May 8, 2014, CTP Innovations, LLC (“CTP”), a Delaware LLC, filed a complaint
against Geo Graphics, Inc. (“Geo”) of Atlanta, Georgia, alleging infringement
of U.S. Patent Numbers 6,611,349 (“the ‘349 Patent”) and 6,738,155 (“the ‘155
The complaint comes less than a year after a slew of similar complaints filed in the Northern District of Georgia, in Texas, and in Tennessee last June. More information regarding those complaints can be found in a July 30, 2013 entry from our blog here.
The ‘349 Patent for “System and Method of Generating a Printing Plate
File in Real Time Using a Communication Network” and the ‘155 Patent for a “System and
Method of Providing Publishing and Printing Services Via a Communications
Network” relate to systems and methods of providing publishing and printing
services via a communication network involving computer to plate
technology. Computer to plate technology
involves transferring an image to a printing plate without the middle step of
creating a film of the image imprinted on the plate. Such plates can be used in a
printing press to transfer an image to different types of media.
|Fig. 1 of the '349 and '155 patents|
As stated in the patents’ backgrounds, the methods and systems claimed
are intended to provide a solution for communicating and managing printing and
publishing services without the need to physically transfer copies of design
files and proofs by combining prepress, content management, infrastructure
(server, storage & distribution) and workflow services. Prior to the inventions claimed in the ‘155
and ‘349 patents, slides or computer disks containing pages to be printed were
sent (via mail or express carrier) to be prepared for creation of a plate.
Both patents at issue have been subjected to an inter partes review proceeding with
the United States Patent and Trademark Office’s Patent Trial and Appeal Board
(“PTAB”) initiated by Printing Industries of America (“PIA”).
The first case, captioned Printing Industries of America v. CTP Innovations, LLC (Case No. IPR2013-00474) (“IPR2013-00474”) was filed on July
29, 2013. The petitioner in that case challenged the validity of each and every claim in the
‘349 patent, and on December 31, 2013, the PTAB found that the petition did not demonstrate that there was a reasonable likelihood of invalidating at least one of the claims in the ‘349 Patent.
The second case, captioned Printing
Industries of America v. CTP Innovations, LLC (Case No. IPR2013-00489) (“IPR2013-00489”) was filed on August
2, 2013. The petitioner in that case challenged the validity of each and every claim in the
‘155 patent, and on December 30, 2013, the PTAB found that the petition did not demonstrate that there was a reasonable likelihood of invalidating at least one of the
claims in the ‘155 Patent.
Although it had the opportunity to file a motion for rehearing in
both IPR2013-00474 and IPR2013-00489, PIA declined to file any motion for
rehearing, and the determinations by the PTAB in IPR2013-00474 and
IPR2013-00489 are not appealable. In
those cases, Michael Makin, president and CEO of PIA (petitioner in
IPR2013-00474 and IPR2013-00489) testified before the Senate Committee on the
Judiciary, that the inventions in the ‘349 and ‘155 Patents “relate[ ] to how a
digital file, like a PDF file, is handled and manipulated in a print production
operation up until the time it is used to image a printing plate. This method
of digital workflow and plate imaging was new in the 1990s when the patent was
issued but has become ubiquitous in the industry now.”
According to the complaint, “in so making this statement, it is
clear that Makin and PIA were able to determine from the face of the ‘349 and ‘155
Patents that infringement of the ‘349 and ‘155 was ‘ubiquitous in the industry
now.’” The complaint goes on to allege that Geo is infringing both the ‘349 Patent and the ‘155 Patent with, at least, its
offset sheet-fed and web printing services that involve workflows related to
plate-ready files and/or the generation of such files.
Accordingly, CTP is seeking judgment that Geo has infringed the ‘349
Patent and the ‘155 Patent and that such infringement was willful, a permanent
injunction enjoining infringement of the ‘349 Patent
and of the ‘155 Patent, a judgment and order requiring Defendant to pay CTP its
damages in an amount not less than a reasonable royalty, treble damages, costs,
expenses, and prejudgment and postjudgment interest for Defendant’s
infringement of the ‘349 Patent and the ‘155 Patent, as provided under 35
U.S.C. § 284, and a judgment and order finding the case to be exceptional within the meaning of 35 U.S.C. § 285, and awarding to CTP its reasonable
attorney fees and expenses.
The case is CTP Innovations,
LLC v. GEO Graphics Inc., Case
no. 1:14-cv-01394-SCJ, filed May 8, 2014 in the United States District Court
for the Northern District of Georgia, Atlanta Division, and is assigned to Steve
Labels: inter partes review, Judge Jones, Northern District of Georgia, patent infringement, permanent injunction, willful patent infringement