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
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`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’ REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(d)
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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
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`BVBA, and HEIDELBERG, USA,
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`Petitioners,
`
`v.
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`CTP INNOVATIONS, LLC,
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`Patent Owner.
`
`____________
`
`Case IPR2014-00791
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`U.S. Patent No. 6,611,349
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`____________
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`
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`PETITIONERS’ REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(d)
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`Case IPR2014-00791
`Petitioners’ Request for Rehearing
`SUMMARY OF ISSUES FOR REHEARING
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`I.
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`Petitioners Eastman Kodak Company, Agfa Corporation, Esko Software
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`BVBA, and Heidelberg, USA, Inc. (“Petitioners”) request rehearing under 37
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`C.F.R. § 42.71(d) of the Board’s Final Written Decision (“Decision,” Paper No.
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`47) finding that Petitioners have not demonstrated that claims 10-14 of U.S. Patent
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`No. 6,611,349 (“the ’349 patent”) are unpatentable.
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`Independent claim 10 requires, inter alia, “providing said plate-ready file to
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`a remote printer.” Before this occurs, the plate-ready file must be generated.
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`There is no dispute that the Apogee reference teaches the generation of a plate-
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`ready file—what Apogee calls a “PIF,” which is the file that is the output of
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`Apogee’s PDF RIP Process. (Ex. 1008 at 6.) Rather, the sole reason the Board
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`ruled in favor of Patent Owner was due to the mistaken belief that there is no
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`teaching in Apogee of providing a plate-ready file to a remote printer—i.e., that
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`“there is no evidence that a person of ordinary skill in the art would have
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`considered generating a plate-ready file anywhere other than where the printing
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`plates are produced: at the printing facility.” (Decision at 26, 30.)
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`In reaching this conclusion, the Board overlooked directly contradictory
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`evidence in the trial record, particularly the cited portion of the Apogee reference
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`1
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`Case IPR2014-00791
`Petitioners’ Request for Rehearing
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`itself. (See Petition1 at 40-41 and 57, citing Ex. 1008 at 6-7.) For the step of
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`“generating a plate-ready file from said PDF file,” Petitioners relied upon
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`Apogee’s teaching of PDF RIPs, which are undisputed to be “plate-ready files”
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`within the meaning of the ’349 patent. Importantly, Apogee expressly describes
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`these plate-ready files as being sent to a remote printer “in another town.” On page
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`7, Apogee describes its PrintDrive system (which receives the plate-ready files
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`after they have been created by the PDF RIP process) as “allow[ing] you to
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`physically separate the rendering from the actual plate production, so your PDF
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`RIP can be in the desktop department and the PrintDrive can sit next to the output
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`device, even in another town.” (Ex. 1008 at 7, emphasis added.) Petitioners’
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`claim charts directed Patent Owner and the Board to this precise portion of Apogee
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`teaching the generation of a plate-ready file at locations remote from the printing
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`company facility, with those files then being sent from the file processing facility
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`to the remote printing facility. (See Petition at 40-41, 53, 57.) The Board’s sole
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`reason for not holding claims 10-14 unpatentable overlooked this key aspect of the
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`record.
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`Second, Petitioners’ obviousness grounds rely on the system architecture
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`from Jebens and Dorfman as primary references, not Apogee. There is no doubt
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`1 Citations to the Petition are to the “corrected” Petition, Paper 4.
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`2
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`Case IPR2014-00791
`Petitioners’ Request for Rehearing
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`(or dispute) that the central service facility of Jebens routes to-be-printed files from
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`a remote client to a remote printer. The Board agreed with the architectural
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`framework of the Jebens Ground in its final written decision. (Decision at 12-13,
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`22.) The same holds true for the Dorfman ground. (Decision at 29-30.) When
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`Jebens/Dorfman is modified with the PDF processing teachings of Apogee—as
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`applied in the grounds accepted by the Board—the to-be-printed file routed to the
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`remote printer is the plate-ready file of Apogee. Yet, the Board’s Decision
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`mistakenly looks to the secondary reference (Apogee) for architectural structure
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`relied upon in the primary references, and then suggests that Apogee, not the
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`primary references, would have to be modified to route a plate-ready file to a
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`remote printer.
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`However, the issue for obviousness is not whether Apogee needs to be
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`modified, but whether one of ordinary skill would have been motivated to modify
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`Jebens/Dorfman to include the PDF processing teachings of Apogee. As to this
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`point, and as explained below, the Petition and supporting evidence provided an
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`unrebutted motivation of why the PDF workflow of Apogee and accompanying
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`plate-ready file were desirable and would have been an obvious modification to the
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`Jebens/Dorfman architecture. (See Petition at 27-29, 32-33, and 47-49.) Thus,
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`even if Apogee’s explicit teaching of remote printing could be ignored, which it
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`cannot, the Board’s Decision misapprehends the trial grounds.
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`3
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`Case IPR2014-00791
`Petitioners’ Request for Rehearing
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`Apogee plainly employs a remote printer in “another town” and Petitioners
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`explicitly relied on this teaching in the Petition. The Board has overlooked the
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`record in this proceeding and misapprehended the trial grounds. For these reasons,
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`Petitioners respectfully request that the Board grant rehearing and cancel claims
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`10-14 of the ’349 patent.
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`II. LEGAL STANDARDS
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`“A party dissatisfied with a decision may file a request for rehearing,
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`without prior authorization from the Board.” 37 C.F.R. § 42.71(d). “The request
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`must specifically identify all matters the party believes the Board misapprehended
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`or overlooked, and the place where each matter was previously addressed in a
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`motion, an opposition, or a reply.” Id. Here, the Board overlooked Apogee’s
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`express teaching that one of ordinary skill would have, and in fact did, consider
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`generating a plate-ready file at locations remote from the printing company
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`facility. Similarly, the Board misapprehended Petitioners’ proposed ground of
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`unpatentability, relying on the system structure of Apogee when the proposed
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`ground was based upon the system architecture of the primary references Jebens
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`4
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`and Dorfman.
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`Case IPR2014-00791
`Petitioners’ Request for Rehearing
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`III. ARGUMENT
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`A. The Board Overlooked Explicit Evidence That Apogee
`Discloses Sending Plate Ready Files To A Remote Printer
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`The sole reason that claims 10-14 of the ’349 patent were held not
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`unpatentable is because Petitioners allegedly provided “no evidence that a person
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`of ordinary skill in the art would have considered generating a plate-ready file
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`anywhere other than where the printing plates are produced: at the printing
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`facility.” (Decision at 26, 30.) This rationale is incorrect and directly refuted by
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`Apogee and even by the ’349 patent’s description of known practices in the art.
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`Before a plate-ready file can be provided to a remote printer as specified in
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`claim 10, the file must be generated. There is no dispute that Apogee teaches the
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`generation of a plate-ready file—what Apogee refers to as the “PIF,” which is the
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`output of the “PDF RIP” process described in Apogee. Specifically, Petitioners’
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`claim charts point to Apogee as disclosing the generation of a plate-ready file
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`through the PDF RIP process. (See Petition at 40-41, 53, 57, citing Ex. 1008 at 6-
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`7.) Patent Owner and its declarant agree that the PDF RIP process in Apogee
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`creates the plate-ready file. (See Decision at 23, citing PO Resp. at 27 and Ex.
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`2014 ¶ 24.)
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`In opposing the Petition, Patent Owner urged an interpretation of the claims
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`requiring “offsite” file processing, asserting that a “POSITA would consider [the
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`PDF RIP] process to be occurring at the jobber or supplier, i.e., at a printing
`5
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`Petitioners’ Request for Rehearing
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`company facility.” (PO Resp. at 27, citing Ex. 2014 ¶ 24.) The Board agreed with
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`Patent Owner’s claim construction argument, concluding that Petitioners did not
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`provide “any evidence” “that a person of ordinary skill in the art would have
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`combined Jebens and Apogee in such a way that the plate-ready file would have
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`been produced at Jebens’ host facility or end user facility....” (Decision at 26.)
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`As noted above, the parties and the parties’ declarants agree that the Apogee
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`PDF RIP process is the software component of the Apogee system that generates a
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`plate-ready file. (Decision at 23, citing PO Resp. at 27 and Ex. 2014 ¶ 24.) In the
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`Petition, Petitioners relied specifically on this PDF RIP process and based their
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`unpatentability arguments on the processing flow of Apogee’s PIF plate-ready file
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`from the PDF RIP process to a remote printer. (See Petition at 40-41, 53, 57, citing
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`Ex. 1008 at 6-7.) After a plate-ready file is generated by the PDF RIP process, the
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`“Apogee PrintDrive manages the Print Image Files (PIF)” to output “to a variety of
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`output devices including Agfa imagesetters, proofers, and platesetters.” (Petition
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`at 40-41, 53, 57, citing Ex. 1008 at 6-7.) On the same two pages consistently relied
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`on by Petitioners (pages 6 and 7), Apogee goes on to explain that
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`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.
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`6
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`(Ex. 1008 at 7, emphasis added.)
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`Case IPR2014-00791
`Petitioners’ Request for Rehearing
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`Similarly, the workflow schematic spanning pages 6 and 7 of Apogee shows
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`the Apogee PDF RIP process and the Apogee PrintDrive located at discrete
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`locations, connected over a TCP/IP network, thereby routing the PIF, or plate-
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`ready file, from a remote PDF RIP to a remote or offsite printer. (Petition at 40-41,
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`53, 57, citing Ex. 1008 at 6-7.) Indeed, this teaching is also corroborated by the
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`’349 patent itself, which explains in its Background of the Invention Section that
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`remote printing was known long prior to filing the ’349 patent, namely, that
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`“[o]nce approval of the proof is given by the end user, a medium, such as a
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`computer to plate (CTP) file [i.e., plate-ready file] is produced and sent to the
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`printer.” (Ex. 1001 at 1:36-38, emphasis added.) Clearly the end user is remote
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`to the printer, which corroborates the generation of known CTP plate-ready files at
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`locations other than the printing facility.2 See also Petition at 8-11; In re Morsa,
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`2 As other portions of the ’349 patent’s prior art background section indicate, the
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`referenced “printer” was known to be a separate business or entity located at an
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`offsite, remote location. For instance, the patent discusses the “printer” who is sent
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`the plate-ready file as the entity that, e.g., “manufactures a printing plate,”
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`“converts the CTP file into a printing plate,” and “uses the printing plate to create
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`the printed product.” (Ex. 1001 at 1:45-51.)
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`7
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`Case IPR2014-00791
`Petitioners’ Request for Rehearing
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`803 F.3d 1374, 1378 (Fed. Cir. 2015) (citing approvingly to the Board’s use of the
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`specification of the patent under examination to establish the knowledge of a
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`person of ordinary skill in the art).
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`
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`Thus, contrary to the Board’s sole rationale for not finding claims 10-14
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`unpatentable, there is significant, documentary evidence of record—unrebutted,
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`and relied on by Petitioners—that one of ordinary skill was well aware of
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`generating plate-ready files at locations remote from the printing company facility
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`(i.e., in another town). One benefit of that remote printing arrangement was also
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`explicitly explained by Apogee and relied on by Petitioners: to allow multiple
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`physically separate PDF RIP processes to feed a single printing system, such as the
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`PrintDrive disclosed in Apogee, ensuring that the platesetter, for example, is
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`running at full capacity. (Petition at 40-41, 53, 57, citing Ex. 1008 at 6-7.) And,
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`although Petitioners did not argue for a construction of the term “remote printer,”
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`the Board’s construction of the term (i.e., an offsite printing company facility
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`accessible via a private or public communication network) was directly addressed
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`by Petitioners’ citation to pages 6 and 7 of Apogee.
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`Further, Petitioners’ expert testified that, as a matter of technical
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`implementation, one of ordinary skill would have known that plate-ready files
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`were either produced at a location remote from, or local to, the printer. In other
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`words, there was a known design choice of performing this file processing at either
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`8
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`Case IPR2014-00791
`Petitioners’ Request for Rehearing
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`location (see Petitioners Reply at 4-5), and pages 6 and 7 of Apogee consistently
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`relied upon by Petitioners confirm both options. The Board misapprehended
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`Petitioners’ statement in its Reply that “one of ordinary skill could predictably
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`implement Apogee at a central service facility” as an inadequate motivation to
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`combine argument. Rather, Petitioners’ Reply statement was simply a summary of
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`its Petition grounds, already accepted by the Board, which explicitly referenced
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`Apogee’s remote printing and the preceding generation/processing of the PIF at a
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`geographic location remote from the printer or, alternatively, at the same
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`geographic location as the printer. (Petition at 40-41, 53, 57, citing Ex. 1008 at 6-
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`7.) Because Apogee uses the same remote printer arrangement as the
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`Jebens/Dorfman references, there is simply no need to modify the trial grounds in
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`this regard.
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`The requirements of 37 C.F.R. § 42.71(d) have been met. Petitioners
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`respectfully request that the Board institute a rehearing to cancel claims 10-14 of
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`the ’349 patent.
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`B. The Board Misapprehended Petitioners’ Obviousness
`Grounds, Treating Apogee, Rather Than Jebens Or Dorfman,
`As The Primary References
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`Petitioners’ grounds of unpatentability are based upon Jebens and Dorfman
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`as primary references. In this manner, Petitioners rely upon the specific system
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`architecture of Jebens and Dorfman in the proposed grounds, and not the precise
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`9
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`Case IPR2014-00791
`Petitioners’ Request for Rehearing
`
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`architecture of Apogee. For example, Petitioners’ rely on Jeben’s disclosure that
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`the central service facility, or host system, routes to-be-printed files from a remote
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`client to a remote publishing entity such as a printer. (See Petition at 39-40, citing
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`Ex. 1006 at 2:64−3:10, 5:11-35; Petition at 41, citing Ex. 1006 at 5:17-22.) There
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`is no dispute that Jebens operates in this manner. (Decision at 12-13.) The same
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`analysis applies to Dorfman, which routes to-be-printed files from a remote client
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`to a commercial printer. (See Petition at 57, citing Ex. 1007 at p. 8, ll. 21-26;
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`Decision at 27-28.) When combined with Apogee, the to-be-printed file is the
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`plate-ready file produced by Apogee, which is then routed from Jeben’s host
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`system to a “publishing entity such as a printer, where the finalized brochure
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`would be published,” or to Dorfman’s commercial printer. (Petition at 41, citing
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`Ex. 1006 at 5:17-22; Petition at 57, citing Ex. 1007 at p. 8, ll. 21-26.)
`
`Petitioners provided an unrebutted rationale, supported by the declaration of
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`Prof. Lawler, for why one of ordinary skill in the art would have been motivated to
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`modify the architecture of the primary references with the PDF workflow and
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`plate-ready file of Apogee; namely, the known and obvious need to include a
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`rasterization process—such as the PDF RIP process of Apogee (by which plate-
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`ready files are generated)—into a printing prepress workflow such as that disclosed
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`by Jebens or Dorfman. (See Petition at 27-29, 32-33, and 48-49.) Because Apogee
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`uses the same remote printer arrangement as Jebens/Dorfman, no modifications of
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`10
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`Case IPR2014-00791
`Petitioners’ Request for Rehearing
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`the references are necessary in this regard, and nothing else is required to cancel
`
`claims 10-14 as unpatentable.
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`The Board’s Decision mistakenly looks to the secondary reference (Apogee)
`
`for architectural features relied upon in the primary references Jebens and
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`Dorfman, and then suggests that Apogee would have to be modified to transmit a
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`plate-ready file to a remote printer. This is incorrect for two reasons. First, as
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`discussed above, Petitioners’ proposed combinations and hypothetical systems are
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`based upon Jebens or Dorfman as primary references, both of which route to-be-
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`printed files to a remote printer. There is no modification of the primary
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`reference/system required to route a plate-ready file to a remote printer as claimed.
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`Stated differently, the obviousness inquiry does not ask “whether [Jebens
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`and Apogee, or Dorfman and Apogee] could be physically combined but whether
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`the claimed inventions are rendered obvious by the teachings of the prior art as a
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`whole.” In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc); see also In re
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`Keller, 642 F.2d 413, 425 (CCPA 1981) (stating “[t]he test for obviousness is not
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`whether the features of a secondary reference may be bodily incorporated into the
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`structure of the primary reference”); M.P.E.P. § 2145(III). Similarly,
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`nonobviousness cannot be established by attacking the references individually
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`when a challenge is predicated upon a combination of prior art disclosures. See In
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`re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Because both Jebens
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`11
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`Case IPR2014-00791
`Petitioners’ Request for Rehearing
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`and Dorfman are based on, and explicitly disclose, a distributed system
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`architecture where to-be-printed files are routed to a remote printer, claims 10-14
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`are unpatentable as obvious when combined with Apogee.
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`Second, even if physically combined, Apogee explicitly teaches generating a
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`plate-ready file at a processing location that is geographically remote (as required
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`by the Board’s construction) from a printer and then routing that file over a
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`communication network to the remote printer “in another town.” That is, even if
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`considering the system architecture of Apogee were proper, which it is not,
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`physical incorporation of Apogee into the primary references would also result in
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`the claims of the ’349 patent because Apogee teaches the same architecture: a
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`remote printer where the printer is located “in another town” from the location
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`where the plate-ready file processing occurs.
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`IV. CONCLUSION
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`For the reasons set forth above, Petitioners respectfully request that the
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`Board institute rehearing and cancel claims 10-14 of the ’349 patent.
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`12
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`Dated: December 28, 2015
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`Case IPR2014-00791
`Petitioners’ Request for Rehearing
`Respectfully submitted,
`Oblon, McClelland, Maier &
`Neustadt, LLP
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`
`
`
`/Scott A. McKeown/
`Scott A. McKeown (Reg. No. 42,866)
`Attorney for Petitioners
`EASTMAN KODAK COMPANY,
`AGFA CORPORATION, ESKO
`SOFTWARE BVBA, and
`HEIDELBERG, USA, INC.
`
`13
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies service of
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`PETITIONERS’ REQUEST FOR REHEARING UNDER 37 C.F.R. § 42.71(d) on
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`the counsel of record for the Patent Owner by filing this document through the
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`Patent Review Processing System as well as delivering a copy via electronic mail
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`to the following address:
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`W. Edward Ramage
`L. Clint Crosby
`BAKER, DONELSON, BEARMAN, CALDWELL
`& BERKOWITZ, P.C.
`eramage@bakerdonelson.com
`ccrosby@bakerdonelson.com
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`
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`Dated: December 28, 2015
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`/Scott A. McKeown/
`Scott A. McKeown (Reg. No. 42,866)
`Attorney for Petitioners
`EASTMAN KODAK COMPANY,
`AGFA CORPORATION, ESKO
`SOFTWARE BVBA, and
`HEIDELBERG, USA, INC.
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