UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`UNIVERSITY OF WATERLOO,
`
`Assignee of U.S. Patent Application No. 15/513,914
`
`Petitioner,
`
`v.
`
`SALIENT ENERGY INC.
`
`Assignee of U.S. Patent No. 9,780,412
`
`Respondent.
`
`____________
`
`Case No.:________
`
`____________
`
`DECLARATION OF DIPAN KUNDU IN SUPPORT OF PETITION TO
`INSTITUTE DERIVATION PROCEEDING PURSUANT TO 35 U.S.C. § 135
`
`
`
`
`
`
`Confidential UW Exhibit 1005, pg. 1
`PROTECTIVE ORDER MATERIAL
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`UNIVERSITY OF WATERLOO,
`
`Assignee of U.S. Patent Application No. 15/513,914
`
`Petitioner,
`
`v.
`
`SALIENT ENERGY INC.
`
`Assignee of U.S. Patent No. 9,780,412
`
`Respondent.
`
`____________
`
`Case No.:________
`
`____________
`
`DECLARATION OF DIPAN KUNDU IN SUPPORT OF PETITION TO
`INSTITUTE DERIVATION PROCEEDING PURSUANT TO 35 U.S.C. § 135
`
`
`
`
`
`
`Confidential UW Exhibit 1005, pg. 1
`PROTECTIVE ORDER MATERIAL
`
`
`
`Declaration of Dipan Kundu
`
`
`
`
`
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`I, Dipan Kundu, make the following declaration upon my knowledge and
`
`belief and hereby declare as follows:
`
`I.
`
`1.
`
`2.
`
`PROFESSIONAL BACKGROUND
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`I am a citizen of India and reside in Switzerland.
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`I am currently the SNSF Ambizione Group Leader in the Multifunctional
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`Materials Laboratory, Department of Material at Eidgenössische Technische
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`Hochschule Zürich (“ETH Zürich”). I have held this position since February
`
`of 2017.
`
`3.
`
`In this capacity, my research focuses on the intersection of chemistry,
`
`materials science and electrochemistry, with a specific focus on materials
`
`development and their electrochemical evaluation for the advancement of
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`safe, inexpensive, and high energy density non-aqueous and aqueous
`
`rechargeable batteries.
`
`4.
`
`I received my PhD from ETH Zürich working on electroactive materials for
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`lithium-ion batteries in 2012. After this, I joined the group of Dr. Linda F.
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`Nazar at the University of Waterloo (“the Nazar Lab”) as a Postdoctoral
`
`Fellow where I focused on functional materials development toward
`
`improving the electrochemical performance characteristics of various
`
`
`
`Confidential UW Exhibit 1005, pg. 2
`PROTECTIVE ORDER MATERIAL
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`
`
`Declaration of Dipan Kundu
`
`
`
`
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`rechargeable battery chemistries. I worked in the Nazar Lab from March 2013
`
`to December 2016.
`
`5.
`
`Below I discuss my activities as a Postdoctoral Fellow in the Nazar Lab at the
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`University of Waterloo (“UW”) in the timeframe of 2013 through 2016. My
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`responsibilities at the Nazar Lab included working under the supervision and
`
`direction of Dr. Nazar to design and develop novel cathode host materials for
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`aqueous rechargeable batteries.
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`6.
`
`One such project related to Zn-ion battery technologies. This project resulted
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`in the development of a low cost rechargeable Zn-ion battery based on a
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`cathode comprised of nanostructured pillared hydrated vanadium oxides as
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`robust materials for high rate and long term reversible Zn2+ ion intercalation
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`storage at the cathode, that are coupled with a metallic Zn anode, and an
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`aqueous electrolyte (the “Zn-Ion Battery”).
`
`II. DOCUMENTS CONSIDERED
`
`7.
`
`I have reviewed the Exhibits listed below. Based on my work at UW,
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`including my direct involvement in the development of the Zn-Ion Battery, I
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`confirm that these Exhibits are true and accurate printed copies of documents
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`retrieved, that they were kept in the course of the regularly conducted business
`
`and activity of the Nazar Lab, that they were generated and in existence on or
`
`
`
`3
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`Confidential UW Exhibit 1005, pg. 3
`PROTECTIVE ORDER MATERIAL
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`
`
`Declaration of Dipan Kundu
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`
`
`
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`about the dates indicated below or on the documents, and that I reviewed and
`
`had knowledge of each such document on or about the dates indicated.
`
`UW Exhibit 1009
`
`
`
`
`UW Exhibit 1021 Laboratory notebook excerpts,
` from August 7 to September 25, 2014
`UW Exhibit 1022 Laboratory notebook excerpts,
` from September 15, 2014
`
`
`
`
`
`to March 20, 2015
`UW Exhibit 1023 Laboratory notebook excerpts from April 20 to May
`30, 2015
`
`8.
`
`I have also reviewed the patents, patent applications and claims as
`
`mentioned below.
`
`III. DEVELOPMENT BY UW OF THE Zn-ION BATTERY
`
`9.
`
`I am informed by counsel that U.S. Patent No. 9,780,412 (“the ’412 Patent”)
`
`(UW Exhibit 1001) is involved in a proceeding at the U.S. Patent Office. I am
`
`familiar with the ’412 Patent and its current claims. I understand that the ’412
`
`Patent was originally filed as U.S. Patent Application No. 15/461,849 (“the
`
`’849 Application”) and issued on October 3, 2017.
`
`10.
`
`I understand that the UW Commercialization Office (“WATCO”) paid for and
`
`assisted with the filing of U.S. Provisional Patent Application No. 62/230,502
`
`(“the Provisional Application”), which was entitled “Electrode Materials for
`
`Rechargeable Zinc Cells and Batteries Produced Therefrom.” (UW Exhibit
`
`
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`4
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`Confidential UW Exhibit 1005, pg. 4
`PROTECTIVE ORDER MATERIAL
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`
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`Declaration of Dipan Kundu
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`
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`
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`1003.) I am aware that this Provisional Application was filed on June 8, 2015.
`
`I am a named inventor on the Provisional Application.
`
`11.
`
`I understand that a PCT Application (No. PCT/CA2016/050613) (“the PCT
`
`Application”) was filed on May 31, 2016, and was published as
`
`WO2016/197236 on December 15, 2016. (UW Exhibit 1004.) I am a named
`
`inventor on the PCT Application.
`
`12.
`
`I understand that the PCT Application was relied on to file several subsequent
`
`U.S. Patent Applications, including the ‘849 Application and U.S. Patent
`
`Application No. 15/513,914 (“the ’914 Application”) (UW Exhibit 1002). All
`
`of the Provisional Application, the PCT Application and the ’914 Application
`
`were filed by agents of UW. However, the ’849 Application was filed by
`
`agents of Salient Energy (“Salient”) without the consent of, consultation with
`
`or notice to UW.
`
`13.
`
`I understand that I am a named inventor on the ’914 Application (UW), the
`
`’849 Application (Salient), and resulting ’412 Patent. However, I understand
`
`that Dr. Nazar was omitted as an inventor on the ’849 Application and
`
`subsequent ’412 Patent.
`
`14.
`
`I understand that the claims of the ’849 Application and resulting ’412 Patent
`
`are the same as and encompassed in the claims of the ’914 Application.
`
`
`
`5
`
`Confidential UW Exhibit 1005, pg. 5
`PROTECTIVE ORDER MATERIAL
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`
`
`Declaration of Dipan Kundu
`
`
`
`
`
`Having reviewed the historical development of the projects, including the
`
`concepts developed which are claimed in the ’914 Application and ’412
`
`Patent, I believe that Dr. Nazar made inventive contributions to the subject
`
`matter in the claims of the ’412 Patent. As discussed below, the subject matter
`
`of the ’412 Patent was developed together with Dr. Nazar in the Nazar Lab.
`
`15. My work at the Nazar Lab began in March 2013 and explored several different
`
`avenues of research. However, common to all of my research was a focus on
`
`materials science and novel electroactive materials for batteries.
`
`16.
`
`I began at the Nazar Lab studying positive electrode materials for Lithium-
`
`Oxygen
`
`(Li-O2) batteries
`
`and
`
`investigating
`
`structure-performance
`
`relationships. This progressed into investigating novel solid electrolytes for
`
`Li-Ion and Na-Ion batteries, as well as high energy density positive electrode
`
`materials. I also designed and developed novel cathode host materials for Li-
`
`S batteries.
`
`17.
`
`I was working with Vanadium at the Nazar Lab at least as early as August
`
`2014. (See UW Exhibit 1021, at 1-3; UW Exhibit 1022, at 1.) I was working
`
`with this material based on my earlier work with this same material at ETH
`
`Zürich.
`
`
`
`6
`
`Confidential UW Exhibit 1005, pg. 6
`PROTECTIVE ORDER MATERIAL
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`
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`Declaration of Dipan Kundu
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`
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`
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`18.
`
`In or about November 2014, Dr. Nazar expressed a desire to test vanadium
`
`with divalent ion storage such as Mg2+ and Zn2+. Dr. Nazar asked me to
`
`provide vanadate materials to a Nazar Lab colleague of mine, Xiaoqi Sun, to
`
`begin tests for a magnesium battery. (UW Exhibit 1022, at 3).
`
`
`
`
`
`
`
`19. Throughout the latter part of 2014 and into 2015, I had regular discussions
`
`with Dr. Nazar regarding vanadate materials and pillaring – the idea of
`
`propping apart layers and using water between them.
`
`20. At some point in the first quarter of 2015, Brian Adams suggested that I work
`
`with him on a positive electrode (vanadate) for application with zinc. I
`
`understood that this zinc-focus was because Xiaoqi Sun was focusing on
`
`magnesium for her PhD.
`
`21.
`
`I had previously worked with Brian Adams on Lithium batteries and began
`
`working with him on Zn-Ion Batteries.
`
`22. As mentioned above, while I had previously worked with Vanadium in 2014,
`
`my work on the vanadate electrode for use in an aqueous Zn-Ion Battery began
`
`at some point between January and March 2015. (UW Exhibit 1022, at 2, 4.)
`
`My laboratory notebook demonstrates that I was testing vanadate positive
`
`
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`7
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`Confidential UW Exhibit 1005, pg. 7
`PROTECTIVE ORDER MATERIAL
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`
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`Declaration of Dipan Kundu
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`
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`
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`electrode materials no later than March 20, 2015. (Id.) While this page is dated
`
`March 20, 2016, the order of the pages in the notebook makes it clear that the
`
`date should be March 20, 2015. (Id.)
`
`23. Another excerpt from my laboratory notebook, demonstrates that this work
`
`had progressed into a first synthesis of metal pillared layered vanadate no later
`
`than April 20, 2015. (UW Exhibit 1023, at 1.)
`
`24. A further excerpt from my laboratory notebook, demonstrates that I was
`
`testing metal pillared vanadate cathodes no later than April 28, 2015. (UW
`
`Exhibit 1023, at 2.)
`
`25. Throughout the progression of this work from testing materials through to
`
`testing synthesized metal pillared vanadate cathodes, I consulted with and was
`
`guided and assisted by Dr. Nazar. Dr. Nazar provided new ideas and avenues
`
`to pursue, as well as assisted in trouble-shooting issues that arose during the
`
`development of the Zn-Ion Battery.
`
`26. The development of the Zn-Ion Battery, including the subject matter claimed
`
`in the ’412 Patent, would not have been possible without the intellectual
`
`contributions of Dr. Nazar. Dr. Nazar provided invaluable guidance and
`
`direction in the development of a novel aqueous battery technology.
`
`
`
`8
`
`Confidential UW Exhibit 1005, pg. 8
`PROTECTIVE ORDER MATERIAL
`
`
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`Declaration of Dipan Kundu
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`
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`27.
`
`
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`IV. CONCLUSION
`
`
`
`
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`
`
`28.
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`I declare that all statements made herein of my own knowledge are true and
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`that all statements made on information and belief are believed to be true; and
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`further that these statements were made with the knowledge that willful false
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`statements and the like so made are punishable by fine or imprisonment, or
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`both, under section 1001 of Title 18 of the United States Code and that such
`
`willful false statements may jeopardize the validity of the application or any
`
`patent issued thereon.
`
`29.
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`In signing this Declaration, I understand that the Declaration will be filed as
`
`evidence in a contested case before the Patent Trial and Appeal Board of the
`
`United States Patent and Trademark Office. I acknowledge that I may be
`
`subject to cross-examination in the case and that cross-examination will take
`
`place in the United States. If cross-examination is required of me, I will appear
`
`for cross-examination within the United States during the time allotted for
`
`cross-examination.
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`
`
`9
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`Confidential UW Exhibit 1005, pg. 9
`PROTECTIVE ORDER MATERIAL
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`
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`Declaration of Dipan Kundu
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`
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`
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`DATED: July __, 2018
`
`
`
`
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`
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`
`
`_____________________
` DIPAN KUNDU
`
`
`
`
`
`
`
`10
`
`19
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`Confidential UW Exhibit 1005, pg. 10
`PROTECTIVE ORDER MATERIAL
`
`
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