Printing Industries of Americav.CTP Innovations, LLC

Patent Trial and Appeal Board

Dec 31, 2013

09365365 (P.T.A.B. Dec. 31, 2013)

Trials@uspto.gov Paper 16
Tel: 571-272-7822 Entered: December 31, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
PRINTING INDUSTRIES OF AMERICA
Petitioner
v.
CTP INNOVATIONS, LLC
Patent Owner
_______________

Case IPR2013-00474
Patent 6,611,349
_______________

Before HOWARD B. BLANKENSHIP, BENJAMIN D. M. WOOD, and
BRIAN J. MCNAMARA, Administrative Patent Judges.

WOOD, Administrative Patent Judge.

DECISION
Denying Petition to Institute Inter Partes Review
37 C.F.R. § 42.108

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I. INTRODUCTION
A. Background
Printing Industries of America (“PIA” or “Petitioner”) filed a petition
(Papers 3, 4,
1
“Pet.”) to institute an inter partes review of claims 1-14 (the
“challenged claims”) of U.S. Patent No. 6,611,349 (Ex. 1101, “the’349 patent”).
CTP Innovations, LLC (“CTP” or “Patent Owner”) filed a Preliminary Response
(Paper 11, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314.
The standard for instituting an inter partes review is set forth in 35 U.S.C.
§ 314(a), which provides as follows:
THRESHOLD – The Director may not authorize an inter partes
review to be instituted unless the Director determines that the
information presented in the petition filed under section 311 and any
response filed under section 313 shows that there is a reasonable
likelihood that the petitioner would prevail with respect to at least 1 of
the claims challenged in the petition.

Upon consideration of the Petition, the Preliminary Response, and the
exhibits attached thereto, we determine that Petitioner has not shown a reasonable
likelihood that the Petitioner would prevail with respect to at least one of the
challenged claims. Accordingly, we do not authorize an inter partes review to be
instituted as to the challenged claims.
B. Related Proceedings
In Appendix B of the Petition, PIA identifies 35 co-pending infringement
actions involving the ’349 patent. Pet., App. B. PIA has also petitioned for inter

1
The Petition cover sheet and tables of contents, authorities and exhibits
were submitted separately from the body of the Petition, and have been collectively
designated Paper 3. The body of the Petition has been designated Paper 4.
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partes review of another patent at issue in the co-pending litigation, U.S. Patent
No. 6,738,155. See IPR2013-00489, Papers 4, 5 (Aug. 2, 2013).
C. The ’349 Patent
The ’349 patent relates to “a system and method of providing publishing and
printing services via a communication network.” Ex. 1101, 1:9-10. According to
the ’349 patent, “[k]ey steps for producing printed materials using a plate process
include (1) preparing copy elements for reproduction (the “design” stage), (2)
prepress production, (3) platemaking, (4) printing, and (5) binding, finishing and
distribution.” Id. at 1:12-15. In the first step, an end user – e.g., a publisher, direct
marketer, advertising agency, or corporate communication department – uses a
desktop publishing program such as “QuarkXpress” to design “pages” from image
and data files. Id. at 1:16-25. In the prepress production stage, the user-created
pages (also called “copy”) are “transformed into a medium that is reproducible for
printing.” Id. at 1:26-28. This transformation typically involves typesetting, image
capture and color correction, file conversion, “RIPping, proofing, imposition,
filmsetting, and platesetting.” Id. at 1:29-32.
“RIPping” is based on the acronym “RIP,” which stands for raster image
processor. Id. at 7:57-59. A RIP is a hardware or software component that
“rasterizes” an image file – i.e., converts it to a “bitmap” or raster image. Id.
“RIPping” is, therefore, synonymous with rasterizing. A bitmap “is a digitized
collection of binary pixel information that gives an output device, such [as a
printer, proofer or platesetter,] the ability to image the file to paper, film or plate.”
Id. at 7:59-62. “Proofing” involves creating a sample of the finished product that
is sent to the end user for approval. Id. at 1:32-35. “Imposition” involves
arranging multiple pages into a single flat that can be used to create a printing
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plate. Id. at 1:38-40. According to the ’349 patent, imposition “is particularly
important in the creation of booklets or catalogs, where pages are positioned using
register marks to assist in the stripping, collating, and folding of the printed
product.” Id. at 1:41-44. A printer makes a plate based on the imposed flat and
uses the plate on a printing press to reproduce the product; the product is bound,
finished and distributed to create the product in its final form. Id. at 1:45-51.
The ’349 patent describes and claims a publishing and printing system in
which “system components are installed at an end user facility, a printing company
facility, and a central service facility,” each connected to the others via a
communication network. Id. at 2:31-36, 51-56. Figure 1, reproduced below,
depicts an embodiment of the claimed invention:

Figure 1 depicts end user facility 300, printing company facility 400, and
central service facility 105 connected together via either private network 160 or
public network 190. Id. at Fig. 1. In this embodiment, end user facility 300
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comprises a router, desktop computer for page-building operations, and a color
proofer and black and white printer for high-resolution proofing. Id. at 7:38-40;
Figs. 1, 2, 5. Printing company facility 400 comprises a router, a hub, a server, a
laser printer, a color plotter, and a platesetter, and performs production
management, digital plate-making, desktop imposition, and press services. Id. at
8:31-33; 9:38-43; Figs. 1, 4, 5. Central service facility 105 comprises a server,
“hierarchical storage management” (HSM) system 120, “digital content
management” system 130, and local area network (LAN) 150. Id. at 5:40-50. An
end user can store files in HSM system 120 to reduce storage needs at the end user
facility. Id. at 7:19-23, 38-40.
D. Exemplary Claims
Claims 1-4 and 10 are independent. Claims 1-3 are drawn to printing and
publishing systems comprising an end user facility, a central service facility, and a
printing company facility. Ex. 1101, 21:18-22:30. Claims 4 and 10 are drawn to
methods of generating a plate-ready file configured for the creation of a printing
plate. Id. at 22:31-48; 23:3-17. Claims 5-9 depend from claim 4. Id. at 22:49-
23:2. Claims 11-14 depend, either directly or indirectly, from claim 10. Id. at
24:1-15.
Claims 1 and 4, reproduced below, are illustrative of the claimed subject
matter:
1. A printing and publishing system which generates a printing
plate-ready file from data provided remotely in real time using a
communication network, the printing and publishing system
comprising:
an end user facility coupled to a communication network, the
end user facility providing page building operations, the page building
operations including the design and construction of pages from
images, text, and data available via said communication network;
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a central service facility coupled to said communication
network, the central service facility providing storage, file processing,
remote access, and content management operations; the file
processing operations including generating a plate-ready file from
pages designed at said end user facility, said plate-ready file having a
file format capable of high resolution and ready for creation of a
printing plate;
a printing company facility coupled to said communication
network, the printing company facility providing printing operations,
the printing operations including producing a printing plate from said
plate-ready file; and
wherein the end user facility further comprises a
communication routing device coupling the end user facility to the
communication network, a computer which performs page building
operations, and a proofer which provides printed samples of pages.

4. A method of generating a plate-ready file configured for the
creation of a printing plate, said plate-ready file being associated with
page layouts and being provided in real time from a remote location
using a communication network, the method comprising:
remotely providing access to imaging files for searching and
retrieving images used in the design of a page layout be a remote user,
establishing links to said image files, thereby creating a thin
Postscript file from the page layout designed by the remote user;
parsing said thin Postscript file to extract data associated with
low resolution images and replace with high resolution data, thereby
forming a fat Postscript file,
creating a portable document format (PDF) file from said fat
Postscript file, and
converting said PDF file to a file in plate-ready format.

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E. Prior Art Relied Upon
PIA relies upon the following prior-art references:
Nusbickel US 6,119,133 Sep. 12, 2000 Ex. 1103
Lucivero US 7,242,487 July 10, 2007 Ex. 1106
Sands US 5,634,091 May 27, 1997 Ex. 1107
Benson EP App. 0878303 Nov. 18, 1998 Ex. 1108
Dorfman EP App. 0920667 June 9, 1999 Ex. 1115

The Seybold Report on Publishing Systems, Vol. 27, No. 4 (Seybold
Publications Oct. 27, 1997) (Ex. 1109) (“Seybold Vol. 27”);
RICHARD M. ADAMS II ET AL., COMPUTER-TO-PLATE: AUTOMATING THE
PRINTING INDUSTRY (Graphic Arts Technical Foundation 1996) (Ex. 1110)
(“Adams II”);
ALDUS CORP., OPI
TM
OPEN PREPRESS INTERFACE SPECIFICATION 1.3 (1993)
(Ex. 1111) (“Aldus”);
MATTIAS ANDERSSON ET AL., PDF PRINTING AND PUBLISHING, THE NEXT
REVOLUTION AFTER GUTENBERG (Micro Publishing Press 1997) (Ex. 1112)
(“Andersson”);
The Seybold Report on Publishing Systems, Vol. 26, No. 20 (Seybold
Publications Jul. 21, 1997) (“Seybold Vol. 26”) (Ex. 1113);
Stephen N. Zilles, Using PDF for Digital Data Exchange, TAGA
PROCEEDINGS 1997 (Ex. 1114) (“Zilles”).

F. Asserted Grounds of Unpatentability
PIA contends that the challenged claims are unpatentable under 35 U.S.C.
§§ 102 and/or 103 based on the following specific grounds (Pet. 18-60):
2

2
PIA also contends that claim 3 is indefinite under 35 U.S.C. § 112,
paragraph 2. Pet. at 30-32. However, under 35 U.S.C. § 311(a) “[a] petitioner in
an inter partes review may request to cancel as unpatentable 1 or more claims of a
patent only on a ground that could be raised under section 102 or 103 and only on
the basis of prior art consisting of patents or printed publications.” We therefore
do not consider PIA’s asserted ground of unpatentability raised under § 112.
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Reference[s] Basis Claims Challenged
Lucivero § 102 1
Nusbickel and Lucivero § 103 1
Nusbickel, Sands, and Benson § 103 1
Nusbickel, Lucivero, Seybold
Vol. 27, and Adams II
§ 103 2
Lucivero, Nusbickel, and Sands § 103 3
Lucivero, Sands, Aldus, Andersson,
Seybold Vol. 26, and Adams II
§ 103 4, 7
Lucivero, Sands, Zilles, and
Andersson
§ 103 10-14
Lucivero, Sands, Aldus, Andersson,
and Dorfman
§ 103 5, 6
Lucivero, Sands, Aldus, Andersson,
and Benson
§ 103 8, 9

II. ANALYSIS
A. Claim Construction
As a step in our analysis for determining whether to institute a trial, we
determine the meaning of the claims. Consistent with the statute and the
legislative history of the AIA, the Board will interpret claims using the broadest
reasonable construction. 37 C.F.R. § 100(b). We presume that claim terms retain
their ordinary and customary meaning as would be understood by one of ordinary
skill in the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303,
1313 (Fed. Cir. 2005) (en banc). That presumption may be rebutted if the patent
specification defines the term with reasonable clarity, deliberateness, and
precision. In re Paulson, 30 F.3d 1475, 1480 (Fed. Cir. 1994); see also In re Bigio,
381 F.3d 1320, 1325-26 (Fed. Cir. 2004) (“Absent claim language carrying a
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narrow meaning, the PTO should only limit the claim based on the specification or
prosecution history when those sources expressly disclaim the broader
definition.”). If the specification does not expressly or implicitly define a claim
term, it is appropriate to consult a general dictionary definition of the word for
guidance in determining the ordinary and customary meaning of the claim term as
viewed by a person of ordinary skill in the art. Comaper Corp. v. Antec, Inc., 596
F.3d 1343, 1348 (Fed. Cir. 2010).
PIA proposes specific constructions for eight claim terms, which are
summarized below:
Claim Term Proposed Interpretation Claims
end-user facility
facility that provides page building
operations allowing the design and
construction of pages from images, text,
and data available via a communication
network. Pet. 6.
1-3
communication
network
both a private network 160 (ATM network)
and a public network 190 (the Internet) of
subscribers and non-subscribers to a
printing and publishing system connected to
central service facility 105. Pet. 6.
1-14
central service facility
providing storage, file processing, remote
access, and content management
operations. Pet. 7.
1-3
printing company
facility
providing printing operations for producing
a plate from said plate-ready file.
Pet. 7.
1-3
communication routing
device
routers and switches . . . included at central
service facility 105, end user facility 300,
and printing company facility 400. Pet. 7.
1, 3
plate-ready file
a file containing pages designed from
images, texts, and data converted to a
digital file for producing a printing plate
1-14
thin Postscript file digital file containing low resolution 4-9
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Claim Term Proposed Interpretation Claims
images, graphics, texts, and art
fat Postscript file
digital file containing high resolution
images, graphics, texts, and art
4-9

CTP does not dispute PIA’s proposed interpretations. See generally Prelim.
Resp. Further, the proposed interpretations do not appear unreasonable at this
stage of the proceeding. Therefore, we adopt PIA’s proposed constructions for
purposes of this decision.
B. Claim 1 – Anticipation – Lucivero
PIA contends that Claim 1 is anticipated by Lucivero under 35 U.S.C.
§ 102(e).
1. Lucivero
Lucivero discloses a system for creating, storing and processing raster data
files. Ex. 1106, Abs; 6:26-28. The system allows an end user to control the
workflow of bitmap files to a plurality of user-selectable output devices. Id. at
7:60-63, 8:30-35. The system comprises at least one terminal device on which an
end user can create PostScript
3
image files, at least one RIP for converting
PostScript files into bitmap files, and a print drive for receiving the bitmap file
from the RIP and directing it to at least one output device, such as an imagesetter,
platestetter, or large-format proofer. Id. at 5:61-67; 6:5-9; Fig. 2. Lucivero’s
system also contains a remote graphical user interface that allows a front end user
to control print jobs over a “standard network environment.” Id. at 5:41-60. The
end user can select an off-line output device (also referred to as a “print engine”),

3
“Postscript
TM
,” or PostScript
TM
,” refers to a page-description-language file
format from Adobe Systems, Inc. Ex. 1106, 2:53-55.
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execute a “print” command, view the status of jobs, and “manipulate and control
the timing and priorities of the output.” Id. at 5:11-17, 50-54.
2. Discussion
“Anticipation requires the presence in a single prior art reference disclosure
of each and every element of the claimed invention, arranged as in the claim.”
Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d
1452, 1458 (Fed. Cir. 1984). Based on the record before us, we are not persuaded
that PIA is reasonably likely to prevail in showing that Lucivero anticipates claim
1. Although PIA summarizes Lucivero (Pet. 18-19), and cites broad passages of
Lucivero as corresponding to claim 1’s limitations (Pet. 20-21 (claim chart)), PIA
does not explain how the cited portions correspond to the limitation for which they
are cited. Nor is such correspondence self-evident. For example, claim 1 recites
an “end user facility providing page building operations,” which includes “the
design and construction of pages from images, text, and data available via said
communication network.” Ex. 1101, 21:23-27 (emphasis added). None of the
Lucivero passages on which PIA relies seems to address this limitation.
Even if all of the claim 1 limitations were taught in the cited passages of
Lucivero, it is unlikely that they would be “arranged as in the claim,” i.e., as part of
the same “printing and publishing system” as claim 1 recites. In Net MoneyIN, Inc.
v. Verisign, Inc., 545 F.3d 1359 (Fed. Cir. 2008), the Federal Circuit determined
that the district court erred in concluding that a reference anticipates a claim
because the district court combined parts of two separate examples described in the
reference to find all of the elements of the claim. Id. at 1370-71. The court
reasoned that a prior art reference that “includes multiple, distinct teachings that
the artisan might somehow combine to achieve the claimed invention” is
insufficient to show prior invention. Id. This principle applies here, because PIA
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relies on at least two distinct embodiments in Lucivero to show anticipation of
claim 1. PIA’s anticipation analysis relies on a description of an embodiment that
Lucivero describes as prior art (Pet. 20 (citing, e.g., Lucivero, 7:54-8-2 and
Fig. 1)), and also on a description of an embodiment that Lucivero describes as
“one embodiment of the present invention” (Pet. 20-21 (citing, e.g., 8:23-39, 41-
67)). The anticipation analysis is, therefore, unpersuasive. Accordingly, we are
not persuaded that PIA is reasonably likely to prevail on this ground of
unpatentability.
C. Claim 1 – Obviousness – Nusbickel and Lucivero
PIA contends that the combination of Nusbickel and Lucivero renders
obvious claim 1. Pet. 21-23.
1. Nusbickel
Nusbickel relates to online directory services – e.g., online equivalents to
traditional phone books – in which information is provided over the Internet in
response to a user request; the information is displayed by filling in fixed data
fields in a presentation screen. Ex. 1103, 1:33-40; Figs. 1, 2. Figure 1 of
Nusbickel depicts a functional block diagram of such a system. Web server 101
runs a web server application 103, which is coupled to database server 105. Id. at
3:50-53. Web server 101 is also connected to the Internet 107. Id. at 3:56-59. End
user “data processing unit” 109, with web browser 111, is also connected to the
Internet. Id. An end user queries database server 105 via Web browser 111,
Internet 107, Webserver 101 and application 103. Id. at 4:10-14. The results of
the query are returned to the end user in the same manner. Id. at 4:14-16. The
invention in Nusbickel relates to a method of naming data files to simplify the
retrieval of certain data. Id. at 4:66-5:16; Fig. 4.
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2. Discussion
As with the previous alleged ground of unpatentability, PIA merely
summarizes the references and cites broad passages of them as corresponding to
claim 1’s limitations, but does not explain how the cited portions correspond to the
limitation for which they are cited. Nor is such correspondence self-evident. For
example, it does not appear to us that either Nusbickel or Lucivero, individually or
in combination, discloses the limitation requiring that the end user facility provide
page building operations that include “the design and construction of pages from
images, text, and data available via said communication network.” Ex. 1101,
21:23-27. We discussed Lucivero’s failure to disclose this limitation in sec. II.B.2.
above. PIA also cites to Nusbickel 3:50-60, 4:16-46, and Figures 1 and 2, to
disclose this limitation.
4
Nusbickel describes a data processing system for hosting
Web pages, and a Yellow Pages directory listing service in which a user selects
search criteria and retrieves search results that are displayed on a predefined screen
layout. This disclosure does not, on its face at least, relate to the claim or
limitation at issue. Therefore, we are not persuaded that PIA is reasonably likely
to show that claim 1 is obvious over Lucivero and Nusbickel.
D. Claim 1 – Obviousness – Nusbickel, Sands, and Benson
PIA contends that the combination of Nusbickel, Sands, and Benson renders
obvious claim 1. Pet. 24-27.

4
It is unclear whether PIA, by citing to two references to disclose the same
limitation, contends that each reference fully discloses the limitation, or whether
PIA relies instead on some combination of the two references to disclose the
limitation.
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1. Sands
Sands discloses a digital page imaging (DPI) system that automates the
imposition process. A customer creates a digital document for printing, converts
the document to a “page description language” format file (e.g., PostScript or
PDF), and sends it via a communication network to the printer. Ex. 1107, 3:21-27.
At the printer, the system assigns each page of the customer product into its exact
position and orientation in a film flat. Id. at 3:64-67. The flat is then output to a
film image setter for creating a printing plate. Id. at 3:10-14.
2. Benson
Benson relates to a “[d]istributed imaging and control architecture for digital
printing presses and platesetters.” Ex. 1108, cover page. The architecture
comprises a job-control computer for selecting print jobs, and a separate image-
control computer or computers for operating the various imaging devices. Id.
3. Discussion
As above, we are not persuaded that any of Nusbickel, Sands or Benson,
individually or in combination, discloses the limitation requiring that the end user
facility provide page building operations that include “the design and construction
of pages from images, text, and data available via said communication network.”
Ex. 1101, 21:23-27. PIA cites to portions of all three references as disclosing this
limitation. Pet. 27 (claim chart). For the reasons discussed above, we are not
persuaded that the cited portions of Nusbickel disclose the limitation. PIA also
cites to Sands, Ex. 1107, 3:19-42. Pet. 27 (claim chart). However, this provision
of Sands instead discusses a DPI system that receives pages electronically in “page
description language” format from multiple publishing systems and imposes them
into plate-ready film flats. Ex. 1107, 3:19-42. Further, the portion of Benson on
which PIA relies, 7:52-58, is not in the record. The only portions of Benson in the
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record are its cover page and a related search report. See generally Ex. 1108.
Therefore, we are not persuaded that PIA is reasonably likely to show that claim 1
is obvious over Nusbickel, Sands, and Benson.
E. Claim 2 – Obviousness – Seybold Vol. 27 and Adams II
PIA contends that Seybold Vol. 27 and Adams II render obvious claim 2.
Claim 2 contains the same end-user-facility as claim 1, i.e., an end user facility that
provides page-building operations “including the design and construction of pages
from images, text, and data available via said communication network.” Ex. 1101,
21:52-54. PIA relies on the same portions of Nusbickel and Lucivero to disclose
this limitation as it did for claim 1. Pet. 30 (claim chart). For the reasons
discussed above, however, we are not persuaded that Nusbickel and Lucivero,
individually or combined, disclose this limitation. Therefore, we are not persuaded
that PIA is reasonably likely to prevail on this ground of unpatentability.
F. Claim 3 – Obviousness – Lucivero, Nusbickel, and Sands
PIA contends that Lucivero, Nusbickel, and Sands render obvious claim 3.
Claim 3 contains the same end-user-facility limitation as claim 1, i.e., an end user
facility that provides page-building operations “including the design and
construction of pages from images, text, and data available via said communication
network.” Ex. 1101, 22:9-11. PIA relies on the same portions of Nusbickel and
Lucivero to disclose this limitation as it did for claim 1. Pet. 35 (claim chart). For
the reasons discussed above, we are not persuaded that Nusbickel and Lucivero,
individually or combined, disclose this limitation. Therefore, we are not persuaded
that PIA is reasonably likely to prevail on this ground of unpatentability.
G. Claim 4 – Obviousness – Lucivero, Sands, Aldus, Andersson, Seybold
Vol. 26, and Adams II
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PIA contends that the combination of Lucivero, Sands, Aldus, Andersson,
Seybold Vol. 26, and Adams II render obvious claim 4. Claim 4 is drawn to a
method of generating a plate-ready file configured for the creation of a printing
plate, the plate-ready file being associated with “page layouts.” Ex. 1101, 22:31-
48. Claim 4 requires, inter alia, the step of “remotely providing access to imaging
files for searching and retrieving images used in the design of a page layout by a
remote user.” Ex. 1101, 22:36-38. PIA cites the following as allegedly disclosing
this limitation: Lucivero, 6:63-67 and 9:1-4; Sands, 8:45-56; Aldus at 5, col. 1;
and Seybold Vol. 26 at 21, ¶¶ 3, 4, and 7. PIA does not explain how the cited
portions of these references correspond to the limitation in question. Nor do we
discern any correspondence. The cited portions of Lucivero state:
It is another object of the present invention to provide an electronic
prepress system capable of reducing the time for the front-end to
become free to send another job by allowing more jobs to be queued
up to the RIP from the front-end. . . . It will be appreciated from FIGS.
2 and 3 that each RIP 34 on the network 35 can be accessed by any
front-end 40 or by the server 42 or other computer system 45, any of
which may be either local or remote.
Ex. 1106, 6:64-9:4. Petitioner does not explain the connection between these
passages and the limitation at issue; nor is such connection evident. The cited
portions of Sands, Aldus, and Seybold Vol. 26 likewise appear unrelated to this
limitation. Therefore, we are not persuaded that PIA is reasonably likely to prevail
on this ground of unpatentability.
H. Claim 10 – Obviousness – Lucivero, Sands, Zilles, and Andersson
PIA contends that Lucivero, Sands, Zilles, and Anderson render obvious
claim 10. Claim 10 requires, inter alia, “storing high resolution files on a
computer server” and “generating low resolution files corresponding to said high
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resolution files.” For the storing step, PIA relies on Lucivero, 21:53-63; Sands,
5:16-22; and Zilles at 313. Pet. 45 (claim chart). For the generating step, PIA
relies on Sands, 5:16-22 and Andersson at 20. Even assuming that the storing step
is disclosed in one or more of the prior art references cited by PIA, we are not
persuaded that the cited passage of either Sands or Anderson discloses the
generating step. The passage of Sands on which PIA relies discusses the operation
of a typesetter that produces press film flats for plate making and printing. Ex.
1107, 5:16-22. The passage of Andersson on which PIA relies discusses the
advantages of portable documents, as well as the characteristics of Acrobat
Distiller, Acrobat Reader, and Acrobat Exchange. Ex. 1112 at 20.
5
Neither
passage discusses the generation of low resolution files from high resolution files
stored on a computer server. Therefore, we are not persuaded that PIA is
reasonably likely to prevail on this ground of patentability.
I. The Remaining Grounds of Unpatentability
PIA’s remaining grounds of unpatentability address claims that depend,
either directly or indirectly, from one of claims 4 and 10. Pet. 46-60. Because we
are not persuaded that PIA is reasonably likely to prevail on any of its asserted
grounds of unpatentability of claims 4 and 10, we are also not persuaded that PIA
is reasonably likely to prevail on any of its asserted grounds of unpatentability of
the dependent claims.
III. CONCLUSION
We decline to institute an inter partes review of any of the challenged

5
Also, notably, PIA does not argue expressly that a person of ordinary skill
in the art would have had a reason to combine Andersson with the other references
on which PIA relies. Pet. 45.
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claims.
IV. ORDER
For the reasons given, it is
ORDERED that the Petition is denied as to all of the challenged
claims of the ’349 patent.

PETITIONER:
John M. Adams, Esq.
Lawrence G. Zurawsky, Esq.
Price & Adams, P.C.
4135 Brownsville Road,
P.O. Box 98127
Pittsburgh, PA 15227
paip.law@verizon.net

PATENT OWNER:
W. Edward Ramage, Esq.
Samuel F. Miller, Esq.
Baker, Donelson, Bearman,
Caldwell & Berkowitz, P.C.
Baker Donelson Center
211 Commerce St., Ste 800
Nashville, TN 37201
eramage@bakerdonelson.com