Trials@uspto.gov Paper: 13
`
`571-272-7822
`Filed: March 28, 2016
`
`
`
`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 B1
`____________
`
`
`
`Before HOWARD B. BLANKENSHIP, BENJAMIN D. M. WOOD, and
`BRIAN J. McNAMARA, Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`571-272-7822
`Filed: March 28, 2016
`
`
`
`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 B1
`____________
`
`
`
`Before HOWARD B. BLANKENSHIP, BENJAMIN D. M. WOOD, and
`BRIAN J. McNAMARA, Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
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`IPR2016-00008
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`BACKGROUND
`Command Web Offset Company, Inc., Worzalla Publishing
`Company, Sandy Alexander, Inc., Publication Printers Corp., Specialty
`Promotions, Inc., d/b/a Specialty Print Communications, and Trend Offset
`Printing Services Inc. ( collectively, “Petitioner”) filed a petition, Paper 1
`(“Pet.”), to institute an inter partes review of claims 4–9 (the “challenged
`claims”) of U.S. Patent No. 6,611,349 B1 (“the ’349 patent”). 35 U.S.C.
`§ 311. CTP Innovations, LLC (“Patent Owner”) timely filed a Preliminary
`Response, Paper 12 (“Prelim. Resp.”), contending that the petition should be
`denied as to all challenged claims. We have jurisdiction under 37 C.F.R.
`§ 42.4(a) and 35 U.S.C. § 314, which provides that an inter partes review
`may not be instituted unless the information presented in the Petition “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.” Having
`considered the arguments and the associated evidence presented in the
`Petition and the Preliminary Response, for the reasons described below, we
`decline to institute inter partes review.
`
`REAL PARTIES IN INTEREST
`Petitioner identifies the individual petitioner entities as the only real
`parties-in-interest. Pet. 1.
`
`PENDING LITIGATION
`The Petition states that “the ’349 patent is asserted in dozens of
`litigations, which have been identified in Ex. 1002” and that these lawsuits
`are pending as part of a multi-district litigation in the United States District
`Court for the District of Maryland. Id. at 1–2.
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`The ’349 patent was also the subject of the following proceedings
`before the Patent Trial and Appeal Board:
`Printing Industries of America v. CTP Innovations, LLC, (“PIA”)1;
`Eastman Kodak Co., Agfa Corp., Esko Software BVBA, and
`Heidelberg, USA v. CTP Innovations, LLC (“Kodak I”)2; and
`Eastman Kodak Co., Agfa Corp., Esko Software BVBA, and
`Heidelberg, USA v. CTP Innovations, LLC (“Kodak II”)3.
`
`THE ’349 PATENT (EXHIBIT 1001)
`The ’349 patent relates to “a system and method of providing
`publishing and printing services via a communication network.” Ex. 1001,
`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 (the “design” stage), (2) prepress production, (3) platemaking,
`(4) printing, and (5) binding, finishing and distribution.” Id. at 1:12–15. In
`the first step, 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
`
`
`1 See, Printing Industries of America v. CTP Innovations, LLC, Case
`IPR2013-00474, slip op. (PTAB Dec. 31, 2013) (denying institution of inter
`partes review of claim 1–14). Ex. 1004.
`2 See, Eastman Kodak Co., Agfa Corp., Esko Software BVBA, and
`Heidelberg, USA v. CTP Innovations, LLC, Case IPR2014-00791, slip op.
`(PTAB Nov. 28, 2014)(instituting of inter partes review of claims 10–14).
`Ex. 1005.
`3 See, Eastman Kodak Co., Agfa Corp., Esko Software BVBA, and
`Heidelberg, USA v. CTP Innovations, LLC, Case IPR2014-00790 (Kodak
`II)3, slip op. (PTAB Nov. 28, 2014)(instituting inter partes review of claims
`1–3). Ex. 1006.
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`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, proofing, imposition, filmsetting, and platesetting.” Id. at 1:29–32.
`“RIPing” is based on the acronym “RIP,” which stands for raster
`images processor. Id. at 7:57–59. A RIP is a hardware or software
`component that “rasterizes” an image file – i.e., converts it to a “bitmap” 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
`[the file] 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. “Imposition” involves arranging multiple pages
`into a single flat that can be used to create a printing plate. Ex. 1001, 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 based on the imposed flat
`and 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. Ex. 1001, Fig. 1. In this embodiment, end user
`facility 300 comprises a router, desktop computer for page-building
`operations, 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 a server, “hierarchical storage
`management” (HSM) system 120, “digital content management” system
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`130, and local area network (LAN) 150. Id. at 5:40–50. 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.
`
`ILLUSTRATIVE CLAIM
`Claim 4 is illustrative of the challenged claims:
`
`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.
`
`
`ART CITED IN PETITIONER’S CHALLENGES
`Petitioner cites the following references in its challenges to
`patentability:
`
`Reference
`Mattias Andersson, et al., PDF Printing and
`Publishing, The Next Revolution Press
`After Gutenberg, Micro Publishing (1997)
`
`Designation
`
`Exhibit No.
`
`Andersson
`
`Ex. 1008
`
`6
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`The Seybold Report on Publishing
`Systems, Vol. 26, No. 11 (Seybold
`Publications, Feb. 24, 1997)
`Jorg Zeidler, Marwan Ramadan I-Media:
`An Integrated Media Server and Media
`Database As a Basic Component of a Cross
`Media Publishing System, Computers and
`Graphics, An International Journal Of
`Systems & Applications In Computer
`Science, Vol. 21, no. 6, pp. 693–702
`(1997), Graphics in Electronics Printing
`and Publishing
`Xinet Full Press Brochure
`XiNet WebNative Brochure
`
`
`
`Seybold
`
`Ex. 1018
`
`I-Media
`
`Ex. 1019
`
`FullPress
`WebNative
`
`Ex. 1020
`Ex. 1021
`
`CHALLENGES ASSERTED IN PETITION
`Claims
`Statutory Basis
`Challenge
`Obvious over FullPress
`4–5 and 7–9
`35 U.S.C. § 103(a)
`in view of WebNative
`Obvious over FullPress
`in view of WebNative
`and Andersson
`Obvious Over I-Media
`in view of Andersson
`Obvious Over I-Media
`in view of Anderson
`and Seybold
`
`6
`
`4–7
`
`35 U.S.C. § 103(a)
`
`35 U.S.C. § 103(a)
`
`8 and 9
`
`35 U.S.C. § 103(a)
`
`
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`CLAIM CONSTRUCTION
`We interpret claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC,
`793 F.3d 1268, 1278 (Fed. Cir. 2015) cert. granted sub nom. Cuozzo Speed
`Techs. LLC v. Lee, 84 USLW 3218 (U.S. Jan. 15, 2016) (No. 15-446). In
`applying a broadest reasonable construction, claim terms generally 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. See 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).
`Plate-ready file . . . being provided in real time
`Petitioner proposes that this term be construed to mean
`“encompassing, inter alia, the electronic transmission of data, images, and
`files over a communication network.” Pet. 24. Patent Owner argues that
`Petitioner’s construction ignores the term “real-time” or equates it to mean
`any electronic transmission over a communication network. Prelim. Resp. 4.
`Patent Owner contends that Petitioner’s definition is wrong because merely
`transmitting electronic data over communication network is not doing so in
`“real-time.” Id. at 4–5. Patent Owner acknowledges that in Kodak I we
`determined that the term “real-time,” which appears in the preamble of
`methods claims 4–14, does not limit the scope of the claims. Id. at 5; Ex.
`1005, 13. We reached a similar conclusion in Kodak II concerning
`apparatus claims 1–3. Ex. 1006, 12–14. Although Patent Owner cites
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`passages from the specification of the ’349 patent concerning a preferable
`implementation in a real-time manner, on this record we are not persuaded
`that the term “real-time” recites essential structure or steps so as to give life,
`meaning and vitality to the claim. Thus, we are not persuaded that the term
`“real time” limits the scope of the claims.
`Plate-ready file
`Petitioner proposes that the term “plate-ready file” be construed to
`mean “a digital file that is ready to output to a device for producing a
`printing plate.” Pet. 25. Patent Owner argues that Petitioner’s construction
`includes unnecessary elements and proposes that the term be construed to
`mean “a file that is ready to be made into a printing plate.” Prelim. Resp. 6.
`Neither party proposed a construction of plate ready file in PIA. In our Final
`Written Decision in Kodak I, we construed plate-ready file to mean “a file
`that represents a page layout that has gone through prepress processing,
`including RIPing, and is ready to image to a plate using either a platesetter
`or imagesetter. Kodak I, Paper 47, 8–9.
`Patent Owner’s proposed construction is imprecise because, although
`a file may be used to create a plate, the file is not made into a plate, and
`therefore cannot be ready to be made into a printing plate. The specification
`states “The plate-ready file has a file format capable of high resolution and is
`ready for creation of a printing plate.” Ex. 1001, Abstract. We require no
`further construction of “plate-ready file” than that provided in the Abstract
`of the ’349 patent and applied in Kodak I.
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`Thin PostScript file
`Consistent with the construction we applied in Kodak II, the parties
`agree that the term “thin PostScript file” should be construed to mean “a
`PostScript file containing low resolution images.” Pet. 26; Prelim. Resp. 9.
`Fat PostScript file
`Consistent with the construction we applied in Kodak II, the parties
`agree that the term “fat PostScript file” should be construed to mean “a
`PostScript file containing high resolution images.” Pet. 26; Prelim. Resp. 9.
`
`ANALYSIS OF PETITIONER’S PRIOR ART CHALLENGES
`Introduction
`All of Petitioner’s challenges assert obviousness under 35 U.S.C.
`§ 103(a). A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter 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 to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`The level of ordinary skill in the art is reflected by the prior art of record.
`See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001);
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`In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich,
`579 F.2d 86, 91 (CCPA 1978).
`Claims 4–5 and 7–9 As Obvious Over FullPress and WebNative
`Petitioner cites FullPress for disclosing an Open Press Interface (OPI)
`server integrated with network applications providing a system workflow
`that automatically produces low resolution views for most document set up
`activities with original high resolution images being substituted when the
`final output is desired. Pet. 30 (citing Ex. 1020, 11). Petitioner notes the
`references in the ’349 patent to an exemplary embodiment preferably using
`FullPress software or any OPI software. Id. at 29 (citing Ex. 1001, col. 5, ll.
`62–64, col. 6, ll. 38–40). Petitioner cites FullPress as allowing printing and
`prepress specialists to share their files over a network. Id. at 34–35 (citing
`Ex. 1020, 3–4).
`Petitioner further notes that Xinet combined FullPress and
`WebNative, which Xinet developed as a companion plug-in to FullPress. Id.
`at 31, 36. Petitioner cites WebNative as disclosing a system in which
`commercial printers and prepress shops have the ability to distribute low-
`resolution “For Placement Only” (“FPO”) images, high resolution digital art,
`and other files to their clients over the World Wide Web via a standard web
`browser. Id. (citing Ex. 1021, 1). According to Petitioner, using the
`WebNative workflow, one could preview and download low-resolution
`FPOs and web-ready images, such that OPI is carried out using thin and fat
`Post Script files. Id. at 31–32. Thus, according to Petitioner, FullPress and
`WebNative discloses the workflow of step recited in claim 4 of remotely
`providing access to imaging files for searching and retrieving images in the
`design of a page layout by a remote user. Id. at 35–36.
`
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`Petitioner cites our Decision on Institution in Kodak I for the
`proposition that the limitations in claim 4(b) [“establishing links to said
`imaging files, thereby creating a thin Postscript file from the page layout
`designed by the remote user”] and claim 4(c) [“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”] simply tell one of
`ordinary skill to carry out OPI image swapping processing using the
`PostScript file type. Pet. 37 (citing Ex. 1005, 18). Petitioner contends that
`FullPress discloses generating smaller, more efficient PostScript files that
`are sent to the RIP and imaging device, and the claimed step of establishing
`links to the imaging files, creating a thin PostScript file from the page layout
`designed by the remote user. Id. at 37–39. Citing the Aldus OPI and the
`disclosure that FullPress replaces FPO views with high resolution source
`files, merging high-res images into the PostScript stream (id. at 37–38
`(citing Ex. 1020, 5)), Petitioner notes that it was well known to those or
`ordinary skill that a thin PostScript file contained embedded OPI comments
`(or links) to the corresponding high resolution image. Id. at 38 (citing
`Declaration of Michael Jahn (“Jahn Decl.”), Ex. 1026 ¶¶ 26, 73). Petitioner
`argues that by disclosing a PostScript stream with FPO images replaced with
`high-resolution source files, it would have been known to one of ordinary
`skill to parse the thin PostScript file and thereby form a fat PostScript file, as
`claimed. Id. at 40 (citing Jahn Decl. ¶ 75).
`The next step recited in claim 4 is creating a portable document
`format (PDF) file from the fat PostScript file. Petitioner notes that both
`FullPress and WebNative disclose sending the customer a PDF proof of the
`page layout for project approval and that both FullPress and WebNative use
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`PDF for proofing. Pet. 41–43 (citing Jahn Decl. ¶ 82–84; Ex. 1020, 14
`(“FullPress also provides an option whereby the server may send the final
`PostScript to an Acrobat distiller to produce a PDF file. Current versions of
`Acrobat contain optimizations for on-line Internet delivery so that remote
`proofing can take place even more quickly.”); Ex. 1021, 2 (“WebNative also
`provides a mechanism for in-line proofing of PDF files.”)).
`Although FullPress discloses converting the thin PostScript file to
`PDF for proofing purposes, it does not disclose explicitly the claimed
`conversion of a fat PostScript file because in FullPress the high resolution
`images that make up a fat PostScript file, as that term has been construed,
`are inserted at print time. Ex. 1020, 12. Instead, Petitioner argues that one
`of ordinary skill would have recognized a number of reasons to convert a fat
`PostScript file of FullPress into a PDF. Pet. 42–43 (citing Jahn Decl. ¶¶ 82–
`84).
`
`Petitioner next argues that the final step in the FullPress workflow is
`to RIP the file and transmit the approved file to an image setter or other
`output device. Id. at 43; Jahn Decl. ¶ 86). According to Mr. Jahn, because
`plate setters were replacing image setters at the time the application for the
`’349 patent was filed, it would have been known to one of ordinary skill to
`create a plate-ready file. Jahn Decl. ¶ 89. Mr. Jahn further testifies that the
`plate-ready file defines a page layout that has gone through the prepress
`process and has been RIPed such that it contains the exact dots to be
`transferred onto a printing plate or in a format that can be used with an
`image setter. Id.¶ 87. According to Mr. Jahn, whether creating a file for an
`image setter or a plate setter, in either scenario, after “the PDF goes through
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`one or more RIPs, the file is ready to be output to a device for producing a
`printing plate.” Id.
`Mr. Jahn does not state that FullPress or WebNative discloses
`producing the plate-ready file from a PDF. As discussed above, in
`FullPress, the high resolution images that make up the fat PostScript file, as
`that term has been construed, are inserted at print time, which is after the
`PDF for proofing is generated. Instead, Petitioner and Mr. Jahn contend that
`one of ordinary skill would have known that it may be necessary to create a
`fat PostScript file prior to the conversion to PDF, if the workflow
`incorporated a version of Adobe Acrobat Distiller prior to the introduction of
`Adobe Acrobat Distiller PDF 1.2, because OPI comments (or links) were not
`preserved in earlier Distiller versions. Pet. 41. Thus, according to
`Petitioner, a person of ordinary skill would have known that the OPI
`comments would be lost in the conversion to PDF for proofing, unless the
`conversion to a fat PostScript file was done before the conversion to PDF.
`Id.
`
`Patent Owner argues that FullPress discloses sending a PostScript file
`to the remote printer, where it is then processed, but does not disclose
`converting a fat PostScript file into a PDF file and then converting the PDF
`file into a plate-ready format, as recited in claim 4. Prelim. Resp. 14. Patent
`Owner further argues that WebNative, as a companion to FullPress, enables
`commercial printers and prepress shops to distribute the low-resolution FPO
`images to clients of the Internet using a web browser, but does not
`separately, or in combination with FullPress, disclose creating a PDF file
`from a created fat PostScript file and converting that PDF to a file in plate-
`ready format. Id. at 14–15.
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`Petitioner has demonstrated that a person of ordinary skill would have
`known PDFs have useful properties and that the combination of Full Press
`and WebNative together discloses sending a PDF to a customer for proofing.
`However, we are not persuaded that Petitioner has shown using a PDF in the
`workflow as the file from which a plate would be generated. Petitioner has
`not shown that FullPress or WebNative discloses using a PDF for this
`purpose. FullPress discloses: “an option whereby the server may send the
`final PostScript to an Acrobat Distiller to produce a PDF file. Current
`versions of Acrobat contain optimizations for on-line Internet delivery so
`that remote proofing can take place even more quickly.” Ex. 1020, 14.
`Nothing about this option suggests that sending the final PostScript to a
`Distiller for use in proofing in any way changes the workflow for creating
`the print-ready file. Instead Petitioner speculates that an incompatibility of
`early versions of Acrobat Distiller, if used for this undisclosed purpose, i.e.,
`in the workflow for creating a print-ready file, would motivate a person of
`ordinary skill to take an action, i.e., converting a fat PostScript file to a PDF.
`Petitioner’s articulated reasoning for its assertion that a person of
`ordinary skill would have known to create a fat PostScript file prior to
`creating a PDF is that in early versions of Acrobat Distiller the comments
`that would have allowed insertion of high resolution images at print time
`would have been lost. Pet. 41. Petitioner has not identified any reference to
`this issue in FullPress or WebNative. Petitioner does not provide evidence
`that such an issue would have existed at the time FullPress and WebNative
`were published. Petitioner solves a problem that had not been identified
`because the PDF in FullPress was used to proof a document, not to create a
`plate ready file. Petitioner’s analysis applies hindsight because it assumes
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`that a person of ordinary skill would be motivated to use a PDF to create
`such a plate ready file. However, the difficulties Petitioner explains such an
`approach would entail, if an early version of Distiller were present in the
`workflow, suggest a lack of motivation to use a PDF to create a plate ready
`file.
`
`Thus, we are not persuaded that Petitioner has shown a reasonable
`likelihood it would prevail in its challenge to independent claim 4 as obvious
`under 35 U.S.C. § 103 over the combination of FullPress and WebNative
`and we decline to institute a trial on this ground. For the same reason, we
`decline to institute a trial of claims 5 and 7–9, which depend from claim 4
`and are also challenged on this ground.
`Claim 6 As Obvious Over FullPress, WebNative, and Andersson
`Claim 6 depends from claim 4 and recites the further limitation of
`“converting said file in plate-ready format into a virtual proofing software
`file.” Petitioner notes that a soft proof is an on-screen proof, rather than a
`hard copy proof and cites Andersson as disclosing that if distilled correctly,
`the PDF can be used for soft proofing. Pet. 48. As discussed above,
`however, with respect to claim 4, from which claim 6 depends, we are not
`persuaded that Petitioner has demonstrated that FullPress and WebNative
`disclose that a PDF is used to create a plate ready file. Petitioner has not
`cited any disclosure in Andersson that overcomes this deficiency. Thus, we
`decline to institute a trial of claim 6 on the ground that claim 6 is obvious
`over the combination of FullPress, WebNative, and Andersson.
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`Claim 4–7 As obvious Over I-Media and Andersson
`Noting that FullPress and WebNative concern traditional printing
`workflow for producing printed material, Petitioner cites I-Media as
`disclosing a workflow for cross media publishing across a variety of output
`mediums, print and electronic. Pet. 49. Petitioner notes that I-Media
`describes a system for generating both paper and electronic documents. Id.
`at 50 (citing Ex. 1019 §§ 1.1, 1.2). Petitioner further argues that I-Media
`discloses paper documents may be output to an image or plate setter after
`going through an OPI swapping process. Id. at 50–51 (citing Ex. 1019
`§ 2.2).
`The cited portion of I-Media describes a Cross Media Publishing
`(CMP) system (client A) that uses an i-Media server for managing media
`data. Figure 3 of I-Media is shown below.
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`The i-Media server consists of an object-oriented database
`management system (OODBMS), a user management module, a set of
`internal filters, and external filters, including stand-alone running RIP
`applications that can be called by the i-Media server. Ex. 1019, 6. The third
`party applications allow the creation and modification of media data. Id.
`Export modules, include third-party stand-alone systems such as Quark
`XPress for print publishing or Macromedia Director for multi-media
`presentations. Id. I-Media also discloses that another client (Client B) could
`run, e.g., on workstation (OPI-Server), that “translates OPI PostScript
`(PostScript encoded documents, where OPI comments were placed instead
`of high resolution images) to PostScript, which could be sent to an image or
`plate setter or even to a digital printing press.” Id.
`Petitioner argues that in hosting user media data and utilizing OPI
`image swapping functionality on a remote server, I-Media provides remote
`access to “imaging files for searching and retrieving images used in the
`design of a page layout by a remote user,” as claimed. Pet. 52–53.
`Petitioner further argues that, through the use of an OPI server and
`embedded OPI comments in the Post Script documents produced by the
`CMP client system, I-Media teaches “establishing links to said imaging files,
`thereby creating a thin Post script file from the page layout design by the
`remote user,” as claimed. Id. at 54. Petitioner further contends that I-Media
`teaches the image swapping process with a PostScript file and, therefore,
`forms a fat PostScript file, as recited in the claims. Id.
`Petitioner also argues that I-Media discloses the claimed feature of
`“creating a portable document format (PDF) file from said PostScript file.”
`Id. at 54–55. Figure 3 shows an output from an export module in the form
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`of a PostScript file being routed to a Distiller module which outputs a PDF.
`I-Media discloses that PDF is used for “distilling” PostScript and that PDF is
`becoming used as a page description device for displaying on screen as well
`as for printing on b/w or color printing device. Ex. 1019, 3.
`Patent Owner argues I-Media does not disclose this step of claim 4
`because in I-Media the remote user (Client A) converts the user-created
`document to a variety of formats, including PDF, using Expert Modules.
`Prelim. Resp. 16–17. Patent Owner contrasts I-Media’s disclosure of the
`user generating the PDF at the client computer with the limitation in claim 4,
`which requires that the steps be carried out at a facility separate from the
`remote user. Id. It is not clear from I-Media whether or not Client A is
`located at the user’s facility or a facility remote from the user.
`As to the limitation in claim 4 that recites “converting said PDF file to
`a file in plate-ready format,” Petitioner contends that I-Media specifically
`describes sending a design CMP document “to an image or plate-setter or
`even to a digital printing press.” Pet. 56 (citing Ex. 1019 § 2.2).
`Patent Owner contends that like FullPress, I-Media does not disclose
`creating a PDF from a created PostScript file and converting that PDF to a
`file in plate-ready format. Prelim. Resp. 16. Patent Owner cites Figure 3 of
`I-Media, which shows one process in which an OPI PostScript file is
`processed by an OPI server (Client B) to produce a PostScript file that is
`sent to a plate setter or a digital printing press. Id. at 16–17. In a separate
`process, a PostScript file is run through Distiller to produce a PDF, but there
`is no conversion of the PDF to a plate ready file. Id. Consistent with
`Petitioner’s argument that PDF files were known to be used for proofing and
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`other purposes (Pet. 55), Patent Owner argues that the PDF in I-Media also
`appears to be used for proofing. Prelim. Resp. 17.
`Regardless of how the PDF file is used in the I-Media, we are
`persuaded by Patent Owner’s argument that I-Media does not disclose using
`the PDF to create a plate-ready file. Instead, as shown in its Figure 3, I-
`Media discloses that the PostScript file is routed to the plate-setter or digital
`printer. Petitioner identifies no disclosure in I-Media of creating a plate-
`ready file from a PDF or routing the PDF to the plate-setter. Thus,
`Petitioner has not demonstrated it is reasonably likely to succeed in
`challenging independent claim 4, or claims 5–7 which depend from claim 4.
`Claims 8 and 9 As Obvious Over I-Media, Andersson, and Seybold.
`Claims 8 and 9 depend from claim 4. As discussed above, we are not
`persuaded that Petitioner has shown that the combination of I-Media and
`Andersson discloses or suggests creating a plate-ready file from a PDF.
`Petitioner cites Seybold as disclosing a client server product that facilitates
`remote access to images during page design. Pet. 59–60. However, Seybold
`does not disclose the claimed features lacking in the combination of I-Media
`and Andersson. Therefore, we are not persuaded that Petitioner has
`demonstrated it is reasonably likely to succeed in this challenge to claims 8
`and 9.
`
`SUMMARY
`For the reasons discussed above, we are not persuaded that Petitioner
`has demonstrated it is reasonably likely to succeed in any of the challenges
`to the claims presented in the Petition.
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`ORDER
`In consideration of the above, we decline to institute inter partes
`review of claims 4–9 of the ’349 patent based on the challenges in the
`Petition.
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