BAKER DONELSON CENTER, SUITE 800
`211 COMMERCE STREET
`NASHVILLE, TENNESSEE 37201
`
`MAILING ADDRESS:
`P.O. BOX 190613
`NASHVILLE, TENNESSEE 37219
`
`PHONE: 615.726.5600
`FAX:
`615.726.0464
`
`www.bakerdonelson.com
`
`
`
`July 31, 2015
`
`
`
`SAMUEL F. MILLER, SHAREHOLDER
`Direct Dial: 615.726.5594
`Direct Fax: 615.726.5594
`E-Mail Address: smiller@bakerdonelson.com
`
`
`
`
`
`
`Eric W. Schweibenz
`Oblon, McClelland, Maier & Neustadt, L.L.P.
`1940 Duke Street
`Alexandria, VA 22314
`Email: eschweibenz@oblon.com
`
`
`
`
`
`
`
`
`
`
`VIA EMAIL
`
`Re: CTP Innovations, LLC, Patent Litigation Action
`
`Case No. 14-md-02581-MJG (Lead Action)
`
`
`
`
`
`CTP Innovations, LLC, v. Command Web Offset Co. Inc.
`Maryland Case No. 1:15-cv-1470-MJG
`
`
`
`CTP Innovations, LLC, v. Sandy Alexander, Inc.
`Maryland Case No. 1:15-cv-1471-MJG
`
`
`
`CTP Innovations, LLC, v. Worzalla Publishing Co.
`Maryland Case No. 1:15-cv-1646-MJG
`
`
`
`
`
`
`
`
`
`Dear Mr. Schweibenz:
`
`Per our July 9, 2015 letter, the following is an additional response to your letters dated
`June 29, 2015 and July 8, 2015.
`
`CTP Innovations, LLC and my firm take allegations of Rule 11 misconduct very
`seriously. We intend to fully explore the items raised in your letters. Please be advised that
`we will very likely file a counter-motion for Rule 11 sanctions against any defendant and
`attorney who improperly threaten to and/or file such a motion against CTP and/or its counsel.
`
`The accusations in your letters are baseless. CTP’s cases are nothing like the View
`Engineering, Inc. v. Robotic Systems, Inc. case you cite. In View Engineering, the sanctioned
`party admitted that it had no factual basis for the counterclaims and that the only basis for
`
` A
`
` LCC 2901837 v1
`2926018-000123 07/30/2015
`
`A L A B A M A • F L O R I D A • G E O R G I A • L O U I S I A N A • M I S S I S S I P P I • T E N N E S S E E • T E X A S • W A S H I N G T ON , D . C .
`
`Petitioners' Exhibit 1025, pg. 1
`
`

`
`July 31, 2015
`Page 2
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`
`
`filing that the counter-claims in that lawsuit was a Senior Vice–President’s belief that the
`devices-at-issue “probably infringed” the patents-at-issue.
`
`In the CTP cases, CTP and its counsel analyzed the ‘349 patent, the prosecution
`history of the ‘349 patent and considered claim constructions. Evidence of previous
`constructions of the claims is publicly available from CTP’s now-dismissed cases filed in the
`Eastern District of Texas and other courts, as well as in the preliminary response to the inter
`partes review petition filed by your firm. You are well-aware of those publicly stated
`positions. We also had a patent attorney with over two decades of patent prosecution and
`litigation experience conduct an element-by-element analysis of publicly available
`information regarding your clients in coordination with a third-party consulting expert with
`decades of experience in the printing industry. All of that analysis and communications with
`the consulting expert are protected by the work product doctrine. CTP has not waived its
`rights in that regard and, therefore, we will not provide more information to you regarding the
`analysis and protected communications. Our purpose for providing this background is to
`apprise you of the evidence you will be facing should you continue to make frivolous and bad
`faith allegations of inadequate pre-filing investigation. If you file a Rule 11 motion based
`upon your frivolous and bad faith allegations of inadequate pre-filing investigation, our client
`will avail itself of the remedies provided for under Rule 11 and applicable law.
`
`Noticeably absent from your letter is a definitive statement that your clients have not
`used a work flow that included low resolution “for placement only” type files that are
`swapped for high resolution files. Indeed, your use of “several years (if ever)” does not
`definitively state whether such a workflow was used at any point during the six years prior to
`the date of filing of lawsuits against each of your clients. If it is your position that the accused
`workflow has not been used in the six years preceding the filing of the lawsuits, we demand
`that you provide us written confirmation from your clients of that position.
`
`Notwithstanding the foregoing, we previously agreed to provide additional limited
`information regarding our infringement positions and are doing so through this letter. As for
`your demand for full infringement contentions and claim construction positions, your request
`is declined. Your frivolous allegations are not a basis to leap-frog or dispense with the time
`for such actions as provided in Local Rules 804 and 805. Accordingly, we will provide to you
`disclosures and claim construction positions as required at the dates set forth in Local Rules
`804 and 805.
`
`From your letter, it appears that your clients do not contest that they (1) provide
`remote access to imaging files for searching and retrieving images used in the design of a
`page layout by a remote user and (2) convert PDF files to a file in a plate ready format.
`Therefore, the following information pertains only to the publicly available pre-discovery
`examples, not all evidence, of your clients’ use of post-script and low-resolution/high-
`resolution image swapping:
`
`Command Web Offset: Contrary to your assertions, it appears that Command
`1.
`Web does in fact practice elements b-d of claim 4 of the ‘349 patent. According to
`
`Petitioners' Exhibit 1025, pg. 2
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`

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`July 31, 2015
`Page 3
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`
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`http://www.commandweb.com/history.htm, Command Web Offset owns and operates SCI
`Strategic Content Imaging. On Command Web Offset’s website, it specifically references the
`ability to submit PostScript files (see http://www.commandweb.com/preflight.htm) and
`PostScript
`files “suitable
`for SCI’s workflow”
`(see http://www.commandweb.com/
`images/ps_pdf.pdf). Moreover, Command Web utilizes and accepts files in QuarkXpress and
` See https://www.
`InDesign, both of which have PostScript and OPI capabilities.
`commandweb.com/Tips.htm.
` On http://www.commandweb.com
`/images/ps_pdf.pdf,
`Command Web references the ability to use OPI in the workflow if “an OPI workflow has
`been discussed in advance.” OPI is explained in detail at Open Prepress Interface (OPI)
`Specification - Version 2.0, Technical Note #5660, (19 January 2000). Web Command
` See
`expressly
`references
`the ability
`to
`link
`images
`for placement purposes.
`https://www.commandweb.com/Tips.htm. Finally, Command Web’s website indicates that
`Command Web uses Preps Imposition Software, which supports PDF and postscript file
`formats. See http://www.commandweb.com/capabilities.htm#I. Further, Command Web
`provides “Remote/Soft Proofing.” Accordingly, it is reasonable to believe that Command
`Web converts the fat postscript file to PDF. This is further confirmed by Command Web’s
`failure to contest the final element of claim 4 of the ‘349 patent, which necessarily means that
`postscript files are converted to PDF form prior to conversion to a file in a plate ready format.
`
`Sandy Alexander: Also contrary to your assertions, it appears that Sandy
`2.
`Alexander does in fact practice elements b-d of claim 4 of the ‘349 patent. According to its
`June
`2015
`equipment
`list
`(available
`at
`http://sandyinc.com/wp-content/uploads/
`2015/06/EQUIPMENT8.pdf), Sandy uses EskoArtwork Systems Nexus Processors & Rips
`(used with prepress) and Apple Mac computers with EskoArtwork System apps & tools.
`According
`to
`the
`Esko Nexus
`10.1 Reference Manual
`(available
`at
`http://www.esko.com/en/HelpDocuments?language=en-us&productname=nexus&version
`name=10.1&docname=userguide&filename=Manual_Nexus101v02.pdf), Esko’s Nexus is a
`comprehensive workflow management system that automates the pre-press production
`workflow in commercial printing as well as packaging and labeling environments. Id. at 13.
`Nexus handles PostScript files. Id. Esko provides specific instructions for taking in postscript
`files with low resolution images. Id. at 199-200. Further, it is reasonable to believe that
`Sandy is/was providing its customers with low resolution images in lieu of high resolution
`images based on its statements that it serves as a digital repository for its clients’ “high
` See https://web.archive.org/web/20071030162142/http://www.sandy
`resolution
`images.
`inc.com/servicecenter/products_services.html?products_services_item=51147&db_item=listit
`em (“Our pre-press department serves as a digital repository for our clients' high-resolution
`images. Because of our extensive experience in the digital manipulation of such images, our
`pre-press area is the ideal location for leveraging high-end graphic resources into a wide
`variety of new media formats.”) Moreover, again according to the Esko Nexus 10.1
`Reference Manual, postscript files with low resolution data may be parsed to extract the data
`that would lead to replacing the low resolution data with high resolution data prior to
`importing into Nexus. See pp. 199-200. Postscript files with low resolution images also may
`be submitted directly to Nexus with OPI links that will allow Nexus to perform an “OPI
`swap” as part of the prepress workflow. Id. at 204. This is consistent with Sandy’s
`statements that it serves as a repository for its clients’ high resolution images. See
`
`Petitioners' Exhibit 1025, pg. 3
`
`

`
`July 31, 2015
`Page 4
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`
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`https://web.archive.org/web/20071030162142/http://www.sandyinc.com/servicecenter/produc
`ts_services.html?products_services_item=51147&db_item=listitem.
` The Nexus manual
`expressly discusses “OPI Generation” that allows for the generation of “low resolution images
`from high resolution images, e.g. for use in a page layout environment” and the swapping of
`the low resolution images for high resolution images. Id. at 266. According to the Esko
`Nexus 10.1 Reference Manual Nexus has preset workflows that create a PDF from a
`postscript file. Id. at 96. Nexus distills postscript files to portable document (PDF) files as
`part of a prepress workflow. Id. at 369-370. This is further confirmed by Sandy Alexander’s
`failure to contest the final element of claim 4 of the ‘349 patent, which necessarily means that
`postscript files are converted to PDF form prior to conversation to a file in a plate ready
`format.
`
`Worzalla: It appears reasonably certain that Worzalla practices elements b-d of
`3.
`claim 4 of the ‘349 patent. Worzalla accepts both QuarkXpress and InDesign format files.
`See http://www.worzalla.com/documents/WPCOffsetSpecifications.pdf.
` Both of
`these
`applications allow for output in postscript format. Further, both of these applications permit
`the use of OPI in connection with files created through the applications. Therefore, it is
`reasonable to believe that the references, to the extent output of the applications are in
`postscript, are used to create the thin/fat postscript swap while moving through Worzalla’s
`workflow. Worzalla’s website suggests that it uses Kodak’s Insite prepress portal for online
`proofing. http://www.worzalla.com/customers/proofing.html. Kodak’s Insite prepress portal
`is PDF-based and, therefore, it is reasonable to believe that any postscript files that proceed
`through Worzalla’s workflow are converted to PDF format. Similar to Command Web and
`Sandy Alexander, your client’s admission that the final element is met appears to confirm that
`such conversion to PDF occurs.
`
`Notwithstanding the foregoing, if your clients' workflows currently and for the six years
`
`preceding the filing of the lawsuits have not involved any postscript files - in essence, all
`submissions from its customers were in PDF format or another application format that was not
`converted to postscript prior to ultimate conversion to PDF format - CTP is willing to consider
`dismissing the cases.
`
`
`We trust that this letter concludes your attempt to attack CTP and its counsel through
`frivolous and baseless claims of inadequate pre-filing investigation. If it does not, we are
`available for a telephone conference at a mutually available time during the next month. Given
`the current limited stay of proceedings, the timing of such conference should not present any
`prejudice or other impact upon your clients. Should we be persuaded by your position through
`the conference and other evidence you provide, we will consider withdrawing the lawsuit(s). We
`also remain willing to otherwise resolve these lawsuits (unless dismissed voluntarily after a
`conference) via reasonable settlement terms.
`
`Finally, you have not responded to our demand regarding spoliation. The webpage
`located at http://www.worzalla.comsolutions/pre-press.html, of which we have a screen capture
`from prior to filing the lawsuit against Worzalla, remains down. Please provide us with
`confirmation by August 5, 2015, that the webpage has been preserved and that you and your
`
`Petitioners' Exhibit 1025, pg. 4
`
`

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`July 31, 2015
`Page 5
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`
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`clients have sent proper preservation notices to all relevant custodians and taken appropriate
`preservation steps. If you do not provide such confirmation, we will raise the matter via motion
`with the District of Maryland and request a forensic expert be given access to your client’s
`electronically stored information for an inspection, at your expense, to ensure that electronically
`stored information has been properly and completely preserved.
`
`Sincerely,
`
`Samuel F. Miller
`
`
`
`cc:
`
`
`
`CTP Innovations, LLC
`Tobin Taylor, Esq.
`Bradley Mullins, Esq.
`
`Petitioners' Exhibit 1025, pg. 5