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Case No. 2015-____ U.S. Patent 6,890,113 i UNITED STATES

1. The AddressMate User Manual listed several products supported by AddressMate Plus including image receiving tape products d at A 159 162 7 68 8mm video tape labels see also Ex 1015 AddressMate was packaged with a CoStar label tape printer Ex 1019 at il 6 7 Ex 1002 at f 54 56 receiving data containing information for a plurality of individual labels The AddressMate User Manual described that the software enabled users to store addresses in a fielded database and showed an example of the address entry box available to a user in Database Mode as shown below 10 Case No 2015 ____ IPR Petition U S Pat 6 890 113 Addvecs Mate tor Windows CAAMATE SAMPLE DB Database Mode Ex 1005 at 3 19 see also id at 8 101 and 8 111 to 8 112 As the Manual stated the Address Entry section displays the address fields that contain the information for the entry that is currently selected in the Database List Id at 8 102 The AddressMate User Manual also disclosed that o ne of the major strengths in AddressMate Plus is its ability to handle data from other database programs You can import data into the AddressMate Plus database or merge the data with a template design for mass mailings name tags or other needs d at 9 125 For example AddressMate Plus lets you effortlessly import data from ASCII list files In ASCII list files the names appea
2. 103 a AddressMate Plus for Windows was an address manager system that could be integrated with Word Pro Ami Pro Word for Windows and Case No 2015 ____ IPR Petition U S Pat 6 890 113 WordPerfect for Windows Ex 1005 at 1 1 AddressMate Plus introduced in 1994 allowed the user to automatically print labels by using data stored in a database Id at 1 1 to 1 2 Id at ii Ex 1010 The AddressMate Plus for Windows User s Manual bears a copyright date of 1994 95 Ex 1005 at ii The AddressMate User Manual was distributed with AddressMate Plus software and with CoStar LabelWriter printers and therefore is prior art to the 113 patent under 35 U S C 102 b Ex 1019 at J 6 7 AddressMate and AddressMate Plus received a great deal of praise and attention from the press Id at 9 It was not considered by the Patent Office during examination of the 113 patent The AddressMate User Manual described that the software enabled users to store addresses in a fielded database and showed an example of the address entry box available to a user in Database Mode as shown below All citations herein refer to the original native pagination of the exhibits Case No 2015 ____ IPR Petition U S Pat 6 890 113 ma Addvecs Mate tor Windows File Edt Settings D Database Mode Ex 1005 at 3 19 see also id at 8 101 and 8 111 to 8 112 As the AddressMate User Manual stated the Address Entr
3. Account No 50 4494 II GROUNDS FOR STANDING UNDER 37 C F R 42 104 a Esselte certifies that the 113 patent is available for IPR and that Esselte is not barred or estopped from requesting this IPR No assignor estoppel applies to Petitioners in an inter partes review proceeding See Redline Detection LLC v Star Envirotech Inc IPR2013 00106 Paper 66 June 30 2014 holding that the equitable defense of assignor estoppel is not Case No 2015 ____ IPR Petition U S Pat 6 890 113 IV IDENTIFICATION OF CHALLENGE UNDER 37 C F R 42 104 B The 113 patent is subject to the first to invent prior art rules in effect prior to the implementation of the America Invents Act Accordingly all references to 35 U S C 102 and 103 set forth herein refer to those sections in effect prior to the implementation of the America Invents Act Petitioners request that the Board cancel claim 16 for the following reasons Ground 1 The DYMO User Manual would have rendered claim 16 obvious under 35 U S C 103 a Ground 2 The Printing the Entire Database functionality disclosed in the AddressMate User Manual would have rendered claim 16 obvious under 35 U S C 103 a Ground 3 Benade would have rendered claim 16 obvious under 35 U S C 103 a Ground 4 The Importing Merge Printing functionality disclosed in the AddressMate User Manual would have rendered claim 16 obvious under 35 U S C 103 a available in inte
4. Claim 16 Obvious Under 35 U S C 103 a The DYMO User Manual Ex 1004 bears a 2001 copyright with an notation that printing occurred in March 2001 Ex 1004 at 11 The DYMO User Manual was distributed along with the DYMO LabelWriter range of printers and described in detail various functions performed by these printers The DYMO LabelWriter range of printers were launched in April 2001 and the DYMO User Manual was available as a printed publication to the public at least from April 2001 onwards See e g Exs 1011 1012 Thus the DYMO User Manual qualifies as prior art to the 113 patent under 35 U S C 102 b The DYMO User Manual was not considered by the Patent Office during examination of the 113 patent The DYMO User Manual described performing the method of claim 16 Ex 1004 at 15 The DYMO User Manual disclosed this automatic field identification capability using three simple steps l On the File menu click Open or click the Open button The Open dialog box is displayed 2 Select the file you wish to open and click Open 3 You can then print the label as is or modify it to suit your needs 20 Case No 2015 ____ IPR Petition U S Pat 6 890 113 Id At minimum claim 16 would have been obvious to one of ordinary skill in the art in view of this disclosure Ex 1002 at J 47 As shown in the chart below claim 16 of the 113 patent would have been obvious to one or ordinary skill in the art in vi
5. Douglas J Kline Reg No 35 574
6. Ex 1004 at 15 Ex 1002 at f 89 90 printing said plurality of individual labels The DYMO User Manual teaches that the user can then print the label s as is or modify it to suit your needs Ex 1004 at 15 Ex 1002 at 1 91 22 Case No 2015 ____ IPR Petition U S Pat 6 890 113 D The Importing Merge Printing Functionality Disclosed In The AddressMate User Manual Would Have Rendered Claim 16 Obvious Under 35 U S C 103 A As discussed above in Section VII A AddressMate Plus for Windows was a prior art address manager system that could be integrated with Word Pro Ami Pro Word for Windows and WordPerfect for Windows Ex 1005 at 1 1 AddressMate Plus allowed the user to automatically print labels by using data stored in a database Id at 1 1 to 1 2 Id at ii Ex 1010 The AddressMate Plus User Manual described in detail that AddressMate Plus allowed users to import names and addresses from other databases and then print the imported data on multiple labels d at 1 1 to 1 2 Examples of databases included Paradox dBase comma delimited ASCII and ASCII list formats d After receiving the data file AddressMate Plus processed the data to identify one or more data fields Id at 9 125 131 The AddressMate Plus User Manual then described that each record i e data for each label was merged with the label template for printing Id at 9 131 The AddressMate User
7. Knowledge Workers Is Available This Week Jun 7 1999 http news microsoft com 1999 06 07 microsoft office 2000 an essential tool for all knowledge workers is available this week Chicago Tribune AddressMate Plus Produced by CoStar Corp 1010 For Mar 10 1996 http articles chicagotribune com 1996 03 10 business 9603100068_1_ami pro microsoft word mailing labels Exhibit List 1 Case No 2015 ____ IPR Petition U S Pat 6 890 113 1011 DYMO DYMO s LabelWriter Range Eliminates Label Printing Hassles April 18 2001 http global dymo com enCA PressRelease DYMO s LabelWrite r Range html 1012 DYMO DYMO Launches New PC Mac Connected Product Line May 14 2001 http global dymo com enCA PressRelease DYMO_ Launches Ne w PC Mac Connected Product Line html 1013 DYMO LabelWriter Address labels last accessed Feb 15 2015 http global dymo com enGB Label Attribute LabelWriter Addres s labels html 1014 DYMO Standard Tapes last accessed Feb 15 2015 http global dymo com enGB LabelsOverview Standard_Tapes ht ml 1015 LabelCity Examples of various continuous labels produced by CoStar DYMO 1016 Microsoft Computer Dictionary Sth ed 2002 1017 Grace M Hopper et al UNDERSTANDING COMPUTERS West Publishing Co 1984 1018 William M Fuori et al COMPUTERS AND INFORMATION PROCESSING Prentice Hall 1986 1019 Excerpts o
8. a form and format that is convenient for the particular application Thus this apparatus produces individually identified items without the use of a permanent or semi permanent printing master The label generation apparatus generates labels of arbitrary size shape and configuration as defined by the user and media used for the labels d at 3 2 11 The term printer as used herein describes any of the various commercially available computer driven systems that produce human readable and or machine readable imprints on media These systems include electrostatic plotters laser printers dot matrix printers thermal printers magnetic strip writers magnetic ink character recognition MICR printers and pen plotters One example of a state of the art printer that produces human readable output is the electrostatic plotter such as the Versatec VS3000 plotter manufactured by Versatec Inc of Santa Clara Calif or the ColorWriter 400 plotter manufactured by Synergy Computer Graphics Corporation of Sunnyvale Calif The electrostatic plotter uses four toner colors black cyan magenta yellow to produce 2048 output colors The plotter produces 400 pixels per inch onto the print media which typically is a 24 36 or 44 by 200 foot roll of mylar Other print media can be used such as paper or other transparent materials In addition a sandwich or composite label can be produced with the label printed on paper and ove
9. you simply open it For convenience the last four saved label files appear at the bottom of the File menu You can then print the label as is or modify it to suit your needs To open an existing label file 1 On the File menu click Open or click the Open button The Open dialog box is displayed 2 Select the file you wish to open and click Open Ex 1004 at 15 Ex 1002 at I 83 84 processing said data to identify a plurality of individual label data fields to be printed on said plurality of individual labels The DYMO User Manual disclosed that upon opening a label file the user can then print the label as is Ex 1004 at 15 Thus the microprocessor in the computer using the DYMO LabelWriter software received the label data with whatever fields of information were contained within that label data and processed them file to prepare to generate the individual labels d Ex 1002 at 85 88 Patent Owner s expert in litigation has similarly stated that selecting the File menu and then Open to open a DYMO address book using another allegedly infringing program results in processing to identify the data fields associated with each label without any manual user intervention Ex 1020 at 9 34 37 generating a plurality of individual labels from the identified data and As per the DYMO User Manual upon opening an existing label file the label s open in the new window
10. 2002 receive process and print a batch of labels having multiple data fields without requiring separate input of that data Ex 1001 at 1 56 62 Ex Case No 2015 ____ IPR Petition U S Pat 6 890 113 1002 at 4 33 34 However many prior art systems including those discussed below were capable of performing these functions d In fact Patent Owner s own expert Mr Charles Curley admitted that he thought that the ability of labeling software to import address data was pretty obvious that needs to be a fundamental feature of a label printer Ex 1006 at 195 25 196 11 emphasis added VI LEVEL OF ORDINARY SKILL IN THE ART As required under 37 C F R 42 104 b 4 and 5 explanations of how claim 16 of the 113 patent is unpatentable under the statutory grounds identified above are provided in Section VII below with reference to the supporting evidence Additional background and support for each ground of rejection is set forth in the Declaration of Stephen Gray Ex 1002 For purposes of this Petition Petitioners adopt Mr Grays s definition of a person of ordinary skill A person with at least a Bachelor of Science degree or the equivalent in a relevant scientific or engineering field such as computer engineering computer science or electronics engineering and having at least one year of experience related to printing systems Ex 1002 at Jf 24 27 VII CONSTRUCTION OF CLAIM TERM An unexpired c
11. 89 Brush St Qakland CA 93628 8900 A comma delimited file as viewed using Notepad Id at 9 128 Ex 1002 at JJ 96 97 processing said data to identify a plurality of individual label data fields to be printed on said plurality of individual labels The database links that are built into AddressMate Plus are designed to be easy and powerful You have complete control over which fields are read from a database and how they are put together to form an address If the database you are importing has a single field for the first name and last name you can readily import the data into separate fields in the AddressMate Plus database If the database has entries for birthdays phone numbers and other fields you don t want you can leave them out Importing or merge printing data is simply a matter of selecting the fields you want to import from the other database and matching them with the corresponding fields in the AddressMate Plus database Ex 1005 at 9 125 126 The fields in the file you are importing appear in the Import from list on the left The fields that are defined in the AddressMate Plus database appear in the Import to list on the right In the example below the first field was empty so it is shown as lt lt Field 0 gt gt Since comma delimited files don t assign names to fields it is sometimes difficult to determine what information a field is designed to hold In such cases click o
12. Case No 2015 ____ U S Patent 6 890 113 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD ESSELTE CORPORATION ET AL Petitioners V DYMO Patent Owner Case No 2015 Patent 6 890 113 PETITION FOR INTER PARTES REVIEW PURSUANT TO 35 U S C 311 319 AND 37 C F R 42 Case No 2015 ____ U S Patent 6 890 113 TABLE OF CONTENTS Page I MANDATORY NOTICES UNDER 37 C F R 42 8 1 Il PAYMENT OFFEES ella 2 III GROUNDS FOR STANDING UNDER 37 C F R 42 104 a 2 IV IDENTIFICATION OF CHALLENGE UNDER 37 C F R TV ATA BY ARRE A E ob radius EE EE E E E E E E E 3 V OVERVIEW OF THE TECHNOLOGY AND THE 113 PATENT 4 VI LEVEL OF ORDINARY SKILL IN THE ART cccceeeeeeeeees 5 VII CONSTRUCTION OF CLAIM TERM 5 VII DETAILED EXPLANATION OF GROUNDS FOR UNPATENTABLITY see rakett 6 A The Printing The Entire Database Functionality Disclosed In The AddressMate User Manual Would Have Rendered Claim 16 Obvious Under 35 U S C STO GJ 6 B Benade Would Have Rendered Claim 16 Obvious Under 35 USE SINNE 13 C The DYMO User Manual Would Have Rendered Claim 16 Obvious Under 35 U S C SAO BAs 20 D The Importing Merge Printing Functionality Disclosed In The AddressMate User Manual Would Have Rendered Claim 16 Obvious Under 35 U S C 103 a ceeeeeesesesesesesesesesesesesesees 23 E Microsoft Office 2000 Self Stu
13. Manual listed several products supported by AddressMate Plus including image receiving tape products Id at A 159 162 see also Ex 1015 In any event it would have been obvious to use AddressMate Plus with a label tape printer AddressMate Plus was packaged with CoStar label tape printers in 1995 Ex 1019 at 6 7 23 Case No 2015 ____ IPR Petition U S Pat 6 890 113 As explained in the table below claim 16 obvious would have been obvious to a person or ordinary skill in the art in view of the Importing Merge Printing functionality disclosed in the AddressMate User Manual Claim AddressMate User Manual 16 A tape printing AddressMate Plus User Manual illustrated the printing of method for printing an envelopes and mailing labels including POSTNET bar image on an image codes business cards name tags file folder labels receiving tape diskette labels Rolodex style cards and more Ex comprising the steps 1005 at 1 1 of AddressMate Plus comes ready to print on standard envelopes labels and specialty papers from CoStar Avery NEBS and others Creating an envelope or label is as easy as selecting the type of item to design and telling AddressMate Plus what and where to print AddressMate Plus powerful database links allow you to import names and addresses from other database applications directly into AddressMate Plus built in database If you prefer you can also merge print add
14. RS by narufactre Brome J Quota r Caos Cee pel ___jJi Select a standard mailing label Access comes with an extensive library of standard label formats listed by manufacturer and dimensions in either English inch or metric millimeter mea surements for both sheet feed and continuous feed printing Ex 1003 at 404 See also Ex 1002 at JJ 106 107 tape is a type of continuous feed image receiving media receiving data containing information for a plurality of individual labels The Microsoft Office 2000 Self Study Kit disclosed that a user was able to direct the Microsoft Access software to receive data from a specified database in the disclosed example the Customers table that contains information for a plurality of individual labels 31 Case No 2015 ____ IPR Petition U S Pat 6 890 113 in the list at the bottom of the New Report dialog box click the drop down arrow and select Customers The Customers table contains all of Sweet Lil s customer information in cluding names and addresses Click OK The first page of the Label Wizard appears Ex 1003 at 404 Each time the mailing label report is used Access extracts the current information from the database The design is saved and reused but the data will always be current Id at 403 Ex 1002 at JJ 108 109 processing said data to identify a plur
15. The following matter involving the 113 patent would affect or be affected by a decision in the proceeding Sanford L P d b a DYMO and DYMO B V B A v Esselte AB Esselte Leitz GMBH amp Co KG and Esselte Corporation No 1 14 cv 07616 VSB S D N Y Lead and Back up Counsel and Service Information LEAD COUNSEL BACK UP COUNSEL Douglas J Kline Reg No 35 574 Charles H Sanders Reg No 47 053 dkline goodwinprocter com csanders goodwinprocter com Goodwin Procter LLP Goodwin Procter LLP Exchange Place 53 State Street Exchange Place 53 State Street Boston MA 02109 Boston MA 02109 Case No 2015 ____ IPR Petition U S Pat 6 890 113 T 617 570 1209 F 617 649 1466 T 617 570 1315 F 617 801 8804 Jay C Chiu Reg No 47 308 jchiu goodwinprocter com Goodwin Procter LLP 601 South Figueroa St 41st Floor Los Angeles CA 90017 T 213 426 2576 F 213 623 1673 Sumedha Ahuja Reg No 73 038 sahuja goodwinprocter com Goodwin Procter LLP 901 New York Ave NW Washington D C 22201 T 202 346 4035 F 202 346 4444 Counsel consents to electronic service at their email addresses A power of attorney accompanies this Petition II PAYMENT OF FEES We hereby authorize the Office to charge the fee set forth in 37 C F R 42 15 a for this Petition to a credit card and further authorize payment of any additional fees to be charged to Deposit
16. akts Id at 407 See also Ex 1002 at JJ 110 112 generating a The Microsoft Office 2000 Self Study Kit described the Label plurality of Wizard generated a mailing labels report that contained the individual labels plurality of labels that have been created from the identified from the data That report with the multiple labels could be saved and A Mi data previewed by the user an 33 Case No 2015 ____ IPR Petition U S Pat 6 890 113 Click Next The final page of the Label Wizard appears Access 2000 suggests a name Labels Customers for the mailing labels report and gives you the option of previewing the mailing labels or modifying the label design F Copia tao 13 setti tex ae co IEJ mind Create a label report and print labels Now that he s helped to create a label design you show Henry that he can save the design and print the labels at any time On the final page of the Label Wizard be sure the See The Labels As They Will Look Printed option is selected and click Finish The mailing label report is saved as Labels Customers and is displayed in Print Preview Ex 1003 at 408 Ex 1002 at ff 113 114 printing said plurality of individual labels The Microsoft Office 2000 Self Study Kit described that the plurality of individual labels is printed in response to the user clicking on the Print button ne On t
17. ality of individual label data fields to be printed on said plurality of individual labels The Microsoft Office 2000 Self Study Kit described how Microsoft Access processed data in the selected database to extract the fielded data that the user selected to be included on the label For example in the disclosed example the label wizard allowed users to select and organize fields from the Customers table in the order that the user wants to print the label on the plurality of individual labels The user was instructed to extract fielded data from the Customer s table including FirstName LastName Street City StateOrProvince and PostalCode fields to generate multiple labels Define the layout of labels You can select any field from the Customers table and place it on the Label Wizard s prototype label in the order that you want the corresponding informa tion to be printed Henry confirms that the Sweet Lil s shipping department uses a four line layout consisting of the customer s full name followed by a standard two line address and the country name You reproduce that layout here A shaded bar shows you the line of print you ll be filling in on the label Ex 1003 at 406 As the figure below illustrates the mailing label report extracts the names and mailing addresses from the database sorts them into a specified order and arranges them in whatever label format you choos
18. an be included The department file label 1800 of FIG 18 lists employee name 1801 and employee number 1802 in alphanumeric form and in bar code form 1805 while pay grade 1803 and year of hire 1804 are illustrated by color codes on the label Finally FIG 19 represents the medical file label 1900 which again lists employee name 1901 employee number 1902 but also year of birth 1903 and department 1908 in alphanumeric form and in bar code form 1904 while year of birth 1905 and department 1906 are displayed in color code form and bar code form 1907 These labels are produced by 18 Case No 2015 ____ IPR Petition U S Pat 6 890 113 combining at step 1406 the generated indicia user input indicia and generated fixed and variable template fields Id at 19 54 20 13 Ex 1002 at i 75 76 printing said plurality of individual labels The resultant label data is transmitted at step 1407 to the printer apparatus 170 as described above Ex 1008 at 20 13 17 The labels can be produced by printers as the label data is produced Id at 8 63 65 Examples of various labels are illustrated in for example Figures 17 19 of Benade reproduced below CARR MARY E TO 7 1701 1704 FIG 17 MN 56 TC O FIG 19 Id at Figs 17 19 Ex 1002 at 11 77 78 19 Case No 2015 ____ IPR Petition U S Pat 6 890 113 C The DYMO User Manual Would Have Rendered
19. dered sequence of indicia such as employee number date of hire Id at 19 44 54 Ex 1002 at 69 70 processing said data to identify a plurality of individual label data fields to be printed on said plurality of individual labels Once the various parameters defining the indicia are input to indicia generator via user interface indicia generator generates the series of indicia that are used to individually identify all of the labels in the series of labels that are to be printed Ex 1008 at 8 36 40 Benade illustrates the operational steps taken by the label generation apparatus to automatically produce labels based on the data imported from the database in several figures including Figure 14 reproduced below 1401 i x USER ACTIVATES LABEL GENERATION ROUTINE USER QUERIED FOR INPUT DATA 1403 _ INDICIA GENERATOR AUTOMATICALLY GENERATES SEQUENCE OF INDICIA 1404 s me COMBINE USER PROVIDED DATA WITH AUTOMATICALLY GENERATED INDICIA 1405 aa AUTOMATICALLY GENERATE TEMPLATES 1406 _ COMBINE INDICIA AND TEMPLATES 1407 TRANSMIT LABEL DATA TO PRINTER Id at Fig 14 17 Case No 2015 ____ IPR Petition U S Pat 6 890 113 At step 1403 indicia generator 112 automatically generates an ordered sequence of indicia such as employee number date of hire Id at 19 52 20 15 Se
20. dual label data fields to be printed on said plurality of individual labels The AddressMate User Manual disclosed a method to process the data to identify the individual data fields in e g all the address labels in a database and generate the labels using a single command Printing the Entire Database You can use the Print All Records command to print out all the addresses in your database To print out all the addresses choose the File Print All Records command The Print dialog box appears Select the print options you want see the section About the Print Dialog Box on page 92 for information about print options and then click on the OK button A print status box appears 12 Case No 2015 ____ IPR Petition U S Pat 6 890 113 Click on the Cancel button to cancel the print job All the addresses in the database are merged with the current template producing the envelopes or labels you want Ex 1005 at 8 122 123 Ex 1002 at 61 62 generating a plurality By clicking on the OK button all addresses in the of individual labels database are merged with an existing label template from the identified producing multiple labels Ex 1005 at 8 122 123 data and Thus the AddressMate User Manual disclosed generating a plurality of individual labels from the identified data by merging all the addresses in the database with an existing template to produce address label
21. dy Kit Would Have Rendered Claim 16 Obvious Under 35 U S C 103 a n 29 A NTN de 35 il Case No 2015 ____ U S Patent 6 890 113 TABLE OF AUTHORITIES Page Cases Athena Automation Ltd v Husky Injection Molding Sys Ltd IPR2013 00290 Paper No 18 Oct 25 2013 rara 3 In re Cuozzo Speed Techs LLC 2015 U S App LEXIS 1699 Fed Cir Feb 4 NNN 6 Redline Detection LLC v Star Envirotech Inc IPR2013 00106 Paper 66 June 30 2014 e 2 Statutes BUSET de ene 7 13 20 29 SAU SE EN RR OOO A E e 3 4 IPRCER4ZZIOO Leelee 6 CERA4AZI Aachen 5 ill Case No 2015 ____ IPR Petition U S Pat 6 890 113 EXHIBITS Exhibit No Description 1001 U S Patent No 6 890 113 1002 Declaration of Mr Stephen Gray 1003 Microsoft Office 2000 Self Study Kit Microsoft Office 2000 Self Study Kit 1004 DYMO LabelWriter User Manual DYMO User Manual 1005 User Manual for AddressMate and AddressMate Plus AddressMate User Manual Excerpts of Deposition Transcript of Mr Charles M Curley Feb 1006 2 2015 in case Sanford L P d b a DYMO and DYMO B V B A v Esselte AB Esselte Leitz GMBH amp Co KG and Esselte Corporation No 1 14 cv 07616 VSB S D N Y 1007 U S Patent No 6 890 113 File History 1008 U S Patent No 5 621 864 to Benade et al Benade Microsoft Microsoft Office 2000 an Essential Tool For All 1009
22. e Id at 403 32 Case No 2015 ____ IPR Petition U S Pat 6 890 113 You can also On the third page of the Label Wizard double click FirstName in the Avail select the field able Fields list name and then click The FirstName field is added to the first line of the prototype label and the insertion point appears at the end of the field Press the Spacebar if oe mola A blank space appears after the FirstName field on the prototype label ii in the Available Fields list double click LastName paco ag The LastName field is added after the FirstName field on the first line of the ae and press prototype label with a space between the two fields EI ce to remove At the end of the first line of the prototype label press Enter pons The insertion point and shaded bar move to the second line of the proto pr type label amp On the second line add the Street field and then press Enter On the third line add the City StateOrProvince and PostalCode fields Type a comma and space between the City and StateOrProvince fields and a space between the StateOrProvince and PostalCode fields Press Enter On the fourth line add the Country field Click Next The fourth page of the Label Wizard appears Pay lt BR sot stay labels by one or magra fiki p vere digabese Yournight wart 10 Dan ome heid nah aspas mirst theorist ee 3 by npete code tate Fade vocali sous Ba to 5008 Dy Avadatihe f
23. e also Ex 1002 at 9 71 74 generating a plurality of individual labels from the identified data and File merge routine combines the template generated by the template generator with the indicia information generated by indicia generator into an object file which is stored in processor This object file contains all of the data necessary to define all of the labels in the series of individually identified labels that are to be printed by the label generation apparatus Ex 1008 at 8 50 56 Once the indicia are generated the defined sequence of labels is created by combining at step 1404 the user input indicia and automatically generated indicia into each label in the subset of labels The routine at step 1405 uses the input data that defines the number and types of labels to generate a template for each label The templates include both fixed and variable template fields which are typically defined by the user identifying existing label types that are stored in memory This example notes three labels payroll file department file medical file illustrated in FIGS 17 19 respectively Thus the payroll file label 1700 of FIG 17 notes employee name 1701 employee number 1702 and social security number 1703 in alphanumeric form and in bar code form 1704 as well as year of hire in both alphanumeric 1705 and color code form 1706 In order to simplify file identification a color band 1707 indicative of type of file c
24. ew of the DYMO User Manual Claim DYMO User Manual 16 A tape printing method for printing an image on an image receiving tape comprising the steps of The DYMO User Manual disclosed that the DYMO Label Software is a general purpose label printing program that is specifically designed to help you get the most out of your LabelWriter printer The program includes Many ready to use templates for common labels A built in Designer you can use to create your own templates A built in List Manager that lets you save addresses or other types of lists An add in to print directly from Microsoft Word Ex 1004 at 3 The only supplies you will ever need for this printer are the labels We recommend you only use DYMO brand labels Id at 2 DYMO offers dozens of labels for addressing shipping file folders media name badges and much more A complete listing can be found in the label catalog that was supplied with this printer and at www dymo com Id at 45 Examples of DYMO brand labels include Address Labels rolls Standard Address Labels rolls Large Address Labels rolls Standard tapes etc Exs 1013 1015 Ex 1002 at I 80 83 21 Case No 2015 ____ IPR Petition U S Pat 6 890 113 receiving data containing information for a plurality of individual labels The DYMO User Manual disclosed Whenever you want to use a label file you have saved to disk
25. f Declaration of Mr David Block submitted in Sanford L P d b a DYMO and DYMO B V B A v Esselte AB Esselte Leitz GMBH amp Co KG and Esselte Corporation No 1 14 cv 07616 VSB S D N Y Exhibit List 2 Case No 2015 ____ IPR Petition U S Pat 6 890 113 Excerpts of Second Declaration of Mr Charles M Curley 1020 submitted in Sanford L P d b a DYMO and DYMO B V B A v Esselte AB Esselte Leitz GMBH amp Co KG and Esselte Corporation No 1 14 cv 07616 VSB S D N Y Exhibit List 3 Case No 2015 ____ IPR Petition U S Pat 6 890 113 Petitioners Esselte Corporation Esselte AB and Esselte Leitz GMBH amp Co KG collectively Esselte request inter partes review IPR of claim 16 of U S Patent No 6 890 113 the 113 patent Ex 1001 This Petition shows that there is a reasonable likelihood that this claim is unpatentable Petitioners request that the claim be declared unpatentable and canceled I MANDATORY NOTICES UNDER 37 C F R 42 8 Real Parties In Interest The real parties in interest are Esselte Corporation Esselte AB and Esselte Leitz GMBH amp Co KG Esselte AB and Esselte Leitz GMBH amp Co KG have agreed to be bound by and to satisfy any judgment against Esselte Corporation in the district court action identified below However Esselte AB and Esselte Leitz GMBH amp Co KG contest personal jurisdiction in the district court Related Matters
26. he Print Preview toolbar click the Print button Access prints the Labels Customers report directly onto the label stock Print Henry has loaded into the printer XJ On the Report window click the Close button to close the report Close Ex 1003 at 408 Ex 1002 at 115 34 Case No 2015 ____ IPR Petition U S Pat 6 890 113 IX CONCLUSION For the foregoing reasons Esselte respectfully requests institution of IPR for claim 16 of the 113 patent because there is a reasonable likelihood that Esselte will prevail and Esselte respectfully requests that this claim be declared unpatentable and canceled Dated February 19 2015 Respectfully submitted Douglas J Kline Douglas J Kline Reg No 35 574 35 Case No 2015 ____ IPR Petition U S Pat 6 890 113 CERTIFICATE OF SERVICE The undersigned hereby certifies that a copy of the foregoing corrected petition for inter partes review was served on February 19 2015 by delivering a copy to FEDERAL EXPRESS directed to the attorneys of record for the 113 patent at the following address James P Zeller Esq Marshall Gerstein amp Borum 6300 Sears Tower 233 South Wacker Drive Chicago IL 60606 6357 and the following address known to Petitioner as likely to effect service Frederick L Whitmer Kilpatrick Townsend amp Stockton LLP 31 West 52nd Street 14th Floor New York NY 10019 Dated February 19 2015 By Douglas J Kline
27. laim subject to inter partes review shall be given its broadest reasonable construction in light of the specification of the patent in which Case No 2015 ____ IPR Petition U S Pat 6 890 113 it appears 37 C F R 42 100 b In re Cuozzo Speed Techs LLC 2015 U S App LEXIS 1699 Fed Cir Feb 4 2015 affirming that the broadest reasonable interpretation standard is properly adopted by the PTO regulation As required by 37 C F R 42 104 b 3 Petitioners considered whether any construction of claim terms is needed Petitioners believe that for purposes of the proposed inter partes review no construction of any claim terms is needed Petitioners believe that the broadest interpretation of claim 16 is apparent from the plain language of the claim language itself and no further explication of terms is required to evaluate the application of the prior art presented herein Similarly Patent Owner has taken the position in litigation that the claim terms do not require any construction Petitioners expressly reserve the right to present interpretations of the claims in litigation that may differ from those set forth herein to the extent appropriate to address the various issues that may arise in the context of litigation VIII DETAILED EXPLANATION OF GROUNDS FOR UNPATENTABILITY A The Printing The Entire Database Functionality Disclosed In The AddressMate User Manual Would Have Rendered Claim 16 Obvious Under 35 U S C
28. loyee such as a social security number an identification number date of birth pay grade date of hire shift number department and name d The label generation apparatus receives this data and automatically identifies the plurality of individual label data fields indicia d It then automatically generates label templates and combines the identified data with the templates to generate a plurality of labels d The labels are then transmitted to the printer and printed by the printing apparatus d see also id at 20 13 17 As the chart below illustrates claim 16 of the 113 patent obvious would have been obvious to a person of ordinary skill in the art in view of Benade Ex 1002 at 165 Claim Benade 16 A tape printing This invention relates to the creation of labels and in method for printing an particular to apparatus for generating a series of labels image on an image each of which is individually identified by certain unique receiving tape indicia and template fields printed thereon Ex 1008 at comprising the steps 1 10 13 of The computer then drives a printing mechanism such as an electrostatic printer that produces the final labels on the label media Additional equipment can be used to provide an adhesive backing to the labels so printed to thereby 14 Case No 2015 ____ IPR Petition U S Pat 6 890 113 provide the user with individually identified labels in
29. mat the text in the address and prints the address Id at 9 125 127 AddressMate Plus will take each record in turn and add it to the database or merge it with the template for printing If you are happy with the format of the data you can then import the data into the actual file or template Id at 9 131 AddressMate Plus will take each record in turn and add 27 Case No 2015 ____ IPR Petition U S Pat 6 890 113 it to the database or merge it with the template for printing Ex 1005 at 9 131 Ex 1002 at JJ 100 101 printing said plurality of individual labels You might need to print a number of individual names from the database onto labels or envelopes If you need to print out only a few addresses you can selectively pick names from the database and print their address information You can also easily print all the addresses in the database Click on the Print button on the List View window If more than one address is selected for printing a dialog box appears to tell you how many addresses are ready to be printed Click on the OK button to continue Ex 1005 at 7 91 To print selected addresses while in database mode select the address or addresses you want to print from the Database List CTRL click to select individual addresses SHIFT click to select a range of addresses Click on the Print button in the button bar The Print dialog bo
30. n the Show Next Record button to step through the file This allows you to examine several records to determine what information a field is intended to hold In this example you would discover that Field 0 is used for the salutation and Field 8 is used to hold the first name 26 Case No 2015 ____ IPR Petition U S Pat 6 890 113 Id at 9 129 130 You can use the combination fields lt First Name Last Name gt lt Last Name First Name gt and lt City St ZIP gt to import a field that contains multiple entries in a single field For example suppose one field in the data you are importing holds both the person s first name and last name If you connect this field to the lt First Name Last Name gt field in the Import to list the first name will be extracted and placed in the First Name field in the AddressMate Plus database and the last name will be placed in the Last Name field If you import a comma delimited file you won t see field names instead the actual data from the file appears each piece of data is contained within brackets lt lt gt gt In addition fields that are empty are given names such as lt lt Field 3 gt gt as place holders Id at 9 130 131 Ex 1002 at 98 99 generating a plurality of individual labels from the identified data and AddressMate Plus uses the address format information you defined in the template to arrange and for
31. r in a list one after the other with at least one blank line between them The file should look something like the figure below 11 Case No 2015 ____ IPR Petition U S Pat 6 890 113 Alvin C Monk Cartoon Music Company 104 Disney Dr Hollywood CA 92618 4363 Andrea Mantegna Brunelleschi Donatello and Ghiberti 6100 Tuscan Dr Rome GA 36109 5481 Ball Spritzer Spntzer Bottle Company 23876 Calistoga Parkway Calistoga CA 96934 2367 An ASCII list file as viewed using Notepad Id at 9 127 Moreover AddressMate Plus allows you to effortlessly import data in dBase Paradox and comma delimited also called Comma Separated Values or CSV formats In comma delimited files each record appears on an individual line Each field entry appears inside quotation marks and is separated from the next field by acomma If you have a comma delimited file you can look at it to verify its content For example you can use the Notepad program to open the file and examine it The file should look something like the figure below Robert J_ Block 1900 Health Way Montgomery AL 35400 9345 Will E Coyote 2200 Desert Dr Las Vegas NV 6210 5092 Ed Degas 689 Brush St Oakland CA 93628 8900 A comma delimited file as viewed using Notepad Id at 9 128 Ex 1002 at 57 60 processing said data to identify a plurality of indivi
32. r partes review see also Athena Automation Ltd v Husky Injection Molding Sys Ltd IPR2013 00290 Paper No 18 Oct 25 2013 rejecting patent owner s argument in its preliminary response that the petition was barred by assignor estoppel Case No 2015 ____ IPR Petition U S Pat 6 890 113 Ground 5 The Microsoft Office 2000 Self Study Kit would have rendered claim 16 obvious under 35 U S C 103 a V OVERVIEW OF THE TECHNOLOGY AND THE 7113 PATENT Claim 16 of the 113 patent recites 16 A tape printing method for printing an image on an image receiving tape comprising the steps of receiving data containing information for a plurality of individual labels processing said data to identify a plurality of individual label data fields to be printed on said plurality of individual labels generating a plurality of individual labels from the identified data and printing said plurality of individual labels The claimed method involves receiving data containing information for a plurality of individual labels The data can be in the form of a data file a clipboard function supported by a computer operating system or another application Ex 1001 at 4 46 50 see also id at 6 31 41 The method involves processing the data to identify a plurality of individual label data fields to be printed on the plurality of individual labels The 113 patent sought to solve a problem that was well known in the art by December 20
33. ram in flow diagram form The database includes typical relevant employee data and whenever an employee is added to the payroll a plurality of employee labels need be produced payroll file department file medical file The label for each of these files can be customized to match the specific needs of that application and the labels can include indicia that are automatically produced by indicia generator 112 and indicia that are input via the database illustrated in FIG 13 Id at 16 7 17 Figure 13 of Benade is reproduced below SOCIAL PAY DATE OF SHIFT DEPT NAME SECURITY GRADE HIRE 173214193 01 22 44 Gs2 12 20 90 MCINTOSH JOHN J 024673278 06 03 22 GS7 12 20 90 TRUJILLO JOSE A 103555941 11 11 56 GS5 12 20 90 CARR MARY E Id at Fig 13 The labels defined by a user as described above are populated with indicia according to the operational steps of a label routine as illustrated for example in FIG 14 Again using the employee database example at step 1401 the user activates the label routine by accessing the routine 16 Case No 2015 ____ IPR Petition U S Pat 6 890 113 via user interface 114 The routine at step 1402 queries the user for input data such as employee name social security number date of birth department number pay grade number and types of labels At step 1403 indicia generator 112 automatically generates an or
34. resses directly from your existing database files onto envelopes labels or other forms AddressMate Plus imports data from files in the Paradox dBase Comma Delimited ASCII and ASCII list formats making it easy to get the addresses you need Id at 1 2 The AddressMate User Manual listed several products supported by AddressMate Plus including image receiving tape products Id at A 159 162 7 68 8mm video tape labels See also Ex 1015 AddressMate was packaged with a CoStar label tape printer Ex 1019 at TI 6 7 Ex 1002 at 93 95 receiving data One of the major strengths in AddressMate Plus is its containing information ability to handle data from other database programs You for a plurality of can import data into the AddressMate Plus database or merge the data with a template design for mass mailings 24 Case No 2015 ____ IPR Petition U S Pat 6 890 113 individual labels name tags or other needs The steps for importing and merge printing data are very similar When you import information from another database the information is read in and placed in AddressMate Plus database When you merge print data the information is placed on a label or envelope and is not saved in the AddressMate Plus database For both operations you use the same procedures to select the files and fields that make up the data to be imported AddressMate Plus also lets you automaticall
35. rinted the multiple labels with the multiple data fields Id at 408 It would have been obvious to a person of ordinary skill in the art to use the disclosure of the Microsoft Office 2000 Self Study Kit to automatically generate and print a plurality of labels with individual label data fields using data in a database Ex 1002 at 50 51 As discussed in detail below the explanation of the functioning of the Label Wizard in Microsoft Access in the Microsoft Office 2000 Self Study Kit would have rendered claim 16 obvious to a person of ordinary skill in the art If the preamble is deemed to be limiting it would have been obvious to a person of 30 Case No 2015 ____ IPR Petition U S Pat 6 890 113 ordinary skill in the art to apply the disclosure in the Microsoft Office 2000 Self Study Kit to printing an image on an image receiving tape e g by using Microsoft Office 2000 to print to a label tape printer Ex 1002 at JJ 106 107 Claim Microsoft Office 2000 16 A tape As described in the Microsoft Office 2000 Self Study Kit printing method Microsoft Access supported printing images image receiving for printing an image on an image receiving tape comprising the steps of tape using continuous feed printing Thes wirardi creates standard labels ce cunt omdatmbe What label ses would yozila Prodat manber Cver Numb av oss Unt of messire Label Tyge F tegish G metric hosted Orte F
36. rlayed with a protective transparent layer Id at 5 55 6 7 FIG 4 illustrates a typical magnetic tape cartridge label 400 that is well known in the art Id at 10 28 29 The labels produced by the label generation apparatus for example FIG 4 comprise an elongated rectangular shape base sheet member 102 see FIG 9 made of clear plastic material such as Mylar having a flat smooth glossy front surface 104 and a flat back surface 106 which 15 Case No 2015 ____ IPR Petition U S Pat 6 890 113 has been chemically treated to enable electrostatic ink printing thereon as generally indicated by ink layer zone 108 Id at 13 65 14 4 see also id at 10 26 29 Ex 1002 at 19 67 68 receiving data containing information for a plurality of individual labels Indicia generator responds to the selection of the desired ordering as well as data input by the user through user interface defining the form of the indicia to be used Ex 1008 at 8 12 18 see also id at 4 9 16 The user specifies the ordering to be used in the generation of this indicia This ordering can be any arbitrarily selected sequence for example indicia arbitrarily matched to a data file such as printing a label for each employee according to their social security number FIG 13 represents a database of employee information and FIG 14 is a typical variable template label generation prog
37. s d Ex 1002 at J 63 64 printing said plurality The labels produced by merging all the addresses in the of individual labels database with an existing template could then be printed using the Print dialog box Ex 1005 at 8 122 123 Ex 1002 at 65 B Benade Would Have Rendered Claim 16 Obvious Under 35 U S C 103 a U S Patent No 5 621 864 to Benade Ex 1008 is titled Label generation apparatus and issued on April 15 1997 Benade is prior art to the 113 patent under 35 U S C 102 b and was not considered by the Patent Office during examination of the 113 patent It is directed to a label generation apparatus that enables users to generate a plurality of labels using a template Ex 1008 at 1 10 13 3 51 57 The label generation apparatus enables a user to define a label format having one or more writable indicia fields that vary from label to label Id at 3 58 67 The indicia may be alphanumeric characters bar codes colors or any other writable field Id at 4 1 8 The label generation apparatus receives a data 13 Case No 2015 ____ IPR Petition U S Pat 6 890 113 file containing data for multiple labels and merges it with one or more templates to generate a plurality of labels Id at 16 7 17 Fig 13 19 46 54 6 35 48 For instance the label generation apparatus disclosed in Benade receives a database of employee information that includes typical data for an emp
38. s with a label tape printer AddressMate Plus was packaged with CoStar label tape printers in 1995 Ex 1019 at 1 6 7 As shown in the chart below the AddressMate User Manual would have rendered claim 16 of the 113 patent obvious to a person of ordinary skill in the art Case No 2015 ____ IPR Petition U S Pat 6 890 113 Claim Address Mate User Manual 16 A tape printing method for printing an image on an image receiving tape comprising the steps of AddressMate User Manual illustrated the printing of envelopes and mailing labels including POSTNET bar codes business cards name tags file folder labels diskette labels Rolodex style cards and more Ex 1005 at 1 1 AddressMate Plus comes ready to print on standard envelopes labels and specialty papers from CoStar Avery NEBS and others Creating an envelope or label is as easy as Selecting the type of item to design and telling AddressMate Plus what and where to print AddressMate Plus powerful database links allow you to import names and addresses from other database applications directly into AddressMate Plus built in database If you prefer you can also merge print addresses directly from your existing database files onto envelopes labels or other forms AddressMate Plus imports data from files in the Paradox dBase Comma Delimited ASCII and ASCII list formats making it easy to get the addresses you need d at 1 2
39. that described in detail the capabilities and functions performed by the each program Ex 1003 at Copyright page page 2 of Ex 1003 The Microsoft Office 2000 Self Study Kit is prior art to the 113 patent under 35 U S C 102 b It was not considered by the Patent Office during examination of the 113 patent The Microsoft Office 2000 Self Study Kit illustrated how the Microsoft Access program allowed a user to store data such as names and mailing 29 Case No 2015 ____ IPR Petition U S Pat 6 890 113 addresses in a database Ex 1003 at 403 The Microsoft Office 2000 Self Study Kit described how data stored in a database could be used to create one or more mailing labels Id at 402 408 For example a user could promote its newest chocolate bonbon by mailing a free sample to all of its customers by using a Label Wizard in Microsoft Access The Label Wizard enabled a user to extract names and mailing addresses of customers from the database sort them into a specific order arrange them according to a label format and print the data on labels d at 403 After selecting the data for the customer list the Label Wizard allowed a user to modify the format e g font point size bold italic etc and layout of the labels Id at 403 407 A user could also sort labels by fields e g sort by last name and then first name to get all labels in alphabetic order by last name Id at 407 408 The Label Wizard then p
40. x appears Select the print options you want and then click on the OK button A print status box appears The selected addresses are merged with the current template producing the envelopes or labels you want You can use the Print All Records command to print out all the addresses in your database To print out all the addresses choose the File Print All Records command The Print dialog box appears Select the print options you want and then click on the OK button A print status box appears All the addresses in the database are merged with the current template producing the envelopes or labels you want Id at 8 122 123 The Print dialog box is reproduced below 28 Case No 2015 ____ IPR Petition U S Pat 6 890 113 l rint Add Trim Marke Li Camera Ready Artwork 4 Print te File Id at 7 92 Ex 1002 at 102 104 E Microsoft Office 2000 Self Study Kit Would Have Rendered Claim 16 Obvious Under 35 U S C 103 a Microsoft Office 2000 was an office suite for Microsoft Windows family of operating systems that was released in 1999 Ex 1009 Microsoft Office 2000 included several programs and the programs included in each suite were tailored for each type of Office customer Examples of programs included Microsoft Word Microsoft Excel and Microsoft Access The book titled Step by Step Microsoft Office 2000 was a self study kit published in 1999
41. y correct addresses you import or merge print Ex 1005at 9 125 For example AddressMate Plus lets you effortlessly import data from ASCII list files In ASCII list files the names appear in a list one after the other with at least one blank line between them The file should look something like the figure below Alvin C Monk Cartoon Music Company 104 Disney Dr Hollywood CA 92618 4363 Andrea Mantegna Brunelleschi Donatello and Ghiberti 6100 Tuscan Dr Rome GA 36109 5481 Bill Spritzer Spritzer Bottle Company 23876 Calistoga Parkway Calistoga CA 96934 2367 An ASCII list file as viewed using Notepad Id at 9 127 Moreover AddressMate Plus allows you to effortlessly import data in dBase Paradox and comma delimited also called Comma Separated Values or CSV formats In comma delimited files each record appears on an individual line Each field entry appears inside quotation marks and is separated from the next field by acomma If you have a comma delimited file you can look at it to verify its content For example you can use the Notepad program to open the file and examine it The file should look something like the figure below 25 Case No 2015 ____ IPR Petition U S Pat 6 890 113 Robert J_ Block 1900 Health Way Montgomery AL 35400 9345 Will E Coyote 2200 Desert Dr Las Vegas NV 86210 5092 Ed Degas 6
42. y section displays the address fields that contain the information for the entry that is currently selected in the Database List Id at 8 102 The AddressMate User Manual described in detail that AddressMate Plus allowed users to print an entire database Id at 8 122 A user could use the Print All Records command to print all addresses in a database d Specifically the AddressMate User Manual disclosed that a user could choose the File Print All Records command which would display a print dialog box reproduced below Case No 2015 ____ IPR Petition U S Pat 6 890 113 Print Pitt Copen gt Page Starting Label Form Camera Ready Artwork Add Trim Maiks Print to File LISA Id at 8 122 7 92 By clicking on the OK button all addresses in the database are merged with an existing label template producing multiple labels d A person of ordinary skill in the art would have understood that the Printing the Entire Database function described in the Address Mate User Manual processes the data in the database to identify a plurality of individual label data fields and generated a plurality of individual labels from the identified data Ex 1002 at J 39 The AddressMate User Manual listed several products supported by AddressMate Plus including image receiving tape products Ex 1005 at A 159 162 see also Ex 1015 In any event it would have been obvious to use AddressMate Plu

Case No. 2015-____ U.S. Patent 6,890,113 i UNITED STATES

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