PTAB

IPR2019-00628

Adobe Inc v. RAH Color Technologies LLC

Log In
Key Events
Petition
petition

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 networked system for controlling color reproduction across multiple physical sites. It discloses using a "Virtual Proof" data structure to store and transmit color transformation information, enabling rendering devices at different nodes to produce substantially the same color appearance within the capabilities of each device.

3. Grounds for Unpatentability

Ground 1: Claims 11 and 27 are obvious over ICC v.3.01, 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 specification), and Beretta (Patent 5,416,890).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination teaches all elements of independent claim 11. ICC v.3.01, an industry standard for color management, discloses a system using device profiles containing color transformations, tonal transfer functions (as Tone Reproduction Curve tags), and gamut filters (as a "gamutTag"). The ICC standard explicitly teaches embedding these profiles within TIFF 6.0 image files, making them accessible via the TIFF file header structure. Petitioner asserted that Beretta supplies the teaching of a chromatic adaptation transform, describing a "white point transformation matrix" stored in memory to adjust colors for different display illuminants, a function called for but not detailed in ICC v.3.01.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these references as they all address the central problem of cross-platform color management. ICC v.3.01 expressly directs a POSITA to the TIFF 6.0 specification for embedding profiles. Beretta’s detailed software implementation of chromatic adaptation provides a known solution to a problem identified in the ICC framework, making its teachings a natural complement to the ICC standard.
    • Expectation of Success: A POSITA would have had a high expectation of success, as combining these well-documented industry standards and patented techniques to achieve predictable color consistency was a straightforward application of known principles.

Ground 2: Claims 11, 13, and 18 are obvious over ICC v.3.01, TIFF 6.0, Beretta, and the User Guide

  • Prior Art Relied Upon: The combination from Ground 1, plus the User Guide (Excerpts from Photoshop 3.0 User Guide).
  • Core Argument for this Ground:
    • Prior Art Mapping: This combination adds the User Guide to teach the graphical user interface (GUI) limitations of claims 13 and 18. Petitioner argued the User Guide discloses various GUIs for color reproduction selections, such as the "Printing Inks Setup" dialog, satisfying claim 13. For claim 18, the User Guide’s "Separation Setup" dialog box allows a user to specify a neutral color definition in terms of colorant mixtures (for Under Color Removal) and graphically displays the resulting separation curve.
    • Motivation to Combine: A POSITA developing a color management system based on the ICC standard would have been motivated to include a user-friendly GUI for user selections. The User Guide for Adobe Photoshop, a de-facto industry standard software, provided a well-known, commercially successful example of such GUIs. This provided an obvious solution for implementing the user-selectable options described in the prior art.

Ground 3: Claims 11, 13, 19, and 26 are obvious over ICC v.3.01, TIFF 6.0, Beretta, the User Guide, and Scott-Taggart

  • Prior Art Relied Upon: The combination from Ground 2, plus Scott-Taggart (a 1992 journal article on digital proofing).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground adds Scott-Taggart to address the "interactive conference" and remote annotation limitations of claims 19 and 26. Scott-Taggart describes the then-emerging technology of remote soft-proofing, including systems like Scitex's Echo product, which enabled users at different sites to conduct live screen annotation. The User Guide teaches how to add separable annotations to an image (e.g., using a pencil tool or text on separate, editable layers).
    • Motivation to Combine: A POSITA would combine these teachings to address the known problem of collaborative remote proofing. Integrating the annotation features described in the User Guide into the remote proofing systems taught by Scott-Taggart was a logical step to enhance the utility of the networked color management system. This combination would predictably yield a system allowing users at different sites to collaborate on a color-managed image.

Ground 4: Claims 11 and 15 are obvious over ICC v.3.01, TIFF 6.0, Beretta, and Herzog

  • Prior Art Relied Upon: The combination from Ground 1, plus Herzog (a 1995 conference paper on representing color gamuts).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner added Herzog to teach the specific "gamut descriptor data structure" recited in dependent claim 15. Herzog discloses an analytical method to represent a color gamut surface as a two-dimensional array where the inputs are coordinates related to lightness and hue, and the output represents saturation (chroma) at the gamut's surface. This directly maps to the claim limitations.
    • Motivation to Combine: Both ICC v.3.01 and Herzog address the problem of handling out-of-gamut colors. Herzog provides a mathematically compact and efficient representation of a gamut, which it states is ideal for storage and transmission. A POSITA would be motivated to incorporate Herzog's superior gamut descriptor into the extensible ICC profile format (e.g., as a private tag) to improve the accuracy and reduce the data load for gamut mapping operations.

4. Key Claim Construction Positions

  • "tonal transfer functions": Petitioner argued this term, which does not appear in the specification, should be construed as synonymous with the established term of art "tone reproduction curves." This construction was based on a figure in the patent showing a "Customize Tonal Transfer" button that modifies look-up tables (LUTs) described as "transfer curves."
  • "interactive conference": Petitioner proposed this term be construed to mean "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."
  • "site(s)": Petitioner argued for a construction of "physical location(s)," consistent with the patent’s description of connecting geographically separated business entities like advertising agencies and publishers.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that the petition presents new, substantive questions of patentability that were not before the examiner during prosecution. Although ICC v.3.01, TIFF 6.0, and Beretta were submitted in an Information Disclosure Statement, the examiner did not cite or rely on them to reject the claims. The other key references (User Guide, Scott-Taggart, and Herzog) were not before the examiner at all, justifying a trial under §325(d).

6. Relief Requested

  • Petitioner requests institution of inter partes review and cancellation of claims 11, 13, 15, 18-19, and 26-27 of the ’444 patent as unpatentable.