PTAB

IPR2015-00766

Esselte Corp v. Dymo BVBA

Key Events

Petition

petition Intelligence

Title: Method for Printing an Image on an Image Receiving Medium
Brief Description: The ’567 patent discloses a method for printing images, such as labels, where the printer automatically stores an image each time it is printed. The system allows a user to recall, edit, and reprint a stored image from a memory that holds a fixed number (N) of the most recently printed labels.

Prior Art Relied Upon: Mori (Patent 6,089,765) and Suzuki (Patent 5,025,397).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Mori disclosed a printing system that stores print data for reprinting, including storing a plurality of pages and deleting the oldest data when memory is full. However, Mori required a user to indicate whether the data was intended for reprinting. Petitioner contended that Suzuki taught a label printer that automatically stores image data for a predetermined number of labels each time it detects new print data and allows a user to recall and reprint previously stored data. The combination of Mori’s job management and Suzuki’s automatic storage rendered the claims obvious.
- Motivation to Combine: A POSITA would combine Mori and Suzuki because both references addressed the same problem of reducing preparation time for printing. They used similar solutions by saving image data for later reprinting. Combining Suzuki’s automatic storage feature with Mori’s more advanced print job management system was a predictable combination of known elements to achieve a known goal.
- Expectation of Success: A POSITA would have had a reasonable expectation of success, as the combination involved the simple arrangement of known elements, each performing its known function, to yield a predictable result.

Prior Art Relied Upon: Beadman (Patent 5,816,717) and Mori (Patent 6,089,765).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that Beadman disclosed a label printing apparatus that could store a plurality of composed labels, which a user could then recall, edit, and reprint. The key distinction from the ’567 patent was that Beadman required a user to press a save button to store a label. Petitioner argued that Mori taught the missing element: a system that automatically stores print data upon a user’s indication that it might be reprinted. Modifying Beadman's system to automatically store each label as taught by Mori would have been obvious.
- Motivation to Combine: A POSITA would combine Beadman and Mori because both addressed the need for printing devices to store print data for efficient subsequent reprinting. A POSITA would have been motivated to incorporate Mori’s automated storage functionality into Beadman’s label printer to eliminate the extra user step of manually saving, thereby improving efficiency.
- Expectation of Success: The combination represented a predictable use of prior art techniques to improve the functionality of Beadman’s device, and a POSITA would have expected success in implementing this integration.

Prior Art Relied Upon: Suzuki (Patent 5,025,397) and Nagashima (Patent 5,483,623).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Suzuki taught most limitations of the challenged claims, including a label printer that automatically stores image data for a set number of labels for later reprinting. The primary limitation allegedly missing from Suzuki was the explicit step of editing a recalled image. Petitioner contended that Nagashima supplied this teaching, disclosing a printing apparatus that allows for the reusing of stored print information, specifically including the editing of stored data by overlaying new dot data on a previously stored image.
- Motivation to Combine: A POSITA would combine Suzuki and Nagashima as both shared the common objective of reducing preparation time for printing by reusing stored data. It would have been a simple and logical step to add Nagashima's disclosed editing capability to Suzuki's label reprinting system to provide users with more flexible options for reusing previously printed labels.
- Expectation of Success: Integrating the editing function from Nagashima into the label printer of Suzuki was a straightforward combination of known features for their intended purposes, with a high expectation of success.

"one of editing and reprinting said recalled stored image": Petitioner proposed this term should be construed disjunctively, meaning it requires “either editing the recalled stored image or reprinting the recalled stored image, or both.” This construction was argued to be critical because it means prior art needs to disclose only one of these options to invalidate the claim, rather than both. Petitioner supported this by citing the patent’s specification, which uses "or" when describing the user's options after recalling a label (e.g., "print or edit").

Petitioner requests institution of an inter partes review and cancellation of claims 8-10 of the ’567 patent as unpatentable.