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