UNITED STATES PATENT AND TRADEMARK OFFICE
`------------------
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`------------------
`BLD SERVICES, LLC
`Petitioner
`v.
`LMK TECHNOLOGIES, LLC
`
`Patent Owner
`------------------
`Case No: IPR2014-00770
`Patent No.: 8,667,991
`
`
`
`DECLARATION OF NORMAN E. KAMPBELL, P.E. IN SUPPORT OF
`PATENT OWNER RESPONSE
`
`I, Norman E. “Ed” Kampbell, declare that I have personal knowledge of the
`
`facts set forth in this declaration and, if called to testify as a witness, could and
`
`would do so competently.
`
`I.
`
`Introduction
`1.
`
`I have been retained as an expert witness on behalf of the Patent
`
`Owner, LMK TECHNOLOGIES, LLC.
`
`2.
`
`3.
`
`I reside in Hilliard, Ohio.
`
`I have been asked to provide testimony regarding trenchless pipe
`
`rehabilitation technology, and in particular cured-in-place pipe lining (“CIPP”)
`
`
`
`1
`
`LMK Technologies, LLC Ex. 2005
`BLD Services, LLC v. LMK Technologies, Inc.
`IPR2014-00770
`
`
`------------------
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`------------------
`BLD SERVICES, LLC
`Petitioner
`v.
`LMK TECHNOLOGIES, LLC
`
`Patent Owner
`------------------
`Case No: IPR2014-00770
`Patent No.: 8,667,991
`
`
`
`DECLARATION OF NORMAN E. KAMPBELL, P.E. IN SUPPORT OF
`PATENT OWNER RESPONSE
`
`I, Norman E. “Ed” Kampbell, declare that I have personal knowledge of the
`
`facts set forth in this declaration and, if called to testify as a witness, could and
`
`would do so competently.
`
`I.
`
`Introduction
`1.
`
`I have been retained as an expert witness on behalf of the Patent
`
`Owner, LMK TECHNOLOGIES, LLC.
`
`2.
`
`3.
`
`I reside in Hilliard, Ohio.
`
`I have been asked to provide testimony regarding trenchless pipe
`
`rehabilitation technology, and in particular cured-in-place pipe lining (“CIPP”)
`
`
`
`1
`
`LMK Technologies, LLC Ex. 2005
`BLD Services, LLC v. LMK Technologies, Inc.
`IPR2014-00770
`
`
`
`technologies and the relevant industry. I have also been asked to render opinions
`
`regarding certain matters pertaining to the subject of U.S. Patent No. 8,667,991
`
`(“the ‘991 patent”) and the unpatentability grounds asserted in this matter.
`
`4.
`
`I am being compensated at my usual consulting rate of $275 per hour
`
`for my work on this matter. My compensation is not dependent upon my opinions
`
`or testimony or the outcome of this matter.
`
`II. Professional Background and Qualifications
`5.
`I received a Bachelor of Science degree in Civil Engineering from the
`
`University of Arkansas in 1978. In addition, I have completed post graduate
`
`courses in Civil Engineering at the University of Arkansas.
`
`6.
`
`I am a registered professional engineer (PE) in Arkansas, Nevada,
`
`Ohio, Oklahoma, and Wisconsin.
`
`7.
`
`In 2004, I founded Rehabilitation Resource Solutions, LLC, a
`
`technical consultancy
`
`to
`
`the
`
`trenchless pipeline
`
`rehabilitation
`
`industry
`
`headquartered in Hilliard, Ohio. I have served as President of the firm since its
`
`inception. My firm works with industry participants, both suppliers of CIPP
`
`goods, services and equipment, and their customers, e.g., municipalities (domestic
`
`and
`
`international),
`
`in various phases and aspects of
`
`trenchless pipeline
`
`rehabilitation and renewal, including principally rehabilitation projects employing
`
`CIPP. This includes sewer system inspection and condition needs evaluations,
`
`
`
`2
`
`
`
`project bid specifications, solicitation, evaluation and selection of appropriate
`
`trenchless solutions, project management and quality assurance of the installation
`
`process. I have also worked with clients in the research and design of elements for
`
`new CIPP products and improvements of CIPP technology.
`
`8.
`
`Prior to 2004 and extending back to 1978, I have held a number of
`
`positions with a wide range of responsibilities related to sewer pipe renewal, and
`
`particularly CIPP. My experiences cover all facets of pipe rehabilitation, including
`
`the engineering design of renewal pipelines/liners, development of installation
`
`processes
`
`as
`
`a product/process manufacturer,
`
`installation of
`
`renewal
`
`pipelines/liners as a contractor, and quality assurance evaluation of installed
`
`products.
`
`9.
`
`One of my professional roles has been to serve on industry standards
`
`committees. I have been, and currently am, an active member of several
`
`committees of the American Society for Testing and Materials (ASTM). I am
`
`currently serving, and since 2001 have served, on the ASTM’s F17.67 Trenchless
`
`Plastic Pipeline Technology subcommittee. I am currently serving as the
`
`subcommittee’s task group chairman and principal author for development of a
`
`new design practice for all close-fit trenchless lining systems (including CIPP
`
`systems).
`
`
`
`3
`
`
`
`10.
`
`I am also currently serving, and have since 2011 served, as the task
`
`group chairman for the American Society of Civil Engineers (ASCE) project to
`
`produce a new Manual of Practice for the design of flexible close-fit trenchless
`
`lining systems.
`
`11.
`
`I am an inventor on U.S. Patent No. 6,942,426, issued September 13,
`
`2005 and entitled “Process and Apparatus for Repairing Pipes.” I have participated
`
`in U.S. patent prosecution, and have a general understanding of the process, and of
`
`the novelty and non-obviousness requirements for patentability.
`
`12.
`
`I have authored numerous technical papers that have been included in
`
`widely recognized and highly regarded publications in the pipe repair industry. I
`
`have also lectured at numerous conferences on a variety of topics related to pipe
`
`rehabilitation, and in particular CIPP.
`
`13. A more detailed account of my work experience and qualifications,
`
`and a list of my publications, is included in my Curriculum Vitae, which is
`
`attached as Ex. A to this Declaration.
`
`14.
`
`I believe that my extensive industry experience and civil engineering
`
`background qualify me as an expert in the relevant field of trenchless sewer pipe
`
`renewal, and particularly cured-in-place pipelining. I am knowledgeable of the
`
`relevant skill set that would have been possessed by a hypothetical person of
`
`ordinary skill in the art at the time of the invention of the `991 patent (in 2007).
`
`
`
`4
`
`
`
`III. Materials Reviewed
`15.
`In connection with my study of this matter and reaching the opinions
`
`stated herein, I have reviewed the exhibits accompanying this declaration as well
`
`as the following documents:
`
`(A) the ‘991 patent;
`
`(B) the petition requesting the present IPR (IPR2014-00770) and its
`
`accompanying exhibits (Exhibits 1001-1008);
`
`(C) the Patent Owner’s Preliminary Response and its accompanying exhibits
`
`(Exhibits 2001-2004); and
`
`(D) the Board’s Decision to Institute the Inter Partes Review (“Institution
`
`Decision”).
`
`IV. Understanding of Applicable Legal Standards
`16. Although I am not an attorney, I have a general understanding of the
`
`applicable legal standards pertaining to the patentability issues presented in this
`
`proceeding. I understand that the Petitioner’s grounds for challenging the
`
`patentability of the claims of the ‘991 patent assert that the claims would have been
`
`obvious to one of ordinary skill in the art at the time of the invention in view of
`
`certain cited references, namely, as to claims 1 and 5-26, 28, 30-35 and 37, Exs.
`
`1002-1005, and as to claims 27, 29 and 36, the same references plus Ex.1006.
`
`
`
`5
`
`
`
`17.
`
` I understand that a proper analysis of whether an invention is
`
`unpatentable for obviousness includes a review of the scope and content of the
`
`prior art, the differences between the patent claims and the prior art, and the level
`
`of skill in the pertinent art at the time of the invention.
`
`18.
`
`I understand that a claim may be considered unpatentable for
`
`obviousness if there is a teaching or suggestion to combine prior art references in a
`
`manner that yields the claimed invention. I understand that a showing of
`
`obviousness requires some articulated reasoning with a rational underpinning to
`
`support the combination of the references. I understand that in consideration of the
`
`issue it is important to identify whether a reason existed at the time of the invention
`
`that would have led a person of ordinary skill in the pertinent art to combine
`
`elements of the references in a way that yields the claimed invention.
`
`19.
`
`I understand that various objective or “real world” factors may be
`
`indicative of non-obviousness. I understand that such factors include:
`
`(A) the commercial success of the claimed invention;
`
`(B) the existence of a long-felt, unresolved need for a solution to the
`
`problem solved by the claimed invention;
`
`(C) failed attempts to solve the problem solved by the claimed invention;
`
`(D) copying of the claimed invention;
`
`(E) unexpected results of the claimed invention;
`
`
`
`6
`
`
`
`(F) praise for the claimed invention by others in the relevant field; and
`
`(G) willingness of others to accept a license under the patent because of the
`
`merits of the claimed invention.
`
`20.
`
`I understand that, in the present inter partes review proceeding, the
`
`patent claims are given their broadest reasonable interpretation in light of the
`
`specification of the patent at issue. I also understand that claim terms, which are
`
`not expressly defined in the patent, are to be given their plain and ordinary
`
`meaning as would be understood by one of ordinary skill in the art in view of the
`
`patent specification.
`
`V. The Pertinent Art and Ordinary Level of Skill in the Art
`21.
`It is my opinion that the pertinent art is sewer pipe renewal and
`
`particularly trenchless, cured-in-place pipelining. While some engineering or
`
`technical education could be helpful, the renewal of sewer pipes using trenchless
`
`technologies has not been a traditional course of study in colleges and universities.
`
`Thus, I believe that a person of ordinary skill in the pertinent art is someone with
`
`knowledge of cured-in-place pipelining materials and techniques, and at least
`
`several years of experience involving the design and application of cured-in-place
`
`pipelining technologies.
`
`
`
`7
`
`
`
`VI. The ‘991 Patent Claims and the Unpatentability Grounds Asserted in
`the Petition Which Formed the Basis of the Board’s Institution Decision
`22.
`
` I understand that obviousness of Claims 1, 5-26, 28, 30-35 and 37 is
`
`asserted over a combination of Kiest ’118 (Ex. 1002), Kiest ’597 (Ex. 1003), De
`
`Neef Instructions (Ex. 1004), and De Neef Brochure (Ex. 1005). I understand that
`
`obviousness of Claims 27, 29 and 36 is asserted over the combination of Kiest
`
`’118, Kiest ’597, De Neef Instructions, De Neef Brochure, and further in view of
`
`Kempenaers (Ex. 1006).
`
`23.
`
`I understand that claims 1, 11, 17, 23 and 31 are independent claims
`
`of the ‘991 patent, with claims 1, 11, and 31 being directed to an “apparatus for
`
`repairing a main pipe line and a lateral pipe line connected thereto and in
`
`communication therewith to form a pipe joint.” Claims 17 and 23 are
`
`correspondingly directed to a “method of repairing a main pipe line and a lateral
`
`pipe line connected thereto and in communication therewith to form a pipe joint.”
`
`My testimony will focus on these independent claims, as I understand that the
`
`remaining dependent claims incorporate the same limitations as their parent
`
`independent claim, and thus, if the independent claims are patentable, so are the
`
`dependent claims.
`
`24. Among other things, apparatus claim 1 calls for “a liner assembly
`
`comprising a main liner member at least partially surrounding [a] main liner
`
`bladder tube and a lateral liner tube extending from the main liner member;” and
`
`
`
`8
`
`
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`“a gasket comprising a hydrophilic rubber, the gasket positioned at least partially
`
`surrounding the main liner member and the lateral liner member between the main
`
`liner member and the pipe joint, the gasket capable of swelling in reaction to
`
`contact with a liquid.”
`
`25. Apparatus claim 11 is similar to claim 1, but calls for “a band of
`
`hydrophilic paste disposed on the main liner member around the lateral liner
`
`member and between the main liner member and the main pipe line at the pipe
`
`joint,” instead of “a gasket comprising a hydrophilic rubber . . .” Apparatus claim
`
`31 is similar to apparatus claims 1 and 11, but calls for “a hydrophilic paste
`
`disposed on the liner assembly and at least partially around [a] liner juncture [at
`
`which the main liner member and the lateral liner tube are in communication with
`
`one another] when the lateral liner tube is extended into the lateral pipe line.”
`
`26. The method of claim 17 comprises, among other things, “applying a
`
`band of hydrophilic paste on the outside of [a] main liner member and around [a]
`
`lateral liner tube at [a] liner juncture [at which the main liner member and the
`
`lateral liner tube are in communication with one another];” and “expanding [a]
`
`bladder assembly [including a main bladder tube and a lateral bladder tube] to
`
`position the lateral liner tube against the lateral pipe line and the main liner
`
`member against the main pipe line, with the band of hydrophilic paste between the
`
`main liner member and the main pipe line at the pipe joint.” Method claim 23 is
`
`
`
`9
`
`
`
`similar to method claim 17, calling for, among other things, “applying a
`
`hydrophilic paste to [a] liner assembly and around at least a portion of the liner
`
`juncture . . . wherein the hydrophilic paste is between the main liner member and
`
`the main pipe.”
`
`27.
`
`I understand the Board’s rationale for instituting this proceeding with
`
`respect to apparatus claims 1, 11 and 31 to be that, on the record before it, the
`
`Board was
`
`persuaded that the combination of Kiest ’118, Kiest ’597,
`De Neef Instructions, and De Neef Brochure suggests
`that placement of hydrophilic bands at the liner juncture
`was a predictable variation within the technical grasp of a
`person of ordinary skill in the art. (Institution Decision at
`17, 18, 22)
`Similarly, in the Institution Decision, and based on the limited record before it, the
`
`Board stated with respect to method claims 17 and 23 that it was
`
`persuaded the combination of Kiest ‘118, Kiest ‘597, De
`Neef Instructions, and De Neef Brochure suggests that
`applying a band of hydrophilic paste on the outside of the
`main liner member and around the lateral liner tube at the
`liner juncture was a predictable variation within the
`technical grasp of a person of ordinary skill in the art.
`(Institution Decision at 19, 20-21)
`
`
`
`10
`
`
`
`28.
`
`I understand that as to these issues, the Petitioner contended that “it
`
`would have been obvious to one or ordinary skill in the art at the time of the
`
`invention to place the band or seal of Kiest ‘118 at the position disclosed in Kiest
`
`‘597 to improve sealing properties and reduce damage caused by water
`
`infiltration.” Petition at 14. I understand that the Petitioner further asserted that
`
`such positioning “would have the benefit of more completely sealing the junction
`
`between the main line pipe and the lateral line pipe, which is one of the weakest
`
`points in the pipe system.” Id. I understand that the Petitioner’s challenge similarly
`
`asserted, with respect to independent claims 11, 17, 23, and 31, that “it would have
`
`been obvious to one of ordinary skill in the art at the time of the invention to
`
`position the band of Kiest `118 at the location disclosed in Kiest `597 to improve
`
`sealing properties at a weak point in the pipe system.” Id. at 20, 24, 29, 34.
`
`29. With respect to claim 1, I understand that BLD asserts that the De
`
`Neef Instructions (Ex. 1004) and De Neef Brochure (Ex. 1005) disclose,
`
`respectively, that “SWELLSEALTM is “‘rubbery’ after it cures,” and “that
`
`SWELLSEALTM can be formed into shapes, such as [] bands.” Petition at 13. I
`
`understand that BLD concludes from this that
`
`[a]s such, it would have been obvious to one of ordinary
`skill in the art at the time of the invention to combine the
`teachings of [De Neef Instructions] and [De Neef
`Brochure] with Kiest ‘118 and Kiest ‘597 as the
`
`
`
`11
`
`
`
`SWELLSEALTM material is used for sealing pipe lines.
`(Id.)
` I understand that Petitioner has asserted, with respect to independent
`
`30.
`
`claims 11, 17, 23, and 31, that it would have been obvious to provide the
`
`hydrophilic band of the `118 patent in the form of a paste, a known form of the
`
`hydrophilic water stop material SWELLSEAL®. Id. at 20, 24, 29, 34.
`
`VII. Facts and Opinions Relevant to the Unpatentability Grounds Asserted
`in the Petition Which Formed the Basis of the Board’s Institution
`Decision
`31. For reasons that I will address in detail, it is my firm belief and
`
`opinion that the placement of hydrophilic bands as taught by Kiest ‘118 at the
`
`juncture of the Kiest ‘118 liner would not have been a “predictable variation within
`
`the technical grasp of a person of ordinary skill in the art” and would not have been
`
`obvious to one of ordinary skill in the art at the time of the invention, which I
`
`assume to be the effective filing date of the subject `991 patent, August 27, 2007.
`
`32. The Petition’s rationale places heavy reliance on the recognition in the
`
`art that the junctures of a main pipeline with service laterals constitutes known
`
`“weakest points of the pipe system” (Petition at 14, 20, 24, 29, 34). Such
`
`recognition, however, would not have suggested a modification of the `118 patent
`
`technique to place a hydrophilic band of the `118 patent at the juncture.
`
`33. While it was known in the art at the time of the invention that
`
`underground sewer pipe is particularly vulnerable to leakage occurring or
`
`
`
`12
`
`
`
`developing at the connections (junctions) of lateral pipe lines with a main line pipe,
`
`just the opposite was understood to be true of the main/lateral junction of the liner
`
`of the Kiest `118 patent (hereinafter “T-Liner®”). The basic construction of the T-
`
`Liner®, a subject of Mr. Kiest’s earlier U.S. Patent No. 6,039,079, was
`
`demonstrated, in actual practice, to provide a verifiable watertight seal that would
`
`not allow groundwater infiltrated into any cracks, voids, etc. in the piping at the
`
`juncture to pass through the liner and into the collection system (i.e., sewer). This
`
`was a necessary premise of the “containment region” approach of the `118 patent,
`
`which I describe further below.
`
`34.
`
`In the pipe repair apparatus and method of Kiest ‘118, a lateral liner of
`
`the T-Liner® is configured to be inverted out of the main liner sleeve and into
`
`position within the host lateral pipe. This is evident from Figs. 2 and 3 of Kiest
`
`‘118, reproduced below.
`
`
`
`A pair of bands 56, 58 encircle the main liner tube 38 at locations spaced on
`
`opposite sides of the junction of the main and lateral pipes. A third band 60 may
`
`
`
`13
`
`
`
`be placed within the interior of the lateral liner tube at its end, so as to reside on the
`
`outside of the liner at its end upon inversion of the lateral liner into the lateral pipe
`
`line.
`
`35. The bands are formed of a hydrophilic material and serve as end seals
`
`to confine groundwater that makes its way in between the liners and the interior
`
`pipe walls. The water is confined to a containment region set up in the general
`
`vicinity of the pipe junction. Kiest ‘118 at 5:34-51. That is, the end seals are
`
`meant to prevent ground water, which may accumulate between the pipe walls and
`
`liners, from flowing around the ends of the liners and into the pipes. Thus,
`
`according to the approach of Kiest ‘118, a leakage containment region is set up in
`
`the general vicinity of the pipe junction. The `118 approach is premised on the T-
`
`Liner® remaining watertight since, if the ‘118 T-Liner® were to leak, the
`
`hydrophilic bands would become a moot point, as groundwater would leak through
`
`the T-Liner® and into the sewer between the sealed ends of the T-Liner®.
`
`36. The `118 patent approach embodies the principle that groundwater be
`
`allowed to flow through damaged/faulty pipe portions and in between the T-
`
`Liner® and the original pipe, so long as it is thereafter contained. Containment is
`
`achieved by: (a) the T-Liner® remaining water-tight such that no groundwater
`
`flows through it and into the pipe; and (b) end seals that prevent infiltrated
`
`groundwater from flowing past the ends of the T-Liner®.
`
`
`
`14
`
`
`
`37. Cured-in-place pipe lining (CIPP) is often described in terms of
`
`providing a “pipe within a pipe.” In the case of the `118 T-Liner®, once cured, the
`
`resin impregnated liner assembly became a tough integrally molded reinforced
`
`thermoset plastic part, akin to a conventional factory molded PVC “T” or “Y” pipe
`
`fitting as used ubiquitously in the plumbing industry (see illustration below).
`
`
`
`Such pipe fittings use ring gaskets in their end bells (the enlarged end portions) for
`
`providing compression seals at the joints with the adjoining pipe segments, to
`
`prevent leakage at the joints. One skilled in the plumbing arts would take for
`
`granted that the fitting could be reasonably relied upon to be watertight at its
`
`juncture. A similar mindset applied with respect to the T-Liner® of the `118
`
`patent. I am very familiar with commercial implementations of the `118 T-Liner®
`
`as I further describe below.
`
`
`
`15
`
`
`
`38. The `118 patent approach (including its underlying premise of the T-
`
`Liner® providing a verifiable watertight seal) was not merely theoretical, but was
`
`proven in practice. I am familiar with the technical and commercial success of the
`
``118 patent approach from both my consulting work in the industry as well as from
`
`my service on ASTM standards committees/subcommittees.
`
`39. The `118 patent technique proved so successful that an ASTM
`
`standard (ASTM F 2561-06) was issued in 2006 specifying the technique as the
`
`industry standard for the rehabilitation of sewer service laterals. The standard was
`
`reissued as ASTM F 2561-11 in 2011 and remains in effect today. It is to this date
`
`the only standard issued specifically relating to renewing service lateral pipes and
`
`forming a non-leaking seal with the mainline pipe (or mainline cured-in-place
`
`pipe). True and correct copies of the originally issued 2006 standard and the
`
`reissued 2011 standard are attached hereto as Exs. B and C, respectively. The
`
`coverage of the technique specified in the standards, by LMK patents, is mentioned
`
`in footnote 2 on page 1 of each standard (Exs. B and C).
`
`40. With reference to ASTM F 2561-06, as reflected in its title (“Standard
`
`Practice for Rehabilitation of a Sewer Service Lateral and Its Connection to the
`
`Main Using a One Piece Main and Lateral Cured-in-Place Liner”), a key part of the
`
`specified “standard practice” is the provision of a one piece main and lateral
`
`cured-in-place liner or “MLCIPL.” As ASTM F 2561-06 describes,
`
`
`
`16
`
`
`
`[t]he MLCIPL is pressed against the host pipe by
`pressurizing a bladder and is held in place until the
`thermoset resins have cured. When cured, the MLCIPL
`shall be a continuous, one-piece, tight fitting, corrosion
`resistant lining extending over a predetermined length of
`the lateral pipe and the adjacent section of the main pipe
`providing a verifiable non-leaking structural connection
`and seal. (ASTM F 2561-06, p. 1; emphasis added)
`41. The standard also specifies the spaced hydrophilic O-rings of the `118
`
`patent technique which, together with the watertight T-Liner®, establish a
`
`groundwater containment region. See, e.g., ASTM F 2561-06 sections 7.3-7.4
`
`(hydrophilic O-rings on main sheet that becomes main tubular portion of the ` 118
`
`patent T-Liner®). See also ASTM F 2561-11 section 5.1.3 (hydrophilic O-ring at
`
`tail end of lateral liner tube).
`
`42. The issuance (and reissuance) of ASTM F 2561 is a testament to the
`
`technical merit of the T-Liner® containment region approach of the `118 patent.
`
`The process that a proposed ASTM standard must go through before its adoption is
`
`painstaking and arduous. An ASTM standard or a revision to an existing standard
`
`must begin at the subcommittee level where the expertise resides to properly
`
`develop and maintain a standard; and only essentially upon a consensus being
`
`reached at the subcommittee does a proposed standard (or revision thereto) proceed
`
`to consideration and voting at the full committee level, where it must receive a
`
`
`
`17
`
`
`
`positive response from 85% of the registered members of the committee. In the
`
`event that a negative vote is received and it cannot be accommodated; a 2/3's
`
`majority of the persons holding an administrative voting right must find the
`
`negative as irrelevant or non-persuasive at both the subcommittee and the main
`
`committee levels to win passage. Proprietary standards (those covered by patents),
`
`such as ASTM F2561, are particularly scrutinized. I served as a voting member on
`
`ASTM’s Plastic Piping Systems committee (F 17) and its Trenchless Plastic
`
`Pipeline Technology subcommittee (F 17.67) that considered and passed ASTM F
`
`2561-06 and ASTM F2561-11.
`
`43. Municipalities soliciting bids for lateral line CIPP rehabilitation work
`
`that express their desire for a verifiably water-tight connection with the main
`
`typically will specify ASTM F2561 compliance as a way of communicating this
`
`performance requirement. In such instances, other techniques may be considered
`
`upon a demonstration that an alternative approach provides a technically
`
`comparable result (i.e., a comparable level of performance).
`
`44.
`
`In contrast to the `118 patent approach, the claimed approach of the
`
``991 patent embodies the principle that the main portion of the T-Liner® need not
`
`be, nor remain, watertight at the main/lateral liner juncture. It simply serves as a
`
`structural framework for supporting a component that can serve as a compression
`
`sealing gasket at the juncture of the lateral and main liner portions. The later
`
`
`
`18
`
`
`
`approach of the `991 patent represents a very significant departure from Mr.
`
`Kiest’s successful `118 patent technique specified in ASTM F2561, which is
`
`premised on the liner being, and remaining, watertight so as to serve with
`
`hydrophilic end seals to establish a groundwater containment region. The addition
`
`of a hydrophilic rubber gasket, band or paste at the juncture of the T-Liner® as
`
`taught by the `991 patent would not serve to enhance the water-tightness of the T-
`
`Liner®, but rather would serve to provide a water-stop seal between the T-Liner®
`
`and the host pipe at the juncture.
`
`45. Mr. Kiest’s sealing approach described in the `991 patent relies on
`
`what is (or in the context of the paste embodiment set forth in independent claims
`
`11, 17, 23 and 31, will become) a single discrete compression gasket seal
`
`positioned on the T-Liner® at or around its juncture. The arrangement prevents
`
`groundwater infiltration into the space between the pipe and the T-Liner® from
`
`making its way into the collection system (sewer). This is accomplished by the
`
`resultant gasket blocking the infiltration of groundwater flows in multiple
`
`directions from multiple potential sources, as addressed in the following three
`
`paragraphs.
`
`46. Groundwater infiltration through damage/defects in the lateral pipe to
`
`the space in between the lateral liner and inner pipe walls is blocked from flowing
`
`to or past the lateral/main juncture of the T-Liner®. This avoids any flow of lateral
`
`
`
`19
`
`
`
`pipe groundwater infiltration: (a) into the sewer through any defect at the juncture
`
`of the T-Liner®, (b) into the sewer through any defect in the T-Liner® along the
`
`main liner segment thereof (e.g., at the seam formed by the overlapping edges of
`
`the liner sheet forming the main liner segment), and (c) into the annular space
`
`between the main liner segment of the T-Liner® and its host pipe (which typically
`
`has been separately newly relined) where it could otherwise flow past either one of
`
`the ends of the main T-Liner® segment and into the sewer.
`
`47. Groundwater infiltration through damage/defects in the lateral/main
`
`pipe juncture is blocked from flowing to or past the lateral/main T-Liner®
`
`juncture. This prevents any water infiltration at the lateral/main pipe junction from
`
`flowing into the sewer in the same manners described above (in ¶ 46a-c) for lateral
`
`pipe water infiltration.
`
`48. Groundwater infiltration through damage/defects in the main pipe line
`
`and flowing in between the main liner and mating pipe walls is blocked from
`
`flowing to or past the lateral/main T-Liner® juncture and into the sewer in the
`
`same manners described above (in ¶ 46a-c) for lateral pipe water infiltration.
`
`49.
`
`It is my opinion that the asserted combination of references does not
`
`render the claimed inventions obvious to one of ordinary skill in the art. I
`
`understand that the Petitioner asserted that it would have been obvious to modify
`
`the T-Liner® of the `118 patent to place a hydrophilic band of the `118 patent at
`
`
`
`20
`
`
`
`the liner juncture in a manner meeting the claims, in view of the `597 patent (Ex.
`
`1003). Based upon the De Neef Instructions (Ex. 1004) and De Neef Brochure
`
`(Ex. 1005), the Petitioner asserted that it would have been obvious to provide the
`
`hydrophilic band of the `118 patent in the form of a paste, a known form of the
`
`hydrophilic water stop material SWELLSEAL®.
`
`50. As explained above, at the time of the invention, one of ordinary skill
`
`in the art would have understood that the T-Liner® provides a verifiable non-
`
`leaking structural connection and seal at the main/lateral pipe juncture. Such a
`
`person would further understand that this feature, along with the spaced bands of
`
`hydrophilic material taught by the `118 patent, establish a containment region for
`
`containing any groundwater seeping in between the pipe walls and T-Liner®. As
`
`such, a person of ordinary skill in the art would have had no reason to place a
`
`sealing component (a hydrophilic band of the `118 patent, a hydrophilic paste or
`
`any other sealing component) at a main/lateral pipe juncture equipped with a T-
`
`Liner® according to the `118 patent. Such a sealing component would have been
`
`superfluous, similar to how placement of a sealing gasket at the juncture on the
`
`outside of a factory molded PVC pipe fitting (e.g., of the type shown in paragraph
`
`37 above) would serve no useful purpose.
`
`51. Given the purpose of the hydrophilic bands of the `118 patent to
`
`provide seals between the T-Liner® and the host pipe at the ends of the T-Liner®,
`
`
`
`21
`
`
`
`in order to block ground water from flowing past the ends and into the sewer, there
`
`would have been no reason to move any of the `118 bands to the juncture. This
`
`would only serve to minimize the effective size of the containment region
`
`established by the bands, which would serve no apparent useful purpose, and
`
`would have been seen as having the negative effect of increasing the likelihood of
`
`leaks occurring outside the containment region resulting in flows that would not be
`
`contained but rather would flow into the sewer.
`
`52. For example, persons of ordinary skill in the art would understand that
`
`in accordance with the `118 patent, the sealing hydrophilic band 60 on the lateral
`
`liner would only serve its intended groundwater containment purpose if the band is
`
`placed at the end of the lateral liner. Only then can it prevent groundwater which
`
`has infiltrated into the space between the lateral pipe and liner from backing-up to
`
`the end of the lateral liner (e.g., nearest a residence) where it can flow into the
`
`sewer system. Placing the sealing band 60 at the opposite, juncture end of the
`
`lateral liner would put the entire length of the lateral liner, and its host lateral pipe,
`
`outside of the containment region, contrary to the principle of operation of the `118
`
`patent approach.
`
`53. Another reason one of ordinary skill in the art would not seek to move
`
`a band of the `118 patent to the liner juncture (or place an additional like band
`
`there) is the uncertainty of the juncture region being able to provide undisrupted
`
`
`
`22
`
`
`
`pipe surfaces against which the bands of the `118 patent could sit to form a
`
`compression gasket seal. As has been noted, the juncture of the main and lateral
`
`pipelines is particularly vulnerable to damage and defects. It is not uncommon for
`
`there to be large gaps between the main pipe lateral service openings and the ends
`
`of the lateral pipelines intended to be connected at those openings, due to faulty
`
`installation or the shifting of earth over time. Proper formation of a compression
`
`seal requires opposing surfaces on either side of the sealing element to allow for
`
`generation of compressive sealing forces. In the case of the `118 patent,
`
`compressive sealing forces of the hydrophilic bands (serving as sealing O-rings)
`
`are generated as the liner bladder is inflated to press the resin impregnated liner
`
`firmly against the interior pipe walls, and with swelling action of the hydrophilic
`
`bands upon being exposed to moisture.
`
`54. One of ordinary skill in the art at the time of the invention would
`
`understand that for proper function of the hydrophilic band seals of the `118 patent,
`
`one would want to keep the seals spaced from the juncture at a position where
`
`there could be a reasonable expectation of having undisrupted (reasonably
`
`unifo
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