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
`
`____________
`
`
`
`PETITIONERS’ REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(c)
`
`
`
`
`
`
`
`_______________________
`
`
`
`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
`
`____________
`
`
`
`PETITIONERS’ REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(c)
`
`
`
`
`
`
`
`
`Case IPR2016-00008
`Petitioners’ Request for Rehearing
`SUMMARY OF ISSUES FOR REHEARING
`
`I.
`
`Petitioners Command Web Offset Company, Inc., Worzalla Publishing
`
`Company, Sandy Alexander, Inc., Publication Printers Corp., Specialty
`
`Promotions, Inc., and Trend Offset Printing Services Inc. (“Petitioners”) request
`
`rehearing under 37 C.F.R. § 42.71(c) of the Board’s March 28, 2016 Decision
`
`denying institution of inter partes review (“Decision,” Paper No. 13) against
`
`claims 4-9 of U.S. Patent No. 6,611,349 (“the ’349 patent”).
`
`Independent claim 4 of the ’349 patent requires, inter alia, “creating a thin
`
`PostScript file,” “forming a fat PostScript file,” “creating a ... PDF ... from said fat
`
`PostScript file,” and “converting said PDF file to a file in plate-ready format.” Not
`
`only were each of these steps known prior to the filing of the ’349 patent, but they
`
`were obvious in combination. The sole reason the Board denied institution was
`
`due to the apparent misapprehension that “Petitioner has [not] shown using a PDF
`
`in the [FullPress/WebNative] workflow as the file from which a plate would be
`
`generated.” (Decision at 15; see also id. at 16.) More specifically, the Board
`
`found that Petitioners and its expert, Michael Jahn (“Mr. Jahn”), did not “state that
`
`FullPress or WebNative discloses producing the plate-ready file from a PDF.... [I]n
`
`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.” (Decision at 14 (emphasis added).)
`
`1
`
`
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`Case IPR2016-00008
`Petitioners’ Request for Rehearing
`In arriving at its conclusion that the high-resolution images are only inserted
`
`after proofing, it is respectfully submitted that the Board overlooked the fact that
`
`the remote proofing option of FullPress/WebNative utilizes a final PostScript file
`
`(i.e., fat PostScript file) to generate the remotely transmitted PDF. Although
`
`FullPress generally states that “the latest high-resolution images [are inserted] at
`
`print time,” as noted by the Board (Decision at 13), the Board’s Decision overlooks
`
`Petitioners reliance on the remote proofing option in FullPress and WebNative.
`
`The remote proofing option modifies the general procedure because “the server
`
`may send the final PostScript to an Acrobat distiller to produce a PDF file.”
`
`(Petition at 42 (citing Ex. 1020 at 14 (emphasis added)).)
`
`This workflow procedure for remote proofing is confirmed by WebNative, a
`
`companion plug-in to FullPress. (See Petition at 31.) WebNative illustrates a
`
`remote proofing workflow wherein the high-resolution images that make up the fat
`
`PostScript file are inserted into the to-be-printed file before the PDF for proofing is
`
`generated—not after—as mistakenly concluded by the Board. (See Petition at 31
`
`(citing Ex. 1021 at 1) (emphasis added).) Specifically, the FullPress/WebNative
`
`Workflow depicts at step 6, “reliably relinking FPOs [i.e., low-resolution to high-
`
`resolution image swapping],” and then sending a proof to the client (step 7) that is
`
`ultimately approved for final output (steps 8 and 9). (Id. (emphasis added).) Thus,
`
`the proofing file that is generated post image swapping, sent to the client for
`
`2
`
`
`
`Case IPR2016-00008
`Petitioners’ Request for Rehearing
`approval, and then ultimately converted to a plate-ready format, is a PDF file. (See
`
`Petition at 42.) As such, the Board’s statement that “the high resolution images
`
`that make up a fat PostScript file, ...., are inserted at print time” (Decision at 13) is
`
`a misapprehension of the teachings of FullPress relied upon in the petition.
`
` Second, the Board’s dismissal of Petitioners’ evidence regarding problems
`
`with early versions of Acrobat Distiller and the need to create a fat PostScript file
`
`to preserve OPI comments—simply because this problem was not explicitly noted
`
`in FullPress or WebNative (Decision at 15-16)—suffers from the exact rigid
`
`application of the teaching-suggestion-motivation (“TSM”) test rejected by the
`
`Supreme Court in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). It is
`
`respectfully submitted that, far from speculating, Petitioners provided testimonial
`
`evidence of one of skill in the art (evidence itself) and four separate documents that
`
`demonstrate Petitioners’ rationale. (See Petition at 40 (citing Ex. 1007 at 6);
`
`Petition at 41 (citing Ex. 1015 at 4; Ex. 1016 at 2; Ex. 1017 at 3).) Petitioners’
`
`citation to these prior art documents, which evidence a specific motivation to
`
`generate a fat PostScript file prior to converting to PDF, is the antithesis of
`
`hindsight. This evidence was not addressed anywhere in the Board’s Decision.
`
`Accordingly, Petitioners respectfully request that the Board institute IPR against
`
`claims 4-9 of the ’349 patent.
`
`3
`
`
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`Case IPR2016-00008
`Petitioners’ Request for Rehearing
`
`II. LEGAL STANDARDS
`
`“A party dissatisfied with a decision may file a request for rehearing,
`
`without prior authorization from the Board.” 37 C.F.R. § 42.71(d). “The request
`
`must specifically identify all matters the party believes the Board misapprehended
`
`or overlooked, and the place where each matter was previously addressed in a
`
`motion, an opposition, or a reply.” Id. Under 37 C.F.R. § 42.71(c), “[w]hen
`
`rehearing a decision on petition, a panel will review the decision for an abuse of
`
`discretion.” An abuse of discretion “occurs where the decision is based on an
`
`erroneous interpretation of the law, on factual findings that are not supported by
`
`substantial evidence, or represents an unreasonable judgment in weighing relevant
`
`factors.” Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir.
`
`2005).
`
`Here, the Board’s factual finding that Petitioners have not shown that a
`
`person of ordinary skill in the art (“POSA”) would have used a PDF as the file
`
`from which a plate-ready file would be generated in FullPress/WebNative is
`
`unsupported in the record and directly refuted by the relied upon remote proofing
`
`workflow. Similarly, the Board incorrectly interpreted the law as requiring the
`
`obviousness rationale set forth by Petitioners to be found or suggested within the
`
`four corners of FullPress or WebNative.
`
`4
`
`
`
`Case IPR2016-00008
`Petitioners’ Request for Rehearing
`
`III. ARGUMENT
`
`A. The Board Overlooked Explicit Evidence That A PDF Would
`Be Used In The FullPress/WebNative Workflow To Generate
`A Plate-Ready File
`
`The sole reason the Board denied institution against claims 4-9 of the ’349
`
`
`
`patent is because Petitioners allegedly have not “shown using a PDF in the
`
`[FullPress/WebNative] workflow as the file from which a plate would be
`
`generated.” (Decision at 15.) This conclusion stems from the Board’s
`
`misapprehension that “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.” (Decision at 14 (emphasis added).) Stated
`
`differently, because there is no conversion from a thin Postscript file, to a fat
`
`Postscript file, to a PDF file for remote proofing under the Board’s interpretation
`
`of FullPress, the Decision concludes that there would not be a motivation to do the
`
`same for creating a plate-ready file. The Board’s Decision, however, incorrectly
`
`assumes that there is a PostScript workflow for printing that is separate from a
`
`PDF workflow for remote proofing, and also overlooks the fact that the relied upon
`
`remote proofing option taught by FullPress and WebNative does, in fact, utilize a
`
`final PostScript file (i.e., a fat PostScript file) to generate the claimed PDF file.
`
`The Board’s interpretation of the FullPress and WebNative remote proofing
`
`workflow is incorrect and finds no support in the record.
`
`5
`
`
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`Case IPR2016-00008
`Petitioners’ Request for Rehearing
`To teach the limitation of claim 4 reciting “creating a portable document
`
`format (PDF) file from said fat Postscript file,” Petitioners explicitly relied on the
`
`remote proofing workflow taught by FullPress and WebNative. (See Petition at 42
`
`(citing Ex. 1020 at 14; Ex. 1021 at 2).) Although the Board is correct that earlier
`
`in the FullPress reference it is noted that “[a]t print time, FullPress replaces the
`
`low-resolution files with the high-resolution originals” (Ex. 1020 at 12; Decision at
`
`13), the Board’s decision overlooks Petitioners reliance on the remote proofing
`
`workflow of FullPress (Petition at 42), which modifies this general procedure. In
`
`Particular, FullPress describes a remote proofing option utilizing PDF, wherein
`
`“the server may send the final PostScript to an Acrobat distiller to produce a PDF
`
`file.” (Petition at 42 (citing Ex. 1020 at 14 (emphasis added)).) It is this remote
`
`proofing option that Petitioners relied on (Petition at 42) and which makes clear
`
`that the generated PDF file is converted from a “final” or “fat” PostScript file in
`
`the FullPress remote proofing workflow.
`
`To the extent any doubt exists as to the meaning of “final PostScript1” file as
`
`used in the cited portion of FullPress (at 14), the same page, necessarily read for
`
`
`1 As explained in the Petition, the “fat” or “final” file is always the version of the
`
`to-be-printed page with high-resolution images swapped for low-resolution images,
`
`which is how OPI image swapping works. (See Petition at 11-12.)
`
`6
`
`
`
`Case IPR2016-00008
`Petitioners’ Request for Rehearing
`context, explains with regard to the only other remote proofing option (JPEG) that:
`
`“FullPress provides a print-queue option which allows the server to replace FPO
`
`images with JPEG-encoded images.... With JPEG-encoded images, the final
`
`PostScript output will be much smaller....” (Ex. 1020 at 14 (emphasis added).)
`
`Thus, the proofing workflow relied upon in the Petition makes clear that the “final
`
`PostScript” file described on this page of the reference is a file in which the thin
`
`PostScript FPO images have been replaced with a PostScript file containing high-
`
`resolution images (i.e., fat PostScript file) that is then converted to PDF.
`
`Furthermore, the thin PostScript, to fat PostScript, to PDF workflow relied
`
`upon in the Petition is called out in enumerated steps in WebNative (a companion
`
`plug-in to FullPress). (See Petition at 31, 42.) In particular, at step 6, high-
`
`resolution images are “reliably relink[ed] [to] FPOs,” and then the proof (i.e., PDF)
`
`is sent to a remote client (step 7), which is ultimately approved for final output and
`
`a plate-ready file is generated (steps 8 and 9). (See Petition at 31 (citing Ex. 1021
`
`at 1); see also Petition at 41-45.) Mr. Jahn explained that after approval and “after
`
`the PDF goes through one or more RIPs, the file is ready to be output to a device
`
`for producing a printing plate. At this point, the file is in a plate-ready format.”
`
`(See Petition at 44 (citing Ex. 1026 at ¶ 87) (emphasis added).)
`
`7
`
`
`
`Case IPR2016-00008
`Petitioners’ Request for Rehearing
`
`Final File with high-resolution
`images created before the PDF
`is sent to client for
`proofing/approval. The
`approved PDF file is then sent to
`a final output device for printing.
`
`Just as recited in claim 4 of the ’349 patent, the combination of FullPress
`
`
`
`and WebNative teaches a single, sequentially numbered workflow stream for
`
`generating a plate-ready file by providing remote access to files, creating a thin
`
`PostScript file, forming a fat PostScript file, creating a PDF from the fat PostScript
`
`file, and then converting the PDF into a file in plate-ready format. (See Petition at
`
`29-32.) The remote printing workflow depicted in WebNative and relied upon in
`
`the Petition removes any possible doubt that high-resolution images are inserted
`
`into the to-be-printed page before a PDF proof is sent to the remote client. (See
`
`Petition at 31 (citing Ex. 1021 at 1.) The foregoing evidence was overlooked or
`
`misapprehended by the Board in reaching its Decision.
`
`Moreover, and aside from the fact that FullPress and WebNative already
`
`show the intermediate step of converting to a fat PostScript file before converting
`
`to PDF, Petitioners additionally provided the Board with an explicit rationale for
`8
`
`
`
`Case IPR2016-00008
`Petitioners’ Request for Rehearing
`why POSA would nevertheless perform a two-format conversion scheme: because
`
`OPI comments were not preserved when converting to PDF prior to the Acrobat
`
`Distiller 1.2 specification, a fat PostScript file had to be created prior to distilling
`
`otherwise OPI comments linking low-resolution to high-resolution images would
`
`be lost. (Petition at 41 (citing Ex. 1026 at ¶¶ 76-80; Ex. 1015 at 4; Ex. 1016 at 2;
`
`Ex. 1017 at 3).) This is not mere “speculation,” but a specific, concrete, and well-
`
`documented rationale for why POSA would have generated a fat PostScript file
`
`before converting to PDF and then ultimately converting the PDF to a plate-ready
`
`file. And, as explained in greater detail below, once the to-be-printed file was
`
`converted to PDF, the plate-ready file would be generated from this PDF file to
`
`obtain the many benefits of the PDF file type. (See Petition at 42-43.)
`
`Not only did Petitioners and Mr. Jahn explain this motivation in detail, citing
`
`to Exhibits 1015-1017 (published during the same time period as FullPress and
`
`WebNative), but Petitioners also cited an Adobe publication describing the “Zero
`
`Hora” workflow, wherein OPI image exchange was completed with PostScript
`
`files before converting to PDF, and then a plate-ready file was generated from the
`
`PDF. (See Petition at 40 (citing Ex. 1007 at 6).) In particular, Exhibit 1007
`
`depicts a PostScript (“PS”) file going into an “OPI/PCI Replacement” process,
`
`PostScript is output from the OPI process (i.e., a fat PostScript file), the fat
`
`9
`
`
`
`Case IPR2016-00008
`Petitioners’ Request for Rehearing
`PostScript file is input into Distiller to generate a PDF, and then a plate-ready file
`
`is generated (via APS RIPs) from the PDF.
`
`
`
`
`
`(See Petition at 40 (citing Ex. 1007 at 6).)
`
`As explained in the Petition, the workflow was designed in this manner so
`
`that PDF could be integrated into the newspapers “existing PostScript technology-
`
`based workflow”—i.e., to avoid any compatibility issues between PostScript and
`
`PDF conversion. (Id.) Petitioners also pointed the Board to Mr. Jahn’s testimony
`
`that “in the late 1990s, much of the software infrastructure used by those of
`
`ordinary skill was not capable of operating in PDF (particularly OPI functions)
`
`and, therefore, the use of thin and fat PostScript files before converting to PDF was
`
`an expected design consideration.” (See Petition at 20-21 (citing Ex. 1026 at ¶
`
`10
`
`
`
`Case IPR2016-00008
`Petitioners’ Request for Rehearing
`30).)2 That is, as the industry moved on from PostScript to PDF, there was
`
`significant reason to straddle both formatting worlds. The Board’s assertion that
`
`“Petitioner does not provide evidence that such an issue would have existed at the
`
`time FullPress and WebNative were published” (Decision at 15), is directly
`
`contradicted by the evidence of record. The Board may not simply discount the
`
`evidence, particularly at this stage of the proceeding, without any factual evidence
`
`to the contrary.
`
`Lastly, without considering the documentary and testimonial evidence that
`
`supports the specific rationales provided by Petitioners for why POSA would have
`
`utilized a PDF file in FullPress/WebNative for conversion to a plate ready file,
`
`beyond the remote proofing workflow discussed above, the Board’s Decision
`
`concludes that there was “a lack of motivation to use a PDF file to create a plate
`
`
`2 Petitioners also cited to the ’349 patent itself to support this proposition, which
`
`admits that PDF had not yet gained wide use in hardware and software
`
`infrastructure at the time the ’349 patent was filed and, thus, conversion from
`
`PostScript to PDF was required. (See Petition at 21 (citing Ex. 1001 at 13:36-40
`
`(“PDF is considered a PostScript 3 format. Conventional hardware and software
`
`infrastructure is unavailable to accept PDF, but rather accepts PostScript level 2.
`
`Thus, PDF must be converted from PostScript 3 to PostScript level 2.”)).)
`
`11
`
`
`
`Case IPR2016-00008
`Petitioners’ Request for Rehearing
`ready file.” (Decision at 16.) This assertion is incorrect and unsupported by the
`
`record. Petitioners explained, at a minimum, that POSA would have performed
`
`this step to facilitate remote Internet communication of proofs and subsequent
`
`printing, which is taught by both FullPress and WebNative, as explained above.
`
`(See Petition at 42 (citing Ex. 1020 at 14; Ex. 1021 at 2).)
`
`Moreover, even independent of the explicit teachings of FullPress and
`
`WebNative, Petitioners explained that POSA would have been motivated to
`
`convert the fat PostScript file of FullPress/WebNative into a PDF for at least eight
`
`additional, well-documented reasons—each facilitating remote communication or
`
`providing other benefits realized during the plate-ready file generation process.
`
`(Petition at 42-43 (citing Ex. 1026 at ¶¶ 82-84).) This is some of the exact same
`
`reasoning that PDF is employed by FullPress/WebNative for remote proofing.
`
`(See Petition at 42 (citing Ex. 1020 at 14 (“Current versions of Acrobat contain
`
`optimizations for on-line Internet delivery so that remote proofing can take place
`
`even more quickly.”)).)
`
` The Board’s Decision simply overlooks this testimonial evidence—which is
`
`itself supported by prior art relied upon in the Petition (Ex. 1015, Ex. 1016, Ex.
`
`1017, Ex. 1022)—that explains why the PDF file in the remote proofing workflow
`
`of FullPress/WebNative would naturally proceed to generate the claimed plate-
`
`ready file, as is specifically enumerated in WebNative, and not revert to the
`
`12
`
`
`
`Case IPR2016-00008
`Petitioners’ Request for Rehearing
`originally created PostScript file. Absent some explanation as to why this sworn,
`
`unrebutted factual testimony should not be given weight, especially when
`
`buttressed by substantial supporting, documentary evidence, the Board may not
`
`ignore the evidence, particularly at this preliminary stage of the proceeding.
`
`Petitioners similarly relied on this same evidence to support its rationale as
`
`to why POSA would have incorporated a PDF file conversion into the single
`
`stream OPI workflow of I-Media, which was similarly overlooked by the Board.
`
`(See Petition at 55-56.) Petitioners argued that in order to facilitate remote
`
`proofing of final pages for approval—which requires transmission of the final
`
`version of the page with high-resolution images—POSA would have converted the
`
`fat PostScript file described by I-Media’s OPI workflow into a PDF before
`
`converting the PDF into a plate-ready file form. (See id.) The Board’s Decision
`
`(at 20) misapprehends Petitioners argument and Figure 3 of I-Media, conflating a
`
`separate publishing stream that utilizes PDF, with the single stream OPI workflow
`
`upon which Petitioners rely and to which the proposed combination set forth in the
`
`Petition is based upon. Accordingly, Petitioners respectfully request that the Board
`
`institute IPR against claims 4-9 of the ’349 patent.
`
`B. The Board’s Decision Applies An Overly Restrictive And
`Incorrect Obviousness Test Under 35 U.S.C. § 103
`
`Petitioners respectfully submit that the Board also misapprehended the law
`
`in denying institution of claims 4-9 in view of FullPress and WebNative. As
`
`13
`
`
`
`Case IPR2016-00008
`Petitioners’ Request for Rehearing
`described above, Petitioners demonstrated that FullPress and WebNative generate
`
`a final, fat PostScript file prior to PDF conversion. The Board overlooked this
`
`argument under the apparent rationale that because “Petitioner [did not] identify[]
`
`any reference to this issue [i.e., OPI comment preservation] in FullPress or
`
`WebNative,” it need not be considered. (Decision at 15.) This reasoning is
`
`incorrect as a matter of law.
`
`By requiring Petitioners to show that there was a teaching or suggestion in
`
`FullPress or WebNative of this known OPI problem before the Board would credit
`
`Petitioners’ evidence, the Board dismissed critical background information, known
`
`to POSA, that easily explains why the sequence of workflow steps recited in
`
`claims 4-9 of the ’349 patent are obvious. See, e.g., Randall Mfg. v. Rea, 733 F.3d
`
`1355, 1362-63 (Fed. Cir. 2013) (“By narrowly focusing on the four prior-art
`
`references cited by the Examiner and ignoring the additional record evidence
`
`Randall cited to demonstrate the knowledge and perspective of one of ordinary
`
`skill in the art, the Board failed to account for critical background information that
`
`could easily explain why an ordinarily skilled artisan would have been motivated
`
`to combine or modify the cited references to arrive at the claimed inventions”).
`
`Similarly, as recognized in KSR, “[i]n many fields it may be that there is little
`
`discussion of obvious techniques or combinations,” which is the case here. KSR,
`
`550 U.S. at 419. As set forth in the Petition and explained by Mr. Jahn, the reasons
`
`14
`
`
`
`Case IPR2016-00008
`Petitioners’ Request for Rehearing
`for generating a fat PostScript file prior to PDF conversion (even apart from the
`
`disclosure in FullPress and WebNative of doing so) were well-known. It is not
`
`surprising that FullPress and WebNative do not discuss the OPI comment issue.
`
`(See Petition at 20-22 (citing Ex. 1026 at ¶¶ 30, 76-80).) The Board’s error in
`
`summarily dismissing Petitioners’ evidence of motivation because it was not
`
`discussed in FullPress and WebNative also warrants Petitioners’ requested relief.
`
`IV. CONCLUSION
`
`For the reasons set forth above, Petitioners respectfully request that the
`
`Board grant rehearing and institute IPR against claims 4-9 of the ’349 patent in
`
`view of the FullPress/WebNative and I-Media grounds.
`
`
`
`Respectfully submitted,
`
`
`Oblon, McClelland, Maier &
`Neustadt, LLP
`
`
`
`
`
`
`
`
`
`/Scott A. McKeown/
`Scott A. McKeown (Reg. No. 42,866)
`Attorney for Petitioners
`
`
`Dated: April 27, 2016
`
`
`
`
`
`
`
`
`15
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies service of
`PETITIONERS’ REQUEST FOR REHEARING UNDER 37 C.F.R. § 42.71(c) on
`the counsel of record for the Patent Owner by filing this document through the
`Patent Review Processing System as well as delivering a copy via electronic mail
`to the following address:
`
`
`
`W. Edward Ramage
`L. Clint Crosby
`BAKER, DONELSON, BEARMAN, CALDWELL
`& BERKOWITZ, P.C.
`eramage@bakerdonelson.com
`ccrosby@bakerdonelson.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Scott A. McKeown/
`Scott A. McKeown (Reg. No. 42,866)
`Attorney for Petitioners
`
`
`Dated: April 27, 2016
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