Filed on behalf of Cleariamp, LLC
`By:
`Matthew L. Cutler (meutler@hdp.com)
`Bryan K. Whe‘eloc‘k (bwhee‘iock@hdp.com)
`Harness, Dickey & Pierce, PLC
`7700 Bonhomme, Suite 400
`St. Louis, MO 63105
`T822 (314) 726-7500
`Fax: (314) 726—7501
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LKQ CORPORATION
`Petitioner
`
`V.
`
`Patent of CLEARLAMP, LLC
`Patent Owner
`
`Case IPR2013—00020
`
`Patent 7,297,364
`
`Before SALLY C. MEDLEY, KEVIN F. TURNER and JOSIAH C. COCKS,
`Administrative Patent Judges.
`
`DECLARATION OF IRVING S. MPPAPORT
`
`
`
`Clearlamp, LLC
`Exhibit 2009
`
`Declaration of Irving 8. Rappaport
`LKQ v. Clearlamp Confidentiai
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`1 of 24
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`1, Irving S. Rappaport, declare:
`
`I.
`
`Purpose of Representation
`
`l.
`
`I have personai knowledge of the statements made in this
`
`declaration and are prepared to testify on the matters stated herein, except for
`
`statements stated to be based upon my information, understanding, and belief,
`
`which I beiieve to be true.
`
`2.
`
`In connection with this Inter Parres Review Proceeding, LKQ,
`
`Corporation, Petitioner, v. Cleariamp, LLC, Patent Owner, before the Patent
`
`Triai and Appeal Board (PTAB), I have been retained by the law firm of
`
`Harness, Dickey & Pierce on behalf of the Patent Owner Ciearlamp, LLC.
`
`I
`
`have been asked to opine on certain issues relating to patent validity and
`
`particularly the prior art references cited under 35 U.S.C. 103 in the PTAB’s
`
`Decision of March 29, 2013 and secondary considerations reiated to the issues
`
`of obvionsness raised in this proceeding reiating to the Cleariamp US. patent
`
`7,297,364 (‘364 patent). I have been provided with the following documents
`
`for review:
`
`0 US. Patent No. 7,297,364
`
`a Prosecution History of the ‘3 64 patent
`
`0 Petition For Inter Partes Review of US. Patent No. 7,297,364
`
`(and related exhibits)
`
`0 Patent Owner Clearlamp, LLC’s Preliminary Response
`
`- PTAB Board Decision “Institution ofInter Porters Review”
`
`(IPR2013~00020 (SCM); Paper 18)
`
`a US. Patent App. No. US 2005/0208210 (Kuta)
`
`0 US. Patent No. 6,106,648 (Butt)
`
`6356 II’RZOLB'QOQBO {$9M} 6/30/2013
`Declaration of Irving s. Rappaport
`Pfltfiflt 7397,3364
`LKQ V. Cieariamp Confidential
`snowmanWWWWW.. WWW--W.-.-... -...m2.-mm..WW.... WWWWWW.WWW.
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`2 01524
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`

`o Eastwood Forum on Headlight RewSealing dated February 18,
`
`2005 (Eastwood)
`
`a Deposition of Robert Sandau
`
`o Deposition of James Deviin, and related exhibits
`
`- Generai Motors and Volvo test results (Exhibits 2-4)
`
`11. My Beekground and Qualifications as a Patent Attorney and
`Testifying Expert Witness in Patent Litigation
`
`I have, been registered. to practice before the United States Patent
`3.
`and Trademark Office (USPTOj since 1964 as a patent agent and as an
`
`attorney since 1966. I was first admitted to the Bar of the State of Missouri in
`
`1966, the Bar of the State of Massachusetts in 1967, the United States Court
`
`of Customs and Patent Appeals in 1967 (now CAFC), the Bar of the State of
`
`Minnesota in 1973, the Bar of the State of lilinois in 1983 and the United
`
`States Supreme Court in 2005.
`
`4.
`
`I received a B.S.E.E. from Washington University in St. Louis,
`
`MO in 1962, a 1D. with Honors from George Washington University in 1966
`
`and served on the Law Review Staff, and an MBA. from the Boston
`
`University Graduate School of Management in 1969.
`
`5.
`
`I worked as a Patent Examiner at the USPTO beginning in June
`
`1962 before entering the US. Army as a Second Lieutenant in Army Security
`
`Agency stationed at the National Security Agency at Fort Meade, MD until
`
`March 1965.
`
`6.
`
`During my career I have served as Assistant General Counsel and
`
`Chief Patent Counsel for Medtronic from 1971~77. From mid 1977 through
`
`fall of 1978 I was General Counsel and Assistant Secretary of Renal Systems
`
`Corporation. 1 served as Chief Patent Counset for Data General Corporation
`
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`fionifimil9781nnfltaU1982.lhonrfifllofl9821hroughsunnnerof19841
`
`wmAmmmmemdCmmRHMJPmdmemgmBmWCmmmMMrm
`
`fall of 1984 I joined Apple Computer, Inc. and served as Associate General
`
`Counsel for TP and Licensing until summer 1990. I consulted on trademarks
`
`for Intel Corporation from late summer 1990 until July 1991, during which
`
`time I recommended that Intel adopt a program for having its customers place
`
`the Intel logo on the outside of their PCs.
`
`In July 1991 I was recruited by
`
`National Semiconductor to serve as Vice President of IP and Licensing.
`
`7.
`
`I co—founded a software company, SmartPatents, Inc. in 1993
`
`with Kevin Rivette, the co-author of Rembrandts in the Attic, which
`
`developed the first true electronic patents. In 1996 we had developed the first
`
`software platform for managing and analyzing large portfolios of patents
`
`using a graphical interface that provided landscape mapping of competitive
`
`patent portfolios, citation trees and many other reporting functions that are
`
`today common in the patent field. I am named as a cominventor on over 50
`
`msuedlLS.andinunnafionalpannnscovefingrnnnennwinvennonsreknedto
`
`the Aureka® software platform. In 1998 the company changed its name to
`
`Aurigin Systems, Inc. and is currently owned by Thomson Reuters, which
`
`continues to license the Aureka platform.
`8.
`From 1987 through 1994 I was appointed for consecutive two
`
`year terms by three U.S. Secretaries of Commerce and two U.S. Trade
`RwawMManmmmonmACiaUSIhwmmmUNWWowmmmm
`
`on Trade Related Intellectual Property Rights as part of the Uruguay Round of
`
`the GATT. The efforts of the Committee resulted in the formation World
`
`Trade Organization’s (WTO) adoption of minimum standards for intellectual
`
`property rights relating to patents, trademarks, copyrights, design patents, and
`
`trade secrets, collectively known as TRIPS and first adopted in 1995. Today,
`
`4 01°24 Case 'EP'R2_€313--00020 (ngfM) 6/30/2013
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`WWWWWWAWWMWW.. WWWWMWWWWWWWWWWWWWW
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`most developing and developing countries of the world are members of the
`
`WTO and are implementing the provisions of TRIPS. The Committee was
`
`also instrumental in passage of the Intellectual Property Provisions of the
`
`North American Free Trade Association (NAFTA).
`
`9.
`
`In 2004, I co»founded another patent analytics company, i?
`
`Checkups, Inc., (IPC). The company provides software, services and
`subscriptions to companies, law firms, investment firms and universities for
`
`managing and analyzing patent portfolios in their competitive landscapes: _
`iPC also offers PatentCAMTM subscriptions for automatically alerting and
`
`monitoring patents relating to specified technologies. We also offer
`
`subscription to the CieanTech PatentEdgeTM Database, containing over 1.5
`
`million worldwide patents and published applications in 165 cieantech
`
`categories.
`
`10.
`
`In all of the positions I have held during my career I have been
`
`. responsible for the fiiing, prosecuting, maintaining, licensing and litigating of
`
`patents in the US. as well as around the world.
`
`ll. Over the past 20 years I have served as an expert witness in over
`
`60 IP—related litigations, representing plaintiffs and defendants about equally.
`
`1 have testified. at trial in 7 cases and been deposed over 40 times. In 2009 I
`
`served as the expert for i4i in its recent case against Microsoft on the issue of
`
`willful patent infringement, which resulted in damages of over $350 million,
`
`including infringement, willful infringement and interest, as well as an
`
`injunction against further sales of Word 2003 and 2007 .. The decisions of the
`
`Federal District Court, the Federal Circuit, and a unanimous US. Supreme
`
`Court upheid all findings in favor of i4i. The award was the largest award for
`
`a patent infringement case ever upheld by the Supreme Court.
`
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`12.
`
`I have served as an expert in thirty seven patent—related cases. I
`
`have opined on issues including patent infringement and validity, patent
`
`prosecution, patent licensing, reasonable royalties, willful infringement,
`
`inequitable conduct, fiduciary duties of officers and directors with respect to
`
`patents, and patent malpractice.
`
`13. During my career I have published or presented over 60 papers
`
`on various intellectual property legal topics and published chapters in two
`
`books on intellectual property law.
`
`14. Over the past 10 years I have played an active role in Patent
`
`Reform legislation through my membership in various organizations including
`
`my memberships in the ABA, American. Intellectual Property Law
`
`Association, and the Licensing Executives Society and other groups and
`
`committees that have testified before Congress on patent reform.
`
`15.
`
`1 served on the Patent Solutions Forum, founded in 2012 by
`
`former Chief Judge of the Federal Circuit, the Honorable Paul Michel, and
`
`several colleagues in the IP field. The group has looked at further efforts for
`
`reforming the US. patent system,
`
`16.
`
`Since 2009 I have annually been selected by Intellecutal Asset
`
`Management Magazine as one of the [AM 250: World ’5 Leading 1P
`
`Strategists.
`
`i7. Attached as Appendix A is a complete c0py of my CV, including
`
`a listing of the cases in which I have served as an expert witness. My hourly
`
`rate for my time is $500. and I have no financial interest in the outcome of this
`
`case.
`
`III. Threshold Issues
`
`A. Is Claimed i’rocess in ‘364 NonwObvieus and Therefore Not
`
`Invalid?
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`18.
`
`I have carefully studied the documents provided to me and
`
`conducted independent research on the issues in this matter.
`
`I have been
`
`requested by the Harness Dickey & Pierce firm to provide my expert opinions
`
`on two threshold issues before the PTAB based on the Petition filed by LKQ.
`
`The first threshold question is Whether: 1) based on my 40+ years of
`experience in the patent field as a registered patent attorney; ii) customs,
`standards, and practices in the patent field; and iii) the evidence of record,
`
`support a finding that the claimed invention in the ‘364 patent is non—obvious
`
`under 35 U.S.C. 103 and therefore not invalid, based on a combination of
`
`Kuta US. Patent App. No. US 2005/02082l0 and either Butt U.S. Patent No.
`
`6,106,648 or the Eastwood Forum on Headlight Re—Seaiing dated February 18,
`
`2005.
`
`B.
`
`Are There Significant Secondary Considerations of Non‘
`Obviousness?
`
`19.
`
`The second threshold issue on which I have been asked to opine
`
`is Whether: 1) based on my 40+ years of experience in the patent field as a
`
`registered patent attorney; ii) customs, standards, and practices in the patent
`
`field, and iii) the evidence of record support a finding that the claimed
`
`invention in the “364 patent is non—obvious, and therefore not invalid, based
`
`on secondary considerations relating to the issue of obviousness, as well as
`
`patentabiy distinguishing over a combination of Kuta and either Butt or the
`
`Eastwood Forum on Headlight Re~Sea1ing under 35 13.8.0 103.
`
`IV.
`
`Summary Conclusions as to Non—Obvionsness and Secondary
`Considerations
`
`20.
`
`Based on: i) my 40+ years of experience in the patent field as a
`
`registered patent attorney; ii) customs, standards and practices relating to
`
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`patent vaiidity, and iii) my study of the evidence of record in this case, in my
`
`opinion, the evidence clearly supports a finding that the ciairned invention in
`
`the ‘364 patent is non—obvious, and therefore not invaiid, as the combination
`
`of claimed steps are patentably distinguishable over a combination of Kuta
`
`and either Butt or Eastwood when considered under 35 U.S.C. 103.
`
`21.
`
`Based on: i) my 40+ years of experience in the patent field as a
`
`registered patent attorney; ii) customs, standards and practices relating to
`
`patent validity; and iii) my study of the evidence of record in this case, in my
`opinion, the evidence clearly supports a finding that the ciaimed invention in
`
`the F364 patent is non~obvious, and therefore, not invalid, based on secondary
`
`considerations relating to the issue of obvionsness, as well as patentahly
`
`distinguishing over a combination of Kata and either Butt or Eastwood under
`
`35 U.S.C. i03.
`
`V.
`
`Review of the Prosecution History of the ‘364 Patent
`
`22. During the prosecution of the 6364 patent, the Examiner
`
`discussed the Reasons for patentability of the claimed combination of steps in
`
`the ‘364 patent. In the Office Action dated January, 12, 2007, pages 5 and 6,
`
`Primary Examiner Wiliiam Phillip Fletcher Iii stated:
`
`12.
`
`The following is- a statement of reasons for the indication of allowable subject
`
`matter: Kata (US 200510208210 A1) is the closest prior art. Broadty, this reference
`
`teaches:
`
`Refinishing an exterior automotive teas having, a damaged
`exterior surface in Sill! using a continuous movement and
`oscimimg motion with first. a 330 grit sanding“disc next a
`«In grit sanding disc and tinnily a 2500 grit sanding pad
`whiic flushing the surface with water 10 pmcu: trickling of
`the surface. naming the surface with a polishing “1331qu
`until a high gloss is achieved Iioaiiy coating the surface
`with it transparent ultravioict hardcoablc coating material,
`and humming it by exposure to an uilmvioizt lighl source
`This methodI: accumpiisbwd usmg an mull-inn; loot hen—
`tag a remotely touted drive.
`
`This reference also teaches away-from the step of removing the instantly ciaimed step
`
`of removing the iamp from the motor vehicie:
`
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`
`invention readies an airemaiive to
`' [£1010] We present
`melammem lbs! is [mint test eliwive. in Ihal it does not
`
`
`requiie' 'nimoval of were lenses nor mounting of new ones.
`Thin. this 3W saves both the era: of new lenses as net!
`
`_ as the seal of labor for replacement.
`
`.
`'
`
`AS such, theinstranfl darned
`
`is
`
`art
`
`23.
`
`Primary Examiner William Phillip Fietcher III is a long time
`
`Examiner at the USPTO with many years of patent examining experience. In
`
`a search of records of his work at the USPTO, Primary Examiner Fletcher has
`
`been named as the examiner in at least 541 issued patents and many more
`
`pending patent applications. The earliest filed application he is shown to have
`
`been named in was filed on March 6, 1995 which issued as US. patent
`
`7,097,876 on August 29, 2006 entitied “Method for forming protective film
`
`of strippable paint on sprayed coating of automobile or other large-sized
`
`product,” issued to Honda Motor Company Ltd and classified in US. Class
`
`427. The most recent patent issued by Primary Examiner Fletcher is US.
`
`8,409,661 issued on April 2, 2013, and classified in US. Class 427.
`
`24.
`
`Searching of the records of the patents and applications worked
`
`on by Primary Examiner Fletcher show that many of his cases are classified in
`
`class 427. The following searches were conducted on Aureka software
`licensabie from Thomson Ii? Solutions regarding patents handled by Primary
`
`Examiner Fietcher:
`
`Declaration of Irving S. Rappaport
`LKQ v. Clearlamp Confidential
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` . _ _
`...._....._..,__.
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`_
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`
`
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`I ”
`
`.3
`3
`
`It can be seen that of the total 541 issued patents which Primary Examiner
`
`Fletcher has handled, 535 are classified in US. Class 427, 459 of those
`
`patents have the terms “coat” or “coating” or “coatings,” 164 have the terms
`
`“grind” or c“sand” and 26 specifically have the terms “headlamp” or “lens.” It
`
`is clear that Examiner Fletcher has significant experience in the art related to
`
`the claimed invention in the ‘364 patent and related prior art.
`
`25.
`
`In my opinion, based on i) my 40+ years of experience in the
`
`patent field as a registered patent attorney; ii) customs, standards and practices
`
`relating to patent validity; and iii) my study of the evidence of record in this
`
`case, when Primary Examiner Fletcher concluded that the removai of the
`
`headlamp as part of the claimed combination of steps in the ‘364 claims, he
`
`understood that it was not just the removal of the headlamp from the vehicle
`
`that created the patentable differences over Kata, but that Kata did not allow
`
`for or suggest many of the combination of steps in as set forth in the ‘364
`
`patented claims. Examples of the patentable differences which are included in
`
`10 0324 Case 9332013200030 (SW-3633032033
`32331333333033 of Irving s. Rappaport
`Patent 7329/3364
`LKQ V. Clearlamp Confidential
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`the combination of steps as claimed in ‘364 which are not taught or suggested
`
`in Kuta or the other references include:
`
`1) Removing the lamp from the motor vehicle - the fixed jig
`
`positioning of the headlamp makes the grinding and sanding steps
`
`and the tools used for them easier to control and the grinding and
`
`sanding more accurate and precise;
`
`2) Removing an original clear coat finish - according to Clearlamp’s
`
`expert, Harvey Bell, the procedure for removing the original clear
`
`coat finish from the lamp is not disclosed by the Kuta reference;
`
`3) Evening the lamp surface — according to Mr. Bell, Kata does not
`
`disclose evening the lamp surface to remove any troughs created
`
`through the removal of damage from the lamp;
`
`4) Spraying a replacement clear coating material over the lamp surface
`
`m— according to Mr. Bell, Kata does not disclose the spraying of a
`
`final clear coat which is then cured in two steps;
`
`5) Applying infrared radiation to the lamp surface or heating the lamp
`
`in an oven m according to Mr. Bell, Kuta makes no mention of
`
`applying infrared radiation, such as by heating the lamp in an oven;
`
`6) Statically neutralizing debris on the lamp surface ~ according to Mr.
`
`Bell, Kuta makes no mention of statically neutralizing debris on the
`
`lamp’s surface after the grinding and buffing steps.
`
`For purposes of my opinions, I rely on all the technical findings in Mr. Bell’s
`
`testimony and the testimony submitted by Mr. Dimitris Katsamberis.
`
`VI. Review of the Board’s Order of March 29, 2013
`
`26.
`
`The PTAB’S Order of March 29, 2013 granted two challenge
`
`grounds, including that the ‘364 claims are obvious based on a combination of
`
`C333 H)9301500920 {SCM} 6/30/2013
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`Kata in light of Butt, and that the “364 claims are obvious based on a
`
`combination of Kuta in light of Eastwood under 35 U.S.C. 103 (a). I believe
`
`Petitioner’s arguments to be unsupported and mere speculation for the
`
`following reasons. The combination of references cited by Petitioner, LKQ,
`
`are superficially related to the combination of claimed steps in the ‘364
`
`patented invention. Mr. Bell testifies that Kuta, by failing to set forth the
`
`above-referenced steps of the ‘364 patent, cannot meet the necessary
`
`requirements for restoring a headlamp to. original equipment condition
`
`acceptable to the auto, auto repair and insurance industries. Butt, in patching
`
`a broken headlamp with a piece of molded thermoplastic could never meet the
`
`standards for original equipment condition refurbished headlamps, and
`
`Eastwood contains statements of anonymous individuals cleaning headlamps
`
`and provides no evidence that the disclosed process could result in a headlamp
`
`restored to original equipment condition.
`
`27. Although the KSR v. Teleflex case1 does consider “common
`
`sense” as one criteria for aiding in determining the obviousness of combining
`
`prior art references under 35 U.S.C. 103, ifthe references, when combined,
`
`fail to teach all of the claimed steps of the patented invention or would fail to
`
`result in the claimed invention, such combination is merely what has been
`
`long referred to in my 40+ years in patent practice as “hindsight.” Seeing as
`
`the combination of references relied on here by Petitioner do not contain all of
`
`the claimed steps of the ‘364 patented invention and do not result in the
`
`claimed “364 invention even if combined, Petitioner’s combinations of
`
`references under 35 U.S.C. 103 fail to provide sufficient evidence to support a
`
`finding of obviousness of the claimed combination of steps in the ‘364
`
`patented invention.
`
`‘ KSR Inl'l Co. v. Teleflex Inc, 530 us. 393, 417 (2007).
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`28. Although the references relied upon by Petitioner may arguably
`
`be analogous art, 1 find persuasive the opinion and analysis of Mr. Bell that
`
`finds that the structural and functional differences between those references
`
`and the combination of ciairned steps in the ‘364 patented invention are
`
`sufficientiy different as to be only superficiaily similar.2 The only similarity
`
`that Butt and Eastwood provide is that they remove the lamp from the vehicle.
`
`However, even when that step is combined with Kata, the claimed
`
`combination of steps in the ‘364 patented invention is stiil missing and not
`
`made obvious by these failed combination of references as shown in Section
`
`V. above. In addition, it is my opinion that Kuta can be considered to teach
`
`away from the ‘364 patented invention, as concluded by Primary Examiner
`
`Fletcher, since it fails to suggest that the headlamps should be removed from
`
`the vehicle and, in fact, such removal would be counterintuitive within the
`
`individual retaii consumer parts market to which Kuta is directed. The reason
`
`for this is that the Kata reference is merely trying to clean the headlamps and
`not restore them to original equipment condition replacement parts. Even
`
`though Butt and Eastwood suggest removal of the headlamp from the vehicle,
`
`neither process results in originai equipment condition refurbished iamps.
`
`Butt is a patching process that would not yield an originai equipment
`condition lamp and IEast'Wood itself suggests that if the process were to be
`used in a business, the headlamps would not be removed from the vehicle.
`
`29.
`
`Based on: i) my 40% years of experience in the patent field as a
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`registered patent attorney; ii) customs, standards and practices relating to
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`patent validity, and iii) my study of the evidence of record in this case, in my
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`opinion, the evidence cleariy supports a finding that the claimed invention in
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`the ‘364 patent is non—obvious, and therefore patentable, as the combination of
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`2 See MPEP 2141.019) Analogous and Nomanalogous Art.
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`claimed steps in the ‘3 64 patent are not taught or suggested nor would there be
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`a motivation to combine Kuta and either Butt or Eastwood when considered
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`under 35 [ISO 103. Butt and Eastwood add only the notion of removing the
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`headlamp from the vehicle for the cleaning or restoration purposes. None of
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`these three references taken singly or in combination suggest all the
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`combination of steps as set forth in the patentably distinguishable claims of
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`‘364 as found by Examiner Fletcher. Not only is their combination not
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`obvious to one of ordinary skill in the art, but their combination would still
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`not produce the total combination of steps claimed in the “364 patented
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`invention.
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`VII. Combining Kuta with Butt or Eastwood Is Neither
`Obvious Under 35 USC‘ 163 Nor Would their Combination Produce
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`the Combination of Steps Claimed in ‘364.
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`30.
`
`See Sections V. and VI- above.
`
`VIII. Secondary Considerations re Non-Obviousness of ‘364 Claimed
`Process
`
`31.
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`There are several secondary considerations which by custom,
`
`standards, and practices have been used in helping reach a determination of
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`whether a claimed invention is non-obvious to those of ordinary skill in the art
`
`at the time the invention was made. These secondary considerations include:
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`i) commercial success of the claimed invention; ii) long-felt but unmet need
`
`for a solution to a problem in an industry; iii) industry praise and results for a
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`solution to the long—existing problem; iv) copying of the patented invention
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`that solves the problem; v) industry skepticism that a particular solution has
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`indeed solved the problem; and vi) licensing of the invention that solves the
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`problem. Below I will discuss the secondary consideration factors involved in
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`this case which help establish strong support for a conclusion that the claimed
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`steps in the ‘364 patented invention were non-obvious to one of ordinary skill
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`in the art (in this case refurbishing headlamps to GEM—quality which meet
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`Federal Motor Vehicle Safety Standards discussed above and have been
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`accepted by the auto, repair and insurance industries) at the time the invention
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`was made.
`
`The November 2012 case of Transocean Ofi’shore Deepwater
`32.
`Drilling, Inc. v. Moersk Contractors USA, [110,3 involving drilling methods
`that greatly improved operational efficiency, held that a primafacie case of
`
`-
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`obviousness, was overcome by strong showing of the factors cited in
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`paragraph 31. above. Some of these factors of secondary consideration can be
`
`shown strongly supporting non~obviousness in the present case.
`
`A. Copying By Others
`
`33.
`
`The evidence of record shows that Petitioner LKQ had access to
`
`the ‘364 patented process prior to the patent’s issuance and, in fact, copied the
`
`process.
`
`1) Meetings between Paperi and LKQ Executives
`
`34.
`
`The record shows that meetings and discussions were held
`
`between the ‘364 inventors and seVeral executives and employees of
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`Clearlamp. Inventor Maurice Paperi had discussions with the current CEO of
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`LKQ and other employees of LKQ, including Mr. Robert Sandau. These
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`discussions included at least one meeting at the production facility of
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`Clearlamp where the patented process in the ‘364 patent Was described by Mr.
`
`
`
`3 Transocean Ofifshore Deepwarer Drilling, Inc. v. Maersk Contractors USA, Ina, Case No. 11—1555 (Fed.
`Cir., Nov. 15, 20] 2) (Moore, 3.).
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`Paperi to the President of LKQ and Mr. Sandau. The details of these meetings
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`and discussions are set forth in the Section below from the sworn testimony of
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`Mr. Robert Sandau given on October 24, 2012.
`
`2)
`
`Sandau Deposition
`
`35. Mr. Robert Sandau has worked in the automobile repair industry
`
`since 1974 in body shops, mechanical, and car deaiers. He worked in Detroit-
`
`for Atlas Collision, the Roger Peck Chevy dealership, Penske, Giassnian
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`Oldsmobile, Gene Hamilton Chevrolet, James Martin Chevrolet, Morris
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`Buick, Steila Buick, Auto House, Mel Farr auto dealership, and worked at
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`Petitioner, LKQ from 2000 until sometime in 2007.4
`
`36. Mr. Sandau served as operations manager at LKQ in Belleville,
`
`MI, and reported to the site manager Doug Cortelini.5 Sandau testified that
`
`when he joined LKQ in 2000, recycled headlamps that were polished were
`
`offered, but not refurbished in the sense of a combination of process steps as
`
`the claimed invention in the “364 patent. He admitted that they were not
`
`lamps that an insurance company would buy.6 He further testified that if the
`
`headlamps were not insurance quality, LKQ would sell them to smaller body
`
`shops or people who were repairing cars for themselves and that non«
`
`insurance~quaiity—lamps would not be sold by LKQ to the insurance
`
`companies.7 Up until sometime in 2005, headlamps with major imperfections,
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`even though refurbished, were not sellable, but a visit from inventor Maurice
`
`Paperi in 2005 changed that.8
`
`“ Sandau Depo, October 24, 2012, p. 8, line 3 w p. 12, line 3.
`51d, p. 12, line 9 - p. 13, line 5.
`51d, p. 15,1ine 11 wt). 16, line 6.
`7rd, p. 17, line 21 up. :8, line 15.
`8 1d, p. 20, line 20- p.21,1ine 3.
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`37. According to Mr. Sandau, Mr. Paperi began bringing refurbished
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`headlamps to LKQ (which stands for Like, Kind and Quality) which Sandau
`
`testified:
`
`{3 Ana;-Wee-1;_.d;id he present semething :03m; anything
`3031,1:: Eat you unfielsis-nod what his pancesscefild def-3‘
`
`A, Likefianybddy‘ Engages will d0't3_1e.3t‘1l.shbw'yfiu. 3'- hefi! ' £3
`afifi.‘ after”. $2332.23}Ey'tgmizght in 53 heaé'iemgé} Wham h2131?'
`'
`0f:it:was m the. erigiflaii'Qcicsndieienflancttheethm- half
`leaked use, Btaia'id flew.
`Q {TB}? “air: Cutter) ené whatwas 301:! what was. 23;
`time'almaenontofim biflfld new
`
`Q QBV Mr Came?) Did is. itfair to 53.33- mm.
`MrPapaswagiakmgxoms est heeéiampsthat were
`
`'
`'
`themmm the
`
`@SSihly set? H}W
`
`LKQ'sméid's-fer Likegini'nd med Qeeliiy, very.
`.smaa‘t:Ex‘ademafitihtt used en.every insureeee 'estititéte‘
`xereetatt ofl1na§eu1pmwt quaiit3f. Tiieydid a
`mew I"
`.
`"If,
`I
`-
`.
`Q (By.his Cutie-r}: S0 tine-Eamps-that _i‘33!§t*']?1ape§i_su§23fiefi
`*
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`meat:
`
`" 11
`
`9 1d, p.22. lines
`1° Id, p. 22, lines 1849 ami p. 22,1mc 21 — p. 23, line 1.
`“rep. 23,1ines 4-11.
`Case {PR2013'00929 (SEMI) 6/30/2013
`Declaration of Irving S. Rappaport
`Patent 7,297,364
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`38. Mr. Sandau testified that when Mr. Paperi met with the LKQ
`
`employees in 2005, he informed them that there was a pending patent
`
`application covering the process described in detail to the LKQ employees at
`the meetings referenced in the Sandau deposition.12 ISandau also testified that
`
`when Mr. Paperi first showed him a refurbished headlamp, Paperi told Sandau
`that the headlamp had been refurbished using the process that Paperi had
`described1n detail to the LKQ employees.”
`39. Mr. Sandau then testified that the word within LKQ spread very
`fast that there was an OEM quality headlamp that was recycled component
`
`that could sell as insurance quality.14 Sandau testified that there were at least
`
`three separate facewto—face meetings with Mr. Paperi and his co—inventor Mr.
`
`Krauseufieringer, Paperi’s partner.15 One of the meetings was described by
`
`Mr. Sandau:
`
`A i think the'fisst tittie-fll‘ 5% that: aim was seat: a a
`
`
`
`repair facthty, over int he]1eve rt re ha-Ferndale
`
`
`
`A. Correct;
`
`'
`
`16
`
` A Thevtoelc as through. s
`
`redn "hasrotiiaisysteran'etké- :
`
`yen saw how‘-
`
`Q (B); Mr-antlet}; Shwhat wasthe.pnrposecfineenng
`
`with :hélr,;Fa-ei“i,:tllen?
`Liiiii
`=
`I
`A. He "
`'I
`ell-ashms‘ much he
`
`coni- proda e,
`:5
`_,
`_ diesend ltwaamozc
`
`for. its growthfor fittersgrowthfor both sides how
`
`“.17
`
`18
`
`32 Id, p.41, line 23 m 9, 42, line $33.58,lines14—29;p.74,iines 28—21.
`*3 Id, p. 46, lines 15—20.
`1" id, p. 25, lines 31-12 and 15—15.
`151d, p. 26,1ioe 17 w p. 27, line 4.
`‘6 Id, p. 27, linele-Itl‘
`'7 1a, p. 27, lines 24—25.
`C356 WIRES—00.020 (5354} 6/30i2013
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`LKQ v. Clearlamp Confidential
`Patent 7,297,364
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`40. Mr. Sandan’s testimony is that he and others were shown the
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`process being used by Messrs. Paperi and Krause-Heringer to make DEM
`
`quality headlamps. This meeting at the Paperi repair facility was attended by
`
`Doug Cortelini, site manager and later manager of all Michigan LKQ
`
`operations, Rob Wagman, insurance liaison who had just taken over the
`
`Global Trading Alliance, the aftemnarket division of LKQ and later LKQ
`
`CEO, and Todd Willen, then regional Vice president of LKQ.” Another
`
`meeting with the same LKQ people was held at Mr. KrauseaHeringer’s offices
`
`to discuss operating capacity.
`
`a -' he