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 LARRY W. KIEST, JR. IN SUPPORT OF PATENT
`OWNER RESPONSE
`
`I, Larry W. Kiest, Jr., 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 am the sole inventor of U.S. Patent No. 8,667,991 (“the ‘991
`
`patent”), the patent at issue in this proceeding. I am also the inventor of U.S.
`
`Patent No. 7,975,726 and U.S. Patent No. 8,667,992, which are related to the ‘991
`
`patent and are the subject of two other concurrent inter partes review proceedings
`
`(IPR2014-00768 and IPR2014-00772). Further, I am an inventor of U.S. Patent
`
`
`
`1
`
`LMK Technologies, LLC Ex. 2006
`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 LARRY W. KIEST, JR. IN SUPPORT OF PATENT
`OWNER RESPONSE
`
`I, Larry W. Kiest, Jr., 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 am the sole inventor of U.S. Patent No. 8,667,991 (“the ‘991
`
`patent”), the patent at issue in this proceeding. I am also the inventor of U.S.
`
`Patent No. 7,975,726 and U.S. Patent No. 8,667,992, which are related to the ‘991
`
`patent and are the subject of two other concurrent inter partes review proceedings
`
`(IPR2014-00768 and IPR2014-00772). Further, I am an inventor of U.S. Patent
`
`
`
`1
`
`LMK Technologies, LLC Ex. 2006
`BLD Services, LLC v. LMK Technologies, Inc.
`IPR2014-00770
`
`
`
`No. 5,765,597 (“the ‘597 patent”) and U.S. Patent No. 6,994,118 (“the ‘118
`
`patent”), which are relied upon in the obviousness grounds asserted against the
`
`‘991 patent claims in this proceeding.
`
`2.
`
`3.
`
`I reside at 1012 Guava Isle, Ft Lauderdale, FL 33315.
`
`In this declaration, I provide testimony regarding trenchless pipe
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`rehabilitation technology, and in particular cured-in-place pipe lining (“CIPP”)
`
`technologies and the relevant industry. I describe the evolution of certain
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`technology in this field and my (and my companies’) involvement in the same,
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`including the progression through development of the different approaches for
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`lining service lateral pipelines set forth in the ‘597 patent, U.S. Patent No.
`
`6,039,079 (“the ‘079 patent”) on which I am also the sole inventor, the ‘118 patent,
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`and the subject ‘991 patent at issue in the current proceeding.
`
`II. Professional Background
`In addition to being an inventor on the `991 patent which is the
`4.
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`subject of this proceeding, and other relevant patents as mentioned above, I am
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`Founder and President of LMK Technologies, LLC (hereinafter “LMK”), a
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`manufacturer and technology provider for the CIPP industry. LMK focuses on
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`research and development of cured-in-place lateral pipe renewal technology. LMK
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`also licenses its technology and its knowhow and sells products to pipe renewal
`
`contractors for the lining of sewer pipes. LMK is based in Ottawa, IL and employs
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`2
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`
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`nearly 80 people. In Ottawa, Illinois, LMK has a 36,000 sq. ft. facility at which
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`we manufacture and test products (materials and equipment) related to pipe
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`rehabilitation, including products constructed as described in the ‘991 patent.
`
`5.
`
`In 1981, and upon graduation from high school, I began my career
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`working as a plumber for my father’s business in Ottawa, IL. I soon entered the
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`Illinois plumbing license apprenticeship program and the operating engineers
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`apprenticeship program, and several years later became an Illinois Department of
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`Public Health Licensed Plumber and an Operating Engineer through Local 150.
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`After years of installing and fixing water and sewer pipes, I sought to develop a
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`system for lining lateral sewer pipes. In 1990, I formed my first pipe renewal
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`company, Performance Pipelining, a sole proprietorship, and I later incorporated
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`Performance Pipelining, Inc. in 1991. This company specialized in providing video
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`inspection of pipes, pipe cleaning, trenchless pipe renovation and manhole
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`rehabilitation to general contractors and municipalities. This company was
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`successful, and at the time I was still working to develop a lateral lining system. I
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`eventually developed my first lining system, and started a new company, called
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`LMK Enterprises Inc. (now LMK Technologies, LLC), in 1993. In 1994, I first
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`licensed a contractor to use my technology. I later started two other companies to
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`provide additional services related to pipe rehabilitation: LMK Fabrication (a
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`custom fabrication shop that built all of the proprietary equipment necessary to
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`3
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`
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`install the proprietary pipe lining materials produced by LMK Enterprises) and
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`LMK Pipe Renewal (a contracting company that specializes in trenchless pipe
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`renovation contracts, specifically for municipalities).
`
`6.
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`I am an inventor on over 55 issued U.S. patents pertaining to CIPP
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`and numerous corresponding foreign patents, as well as a large number of pending
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`U.S. patent applications. I have participated in U.S. patent prosecutions, and have
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`a general understanding of the process, and of the novelty and non-obviousness
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`requirements for patentability.
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`7.
`
`I am a longtime active member of several industry associations,
`
`including the National Association of Sewer Service Companies (NASSCO),
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`North American Society For Trenchless Technology (NASTT), International
`
`Society For Trenchless Technology (ISTT), Midwest Society For Trenchless
`
`Technology (MSTT), Water Environment Federation (WEF), American Society
`
`for Testing and Materials (ASTM) International, American Water Works
`
`Association (AWWA), American Society of Civil Engineers (ASCE), and National
`
`Association of Clean Water Agencies (NACWA).
`
`8.
`
`I am currently serving as: board director of NASTT, a member of the
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`Strategic Planning Committee for NASTT, V.P. of MSTT, Advisory Board
`
`Member for Louisiana Tech University, and member of ASCE PINS (Pipe
`
`Infrastructure Committee).
`
`
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`4
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`9.
`
`I have developed two industry standards related to CIPP. One of the
`
`standards, namely ASTM F2561-06 which issued in 2006 (revised version issued
`
`in 2011 as ASTM F2561-11), is a proprietary standard that specifies the `118
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`patent technique and is today the industry standard for the rehabilitation of sewer
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`service laterals and the connection to a mainline pipe. The other standard is F2599
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`which was also issued in 2006 and reissued in 2011. Today ASTM F2599-11 is the
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`industry standard for the localized repair of a pipe using an inversion technique.
`
`10.
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`In addition to the above mentioned issued industry standards, I am the
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`author of two proposed standards that relate to cured-in-place technology currently
`
`being balloted within ASTM International.
`
`11.
`
`I have authored numerous white papers and conducted many technical
`
`presentations and training seminars related to pipe rehabilitation, and in particular
`
`cured-in-place lining of lateral pipelines. My technical training curriculum is
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`approved through the ASCE (American Society of Civil Engineers) for
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`professional development hours and continued education credits in 50 states.
`
`12.
`
`I am proud of the fact that my company and I have been recognized
`
`for our achievements in the CIPP industry. For example, in 2013 I was named
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`Trenchless Technology Person of the Year at the national NASTT No Dig
`
`conference and by the trade publication Trenchless Technology. I attach a copy of
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`an article reporting on the award as Ex. A. I can verify that Ex. A is a true and
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`
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`5
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`
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`correct copy of the article, and that the article accurately reports on an interview I
`
`gave to the publisher. As another example, LMK was named the winner of the
`
`13th Annual Chicago Innovation Award in 2014. A true and accurate copy of our
`
`company press release announcing this award is attached as Ex. B. As the press
`
`release states, it was our T-Liner® with Insignia™ Hydrohat Compression Gasket
`
`Sealing System (a product covered by the `991 patent) that earned us the award.
`
`Before this, in 2006 the North American Society for Trenchless Technology
`
`(NASTT) presented me with an award in recognition of my significant contribution
`
`to the trenchless technology industry in connection with my T-Liner® lateral
`
`renewal product.
`
`13. A more detailed account of my work experience and qualifications,
`
`and a list of my publications, is included in my resume and biography, which are
`
`attached as Ex. C to this Declaration.
`
`III. My Involvement in CIPP Technology Development, Particularly as it
`Relates to the Lining of Service Laterals
`14. When I first became involved in the CIPP industry in the early 1990s,
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`the primary focus was on lining main pipe lines to primarily repair structural pipe
`
`defects and secondarily reduce groundwater inflow and infiltration (I/I). During
`
`those early years of trenchless pipe renovation, companies practicing CIPP pipe
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`rehabilitation (e.g., Insituform) and their customers, municipalities with aging
`
`sewer systems, were most always concentrated on lining the main line pipes. The
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`
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`6
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`
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`techniques used at that time (which continue to be practiced today) employed
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`inversion of a resin impregnated liner into main line pipes from manhole to
`
`manhole. Inflation of the liner tube presses the liner against the inner pipe walls
`
`and, upon curing, the liner would form a tough, rigid “pipe within a pipe.”
`
`15. When a main sewer pipe is lined using CIPP, the pipe is typically
`
`structurally renewed and design calculations are used to determine the design life
`
`of the new cured-in-place pipe. As time continued, the CIPP industry turned its
`
`primary objectives to focus more on sealing the pipes in response to the U.S.
`
`Environmental Protection Agency’s (EPA’s) Clean Water Act and subsequent
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`fines imposed against municipalities coming under consent decree orders (in
`
`federal lawsuits) to reduce sewer overflows which are a result of overtaxed
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`collection systems that are surcharged by extraneous water entering the system
`
`through pipe defects. The lining industry marketed CIPP liners as a watertight
`
`repair solution to municipal utility owners. The mainline CIPP process consists of
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`installing a new seamless, jointless, tight-fitting pipe within a pipe. Once the resin
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`saturated liner tube is inverted into the main pipe and cured, a robot is deployed for
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`the purpose of remotely drilling a hole in the continuous new pipe at every service
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`connection to restore service to the service lateral pipes. The drilling (or cutting)
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`process to reestablish service is accomplished by a remote control cutting robot
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`that is equipped with a camera.
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`7
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`16.
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`In the early to mid-1990s, the common belief in the trenchless
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`industry was that the fresh “pipe” provided within the main pipe avoided the
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`problem of I/I occurring as a result of repairing defects along the main pipeline.
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`Those in the industry believed that it was possible to significantly reduce
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`groundwater entering the sewer system and thereby avoid overtaxing the sewer
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`system and associated water treatment facilities by using CIPP to rehabilitate the
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`main pipe. Often, fair results were initially achieved. Those in the trenchless
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`industry also believed this would help to avoid, e.g., during rainstorms, sewer
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`system overflows which in extreme cases would lead to the need for municipalities
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`to release raw sewage into waterways. Municipalities have a great incentive to
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`avoid this type of situation given the harmful environmental consequences and
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`EPA fines that could result.
`
`17.
`
` Nevertheless, cities that had spent significant dollars to renew their
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`sewer mains were often faced with little to no success post lining. One of the most
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`significant issues was the misperception that a cured-in-place liner would reliably
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`adhere to the inner walls of the mainline pipe and form a new, watertight sewer
`
`pipeline. In fact, as I recognized after years in the trenchless industry, the liner
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`could not be relied upon to form a watertight bond with the host pipe. I describe
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`this, for example, in my article “Making It Stick” cited by Petitioner as Ex. 1009 in
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`related IPR2014-00772 at p. 1(“A common myth in the industry attributes adhesive
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`
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`8
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`
`
`
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`(glue-like) qualities to the resins used in CIPP lining.”). I attach a true and
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`accurate copy of the article as Ex. D hereto.
`
`18. There are several reasons the bond could not be relied upon as a
`
`watertight solution. To begin, it is well known that sewers are often plagued by
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`significant amounts of grease or what is known in the utility sector as fats, oils, and
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`grease (FOG). The process to clean the pipe utilizes tap water sourced from a
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`nearby fire hydrant to perform high pressure flushing. The cleaning process does
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`not employ hot water or detergents as one would to remove grease from
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`kitchenware. Even attempts to clean the inside of the host pipe using high pressure
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`flushing prior to lining does not remove the presence of FOG and does not prepare
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`the surface of the pipe for long-term bonding. FOG on the inner pipe walls
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`impedes a reliable watertight bond and the pervasive presence of moisture within
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`the pipes presents an additional impediment to forming watertight adhesion of the
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`liner to the pipe walls. Another contributing factor is that cured-in-place pipe by
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`definition is a flexible conduit that is subject to thermal expansion and contraction.
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`A flexible plastic cured-in-place pipe poses much different mechanical properties
`
`than that of a vitrified clay pipe, a concrete pipe, or a cast iron pipe, which are
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`common materials used for sewer pipes. As temperatures fluctuate in a sewer pipe,
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`the plastic liner moves within the rigid host pipe. Likewise, the ground is
`
`constantly moving. Yet another contributing factor is that most, if not all,
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`9
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`
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`thermoset resins shrink during the curing process, creating an annular space
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`between the host pipe and the liner. These factors also inhibit long-term bonding of
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`the cured-in-place pipe to the host main pipe.
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`19.
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`It should be understood that resin can migrate into pipe defects
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`creating a mechanical lock, but in no way should this be confused with long-term
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`chemical bonding.
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`20. A problem thus remained with groundwater making its way through
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`the pipe defects in the host main pipe and behind the liner, eventually making its
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`way back into the sewer system by way of the numerous holes cut in the fresh
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`main liner to restore the lateral pipe connections.
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`21. More and more, over time, it came to be appreciated that lining of the
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`main pipes addressed only part of the problem and the lining efforts did not always
`
`provide a watertight renovated sewer. Specifically, even with freshly lined main
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`piping, very significant I/I was also occurring from pipe defects located in the
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`numerous lateral pipes along the length of the main pipe. The lateral pipe defects
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`are the same type of defects found in a main pipe, including but not limited to pipe
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`fractures, sheared pipe sections, open joints and lateral connections made by
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`breaking a hole in the main pipe by way of a hammer. These pipe defects not only
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`allow for water to leak in or out of the pipe, but they can also form voids around
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`the pipe caused by subsidence, commonly found directly at the juncture of the
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`10
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`
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`main and lateral pipes. Addressing these problems in an effort to form a watertight
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`sewer system posed additional difficulties.
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`22.
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`It was harder to deal with the numerous lateral pipelines that connect
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`to the main pipeline for various reasons, including: (a) the smaller diameter of the
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`pipes (e.g., 4”-6” diameter as opposed to 8” up to man entry size pipes 60” and
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`larger), (b) the various take-off angles of the lateral pipes from the main (e.g. 45 or
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`90 degree), (c) the various paths (e.g. 45-90 degree turns) and diameter changes of
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`the lateral pipes leading, e.g., to individual residences, (d) a variety of lining
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`materials employed for the lateral piping, and (e) the frequent installation of the
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`lateral piping by individual property owners or local plumbers and drain cleaners
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`using non-standard materials and techniques, which are quite different than
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`municipal projects which are engineered and inspected.
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`23.
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`In addition to the issues described above, another factor that made
`
`lateral lining a challenge was that the industry focused more on lining of the mains
`
`and was less concerned with the laterals due to municipalities spending funds on
`
`private property (lateral pipes connect to a main pipe in the city right of way and
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`extend onto private property to connect to a building).
`
`24. Attempts were eventually made in the industry to deal with the
`
`problem of groundwater inflow and infiltration (I/I) into the sewer system resulting
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`from damaged lateral pipes and the critical connections at the main/lateral juncture.
`
`
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`11
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`
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`Some examples include the cured-in-place liners and methods described in
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`Insituform’s U.S. Patents Nos. 5,393,481 and 5,927,341.
`
`25. Since the time I began my technology development in the CIPP field
`
`in the early 1990’s, I have continually focused my efforts on the development of
`
`improved approaches for the lining of lateral pipes to structurally renew the pipe
`
`and to reduce groundwater I/I into sewer systems. One of my early efforts (with
`
`co-inventor Gary VanAmeyde) is described in the `597 patent.
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`26. As the `597 patent describes, this early system included, among other
`
`things, a pull-in place main/lateral combination liner (Figs. 19-21). Both the resin
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`impregnated lateral liner sleeve 184 and the resin impregnated main liner sleeve
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`186 are pulled into place, and separate bladders are inserted into the liner sleeves
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`and inflated. A urethane collar is fused to the main and lateral liner sleeves 184,
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`186 at the juncture thereof. The purpose of the collar was to connect the liner
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`sleeves together and form a watertight connection between the lining materials.
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`And when the liner assembly was cured it was thought to be watertight.
`
`27. The patent also describes that placed at the juncture is a “gasket 192
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`made of absorbent material such as an open cell foam or similar material shaped
`
`like a donut.” (11:28-33) “This gasket will be impregnated with a hydrophilic
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`chemical grout just prior to installation.” (11:35-37) Inflation of the lateral
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`bladders served to press the liner sleeves against the pipe and “forces the grout 192
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`
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`12
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`
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`into the cracks and crevices at the juncture between lateral pipe 212 and main line
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`pipe 210 thereby providing a water tight seal to prevent infiltration of ground water
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`into the lateral pipe 212 and the sewer line 210.” (12:41-45)
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`28. The “gasket” 192 described in the `597 patent is not a gasket in the
`
`conventional sense of the term. It does not provide any sort of compression seal
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`between the liner and host pipe, but rather serves merely as a carrier for
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`hydrophilic chemical grout (a liquid having a viscosity similar to that of milk) that
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`will be dispersed from the open cell foam of the “gasket” upon inflation of the
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`liner/bladder assembly. In our `597 patent approach, the intent was for the liquid
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`hydrophilic chemical grout to disperse through any cracks, crevices or voids in the
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`host pipe and into the surrounding soil, so as to create a barrier or curtain around
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`the outside of the pipe that would serve to keep groundwater away from entering
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`through the damaged pipe portions. The concept relied on the chemical grout
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`penetrating through the pipe defects and expanding (approximately 5+ times in
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`size), forming a seal on the outside of the pipe. This is illustrated in the drawing
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`shown below. The arrows within the groundwater (blue) point to the intended
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`waterstop location outside of the pipes.
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`13
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`
`
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`lateral host pipe
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`groundwater
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`hydrophilic
`dispersed
`chemical grout
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`main host pipe
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`‘597 liner
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`CIPP main liner
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`
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`29. The process of chemical grouting is one of the oldest forms of
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`trenchless pipe rehabilitation and is usually performed by pumping the chemical
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`grout from a truck above ground through hoses that are strung through the main
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`pipe to the lateral connection whereby the chemical grout is dispensed through
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`inflatable bladders under pressure to penetrate pipe defects. Shown below is an
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`illustration of such a chemical grouting operation using inflatable bladders from
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`the website of Avanti International, www.avantigrout.com. Avanti is an industry
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`leader in providing chemical grout for sealing sewer pipes.
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`14
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`30. Our use of chemical grout in the ‘597 patent approach was intended to
`
`perform the same end; it’s just that our process avoided the need for expensive
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`pumps, hoses and inflatable bladders. We were trying to grout the pipe defect using
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`an extremely compressible low cost piece of foam while simultaneously renewing
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`the pipe using CIPP. The open cell foam does not penetrate the pipe defects, but
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`only the chemical grout does, as described in the ‘597 patent. (12:41-45) The
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`chemical grout expelled from the foam forms the seal, not the foam carrier.
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`31. The ‘597 patent approach embodies a principle that a seal is to be
`
`created by enveloping the damaged pipe areas and penetrating the surrounding soil
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`with chemical grout in order to keep groundwater out of the pipe, as illustrated in a
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`picture of a mocked up sample (shown below) prepared at LMK.
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`15
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`Photographs that are fair and accurate representations of the sample (prepared
`
`under my direction at LMK) are attached as Ex. E to my Declaration.
`
`32.
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`I made attempts to implement the `597 patent approach. Plagued by
`
`practical problems, the approach produced inconsistent results. One of these
`
`problems was that there was a limit on the amount of liquid hydrophilic chemical
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`grout that could be delivered to the juncture region for dispersal based on the size
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`of the open cell foam carrier in order to effectively form a seal. Another problem
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`was that there was little control over the dispersal of the grout upon inflation of the
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`bladder(s). The technicians are unable to see through the pipe and know exactly
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`where the grout is traveling to and often the grout did not penetrate all of the areas
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`necessary to form the seal. The difficulties were compounded by the widely
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`variable and unpredictable pipe defect/damage conditions at the junctures.
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`Ultimately, these difficulties led me to abandon the technique and to seek to
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`develop a better solution.
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`16
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`33. A result of my further efforts was my development of a newly
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`configured T-shaped liner and launcher (i.e., device for inverting the liner), both of
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`which are described in my `079 patent. This newly configured cylindrical launcher
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`50 facilitated an improved technique for loading a resin impregnated T-shaped
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`liner 24, and an inflation bladder 12, for delivery through the main pipe to the
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`lateral to be lined. A resin impregnated sheet 28 of the T-shaped liner 24 would be
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`wrapped around the cylindrical launcher 50 with opposite edges overlapped,
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`generally similar to a burrito. This is shown in Figs. 10 (before wrap) and 11 (after
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`wrap) of my `079 patent, reproduced below.
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`17
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`34. The lateral liner 26 would be inverted from the opening in the
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`launcher 50 and the aperture in the wrapped sheet 28 and into the lateral pipe once
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`the launcher 50 was pulled into place at the juncture of the main and lateral pipes.
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`The wrapped sheet 28 would form (upon inflation of the bladder and subsequent
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`curing) a full hoop pipe segment within the main pipe. This is illustrated in Fig. 13
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`of my `079 patent, reproduced below.
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`18
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`
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`The technique accommodated installation of a long length lateral liner (e.g., up to
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`200’). Once cured, the resin impregnated liner assembly became a single
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`integrally molded reinforced thermoset plastic part, similar to a conventional
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`factory molded PVC “TEE” or “WYE” pipe fitting of the type commonly used in
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`the plumbing industry. Attached to my Declaration as Ex. F are photographs that
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`are fair and accurate representations of a sample (prepared under my direction at
`
`LMK) of the ‘079 T-Liner® as installed at the juncture of a main and lateral pipe.
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`
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`19
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`35.
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`In contrast to the unsuccessful technique of my `597 patent, the
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`system of the `079 patent was a great success. With it we achieved what was
`
`believed to be a reliable watertight seal at the connection point between the sewer
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`laterals and the main. This is well documented by the South Palos Township case
`
`study report cited by the Petitioner in related IPR2014-00772 as Ex. 1007. I have
`
`attached a true and accurate copy of this report as Ex. G hereto.
`
`36.
`
`It was during the South Palos pipe rehabilitation project that we
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`perfected, and successfully commercially used for the first time, the system of the
`
``079 patent:
`
`During the first third of the project (approximately 40
`laterals), Performance Pipelining [an LMK affiliated
`company] used the pit excavation and cleanout method to
`repair the laterals. In the meantime, LMK’s research
`and development team was busy perfecting a unique,
`innovative inversion method named T-Liner®, which
`enabled 100% trenchless installation of CIPP liners into
`service laterals via the sewer main. Excavation pits at the
`longer necessary. More
`property
`line were no
`importantly, the T-Liner® system provided the powerful
`benefit of a guaranteed watertight seal at
`the
`connection point between the sewer lateral and the
`main, confirmed through hydrostatic testing and air
`testing.
`
`
`
`20
`
`
`
`
`
`Passing a 5psi air test was viewed as a critical
`achievement, which confirmed that the T-Liner® could
`guarantee a watertight seal.
`. . . “The first T-Liner® was used for a "short" side
`lateral; i.e. the service lateral was for a home on the same
`side of the street as the sewer main. The first installation
`installed a 16" long, 8" diameter main line sleeve with a
`12' long, 6" diameter lateral liner. The entire installation
`took about two hours, passed the air test, and was viewed
`by a television camera sitting in the sewer main just
`upstream of the repair. The installation was a grand
`success, and [was] authorized for use for the remainder
`of the South Palos Township project. (Ex. G at 6-7;
`emphasis added).
`37. The report (Ex. G hereto) notes at 2, “[t]he connection points between
`
`sewer service laterals and a sewer main have long been identified as some of the
`
`weakest points in a typical sanitary sewer system.” Importantly, this is a reference
`
`to the weakness of the pipe to be rehabilitated, not to the T-Liner® developed
`
`during, and employed in, the project. The report makes this clear:
`
`It has long been known by collection system owners,
`operators and professionals that significant portions of I/I
`[groundwater
`inflow/infiltration] enter
`the
`system
`through service laterals and at their connections to the
`main line. (Ex. G at 8)
`
`
`
`21
`
`
`
`
`
`38.
`
`I later learned on future projects that the liner was not forming a
`
`watertight connection by bonding the wrapped sheet liner of the T-Liner® to the
`
`mainline cured-in-place liner. In some instances, water could leak between the
`
`mainline cured-in-place liner and the wrapped sheet liner and enter the sewer
`
`system at the ends of the wrapped sheet liner.
`
`39. Although the `079 patent’s T-Liner® system helped reduce I/I and
`
`was commercially successful over a number of years (1998-2003), I recognized
`
`that the system could be improved by providing additional sealing to stop potential
`
`flows of groundwater between the pipes and liners past the ends of the T-Liner®
`
`where it could enter the sewer. This recognition led to the improved system
`
`described in the `118 patent, naming Richard Fast and I as co-inventors.
`
`40. Building on the technology of my `079 patent, we added bands of
`
`hydrophilic material to the ends of the T-Liner®, in order to contain any
`
`groundwater making its way in between the pipe walls (or mainline cured-in-place
`
`pipe) and the wrapped sheet portion of the T-Liner®. The approach relied on the
`
`ability of the T-Liner®, as a one-piece integrally molded part, to be and remain
`
`watertight, just like a PVC “TEE” or “WYE” pipe fitting of the type I was very
`
`familiar with from my experience in the plumbing industry. An example of such a
`
`pipe fitting is shown below.
`
`
`
`22
`
`
`
`
`
`
`
`41.
`
`In a conventional pipe fitting used in plumbing applications, gaskets
`
`form a seal where the pipe extends into the pipe fitting such that the gasket is
`
`compressed between the pipe and the pipe fitting. As shown above, ring gaskets
`
`are positioned in the bell ends (enlarged end portions) of the TEE-shaped pipe
`
`fitting and provide seals at the joints with the adjoining pipe segments. I had the
`
`idea to extend that principle into the realm of CIPP to seal the joint between the
`
`mainline pipe (or mainline cured-in-place pipe) and the wrapped sheet liner at the
`
`ends of my single-piece T-Liner®. The result is essentially the same; the pipe and
`
`T-Liner® is sealed much like how the pipe and PVC fitting joint is sealed.
`
`Attached to my Declaration as Ex. H are photographs that are fair and accurate
`
`representations of a sample (prepared under my direction at LMK) of the ‘118 T-
`
`Liner® as installed at the juncture of a main and lateral pipe.
`
`42. The hydrophilic bands in the ‘118 patent approach were effective to
`
`provide watertight seals preventing any flow of water in between the liner and
`
`
`
`23
`
`
`
`
`
`inner pipe walls from continuing past the ends of the T-Liner® where it could enter
`
`the sewer system. The bands served the additional beneficial function of elastic
`
`bands securing the “burrito” wrap of the main liner sheet on the cylindrical
`
`launcher during deployment, and allowing expansion upon inflation of the bladder.
`
`43.
`
`In contrast to the approach with the earlier `597 patent, the `118 patent
`
`approach embodies the principle that ground water can be allowed to flow through
`
`damaged/faulty pipe portions and in between the T- liner® and the original pipe
`
`(or mainline cured-in-place pipe), so long as it is thereafter contained.
`
`Containment was achieved by: (a) the T-Liner® remaining water-tight (similar to a
`
`PVC pipe fitting) such that no groundwater flows through it and into the pipe; and
`
`(b) end seal gaskets that would prevent infiltrated groundwater from flowing past
`
`the ends of the T-Liner®. The containment approach is illustrated in the drawing
`
`below. Straight arrows point to the intended waterstop locations at the hydrophilic
`
`O-rings between the T-Liner® and the host pipes (spaces between T-Liner® and
`
`host pipes/fresh CIPP main liner are exaggerated for illustrative purposes).
`
`
`
`24
`
`
`
`
`
`
`
`lateral host pipe
`
`groundwater
`
`hydrophilic O-ring
`
`CIPP main liner
`
`Kiest ‘118 T-Liner®
`
`main host pipe
`
`
`
`44. The arrangement of the `118 patent was an even greater technical and
`
`commercial success than the `079 patent technique before it. That success, and
`
`recognition of the same in the industry, led to the adoption in 2006 of an industry
`
`standard specifying the arrangement of the `118 patent, namely ASTM F 2561-06:
`
`“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”. That standard remains in effect today (reissued in 2011 as ASTM F2561-
`
`11). Today, the F2561 standard remains the only standard specifically relating to
`
`renewing service lateral pipes and forming a non-leaking seal with the mainline
`
`pipe (or mainline cured-in-place pipe).
`
`
`
`25
`
`
`
`
`
`45. Despite the strength and hardness of the T-Liner® rivaling that of
`
`factory molded PVC pipe fittings, over time, and to my surprise, inspections of
`
`installations of the `118 T-Liner® system revealed that leakages could occur
`
`through the T-Liner® itself. There were some occurrences of leakage at the
`
`juncture of the main and lateral liner segments, and also along the seam formed by
`
`the overlapped edges of the flat sheet used to form the full hoop main liner
`
`segment (similar to that of a burrito wrap) of the T-Liner®. While such leakage
`
`could reasonably be attributed to faulty installation or faulty preparation of product
`
`for installation, I was determined to investigate the issue in order to further
`
`minimize, if not eliminate, it.
`
`46. Because the leakage issue had only revealed itself with the `118 patent
`
`approach and not its predecessor `079 patent approach, I theorized that the leakage
`
`was likely due, at least in part, to the increased hydrostatic pressures impos
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