PTAB

IPR2014-00791

Eastman Kodak Co v. CTP Innovations LLC

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: System and Method for Providing Printing and Publishing Services
  • Brief Description: The ’349 patent relates to a system and method for providing printing and publishing services over a communication network like the internet. The system connects creative front-end users (e.g., graphic designers) with back-end printing facilities to produce printing plates from digital files.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 4-9 over Jebens, OPI White Paper, and Apogee

  • Prior Art Relied Upon: Jebens (Patent 6,321,231), OPI White Paper (a 1995 Apple publication), and Apogee (a 1998 Agfa publication).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Jebens disclosed the core networked system of the ’349 patent: a digital data management system connecting front-end designers to printing service bureaus over a network. Jebens taught using a central server to store both low- and high-resolution images, allowing a remote user to download low-resolution images for page design, and then electronically route the completed design for printing, at which point the low-resolution images are swapped for high-resolution ones. This, Petitioner asserted, is a description of the well-known Open Prepress Interface (OPI) process.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would look to the OPI White Paper for explicit details of implementing the standard OPI process described conceptually in Jebens, including the creation of "thin" PostScript files (with low-resolution images) and "fat" PostScript files (with high-resolution images). A POSITA would combine Apogee because it taught the necessary and conventional final step of generating a plate-ready file by rasterizing (RIPing) the digital master (e.g., a PDF created from the "fat" PostScript file) into a format like a Print Image File (PIF) suitable for output to a platesetter. The combination represented the assembly of a standard, commercially-practiced digital printing workflow.
    • Expectation of Success: Petitioner contended success was expected because the combination merely integrated well-known, standard components (a networked file management system, the OPI process, and a rasterizing output process) to perform their conventional functions in a predictable manner.

Ground 2: Obviousness of Claims 4-8 and 10-14 over Dorfman, OPI White Paper, and Apogee

  • Prior Art Relied Upon: Dorfman (WO 98/08176), OPI White Paper (a 1995 Apple publication), and Apogee (a 1998 Agfa publication).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted that Dorfman disclosed a web-based system where a user connects to a website to create and proof customized printed materials. Dorfman taught selecting templates, generating a dynamic PDF file using low-resolution images, and then providing the material to a printing system. Crucially, Dorfman explicitly disclosed that before printing, the low-resolution images are replaced with high-resolution images using an OPI process.
    • Motivation to Combine: Petitioner argued that although Dorfman taught a PDF-based OPI workflow, a POSITA would have found it obvious to substitute a PostScript-based OPI workflow as recited in the claims, particularly if system constraints required it. The OPI White Paper was cited for its explicit teaching of generating "thin" and "fat" PostScript files as part of this standard alternative. As in the first ground, a POSITA would combine Apogee to perform the essential, final step of RIPing the completed digital file to create a plate-ready file for output on a platesetter, a required process for offset printing not detailed in Dorfman.
    • Expectation of Success: Success would be expected as this combination involved substituting one known type of OPI workflow (PostScript-based) for another (PDF-based) and adding a standard output processing module (Apogee) to create a fully functional and predictable printing system.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including claims 10-14 over Jebens and Apogee, and claim 9 over Dorfman, OPI White Paper, Apogee, and Adams II (a 1996 publication teaching the use of dedicated T1 lines for private networks). These grounds relied on the same core combinations with minor variations.

4. Key Claim Construction Positions

  • “plate-ready file ... being provided in real time”: Petitioner argued this phrase should be construed to mean the electronic transmission of files over a communication network, as distinguished from the prior art method of physically shipping disks.
  • “plate-ready file”: Proposed as a file that has undergone the prepress process and has been rasterized (RIPed) into a format, such as a 1-bit TIFF, containing the exact dot information for producing a printing plate.
  • “thin PostScript file”: Construed as a digital file in PostScript format containing low-resolution images for page layout design, consistent with the standard OPI process.
  • “fat PostScript file”: Construed as the subsequent PostScript file where OPI comments have been used to replace the low-resolution images with corresponding high-resolution data, preparing it for final output.

5. Key Technical Contentions (Beyond Claim Construction)

  • Patented Method is a Recitation of Standard Industry Workflow: The petition’s central technical argument was that the challenged claims, when properly construed, claimed nothing more than the well-known, ubiquitous digital printing workflow of the mid-1990s. Petitioner contended that the claimed steps—using a network to access images, employing an OPI process with low- and high-resolution image swapping, creating a portable file format (PDF), and generating a plate-ready file for output—were all standard, individual steps that a POSITA would have routinely combined.

6. Arguments Regarding Discretionary Denial

  • Distinction from Prior Denied Petition: Petitioner acknowledged that a previous IPR petition on the ’349 patent (IPR2013-00474) filed by a different party was denied institution. Petitioner argued that this petition should be instituted because it was not redundant. It relied on new primary prior art references (Jebens and Dorfman) not used in the prior petition and provided substantial new evidence and detailed explanations from a technical expert, which it alleged were absent from the previously denied "conclusory" petition.

7. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 4-14 of the ’349 patent as unpatentable.