THE UNITED STATES PATENT & 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- _____
`Patent U.S. 6,611,349
`______________________
`
`
`
`
`
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW OF
`CLAIMS 4-9 OF U.S. PATENT NO. 6,611,349
`UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
`
`
`

`
`Inter Partes Review of U.S. Patent No. 6,611,349
`
`TABLE OF CONTENTS
`
`I.
`INTRODUCTION ........................................................................................... 1
`II. MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8 ..................... 1
`A.
`Real Party-In-Interest ........................................................................... 1
`B.
`Related Matters ..................................................................................... 1
`1.
`Related Litigation ....................................................................... 1
`2.
`Related PTAB Proceedings ........................................................ 2
`Lead and Back-Up Counsel .................................................................. 2
`C.
`Service Information .............................................................................. 3
`D.
`III. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED .................... 3
`A. Grounds for Standing ........................................................................... 3
`B.
`Identification of Challenge ................................................................... 4
`IV. Background OF THE ‘349 PATENT .............................................................. 8
`A.
`The ‘349 Patent Is Directed To A Basic And Obvious Printing
`Workflow .............................................................................................. 8
`Prosecution History of the ‘349 Patent .............................................. 15
`B.
`PIA Files IPR2013-00474 .................................................................. 16
`C.
`D. Kodak Files IPR2014-00791 .............................................................. 18
`CLAIM CONSTRUCTION .......................................................................... 22
`A.
`“plate-ready file … being provided in real time …” ......................... 23
`B.
`“plate-ready file” ................................................................................ 24
`C.
`“thin PostScript file” .......................................................................... 26
`D.
`“fat PostScript file” ............................................................................ 26
`VI. THE LEVEL OF ORDINARY SKILL IN THE ART .................................. 27
`VII. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ‘349 PATENT IS UNPATENTABLE ............................. 27
`
`V.
`
`
`
`
`i
`
`

`
`Inter Partes Review of U.S. Patent No. 6,611,349
`
`A.
`
`B.
`
`C.
`D.
`
`Claims 4-5 and 7-9 are Rendered Obvious by FullPress and
`WebNative .......................................................................................... 27
`Claims 6 is Rendered Obvious by FullPress, WebNative, and
`Andersson ........................................................................................... 48
`Claims 4-7 are Rendered Obvious by I-Media and Andersson ......... 49
`Claims 8 and 9 are Rendered Obvious by I-Media, Andersson, and
`Seybold ............................................................................................... 59
`VIII. CONCLUSION .............................................................................................. 60
`
`
`
`
`
`
`ii
`
`

`
`Inter Partes Review of U.S. Patent No. 6,611,349
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`EXHIBIT LIST
`
`U.S. Patent No. 6,611,349 to Vogt et al.
`
`Listing of pending litigations involving U.S. Patent No. 6,611,349
`
`Excerpts from the prosecution history of U.S. Patent No. 6,611,349
`
`Decision Denying Petition to Institute in IPR2013-00474
`
`Decision Instituting IPR in IPR2014-00791
`
`Decision Instituting IPR in IPR2014-00790
`
`Adobe Systems in the Newspaper Industry
`
`PDF Printing and Publishing, The Next Revolution After Gutenberg
`
`by Mattias Andersson et al.
`
`Apple OPI White Paper
`
`Computer-to-Plate: Automating the Printing Industry by Richard M.
`
`Adams II and Frank J. Romano
`
`1011
`
`Complaint filed in CTP Innovations, LLC v. Command Web Offset
`
`Company, Inc.
`
`1012
`
`IFRA Special Report, Picture Replacement Techniques for
`
`Newspapers
`
`Rehearing decision in IPR2014-00791
`
`Preparing Adobe PDF files for high-resolution printing
`
`Teaching Acrobat New Tricks
`
`iii
`
`1013
`
`1014
`
`1015
`
`
`
`
`

`
`Inter Partes Review of U.S. Patent No. 6,611,349
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`PDF for Prepress Workflow and Document Delivery
`
`The Future of Production Workflows
`
`The Seybold Report on Publishing Systems, Volume 26, Number 11,
`
`February 24, 1997
`
`I-Media by Jorg Zedler and Marwan Ramadan
`
`Xinet FullPress Brochure
`
`Xinet WebNative: Web File Sharing and Digital Archive Retrieval
`
`Envision tomorrow: PDF, the next generation of publishing
`
`workflows
`
`1023
`
`Leading Electronic Prepress and Computer Companies Pledge
`
`Support for Adobe OPEN Workflow Automation Software
`
`Network World, April 1996
`
`Letter from Samuel F. Miller to Eric W. Schweibenz
`
`Declaration of Michael Jahn
`
`Declaration of Jamie Marks
`
`Declaration of Steven Fruhwirth
`
`Declaration of Jodi L. Gregory
`
`iv
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`
`
`
`

`
`Inter Partes Review of U.S. Patent No. 6,611,349
`
`I.
`
`
`INTRODUCTION
`
`Command Web Offset Company, Inc.; Worzalla Publishing Company;
`
`Sandy Alexander, Inc.; Publication Printers Corp.; Specialty Promotions, Inc.,
`
`d/b/a Specialty Print Communications; and Trend Offset Printing Services Inc.
`
`(collectively, “Petitioners”) respectfully request inter partes review (“IPR”) for
`
`claims 4-9 of U.S. Patent No. 6,611,349 (“the ‘349 patent,” attached hereto as Ex.
`
`1001) in accordance with 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42.100 et seq.
`
`II. MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8
`A. Real Party-In-Interest
`
`Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioners certify that Command Web
`
`Offset Company, Inc.; Worzalla Publishing Company; Sandy Alexander, Inc.;
`
`Publication Printers Corp.; Specialty Promotions, Inc., d/b/a Specialty Print
`
`Communications; and Trend Offset Printing Services Inc. are the real parties-in-
`
`interest.
`
`B. Related Matters
`
`1.
`
`Related Litigation
`
`Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioners state that the ‘349 patent is
`
`asserted in dozens of pending litigations, which have been listed in Ex. 1002.
`
`Patent Owner has sued numerous printing service providers for providing printing
`
`and publishing service over the internet. These litigations remain pending as part
`
`
`
`
`1
`
`

`
`Inter Partes Review of U.S. Patent No. 6,611,349
`
`of a multi-district litigation in the United States District Court for the District of
`
`Maryland.
`
`2.
`
`Related PTAB Proceedings
`
`As explained in greater detail in section IV.C, the Printing Industries of
`
`America (“PIA”) previously filed a petition for IPR of the ‘349 patent (see
`
`IPR2013-00474 (“the ‘474 IPR”)), which was denied by the PTAB. See Ex. 1004.
`
`Similarly, as explained in section IV.D, Eastman Kodak Co., Agfa Corp.,
`
`Esko Software BVBA, and Heidelberg, USA (collectively, “Kodak”) filed two
`
`petitions for IPR against the claims of the ‘349 patent (IPR2014-00790 and
`
`IPR2014-00791). Kodak also filed two petitions for IPR against U.S. Patent No.
`
`6,738,155 (“the ‘155 patent”), which shares a common written description with the
`
`‘349 Patent. See IPR2014-00788 and IPR2014-00789.
`
`In IPR2014-00791 (“the ‘791 IPR”), Kodak challenged claims 4-14 of the
`
`‘349 patent. The Board instituted IPR on claims 10-14, but denied institution of
`
`claims 4-9. See Ex. 1005. In IPR2014-00790 (“the ‘790 IPR”), Kodak challenged
`
`claims 1-3 of the ‘349 patent. The Board instituted on all challenged claims in the
`
`‘790 IPR. See Ex. 1006.
`
`C. Lead and Back-Up Counsel
`
`Pursuant to 37 C.F.R. § 42.8(b)(3), Petitioners provide the following
`
`designation of counsel: Lead counsel is Scott A. McKeown (Reg. No. 42,866) and
`
`
`
`
`2
`
`

`
`Inter Partes Review of U.S. Patent No. 6,611,349
`
`back-up counsel is Christopher Ricciuti (Reg. No. 65,549).
`
`D. Service Information
`
`Pursuant to 37 C.F.R. § 42.8(b)(4), papers concerning this matter should be
`
`served on the following.
`
`Address:
`
`Scott McKeown, Oblon
`
`1940 Duke Street, Alexandria, VA 22314
`
`Email:
`
`cpdocketmckeown@oblon.com and
`
`
`
`cpdocketricciuti@oblon.com
`
`Telephone: (703) 412-6297
`
`Fax:
`
`
`
`(703) 413-2220
`
`III. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
`Pursuant to 37 C.F.R. § 42.22(a)(1) and §§ 42.104(b) and (b)(1) Petitioners
`
`challenge claims 4-9 of the ‘349 patent.
`
`A. Grounds for Standing
`
`Pursuant to 37 C.F.R. § 42.104(a), Petitioners hereby certify that the ‘349
`
`patent is available for inter partes review and that the Petitioners are not barred or
`
`estopped from requesting inter partes review challenging the claims of the ‘349
`
`patent on the grounds identified herein. Although petitions for IPR challenging
`
`claims 4-9 of the ‘349 patent were previously filed by PIA and Kodak, the
`
`prohibitions of 35 U.S.C. §§ 315 (a)-(b) are inapplicable.
`
`
`
`
`3
`
`

`
`Inter Partes Review of U.S. Patent No. 6,611,349
`
`Petitioners did not participate in those filing efforts in any way, were not the
`
`real parties-in-interests or privies to PIA or Kodak, and Petitioners were served
`
`with infringement complaints within the last 12 months.
`
`B.
`
`Identification of Challenge
`
`Pursuant to 37 C.F.R. §42.104(b) and (b)(1), Petitioners request inter partes
`
`review of claims 4-9 of the ‘349 patent, and that the PTAB determine the same to
`
`be unpatentable. Pursuant to 37 C.F.R. § 42.204(b)(2), inter partes review of the
`
`‘349 patent is requested in view of the following references, each of which is prior
`
`art to the ‘349 patent under 35 U.S.C. §§ 102(a), (b), and/or (e):
`
`a. The Xinet FullPress® Brochure (“FullPress,” Ex. 1020) was
`
`published by Xinet, Inc. and bears a copyright date of 1997. The FullPress OPI
`
`server is discussed throughout the specification of the ‘349 patent as being a
`
`commercially available prepress system. See Ex. 1001 at 5:53-55, 5:62-64, 6:38-
`
`40, 10:33-35. Despite the preferred embodiment of the ‘349 patent operating using
`
`FullPress software (see, e.g., Ex. 1001 at 5:62-64), the patentee did not submit any
`
`description of Xinet’s products to the Office during prosecution of the ‘349 patent.
`
`FullPress is available as prior art under pre-AIA 35 U.S.C. § 102(b) as it was
`
`publicly disseminated by April 1997. Petitioners provide the declarations of Jamie
`
`Marks (Ex. 1027) and Steven Fruhwirth (Ex. 1028) to corroborate the public
`
`accessibility of FullPress. To date, the teachings of FullPress have not been
`
`
`
`
`4
`
`

`
`Inter Partes Review of U.S. Patent No. 6,611,349
`
`considered by the Office.
`
`b. Xinet WebNativeTM: Web File Sharing and Digital Archive Retrieval
`
`(“WebNative,” Ex. 1021) was published by Xinet, Inc. and bears a copyright date
`
`of 1998. The WebNative companion to the FullPress OPI server is described in the
`
`specification as a commercially available “database management software tool[].”
`
`Ex. 1001 at 6:38-40. Again, the patentee did not submit any description of this
`
`product to the Office during prosecution of the ‘349 patent. WebNative is
`
`available as prior art under pre-AIA 35 U.S.C. § 102(a) as it was publicly
`
`disseminated by September 1998, at the latest. Petitioners provide the declarations
`
`of Jamie Marks (Ex. 1027) and Steven Fruhwirth (Ex. 1028) to corroborate the
`
`public accessibility of WebNative by September 1998, at the latest. To date, the
`
`teachings of WebNative have not been considered by the Office.
`
`c. PDF Printing and Publishing, The Next Revolution After Gutenberg,
`
`by Mattias Andersson et al. (“Andersson,” Ex. 1008), Micro Publishing Press, was
`
`published in March 1997, which is prior to the earliest filing date claimed by the
`
`‘349 patent (July 30, 1999). Andersson is therefore available as prior art under
`
`pre-AIA 35 U.S.C. § 102(b). Andersson was not cited during the original
`
`prosecution of the ‘349 patent, but was applied by PIA in the ‘474 IPR. As
`
`explained below in Section IV.C., Andersson was cited in the ‘474 IPR without
`
`any explanation as to how the cited portions of the reference correspond to the
`
`
`
`
`5
`
`

`
`Inter Partes Review of U.S. Patent No. 6,611,349
`
`claim limitations in question. In addition to presenting a combination with other
`
`references not previously considered by the PTAB, Petitioners also present new
`
`supporting evidence and an explanation of Andersson that was not before the
`
`office by virtue of the ‘474 IPR and that renders the challenged claims
`
`unpatentable in combination with the other references applied herein.
`
`Andersson was not asserted in the ‘791 IPR (filed by Kodak) challenging
`
`claims 4-14 of the ‘349 patent. Andersson was asserted against claims 1-3 of the
`
`‘349 patent in the ‘790 IPR. See Ex. 1006 at 10, 25. As explained below in
`
`Section IV.D, Petitioners present Andersson in a combination with other references
`
`not previously considered by the PTAB, along with an explanation of Andersson
`
`that was not before the office by virtue of the previous petitions filed by Kodak.
`
`d. Volume 26, Number 11 of the Seybold Report on Publishing Systems
`
`(“Seybold”) was published February 24, 1997, which is prior to the earliest filing
`
`date claimed by the ‘349 patent (July 30, 1999). Seybold was also catalogued and
`
`publicly available in the University of Central Missouri’s library by March, 1997.
`
`See Ex. 1029 at ¶¶ 9-11. Seybold is therefore available as prior art under pre-AIA
`
`35 U.S.C. § 102(b). Seybold was not cited during the original prosecution of the
`
`‘349 patent, nor the ‘474 or ‘791 IPRs. The Seybold Report was a paid-for
`
`newsletter founded in the 1970s by John Seybold, delivering information regarding
`
`graphic arts and printing technologies. It was published twice a month, with 22
`
`
`
`
`6
`
`

`
`Inter Partes Review of U.S. Patent No. 6,611,349
`
`issues a year. See Ex. 1026 at ¶ 140.
`
`e. I-Media: An Integrated Media Server and Media Database as a Basic
`
`Component of a Cross Media Publishing System (“I-Media,” Ex. 1019) was
`
`published in Computers & Graphics Volume 21, Issue 6, Pages 693-702 (of 689-
`
`859), November-December 1997, Graphics in Electronic Printing and Publishing
`
`edition. I-Media was catalogued and available in the Engineering Societies
`
`Library on or immediately after February 10, 1998. See Ex. 1029 at ¶¶ 13-16. I-
`
`Media is therefore available as prior art under pre-AIA 35 U.S.C. § 102(b). I-
`
`Media was not cited during the original prosecution of the ‘349 patent, nor the ‘474
`
`or ‘791 IPRs.
`
`
`
`Petitioner requests cancellation of challenged claims 4-9 under the following
`
`statutory grounds:
`
`A. Claims 4-5 and 7-9 are rendered obvious by FullPress in view of
`
`WebNative.
`
`B. Claim 6 is rendered obvious by FullPress in view of WebNative and
`
`further in view of Andersson.
`
`C. Claims 4-7 are rendered obvious by I-Media in view of Andersson.
`
`D. Claims 8-9 are rendered obvious by I-Media in view of Andersson
`
`and further in view of Seybold.
`
`Section VII demonstrates, for each of the statutory grounds, that there is a
`
`
`
`
`7
`
`

`
`Inter Partes Review of U.S. Patent No. 6,611,349
`
`reasonable likelihood that the Petitioners will prevail. See 35 U.S.C. § 314(a).
`
`Additional explanation and support for each ground of the rejection is set forth in
`
`the Expert Declaration of Michael Jahn (Ex. 1026).
`
`IV. BACKGROUND OF THE ‘349 PATENT
`A. The ‘349 Patent Is Directed To A Basic And Obvious Printing
`Workflow
`
`
`
`The ‘349 patent relates to a system and method for providing printing and
`
`publishing services over a communication network, such as the internet. See, e.g.,
`
`Ex. 1001 at 1:7-10. More particularly, the ‘349 patent claims the basic and widely
`
`published idea of using a communication network to connect the creative or front-
`
`end of the printing and publishing industry (e.g., graphic artists, publishers, and
`
`those creating page designs) with the services end (e.g., service bureaus and
`
`printing facilities that actually prepare for printing, and print, the designs created
`
`by the front-end users). See Ex. 1026 at ¶ 25. In fact, claims 4-9 of the ‘349
`
`patent, challenged herein, recite nothing more than the age-old abstract concept of
`
`a printing workflow, with an instruction to couple the workflow to a
`
`communication network.
`
`
`
`However, by the mid-1990s, and even before, printing workflows were
`
`digitized and integrated with different print-output technologies including
`
`
`
`
`8
`
`

`
`Inter Partes Review of U.S. Patent No. 6,611,349
`
`imagesetting and computer-to-plate technology (CTP1). See Ex. 1010 at 9; Ex.
`
`1008 at 64-77.2 In a system outputting to an imagesetter, bit maps are
`
`communicated to an imager and the imagesetter exposes and marks the film
`
`corresponding to the communicated bitmaps. See Ex. 1009 at 8, 40. The film
`
`generated by the imagesetter can then be turned into a printing plate for use in
`
`offset printing. See Ex. 1026 at ¶¶ 39-41. The use of OPI servers, Workflow
`
`servers, Database Servers, File Management and Image Servers spurred the
`
`digitization of the printing workflow well before the filing of the ‘349 patent. See,
`
`e.g., Ex. 1008 at 73-77; see also Ex. 1026 at ¶¶ 23, 25-27.
`
`
`
`CTP systems were a natural progression of existing computer networks and
`
`digitized workflow. In a CTP system, “publishers provide all editorial and
`
`advertising content in digital form (either on disk or by sending the data over
`
`telephone lines) to printers who, in turn, produce electronic web-off-set printing
`
`plates, eliminating all the traditional intermediate film-preparation stages.” Ex.
`
`1 CTP, or Computer-to-Plate, is not to be confused with the current owner of the
`
`‘349 patent, CTP Innovations, LLC. CTP Innovations, LLC was formed in 2013,
`
`two decades after the first CTP systems were demonstrated in Sept. 1993 (see Ex.
`
`1010 at 6), ostensibly for the sole purpose of asserting patents.
`
`2 Citation to exhibit page numbering is to Petitioners labeling, not original
`
`pagination, unless noted otherwise.
`
`
`
`
`9
`
`

`
`Inter Partes Review of U.S. Patent No. 6,611,349
`
`1010 at 4. Because digital transmission of files is faster than shipping files by
`
`courier, costs less, and can be done any time of day, CTP systems also commonly
`
`employed a digital workflow with data being provided and transferred remotely
`
`and in “real-time” over communications networks. See id. at 14; Ex. 1026 at ¶¶
`
`25-27, 60-63, 112-113. Thus, and directly contrary to the position advocated by
`
`Patent Owner in the filed litigations involving the ‘349 patent, electronic
`
`transmission of data and files used during the printing and publishing workflow
`
`was well-known and commonplace.3 With this background in mind, a more
`
`detailed explanation of the ‘349 patent is provided below.
`
`
`
`According to the ‘349 patent, “[k]ey steps for producing printed materials
`
`using a plate process include (1) preparing copy elements for reproduction [e.g.,
`
`the creative front-end referred to above], (2) prepress production, (3) platemaking,
`
`(4) printing, and (5) binding, finishing and distribution.” Ex. 1001 at 1:12-15.
`
`Claims 4-9 of the ‘349 patent are concerned with steps 1-3, above. In the first step,
`
`the creative or front-end—e.g., a publisher, direct marketer, advertising agency,
`
`newspaper editor, or corporate communication department—uses a desktop
`
`publishing program such as “QuarkXpress” to design pages from image and data
`
`3 See, e.g., Ex. 1011 at ¶¶ 12 (alleging that “[p]rior to the invention claimed in the
`
`‘349 patent” pages to be printed and printing proofs were sent between front-end
`
`users and printing companies via mail or express carrier).
`
`
`
`
`10
`
`

`
`Inter Partes Review of U.S. Patent No. 6,611,349
`
`files. Id. at 1:16-25. As was ubiquitously well-known in the art, the page building
`
`process is enhanced by Open Prepress Interface (OPI) software and servers. OPI
`
`allows the front-end user to perform page building operations using low-resolution
`
`images rather than the high-resolution images that will ultimately be used for
`
`printing. Due to their large size, high-resolution images were difficult to transfer
`
`over the network communication links commonly used prior to the filing of the
`
`‘349 patent. See Ex. 1008 at 44-45; Ex. 1026 at ¶¶ 25-27. Thus, as would be
`
`expected by one of ordinary skill in the art, the system described by the ‘349 patent
`
`also utilizes an OPI server/process to facilitate page building. See, e.g., Ex. 1001
`
`at 5:59-6:3, 7:38-51.
`
`
`
`As shown in figure below, the OPI process begins by scanning and saving
`
`high-resolution images to the OPI server. See Ex. 1012 at 5. The OPI server then
`
`creates a low-resolution image corresponding to the scanned high-resolution
`
`image. Id. at 6. Claim 4 of the ‘349 patent calls this the creation of a “thin”
`
`PostScript file. The front-end user (labeled “Page Make-Up” in figure 1) then
`
`accesses the OPI server’s file database to select and download the low-resolution
`
`images that will be used during the page design process. Id. Once the page design
`
`is complete, the front-end user transfers its design with embedded OPI comments
`
`to the server. Id. The OPI comments allow the server to locate the high-resolution
`
`images corresponding to the OPI comments and place the high-resolution images
`
`
`
`
`11
`
`

`
`Inter Partes Review of U.S. Patent No. 6,611,349
`
`into the design before it is output to the desired printing device. Id. at 7. Claim 4
`
`of the ‘349 patent refers to the page design with swapped high-resolution images
`
`for the low-resolution images a “fat” PostScript file.
`
`
`The ubiquitously well-known OPI process is also summarized in Apple OPI
`
`
`
`White Paper (Ex. 1009). See Ex. 1009 at Fig. 2d. First, a
`
`thin PostScript file is created by designing a page with low-
`
`resolution preview images that are replaced with OPI
`
`comments. Id. at 12. The OPI Comments allow the OPI
`
`server to locate and replace the low-resolution images with
`
`the appropriate and corresponding high-resolution images
`
`before printing, thereby creating a fat PostScript file. Id.
`
`(“The final part of the swapping technology is the
`
`mechanism by which the server software sends the high-
`
`resolution files at print time.”)
`
`Next, in step two of the general printing process
`
`12
`
`
`
`
`
`
`

`
`Inter Partes Review of U.S. Patent No. 6,611,349
`
`described and claimed by the ‘349 patent—i.e., prepress production—the pages
`
`created by the front-end user are “transformed into a medium that is reproducible
`
`for printing.” Ex. 1001 at 1:26-28. This involves, for example, “image color
`
`correction, file conversion, RIPing, trapping, proofing, imposition, filmsetting, and
`
`platesetting,” (id. at 1:29-32), as well as the OPI process described above. Again,
`
`each of these processes, which are used to produce a “CTP file” or “plate-ready
`
`file” as described by the ‘349 patent, were well-known and in wide-spread use
`
`prior to its filing date. See id. at 1:26-44; Ex. 1026 at ¶¶ 31-41.
`
`
`
`Lastly, in step three, a printing plate is made at a printing facility. This is
`
`done by “RIPing” the page layout file. See Ex. 1026 at ¶¶ 36-41. “RIP,” which
`
`stands for raster image processor, converts the page layout file to a bitmap. See
`
`Ex. 1001 at 7:57-59. “A bitmap is a digitized collection of binary pixel
`
`information that gives an output device, such [as a laser printer, imagesetter, or
`
`platesetter] the ability to image data to paper, film, or plate.” Id. at 7:59-62. Thus,
`
`in this final step, the plate-ready-file is used to produce a printing plate. See id. at
`
`1:45-51.
`
`
`
`Figure 1 of the ‘349 patent, reproduced below, depicts an embodiment of the
`
`patent wherein “system components [that execute the above functionality] are
`
`installed at an end user facility, a printing company facility, and a central service
`
`facility.” Id. at 2:33-34. It should be noted, however, that independent claim 4 of
`
`
`
`
`13
`
`

`
`Inter Partes Review of U.S. Patent No. 6,611,349
`
`the ‘349 patent does not specify any particular location for the performance of the
`
`claimed method steps.
`
`
`The end user facility 300 “provides page building operations allowing the
`
`
`
`design and construction of pages from images, text, and data available via said
`
`communication network.” Id. at 2:55-58. In other words, the end user facility 300
`
`performs the first step described above (e.g., a user sitting at a computer using
`
`software such as QuarkXPress). “The central service facility [105] provides
`
`storage, file processing, remote access, and content management operations. File
`
`processing operations include generating a plate-ready file from pages designed at
`
`said end user facility.” Id. at 2:58-62. In other words, the central service facility
`
`performs step two described above—prepress production. And, lastly, “[t]he
`
`printing company facility [400] provides printing operations for producing a
`
`printing plate from said plate-ready file,” (id. at 2:64-65), which is nothing more
`
`than step three, or “platemaking,” as described above. Thus, the ‘349 patent
`
`
`
`
`14
`
`

`
`Inter Partes Review of U.S. Patent No. 6,611,349
`
`describes and claims nothing more than a digital workflow between networked
`
`computers that was known, extensively studied, and widely implemented well
`
`before the filing date of the ‘349 patent.
`
`B. Prosecution History of the ‘349 Patent
`
`
`
`On July 30, 1999, Applicants filed Application Serial No. 09/365,365 (“the
`
`‘365 application), which issued as the ‘349 patent on August 26, 2003. In a first
`
`Office Action dated January 29, 2003, claims 1, 3, and 7 were rejected as
`
`anticipated by U.S. Patent No. 6,119,133 to Nusbickel et al. (“Nusbickel”); claims
`
`5, 8, and 9 were rejected as obvious over Nusbickel in view of the knowledge of
`
`one of ordinary skill in the art; claims 2, 4, and 6 were objected to as being
`
`dependent upon a rejected base claim; and claims 10-20 were deemed allowable.
`
`See Ex. 1003 at 3-7.
`
`
`
`The Examiner indicated that claims 10-15 (which issued as claims 4-9 of the
`
`‘349 patent) were allowable because
`
`the prior art does not teach or suggest … ‘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 file from the fat PostScript file
`and converting said PDF file to a file in plate ready format.
`Id. at 6. However, as explained below, the creation of thin and fat PostScript files
`
`represents nothing more than a description of the prior art OPI process explained
`
`
`
`
`15
`
`

`
`Inter Partes Review of U.S. Patent No. 6,611,349
`
`above. Further, creating a PDF file and then RIPping that PDF file to create a
`
`plate-read file again represents nothing more than the standard prepress and
`
`platemaking process used by skilled artisans at the time the ‘349 patent was filed.
`
`A notice of allowability followed. Id. at 24.
`
`C. PIA Files IPR2013-00474
`
`PIA filed a petition to institute IPR against claims 1-14 of the ‘349 patent.
`
`PIA alleged that the challenged claims were either anticipated or rendered obvious
`
`in view of multiple different combinations, by either relying upon U.S. Patent No.
`
`7,242,487 to Lucivero et al. (“Lucivero”) or Nusbickel as primary references. The
`
`following table, reproduced from the PTAB’s decision in IPR2013-00474 (“the
`
`‘474 Decision”), summarizes the grounds raised by PIA.
`
`
`The PTAB denied PIA’s petition to institute IPR because PIA failed to meet
`
`
`
`its burden to affirmatively establish a reasonable likelihood that PIA would prevail
`
`with respect to at least one of the challenged claims. See generally Ex. 1004.
`
`According to the PTAB, PIA treated its petition as a notice pleading, consistently
`
`
`
`
`16
`
`

`
`Inter Partes Review of U.S. Patent No. 6,611,349
`
`failing to “explain how the cited portions [of the applied prior art] correspond to
`
`the limitation[s] for which they are cited.” See Ex. 1004 at 11, 13-16. Other times
`
`PIA cited to portions of the applied prior art without any explanation as to the
`
`relevance of the cited portions. See id. at 16. Due to these noted deficiencies, and
`
`others, the PTAB denied PIA’s petition.
`
`
`
`Petitioners do not repeat and re-allege the conclusory positions taken by PIA
`
`in the ‘474 IPR. Instead, Petitioners rely on FullPress as a primary reference,
`
`which depicts a printing workflow precisely following the workflow recited in
`
`claims 4-9 of the ‘349 patent. Moreover, as discussed above in section IV.A, the
`
`functional limitations recited by the claims of the ‘349 patent describe nothing
`
`more than known page building and prepress procedures. Not only were these
`
`features well-understood by persons of ordinary skill in the art (see Ex. 1026 at ¶¶
`
`54-57), but they were well documented in a variety of printing and publishing
`
`textbooks and technical literatures, such as Andersson and Computer-to-Plate:
`
`Automating the Printing Industry by Richard M. Adams II and Frank J. Romano
`
`(see Ex. 1010) discussed herein and in the ‘474 IPR.
`
`
`
`Finally, Petitioners have included the declaration of Michael Jahn setting
`
`forth precisely what one of ordinary skill would have known and understood from
`
`the applied references, as well as how and why one of ordinary skill would have
`
`combined the references as claimed, items that PIA failed to explain and, therefore,
`
`
`
`
`17
`
`

`
`Inter Partes Review of U.S. Patent No. 6,611,349
`
`the PTAB did not consider in the ‘474 IPR. See Ex. 1004 at 16-17. Thus, in
`
`addition to presenting a combination of references not previously considered by the
`
`PTAB, Petitioners also present new supporting evidence and an explanation of
`
`Andersson that was never before considered by the PTAB and that shows the
`
`ubiquitous nature of the claimed subject matter.
`
`D. Kodak Files IPR2014-00791
`
`As noted above, Kodak filed two petitions for IPR challenging the claims of
`
`the ‘349 patent. As pertinent to the present petition, in the ‘791 IPR, Kodak
`
`challenged claims 4-14. The Board instituted IPR on claims 10-14, but denied
`
`institution against claims 4-9. See Ex. 1005 at 18-19.
`
`Specifically, claim 4 recites a “method comprising the steps of, inter alia,
`
`(1) creating a thin Postscript file from the user-designed page layout; (2)
`
`converting the thin Postscript file to a fat Postscript file; and (3) converting the fat
`
`Postscript file to a PDF file.” Id. at 18; Ex. 1001 at 22:36-48. Steps (1) and (2)
`
`recite nothing more than the generic OPI image swapping process using PostScript
`
`files, and step (3) converts the fat PostScript file to a PDF. As explained above,
`
`and as recognized by the Board in the ‘791 IPR, OPI image exchange was well-
`
`known in the art. See Ex. 1013 at 11 (“There is no dispute that OPI, using either
`
`Postscript format or PDF format, was known.”) However, in view of Kodak’s
`
`evidence that one of ordinary skill generally wished to normalize PostScript files
`
`
`
`
`18
`
`

`
`Inter Partes Review of U.S. Patent No. 6,611,349
`
`into PDF as part of the prepress workflow, the Board found that Kodak’s prior art
`
`(Apogee specifically) would “create a PDF from a thin Postscript file and perform
`
`OPI image exchange on the resulting PDF file; no fat Postscript file would be
`
`created, and therefore there would be no fat Postscript file to convert to PDF.” Ex.
`
`1005 at 19. In view of this finding, the Board denied institution of Kodak’s first
`
`ground of unpatentability challenging claims 4-9.
`
`Similarly, the Board rejected Kodak’s arguments regarding the
`
`unpatentability of claims 4-9 in view of Dorfman (International