PRINTING INDUSTRIES OF AMERICAv.CTP INNOVATIONS, LLC

Patent Trial and Appeal Board

Dec 30, 2013

09364935 (P.T.A.B. Dec. 30, 2013)

Trials@uspto.gov Paper 15
Tel: 571-272-7822 Entered: December 30, 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 IPR2013-00489
Patent 6,738,155
_______________

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 4 and 5, “Pet.”)
1
requesting an inter partes review of claims 1-20 of
U.S. Patent No. 6,738,155 (Ex. 1201, “the ’155 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 and the Preliminary Response, and the
exhibits attached thereto, we determine that the Petitioner has not shown a
reasonable likelihood that it would prevail with respect to at least one of the claims
of the ’155 patent. Accordingly, we do not authorize an inter partes review to be
instituted as to any of claims 1-20 of the ’155 patent.
B. Related Proceedings
PIA discloses that the ’155 patent is involved in 35 co-pending infringement
actions listed in Appendix B of the Petition. Pet., App. B. PIA has also petitioned

1
The Petition cover sheet and tables of contents, authorities and exhibits were
filed separately from the body of the Petition, and have been collectively
designated Paper 4. The Petition itself has been designated Paper 5.
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for inter partes review of another patent at issue in the co-pending litigation,
U.S. Patent No. 6,611,349. See IPR2013-00474, Papers 3, 4 (July 29, 2013).
C. The Claimed Subject Matter
The ’155 patent relates to “a system and method of providing publishing and
printing services via a communication network.” Ex. 1201, 1:9-10. According to
the ’155 patent, key 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 stage, 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 ’155 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 then
bound, finished, and distributed in its final form. Id. at 1:45-51.
The ’155 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 server, a desktop
computer, 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. Central service facility 105 comprises a server,
“hierarchical storage management” (“HSM”) system 120, “digital content
management” (“DCM”) system 130, and local area network (“LAN”) 150. Id. at
5:40-50, Fig 1. An end user can store files in HSM system 120 at central service
facility 105 to reduce storage needs at the end user facility. Id. at 7:19-23, 38-40.
D. Exemplary Claims
Claims 1, 10, and 16 are independent. Claim 1 recites a printing and
publishing system comprising an end user facility, a central service facility, and a
printing company facility. Ex. 1201, 21:7-33. Claims 10 and 16 are drawn to
methods of generating a plate-ready file configured for the creation of a printing
plate. Id. at 22:4-14, 31-45. Claims 2-9 depend, directly or indirectly, from claim
1. Id. at 21:34-22:3. Claims 11-15 depend from claim 10, and claims 17-20
depend from claim 16. Id. at 22:15-30, 46-61.
Claims 1, 10, and 16 are reproduced below:
1. A printing and publishing system providing prepress, content
management, infrastructure, and workflow services to system
subscribers 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 and
the generation of a portable document format (PDF) file;
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a printing company facility coupled to said communication
network, the printing company facility providing imposition
operations and generating a plate-ready file from said PDF file, the
imposition operations including the setting of pages on a particular
plate as well as positioning and orientation of pages on said plate; and
a central service facility coupled to said communication
network, the central service facility providing storage, file processing,
remote access, and content management operations; the content
management operations including the capture, organization, archival,
retrieval, and reuse of electronic files containing any one of text,
graphics, photos, artwork, full pages, audio, video, and completed
projects; content management operations further including the
organization and cataloging of file content for browsing, searching,
and retrieving of files and data.

10. A method of providing printing and publishing services to a
remote client in real time using a communication network, the method
comprising:
storing files on a computer server, the files containing
information relating to images, text, art, and data;
providing said files to a remote client for the designing of a
page layout;
generating a portable document format (PDF) file from the
designed page layout;
generating a plate-ready file from said PDF file; and
providing said plate-ready file to a remote printer.

16. A method of providing printing and publishing services to a
remote client performing any one of page layout designing and plate
press printing where said printing and publishing services are
provided in real time using a wide area communication network, the
method comprising:
storing high resolution files on a computer server;
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generating low resolution files corresponding to said high
resolution files;
providing said low resolution files to a remote client for the
designing of a page layout;
generating a portable document format (PDF) file from the page
layout designed by said remote client;
providing said PDF file to said remote client; and
providing a plate-ready file to a remote printer.

E. Prior Art Relied Upon
PIA relies upon the following prior-art references:
Lucivero US 7,242,487 July 10, 2007 Ex. 1205
Benson EP App. 0878303 Nov. 18, 1998 Ex. 1206
Sands US 5,634,091 May 27, 1997 Ex. 1207
Holub US 6,043,909 Feb. 26, 1996 Ex. 1210
Dorfman EP App. 0920667 June 9, 1999 Ex. 1211
Benson ’818 U.S. 6,046,818 June 3, 1997 Ex. 1212

MATTIAS ANDERSSON ET AL., PDF PRINTING AND PUBLISHING, THE NEXT
REVOLUTION AFTER GUTENBERG (Micro Publishing Press 1997) (Ex. 1204)
(“Andersson”);
Robert R. Buckley, A Framework for Digital Data Workflow in a Graphic
Arts System, TAGA PROCEEDINGS 1997 (Ex. 1208) (“Buckley”);
Stephen N. Zilles, Using PDF for Digital Data Exchange, TAGA
PROCEEDINGS 1997 (Ex. 1209) (“Zilles”).
ALDUS CORP., OPI OPEN PREPRESS INTERFACE SPECIFICATION 1.3 (1993)
(Ex. 1213) (“Aldus”);
RICHARD M. ADAMS II ET AL., COMPUTER TO PLATE AUTOMATING THE
PRINTING INDUSTRY (Graphic Arts Technical Foundation 1996) (Ex. 1214)
(“Adams II”).

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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):
Reference[s] Basis Claims Challenged
Andersson § 102 1
Lucivero, Andersson, Benson, and
Sands
§ 103 1, 2, 4-6, 9
Lucivero, Sands, and Buckley § 103 1
Lucivero, Andersson, Benson,
Sands, and Holub
§ 103 3, 7, 8
Zilles § 102 10
Lucivero and Andersson § 103 10
Benson ’818 and Buckley § 103 10
Lucivero, Andersson, Sands, and
Zilles
§ 103 16, 19, 20
Zilles and Dorfman; or Lucivero,
Andersson and Dorfman; or Benson
’818, Buckley, and Dorfman
§ 103 11
Lucivero, Andersson, and Zilles; or
Benson ’818, Buckley, and Zilles
§ 103 12
Zilles and Benson; or Lucivero,
Andersson, and Benson; or Benson
’818, Buckley and Benson
§ 103 13
Zilles and Anderson; or Lucivero
And Andersson; or Benson ’818,
Buckley, and Andersson
§ 103 14
Zilles and Dorfman; or Lucivero,
Andersson, and Dorfman; or
Benson ’818, Buckley, and
Dorfman
§ 103 15
Lucivero, Andersson, Sands, Zilles,
Dorfman, and Adams II
§ 103 17
Lucivero, Andersson, Sands, Zilles,
and Aldus
§ 103 18
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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 Leahy-Smith America Invents Act, Pub. L. No. 112-29,
125 Stat. 284 (2011) (“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 (Fed. Cir. 2004) (“Absent claim language carrying a 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 six claim terms, which are
summarized below:
Claim Term Proposed Interpretation Claim(s)
end-user facility
facility that provides page building
operations allowing the design and
construction of pages from images, text,
1-9
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Claim Term Proposed Interpretation Claim(s)
and data available via a communication
network. Pet. 6.
central service facility
providing storage, file processing, remote
access, and content management
operations. Pet. 7.
1-9
printing company
facility
providing printing operations for producing
a printing plate from said plate-ready file.
Pet. 7.
1-9
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.
2-5, 12,
13, 16-
20
communication routing
device
routers and switches . . . included at central
service facility 105, end user facility 300,
and printing company facility 400. Pet. 7.
2-5
plate-ready file
a file containing pages designed from
images, texts, and data converted to a
digital file for producing a printing plate.
Pet. 7-8.
1-14

CTP does not dispute PIA’s proposed interpretations. See generally Prelim.
Resp. We therefore adopt them for purposes of this decision, with the following
additional discussion.
1. “end user facility,” “central service facility,” and “printing
company facility” (claim 1)
PIA provides broad, functional definitions for the end-user, central-service,
and printing-company facilities. Such broad, functional definitions leave open the
possibility that the same “facility,” as that term would be understood by a person of
ordinary skill in the art at the time of the invention, could serve as more than one
of the claimed facilities as long as it performs the functions corresponding to the
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claimed facilities. We determine, however, that such an interpretation would be
unreasonably broad. As the Federal Circuit has held, “[w]here a claim lists
elements separately, the ‘clear implication of the claim language’ is that those
elements are ‘distinct component[s]’ of the patented invention.” Becton,
Dickenson and Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir.
2010) (internal citations and quotations omitted); cf. Regents of Univ. of Minn. v.
AGA Med. Corp., 717 F.3d 929, 935 (Fed. Cir. 2013) (holding that phrase “first
and second occluding disks” means physically separate occluding disks). Thus, the
patentee’s use of separate claim terms “clear[ly] impli[es]” that the claimed
facilities must be distinct from each other in some manner as would have been
understood by a person of ordinary skill in the art at the time of the invention.
Further, we find nothing in the Specification that is inconsistent with this
conclusion. On the contrary, the three facilities are consistently discussed and
depicted separately, with each facility connected to the same communication
network to facilitate the transfer of data between them, and with each facility
performing different functions. See, e.g., Ex. 1201, 2:54-64, 4:26-33, Figs. 1-5.
2. “storing files . . . providing said files” (claim 10)
Claim 10 is drawn to a method of providing printing and publishing services
to a remote client comprising the steps of, e.g., “storing files on a computer server,
the files containing information relating to images, text, art, and data; [and]
providing said files to a remote client for the designing of a page layout.”
Ex. 1201, 22:7-10. The reference to “said files” in the second clause indicates that
the files stored “on a computer server” are the same files that are provided “to a
remote client for the designing of a page layout.” See Fuji Photo Film Co. v. Int’l
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Trade Comm’n, 386 F.3d 1095, 1099 (Fed. Cir. 2004) (holding that “said means”
refers to only those structures expressly denominated as “means” in the claim).
3. “providing said low resolution files to a remote client for the
design of a page layout; generating a portable document format
(PDF) file from the page layout designed by said remote client;
providing said PDF file to said remote client” (claim 16)
Claim 16 requires the steps of providing low resolution files to a remote
client for the designing of a page layout, generating a PDF file from the page
layout designed by said remote client, and providing said PDF file to said remote
client. Ex. 1201, 22:37-43. This language requires that the same PDF file that is
generated from the page layout designed by the remote client be sent “to” the
remote client.
2
See Fuji Photo, supra.
B. Claim 1 – § 102 – Andersson
PIA contends that Anderson, Ex. 1204, anticipates claim 1 under 35 U.S.C.
§ 102. Pet. 25.
1. Andersson
Andersson, titled “PDF Printing and Publishing,” describes Adobe’s
Portable Document Format (PDF). According to Andersson, a PDF document is a
self-contained file format that contains multiple objects, i.e., bitmap images, text,
font information, and line art. Ex. 1204, 22-24. Andersson teaches how to create,

2
According to claim 16’s preamble, the claimed printing and publishing
services are provided to a remote client “performing any one of page layout
designing and plate press printing.” Ex. 1201, 22:31-31-33 (emphasis added). The
preamble thus suggests that the remote client to whom the services are provided
need not perform page layout designing. The body of the claim, however, requires
that the remote client perform page layout services, because (1) low resolution files
are provided to the client to do so, and (2) a PDF file is generated from the page
layout designed by the remote client.
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view, and edit PDF files, and how to use them to create and simplify digital
prepress workflows as compared with “traditional” prepress workflows. Id. at
66-67. Andersson also discusses digital environments, in particular, computer
networks and servers, suitable for implementing these workflows. Id. at 51.
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. Am. Hoist & Derrick Co., 730 F.2d 1452,
1458 (Fed. Cir. 1984). Based on the record before us, we are not persuaded that
Andersson discloses each and every element of claim 1.
We first consider the limitation that requires a “printer company facility”
that provides, inter alia, “imposition services.” PIA relies on ten non-consecutive
pages in Andersson, which is over 182 pages in length, for the disclosure of this
limitation. Pet. 25 (claim chart) (citing Ex. 1204, 25-29, 31, 35, 43, 63, 77).
However, PIA does not explain how these teachings disclose a printing company
facility that provides imposition services. Moreover, although two of the cited
pages in Andersson – 35 and 43 – discuss imposition in general terms, we are
unable to find any teaching in the cited pages suggesting that imposition services
are to be provided specifically by a printing company facility; nor has PIA pointed
us to any such teaching.
We next consider the limitation requiring a “central service facility” that
performs certain content management operations, including “the capture,
organization, archiv[ing], retrieval, and reuse of electronic files containing any one
of text, graphics, photos, artwork, full pages, audio, video, and completed
projects.” Ex. 1201, 21:27-30. PIA relies on nine non-consecutive pages in
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Andersson for the disclosure of the central service facility, and seven additional
pages for the disclosure of the claimed content management operations. Pet. 23
(citing Ex. 1204, 51, 65); Pet. 25 (claim chart) (citing Ex. 1204, 29, 49, 52, 65, 76,
158, 178, 181 for the-central-service-facility disclosure, and 30, 43, 61, 62, 161,
176, 178, 181, and 182 for the content-management-operations disclosure). PIA
asserts that Andersson discloses a server that stores files and software, links to
various devices, and operates to shift the processing burden from individual
workstations for more efficient printing and job handling. Pet. 23. However, PIA
does not explain how this disclosure relates to the claimed central service facility
that performs content management operations.
Even if the portions of Andersson on which PIA relies could be deemed to
disclose all of claim 1’s limitations,
3
PIA would remain unable to show that
Andersson anticipates claim 1 because PIA does not show, or even allege, that
Andersson discloses the limitations arranged as part of the same “printing and
publishing system” required by claim 1. See Net MoneyIN, Inc. v. Verisign, Inc.,
545 F.3d 1359, 1371 (Fed. Cir. 2008) (holding that “unless a reference discloses
within the four corners of the document not only all of the limitations claimed but
also all of the limitations arranged or combined in the same way as recited in the
claim, it cannot be said to prove prior invention of the thing claimed and, thus,
cannot anticipate under 35 U.S.C. § 102”). For example, the twenty-four pages on
which PIA relies to disclose the printing-company-facility and central-service-

3
For the purposes of this decision we do not, and need not, take any position
as to whether Andersson discloses the remaining limitations of claim 1. Nor do we
take any position as to whether the other references on which PIA relies to argue
claim 1’s unpatentability, individually or combined, disclose limitations that are
not expressly discussed.
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facility limitations span six chapters of Andersson and appear to address a variety
of topics, such as the advantages of using the PDF file format rather than
PostScript in digital workflows (e.g., Ex. 1204, 25-29, 161); the use of a local area
network (LAN) to share resources (id. at 49); the various types of servers that may
be used on a LAN (id. at 51-52, 61-62); and the future of the digital printing
market (id. at 178, 181-82). PIA has not explained how these various topics
combine to disclose a single printing and publishing system as recited in claim 1.
Indeed, it is difficult to see how the disparate teachings of Andersson on which
PIA relies relate to a single embodiment; Andersson appears to us to be a teaching
reference that discusses numerous topics from which PIA cherry-picks to construct
is anticipation case.
Accordingly, we are not persuaded that PIA is reasonably likely to prevail
on this ground of unpatentability.
C. Claim 1 – § 103 – Lucivero, Andersson, Benson, and Sands
PIA alleges that Claim 1 is unpatentable under 35 U.S.C. § 103 over the
combination of Lucivero, Andersson, Benson, and Sands. Pet. 26-31.
1. Lucivero
Lucivero discloses a system for creating, storing, and processing raster data
files. Ex. 1205, Abs, 6:26-28. The system allows an end user to control the
workflow of bitmap image files to a plurality of user-selectable output devices. Id.
at 7:60-63, 8:30-35. Lucivero’s system comprises at least one terminal device on
which an end user can create PostScript
4
image files, at least one RIP for
converting PostScript files into raster data, and a print drive for receiving the

4
“Postscript
TM
” or “PostScript
TM
” refers to a page-description-language file
format from Adobe Systems, Inc. Ex. 1205, 2:53-55.
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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”), 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. Benson
Benson relates to a “[d]istributed imaging and control architecture for digital
printing presses and platesetters.” Ex. 1206, 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.
5
Id.
3. 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
TM
or
PDF), and sends it via a communication network to the printer. Ex. 1207, 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.

5
The only portions of Benson in the record are its cover page and a related
search report. See Ex. 1206.
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4. Discussion
In its claim chart for this ground of unpatentability, PIA indicates that
portions of Lucivero, Andersson, Benson, and Sands correspond to specific
limitations in claim 1. Pet. 31. While PIA summarizes and provides broad
citations to the above references (Pet. 30), PIA does not explain how the cited
portions correspond to the limitations for which they are cited; nor is such
correspondence self-evident. Indeed, in several cases, there is no apparent
connection between PIA’s citations and the allegedly corresponding limitation.
For example, for the limitation requiring the central service facility to perform
content management operations, PIA cites the following portions of Lucivero:
4:31-45; 7:58-67; 8:1-21; and 8:41-54. The first citation discusses the use of
imagesetters with RIPs and Multiplexors (“MUX”), and explains that jobs using
large-format imagesetters can bottleneck at the RIP stage. Ex. 1205, 4:31-45. The
second and third citations discuss a prepress system that Lucivero identifies as
prior art. Id. at 7:5-8:21. The final citation discusses Lucivero’s preferred
embodiment, and various output devices that can be connected to it. Id. at 8:41-54.
None of these excerpts addresses the claimed central-service facility.
Likewise, PIA’s citations allegedly disclosing the content-management
limitation fall short. Claim 1 requires that content management operations include
“the capture, organization, archiv[ing], retrieval, and reuse of electronic files,” and
the “organization and cataloging of file content for browsing, searching, and
retrieving of files and data.” Ex. 1201, 21:26-33. But the portions of Lucivero
cited as corresponding to this limitation discuss, instead: (1) a “Pilot GUI”
(graphical user interface) that can be used to control print jobs (Ex. 1205,
21:53-63); (2) the “front end” component of the prior art prepress system
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mentioned above (id. at 7:58-63); and (3) specific output devices suitable for use
with the preferred embodiment (id. at 8:43-49). Again, we discern no evident
connection between these discussions and the content-management-operations
limitation.
We are not persuaded that PIA is reasonably likely to prevail on this ground
of unpatentability.
D. Claim 1 – § 103 – Lucivero, Sands, and Buckley
PIA contends that claim 1 is unpatentable under 35 U.S.C. § 103 over
Lucivero, Sands, and Buckley.
6
As with the previous ground, PIA provides a brief
summary of the references, cites portions of the references that allegedly
correspond to the limitations of claim 1, but does not explain how those portions
correspond to their respective limitations. See Pet. 32-33. Moreover, based on our
review, it appears that the references do not teach some of the limitations of claim
1, either individually or in combination. PIA relies on the same portions of
Lucivero for teaching the central-service-facility and content-management
limitations (Pet. 34), which, as discussed above, do not appear to do so. PIA also
relies on Buckley to teach these limitations, contending that (1) pages 342 and 343
correspond to the central-service-facility limitation, and (2) pages 339 and 340

6
Buckley discusses “A Framework for Digital Data Workflow in a Graphic
Arts System.” Ex. 1208, 337. In particular, Buckley describes systems that
accommodate multiple desktop publishing applications and multiple output devices
by using a page description language (“PDL”) “usually PostScript
TM
,” because it
“is the common intermediate format that a variety of different applications can use
to connect and communicate with a variety of different devices.” Id. at 338-339.
Buckley also discusses the evolution of digital prepress systems in which various
operations, such as imposition, can occur before, during, or after the RIP. Id. at
340-343.

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correspond to the content-management limitation. Pet. 34 (claim chart).
7
Such
correspondence is not evident to us, however. Regarding the first citation, pages
342-43 discuss various prepress operations, such as trapping, imposition, OPI, and
RIPping, but do not discuss these operations as performed at a central service
facility (as opposed to, e.g., a printing company facility). Regarding the second
citation, pages 339 and 340 discuss systems that can accommodate multiple design
applications and output devices using PDL. PIA does not explain how this
disclosure corresponds to the specific content-management operations required by
claim 1. Accordingly, we are not persuaded that PIA is reasonably likely to prevail
on this ground of unpatentability.
E. Claim 10 – § 102 – Zilles
PIA contends that Zilles
8
renders claim 10 unpatentable under 35 U.S.C.
§ 102. However, we are not persuaded that Zilles discloses “storing files on a
computer server, the files containing information relating to images text, art, and
data; [and] providing said files to a remote client for the designing of a page
layout.” As discussed above, this limitation requires that the same files that are
stored on a computer server are the files provided to a remote client for the
designing of a page layout. PIA cites pages 311-313 of Zilles as disclosing this
limitation. Pet. 36 (claim chart).

7
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.
8
Zilles discusses, in general, using PDF for exchanging digital prepress
data. Ex. 1209, 308.
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The portion of Zilles on which PIA relies explains why PDF files are
superior to PostScript
TM
files for carrying prepress information. Id. at 312-13.
This portion also explains how PDF files can be used for “OPI image
replacement.” Id. at 313. Using this process, “[v]ery high-resolution images can
be stored separately from the PDF file itself, allowing small files to be maintained
and routed with the large images replaced at print time.” Id. Typically a graphic
designer who is creating a document will obtain needed images and send them to
the printer for scanning and storage as high resolution image files. Id. The printer
returns “EPS” files with low-resolution, “for placement only” images to the
designer. Id. at 313-14. The designer creates the document using the low-
resolution images, converts the document to a PDF file, and transmits the
document in PDF format to the printer. Id. at 314. At the printer, the high-
resolution images replace the low-resolution images in the document prior to
printing. Id. Thus, as we understand Zilles’ process, the high-resolution images
are stored on the server but are not sent to a remote client; instead, low-resolution
image files are sent for designing a page layout. Conversely, PIA has not provided
evidence, or alleged, that the low-resolution images that are sent to the designer are
stored on a server. Accordingly, PIA has not shown that Zilles teaches this
storing/providing step. We are, therefore, not persuaded that PIA is reasonably
likely to prevail on this ground of unpatentability.
F. Claim 10 – § 103 – Lucivero and Anderson
PIA contends that Claim 10 is unpatentable under 35 U.S.C. § 103 over
Lucivero and Andersson. Pet. 36-40. We are not persuaded that these references,
individually or combined, disclose or fairly suggest the storing/providing step.
PIA alleges that certain excerpts of Lucivero disclose this limitation. Pet. 40
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(citing Lucivero, 8:29-40, 7:60-63). These excerpts describe a digital prepress
system comprising one or more front-ends 40 and one or more servers 42 “for
storing image and other data files.” Ex. 1204, 7:60-63, 8:29-40. While this system
stores image and other data files on a server, there is no teaching that files stored
on server 42 are sent to a remote client for the designing of a page layout.
Accordingly, PIA has not shown that the combination of Lucivero and Andersson
teaches the storing/providing step.
G. Claim 10 – § 103 – Benson and Buckley
We again focus on the storing/providing step of claim 10. PIA relies on
Benson ’818 as disclosing this step. Pet. 41 (citing Benson ’818, 5:4-9, 6:54-7:3).
The first cited excerpt discusses an imagesetter with “data transfer paths and
busses . . . for storing and transferring data.” Ex. 1212, 5:4-9. The second excerpt
discusses the operation of an “assembler” and the use of a computer-generated job
ticket to describe user-selected requirements for a print job. Id. at 6:54-7:3. PIA
does not explain how these excerpts are relevant to the storing/providing step, nor
is their relevance apparent to us. Accordingly, PIA has not shown that the
combination of Benson and Buckley discloses this step.
H. Claim 16 – § 103 – Lucivero, Andersson, Sands, and Zilles
PIA contends that claim 16 is unpatentable under 35 U.S.C. § 103 as
obvious over Lucivero, Andersson, Sands, and Zilles. Pet. 42-47. As discussed
above in section II.A, claim 16 requires generating a PDF file from a page layout
designed by a remote client, and providing said PDF file to said remote client. PIA
relies on excerpts of Sands for this disclosure. Pet. 46-47 (claim chart) (citing
Sands, 5:16-22, 56-64, 7:36-8:7). PIA does not explain how these excerpts
disclose these steps, nor is it apparent to us how they would do so. The first
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provision discusses spooling an imposed film flat file to a laser proofer, but does
not state that the laser proofer is with the remote client, or that the imposed film
flat file is a PDF file. On the contrary, Sands indicates that it is a PostScript
TM
file.
Ex. 1207, 5:53-55.
Likewise, the second excerpt of Sands on which PIA relies describes
“imposition module 114” creating a “page description language” file that is used to
create offset plates for printing. Ex. 1207, 7:63-8:7. PIA, however, does not show
or allege that this file is sent to the remote client that designed the page layout.
Moreover, a page-description-language file is not necessarily a PDF file; it could
be a PostScript
TM
file. See, e.g., Ex. 1207, 3; Ex. 1205, 2:53-54.
I. The Remaining Grounds
PIA’s remaining grounds of unpatentability address claims that depend,
either directly or indirectly, from one of claims 1, 10, and 16. Pet. 47-60. Because
we are not persuaded that PIA is reasonably likely to prevail on any of its asserted
grounds of unpatentability of claims 1, 10, and 16, we are also not persuaded that
PIA is reasonably likely to prevail on any of its asserted grounds of unpatentability
for the dependent claims.
III. CONCLUSION
We decline to institute an inter partes review of any of the challenged
claims.
IV. ORDER
For the reasons given, it is
ORDERED that the Petition is denied as to all of the challenged
claims of the ’155 patent.
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PETITIONER:
John M. Adams, Esq.
Lawrence G. Zurawsky, Esq.
Price & Adams, P.C.
4135 Brownsville Road,
P.O. Box 98127
Pittsburgh, PA 15227

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