PTAB

IPR2014-00790

Eastman Kodak Co v. CTP Innovations LLC

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Printing and Publishing System
  • Brief Description: The ’349 patent describes a system and method for providing printing and publishing services over a communication network like the internet. The system connects end-users (e.g., graphic designers) with a central service facility for file processing and a printing company for producing printing plates from a generated “plate-ready file.”

3. Grounds for Unpatentability

Ground 1: Obviousness over Jebens, Apogee, and OPI White Paper - Claims 1-3 are obvious over Jebens in view of Apogee and OPI White Paper.

  • Prior Art Relied Upon: Jebens (Patent 6,321,231), Apogee (a 1998 publication titled The PDF-based Production System), and OPI White Paper (a 1995 Apple publication).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Jebens disclosed the core claimed system: a digital data management system connecting front-end users (designers) to service bureaus and printers over a network. This system utilized an Open Prepress Interface (OPI) process where users download low-resolution images for page building and the central system later replaces them with high-resolution versions before routing to a printer. To render this known system capable of producing a physical printing plate, Petitioner contended a POSITA would look to standard industry processes. Apogee taught the critical missing step: generating a "plate-ready file" (specifically a Print Image File or PIF) by using a Raster Image Processor (RIP) to convert a design into the exact dot pattern for a platesetter or imagesetter. Furthermore, OPI White Paper taught adding a proofer to the end-user facility for remote proofing (a limitation of claim 1) and using a computer to perform imposition at the printing facility (a limitation of claim 3).
    • Motivation to Combine: A POSITA would combine these references to create a commercially viable offset printing workflow. Jebens provided the network architecture, but it lacked the specific process for creating a final plate. A POSITA would naturally incorporate the well-known rasterization and file generation process from Apogee to make the Jebens system functional for offset printing. Adding a proofer and imposition computer, as taught by OPI White Paper, were known, logical enhancements to improve efficiency, reduce costs, and implement necessary prepress steps.
    • Expectation of Success: The combination involved integrating standard, modular components of a digital printing workflow. A POSITA would have reasonably expected success because these were all well-understood and commonly practiced technologies in the printing industry at the time.

Ground 2: Obviousness over Dorfman, Apogee, and Andersson - Claims 1 and 2 are obvious over Dorfman in view of Apogee and Andersson.

  • Prior Art Relied Upon: Dorfman (WO 98/08176), Apogee (1998 publication), and Andersson (a 1997 publication titled PDF Printing and Publishing).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted that Dorfman disclosed a similar three-part system where a front-end user connects to a website (central service) to customize page layouts from templates, generate a PDF, and send it to a printing company. Dorfman’s system included an end-user facility, a central service with a PDF builder and data storage, and a connection to a remote printing company. As in Ground 1, Petitioner argued Apogee supplied the teaching of converting the design file (Dorfman's PDF) into a plate-ready PIF file suitable for a platesetter. Andersson was cited for teaching more advanced content management operations—such as a centralized database server for archiving, retrieving, and reusing digital assets—that a POSITA would integrate into Dorfman's more basic storage system.
    • Motivation to Combine: A POSITA would combine Dorfman with Apogee to adapt Dorfman’s web-based design system for the specific, high-quality demands of offset printing, which requires a rasterized, plate-ready file. The motivation to incorporate Andersson’s teachings was to enhance the functionality and efficiency of Dorfman’s central facility, providing the robust content management features (archiving, searching, reuse) common in professional publishing systems.
    • Expectation of Success: Integrating a standard rasterization workflow (Apogee) and established content management principles (Andersson) into a web-based design system (Dorfman) would have been a predictable and straightforward task for a POSITA.

  • Additional Grounds: Petitioner asserted an additional ground for claim 3 based on the combination of Dorfman, Apogee, Andersson, and OPI White Paper. This ground relied on the same core combination as Ground 2, adding OPI White Paper for its explicit teachings of performing imposition at the printing facility and using a platesetter to expose a printing plate.

4. Key Claim Construction Positions

  • "data provided remotely in real time...": Petitioner argued this phrase should be interpreted to mean the electronic transmission of data over a communication network, distinguishing it from the pre-invention practice of physically sending disks or proofs by mail.
  • "plate-ready file": This term was construed as a file that has undergone the entire prepress process (e.g., imposition, screening) and has been rasterized (RIPed) to contain the exact dot information needed to create a printing plate, synonymous with a 1-bit TIFF or Print Image Format (PIF) file.
  • "end user facility," "central service facility," and "printing company facility": Petitioner asserted these three facilities must be distinct from each other in some manner, with functions limited to those recited in the claims for each respective facility.

5. Arguments Regarding Discretionary Denial

  • Petitioner acknowledged that a prior IPR petition on the ’349 patent (IPR2013-00474), filed by a different party, was denied institution. However, Petitioner argued against discretionary denial of the present petition by distinguishing it from the prior failed attempt. Petitioner contended that this petition relied on new and stronger primary references (Jebens and Dorfman) not previously considered by the Board. It also asserted that, unlike the prior petition which the Board found to be conclusory, this petition provided detailed, element-by-element explanations, supported by a new expert declaration, to clearly establish how the prior art combinations render the challenged claims obvious.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-3 of the ’349 patent as unpatentable.