Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 21
`Entered: March 31, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`EASTMAN KODAK CO., AGFA CORP., ESKO SOFTWARE BVBA, and
`HEIDELBERG, USA,
`Petitioner,
`
`v.
`
`CTP INNOVATIONS, LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-00791
`Patent 6,611,349 B1
`_______________
`
`
`
`Before HOWARD B. BLANKENSHIP, BENJAMIN D. M. WOOD, and
`BRIAN J. MCNAMARA, Administrative Patent Judges.
`
`WOOD, Administrative Patent Judge.
`
`DECISION
`Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`Petitioners' Exhibit 1013, pg. 1
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`

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`IPR2014-00791
`Patent 6,611,349 B1
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`
`A.
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`Background
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`I.
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`INTRODUCTION
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`Eastman Kodak Co., Agfa Corp., Esko Software BVBA, and
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`Heidelberg, USA (collectively, “Petitioner”) filed a request for rehearing
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`(Paper 12, “Reh’g Req.”) of our decision, dated November 28, 2014
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`(Paper 9, “Decision,” or “Dec.”) denying institution with respect to several
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`of Petitioner’s proposed grounds of unpatentability of claims 4–9 of U.S.
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`Patent No. 6,611,349 (“the ’349 patent”). Reh’g Req. 1. Petitioner requests
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`that we reconsider our determination not to institute an inter partes review
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`on the following grounds: (1) claims 4–8 as obvious over Dorfman,
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`Apogee, and OPI White Paper; (2) claim 9 as obvious over Dorfman,
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`Apogee, OPI White Paper, and Adams II;1 and (3) claims 4–9 as obvious
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`over Jebens, Apogee, and OPI White Paper. Id. For the reasons stated
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`below, Petitioner’s request is granted-in-part for the limited purpose of
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`further explaining our determination not to institute on the Dorfman
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`grounds, and denied in all other respects.
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`II.
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`STANDARD OF REVIEW
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`Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition,
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`a panel will review the decision for an abuse of discretion.” An abuse of
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`discretion occurs when a “decision was based on an erroneous conclusion of
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`law or clearly erroneous factual findings, or . . . a clear error of judgment.”
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`PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567
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`(Fed. Cir. 1988) (citations omitted). The request must identify, specifically,
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`1 Grounds (1) and (2) will be referred to as the “Dorfman grounds.”
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` 2
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`
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`Petitioners' Exhibit 1013, pg. 2
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`

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`IPR2014-00791
`Patent 6,611,349 B1
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`all matters the party believes the Board misapprehended or overlooked.
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`37 C.F.R. § 42.71(d).
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`III. DISCUSSION
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`A.
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`Claims 4–9—The Dorfman Grounds
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`In its Petition, Petitioner alleged that claims 4–8 were obvious over
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`Dorfman, Apogee, and OPI White Paper, and that claim 9 was obvious over
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`Dorfman, Apogee, OPI White Paper, and Adams II. Pet. 44–55, 59–60.
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`Claim 4 is independent, and is drawn to a “method of generating a plate-
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`ready file” that is “associated with page layouts” provided “from a remote
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`location using a communication network,” comprising the steps of:
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`(1) “remotely providing access to imaging files for searching and retrieving
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`images used in the design of a page layout by a remote user;” (2)
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`“establishing links to said imaging files, thereby creating a thin Postscript
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`file from the page layout designed by the remote user;” (3) “parsing said thin
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`Postscript file to extract data associated with low resolution images and
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`replace with high resolution data, thereby forming a fat Postscript file;” (4)
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`“creating a portable document format (PDF) file from said fat Postscript
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`file;” and (5) “converting said PDF file to a file in plate-ready format.” Ex.
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`1001, 22:31–48 (emphasis added). Claims 5–9 depend from claim 4. Id. at
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`22:49–23:2.
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`Dorfman describes a “technique for easily creating and proofing
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`customized printed material before printing on a production printing
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`system.” Ex. 1007, 1 (abstract). A user can access a template in PDF from
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`the system’s website and modify the template by adding low-resolution
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`copies of selected images and other variable data, thereby creating a
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`dynamic PDF file representing the material to be printed. Id. at 4:3–8, 8:1–
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` 3
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`Petitioners' Exhibit 1013, pg. 3
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`

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`IPR2014-00791
`Patent 6,611,349 B1
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`4. The PDF may be viewed or printed to a local low-resolution printer for
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`final proofing. Id. at 8:4–11. The user can make any necessary changes or
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`corrections to the PDF file from the system website and send the file “for
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`printing using conventional printing technology where the low resolution
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`images would be replaced by the high resolution images by an OPI . . .
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`process before printing.” Id. at 4:18–21, 8:23–26.2
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`In our decision on institution, we stated that Petitioner did not present
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`sufficient evidence to persuade us that “a person of ordinary skill in the art
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`would have considered using Postscript files with Dorfman’s system in a
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`way that corresponds to the steps of claim 4.” Dec. 26. We noted that
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`Dorfman teaches a workflow based on the PDF format rather than the
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`Postscript format, and therefore does not teach creating a thin Postscript file,
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`converting it to a fat Postscript file, and converting the fat Postscript file to a
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`PDF file. Id. at 25. We also found unpersuasive Petitioner’s assertion that
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`“[u]tilizing Postscript files in the OPI process rather than PDF files would
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`have been an obvious substitution to one of ordinary skill in the art.” Id.
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`(citing Pet. 46–47; Ex. 1022 ¶¶ 130–131). We stated that Petitioner’s
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`assertion might be true with respect to the OPI process in general, but
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`“Petitioner has not presented persuasive evidence that a skilled artisan would
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`have made that substitution in combination with Dorfman’s system.” Id.
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`We explained that Dorfman’s system uses the PDF format to obtain specific
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`benefits beyond facilitating OPI image exchange, and that “[t]here is no
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`evidence that these benefits would obtain by using Postscript files with
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`2 As discussed in the Decision, OPI, or “Open Prepress Interface,” is an
`“image swapping” process in which a user designs pages using low-
`resolution image files, which, prior to printing, are exchanged for high-
`resolution versions of the image files by an OPI server. Dec. 18.
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` 4
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`Petitioners' Exhibit 1013, pg. 4
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`

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`IPR2014-00791
`Patent 6,611,349 B1
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`Dorfman’s system.” Id. at 26. We noted that, on the contrary,
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`Professor Lawler testified that there are numerous benefits to using PDF
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`over Postscript, suggesting that a person of ordinary skill would have
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`preferred working with PDF files rather than Postscript files, and thus would
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`have been unlikely to modify Dorfman to use Postscript files. Id. at 26.
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`In its Rehearing Request, Petitioner asserts that we “overlooked facts”
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`and “misapprehended the law” in declining to institute inter partes review
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`based on the Dorfman grounds. Reh’g Req. 3–9. Specifically, Petitioner
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`argues that each of the following “piece[s] of evidence” was “overlooked
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`and not addressed by the Board:”
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`(1) Dorfman’s page layout templates may be tailored to a specific user
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`through the use of “variable data” (id. at 4 (citing Pet. 46; Ex. 1007, 7:9–27;
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`Ex. 1022 ¶ 112));
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`(2) according to Professor Lawler, one of ordinary skill in the art
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`would have understood that the “variable data provided by the users” could
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`be “user specific images, artwork, or other types of data” (id. (citing Pet. 46;
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`Ex. 1022 ¶ 112));
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`(3) a user of Dorfman’s system “could easily and predictably” include
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`a company’s logo on a page layout, or a photo of an item for sale, by
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`“integrating known page building operations using PostScript-based OPI
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`with the Dorfman system” (id. at 5 (citing Pet. 46–47; Ex. 1022 ¶¶ 115–
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`118)); and
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`(4) “[a]s taught by OPI White Paper, the traditional way of performing
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`OPI at the time the ’349 patent was filed was to create thin and fat Postscript
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`files” (id. (citing Pet. 52; Ex. 1009, 12; Ex. 1022 ¶¶ 130–133)).
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` 5
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`Petitioners' Exhibit 1013, pg. 5
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`

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`IPR2014-00791
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`Petitioner further asserts that we overlooked the “explicit rationale as
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`to why . . . one of ordinary skill in the art would have utilized PostScript-
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`based OPI rather and PDF-based OPI” with Dorfman’s system, i.e., “as
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`system constraints (e.g., software constraints or file type restrictions at the
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`printing facility) demanded.” Id. at 5; see id. at 7 (alleging that one of
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`ordinary skill would have worked with both Postscript and PDF file formats
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`to support compatibility with “legacy systems reliant on the Postscript
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`language”).
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`Petitioner also contends that we misapprehended the law in denying
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`institution of inter partes review of claims 4–9 based on the Dorfman
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`grounds. Id. at 6. Petitioner characterizes our holding that Dorfman
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`“disclos[es] working with PDF’s as a preferred or optimal embodiment,” but
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`counters that “the prior art need not describe the claimed invention (i.e.,
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`PostScript-based OPI) as part of its preferred embodiment to render a claim
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`obvious.” Id. at 8.
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`We have reviewed Petitioner’s contentions and arguments regarding
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`the Dorfman grounds, and are not persuaded that we abused our discretion in
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`not instituting review of claims 4–9 based on those grounds. As an initial
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`matter, we disagree that we overlooked the alleged facts listed above. As to
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`items (1) and (2), we noted in our discussion of Dorfman that a user of
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`Dorfman’s system can modify templates by adding low-resolution copies of
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`selected images and other “variable data.” Dec. 21. Regarding item 4, we
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`noted in our discussion of the OPI White Paper reference that in the OPI
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`process, a Postscript file with low-resolution images is first created, and
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`high-resolution images replace the low-resolution images prior to final
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`printing. Id. at 18 (citing Ex. 1009, 12, Fig. 2d). As for item 3, we are
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` 6
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`Petitioners' Exhibit 1013, pg. 6
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`

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`IPR2014-00791
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`unable to find, in any of the cited portions of the Petition or Professor
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`Lawler’s declaration, the assertion that a user of Dorfman’s system could
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`have included a logo or photo in a page layout “easily and predictably by
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`integrating known page building operations using Postscript-based OPI with
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`the Dorfman system.”
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`We also considered Petitioner’s assertion of a reason to modify
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`Dorfman—that one of ordinary skill in the art would have utilized a
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`PostScript-based OPI process with Dorfman’s system “as system constraints
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`(e.g., software constraints or file type restrictions at the printing facility)
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`demanded.” Reh’g Req. 5. However, as we did not elaborate on our
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`analysis of this assertion, we grant-in-part Petitioner’s request for rehearing
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`to provide that elaboration here.
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`Petitioner’s reason to modify Dorfman relied solely on the opinion of
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`its declarant, Professor Lawler. See Pet. 46–47 (citing Ex. 1022 ¶¶ 130–
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`131). Professor Lawler, however, did not support his opinion with any
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`record evidence. Under 37 C.F.R. § 42.65(a), “[e]xpert testimony that does
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`not disclose the underlying facts or data on which the opinion is based is
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`entitled to little or no weight.” The lack of any citation to record evidence is
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`particularly significant in this case because Professor Lawler did not specify
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`the “system constraints,” “software constraints,” or “file type restrictions” to
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`which he referred. Further, Professor Lawler’s opinion that the use of PDF
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`files would be constrained under certain circumstances is inconsistent with
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`other evidence in the record. As noted above, Dorfman describes the PDF as
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`“an accepted Internet standard, very well supported by the major Internet
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`browsers,” and “device independent.” Dorfman also teaches that PDF files
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`can be printed using “conventional printing technology.” Professor Lawler
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` 7
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`Petitioners' Exhibit 1013, pg. 7
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`himself states that PDF “supports all of Postscript’s functionality.” Ex. 1022
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`¶ 45. Moreover, neither Petitioner nor Professor Lawler explains why
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`system constraints that would have required OPI image exchange using
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`Postscript files would nonetheless have tolerated conversion of the fat
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`Postscript file to PDF, as claim 4 requires.
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`Finally, Petitioner argues that “[t]he Board’s finding that Dorfman’s
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`disclosure of working with PDF’s as a preferred or optimal embodiment
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`diminishes the likelihood that one of ordinary skill in the art would have
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`considered using PostScript files with Dorfman’s system is contrary to the
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`relevant law [sic].” Reh’g Req. 8. However, this argument appears to be
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`based on an incorrect premise: that we found that Dorfman teaches using
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`PDF files only as a preferred embodiment. We made no such finding. Nor
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`would such a finding be supported by the record. The use of the PDF file
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`format—a PDF builder that creates a dynamic PDF file based on a PDF
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`template and user-entered variable data—is a necessary part of Dorfman’s
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`“highly advantageous” proofing system that accurately depicts how the user-
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`customized document would look in print, regardless of the means of
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`printing, before the potentially costly printing takes place. Ex. 1007, 3:1–
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`4:21.
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`B.
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`Claims 4–9, Obviousness over Jebens, Apogee, and OPI White
`Paper
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`In its Petition, Petitioner alleged that claims 4–9 would have been
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`obvious over Jebens, Apogee, and OPI White Paper. Pet. 24–39. Petitioner
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`relied on OPI White Paper to teach creating the thin Postscript file and
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`converting it to a fat Postscript file, and on Apogee to teach converting the
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`fat Postscript file to a PDF file. Pet. 34–35. In our Decision, we stated that
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` 8
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`Petitioners' Exhibit 1013, pg. 8
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`“we are not persuaded that the combination of these references would teach
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`or fairly suggest” the steps of claim 4. Dec. 18. We noted that “OPI White
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`Paper does not teach converting the fat Postscript file to PDF before sending
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`the file to a printer or imagesetter.” Id. (citing Ex. 1009, 12, Fig. 2d). We
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`further noted that “Apogee teaches converting incoming files to PDF before
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`‘OPI image exchange.’” Id. (citing Ex. 1008, 6–7). We determined that
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`“[b]ecause Apogee converts to PDF before OPI image exchange, Apogee’s
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`system would, at best, create a PDF from a thin Postscript file and perform
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`OPI image exchange on the resulting PDF file; no fat Postscript file would
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`be created, and therefore there would be no fat Postscript file to convert to
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`PDF.” Id. at 19. In response to Petitioner’s assertion that there are
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`“numerous and varied” reasons to convert Postscript files to PDF, and that
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`each of these benefits would have motivated a person of ordinary to convert
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`the fat Postscript file, generated at Jebens’s central system, into a PDF file,
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`we stated that “it is counterintuitive for these benefits to have motivated a
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`person of ordinary skill to delay the conversion until after OPI image
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`exchange.” Id. Instead, we stated that “[o]ne would expect the skilled
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`artisan to want to perform the conversion earlier in the process, as Apogee
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`teaches, to obtain the benefits of using PDF files earlier.” Id.
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`In its Rehearing Request, Petitioner alleges that that we
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`“misapprehended Petitioners[’s] arguments and overlooked certain facts in
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`concluding that each element of claim 4 was not disclosed by the proposed
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`combination.” First, Petitioner argues that we “incorrectly import[ed] a
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`timing requirement into the PDF conversion process disclosed by Apogee.”
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`Reh’g Req. 9. According to Petitioner, it did “not argue, nor does Apogee
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`teach, that the conversion from Postscript to PDF must occur before the OPI
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` 9
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`Petitioners' Exhibit 1013, pg. 9
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`image swapping process.” Id. at 12. Petitioner further contends that in
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`pointing out this “oversight,” it is “not raising a new argument,” but is
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`“simply refuting an argument raised by the Board based upon the Board’s
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`interpretation of Apogee that is unsupported by the record evidence and was
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`never relied upon by Petitioners.” Id. at 11.
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`As an initial matter, we disagree that Petitioner is not raising a new
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`argument. As discussed below, the record evidence, including the testimony
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`of Petitioner’s declarant, Professor Lawler, firmly supports our finding that
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`Apogee teaches converting files to PDF before OPI Image exchange.
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`Further, it was entirely foreseeable that this teaching is relevant to whether
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`Jebens, Apogee and OPI White Paper renders claim 4 unpatentable,
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`considering that claim 4 indisputably requires conversion to PDF after OPI
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`image exchange. Therefore, Petitioner could have, and should have,
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`discussed Apogee’s “timing requirement,” or lack thereof, in the Petition.
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`Further, we disagree that we erred in finding that Apogee teaches
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`converting files to PDF before OPI Image exchange. Apogee teaches that
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`all incoming files “are normalized into Digital Masters in PDF format.”
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`Ex. 1008 at 3 (emphasis added). “Incoming files” means files entering
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`Apogee’s workflow; thus, the production processes that are part of that
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`workflow—including OPI image exchange—necessarily occur after the
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`incoming files are normalized to PDF. See id. (diagram showing “Apogee
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`Normalizing” of incoming files to PDF occurring before “Apogee OPI”).
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`Petitioner’s declarant, Professor Lawler, apparently agrees. Professor
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`Lawler describes the step that includes OPI image exchange as the “[n]ext”
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`step after the incoming files are normalized into PDF. Id. ¶¶ 91–92 (citing
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`Ex. 1008, 3–4).
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`10
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`Petitioners' Exhibit 1013, pg. 10
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`

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`Second, Petitioner argues that we committed legal error by “narrowly
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`focusing on this alleged teaching of Apogee,” i.e., Apogee’s teaching a
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`workflow in which files are converted to PDF before OPI image exchange,
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`and in doing so “overlooked the . . . ubiquitous nature of the OPI image
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`swapping process . . . and the familiarity [of one of ordinary skill in the art]
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`with using both PostScript and PDF file formats, particularly in connection
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`with OPI image exchange.” Reh’g Req. 14 (citing, e.g., Pet. 9–10, 32–33).
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`This argument is unpersuasive. There is no dispute that OPI, using either
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`Postscript format or PDF format, was known. See Dec. 17–18 (describing
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`OPI White Paper’s teaching of OPI using Postscript files); id. at 8 (stating
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`that Apogee teaches converting incoming files to PDF before OPI image
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`exchange, such that Apogee “does OPI image exchange” on PDF files). But
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`Petitioner does not explain how the knowledge of two alternative means of
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`performing OPI image exchange teaches or fairly suggests claim 4. Claim 4
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`does not require OPI image exchange using PDF files at all; nor does it
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`merely require OPI image exchange using Postscript files, but rather OPI
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`image exchange using Postscript files, and then conversion of the resulting
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`fat Postscript file to PDF.
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`Finally, Petitioner contends that we “mistakenly required Apogee’s
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`alleged teachings to be bodily incorporated into proposed grounds, which is
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`contrary to well-established Federal Circuit law.” Reh’g Req. 14–15
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`(citations omitted). However, Petitioner does not explain the basis for this
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`contention, or state where in our decision we allegedly required “Apogee’s
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`alleged teachings to be bodily incorporated into proposed grounds.” For this
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`reason, Petitioner’s argument is unpersuasive.
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`11
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`Petitioners' Exhibit 1013, pg. 11
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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 Petitioner’s Request for Rehearing is granted-
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`in-part for the limited purpose of elaborating on our determination not to
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`institute inter partes review of claims 4–9 based on the Dorfman grounds.
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`Petitioner’s Request for Rehearing is denied in all other respects.
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`12
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`PETITIONER:
`
`Scott McKeown
`cpdocketmckeown@oblon.com
`
`Michael L. Kiklis
`cpdocketkiklis@oblon.com
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`
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`PATENT OWNER:
`
`W. Edward Ramage
`eramage@bakerdonelson.com
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`
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`Petitioners' Exhibit 1013, pg. 12