, and directly contrary to the position advocated by Patent
`
`Owner in the filed litigations involving the ‘349 patent, electronic transmission of
`
`data and files used during the printing and publishing workflow was well-known
`
`and commonplace.4 With this background in mind, a more detailed explanation of
`
`the ‘349 patent is provided below.
`
`
`
`According to the ‘349 patent, “[k]ey steps for producing printed materials
`
`using a plate process include (1) preparing copy elements for reproduction [e.g.,
`
`the creative front-end referred to above], (2) prepress production, (3) platemaking,
`
`(4) printing, and (5) binding, finishing and distribution.” Ex. 1001 at 1:12-15. The
`
`claims of the ‘349 patent are concerned with steps 1-3, above. In the first step, the
`
`creative or front-end – e.g., a publisher, direct marketer, advertising agency, or
`
`corporate communication department – uses a desktop publishing program such as
`
`“QuarkXpress” to design pages from image and data files. Id. at 1:16-25. As was
`
`ubiquitously well-known in the art, the page building process is enhanced by Open
`
`Prepress Interface (OPI) software and servers. OPI allows the front-end user to
`
`4 See, e.g., Ex. 1012 at ¶¶ 11 and 12 (alleging that “[p]rior to the inventions
`
`claimed in the ‘155 and ‘349 patents” pages to be printed and printing proofs were
`
`sent between front-end users and printing companies via mail or express carrier).
`
`
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`Inter Partes Review of U.S. Patent No. 6,611,349
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`perform page building operations using low-resolution images rather than the high-
`
`resolution images that will ultimately be used for printing. Due to their large size,
`
`high-resolution images were difficult to transfer over the network communication
`
`links commonly used prior to the filing of the ‘349 patent. Ex. 1022 at ¶¶ 39, 59.
`
`Thus, as would be expected by one of ordinary skill in the art, the system described
`
`by the ‘349 patent also utilizes an OPI server to facilitate page building. See, e.g.,
`
`Ex. 1001 at 5:59 – 6:3, 7:38-51.
`
`
`
`As shown in figure 1, below, the OPI process begins by scanning and saving
`
`high-resolution images to the OPI server. Ex. 1013 at p. 5. The OPI server then
`
`creates a low-resolution image corresponding to the scanned high-resolution
`
`image. Id. at p. 6. The front-end user (labeled “Page Make-Up” in figure 1) then
`
`accesses the OPI server’s file database to select and download the low-resolution
`
`images that will be used during the page design process. Id. Once the page design
`
`is complete, the front-end user transfers its design with embedded OPI comments
`
`to the server. Id. The OPI comments allow the server to locate the high-resolution
`
`images corresponding to the OPI comments and place the high-resolution images
`
`into the design before it is output to the desired printing device. Id. at 7.
`
`
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`10
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`Inter Partes Review of U.S. Patent No. 6,611,349
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`
`Next, in step two of the general printing process described and claimed by
`
`
`
`the ‘349 patent—e.g., prepress production—the pages created by the front-end user
`
`are “transformed into a medium that is reproducible for printing.” Ex. 1001 at
`
`1:26-28. This involves, for example, “image color correction, file conversion,
`
`RIPing, trapping, proofing, imposition, filmsetting, and platesetting,” id. at 1:29-
`
`32, as well as the OPI process described above. Again, each of these processes,
`
`which are used to produce a “CTP file” or “plate-ready file” as described by the
`
`‘349 patent, were well-known and in wide-spread use prior to its filing date. See,
`
`e.g., id. at 1:26-44; Ex. 1022 at ¶ 63-65.
`
`
`
`Lastly, in step three, a printing plate is made at a printing facility. This is
`
`done by “RIPing” the page layout file. Ex. 1022 at ¶¶ 46, 68. “RIP,” which stands
`
`for raster image processor, converts the page layout file to a bitmap. Ex. 1001 at
`
`7:57-59. “A bitmap is a digitized collection of binary pixel information that gives
`
`an output device, such [as a laser printer, imagesetter, or platesetter] the ability to
`
`image data to paper, film, or plate.” Id. at 7:59-62. Thus, in this final step, the
`
`
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`11
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`Inter Partes Review of U.S. Patent No. 6,611,349
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`printing facility takes the plate-ready-file and produces a printing plate. See, e.g.,
`
`id. at 1:45-51.
`
`
`
`Figure 1 of the ‘349 patent, reproduced below, depicts an embodiment of the
`
`claimed invention wherein “system components [that execute the above
`
`functionality] are installed at an end user facility, a printing company facility, and a
`
`central service facility.” Id. at 2:33-34.
`
`
`The end user facility 300 “provides page building operations allowing the
`
`
`
`design and construction of pages from images, text, and data available via said
`
`communication network.” Id. at 2:55-58. In other words, the end user facility 300
`
`performs the first step described above (for example, a user sitting at a computer
`
`using software such as QuarkXPress). “The central service facility [105] provides
`
`storage, file processing, remote access, and content management operations. File
`
`processing operations include generating a plate-ready file from pages designed at
`
`said end user facility.” Id. at 2:58-62. In other words, the central service facility
`
`
`
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`12
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`Inter Partes Review of U.S. Patent No. 6,611,349
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`performs step two described above—prepress production. And, lastly, “[t]he
`
`printing company facility [400] provides printing operations for producing a
`
`printing plate from said plate-ready file,” id. at 2:64-65, which is nothing more
`
`than step three, or “platemaking,” as described above. Accordingly, and as
`
`explained in greater detail below, the ‘349 patent describes and claims nothing
`
`more than a digital workflow between networked computers that was known,
`
`extensively studied, and implemented well before the filing date of the ‘349 patent.
`
`B. Prosecution History of the ‘349 Patent
`
`
`
`On July 30, 1999, Applicants filed Application Serial No. 09/365,365 (“the
`
`‘365 application), which issued as the ‘349 patent on August 26, 2003. In a first
`
`Office Action dated January 29, 2003, claims 1, 3, and 7 were rejected as
`
`anticipated by U.S. Patent No. 6,119,133 to Nusbickel et al. (“Nusbickel”); claims
`
`5, 8, and 9 were rejected as obvious over Nusbickel in view of the knowledge of
`
`one of ordinary skill in the art; claims 2, 4, and 6 were objected to as being
`
`dependent upon a rejected base claim; and claims 10-20 were deemed allowable.
`
`Ex. 1003 at pp. 3-7.
`
`
`
`The Examiner indicated that claims 10-15 (which issued as claims 4-9 of the
`
`‘349 patent) were allowable because
`
`the prior art does not teach or suggest … ‘parsing said thin PostScript
`file to extract data associated with low resolution images and replace
`with high resolution data, thereby forming a fat PostScript file …
`creating a portable document format file from the fat PostScript file
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`Inter Partes Review of U.S. Patent No. 6,611,349
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`and converting said PDF file to a file in plate ready format.
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`Id. at p. 6. However, as will be explained in detail in section VII.A, VII. D, below,
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`the creation of “thin” and “fat” PostScript files represents nothing more than a
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`description of the prior art OPI process explained above. Further, as explained in
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`section VII.A, VII.D, below, creating a PDF file and then “RIPing” that PDF file to
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`create a plate-read file again represents nothing more than the standard prepress
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`and platemaking process used by skilled artisans at the time the ‘349 patent was
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`filed.
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`
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`The Examiner indicated that claims 16-20 (which issued as claims 10-14 of
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`the ‘349 patent) were allowable because
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`the prior art does not teach or suggest … generating low resolution
`files corresponding to said high resolution files … providing said low
`resolution files to a remote client for the designing of a page layout
`via a communication network … generating a plate-ready file from
`the page layout designed by said remote client…
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`
`These limitations represent nothing more than a description of the prior art OPI and
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`prepress process. In response, Applicant cancelled claims 1, 3, 5, and 7-9, and
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`amended claims 2, 4, and 6 into independent form, which issued as independent
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`claims 1, 2, and 3 of the ‘349 patent. Ex. 1003 at pp. 16-21. Applicant also noted
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`that Nusbickel fails to disclose “producing a printing plate from said plate-ready
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`file” because Nusbickel “describes publishing to web pages.” Id. at p. 21.
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`A notice of allowability followed. Id. at p. 24. The Examiner’s reasons for
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`Inter Partes Review of U.S. Patent No. 6,611,349
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`allowance for claims 2, 4, and 6 of the ‘365 application (claims 1, 2, and 3 of the
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`‘349 patent, respectively) are reproduced below.
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`Claim 2 is allowed for the reason the prior art does not teach or
`suggest, ‘wherein
`the end user facility further comprises a
`communication routing device coupling the end user facility to the
`communication network, a computer which performs page building
`operations, and a proofer which provides printed samples of pages.’
`Claim 4 is allowed for the reason the prior art does not teach or
`suggest in claimed combination, ‘… wherein said file processing
`further comprises performing open prepress interface operations.’
`Claim 6 is allowed for the reason the prior art does not teach or
`suggest in claimed combination, ‘... wherein the printing customer
`facility further comprises a communication routing device coupling
`the printing company facility to the communication network, a
`computer which performs imposition operations, and a platesetter
`which exposes a printing plate.’
`
`Id. at p. 25. As set forth in section VII, each of these features are clearly
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`
`
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`taught by the prior art combinations applied herein. Moreover, not only are these
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`features generic recitations of common steps/components of known digital
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`workflows, when Applicant amended claim 2 of the ‘365 application to overcome
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`the rejection in view of Nusbickel, Applicant was aware of U.S. Patent No.
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`6,321,231 to Jebens et al. (“Jebens) (which has been applied herein) teaching the
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`very features the Examiner identified as missing from the prior art. Because the
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`Examiner was never provided an opportunity to vet Jebens during the prosecution
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`of the ‘365 application, claim 2 of the ‘365 application (claim 1 of the ‘349 patent)
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`was allowed to issue.
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`Inter Partes Review of U.S. Patent No. 6,611,349
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`
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`U.S. Application Serial No. 09/364,935 (“the ‘935 application”), which
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`matured into the ‘155 patent, was being prosecuted in parallel to the ‘365
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`application, but before different examiners. The ‘935 application was filed on the
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`same day as the ‘365 application, was filed by a common inventive entity as the
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`‘365 application and, but for changes to the Abstract and Summary of the
`
`Invention sections, shares what appears to be an identical specification to the ‘365
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`application.
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`
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`As noted above, claim 2 of the ‘365 application was allowed because the
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`Examiner indicated that the prior art did not teach or suggest “wherein the end user
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`facility further comprises a communication routing device coupling the end user
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`facility to the communication network, a computer which performs page building
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`operations, and a proofer which provides printed samples of pages.” Claim 2 of
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`both applications contain this identical limitation. See, e.g., Ex. 1005 at p.15
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`(claim 2). At the time the Applicant amended claim 2 of the ‘365 application on
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`April 29, 2003 to include all of the limitation of claim 1, thereby rendering it
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`allowable over the applied prior art (see, e.g., Ex. 1003 at p. 16), the Applicant was
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`aware that claim 2 of the ‘935 application had been rejected on March 23, 2003 in
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`view of Jebens. See Ex. 1005 at p. 4. The same patent attorney prosecuted both
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`applications. See Ex. 1003 at p. 23 and Ex. 1005 at p.23.
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`Claim 2 of the ‘935 application, which ultimately issued as claim 2 of the
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`Inter Partes Review of U.S. Patent No. 6,611,349
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`‘155 patent, was argued to be distinguishable over the prior art not because Jebens
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`failed to teach the above “end user facility” limitations, but because applicant
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`argued that Jebens in combination with the applied prior art did not disclose the
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`generation of a PDF file or generating a plate-ready file from said PDF file. See,
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`e.g., Ex. 1005 at pp. 19-22. A notice of allowance followed.
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`
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`At no time during the prosecution of the ‘935 application did Applicant
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`dispute the office’s assertion that Jebens taught the “end user facility” limitations
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`of claim 2 of the ‘935 application, which directly corresponds to claim 2 of the
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`‘365 application (i.e., the wherein clause of claim 1 of the ‘349 patent). Jebens,
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`however, was not considered during the prosecution of the ‘365 application
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`because, despite knowing that the “end user facility” limitations of this claim were
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`material to patentability, Applicant did not provide Jebens to the Office.
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`C. IPR2013-00474
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`Printing Industries of America (“PIA”) filed a petition to institute an inter
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`partes review of claims 1-14 of the ‘349 patent. PIA alleged that the challenged
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`claims were either anticipated or rendered obvious in view of multiple different
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`combinations, by either relying upon U.S. Patent No. 7,242,487 to Lucivero et al.
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`(“Lucivero”) or Nusbickel as primary references. The following table, reproduced
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`from the PTAB’s decision in IPR2013-00474 (“the ‘474 Decision”), summarizes
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`the grounds raised by PIA.
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`Inter Partes Review of U.S. Patent No. 6,611,349
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`The PTAB denied PIA’s petition to institute inter partes review because PIA
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`
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`failed to meet its burden to affirmatively establish a reasonable likelihood that PIA
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`would prevail with respect to at least one of the challenged claims. See generally
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`Ex. 1004. According to the PTAB, PIA treated its petition as a notice pleading,
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`consistently failing to “explain how the cited portions [of the applied prior art]
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`correspond to the limitation[s] for which they are cited.” See Ex. 1004 at pp. 11,
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`13-16. Other times PIA cited to portions of the applied prior art without any
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`explanation as to the relevance of the cited portions. See, e.g., id. at p. 16. Due to
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`these noted deficiency, and others, the PTAB denied PIA’s petition.
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`
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`Petitioners do not repeat and re-allege the conclusory positions taken by PIA
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`in the ‘474 Petition. Instead, Petitioners rely on Jebens and Dorfman as primary
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`references, which recite systems that incorporate a printing and publishing
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`workflow organized around an end user facility, central service facility, and
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`printing company facility as claimed and described by the ‘349 patent. Moreover,
`
`as discussed above in section IV.A, the functional limitations recited by the claims
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`Inter Partes Review of U.S. Patent No. 6,611,349
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`of the ‘349 patent describe nothing more than known page building, prepress, or
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`platemaking procedures. Not only were these features well-understood by persons
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`of ordinary skill in th