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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`UNIVERSITY OF WATERLOO,
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`Assignee of U.S. Patent Application No. 15/513,914
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`Petitioner,
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`v.
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`SALIENT ENERGY INC.
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`Assignee of U.S. Patent No. 9,780,412
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`Respondent.
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`____________
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`Case No.:________
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`____________
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`DECLARATION OF LINDA F. NAZAR IN SUPPORT OF PETITION TO
`INSTITUTE DERIVATION PROCEEDING PURSUANT TO 35 U.S.C. § 135
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`Confidential UW Exhibit 1006, pg. 1
`PROTECTIVE ORDER MATERIAL
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`Declaration of Linda F. Nazar
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`I, Linda F. Nazar, make the following declaration upon my knowledge and belief
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`and hereby declare as follows:
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`I.
`1.
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`2.
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`PROFESSIONAL BACKGROUND
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`I am a citizen of Canada and reside at Waterloo, Ontario, Canada.
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`I am currently a Professor and faculty member of the Department of
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`Chemistry at the University of Waterloo (“UW”). I am also cross-appointed
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`to the Department of Chemical Engineering and Physics and have held a
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`Tier 1 Canada Research Chair in Solid State Materials since 2004.
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`3.
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`For the past 20 years, my research has been focused on developing new
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`materials for energy storage (i.e., batteries). I have published or have in
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`press over 230 papers, review articles, and patents (or patent applications) in
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`this field, which have been cited over 27,000 times.
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`4.
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`I received an Honours Bachelor of Science in Chemistry from the University
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`of British Colombia in 1978. After this, I completed my PhD in Chemistry at
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`the University of Toronto in 1984.
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`5.
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`Below I discuss my employment activities at UW in the timeframe of 2014
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`through 2016. During that time, my title was Professor in the Department of
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`2
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`Confidential UW Exhibit 1006, pg. 2
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`Declaration of Linda F. Nazar
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`Chemistry. I was also the Director of the Nazar Group Laboratory (the
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`“Nazar Lab”) at UW.
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`6. My responsibilities as Director of the Nazar Lab included developing,
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`directing, and overseeing all research projects taking place in the laboratory.
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`The Nazar Lab’s research focus encompassed complex material synthesis,
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`physical, and structural characterization, electrochemical testing, and
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`electrode design for various energy storage devices.
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`7.
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`In connection with those responsibilities, I was responsible for supervising
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`Postdoctoral Research Associates, Graduate Students, and Undergraduate
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`Students (collectively “Nazar Lab Members”). I directed and was
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`extensively involved in all projects taken on by Nazar Lab Members.
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`8.
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`One such project related to Zn-Ion Battery Technologies. By way of
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`example and more particularly, the project resulted in the development of a
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`low-cost, rechargeable Zn-ion battery based on a cathode comprised of
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`nanostructured pillared hydrated vanadium oxides as robust materials for
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`high rate and long term reversible Zn2+ ion intercalation storage at the
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`cathode, that are coupled with a metallic Zn anode, and an aqueous
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`electrolyte (the “Zn-Ion Battery”).
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`3
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`Confidential UW Exhibit 1006, pg. 3
`PROTECTIVE ORDER MATERIAL
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`Declaration of Linda F. Nazar
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`9.
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`In connection with the Zn-Ion Battery Project, I was extensively involved as
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`the Principle Investigator for the initial phases of scientific development. I
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`was routinely
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`involved with directing, supporting, reviewing, and
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`communicating with all Nazar Lab Members involved in the project in order
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`to realize the development of the Zn-Ion Battery to a viable energy storage
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`solution.
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`II. DOCUMENTS CONSIDERED
`10.
`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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`affirm that these Exhibits are true and accurate printed copies of documents
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`retrieved from UW’s document management system, are business records of
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`UW, were kept in the course of the regularly conducted business and activity
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`of UW, were generated and in existence on or about the date indicated, and I
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`reviewed and had knowledge of each such document on or about the dates
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`indicated.
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`UW Exhibit 1003 U.S. Provisional Patent Application No. 62/230,502
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`UW Exhibit 1016 Technology Disclosure Form for “Aqueous Zn-Ion
`Batteries Using a Metallic Zin Negative Electrode
`and Vanadate Positive Electrodes,” dated
`May 28, 2015
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`4
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`Confidential UW Exhibit 1006, pg. 4
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`Declaration of Linda F. Nazar
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`UW Exhibit. 1017 PowerPoint Presentation dated January 12, 2015,
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`UW Exhibit 1018 U.S. Patent Application No. 13/794,508
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`UW Exhibit 1019 PowerPoint Presentation,
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`11.
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`I have also reviewed the other patents, patent applications and claims as
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`mentioned below.
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`III. DEVELOPMENT BY UW OF THE Zn-ION BATTERY
`12.
`I understand that the UW Commercialization Office (“WATCO”) paid for
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`and assisted with the filing of U.S. Provisional Patent Application No.
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`62/230,502 (“the Provisional Application”), which was entitled “Electrode
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`Materials for Rechargeable Zinc Cells and Batteries Produced Therefrom.”
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`(UW Exhibit 1003.) I am aware that this Provisional Application was filed
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`on June 8, 2015, because I was actively involved in the filing of the
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`application. I am a named inventor on the Provisional Application.
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`13.
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`I understand that a PCT Application (No. PCT/CA2016/050613) (“the PCT
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`Application”) was filed on May 31, 2016, and was published as
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`WO2016/197236 on December 15, 2016. (UW Exhibit 1004.) I generated
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`the claims for the patent together with Dr. Dipan Kundu and the patent agent
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`and am a named inventor on the PCT Application.
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`5
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`Confidential UW Exhibit 1006, pg. 5
`PROTECTIVE ORDER MATERIAL
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`Declaration of Linda F. Nazar
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`14.
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`I understand that U.S. Patent No. 9,780,412 (“the ’412 Patent”) (UW Exhibit
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`1001) is the subject of this proceeding and was originally filed at the U.S.
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`Patent Office as U.S. Patent Application No. 15/461,849 (“the ’849
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`Application”) on March 17, 2017 as a continuation of the PCT Application
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`and issued on October 3, 2017. I am familiar with the ’412 Patent and its
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`current claims.
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`15.
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`I understand that the PCT Application was relied on to file several
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`subsequent U.S. Patent Applications, including the ’849 Application and
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`U.S. Patent Application No. 15/513,914 (“the ’914 Application”) filed on
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`March 23, 2017 as a National Phase entry from the PCT Application. (UW
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`Exhibit 1002.)
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`16. All of the Provisional Application, the PCT Application, and the ’914
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`Application were filed by UW via their agents. However, the ’849
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`Application was filed by agents of Salient Energy (“Salient”) without the
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`consent of myself or UW.
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`17.
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`I understand that I am a named inventor on the ’914 Application (UW) but
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`not the ’849 Application (Salient) and resulting ’412 Patent. (UW Exhibit
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`1001; UW Exhibit 1002.)
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`6
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`Confidential UW Exhibit 1006, pg. 6
`PROTECTIVE ORDER MATERIAL
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`Declaration of Linda F. Nazar
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`18. Because I understand that the claims of the ’849 Application and resulting
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`’412 Patent are the same as and encompassed in the claims of the ’914
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`Application, I should be named as an inventor on both. Having reviewed the
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`historical development of the projects, including the concepts developed
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`which are claimed in the ’914 Application and ’412 Patent, I believe I
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`should be named as and would consent to be named as an inventor of the
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`’412 Patent, based on my contributions to the conceptions of the claims of
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`the ’412 Patent. As discussed below, the subject matter of the ’412 Patent
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`was developed by me, Dr. Brian Adams, and Dr. Dipan Kundu in the Nazar
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`Lab.
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`19.
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`There was
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`an attempt among the researchers to avoid overlap in areas of research as
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`much as possible in order to capture a broad range of information.
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`20. Among others,
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` had a “multi-valent thrust” that was focused on
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`materials that intercalated cations with valences higher than one, and this
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`effort focused on intercalation materials for divalent cations such as
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`7
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`Confidential UW Exhibit 1006, pg. 7
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`magnesium, zinc, and calcium. Within the Nazar Lab, the primary members
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`working on the multi-valent thrust were Victor Duffort, Xiaoqi Sun, Brian
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`Adams, and me. Dr. Dipan Kundu was consulted on materials because of his
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`past work with vanadium oxide intercalation materials and battery materials
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`in general.
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`21. Around the time-frame of late 2014/early 2015,
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` and I had discussions regarding pillaring
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`layered oxides – an effect known in the art that I had previously
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`investigated. This had been disclosed in a 2013 Patent Application (UW
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`Exhibit 1018) by Pellion, a company founded by
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`. This topic was discussed
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`in the Nazar Lab between 2014 and 2015 among, at least, Xiaoqi Sun, Victor
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`Duffort, Dr. Kundu, and me.
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`22. The idea of propping apart the layers and the role of water between the
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`layers featured prominently in guiding the research of the Nazar Lab. It was
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`this understanding that motivated my directing Xiaoqi Sun to examine the
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`layered, hydrated manganese oxide (“birnessite”) at first, for example; and
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`subsequently, the hydrated vanadium oxide. I asked Dr. Kundu, who had
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`previously been working with vanadium oxide in another context to supply
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`8
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`Confidential UW Exhibit 1006, pg. 8
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`Declaration of Linda F. Nazar
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`Sun with some of the material. This is clearly set out in the presentation to
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`JCESR. (See UW Exhibit 1017.)
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`23. On January 12, 2015, Victor Duffort, Xiaoqi Sun, and I took part in a
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`teleconference with members of
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`. During this teleconference, we
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`gave a PowerPoint presentation (UW Exhibit 1017) as part of a regular
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`update for
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`.
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`24. This presentation discloses that
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`. This suggested that aqueous environments could work with
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`other di-valent cations, which was consistent with other JCESR research
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`groups who had shown some progress with zinc in non-aqueous systems.
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`25. Following this presentation and based on the success of the other
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`research group with zinc that was discussed in the Nazar Lab, the team in the
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`Nazar Lab began, with my input and under my supervision, to consider and
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`examine zinc and vanadate in an aqueous environment. At the time, we were
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`trying to understand the limits of divalent cation intercalation.
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`we knew that one of the problems was the Mg salt: namely that
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`the divalent Mg2+ cation bonds to its anion strongly, and this pairing needs to
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`9
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`Confidential UW Exhibit 1006, pg. 9
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`Declaration of Linda F. Nazar
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`be broken in order for the divalent cation to undergo intercalation in a
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`battery cathode. While this interaction can be more easily “broken” in water
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`electrolytes due to solvation, it is a problem in a non-aqueous solvent and
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`hence “intercalation” does not occur.
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` while the cathode (the
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`layered manganese oxide) worked well in water, a Mg anode is not
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`compatible with water. In contrast, Zn metal anodes are stable in water
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`because of the difference in redox potential. We didn’t explore the layered
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`manganese oxide for Zn2+ intercalation because I was concerned about
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`dissolution of manganese oxide in water. The confluence of all these events
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`made us realize that exploring hydrated vanadates with zinc was a viable
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`option.
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`26. The Nazar Lab then began to coalesce around this new focus on zinc and
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`vanadate in an aqueous environment under my supervision. Dr. Kundu took
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`the lead because of his background in vanadate chemistry, and Dr. Adams
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`joined him because of his availability for further research.
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`27. At some point between January and March 2015, Dr. Adams, Dr. Kundu,
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`and I began working on the Zn-Ion Battery project. Dr. Adams’s expertise
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`was in electrochemistry and lithium-oxygen electrochemistry, and I
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`understood him to be unfamiliar with Zn-Ion Battery cathode materials. As
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`Confidential UW Exhibit 1006, pg. 10
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`Declaration of Linda F. Nazar
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`such, it made sense for him to work on the plating of zinc on the Zn
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`electrode and the electrolyte used as an introduction to the materials and
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`chemistry in this type of battery. The work of Dr. Adams primarily involved
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`the depositing of zinc and preparation of the electrolyte to reduce/inhibit
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`dendrite growth. The work of Dr. Kundu focused on vanadium and
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`developing the positive electrode for the battery based on the layered,
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`pillared structure that we had been discussing.
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`28. Between January and May 2015, there were numerous informal meetings
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`between Dr. Kundu and me, and to a lesser extent, between Dr. Adams and
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`me. During these meetings, I provided guidance and direction as to
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`alternatives and different approaches to pursue. Specifically, at these
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`meetings, I provided Dr. Kundu with guidance on, for example, proving that
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`vanadium dissolution didn’t occur and helping to tailor the synthesis of the
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`layered hydrated vanadate intercalation positive electrode.
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`29. For meetings on the Zinc-Ion Battery project, I would generally have
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`substantive discussions with Dr. Kundu regarding ideas and approaches,
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`which Dr. Kundu would then relay to Dr. Adams. As such, Dr. Adams might
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`not have known explicitly whether ideas and concepts came from me or Dr.
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`Kundu.
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`11
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`Confidential UW Exhibit 1006, pg. 11
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`Declaration of Linda F. Nazar
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`30. Dr. Kundu and Dr. Adams made progress on the development of a Zn-Ion
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`Battery, making use of the concepts that Dr. Kundu and I had been
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`discussing
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`throughout
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`these meetings. These concepts
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`included
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`the
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`importance of waters of hydration in the interlayer gallery, the general idea
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`of pillaring, and the importance of nanostructuring the cathode material to
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`limit stress during intercalation.
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`12
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`31.
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`32.
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`Confidential UW Exhibit 1006, pg. 12
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`Declaration of Linda F. Nazar
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`33. Based on these developments, Dr. Kundu, Dr. Adams, and I prepared and
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`submitted a Disclosure Form (UW Exhibit 1016) to the commercialization
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`office (WATCO) at UW. The Disclosure Form identifies Dr. Kundu, Dr.
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`Adams, and me as inventors.
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`34. The Disclosure Form resulted in the preparation of the Provisional
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`Application that was filed on June 8, 2015. (UW Exhibit 1003.) The
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`Provisional Application lists me, Dr. Kundu, and Dr. Adams as inventors
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`and includes rough claims that are very similar to the claims of the ’412
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`Patent.
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`35.
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` At minimum, my inventive contributions from the Zn-Ion Battery project
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`are embodied in claims 1, 2, 4-8, 12, and 15 of the ’412 Patent. These
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`encompass the valence state of metal ions M in the formula MxV2O5.nH2O
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`of claim 1, waters of hydration coordinated to the metal ions M and at least a
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`portion hydrogen bonded to the layers of the crystal structure, the pH and
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`water-dissolved zinc amount in the electrolyte, certain binders of claim 8,
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`and certain properties of the negative electrode.
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`13
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`Confidential UW Exhibit 1006, pg. 13
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`Declaration of Linda F. Nazar
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`36. The Provisional Application and the ’412 patent focus on the development
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`of the cathode and the use of layered pillared vanadate in a particular
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`formulation, which was developed by Dr. Kundu and me.
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`37. The ’849 Application that issued as the ’412 Patent was filed on March 17,
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`2017, only after Dr. Adams and another individual had a dispute with
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` Dr. Kundu, and me over ownership/exploitation rights to the subject
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`matter of the Provisional Application and the PCT Application. I believe that
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`the fact that the ’412 Patent excludes me as an inventor is a result of Salient
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`attempting to obtain commercial gain or for some other purpose known to
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`Salient.
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`38.
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`In August 2016, Dr. Kundu, Dr. Adams, two other members of my lab, and
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`me published an article in Nature Energy, entitled “A high-capacity and
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`long-life aqueous rechargeable zinc battery using a metal oxide intercalation
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`cathode,” covering the novel subject matter underlying the invention of the
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`’412 Patent and ’914 Application. (UW Exhibit 1011.)
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`IV. CONCLUSION
`39.
`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;
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`and further that these statements were made with the knowledge that willful
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`14
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`Confidential UW Exhibit 1006, pg. 14
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`Declaration of Linda F. Nazar
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`false statements and the like so made are punishable by fine or
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`imprisonment, or both, under section 1001 of Title 18 of the United States
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`Code and that such willful false statements may jeopardize the validity of
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`the application or any patent issued thereon.
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`40.
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`In signing this Declaration, I understand that the Declaration will be filed as
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`evidence in a contested case before the Patent Trial and Appeal Board of the
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`United States Patent and Trademark Office. I acknowledge that I may be
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`subject to cross-examination in the case and that cross-examination will take
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`place in the United States. If cross-examination is required of me, I will
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`appear for cross-examination within the United States during the time
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`allotted for cross-examination.
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`DATED: July 20, 2018
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`_____________________
` LINDA F. NAZAR
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`15
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`Confidential UW Exhibit 1006, pg. 15
`PROTECTIVE ORDER MATERIAL
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