Adobe Inc v. RAH Color Technologies LLC

1. Case Identification

• Case #: IPR2019-00627
• Patent #: 7,729,008
• Filed: February 1, 2019
• Petitioner(s): Adobe Inc.
• Patent Owner(s): RAH Color Technologies LLC
• Challenged Claims: 28-33 and 36-38

2. Patent Overview

• Title: System and Method for Controlling Color Reproduction in a Network
• Brief Description: The ’008 patent discloses a system for controlling color reproduction of image data across a network of different devices (nodes or sites), such as monitors and printers, to ensure that colors appear substantially the same on each device. The system uses data structures, termed "Virtual Proofs," to store and transmit color transformation information.

3. Grounds for Unpatentability

Ground 1: Claims 28-30, 32-33, and 36-38 are obvious over ICC v.3.0, the User Guide, and Beretta.

• Prior Art Relied Upon: ICC Profile Format v.3.0 ("ICC v.3.0"), Excerpts from Photoshop 3.0 User Guide ("User Guide"), and Beretta (Patent 5,416,890).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of references taught every limitation of the challenged claims. Independent claim 28, a method for color rendering, was the primary focus. Petitioner asserted that ICC v.3.0, an industry standard for a color management file format, provided the foundational elements, including storing tonal transfer curves, color transformations (e.g., 3x3 matrices, lookup tables), and data for chromatic adaptation to compensate for viewing conditions. However, Petitioner contended that ICC v.3.0 was a high-level specification. For implementation details, a person of ordinary skill in the art (POSITA) would have looked to existing, successful software like Adobe Photoshop (described in the User Guide) and systems from industry leaders like Xerox (described in Beretta). The User Guide allegedly supplied the missing teaching of user-selectable menus for color preferences. Beretta allegedly taught storing gamut data and a "white point transformation matrix" (a form of chromatic adaptation transform) in memory to be applied as needed, complementing ICC v.3.0's teachings.
  • Motivation to Combine: Petitioner asserted several motivations for a POSITA to combine these references. First, all three shared the central goal of color management and used a similar approach of converting colors via a device-independent color space (e.g., CIE Lab). Second, the references were complementary; ICC v.3.0 provided a file format standard, while the User Guide and Beretta described detailed software implementations that a POSITA would consult to build a functional system. Third, given that the ICC standard was rapidly becoming dominant in the mid-1990s, a POSITA would have been motivated to adapt the well-known features of leading products described in the User Guide and Beretta to work with the emerging ICC profile format.
  • Expectation of Success: Petitioner argued a POSITA would have had a high expectation of success because combining the references involved applying known software implementation techniques (from the User Guide and Beretta) to a well-defined file format standard (ICC v.3.0).

Ground 2: Claims 28 and 31 are obvious over ICC v.3.01, the User Guide, and Beretta.

• Prior Art Relied Upon: International Color Consortium Profile Format v.3.01 ("ICC v.3.01"), the User Guide, and Beretta (Patent 5,416,890).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that ICC v.3.01 is substantively identical to ICC v.3.0, making the obviousness argument for independent claim 28 the same as in Ground 1. This ground focused on the additional limitations of dependent claim 31, which requires enabling the display of out-of-gamut color data. Petitioner contended this was met by the combination in two ways. First, ICC v.3.01 itself taught gamut mapping (a form of gamut compression) to make out-of-gamut colors visible on a display. Second, the User Guide taught Photoshop's "Gamut Warning" feature, which explicitly identified and displayed out-of-gamut colors with a special warning color (e.g., gray or green), providing a more user-friendly way to visualize the issue.
  • Motivation to Combine: A POSITA would have been motivated to combine the User Guide's "Gamut Warning" feature with an ICC v.3.01-based system. Automated gamut mapping, as taught by ICC v.3.01, may not be sufficient for all user needs. Beretta taught that such automated techniques can introduce errors. Therefore, providing a visual warning feature as taught by the User Guide would have been an obvious improvement, giving users more granular control to identify and manually correct out-of-gamut colors before final output.

4. Key Claim Construction Positions

• "tonal transfer curves": Petitioner argued this term, which does not appear in the ’008 patent’s specification and was not a term of art, should be construed to mean "tone reproduction curves." This construction was central to mapping the term to prior art disclosures, such as the tone reproduction curve tags in the ICC v.3.0 specification.
• "said tonal transfer curves and said one or more color transformations are at least partly in accordance with calibration data in device-independent units of color": Petitioner proposed this should be construed to mean "the values in the tonal transfer curves and color transformations are based at least in part on the device-independent color values that resulted from calibrating a device." Petitioner argued that ICC v.3.0’s inclusion of a "calibrationDateTimeTag" inherently disclosed this, and Beretta explicitly taught creating transformations from device-independent calibration data.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that institution would not be an inefficient use of resources under 35 U.S.C. §325(d). Although ICC v.3.01 and Beretta were submitted to the Patent Office in an Information Disclosure Statement during prosecution, the examiner did not cite or rely on either reference to reject the claims. Furthermore, Petitioner asserted that the User Guide, which provides key teachings on practical software implementation, was never before the examiner. Therefore, the petition presented new substantive questions of patentability.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 28-33 and 36-38 of the ’008 patent as unpatentable.