The Georgia IP Litigation Blog monitors patent, trademark, copyright, and trade secret cases pending in Georgia federal district courts and in the U.S. Court of Appeals for the 11th Circuit, based in Atlanta. The blog alerts readers to initiation of such cases in the district courts and summarizes relevant orders and opinions from each covered court.
On 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 Patent”).
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 C. Jones.