Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 16
`Entered: December 31, 2013
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`PRINTING INDUSTRIES OF AMERICA
`Petitioner
`
`v.
`
`CTP INNOVATIONS, LLC
`Patent Owner
`_______________
`
`Case IPR2013-00474
`Patent 6,611,349
`_______________
`
`
`
`Before HOWARD B. BLANKENSHIP, BENJAMIN D. M. WOOD, and
`BRIAN J. MCNAMARA, Administrative Patent Judges.
`
`WOOD, Administrative Patent Judge.
`
`DECISION
`Denying Petition to Institute Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`Petitioners' Exhibit 1004, pg. 1
`
`

`
`Case IPR2013-00474
`Patent 6,611,349
`
`
`A.
`
`Background
`
`I.
`
`INTRODUCTION
`
`Printing Industries of America (“PIA” or “Petitioner”) filed a petition
`
`(Papers 3, 4,1 “Pet.”) to institute an inter partes review of claims 1-14 (the
`
`“challenged claims”) of U.S. Patent No. 6,611,349 (Ex. 1101, “the’349 patent”).
`
`CTP Innovations, LLC (“CTP” or “Patent Owner”) filed a Preliminary Response
`
`(Paper 11, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314.
`
`The standard for instituting an inter partes review is set forth in 35 U.S.C.
`
`§ 314(a), which provides as follows:
`
`THRESHOLD – The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311 and any
`response filed under section 313 shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of
`the claims challenged in the petition.
`
`Upon consideration of the Petition, the Preliminary Response, and the
`
`exhibits attached thereto, we determine that Petitioner has not shown a reasonable
`
`likelihood that the Petitioner would prevail with respect to at least one of the
`
`challenged claims. Accordingly, we do not authorize an inter partes review to be
`
`instituted as to the challenged claims.
`
`B.
`
`Related Proceedings
`
`In Appendix B of the Petition, PIA identifies 35 co-pending infringement
`
`actions involving the ’349 patent. Pet., App. B. PIA has also petitioned for inter
`
`
`1 The Petition cover sheet and tables of contents, authorities and exhibits
`were submitted separately from the body of the Petition, and have been collectively
`designated Paper 3. The body of the Petition has been designated Paper 4.
`
` 2
`
`
`
`
`
`Petitioners' Exhibit 1004, pg. 2
`
`

`
`Case IPR2013-00474
`Patent 6,611,349
`
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`partes review of another patent at issue in the co-pending litigation, U.S. Patent
`
`No. 6,738,155. See IPR2013-00489, Papers 4, 5 (Aug. 2, 2013).
`
`C.
`
`The ’349 Patent
`
`The ’349 patent relates to “a system and method of providing publishing and
`
`printing services via a communication network.” Ex. 1101, 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
`
`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, “RIPping, proofing, imposition,
`
`filmsetting, and platesetting.” Id. at 1:29-32.
`
`“RIPping” is based on the acronym “RIP,” which stands for raster image
`
`processor. Id. at 7:57-59. A RIP is a hardware or software component that
`
`“rasterizes” an image file – i.e., converts it to a “bitmap” or raster image. Id.
`
`“RIPping” 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
`
` 3
`
`
`
`
`
`Petitioners' Exhibit 1004, pg. 3
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`

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`Case IPR2013-00474
`Patent 6,611,349
`
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`plate. Id. at 1:38-40. According to the ’349 patent, imposition “is particularly
`
`important in the creation of booklets or catalogs, where pages are positioned using
`
`register marks to assist in the stripping, collating, and folding of the printed
`
`product.” Id. at 1:41-44. A printer makes a plate 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 “system 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:
`
`Figure 1 depicts end user facility 300, printing company facility 400, and
`
`central service facility 105 connected together via either private network 160 or
`
`public network 190. Id. at Fig. 1. In this embodiment, end user facility 300
`
`
`
` 4
`
`
`
`
`
`Petitioners' Exhibit 1004, pg. 4
`
`

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`Case IPR2013-00474
`Patent 6,611,349
`
`
`comprises a router, desktop computer for page-building operations, and a color
`
`proofer and black and white printer for high-resolution proofing. Id. at 7:38-40;
`
`Figs. 1, 2, 5. Printing company facility 400 comprises a router, a hub, a server, a
`
`laser printer, a color plotter, and a platesetter, and performs production
`
`management, digital plate-making, desktop imposition, and press services. Id. at
`
`8:31-33; 9:38-43; Figs. 1, 4, 5. Central service facility 105 comprises a server,
`
`“hierarchical storage management” (HSM) system 120, “digital content
`
`management” system 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.
`
`D.
`
`Exemplary Claims
`
`Claims 1-4 and 10 are independent. Claims 1-3 are drawn to printing and
`
`publishing systems comprising an end user facility, a central service facility, and a
`
`printing company facility. Ex. 1101, 21:18-22:30. Claims 4 and 10 are drawn to
`
`methods of generating a plate-ready file configured for the creation of a printing
`
`plate. Id. at 22:31-48; 23:3-17. Claims 5-9 depend from claim 4. Id. at 22:49-
`
`23:2. Claims 11-14 depend, either directly or indirectly, from claim 10. Id. at
`
`24:1-15.
`
`Claims 1 and 4, reproduced below, are illustrative of the claimed subject
`
`matter:
`
`1. A printing and publishing system which generates a printing
`plate-ready file from data provided remotely in real time using a
`communication network, the printing and publishing system
`comprising:
`an end user facility coupled to a communication network, the
`end user facility providing page building operations, the page building
`operations including the design and construction of pages from
`images, text, and data available via said communication network;
`
` 5
`
`
`
`
`
`Petitioners' Exhibit 1004, pg. 5
`
`

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`Case IPR2013-00474
`Patent 6,611,349
`
`
`a central service facility coupled to said communication
`network, the central service facility providing storage, file processing,
`remote access, and content management operations; the file
`processing operations including generating a plate-ready file from
`pages designed at said end user facility, said plate-ready file having a
`file format capable of high resolution and ready for creation of a
`printing plate;
`a printing company facility coupled to said communication
`network, the printing company facility providing printing operations,
`the printing operations including producing a printing plate from said
`plate-ready file; and
`wherein the end user facility further comprises a
`communication routing device coupling the end user facility to the
`communication network, a computer which performs page building
`operations, and a proofer which provides printed samples of pages.
`
`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 be a remote user,
`establishing links to said image 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.
`
`
`
`
` 6
`
`
`
`
`
`Petitioners' Exhibit 1004, pg. 6
`
`

`
`Case IPR2013-00474
`Patent 6,611,349
`
`
`E.
`
`Prior Art Relied Upon
`
`PIA relies upon the following prior-art references:
`
`Nusbickel
`Lucivero
`Sands
`Benson
`Dorfman
`
`
`Ex. 1103
`Sep. 12, 2000
`US 6,119,133
`Ex. 1106
`July 10, 2007
`US 7,242,487
`Ex. 1107
`May 27, 1997
`US 5,634,091
`Ex. 1108
`EP App. 0878303 Nov. 18, 1998
`Ex. 1115
`EP App. 0920667
`June 9, 1999
`
`
`
`The Seybold Report on Publishing Systems, Vol. 27, No. 4 (Seybold
`Publications Oct. 27, 1997) (Ex. 1109) (“Seybold Vol. 27”);
`
`RICHARD M. ADAMS II ET AL., COMPUTER-TO-PLATE: AUTOMATING THE
`PRINTING INDUSTRY (Graphic Arts Technical Foundation 1996) (Ex. 1110)
`(“Adams II”);
`ALDUS CORP., OPITM
`(Ex. 1111) (“Aldus”);
`
` OPEN PREPRESS INTERFACE SPECIFICATION 1.3 (1993)
`
`MATTIAS ANDERSSON ET AL., PDF PRINTING AND PUBLISHING, THE NEXT
`REVOLUTION AFTER GUTENBERG (Micro Publishing Press 1997) (Ex. 1112)
`(“Andersson”);
`
`The Seybold Report on Publishing Systems, Vol. 26, No. 20 (Seybold
`Publications Jul. 21, 1997) (“Seybold Vol. 26”) (Ex. 1113);
`
`Stephen N. Zilles, Using PDF for Digital Data Exchange, TAGA
`PROCEEDINGS 1997 (Ex. 1114) (“Zilles”).
`
`
`
`F.
`
`Asserted Grounds of Unpatentability
`
`PIA contends that the challenged claims are unpatentable under 35 U.S.C.
`
`§§ 102 and/or 103 based on the following specific grounds (Pet. 18-60):2
`
`
`2 PIA also contends that claim 3 is indefinite under 35 U.S.C. § 112,
`paragraph 2. Pet. at 30-32. However, under 35 U.S.C. § 311(a) “[a] petitioner in
`an inter partes review may request to cancel as unpatentable 1 or more claims of a
`patent only on a ground that could be raised under section 102 or 103 and only on
`the basis of prior art consisting of patents or printed publications.” We therefore
`do not consider PIA’s asserted ground of unpatentability raised under § 112.
`
` 7
`
`
`
`
`
`Petitioners' Exhibit 1004, pg. 7
`
`

`
`Claims Challenged
`
`Basis
`
`§ 102
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`1
`
`1
`
`1
`
`2
`
`3
`
`§ 103
`
`4, 7
`
`§ 103
`
`10-14
`
`§ 103
`
`5, 6
`
`§ 103
`
`8, 9
`
`Case IPR2013-00474
`Patent 6,611,349
`
`
`Reference[s]
`
`Lucivero
`
`Nusbickel and Lucivero
`
`Nusbickel, Sands, and Benson
`
`Nusbickel, Lucivero, Seybold
`Vol. 27, and Adams II
`
`Lucivero, Nusbickel, and Sands
`
`Lucivero, Sands, Aldus, Andersson,
`Seybold Vol. 26, and Adams II
`Lucivero, Sands, Zilles, and
`Andersson
`Lucivero, Sands, Aldus, Andersson,
`and Dorfman
`Lucivero, Sands, Aldus, Andersson,
`and Benson
`
`
`
`II. ANALYSIS
`
`A.
`
`Claim Construction
`
`As a step in our analysis for determining whether to institute a trial, we
`
`determine the meaning of the claims. Consistent with the statute and the
`
`legislative history of the AIA, the Board will interpret claims using the broadest
`
`reasonable construction. 37 C.F.R. § 100(b). We presume that claim terms retain
`
`their ordinary and customary meaning as would be understood by one of ordinary
`
`skill in the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303,
`
`1313 (Fed. Cir. 2005) (en banc). That presumption may be rebutted if the patent
`
`specification defines the term with reasonable clarity, deliberateness, and
`
`precision. In re Paulson, 30 F.3d 1475, 1480 (Fed. Cir. 1994); see also In re Bigio,
`
`381 F.3d 1320, 1325-26 (Fed. Cir. 2004) (“Absent claim language carrying a
`
` 8
`
`
`
`
`
`Petitioners' Exhibit 1004, pg. 8
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`

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`
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`narrow meaning, the PTO should only limit the claim based on the specification or
`
`prosecution history when those sources expressly disclaim the broader
`
`definition.”). If the specification does not expressly or implicitly define a claim
`
`term, it is appropriate to consult a general dictionary definition of the word for
`
`guidance in determining the ordinary and customary meaning of the claim term as
`
`viewed by a person of ordinary skill in the art. Comaper Corp. v. Antec, Inc., 596
`
`F.3d 1343, 1348 (Fed. Cir. 2010).
`
`PIA proposes specific constructions for eight claim terms, which are
`
`summarized below:
`
`Claim Term
`
`Proposed Interpretation
`
`Claims
`
`end-user facility
`
`communication
`network
`
`central service facility
`
`printing company
`facility
`
`communication routing
`device
`
`plate-ready file
`
`facility that provides page building
`operations allowing the design and
`construction of pages from images, text,
`and data available via a communication
`network. Pet. 6.
`both a private network 160 (ATM network)
`and a public network 190 (the Internet) of
`subscribers and non-subscribers to a
`printing and publishing system connected to
`central service facility 105. Pet. 6.
`providing storage, file processing, remote
`access, and content management
`operations. Pet. 7.
`providing printing operations for producing
`a plate from said plate-ready file.
`Pet. 7.
`routers and switches . . . included at central
`service facility 105, end user facility 300,
`and printing company facility 400. Pet. 7.
`a file containing pages designed from
`images, texts, and data converted to a
`digital file for producing a printing plate
`
`1-3
`
`1-14
`
`1-3
`
`1-3
`
`1, 3
`
`1-14
`
`thin Postscript file
`
`digital file containing low resolution
`
`4-9
`
` 9
`
`
`
`
`
`Petitioners' Exhibit 1004, pg. 9
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`

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`Case IPR2013-00474
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`
`Claim Term
`
`Proposed Interpretation
`
`Claims
`
`fat Postscript file
`
`
`
`images, graphics, texts, and art
`
`digital file containing high resolution
`images, graphics, texts, and art
`
`4-9
`
`CTP does not dispute PIA’s proposed interpretations. See generally Prelim.
`
`Resp. Further, the proposed interpretations do not appear unreasonable at this
`
`stage of the proceeding. Therefore, we adopt PIA’s proposed constructions for
`
`purposes of this decision.
`
`B.
`
`Claim 1 – Anticipation – Lucivero
`
`PIA contends that Claim 1 is anticipated by Lucivero under 35 U.S.C.
`
`§ 102(e).
`
`1.
`
`Lucivero
`
`Lucivero discloses a system for creating, storing and processing raster data
`
`files. Ex. 1106, Abs; 6:26-28. The system allows an end user to control the
`
`workflow of bitmap files to a plurality of user-selectable output devices. Id. at
`
`7:60-63, 8:30-35. The system comprises at least one terminal device on which an
`
`end user can create PostScript3 image files, at least one RIP for converting
`
`PostScript files into bitmap files, and a print drive for receiving the bitmap file
`
`from the RIP and directing it to at least one output device, such as an imagesetter,
`
`platestetter, or large-format proofer. Id. at 5:61-67; 6:5-9; Fig. 2. Lucivero’s
`
`system also contains a remote graphical user interface that allows a front end user
`
`to control print jobs over a “standard network environment.” Id. at 5:41-60. The
`
`end user can select an off-line output device (also referred to as a “print engine”),
`
`
`3 “PostscriptTM,” or PostScriptTM,” refers to a page-description-language file
`format from Adobe Systems, Inc. Ex. 1106, 2:53-55.
`
`
`
`10
`
`
`
`Petitioners' Exhibit 1004, pg. 10
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`

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`Case IPR2013-00474
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`
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`execute a “print” command, view the status of jobs, and “manipulate and control
`
`the timing and priorities of the output.” Id. at 5:11-17, 50-54.
`
`2.
`
`Discussion
`
`“Anticipation requires the presence in a single prior art reference disclosure
`
`of each and every element of the claimed invention, arranged as in the claim.”
`
`Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d
`
`1452, 1458 (Fed. Cir. 1984). Based on the record before us, we are not persuaded
`
`that PIA is reasonably likely to prevail in showing that Lucivero anticipates claim
`
`1. Although PIA summarizes Lucivero (Pet. 18-19), and cites broad passages of
`
`Lucivero as corresponding to claim 1’s limitations (Pet. 20-21 (claim chart)), PIA
`
`does not explain how the cited portions correspond to the limitation for which they
`
`are cited. Nor is such correspondence self-evident. For example, claim 1 recites
`
`an “end user facility providing page building operations,” which includes “the
`
`design and construction of pages from images, text, and data available via said
`
`communication network.” Ex. 1101, 21:23-27 (emphasis added). None of the
`
`Lucivero passages on which PIA relies seems to address this limitation.
`
`Even if all of the claim 1 limitations were taught in the cited passages of
`
`Lucivero, it is unlikely that they would be “arranged as in the claim,” i.e., as part of
`
`the same “printing and publishing system” as claim 1 recites. In Net MoneyIN, Inc.
`
`v. Verisign, Inc., 545 F.3d 1359 (Fed. Cir. 2008), the Federal Circuit determined
`
`that the district court erred in concluding that a reference anticipates a claim
`
`because the district court combined parts of two separate examples described in the
`
`reference to find all of the elements of the claim. Id. at 1370-71. The court
`
`reasoned that a prior art reference that “includes multiple, distinct teachings that
`
`the artisan might somehow combine to achieve the claimed invention” is
`
`insufficient to show prior invention. Id. This principle applies here, because PIA
`
`
`
`
`11
`
`Petitioners' Exhibit 1004, pg. 11
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`

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`Case IPR2013-00474
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`
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`relies on at least two distinct embodiments in Lucivero to show anticipation of
`
`claim 1. PIA’s anticipation analysis relies on a description of an embodiment that
`
`Lucivero describes as prior art (Pet. 20 (citing, e.g., Lucivero, 7:54-8-2 and
`
`Fig. 1)), and also on a description of an embodiment that Lucivero describes as
`
`“one embodiment of the present invention” (Pet. 20-21 (citing, e.g., 8:23-39, 41-
`
`67)). The anticipation analysis is, therefore, unpersuasive. Accordingly, we are
`
`not persuaded that PIA is reasonably likely to prevail on this ground of
`
`unpatentability.
`
`C.
`
`Claim 1 – Obviousness – Nusbickel and Lucivero
`
`PIA contends that the combination of Nusbickel and Lucivero renders
`
`obvious claim 1. Pet. 21-23.
`
`1.
`
`Nusbickel
`
`Nusbickel relates to online directory services – e.g., online equivalents to
`
`traditional phone books – in which information is provided over the Internet in
`
`response to a user request; the information is displayed by filling in fixed data
`
`fields in a presentation screen. Ex. 1103, 1:33-40; Figs. 1, 2. Figure 1 of
`
`Nusbickel depicts a functional block diagram of such a system. Web server 101
`
`runs a web server application 103, which is coupled to database server 105. Id. at
`
`3:50-53. Web server 101 is also connected to the Internet 107. Id. at 3:56-59. End
`
`user “data processing unit” 109, with web browser 111, is also connected to the
`
`Internet. Id. An end user queries database server 105 via Web browser 111,
`
`Internet 107, Webserver 101 and application 103. Id. at 4:10-14. The results of
`
`the query are returned to the end user in the same manner. Id. at 4:14-16. The
`
`invention in Nusbickel relates to a method of naming data files to simplify the
`
`retrieval of certain data. Id. at 4:66-5:16; Fig. 4.
`
`
`
`12
`
`
`
`Petitioners' Exhibit 1004, pg. 12
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`

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`Case IPR2013-00474
`Patent 6,611,349
`
`
`2.
`
`Discussion
`
`As with the previous alleged ground of unpatentability, PIA merely
`
`summarizes the references and cites broad passages of them as corresponding to
`
`claim 1’s limitations, but does not explain how the cited portions correspond to the
`
`limitation for which they are cited. Nor is such correspondence self-evident. For
`
`example, it does not appear to us that either Nusbickel or Lucivero, individually or
`
`in combination, discloses the limitation requiring that the end user facility provide
`
`page building operations that include “the design and construction of pages from
`
`images, text, and data available via said communication network.” Ex. 1101,
`
`21:23-27. We discussed Lucivero’s failure to disclose this limitation in sec. II.B.2.
`
`above. PIA also cites to Nusbickel 3:50-60, 4:16-46, and Figures 1 and 2, to
`
`disclose this limitation.4 Nusbickel describes a data processing system for hosting
`
`Web pages, and a Yellow Pages directory listing service in which a user selects
`
`search criteria and retrieves search results that are displayed on a predefined screen
`
`layout. This disclosure does not, on its face at least, relate to the claim or
`
`limitation at issue. Therefore, we are not persuaded that PIA is reasonably likely
`
`to show that claim 1 is obvious over Lucivero and Nusbickel.
`
`D. Claim 1 – Obviousness – Nusbickel, Sands, and Benson
`
`PIA contends that the combination of Nusbickel, Sands, and Benson renders
`
`obvious claim 1. Pet. 24-27.
`
`
`4 It is unclear whether PIA, by citing to two references to disclose the same
`limitation, contends that each reference fully discloses the limitation, or whether
`PIA relies instead on some combination of the two references to disclose the
`limitation.
`
`
`
`13
`
`
`
`Petitioners' Exhibit 1004, pg. 13
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`

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`Case IPR2013-00474
`Patent 6,611,349
`
`
`1.
`
`Sands
`
`Sands discloses a digital page imaging (DPI) system that automates the
`
`imposition process. A customer creates a digital document for printing, converts
`
`the document to a “page description language” format file (e.g., PostScript or
`
`PDF), and sends it via a communication network to the printer. Ex. 1107, 3:21-27.
`
`At the printer, the system assigns each page of the customer product into its exact
`
`position and orientation in a film flat. Id. at 3:64-67. The flat is then output to a
`
`film image setter for creating a printing plate. Id. at 3:10-14.
`
`2.
`
`Benson
`
`Benson relates to a “[d]istributed imaging and control architecture for digital
`
`printing presses and platesetters.” Ex. 1108, cover page. The architecture
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`comprises a job-control computer for selecting print jobs, and a separate image-
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`control computer or computers for operating the various imaging devices. Id.
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`3.
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`Discussion
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`As above, we are not persuaded that any of Nusbickel, Sands or Benson,
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`individually or in combination, discloses the limitation requiring that the end user
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`facility provide page building operations that include “the design and construction
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`of pages from images, text, and data available via said communication network.”
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`Ex. 1101, 21:23-27. PIA cites to portions of all three references as disclosing this
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`limitation. Pet. 27 (claim chart). For the reasons discussed above, we are not
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`persuaded that the cited portions of Nusbickel disclose the limitation. PIA also
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`cites to Sands, Ex. 1107, 3:19-42. Pet. 27 (claim chart). However, this provision
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`of Sands instead discusses a DPI system that receives pages electronically in “page
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`description language” format from multiple publishing systems and imposes them
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`into plate-ready film flats. Ex. 1107, 3:19-42. Further, the portion of Benson on
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`which PIA relies, 7:52-58, is not in the record. The only portions of Benson in the
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`14
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`Petitioners' Exhibit 1004, pg. 14
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`record are its cover page and a related search report. See generally Ex. 1108.
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`Therefore, we are not persuaded that PIA is reasonably likely to show that claim 1
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`is obvious over Nusbickel, Sands, and Benson.
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`E.
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`Claim 2 – Obviousness – Seybold Vol. 27 and Adams II
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`PIA contends that Seybold Vol. 27 and Adams II render obvious claim 2.
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`Claim 2 contains the same end-user-facility as claim 1, i.e., an end user facility that
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`provides page-building operations “including the design and construction of pages
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`from images, text, and data available via said communication network.” Ex. 1101,
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`21:52-54. PIA relies on the same portions of Nusbickel and Lucivero to disclose
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`this limitation as it did for claim 1. Pet. 30 (claim chart). For the reasons
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`discussed above, however, we are not persuaded that Nusbickel and Lucivero,
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`individually or combined, disclose this limitation. Therefore, we are not persuaded
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`that PIA is reasonably likely to prevail on this ground of unpatentability.
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`F.
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`Claim 3 – Obviousness – Lucivero, Nusbickel, and Sands
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`PIA contends that Lucivero, Nusbickel, and Sands render obvious claim 3.
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`Claim 3 contains the same end-user-facility limitation as claim 1, i.e., an end user
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`facility that provides page-building operations “including the design and
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`construction of pages from images, text, and data available via said communication
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`network.” Ex. 1101, 22:9-11. PIA relies on the same portions of Nusbickel and
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`Lucivero to disclose this limitation as it did for claim 1. Pet. 35 (claim chart). For
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`the reasons discussed above, we are not persuaded that Nusbickel and Lucivero,
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`individually or combined, disclose this limitation. Therefore, we are not persuaded
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`that PIA is reasonably likely to prevail on this ground of unpatentability.
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`G. Claim 4 – Obviousness – Lucivero, Sands, Aldus, Andersson, Seybold
`Vol. 26, and Adams II
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`
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`15
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`Petitioners' Exhibit 1004, pg. 15
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`PIA contends that the combination of Lucivero, Sands, Aldus, Andersson,
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`Seybold Vol. 26, and Adams II render obvious claim 4. Claim 4 is drawn to a
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`method of generating a plate-ready file configured for the creation of a printing
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`plate, the plate-ready file being associated with “page layouts.” Ex. 1101, 22:31-
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`48. Claim 4 requires, inter alia, the step of “remotely providing access to imaging
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`files for searching and retrieving images used in the design of a page layout by a
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`remote user.” Ex. 1101, 22:36-38. PIA cites the following as allegedly disclosing
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`this limitation: Lucivero, 6:63-67 and 9:1-4; Sands, 8:45-56; Aldus at 5, col. 1;
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`and Seybold Vol. 26 at 21, ¶¶ 3, 4, and 7. PIA does not explain how the cited
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`portions of these references correspond to the limitation in question. Nor do we
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`discern any correspondence. The cited portions of Lucivero state:
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`It is another object of the present invention to provide an electronic
`prepress system capable of reducing the time for the front-end to
`become free to send another job by allowing more jobs to be queued
`up to the RIP from the front-end. . . . It will be appreciated from FIGS.
`2 and 3 that each RIP 34 on the network 35 can be accessed by any
`front-end 40 or by the server 42 or other computer system 45, any of
`which may be either local or remote.
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`Ex. 1106, 6:64-9:4. Petitioner does not explain the connection between these
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`passages and the limitation at issue; nor is such connection evident. The cited
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`portions of Sands, Aldus, and Seybold Vol. 26 likewise appear unrelated to this
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`limitation. Therefore, we are not persuaded that PIA is reasonably likely to prevail
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`on this ground of unpatentability.
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`H. Claim 10 – Obviousness – Lucivero, Sands, Zilles, and Andersson
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`PIA contends that Lucivero, Sands, Zilles, and Anderson render obvious
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`claim 10. Claim 10 requires, inter alia, “storing high resolution files on a
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`computer server” and “generating low resolution files corresponding to said high
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`16
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`Petitioners' Exhibit 1004, pg. 16
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`resolution files.” For the storing step, PIA relies on Lucivero, 21:53-63; Sands,
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`5:16-22; and Zilles at 313. Pet. 45 (claim chart). For the generating step, PIA
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`relies on Sands, 5:16-22 and Andersson at 20. Even assuming that the storing step
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`is disclosed in one or more of the prior art references cited by PIA, we are not
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`persuaded that the cited passage of either Sands or Anderson discloses the
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`generating step. The passage of Sands on which PIA relies discusses the operation
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`of a typesetter that produces press film flats for plate making and printing. Ex.
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`1107, 5:16-22. The passage of Andersson on which PIA relies discusses the
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`advantages of portable documents, as well as the characteristics of Acrobat
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`Distiller, Acrobat Reader, and Acrobat Exchange. Ex. 1112 at 20.5 Neither
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`passage discusses the generation of low resolution files from high resolution files
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`stored on a computer server. Therefore, we are not persuaded that PIA is
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`reasonably likely to prevail on this ground of patentability.
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`I.
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`The Remaining Grounds of Unpatentability
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`PIA’s remaining grounds of unpatentability address claims that depend,
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`either directly or indirectly, from one of claims 4 and 10. Pet. 46-60. Because we
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`are not persuaded that PIA is reasonably likely to prevail on any of its asserted
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`grounds of unpatentability of claims 4 and 10, we are also not persuaded that PIA
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`is reasonably likely to prevail on any of its asserted grounds of unpatentability of
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`the dependent claims.
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`III. CONCLUSION
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`We decline to institute an inter partes review of any of the challenged
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`5 Also, notably, PIA does not argue expressly that a person of ordinary skill
`in the art would have had a reason to combine Andersson with the other references
`on which PIA relies. Pet. 45.
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`17
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`Petitioners' Exhibit 1004, pg. 17
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`claims.
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`IV. ORDER
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`For the reasons given, it is
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`
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`ORDERED that the Petition is denied as to all of the challenged
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`claims of the ’349 patent.
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`
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`PETITIONER:
`John M. Adams, Esq.
`Lawrence G. Zurawsky, Esq.
`Price & Adams, P.C.
`4135 Brownsville Road,
`P.O. Box 98127
`Pittsburgh, PA 15227
`paip.law@verizon.net
`
`
`
`PATENT OWNER:
`W. Edward Ramage, Esq.
`Samuel F. Miller, Esq.
`Baker, Donelson, Bearman,
`Caldwell & Berkowitz, P.C.
`Baker Donelson Center
`211 Commerce St., Ste 800
`Nashville, TN 37201
`eramage@bakerdonelson.com
`
`
`
`18
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`Petitioners' Exhibit 1004, pg. 18