Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 9
`Entered: November 28, 2014
`
`
`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
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
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`IPR2014-00791
`Patent 6,611,349 B1
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`
`I.
`
`INTRODUCTION
`
`Background
`A.
`Eastman Kodak Co., Agfa Corp., Esko Software BVBA, and
`Heidelberg, USA (collectively, “Petitioner”) filed a Corrected Petition
`(Paper 4, “Pet.”) to institute an inter partes review of claims 4–14 (the
`“challenged claims”) of U.S. Patent No. 6,611,349 B1 (Ex. 1001, “the ’349
`patent”). CTP Innovations, LLC (“Patent Owner”) filed a Preliminary
`Response (Paper 8, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C.
`§ 314.
`Institution of an inter partes review is authorized by statute when “the
`information presented in the petition filed under section 311 and any
`response filed under section 313 shows that there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” 35 U.S.C. § 314(a). We determine that
`Petitioner has shown a reasonable likelihood that it would prevail with
`respect to at least one of the claims of the ’349 patent. Accordingly, we
`grant the Petition for inter partes review of the ’349 patent.
`
`Related Proceedings
`B.
`Petitioner discloses that the ’349 patent has been asserted in 49
`infringement actions, most of which are still pending. Pet. 1; Ex. 1002.
`Petitioner also has filed three additional petitions for inter partes review:
`IPR2014-00790, for review of claims 1–3 of the ’349 patent; IPR2014-
`00788, for review of claims 10–20 of U.S. Patent 6,738,155 (“the ’155
`patent”), which shares the ’349 patent’s disclosure; and IPR2014-00789, for
`review of claims 1–9 of the ’155 patent. Pet. 2. The ’349 and ’155 patents
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`IPR2014-00791
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`were also the subject of two previous petitions for inter partes review, both
`of which were denied. See Printing Indus. of Am. v. CTP Innovations, LLC,
`Case IPR2013-00474 (PTAB Dec. 31, 2013) (Paper 16) (denying petition
`for inter partes review of the ’349 patent); Printing Indus. of Am. v. CTP
`Innovations, LLC, Case IPR2013-00489 (PTAB Dec. 30, 2013) (Paper 15)
`(denying petition for inter partes review of the ’155 patent).
`
`The ’349 Patent
`C.
`The ’349 patent issued on August 26, 2003, from an application filed
`July 30, 1999. Ex. 1001, cover page. The ’349 patent relates to “a system
`and method of providing publishing and printing services via a
`communications network.” Id. at 1:9–10. According to the ’349 patent,
`“[k]ey steps for producing printed materials using a plate process include
`(1) preparing copy elements for reproduction, (2) prepress production,
`(3) platemaking, (4) printing, and (5) binding, finishing and distribution.”
`Id. at 1:12–15. In the first or “design” stage, an end user—e.g., a publisher,
`direct marketer, advertising agency, or corporate communication
`department—uses a desktop publishing program such as “QuarkXpress” to
`design “pages” from image and data files. Id. at 1:16–25. In the prepress
`production stage, the user-created pages (also called “copy”) are
`“transformed into a medium that is reproducible for printing.” Id. at 1:26–
`28. This transformation typically involves typesetting, image capture and
`color correction, file conversion, “RIPing, trapping, proofing, imposition,
`filmsetting, and platesetting.” Id. at 1:29–32.
`“RIPing” is based on the acronym “RIP,” which stands for raster
`image processor. Id. at 7:57–59. A RIP is a hardware or software
`component that “rasterize[s]” an image file—i.e., converts it to a “bitmap”
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`IPR2014-00791
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`or raster image. Id. “RIPing” is therefore synonymous with rasterizing. A
`bitmap “is a digitized collection of binary pixel information that gives an
`output device, such [as a printer, proofer, or platesetter,] the ability to image
`data to paper, film, or plate.” Id. at 7:59–62. “Proofing” involves creating a
`sample of the finished product that is sent to the end user for approval. Id. at
`1:32–35. After alterations are made, new proofs are sent to the end user;
`once the end user approves the proof, a medium, such as a computer-to-plate
`(CTP) file, is produced and sent to the printer. Id. at 1:35–39. “Imposition”
`involves “the set of pages on a particular plate as well as their positioning
`and orientation.” Id. at 1:38–40. According to the ’349 patent, imposition
`“is particularly important in the creation of booklets or catalogs, where
`pages are positioned using register marks to assist in the stripping, collating,
`and folding of the printed product.” Id. at 1:41–44. A printer makes a plate
`“using the medium created during prepress,” e.g., if a CTP file is used, the
`printer converts the CTP file into a printing plate. Id. at 1:45–48. The
`printer uses the plate on a printing press to reproduce the product; the
`product is bound, finished, and distributed to create the product in its final
`form. Id. at 1:45–51.
`The ’349 patent describes and claims a publishing and printing system
`in which “[s]ystem components are installed at an end user facility, a
`printing company facility, and a central service facility,” each connected to
`the others via a communication network. Id. at 2:31–36, 51–56. Figure 1,
`reproduced below, depicts an embodiment of the claimed invention:
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`Figure 1 depicts end user facility 300, printing company facility 400,
`and central service facility 105 connected together via either private network
`160 or public network 190. Id. at Fig. 1. In this embodiment, end user
`facility 300 comprises a router, desktop computer for page-building
`operations, and a color proofer and black and white printer for high-
`resolution proofing. Id. at 7:38–40, Figs. 1, 2, 5. Printing company facility
`400 comprises a router, a hub, a server, a laser printer, a color plotter, and a
`platesetter, and performs production management, digital plate-making,
`desktop imposition, and press services. Id. at 8:31–33, 9:38–43, Figs.
`1, 4, 5. Central service facility 105 comprises server 110, “hierarchical
`storage management” (HSM) system 120, a “digital content management”
`system 130, local area network (LAN) 150 and communication routing
`device 200. Id. at 5:34–50. “Data may be exchanged between central
`service facility 105 and either private network 160 or public network 190 in
`any suitable format, such as in accordance with the Internet Protocol (IP),
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`IPR2014-00791
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`the Transmission Control Protocol (TCP), or other known protocols.” Id. at
`5:21–25. An end user can store files in HSM system 120 to reduce storage
`needs at the end user facility. Id. at 7:19–23, 38–40.
`Server 110 uses software capable of performing “open prepress
`interface” (OPI) operations. Id. at 5:62–64. OPI operations include “high
`resolution image swapping.” Id. at 10:31–33. That is, OPI permits a lower
`resolution image file to be used as a proxy for a higher resolution file during
`page-building operations, which is advantageous because the low resolution
`image can be transmitted and manipulated more quickly. Id. at 7:46–49,
`10:44–49. The low resolution images are replaced by the corresponding
`high resolution images before final proofing and printing. Id. at 7:49–51.
`In operation, end user facility 300 designs a page to be printed by,
`e.g., editing or placing low-resolution images downloaded via private
`network 160 or public network 190 from HSM system 120 at central service
`facility 105. Id. at 7:36–43, 13:11–13, Fig. 9. The page layout
`application—e.g., QuarkXpress—establishes links from the low resolution
`images to the corresponding high resolution files stored on HSM system
`120. Id. at 7:43–45, 13:13–15, Fig. 9. When the page-building process is
`completed, end user facility 300 prints the page, with OPI comments
`imbedded, to a “thin Postscript file” at central service facility 105. Id. at
`13:15–20. “The Postscript file is called ‘thin’ because it contains low
`resolution images.” Id. at 13:20–21. At central service facility 105, the thin
`Postscript file is dropped into a “hot” folder on server 110, which “parses the
`thin Postscript file, pulls out the OPI data, and replaces it with high
`resolution data,” thereby creating a “fat Postscript file.” Id. at 13:21–26.
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`IPR2014-00791
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`
`Illustrative Claims
`D.
`Claims 4 and 10 are independent and are drawn to methods of
`generating a plate-ready file configured for the creation of a printing plate.
`Ex. 1001, 22:31–48; 23:3–17. Claims 4 and 10 are reproduced below:
`4. 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:
`remotely providing access to imaging files for searching
`and retrieving images used in the design of a page layout by a
`remote user;
`establishing links to said imaging files, thereby creating a
`thin Postscript file from the page layout designed by the remote
`user;
`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 (PDF) file from said
`fat Postscript file; and
`converting said PDF file to a file in plate-ready format.
`
`
`
`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.
`
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`IPR2014-00791
`Patent 6,611,349 B1
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`
`Prior Art Relied Upon
`E.
`Petitioner relies upon the following prior-art references:
`
`Ex. 1006
`Ex. 1007
`
`US 6,321,231
`WO 98/08176
`
`Nov. 20, 2001
`Feb. 26, 1998
`
`Jebens
`Dorfman
`
`Agfa Apogee, The PDF-based Production System (1998) (“Apogee”)
`(Ex. 1008);
`Apple OPI White Paper (1995) (“OPI White Paper”) (Ex. 1009);
`Mattias Andersson et al., PDF PRINTING AND PUBLISHING, THE NEXT
`REVOLUTION AFTER GUTENBERG (Micro Publishing Press 1997)
`(“Andersson”) (Ex. 1010);
`Richard M. Adams II et al., COMPUTER-TO-PLATE: AUTOMATING THE
`PRINTING INDUSTRY (Graphic Arts Technical Foundation 1996) (Ex. 1011)
`(“Adams II”).
`
`
`
`Asserted Grounds of Unpatentability
`F.
`Petitioner contends that the challenged claims are unpatentable under
`35 U.S.C. § 103 based on the following specific grounds (Pet. 6–7):
`Reference[s]
`Basis
`Claims Challenged
`Jebens, Apogee, and OPI White
`§ 103
`4–9
`Paper
`Jebens and Apogee
`§ 103
`10–14
`Dorfman, Apogee, and OPI White
`§ 103
`4–8 and 10–14
`Paper
`Dorfman, Apogee, OPI White Paper,
`and Adams II
`
`
`
`§ 103
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`Patent 6,611,349 B1
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`
`II. ANALYSIS
`
`A.
`
`Preliminary Issues
`1.
`The Prior Petition
`Patent Owner argues that we should not consider this Petition because
`we already considered, and denied, a petition for inter partes review of the
`’349 patent: Printing Indus. of Am. v. CTP Innovations, LLC, Case
`IPR2013-00474 (PTAB) (“the ’474 IPR”). Prelim. Resp. 13–15 (citing Ex.
`1004). Patent Owner contends that the present Petition represents a “second
`bite at the apple,” or a “do over,” of the ’474 IPR, because it relies on “the
`same or equivalent” prior art as the ’474 IPR. Id. First, Patent Owner notes
`that two of the prior-art references asserted here, Dorfman and Adams II,
`were also asserted in the ’474 IPR. Id. at 14. Second, Patent Owner alleges
`that Apogee is equivalent to “Lucivero,” a reference asserted in the ’474
`IPR. Id. Finally, Patent Owner alleges that OPI White Paper is equivalent
`to “Sands,” another reference asserted in the ’474 IPR. Id.
`Patent Owner overstates the overlap between this proceeding and the
`’474 IPR. First, Patent Owner does not adequately support its contention
`that Apogee and OPI White Paper are equivalent to Lucivero and Sands,
`respectively; nor is such equivalence self-evident. The fact that Apogee
`discusses products sold by the same entity that owns Lucivero falls far short
`of establishing that Apogee and Lucivero are equivalent. Patent Owner
`provides no support for the alleged equivalence between OPI White Paper
`and Sands.
`Second, the fact that Dorfman and Adams II are cited in both
`proceedings does not establish that we are duplicating our efforts in
`considering the Petition. [Unlike here, the petitioner in the ’474 IPR did not
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`rely on either Dorfman or Andersson in arguing that claims 1–3—the claims
`at issue in this proceeding—are unpatentable. Ex. 1004, 7–8.]
`2.
`Real-Parties-In-Interest
`Patent Owner contends that Petitioner failed to comply with 37 C.F.R.
`§ 42.8(b)(1) because it failed to identify all real-parties-in-interest. Prelim.
`Resp. 26–30. According to Patent Owner, all of Petitioner’s customers are
`real-parties-in-interest because Petitioner admitted that it filed the Petition
`on their behalf. Id. at 28. Patent Owner relies on a press release in which
`Petitioner states that “[w]e feel it is important to take this action [file
`petitions for inter partes review of the ’349 patent] to support our customers
`from these frivolous claims [of infringement].” Ex. 2001, 1. Patent Owner
`argues that “the Board should require Petitioner[] to amend the Petition to
`list all customers [as real-parties-in-interest] or, in the alternative, should
`dismiss the Petition in its entirety.” Prelim. Resp. 29–30.
`On this record, we are not persuaded that any of Petitioner’s
`customers is a real-party-in-interest in this proceeding. A determination
`whether a non-party to an inter partes review is a real-party-in-interest is a
`“highly fact-dependent question,” based on whether the non-party “exercised
`or could have exercised control over a party’s participation in a proceeding.”
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759–60 (Aug.
`14, 2012). Petitioner’s filing of the present petition “to support [its]
`customers” does not, by itself, mean that its customers exercise control over
`Petitioner’s actions in this proceeding.
`Patent Owner also seems to argue that Petitioner filed the Petition on
`behalf of all of the over 10,000 members of the Printing Industries of
`America (“PIA”), the petitioner in the ’474 IPR. For example, Patent Owner
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`notes that Thomas Topp, a senior vice president of Heidelberg, USA, one of
`the Petitioner entities, is a member of the board of directors of PIA. Prelim.
`Resp. 28–29. Patent Owner also notes that Petitioner entities Heidelberg,
`Agfa, and Eastman Kodak are substantial donors to PIA. Id. at 29. But,
`again, Petitioner’s financial and other support of PIA does not, by itself,
`mean that either PIA or its members controls Petitioner’s actions in this
`proceeding. Therefore, on the current record, we are not persuaded that
`Petitioner failed to identify any real-parties-in-interest.
`
`Claim Construction
`B.
`The Board gives claim terms in unexpired patents their broadest
`reasonable construction in light of the specification in which the terms
`appear. 37 C.F.R. § 100(b). Claim terms are given their ordinary and
`customary meaning as would be understood by one of ordinary skill in the
`art in the context of the entire disclosure. In re Translogic Tech., Inc., 504
`F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term
`must be set forth in the specification with reasonable clarity, deliberateness,
`and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`Petitioner proposes constructions for the following terms: “plate-
`ready file . . . being provided in real time . . .,” “plate-ready file,” “thin
`PostScript file,” and “fat PostScript file.” Pet. 20–22. Patent Owner
`proposes alternative constructions for these terms, as well as a construction
`for “communication network.” Prelim. Resp. 7–12. For purposes of this
`Decision, we need only address “real time,” and, in particular, whether this
`phrase limits the scope of the claims, and construe “thin Postscript file” and
`“fat Postscript file.”
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`
`“real time”
`1.
`The term “real time” appears in the preamble of each of independent
`claims 4 and 10, as follows: “[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.” Ex. 1001, 22:31–35, 23:3–6.
`Petitioner contends that under the broadest reasonable interpretation,
`providing a plate-ready file “in real time from a remote location using a
`communication network” should be interpreted “as encompassing the
`electronic transmission of data, images, files etc. over a communication
`network.” Pet. 20. According to Petitioner, this interpretation is consistent
`with Patent Owner’s position taken in a civil action asserting infringement of
`the ’349 patent, in which Patent Owner distinguished the provision of
`services to a remote client “in real time from a remote location using a
`communication network,” from using mail or express carrier to send disks
`containing pages to be printed or proofed. Id. (citing Ex. 1012 ¶¶ 11, 12).
`Patent Owner disagrees with Petitioner’s interpretation, arguing that it
`“ignores the term ‘real time,’ or equates it to simply mean any electronic
`transmission over a communication network.” Prelim. Resp. 7. According
`to Patent Owner, the Specification makes clear that providing services in
`“real time” requires more than transmission over a communication network,
`because it notes that a prior art system, “WAM!NET,” transmits data over a
`communication network, and yet, according to the Specification, “document
`delivery by WAM!NET is not done in real time.” Id. at 7–8 (citing Ex.
`1001, 6:55–65). Patent Owner proposes interpreting “real time” to mean
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`“the immediate processing of input,” based on dictionary definitions. Id. at
`8–9 (citing Ex. 2010, 2011).
`As noted above, the term “real time” appears in the preamble of each
`of the claims at issue. Our reviewing court has stated that “[g]enerally . . .
`the preamble does not limit the claims.” Am. Med. Sys., Inc. v. Biolitec, Inc.,
`618 F.3d 1354, 1358 (Fed. Cir. 2010) (internal citation omitted). While “the
`preamble may be construed as limiting if it recites essential structure or
`steps, or if it is necessary to give life, meaning, and vitality to the claim,” it
`is not separately limiting “when the claim body describes a structurally
`complete invention such that deletion of the preamble phrase does not affect
`the structure or steps of the claimed invention.” Id. at 1358–59 (internal
`citations and quotations omitted). Here, the preamble does not recite any
`essential steps, affect the steps in the body of the claim, or provide a
`necessary antecedent for any terms in the steps. Thus, it would appear that
`“the claim drafters did not rely on the preamble language to define or refine
`the scope of the asserted claims.” Id. at 1359 (citation omitted).1 Thus, we
`determine, for purposes of this decision and on the present record, that the
`preambles in the claims at issue, including the term “real time,” do not limit
`the scope of the claims.
`
`1 To the extent that providing a plate-ready file “in real time from a remote
`location using a communication network” does limit the scope of the claims,
`it would only require that the plate-ready file be provided remotely using a
`communication network. Providing a plate-ready file “in real time from a
`remote location” is best read to refer to the end result of using a
`telecommunication network, rather than an additional limitation beyond
`using a telecommunication network. By analogy, in a preamble reading
`“providing hot food using a microwave oven,” providing hot food is the end
`result of using a microwave oven, and does not, by itself, require more than
`using a microwave oven.
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`
`The discussion of WAM!NET in the Specification does not persuade
`us otherwise. That discussion does not provide sufficient information about
`WAM!NET for us to make any useful inferences regarding the meaning of
`“real time.” For example, the Specification does not explain the specific
`“documents” that “WAM!NET is delivering, from whom and to whom these
`documents are being delivered, the specific method of “delivery,” and why
`that method of delivery is not done in “real time.”
`2.
`“thin Postscript file”
`Petitioner contends that thin Postscript file should be construed as “a
`digital file in PostScript format, designed with low-resolution images.” Pet.
`22 (citing Ex. 1022 ¶ 81). Petitioner argues that this construction is
`consistent with that adopted in the ’474 IPR decision, which is “a ‘digital
`file containing low resolution images, graphics, texts, and art.” Id. at 22–23
`(quoting Ex. 1004, 9–10). Patent Owner asserts that the construction
`adopted in the ‘474 IPR “is acceptable for purposes of the decision on this
`Petition.” Prelim. Resp. 11–12.
`For purposes of this decision, and on the present record, we construe
`“thin Postscript file” as “a Postscript file containing low resolution images.”
`This construction is consistent with the discussion of thin Postscript files in
`the Specification, which defines a thin Postscript file as one “contain[ing]
`low resolution images.” Ex. 1001, 13:18–33.
`3.
`“fat Postscript file”
`Petitioner proposes construing fat Postscript file as “a digital file in
`Postscript format that includes high-resolution images.” Pet. 23. Petitioner
`contends that this construction is consistent with that adopted in the ‘474
`IPR Decision, which was “a ‘digital file containing high resolution images,
`
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`graphics, texts, and art.’” Id. (quoting Ex. 1004, 10). Patent Owner asserts
`that the construction adopted in the ‘474 IPR “is acceptable for purposes of
`the decision on this Petition.” Prelim. Resp. 12.
`For purposes of this decision, and on the present record, we construe
`“fat Postscript file” as “a Postscript file containing high resolution images.”
`This construction is consistent with the definition set forth in the
`Specification. Ex. 1001, 13:27–32.
`
`Claims 4–9 — Jebens, Apogee, and OPI White Paper
`C.
`Independent claim 4 is drawn to a method of generating a plate-ready
`file associated with page layouts. Claims 5–9 ultimately depend from claim
`4. Petitioner contends that claims 4–9 are unpatentable under 35 U.S.C.
`§ 103(a) as obvious over Jebens, Apogee, and OPI White Paper.
`1.
`Jebens
`Jebens describes “a digital image management and order delivery
`system.” Ex. 1006, 2:13–14. The system provides a centralized, searchable
`database of digital images that can be used and modified by authorized
`users. Id. at 4:54–56. The system also serves as a job order developer and
`conduit for routing files from a client, such as an advertising agency, to a
`printer. Id. at 4:60–62. Figure 1, reproduced below, illustrates Jebens’s
`invention.
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`
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`Figure 1 depicts an embodiment of Jebens’s data management and
`work-order delivery system. Id. at 4:20–23. The system comprises host
`system 10 in communication with a variety of users, such as browsers and
`client orderers 12, image providers 14, and suppliers 16. Id. at 6:52–65.
`The host system software includes, inter alia, an image database that
`archives low and high resolution copies of digital image files. Id. at 8:9–13.
`The system is “ideally suited for facilitating publication and the like.” Id. at
`4:66–67. Image providers 14 may include a corporation that stores digital
`images of its products on host system 10 to more efficiently use its in-house
`computer storage facilities. Id. at 4:67–5:5, 6:55–60. Browsers and client
`orderers 12 may include an advertising agency that the corporation hires to
`create a brochure using the stored images; and suppliers 16 may include the
`printer that will print the finished brochure. Id. at 5:5–10, 6:54–65. To use
`the system, the corporation gives the agency information to access the host
`system; the agency then searches the host system and downloads low-
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`resolution copies of desired images, creates the brochure using the low-
`resolution copies, and sends the brochure back to the host system. Id. at
`5:11–20. The host system replaces the low-resolution copies with high-
`resolution copies of the images, and electronically routes the brochure with
`the high-resolution images to a printer per the agency’s instructions. Id. at
`5:19–20. Communication between host system 10 and users 12, 14, and 16
`“can be effected by any known means of connectivity,” such as “through
`local area networks or wide area networks,” or “hardwired to one another as
`an intranet.” Id. at 6:66–7:4–20.
`2.
`Apogee
`Apogee describes the Agfa Apogee print-production system. Ex.
`1008, 1. Content can be created in any format and output to Apogee in
`either PostScript or PDF format; Apogee normalizes incoming files to PDF
`“to guarantee complete predictability and compatibility.” Id. at 3–4. The
`PDF files are stored as individual PDF pages and become “Digital Masters”
`to create all production versions of the document and to provide a version
`that can be proofed and edited remotely. Id. at 4, 6. For a specific print job,
`Apogee collects the appropriate pages, automatically imposes the pages into
`a “digital flat,” and rasterizes it for the selected output device (e.g., an image
`setter or plate setter). Id. at 6. The result is a “Print Image File” (PIF) that
`“contains all the dots that will appear on the film or plate.” Id.
`3.
`OPI White Paper
`OPI White Paper describes the OPI “image swapping” process. Ex.
`1009, 10. According to OPI White Paper, “image swapping enables a page
`designer to work with a small screen-resolution picture file during page
`design and then rely on the intervention of the OPI server to swap it out for
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`the high-resolution, color-separated file necessary to render the picture in
`print.” Id. at 10, 12, Fig. 2d. Figure 2d depicts this process, which begins
`with a workstation designing a layout page using a preview image and then
`creating a PostScript file in which “OPI comments” replace the preview
`image. Id. at 12, Fig. 2d. This file is sent to the OPI server, which uses the
`OPI comments to locate the high-resolution file that corresponds to the
`preview image, and then replaces the OPI comments with the high-
`resolution image. Id. OPI White Paper also describes a particular
`implementation of the OPI process at a printing facility in Harrisonburg,
`Virginia. Id. at 31–32, Fig. 4c.
`4.
`Analysis
`Claim 4 claims a method comprising the steps of, inter alia, (1)
`creating a thin Postscript file from the user-designed page layout; (2)
`converting the thin Postscript file to a fat Postscript file; and (3) converting
`the fat Postscript file to a PDF file. Petitioner relies on OPI White Paper to
`teach creating the thin Postscript file and converting it to a fat Postscript file,
`and on Apogee to teach converting the fat Postscript file to a PDF file. Pet.
`34–35. However, we are not persuaded that the combination of these
`references would teach or fairly suggest these steps. OPI White Paper does
`not teach converting the fat Postscript file to PDF before sending the file to a
`printer or imagesetter. See Ex. 1009, 12, Fig. 2d. Apogee teaches
`converting incoming files to PDF before “OPI image exchange.” See Ex.
`1008, 6–7 (“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”). As discussed above, in the OPI
`process, pages are built using low resolution images, which are exchanged
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`with corresponding high resolution images before final proofing and
`printing. Because Apogee converts to PDF before OPI image exchange,
`Apogee’s system would, at best, create a PDF from a thin Postscript file and
`perform OPI image exchange on the resulting PDF file; no fat Postscript file
`would be created, and therefore there would be no fat Postscript file to
`convert to PDF.
`Petitioner asserts that there are “numerous and varied” reasons to
`convert Postscript files to PDF, and that each of these benefits would have
`motivated a person of ordinary skill to convert the fat Postscript file,
`generated at Jebens’s central system, into a PDF file. Pet. 31. However, it is
`counterintuitive for these benefits to have motivated a person of ordinary
`skill to delay the conversion until after OPI image exchange. One would
`expect the skilled artisan to want to perform the conversion earlier in the
`process, as Apogee teaches, to obtain the benefits of using PDF files earlier.
`For these reasons, we are not persuaded that Petitioner is reasonably likely to
`show that claim 4, and claims 5–9 that depend from claim 4, would have
`been obvious over Jebens, Apogee, and OPI White Paper.
`
`D. Claims 10–14 — Jebens and Apogee
`Claim 10 is similar to claim 4, but does not require converting a fat
`Postscript file to a PDF file. Nor do Claims 11–14, which ultimately depend
`from claim 10. Petitioner asserts that these claims would have been obvious
`over Jebens and Apogee. We have reviewed Petitioner’s and Patent
`Owner’s contentions and arguments regarding this proposed ground of
`unpatentability, and are persuaded, on the current record, that Petitioner has
`adequately identified in these references the limitations recited in claims 10–
`14, as well as reasons to combine the references. For example, with respect
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`to claim 10, Petitioner asserts that Jebens’s host system 10 stores high- and
`low-resolution versions of images in a searchable format; permits a remote
`first user to locate and download low-resolution copies of images for the
`design of a page layout; receives from the first user an electronic file
`defining a document that incorporates at least one of the downloaded
`images; and routes the file—with high-resolution versions of the images
`replacing the low-resolution versions—to a remote second user, which may
`be a printer. Pet. 39–41. Petitioner relies on Apogee to teach generating a
`plate-ready file from the page layout, and asserts that one of ordinary skill in
`the art would have been motivated to incorporate the teachings of Apogee
`into the Jebens printing system “to allow for a printing facility to produce a
`printing plate for offset printing.” Pet. 27.
`Patent Owner disputes that Jebens and Apogee render claims 10–14
`obvious. Prelim. Resp. 20–21. First, Patent Owner argues that Jebens “does
`not disclose a real time system as described in the ’349 Patent, because the
`’349 Patent specification discloses another prior art system with more
`network connectivity than Jebens,