IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________
`
`Command Web Offset Company, Inc., Worzalla Publishing Company,
`Sandy Alexander, Inc., Publication Printers Corp.,
`Specialty Promotions, Inc., and Trend Offset Printing Services Inc.,
`
`Petitioners,
`
`v.
`
`CTP Innovations, LLC,
`
`Patent Owner.
`___________________________
`
`Case IPR2016-00008
`Patent 6,611,349
`___________________________
`
`CTP INNOVATIONS, LLC’S PRELIMINARY RESPONSE TO PETITION
`
`
`Filed on behalf of CTP Innovations, LLC
`
`By:
`
`
`
`
`W. Edward Ramage (Lead Counsel)
`Reg. No. 50,810
`BAKER, DONELSON, BEARMAN,
`CALDWELL & BERKOWITZ, P.C.
`Baker Donelson Center
`211 Commerce Street, Suite 800
`Nashville, Tennessee 37201
`Telephone: (615) 726-5771
`Facsimile: (615) 744-5771
`Email: eramage@bakerdonelson.com
`
`
`L. Clint Crosby (Back-up Counsel)
`Reg. No. 47,508
`BAKER, DONELSON, BEARMAN,
`CALDWELL & BERKOWITZ, P.C.
`Monarch Plaza, Suite 1600
`3414 Peachtree Ave., N.E.
`Atlanta, Georgia 30326
`Telephone: (678) 406-8702
`Facsimile: (678) 406-8802
`Email: ccrosby@bakerdonelson.com
`
`

`
`TABLE OF CONTENTS
`
`I. INTRODUCTION .................................................................................................. 1
`
`II. APPLICABLE LEGAL STANDARDS ............................................................... 2
`
`A.
`
`Institution of Inter Partes Review. ........................................................ 2
`
`B.
`
`Obviousness under § 103(a). ................................................................. 2
`
`III. CLAIM CONSTRUCTION ................................................................................. 4
`
`A.
`
`“plate-ready file…being provided in real time”.................................... 4
`
`B.
`
`C.
`
`D.
`
`E.
`
`“plate-ready file” ................................................................................... 6
`
`“thin PostScript file” ............................................................................. 9
`
`“fat PostScript file” ............................................................................... 9
`
`“communication network” .................................................................... 9
`
`IV. ARGUMENT ..................................................................................................... 10
`
`A.
`
`The Board Has Already Rejected Similar Arguments. ....................... 10
`
`B.
`
`Petitioners Fail to Demonstrate a Reasonable Likelihood of
`Prevailing. ............................................................................................ 12
`
`1.
`
`2.
`
`3.
`
`4.
`
`The Petition Fails to Establish A Reasonable Likelihood
`That Claims 4-5 and 7-9 Of The ‘349 Patent Would Have
`Been Obvious Based on FullPress and WebNative. ................. 13
`
`The Petition Fails to Establish A Reasonable Likelihood
`That Claim 6 Of The ‘349 Patent Would Have Been
`Obvious Based on FullPress, WebNative and Andersson. ....... 16
`
`The Petition Fails to Establish A Reasonable Likelihood
`That Claims 4-7 Of The ‘349 Patent Would Have Been
`Obvious Based on I-Media and Andersson. ............................. 16
`
`The Petition Fails to Establish A Reasonable Likelihood
`That Claims 8-9 Of The ‘349 Patent Would Have Been
`Obvious Based on I-Media, Anderson and Seybold. ................ 18
`
`V. CONCLUSION ................................................................................................... 19
`
`
`
`i
`
`

`
`
`CASES
`
` TABLE OF AUTHORITIES
`
`Page(s)
`
`CCS Fitness, Inc. v. Brunswick Corp.,
`288 F.3d 1359 (Fed. Cir. 2002) ............................................................................ 2
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) .................................................................................................. 3
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) .......................................................................... 3, 4
`
`Inline Connection Corp. v. Earthlink, Inc.,
`684 F. Supp. 2d 496 (D. Del. 2010)...................................................................... 3
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .......................................................................................... 3, 4
`
`Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc.,
`520 F.3d 1358 (Fed. Cir. 2008) ........................................................................ 3, 4
`
`Oxford Gene Tech., Ltd. v. Mergen Ltd.,
`345 F. Supp. 2d 431 (D. Del. 2004)...................................................................... 3
`
`Perfect Web Technologies, Inc. v. InfoUSA, Inc.,
`587 F.3d 1324 (Fed. Cir. 2009) ............................................................................ 4
`
`Unigene Labs., Inc. v. Apotex, Inc.,
`655 F.3d 1352 (Fed. Cir. 2011) ............................................................................ 3
`
`STATUTES
`
`35 U.S.C. § 103 .......................................................................................................... 2
`
`35 U.S.C. § 313 .......................................................................................................... 1
`
`35 U.S.C. § 314 .................................................................................................... 2, 12
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.100 ..................................................................................................... 2
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`
`
`ii
`
`

`
`77 Fed. Reg. 48756, 48766 ........................................................................................ 2
`77 Fed. Reg. 48756, 48766 ...................................................................................... ..2
`
`iii
`iii
`
`
`
`
`
`

`
`Patent Owner, CTP Innovations, LLC (“Patent Owner”), pursuant to 35
`
`U.S.C. § 313 and 37 C.F.R. § 42.107, submits its Preliminary Response to
`
`Command Web Offset Company’s, Worzalla Publishing Company's, Sandy
`
`Alexander, Inc.'s, Publication Printers Corp.'s, Specialty Promotions, Inc.'s and
`
`Trend Offset Printing Services, Inc.'s (collectively, the “Petitioners”) Petition for
`
`Inter Partes Review of U.S. Patent No. 6,611,349 (“the ‘349 Patent”).
`
`I. INTRODUCTION
`
`
`
`This Petition is the third round of petitions filed against the ‘349 Patent and
`
`a related patent (U.S. 6,738,155) on behalf of a group of printing service providers
`
`who have been sued for infringement in a number of cases. See Ex. 1002. The
`
`Petitioners in this matter are participants in some of those cases. In this Petition,
`
`Petitioners assert that claims 4-14 of the ‘349 Patent should be invalidated on the
`
`basis of obviousness.
`
`
`
`This Petition follows the Board's determinations to reject similar petitions
`
`filed against this same set of claims over the past two years. See Exs. 1004
`
`(Decision Denying Petition to Institute in IPR2013-00474), 1005 (Decision
`
`Instituting IPR in IPR 2014-00791), 1013 (Decision Regarding Request for
`
`Rehearing in IPR 2014-00791). Patent Owner intends to vigorously contest
`
`Petitioners’ assertions in this Petition if the Board initiates an Inter Partes Review.
`
`However, for purposes of its preliminary response, Patent Owner submits that
`
`
`
`1
`
`

`
`Petitioners have so clearly failed to carry their burden under the “reasonable
`
`likelihood” standard that the Board should not initiate an Inter Partes Review. As
`
`demonstrated below, the Board's analysis in the prior decisions was accurate and
`
`correct, and equally applicable to the current Petition.
`
`
`
`II. APPLICABLE LEGAL STANDARDS
`
`A.
`
`Institution of Inter Partes Review.
`
`
`
`In instituting an Inter Partes Review, the petitioner must show 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). In conducting its
`
`review, the Board should interpret claims using the broadest reasonable
`
`interpretation as understood by one of ordinary skill in the art and consistent with
`
`the disclosure. Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48766
`
`(Aug. 14, 2012); 37 C.F.R. § 42.100(b). There is a heavy presumption that a claim
`
`term carries its ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick
`
`Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).
`
`B. Obviousness under § 103(a).
`
`
`
`A patent is invalid under Section 103(a) if the “differences between the
`
`subject matter sought to be patented and the prior art are such that the subject
`
`matter as a whole would have been obvious at the time the invention was made to a
`
`person having ordinary skill in the art.” 35 U.S.C. § 103(a). An obviousness
`
`
`
`2
`
`

`
`inquiry requires considering the following four Graham factors: (1) the scope and
`
`content of the prior art; (2) the differences between the prior art and the claimed
`
`invention; (3) the level of ordinary skill in the art; and (4) objective evidence of
`
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). See also,
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406-07 (2007) (stating that the four
`
`Graham factors continue to define the controlling inquiry). The relevant inquiry is
`
`whether the petition has set forth “some articulated reasoning with some rational
`
`underpinning to support the legal conclusion of obviousness.” KSR Int’l Co., 550
`
`U.S. at 418.
`
`
`
`Determining the differences between the prior art and the claimed invention
`
`requires an element-by-element comparison of the claim elements with regard to
`
`the prior art. See, e.g., Oxford Gene Tech., Ltd. v. Mergen Ltd., 345 F. Supp. 2d
`
`431, 437 (D. Del. 2004); Inline Connection Corp. v. Earthlink, Inc., 684 F. Supp.
`
`2d 496, 523 (D. Del. 2010).
`
`
`
`The obviousness analysis also must present evidence of a motivation to
`
`combine or modify the prior art to arrive at the invention as claimed. See Unigene
`
`Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011); Ortho-McNeil
`
`Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d 1358, 1364-65 (Fed. Cir. 2008); In re
`
`Kahn, 441 F.3d 977, 986-88 (Fed. Cir. 2006). There must be “some rationale,
`
`articulation, or reasoned basis to explain why the conclusion of obviousness is
`
`
`
`3
`
`

`
`correct.” In re Kahn, 441 F.3d at 986-88. The requirement “remains the primary
`
`guarantor against a non-statutory hindsight analysis.” Ortho-McNeil, 520 F.3d at
`
`1364-65. It is well-established that rejections on obviousness grounds cannot be
`
`sustained by “mere conclusory statements.” KSR Int’l Co., 550 U.S. at 418; see
`
`also, Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1330 (Fed. Cir.
`
`2009); M.P.E.P. §§ 2141, 2142, 2143.
`
`
`
`III. CLAIM CONSTRUCTION
`
`Petitioners have proposed claim interpretations for four claim elements.
`
`However, Petitioners’ proposed claim constructions are inconsistent with the
`
`disclosure on several points, and are contrary to their ordinary and customary
`
`meanings.
`
` Patent Owner further submits its proposed interpretation for
`
`“communication network,” which Petitioners did not construe.
`
`A.
`
`“plate-ready file…being provided in real time”
`
`Petitioners construe
`
`this phrase as “encompassing
`
`the electronic
`
`transmission of data, images, files etc. over a communication network.” Petition at
`
`24. This definition ignores the term “real time,” or equates it to simply mean any
`
`electronic transmission over a communication network.
`
`
`
`The specification makes clear that Petitioners’ definition is wrong; merely
`
`transmitting electronic data over a communication network is not doing so in “real
`
`
`
`4
`
`

`
`time.” The specification notes a prior art system, WAM!NET, that does just that
`
`and is not “real time.”
`
`
`
`Network access device (NAD) 140 is a device which couples
`
`local network 150 to an external private network, such as, private
`
`network 160. In one embodiment, NAD 140 connects local network
`
`150 with a private network called WAM!NETTM. WAM!NET is a
`
`private communication network which offers connectivity of
`
`databases for content management as well as proofing devices for
`
`proofing a file.
`
` WAM!NET connects printing companies to
`
`advertising agencies, publishers, and graphic design
`
`firms.
`
`Nevertheless, document delivery by WAM!NET is not done in real
`
`time.
`
`Ex. 1001 at p. 23 (col. 6: 55-65).
`
`
`
`Patent Owner notes that the Board in IPR2014-00791 declined to construe
`
`the term “real time” as the term appears in the preamble of each of the claims at
`
`issue, and the Board determined that the term “real time” did not limit the scope of
`
`the claims. Ex. 1005 at p. 13.
`
`Should the Board decide to construe the term “real time,” Patent Owner
`
`proposes that the term should be construed to mean “the immediate processing of
`
`input.” The specification at col. 9, lines 3-8, states:
`
`
`
`5
`
`

`
`It also should be noted that the foregoing functional components may
`
`be adapted in a variety of manners for executing the functions
`
`described herein. In general, the functional components facilitate the
`
`printing and publishing services provided at an end user facility and a
`
`printing company facility, which is preferably implemented in a real
`
`time manner to provide increased response time to all of the printing
`
`and publishing services.
`
`Ex. 1001 at p. 25. As such, by providing a processing of input in a real time or
`
`immediate manner the users (facilities) are provided with more response time
`
`between inputs or actions, i.e., the process of manipulating the input is done as
`
`quickly as possible to provide more time to respond to such.
`
`B.
`
`“plate-ready file”
`
`
`
`Petitioners propose the following construction of this phrase: “a digital file
`
`that is ready to output to a device for producing a printing plate.” Petition at 24-
`
`25. This proposed construction includes unnecessary elements.
`
`Patent Owner proposes the more concise construction: “a file that is ready to
`
`be made into a printing plate.” The specification at col. 10, lines 7-15, col. 11,
`
`lines 44-48, col. 12, lines 18-22, and col. 12, line 66 through column 13, line 7
`
`supports Patent Owner, and its construction is in accord with the broadest
`
`reasonable interpretation standard. See Ex. 1001 at pp. 25-27.
`
`
`
`6
`
`

`
`
`
`Specifically, the specification at column 10, lines 7-15, states:
`
`File processing includes gathering linked data and supporting art and
`
`fonts into a single file that is stable, predictable, and ready to image to
`
`proof or plate. The machines and/or programs used to conduct file
`
`processing include the application used to build a page, such as,
`
`QuarkXpress, InDesign by Adobe Systems and the software programs
`
`used to generate stable, predictable, plate-ready files. Such software
`
`programs include Adobe Acrobat Distiller, Art Work System and
`
`Scitex Brisque.
`
`Ex. 1001 at p. 25. The recitation of a “plate-ready file” as being one that is a single
`
`file that is stable, predictable, and ready to image to proof or plate supports the
`
`proposed definition of a file that is ready to be made into a printing plate. Column
`
`11, lines 44-48, state that “[a]t step 655, finished plate-ready files are sent to
`
`printing company facility 400 via a communication link, such as, private network
`
`160 or public network 190. Printing company facility 400 images approved page
`
`layouts to a print at step 660 and prints the pages.” Id. at p. 26. Thus, the plate-
`
`ready file is ready to be used to print the page, i.e., it is a file that is ready to be
`
`made into a printing plate.
`
`The specification at column 12, lines 18-22, further states that “[i]f no
`
`additional revisions are necessary, step 765 is performed in which the finished
`
`
`
`7
`
`

`
`plate-ready files are generated at printing company facility 400. At step 770,
`
`printing company facility 400 enters plate-ready files into DCM database 132.” Id.
`
`Thus, the plate-ready files are those that are ready to be made into the final printing
`
`plate.
`
`Lastly, at column 12, line 66 through column 13, line 7, the specification
`
`recites:
`
`If no additional revisions are necessary step 870 is performed in
`
`which finished plate-ready files are made available to printing
`
`customer facility 400 via communication link. At step 875, printing
`
`company facility 400 enters plate-ready file into DCM database 130.
`
`At step 880, plate-ready files pages are digitally imposed and imaged
`
`to proofing device at printing company facility 400. At step 885,
`
`printing company facility 400 images the proof pages to plate and
`
`prints the job.
`
`Id. at pp. 26-27. This paragraph clearly illustrates that the plate-ready file is
`
`“ready” since there are to be “no additional revisions” and that the plate-ready file
`
`is entered into the database, imposed, proofed, and printed. This supports the
`
`definition of the file being ready to be made into a printing plate, as the formation
`
`of the printing plate is one of the final steps prior to actual printing.
`
`
`
`8
`
`

`
`C.
`
`“thin PostScript file”
`
`
`
`In the previous proceeding, IPR2013-00791, the Board used the definition of
`
`“a Postscript file containing low resolution images.” Ex. 1005 at p. 14. This
`
`definition is acceptable for purposes of the decision on this Petition.
`
`D.
`
`“fat PostScript file”
`
`
`
`In the previous proceeding, IPR2013-00791, the Board used the definition of
`
`“a Postscript file containing high resolution images.” Ex. 1005 at p. 15. This
`
`definition is acceptable for purposes of the decision on this Petition.
`
`E.
`
`“communication network”
`
`
`
`Patent Owner proposes that this phrase be interpreted as “a private network
`
`such as an extranet or public network such as the Internet.” Support may be found
`
`in claim 1, the Abstract, and the specification at col. 4, lines 29-66, col 5, lines 21-
`
`25, and col. 11, lines 60-63. Ex. 1001 at pp. 1, 22-23, 26 and 31. It should be
`
`specifically noted that a communication network can be a private network or a
`
`public network, and does not need to be both. Id. The proposed interpretation is in
`
`accord with the broadest reasonable interpretation standard.
`
`
`
`
`
`
`
`9
`
`

`
`A. The Board Has Already Rejected Similar Arguments.
`
`IV. ARGUMENT
`
`The Board has previously rejected attacks on claims 4-14 of the ‘349 Patent
`
`three times. The Board’s decision in each case was well-founded and accurate, and
`
`the Board’s reasoning applies with equal force to the prior art cited in the current
`
`Petition.
`
`The first attack (IPR2013-00474) was initiated in 2013 by the Printing
`
`Industries of America, Inc., a printing trade advocacy group with a significant
`
`membership. The Board denied the petition to institute Inter Partes Review for all
`
`claims in the ‘349 Patent. Ex. 1004. This included an assertion that claim 4 (and
`
`its dependent claims) was obvious in light of a combination of prior art that
`
`included Andersson (Ex. 1008) , cited in the present Petition. See id. at pp. 15-16.
`
`The second attack (IPR2014-00791) was initiated in 2014 by Eastman
`
`Kodak Company, Agfa Corporation, Esko Software BVBA, and Heidelberg, USA,
`
`who are suppliers to various printing companies. Ex. 1005. The Board decided
`
`to institute IPR proceedings for claims 10-14 of the ‘349 Patent, but denied
`
`institution of proceeding for claims 4-9 on the two assertions of obviousness. Id.
`
`at 18-19, 25-27.
`
`The Board’s analysis of the lack of obviousness is instructive. The Board
`
`focused on three steps of claim 4:
`
`
`
`10
`
`

`
`
`
`
`
`
`
`(1) creating a thin Postscript file from the user-designed page layout;
`
`(2) converting the thin Postscript file to a fast Postscript file; and
`
`(3) converting the fat Postscript file to a PDF file.
`
`Id. at 18. The Board decided that the combination of the prior art references would
`
`not teach or fairly suggest these steps.
`
`
`
`For the first proposed combination of prior art, the Board determined that
`
`one reference did not teach converting the fat Postscript file before sending the file
`
`to a printer or imagesetter, and another reference taught converting incoming files
`
`to PDF before “OPI image exchange.” Id. at 18-19. The Board specifically noted
`
`that it would not expect a skilled artisan to delay the conversion of Postscript files
`
`to PDF files until after OPI image exchange (i.e., the exchange of low resolution
`
`images for high resolution images). Id. (“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 the second proposed combination of prior art, the Board determined that
`
`the primary reference did not teach using Postscript files at all, and that a person of
`
`ordinary skill would not have considering the proposed substitution of Postscript
`
`files in place of PDF files. Id. at 25-26.
`
`
`
`The third attack was the Petition for Rehearing filed in IPR2014-00791. The
`
`Board took the opportunity to more fully explain its determination not to institute
`
`
`
`11
`
`

`
`an IPR for claims 4-9. Ex. 1013. In particular, the Board addressed the issue of
`
`the relative timing of the OPI image exchange and the PDF conversion: “claim 4
`
`indisputably require conversion to PDF after OPI image exchange.” Id. at 10.
`
`But Petitioner does not explain how the knowledge of two alternative
`
`means of performing OPI image exchange teaches or fairly suggests
`
`claim 4. Claim 4 does not require OPI image exchange using PDF
`
`files at all; nor does it merely require OPI image exchange using
`
`Postscript files, but rather OPI image exchange using Postscript files,
`
`and then conversion of the resulting fast Postscript file to PDF.
`
`Id. at 11.
`
`The present Petition thus is the fourth attempt to invalidate claims 4-9 based
`
`on obviousness. As discussed below, the proposed combinations fail for similar
`
`reasons as those given above. Practice does not make perfect, and the Board
`
`should decline to institute IPR proceedings in this case, just as it did before.
`
`
`
`B.
`
`Petitioners Fail to Demonstrate a Reasonable Likelihood of Prevailing.
`
`To have the Board institute an Inter Partes Review, a petitioner must show
`
`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). The
`
`
`
`12
`
`

`
`Petitioner has failed to meet this standard with regard to its assertions on
`
`obviousness grounds.
`
`1.
`
`The Petition Fails to Establish A Reasonable Likelihood That
`Claims 4-5 and 7-9 Of The ‘349 Patent Would Have Been Obvious
`Based on FullPress and WebNative.
`
`
`
`The Petition asserts that claims 4-5 and 7-9 are invalid for obviousness
`
`based on FullPress (Ex. 1020) in view of WebNative (Ex. 1028). The Petition fails
`
`to make a prima facie case of obviousness. FullPress and WebNative fail, either
`
`separately or together, to disclose or teach several of the elements in claims 4-9.
`
`
`
`
`
`There are five method steps in claim 4 of the ‘349 Patent:
`
`(a) remotely providing access to imaging files for searching and retrieving
`
`images used in the design of a page layout by a remote user;
`
`
`
`(b) establishing links to said imaging files, thereby creating a thin Postscript
`
`file from the page layout designed by the remote user;
`
`
`
`(c) parsing said thin Postscript file to extract data associated with low
`
`resolution images and replace with high resolution date, thereby forming a fat
`
`Postscript file;
`
`
`
`(d) creating a portable document format (PDF) file from said fat Postscript
`
`file, and
`
`
`
`(e) converting said PDF file to a file in plate-ready format.
`
`Ex. 1001, claim 4.
`
`
`
`13
`
`

`
`
`
`The FullPress reference does not teach the combination of steps (d) and (e).
`
`That is, Full Press does not teach or suggest the steps of converting the fat
`
`PostScript file to a PDF file, and then conversion of the PDF file to a plate-ready
`
`format file (which is then sent to a remote printer).
`
`
`
`FullPress discloses an integrated prepress OPI system that prints PostScript
`
`files on “any networked PostScript imaging device.” See Ex. 1020 at p.4. As seen
`
`in the “FullPress Workflow Overview” diagram on pages 10-11, documents with
`
`low-resolution images spool to the printer server, and FullPress inserts the high-
`
`resolution images at print time. Original images are substituted only when final
`
`output is desired. Id. at 11-12. If printing in proofing mode, the low-resolution
`
`(i.e., thin PostScript) files are used. “Users may choose any PostScript device on
`
`the network for printing.” Id. at 12.
`
`
`
`FullPress clearly discloses that it sends a PostScript file to the remote
`
`printer, wherein it is then processed (i.e., traverse the network to the RIP, be
`
`processed in the RIP). Id. at 13. It does not disclose converting a fat PostScript
`
`file to a PDF file, and then converting that PDF to a file in plate-ready format. In a
`
`similar fashion to the Board’s previous determination in the earlier IPR, it would
`
`be counterintuitive to create a PDF file from the PostScript file, and then convert
`
`the PDF file back to a file compatible with a PostScript printing device
`
`(presumably, some form of PostScript file).
`
`
`
`14
`
`

`
`
`
`While FullPress does describe the creation of a PDF file, this is in the
`
`context of an option for sending a file to the customer's site for remote proofing. A
`
`PostScript file is sent to an Acrobat distiller to produce a PDF file for on-line
`
`Internet deliver so remote proofing can take place quickly. Id. at 14.
`
`
`
`The WebNative reference does not cure the defects of FullPress. WebNative
`
`is a companion system to FullPress, and enables commercial printers and prepress
`
`shops to distribute the low-resolution “FPO” images to clients of the Internet using
`
`a Web browser. Ex. 1021 at 1.
`
`
`
`FullPress and WebNative, separately or in combination, do not disclose
`
`creating a portable document format (PDF) file from a created fat Postscript file,
`
`and converting said PDF file to a file in plate-ready format (for provision to a
`
`remote printer). As the Petitioner fails to make a prima facie case of obviousness
`
`with regard to claim 4, it also fails to make a prima facie case of obviousness with
`
`regard to dependent claims 5 and 7-9.
`
`Accordingly, the Board should deny the Petition’s proposed ground of
`
`obviousness of claims 4-5 and 7-9 based on FullPress and WebNative.
`
`15
`
`
`
`
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`

`
`2.
`
`The Petition Fails to Establish A Reasonable Likelihood That
`Claim 6 Of The ‘349 Patent Would Have Been Obvious Based on
`FullPress, WebNative and Andersson.
`
`The Petition asserts that claim 6 is invalid for obviousness based on
`
`FullPress (Ex. 1020) in view of WebNative (Ex. 1028) and further in view of
`
`Andersson (Ex. 1008). As discussed above, the Petition fails to make a prima facie
`
`case of obviousness with regard to independent claim 4 based on FullPress and
`
`WebNative. Thus, the Petition also fails to make a prima facie case of obviousness
`
`with regard to dependent claim 6. Accordingly, the Board should deny the
`
`Petition’s proposed ground of obviousness of claim 6 based on FullPress,
`
`WebNative and Andersson.
`
`
`
`3.
`
`The Petition Fails to Establish A Reasonable Likelihood That
`Claims 4-7 Of The ‘349 Patent Would Have Been Obvious Based
`on I-Media and Andersson.
`
`
`
`The Petition asserts that claims 4-7 are invalid for obviousness based on I-
`
`Media (Ex. 1020) in view of Andersson (Ex. 1008). The Petition fails to make a
`
`prima facie case of obviousness. I-Media and Andersson fail, either separately or
`
`together, to disclose or teach several of the elements in claims 4-7.
`
`
`
`Like FullPress, I-Media does not disclose creating a portable document
`
`format (PDF) file from a created fat Postscript file, and converting said PDF file to
`
`a file in plate-ready format (i.e., steps (d) and (e) of claim 4). As seen in Figure 3
`
`
`
`16
`
`

`
`of I-Media, the Cross Media Publishing (CMP) System (Client A) arguably
`
`corresponds to the remote user of the present invention. Ex. 1019 at 6. The CMP
`
`system allows the creation of media independent documents, and accesses media
`
`files stored in a database attached to the I-Media server. Id. However, it is the
`
`remote user (Client A) of the I-Media system that converts the user-created
`
`document to a variety of format using “Export Modules.” In the present
`
`invention, the steps are carried out at a facility separate from the remote user.
`
`
`
`Further, regardless of where carried out, the conversion processes of I-Media
`
`do not correspond to the present invention. In one process, an OPI PostScript file
`
`(i.e., a PostScript encoded document with IP comments instead of high resolution
`
`images) is processed by an OPI Server (Client B) to produce a PostScript file,
`
`which is then sent to an image or plate setter or digital printing press (i.e., the
`
`PostScript file is not converted to a PDF file, and the PDF filed is not then
`
`converted to a plate-ready format file). In a separate process, a PostScript file is
`
`run through a Distiller to produce a PDF file, but there is no conversion of the PDF
`
`to a plate-ready format file. The PDF file appears to be used for remote proofing
`
`by the remote client. Thus, the I-Media system appears to disclose no more than
`
`the processes disclosed in FullPress.
`
`
`
`17
`
`

`
`
`
`Andersson does not cure the defects of I-Media. More particularly, it does
`
`not disclose creating a portable document format (PDF) file from a created fat
`
`Postscript file, and converting said PDF file to a file in plate-ready format.
`
`
`
`Thus, I-Media and Andersson, separately or in combination, do not disclose
`
`creating a portable document format (PDF) file from a created fat Postscript file,
`
`and converting said PDF file to a file in plate-ready format (for provision to a
`
`remote printer). As the Petitioner fails to make a prima facie case of obviousness
`
`with regard to claim 4, it also fails to make a prima facie case of obviousness with
`
`regard to dependent claims 5-7.
`
`Accordingly, the Board should deny the Petition’s proposed ground of
`
`obviousness of claims 4-7 based on I-Media and Andersson.
`
`
`
`4.
`
`The Petition Fails to Establish A Reasonable Likelihood That
`Claims 8-9 Of The ‘349 Patent Would Have Been Obvious Based
`on I-Media, Anderson and Seybold.
`
`The Petition asserts that claims 8 and 9 are invalid for obviousness based on
`
`I-Media (Ex. 1020) in view of Andersson (Ex. 1008) and further in view of
`
`Seybold (Ex. 1018). As discussed above, the Petition fails to make a prima facie
`
`case of obviousness with regard to independent claim 4 based on I-Media and
`
`Andersson. Thus, the Petition also fails to make a prima facie case of obviousness
`
`with regard to dependent claims 8 and 9. Accordingly, the Board should deny the
`
`
`
`18
`
`

`
`Petition’s proposed ground of obviousness of claims 8 and 9 based on I-Media,
`
`Andersson and Seybold.
`
`
`
`V. CONCLUSION
`
`
`
`For the reasons above, CTP Innovations, LLC requests that the Board deny
`
`in its entirety the Petition for Inter Partes Review of the ‘349 Patent.
`
`
`
`19
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`

`
`
`
`Dated: January 13, 2016
`
`
`
`
`Respectfully submitted,
`
`
`
`BAKER, DONELSON, BEARMAN,
`CALDWELL & BERKOWITZ, P.C.
`
`
`
`/W. Edward Ramage/
`W. Edward Ramage, Reg. No. 50,810
`Baker Donelson Center
`211 Commerce Street, Suite 800
`Nashville, Tennessee 37201
`Tel: (615) 726-5771
`Fax: (615) 744-5771
`Email: eramage@bakerdonelson.com
`
`L. Clint Crosby, Reg. No. 47,508
`Monarch Plaza, Suite 1600
`3414 Peachtree Ave., N.E.
`Atlanta, Georgia 30326
`Tel: (678) 406-8702
`Fax: (678) 406-8802
`Email: ccrosby@bakerdonelson.com
`
`for Patent Owner CTP
`Counsel
`Innovations, LLC
`
`
`
`20
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`

`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that, on January 13, 2016, the foregoing
`
`Preliminary Response to Petition was served in its entirety via U.S. Express Mail,
`
`postage prepaid, and electronic mail upon the following:
`
`
`
`Scott A. McKeown
`Christopher Ricciuti
`OBLON, MCCLELLAND,
`MAIER & NEUSTADT, LLP.
`1940 Duke Street
`Alexandria, VA 22314
`Tel: (703) 412-6297
`Email: smckeown@oblon.com
`
`
`
`
`
`
`
`
`
`/W. Edward Ramage/
`W. Edward Ramage, Reg. No. 50,810
`
`
`
`21