PTAB

IPR2019-00628

Adobe Inc. v. RAH Color Technologies, LLC

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1. Case Identification

2. Patent Overview

  • Title: System for Distributing and Controlling Color Reproduction at Multiple Sites
  • Brief Description: The ’444 patent relates to a system for controlling color reproduction across a network of geographically separated sites. It discloses using a "Virtual Proof" (VP) data structure to store and transmit color transformation information, aiming to ensure consistent color appearance on different devices (e.g., monitors, printers) at each site.

3. Grounds for Unpatentability

Ground 1: Obviousness over Core Color Management Standards - Claims 11 and 27 are obvious over ICC v.3.01 in view of TIFF 6.0 and Beretta.

  • Prior Art Relied Upon: ICC v.3.01 (International Color Consortium Profile Format, version 3.01), TIFF 6.0 (TIFF™ Revision 6.0, Final), and Beretta (Patent 5,416,890).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination teaches all limitations of independent claim 11. ICC v.3.01 disclosed the core system for controlling color across different computers/sites using device profiles that contain color transformations, gamut filters (gamutTag), and tone reproduction curves (which Petitioner construed as the claimed "tonal transfer functions"). TIFF 6.0 taught the standard tag-based file format for embedding these ICC profiles, making the data accessible via a file header. Beretta taught storing a "white point transformation matrix" in a file to perform chromatic adaptation, a specific solution for a capability that ICC v.3.01 required but did not detail how to store.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine these references as they were complementary technologies addressing the same central problem of cross-platform color management. ICC v.3.01 expressly referred to TIFF 6.0 for its file structure. Beretta offered a known, predictable solution (storing a transform matrix) to a known problem explicitly identified in ICC v.3.01 (the need for chromatic adaptation).
    • Expectation of Success: A POSITA would have had a high expectation of success because combining a profile standard (ICC), a file format standard (TIFF), and a known software implementation for color transformation (Beretta) was a straightforward application of existing, complementary technologies.

Ground 2: Obviousness over Core Standards and User Guide - Claims 13 and 18 are obvious over the combination of Ground 1 and the User Guide.

  • Prior Art Relied Upon: ICC v.3.01, TIFF 6.0, Beretta, and the User Guide (Excerpts from Photoshop 3.0 User Guide).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built on Ground 1, with the User Guide supplying the teachings for dependent claims 13 and 18. The User Guide, describing Adobe Photoshop 3.0, disclosed various graphical user interfaces (GUIs) for making color reproduction selections (e.g., "Printing Inks Setup" for claim 13). For claim 18, it taught a "Separation Setup" dialog box that enabled a user to specify a neutral definition (via Under Color Removal settings) and displayed that definition graphically as a curve.
    • Motivation to Combine: A POSITA implementing the system of ICC v.3.01 would need a mechanism for user selections. The petition argued that providing a GUI, as taught by the widely-used Photoshop software described in the User Guide, was a known, user-friendly, and obvious solution to this known problem, representing one of a finite number of predictable solutions.

Ground 3: Obviousness over Core Standards and Herzog - Claim 15 is obvious over the combination of Ground 1 and Herzog.

  • Prior Art Relied Upon: ICC v.3.01, TIFF 6.0, Beretta, and Herzog ("A New Approach to the Representation of Color Gamuts").
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground asserted that adding Herzog to the Ground 1 combination renders claim 15 obvious. Herzog taught a specific "gamut descriptor data structure" as claimed: a compact, analytical representation of a color gamut as a two-dimensional array where inputs are lightness and hue and the output is saturation (chroma) at the gamut surface. This provided a more specific and efficient implementation of a gamut descriptor than the general "gamutTag" taught by ICC v.3.01.
    • Motivation to Combine: A POSITA would have been motivated to incorporate Herzog’s compact and analytically superior gamut representation into an ICC profile (e.g., as a private tag). Herzog's method was described as "highly necessary" to reduce the data needed to represent device gamuts and offered significant advantages in accuracy and efficiency for gamut mapping, a problem central to both ICC v.3.01 and Herzog.
  • Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 19 and 26 based on the combination of ICC v.3.01, TIFF 6.0, Beretta, the User Guide, and Scott-Taggart (a 1992 article on remote soft-proofing), primarily to teach the "interactive conference" limitation.

4. Key Claim Construction Positions

  • "tonal transfer functions": Petitioner argued this term, absent from the specification, should be construed as "tone reproduction curves." This was critical because prior art like ICC v.3.01 explicitly taught "tone reproduction curves," directly mapping to this claim limitation under the proposed construction.
  • "interactive conference": Petitioner proposed this term be construed as "a meeting between two or more persons conducted over a telecommunications network in which participants can simultaneously view, comment on, or mark up documents in real time." This construction was central to mapping the Scott-Taggart reference to the limitations of claim 19.
  • "site(s)": Petitioner argued this term should be construed as "physical location(s)," consistent with dictionary definitions and the patent's description of geographically separated business entities, underpinning the patent's core concept of networked color control.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate because the petition raised new, substantive questions of patentability. It was contended that while the examiner received some core references (ICC v.3.01, TIFF 6.0, Beretta) in a large Information Disclosure Statement, the examiner never cited or relied on them in any rejection. Furthermore, other key references central to the invalidity grounds (the User Guide, Scott-Taggart, and Herzog) were never before the examiner.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 11, 13, 15, 18-19, and 26-27 of the ’444 patent as unpatentable under 35 U.S.C. §103.