Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 51
`Entered: September 21, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`EASTMAN KODAK CO., AGFA CORP., ESKO SOFTWARE BVBA, and
`HEIDELBERG, USA,
`Petitioner,
`
`v.
`
`CTP INNOVATIONS, LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-00791
`Patent 6,611,349 B1
`_______________
`
`
`
`Before HOWARD B. BLANKENSHIP, BENJAMIN D. M. WOOD, and
`BRIAN J. McNAMARA, Administrative Patent Judges.
`
`WOOD, Administrative Patent Judge.
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 51
`Entered: September 21, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`EASTMAN KODAK CO., AGFA CORP., ESKO SOFTWARE BVBA, and
`HEIDELBERG, USA,
`Petitioner,
`
`v.
`
`CTP INNOVATIONS, LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-00791
`Patent 6,611,349 B1
`_______________
`
`
`
`Before HOWARD B. BLANKENSHIP, BENJAMIN D. M. WOOD, and
`BRIAN J. McNAMARA, Administrative Patent Judges.
`
`WOOD, Administrative Patent Judge.
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`
`IPR2014-00791
`Patent 6,611,349 B1
`
`
`I.
`
`INTRODUCTION
`
`Eastman Kodak Co., Agfa Corp., Esko Software BVBA, and
`Heidelberg, USA (collectively, “Petitioner”) filed a request for rehearing
`(Paper 48, “Reh’g Req.”) of our Final Written Decision (Paper 47, “Final
`Dec.”). We requested (Paper 49) a response from CTP Innovations, LLC
`(“Patent Owner”), which was subsequently submitted (Paper 50, “Reh’g
`Req. Resp.”).
`Petitioner requests that we reconsider our decision that Petitioner has
`not demonstrated that claims 10–14 of U.S. Patent No. 6,611,349 (the ’349
`patent) are unpatentable. Patent Owner opposes. For the reasons set forth
`below, the request is denied.
`
`II.
`
`STANDARD OF REVIEW
`
`The burdens and requirements of a request for rehearing are stated in
`37 C.F.R. § 42.71(d):
`(d) Rehearing. . . . The burden of showing a decision should be
`modified lies with the party challenging the decision. The
`request must specifically identify all matters the party believes
`the Board misapprehended or overlooked, and the place where
`each matter was previously addressed in a motion, an opposition,
`or a reply.
`
`III. ANALYSIS
`
`The ’349 Patent
`A.
`The ’349 patent describes a publishing and printing system that is
`distributed among three “facilities”: An end user facility, where content is
`created; a central service facility, where files are stored; and a printing
`company facility (or printer), where documents are printed. Of the
`challenged claims, claim 10 is independent and is reproduced below:
`
` 2
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`
`
`IPR2014-00791
`Patent 6,611,349 B1
`
`
`10. A method of generating a plate-ready file configured
`for the creation of a printing plate, said plate-ready file being
`associated with page layouts and being provided in real time
`from a remote location using a communication network, the
`method comprising:
`storing high resolution files on a computer server;
`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; and
`providing said plate-ready file to a remote printer.
`
`We instituted an inter partes review of claims 10–14 based on the
`following grounds of unpatentability:
`
`Basis
`§ 103(a)
`§ 103(a)
`
`Claims Challenged
`10–14
`10–14
`
`Reference[s]
`Jebens,1 and Apogee2
`Dorfman,3 Apogee, and OPI White
`Paper4
`
`Decision on Institution 25.
`In our Final Decision, we construed “plate-ready file” to mean “a file
`that represents a page layout that has gone through prepress processing,
`including RIPing, and is ready to image to a plate using either a platesetter
`or imagesetter.” Final Dec. 9. We construed “remote printer” to mean “an
`offsite printing company facility accessible (by, e.g., an end user facility or
`
`
`1 Jebens, US 6,321,231 (iss. Nov. 20, 2001) (Ex. 1006).
`2 Agfa Apogee, The PDF–based Production System (Ex. 1008).
`3 Dorfman, WO 98/08176 (iss. Feb. 26, 1998) (Ex. 1007).
`4 Apple OPI White Paper (Ex. 1009).
`
` 3
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`IPR2014-00791
`Patent 6,611,349 B1
`
`central services facility) via a private or public communication network.”
`Id. at 11. Because RIPing is the final step in creating a plate-ready file, we
`construed “providing said plate-ready file to a remote printer” to require
`generation of the plate-ready file, including RIPing, at a facility other than
`the printing company facility. See id. at 25 (“Simply put, a printer cannot be
`‘remote’ with respect to itself. It follows that providing a plate-ready file to
`a ‘remote printer’ cannot be accomplished by the remote printer that receives
`the plate-ready file.”).
`
`B.
`
`Petitioner’s Rehearing Request Relies on New Evidence and a
`New Argument
`In asserting that the combination of Jebens and Apogee rendered
`claim 10 unpatentable, the Petition relied on Jebens to teach the steps of (1)
`storing high resolution files on a computer server; (2) generating low
`resolution files corresponding to said high resolution files; (3) providing said
`low resolution files to a remote client for the designing of a page layout via a
`communication network; and (4) providing a plate-ready file to a remote
`printer. Pet. 39‒41. Likewise, for the ground based on Dorfman, Apogee,
`and OPI White Paper, Petitioner relied on either Dorfman or OPI White
`Paper to teach these steps. Id. at 55‒57. For both grounds, Petitioner relied
`on Apogee to teach the step of “generating a plate-ready file from the page
`layout designed by said remote client.” Id. at 27, 40‒41, 57. In doing so,
`Petitioner relied on a specific excerpt from Apogee, as follows:
`Apogee Pilot normalizes the incoming files into PDF, collects
`the pages, imposes, does OPI image exchange and sends this
`imposed ‘digital flat’ to an Apogee PDF RIP. In the context of
`Apogee, the PDF RIP takes the device and format independent
`PDF digital master, and renders (rasterizes) it exactly for the
`selected output device. The result is a ‘Print Image File’ (PIF)
`
` 4
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`
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`IPR2014-00791
`Patent 6,611,349 B1
`
`
`that contains all the dots that will appear on the film or plate. . . .
`Apogee PrintDrive manages the Print Image Files (PIF) output
`by one or more RIPs, and controls output flow to a variety of
`output devices including Agfa imagesetters, proofers, and
`platesetters.
`
`Id. at 40-41, 48-49, 53, 57 (quoting Ex. 1008, 6–7 (emphasis omitted)). We
`refer to this quoted portion of Apogee as “Apogee Excerpt 1.”
`In its Response, Patent Owner argued, among other things, that the
`proposed combination does not teach a “facility separate from a remote
`client and a remote printer carrying out the steps of generating a plate-ready
`file from a page layout designed by a remote client, and the step of providing
`said plate-ready file to a remote printer.” PO Resp. 21. Patent Owner
`further asserted that “[t]o the extent that Apogee discloses the generation of
`a plate-ready file in the form of a PIF through the Apogee PDF RIP process,
`a POSITA would consider this process to be taking place at the jobber or
`supplier, i.e., at a printing company facility.” Id. at 27 (citing Ex. 2014 ¶ 24;
`Ex. 2017, 31:12–32:4). Petitioner replied that “[n]othing in Apogee limits
`the implementation of the processes described therein to a printing company
`facility, and one of ordinary skill could predictably implement Apogee at a
`central service facility.” Reply 4. In support of this contention, Petitioner
`relied on the testimony of its declarant, Professor Lawler, who in turn relied
`on Apogee Excerpt 1. Id. (citing Ex. 1022 ¶¶ 93‒94).
`In the Final Decision, we reiterated that “for the proposed
`combination of Jebens and Apogee to teach [providing a plate-ready file to a
`remote printer], either the end user or the host facility must produce the
`plate-ready file and provide it to the printer.” Final Dec. 25. We found,
`however, that “Jebens does not teach or suggest generating a ‘plate-ready
`
` 5
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`IPR2014-00791
`Patent 6,611,349 B1
`
`file,” and while “Apogee teaches generating a plate-ready file from a PDF,
`[it] does not teach or suggest providing it to a remote printer.” Id. at 25‒26.
`We further stated that “Petitioner does not point us to any evidence—in
`Jebens Apogee, or otherwise—that a person of ordinary skill in the art would
`have combined Jebens and Apogee in such a way that a plate-ready file
`would have been produced at Jebens’ host facility or end user facility rather
`than at its printing facility.” Id. at 26.
`In its Request for Rehearing, Petitioner’s primary argument is that the
`Board “overlooked directly contradictory evidence in the trial record.”
`Reh’g Req. 1. The evidence to which Petitioner refers is an excerpt from
`Apogee that was not cited in either the Petition or the Reply. That excerpt is
`as follows:
`For volume applications, [Apogee PrintDrive] can be fed by
`multiple PDF RIPs over a TCP/IP network. This unique feature
`allows you to physically separate the rendering from the actual
`plate production, so your PDF RIP can be in the desktop
`department and the PrintDrive can sit next to the output device,
`even in another town.
`
`Id. at 6 (citing Ex. 1008, 6–7). We refer to this portion of Apogee as
`“Apogee Excerpt 2.” Petitioner argues that “contrary to the Board’s sole
`rationale for not finding claims 10–14 unpatentable, there is significant,
`documentary evidence of record, unrebutted, and relied on by Petitioners—
`that one of ordinary skill was well aware of generating plate-ready files at
`locations remote from the printing company facility (i.e., in another town).”
`Id. at 8. In response to this argument, Patent Owner contends that
`“Petitioners have not previously made the argument that Apogee teaches the
`provision of a plate-ready file to a remote printer.” Reh’g Req. Opp. 4.
`
` 6
`
`
`
`
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`
`IPR2014-00791
`Patent 6,611,349 B1
`
`
`A request for rehearing is not an opportunity to present new
`arguments or evidence that could have been presented in the petition.
`37 C.F.R. § 42.71(d). Petitioner had the burden to identify and explain the
`specific evidence that supports its arguments in the Petition. 35 U.S.C.
`§ 314(a). Thus, the Petition needed to identify “[h]ow the construed claim is
`unpatentable,” and identify “specific portions of the evidence that support
`the challenge.” 37 C.F.R. § 42.104(b)(4)–(5) (emphasis added). Here,
`Petitioner’s Rehearing Request relies on evidence—Apogee Excerpt 2—and
`argument—that Apogee teaches providing a plate-ready file to a remote
`printer—that were not presented in the Petition. In the Petition, Petitioner
`consistently relied on Apogee to teach generation of a plate-ready file. Pet.
`27‒28, 39, 40‒41, 48‒49, 53, 57. In doing so, it relied on Apogee Excerpt 1.
`Petitioner did not, however, in either its Petition or Reply, argue that Apogee
`teaches providing a plate-ready file to a remote printer. Instead, it relied on
`Jebens or Dorfman to teach this limitation. Id. at 41, 57. Moreover,
`Petitioner failed to refer us to Apogee Excerpt 2, even after Patent Owner
`expressly disputed that Apogee teaches generating a plate-ready file
`anywhere other than “at a printing company facility.” PO Resp. 32.
`Accordingly, we are not persuaded to grant Petitioner’s Rehearing Request
`on the basis of this newly cited evidence and new argument.
`
`C.
`
`Petitioner Has Not Shown that We Misapprehended its
`Obviousness Grounds
`Petitioner next argues that the Board misapprehended Petitioner’s
`obviousness grounds. Reh’g Req. 9–12. Petitioner asserts that the grounds
`are based on Jebens and Dorfman as the primary references, and that
`Petitioner relied on the “specific system architecture[s]” of these references.
`
` 7
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`IPR2014-00791
`Patent 6,611,349 B1
`
`Id. at 9‒10. According to Petitioner, our decision “mistakenly looks to the
`secondary reference (Apogee) for architectural features relied upon in the
`primary references Jebens and Dorfman, and then suggests that Apogee
`would have to be modified to transmit a plate-ready file to a remote printer.”
`Id. at 11.
`We disagree that we misapprehended Petitioner’s grounds. For
`example, we expressly characterized Petitioner’s position regarding Jebens
`and Apogee to be that “one of ordinary skill in the art would have been
`motivated to incorporate Apogee into the Jebens printing system to allow for
`a printing facility to produce a printing plate for offset printing.” Final Dec.
`26 (citing Pet. 29). We noted, however, that Jebens does not teach
`generating a plate-ready file as we construed the term above, i.e., a file that
`has gone through prepress processing and that has been RIPed. Id. at 25.5
`We further noted that although Apogee teaches generating a plate-ready file
`from a PDF file, “Petitioner does not point us to any evidence—in Jebens,
`Apogee, or otherwise—that a person of ordinary skill in the art would have
`combined Jebens and Apogee in such a way that a plate-ready file would
`have been produced at Jebens’ host facilities or end user facility rather than
`at its printing facility.” Id. at 26; see also id. at 30 (“Petitioner has not
`shown that a person of ordinary skill in the art would have had reason to
`produce the plate-ready file anywhere other than at Dorfman’s production
`printing system”). We understand Petitioner’s argument to be that it only
`needed to show that the proposed combinations provide files of any type to a
`printer in order to meet the step of “providing a plate-ready file to the
`
`
`5 We applied the same reasoning to the Dorfman/Apogee ground. Id. at 30.
`
` 8
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`
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`
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`
`
`IPR2014-00791
`Patent 6,611,349 B1
`
`printing company facility.” This is incorrect. It is not sufficient that the
`proposed combinations provide any file, e.g., a PDF file that has not been
`RIPed, to a printer. RIPing is the final, and necessary, step in creating a
`plate-ready file. Thus, Petitioner needed to establish that the file that the
`proposed combinations provided to the printer had been RIPed before
`transmission. Neither Jebens nor Dorfman alone teaches this; further
`Petitioner relied on Apogee to teach RIPing a file to create a plate-ready file,
`not to teach that RIPing occurred someplace other than at the printer. That is
`why we determined that Petitioner’s showing was insufficient. Accordingly,
`we are not persuaded that we misapprehended Petitioner’s obviousness
`grounds.
`
`IV. CONCLUSION
`
`For the foregoing reasons, Petitioner’s Request for Rehearing is
`denied.
`
`V. ORDER
`
`For the reasons given, Petitioner’s Request for Rehearing is denied.
`
` 9
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`IPR2014-00791
`Patent 6,611,349 B1
`
`PETITIONER:
`
`Scott McKeown
`Michael L. Kiklis
`OBLON SPIVAK
`cpdocketmckeown@oblon.com
`cpdocketkiklis@oblon.com
`
`
`
`PATENT OWNER:
`
`W. Edward Ramage
`BAKER, DONELSON, BEARMAN, CALDWELL & BERKOWITZ, P.C.
`eramage@bakerdonelson.com
`
`
`
`
`
`10
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